DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This Office Action is responsive to the amendment filed on 02/04/2026.
3. Claims 1, 4-5, 7, 9-17 are pending. Claims 1, 4-5, 7, 9-17 are under examination on the merits. Claim 1 is amended. Claim 8 is cancelled. Claims 2-3, 6, 18-21 are previously canceled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant's arguments filed 02/04/2026 have been fully considered but they are not persuasive, thus claims 1, 4-5, 7, 9-17 stand rejected as set forth in Office action dated 04/19/2019 and further discussed in the Response to Arguments below.
Claim Rejections - 35 USC § 103
6. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
7. Claims 1, 4-5, 7, 9-17 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuba et al. (JP 2012-124355 A, machine translation, hereinafter “’355”) in view of Yamagishi et al. (JPS62179706 A, machine translation, hereinafter “’706”), and Arioka et al. (JP 2013-061639 A, machine translation, hereinafter “’639”).
Regarding claims 1,8: ‘355 teaches a composition (Page 7/33, [0009]), comprising: electromagnetic wave absorbing particles, wherein the core-shell particles include Fe-Co-based alloy particles as core (Page 7/33, [0010]), a dispersant (Page 16/33, [0046]; Page 21/33, [0071]) such as surfactant, wherein the content of the surfactant in the paste composition is preferably 0.01% by weight or more and 1% by weight or less(Page 16/22, [0046]), and a solvent (Page 21/33, [0071]), wherein the composition absorbs electromagnetic waves in a frequency band of 1 GHz or higher when formed into a film (Page 8/33. [0014]). ’355 does not expressly teach i) the particles are composed of Fe-Co-based alloy particles, and ii) the dispersant has a molecular weight of 50,000 or less, and wherein the dispersant is a resin having a graft chain.
However, referring to i) ‘076 teaches a soft magnetic thin plate material comprising permendur composition (Fe-50% Co) (Page 5/6, Example 1, lines 1-15). The composition is then added with a binder, a plasticizer, a dispersant and an organic solvent (Page 3/6, Overview, lines 4-6; Page 5/6, Embodiment 2, lines 1-5) with benefit of providing a soft magnetic thin sheet material of a binary system containing Fe having good magnetic characteristics, and having constant thickness and can be easily formed into a desired shape (Page 5/6, Industrial Application Field, lines 13-16).
Referring to ii) ‘639 teaches a photosensitive resin composition comprising the dispersant has a molecular weight of 50,000 or less (Page 59/79, [0195]), and wherein the dispersant is a resin having a graft chain (Page 61/79, [0203]; Pages 61-62/79, [0205]) with benefit of providing a dispersant which is preferably used for dispersing the inorganic filler. Therefore, the dispersant is preferably a polymer dispersant having a group that interacts with the surface of the inorganic filler and having no ethylenically unsaturated group (Page 59/79, [0195]).
In an analogous art of the composition, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the Fe-Co-based alloy particles by ‘355 so as to include the particles are composed of Fe-Co-based alloy particles as taught by ‘706, and would have been motivated to do so with reasonable expectation that this would result in providing a soft magnetic thin sheet material of a binary system containing Fe having good magnetic characteristics, and having constant thickness and can be easily formed into a desired shape as suggested by ‘706 (Page 5/6, Industrial Application Field, lines 13-16).
In an analogous art of the composition, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the composition by ‘355 so as to include the dispersant has a molecular weight of 50,000 or less, and wherein the dispersant is a resin having a graft chain as taught by ‘638, and would have been motivated to do so with reasonable expectation that this would result in providing a dispersant which is preferably used for dispersing the inorganic filler. Therefore, the dispersant is preferably a polymer dispersant having a group that interacts with the surface of the inorganic filler and having no ethylenically unsaturated group as suggested by ‘638 (Page 59/79, [0195]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since choosing an appropriate amount of dispersing agent of a known material based on its suitability for its intended use is within the level ordinary skill in the art.
Regarding claim 4: ‘355 teaches the composition (Page 7/33, [0009]), wherein the composition absorbs electromagnetic waves in a frequency band of 1 GHz or higher and less than 100 GHz when formed into a film (Page 8/33. [0014]).
Regarding claim 5: ‘355 teaches the composition (Page 7/33, [0009]), wherein the dispersant has a molecular weight of 50,000 or less (Page 19/33, [0062]).
Regarding claim 7: ‘355 teaches the composition (Page 7/33, [0009]), wherein a content of the particles is 60.0% to 95.0% by mass with respect to a total mass of the composition (Page 20/33, [0068]).
Regarding claim 9: ‘355 teaches the composition (Page 7/33, [0009]), wherein a content of the solvent is 10.0% to 30.0% by mass with respect to a total mass of the composition (Page 31/30, Table 1). .
Regarding claim 10: ‘355 teaches the composition (Page 7/33, [0009]), wherein a boiling point of the solvent is 110°C to 170°C (Page 29/33, [0109]).
Regarding claim 11: ‘355 teaches the composition (Page 7/33, [0009]), further comprising: a thermally polymerizable compound (Page 16/33, [0047]) .
Regarding claim 12: ‘355 teaches the composition (Page 7/33, [0009]), further comprising: a photopolymerizable compound (Page 16/33, [0047]).
Regarding claim 13: ‘355 teaches the composition (Page 16/33, [0047]), further comprising: a photopolymerization initiator (Page 7/33, [0047]).
Regarding claim 14: ‘355 teaches a film formed of the composition (Page 25/33, [0089]).
Regarding claim 15: ‘355 teaches a cured film formed by curing the composition (Page 25/33, [0089]).
Regarding claim 16: ‘355 teaches a manufacturing method of a cured film, comprising: a step of forming a composition layer on a substrate by using the composition; a step of exposing the composition layer in a patterned manner; and a step of developing the exposed composition layer by using a developer (Page 23/33, [0083]).
Regarding claim 17: ‘355 teaches an electronic component comprising: the cured film (Page 122/33, [0074]).
8. Claims 1, 4-5, 7, 9-10, 14-15, 17 are rejected under 35 U.S.C. 103 as being unpatentable over Yamagishi et al. (JPS62179706 A, machine translation, hereinafter “’706”) in view of Arioka et al. (JP 2013-061639 A, machine translation, hereinafter “’639”), and Matsuba et al. (JP 2012-124355 A, machine translation, hereinafter “’355”).
Regarding claims 1,4-5: ‘706 teaches a soft magnetic thin plate material comprising permendur composition (Fe-50% Co) (Page 5/6, Example 1, lines 1-15). The composition is then added with a binder, a plasticizer, a dispersant and an organic solvent (Page 3/6, Overview, lines 4-6; Page 5/6, Embodiment 2, lines 1-5) to produce a soft magnetic thin sheet material of a binary system containing Fe having good magnetic characteristics, and having constant thickness and can be easily formed into a desired shape (Page 5/6, Industrial Application Field, lines 13-16). ‘706 does not expressly teach i) the dispersant has a molecular weight of 50,000 or less, and wherein the dispersant is a resin having a graft chain, and ii) a content of the dispersant is 1.0% to 10.0% by mass with respect to a total mass of the composition, wherein the composition absorbs electromagnetic waves in a frequency band of 1 GHz or higher and less than 100GHz when formed into a film.
However, referring to i) ‘639 teaches a photosensitive resin composition comprising the dispersant has a molecular weight of 50,000 or less (Page 59/79, [0195]), and wherein the dispersant is a resin having a graft chain (Page 61/79, [0203]; Pages 61-62/79, [0205]), with benefit of providing a dispersant which is preferably used for dispersing the inorganic filler. Therefore, the dispersant is preferably a polymer dispersant having a group that interacts with the surface of the inorganic filler and having no ethylenically unsaturated group (Page 59/79, [0195]).
Referring to ii),‘355 teaches a composition (Page 7/33, [0009]), comprising: electromagnetic wave absorbing particles, wherein the core-shell particles include Fe-Co-based alloy particles as core (Page 7/33, [0010]), a dispersant (Page 16/33, [0046]; Page 21/33, [0071]) such as surfactant, wherein the content of the surfactant in the paste composition is preferably 0.01% by weight or more and 1% by weight or less (Page 16/22, [0046]), and a solvent (Page 21/33, [0071]), wherein the composition absorbs electromagnetic waves in a frequency band of 1 GHz or higher when formed into a film (Page 8/33, [0014]) with benefit of providing to improve the surface state of the applied film, since when the amount is less than 0.01% by weight, the effect of the surfactant cannot be obtained. If the amount is more than 1% by weight, the surface may become uneven (Page 16/33, [0046]).
In an analogous art of the composition, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the composition by ‘’706 so as to include the dispersant has a molecular weight of 50,000 or less, and wherein the dispersant is a resin having a graft chain as taught by ‘638, and would have been motivated to do so with reasonable expectation that this would result in providing a dispersant which is preferably used for dispersing the inorganic filler. Therefore, the dispersant is preferably a polymer dispersant having a group that interacts with the surface of the inorganic filler and having no ethylenically unsaturated group as suggested by ‘638 (Page 59/79, [0195]). Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two dispersants) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
In an analogous art of the composition, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the composition by ‘’706 so as to include a content of the dispersant is 1.0% to 10.0% by mass with respect to a total mass of the composition, wherein the composition absorbs electromagnetic waves in a frequency band of 1 GHz or higher and less than 100GHz when formed into a film as taught by ‘355, and would have been motivated to do so with reasonable expectation that this would result in providing to improve the surface state of the applied film, since when the amount is less than 0.01% by weight, the effect of the surfactant cannot be obtained. If the amount is more than 1% by weight, the surface may become uneven as suggested by ‘355 (Page 16/33, [0046]).
Regarding claim 7: ‘706 teaches the composition (Page 5/6, Example 1, lines 1-15), wherein a content of the particles is 100 parts corresponding to 61.0% by mass with respect to a total mass of the composition (Page 5/6, Embodiment 2, lines 1-5).
Regarding claim 9: ‘706 teaches the composition Page 5/6, Example 1, lines 1-15), wherein a content of the solvent is 30.5% by mass with respect to a total mass of the composition (Page 5/6, Embodiment 2, lines 1-5). A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (MPEP 2144.05)
Regarding claim 10: ‘706 teaches the composition Page 5/6, Example 1, lines 1-15), wherein a boiling point of the solvent such as butanol is 116-118°C (Page 5/6, Embodiment 2, lines 1-5).
Regarding claim 14: ‘706 teaches a film formed of the composition (Page 5/6, Embodiment 2, lines 1-8).
Regarding claim 15: ‘706 teaches a cured film formed by curing the composition (Page 4/6, Claim 1).
Regarding claim 16: ‘706 teaches an electronic component comprising the cured film formed by curing the composition (Page 5/6, Industrial Application Field, lines 15-16).
Response to Arguments
9. Applicant's arguments filed 02/04/2026 have been fully considered but they are not persuasive,
In response to the Applicant’s argument that ‘639 fails to disclose or suggest the content of the dispersant is 1.0% to 10.0% by mass with respect to a total mass of the composition.
The examiner respectfully disagrees. The rejection is based on the combination of
’355” in view of ’706 and ‘639 or ’706 in view of ‘639, and ‘355. ‘355 teaches a composition (Page 7/33, [0009]), comprising: electromagnetic wave absorbing particles, wherein the core-shell particles include Fe-Co-based alloy particles as core (Page 7/33, [0010]), a dispersant (Page 16/33, [0046]; Page 21/33, [0071]) such as surfactant, wherein the content of the surfactant in the paste composition is preferably 0.01% by weight or more and 1% by weight or less (Page 16/22, [0046]), and a solvent (Page 21/33, [0071]), wherein the composition absorbs electromagnetic waves in a frequency band of 1 GHz or higher when formed into a film (Page 8/33, [0014]) with benefit of providing to improve the surface state of the applied film, since when the amount is less than 0.01% by weight, the effect of the surfactant cannot be obtained. If the amount is more than 1% by weight, the surface may become uneven (Page 16/33, [0046]). Thus, ‘355 clearly teaches the constitution of the current limitation of claim 1.
10. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Examiner Information
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
03/11/2026
bijan.ahvazi@uspto.gov