DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/20/2026 has been entered.
Claim Rejections - 35 USC § 103
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.
The instant claims contain the transitional phrase “comprising”. Per MPEP 2111.03 ‘The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps'. This open-ended definition has been taken into consideration in the following rejections.
Claims 1, 5, 7, 9-11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over US 2006/0083694 A1 to Kodas et al. (hereinafter Kodas).
Regarding claim 1, Kodas discloses a magnetic particle-containing composition (para [0002]) comprising:
nanoparticles selected from a group that includes magnetic particles (para [0078]) such as ferrite (Table 4) having a plurality of peak tops in a particle size distribution curve showing a volume-based frequency distribution (multi-modal, para [0102]);
a resin (polymer) that has a repeating unit (monomer) having a grafted chain (para [0037]); and
a solvent (liquid medium/vehicle, para [0035] and [0123]).
The magnetic particles are selected from a variety of ceramic materials (para [0078]). It would be obvious for one of ordinary skill in the art to select magnetic particles, particularly ferrites, for magnetic applications, such as magnetic pigments for magnetic inks (para [0091]).
Regarding claim 5, Kodas discloses the magnetic particle-containing composition according to claim 1, wherein the magnetic particles have two peak tops (bimodal, para [0102]).
Regarding claim 7, Kodas discloses the magnetic particle-containing composition according to claim 1, wherein the resin has an acid group (para [0044]), a basic group (para [0044]), or an amide group (para [0045]).
Regarding claim 9, Kodas discloses a magnetic particle-containing film formed of the magnetic particle-containing composition of claim 1 (para [0103]).
Regarding claim 10, Kodas discloses an electronic component (circuit features or components) comprising: the magnetic particle-containing film according to claim 9 (para [0188]).
Regarding claim 11, Kodas discloses the electronic component according to claim 10, wherein the electronic component is used as an inductor (para [0188]).
Regarding claim 13, Kodas discloses the magnetic particle-containing composition according to claim 1, wherein the graft chain contains at least one kind of structure selected from a group comprising a polyester structure and a polyether structure (para [0037]).
Claims 1-12 are rejected 35 U.S.C. 103 as being unpatentable over US 2018/0204657 A1 to Shinkai et al. (hereinafter Shinkai) in view of US 2017/0271062 A1 to Furukawa (hereinafter Furukawa).
Regarding claim 1, Shinkai discloses a particle-containing composition (material, para [0008]) comprising:
magnetic particles having a plurality of peak tops in a particle size distribution curve showing a volume-based frequency distribution (para [0008] and Fig. 1);
an acrylic resin (para [0039]); and
a solvent (para [0039]).
Shinkai further discloses that the magnetic particles contain soft magnetic powders comprising iron (Fe) including alloys (para [0031]). The reference does not expressly disclose ferrite.
However, Furukawa does teach a magnetic particle-containing composition (para [0022]) comprising soft magnetic powders comprising iron (Fe) including alloys and ferrite (para [0023]).
It would be obvious to one of ordinary skill in the art to employ Fe containing soft magnetic powders comprising ferrite, as set forth in Furukawa, as the soft magnetic powder of Shinkai to facilitate formation of a magnetic film with excellent magnetic properties (Furukawa, para [0020]) for use in induction systems (Furukawa, para [0130] and Shinkai, para [0042]).
As discussed above, Shinkai discloses an acrylic resin but does not further define the resin.
However, Furukawa does teach an acrylic resin that has a repeating unit (monomer) having a graft (branched) chain (alkyl group) (para [0054]).
It would be obvious to one of ordinary skill in the art to employ the Furukawa acrylic resin with a grafted chain as the acrylic resin of Shinkai as acrylics with straight chains and acrylics with grafted chains are disclosed as obvious alternatives (Furukawa, para [0054]). It would also be obvious to employ the optimal resin that provides a soft magnetic composition with excellent magnetic properties that is also capable of suppressing the occurrence of gaps (Furukawa, para [0012]).
Regarding claim 2, Shinkai in view of Furukawa discloses the magnetic particle-containing composition according to claim 1. Shinkai further discloses wherein in a case where Dmin (Vβ) represents a particle diameter at a peak top Pmin where a particle diameter is minimized and Dmax (Vα) represents a particle diameter at a peak top Pmax where a particle diameter is maximized among the plurality of peak tops in the particle size distribution curve showing a volume-based frequency distribution, a ratio of the Dmax (Vα) to the Dmin (Vβ) is 2.0 or more and 5.1 or less (para [0026]), which closely overlaps the instantly claimed range of more than 2. See MPEP 2144.05(I), which states that ‘In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists’.
Regarding claim 3, Shinkai in view of Furukawa discloses the magnetic particle-containing composition according to claim 1, but is silent regarding the limitation ‘wherein in a case where Dmin represents a particle diameter at a peak top Pmin where a particle diameter is minimized among the plurality of peak tops in the particle size distribution curve showing a volume-based frequency distribution, the Dmin is equal to or greater than a particle diameter D20 having a frequency of 20% in the particle size distribution curve showing a volume-based cumulative distribution’. However, Shinkai in view of Furukawa renders the composition obvious. Shinkai also discloses a closely overlapping Dmax to Dmin ratio, as discussed above. See MPEP 2112.01(I), which states that ‘Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established…"When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."…Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product’. Shinkai in view of Furukawa teaches the composition and teaches overlapping particle sizes and size distributions. Therefore, one of ordinary skill in the art would expect an overlapping Dmin and overlapping frequency at D20, absent evidence to the contrary. It would also be obvious to one of ordinary skill in the art to control the frequency of Dmin particles to efficiently fill spaces between the larger (Dmax) particles and thereby improve permittivity and DC superimposition (para [0009]).
Regarding claim 4, Shinkai in view of Furukawa discloses the magnetic particle-containing composition according to claim 2. Shinkai further discloses wherein the Dmin (Vβ) is 0.5 to 5 µm, which overlaps the instantly claimed range of 1 to 10 µm. See MPEP 2144.05(I), cited above
Regarding claim 5, Shinkai in view of Furukawa discloses the magnetic particle-containing composition according to claim 1. Shinkai further discloses wherein the magnetic particles have two peak tops (Fig. 1).
Regarding claim 6, Shinkai in view of Furukawa discloses the magnetic particle-containing composition according to claim 1. Shinkai further discloses wherein a content of the magnetic particles is 65 to 83% by mass (para [0038]), which falls completely within the instantly claimed range of 60% by mass or more with respect to a total mass of the magnetic particle-containing composition.
Regarding claim 7, Shinkai in view of Furukawa discloses the magnetic particle-containing composition according to claim 1. Shinkai discloses the resin as selected from a group that includes acrylic resin (para [0039]) but is silent regarding the limitation “wherein the resin has an acid group, a basic group, or an amide group”.
However, Furukawa does teach a magnetic particle-containing composition comprising magnetic particles, a resin and a solvent (para [0093]). The resin is an acrylic resin wherein the resin has an acid group (para [0056]-[0057]).
It would be obvious to one of ordinary skill in the art to employ the Furukawa acrylic resin containing an acid group as the acrylic resin in the Shinkai composition to suppress the occurrence of gaps/spaces and ultimately improve the magnetic properties (Furukawa, para [0058] and Shinkai, para [0039] and [0058]) of films and inductors comprising said composition (Furukawa, para [0128]-[0130] and Shinkai, para [0014] and [0037]).
Regarding claim 8, Shinkai in view of Furukawa discloses the magnetic particle-containing composition according to claim 1, but is silent regarding the limitation “wherein a solubility of the resin in the solvent is 10 g/L or more”.
However, it would be obvious to one of ordinary skill in the art to optimize the solubility of the resin in the solvent to provide homogeneous coatings with the desired viscosity (Shinkai, para [0040]).
Regarding claim 9, Shinkai in view of Furukawa discloses a magnetic particle-containing film formed of the magnetic particle-containing composition according to claim 1 (Shinkai, para [0043]).
Regarding claim 10, Shinkai in view of Furukawa discloses an electronic component comprising:
the magnetic particle-containing film according to claim 9 (Shinkai, para [0043]).
Regarding claim 11, Shinkai in view of Furukawa discloses the electronic component according to claim 10. The claim recites an intended use limitation “the electronic component is used as an inductor”. The electronic component is taught by Shinkai in view of Furukawa. Shinkai further discloses the film used as an inductor (Shinkai, para [0043]). Therefore, the Shinkai/Furukawa electronic component is deemed capable of use as an inductor.
Regarding claim 12, Shinkai in view of Furukawa discloses the electronic component according to claim 10. The claim recites an intended use limitation “the electronic component is used as an antenna”. The electronic component is taught by Shinkai in view of Furukawa. Furukawa further teaches the film used as an antenna (Furukawa, para [0128]). Therefore, the Shinkai /Furukawa electronic component is deemed capable of use as an antenna.
Response to Arguments
Applicant's arguments filed 2/20/2026 have been fully considered but they are not persuasive. Applicant argues that neither Shinkai nor Furukawa teach a resin having a repeating unit having a graft chain as required by newly amended claim 1. However, secondary reference, Furukawa, does teach an acrylic resin comprising grafted (branched) alkyl chains (para [0054]).
Therefore, the 103 rejection of claims 1-12 as obvious over Shinkai in view of Furukawa stands.
The references do not teach polyether or polyester structures as set forth in new claim 13.
Conclusion
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/L.E./Examiner, Art Unit 1734
/Matthew E. Hoban/Primary Examiner, Art Unit 1734