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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-9 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Souriou et al. (“Influential parameters on electromagnetic properties of nickel–zinc ferrites for antenna miniaturization”, 2010) (Souriou) in view of Huizing et al. (EP 0247681 A1) (Huizing) and Manova et al. (“Mechanochemical synthesis and characterization of nanodimensional iron–cobalt spinel oxides”, 2009) (Manova).
Regarding claims 1-3 and 5-6, Souriou teaches Ni-Zn-Co ferrite nanopowders prepared through coprecipitation, the method comprising mixing nickel chloride, zinc chloride, and iron (III) chloride and pouring these solutions into a boiling solution of NaOH (i.e., obtaining a precipitate of iron, nickel, zinc, and cobalt hydroxides by coprecipitation) (i.e., claim 6). After coprecipitation, pH is set between 11.5 and 12, which was found to be optimal for precipitation. The reaction is continued for 30 minutes and then cooled to ambient temperature, centrifuged, dried in an electrical oven (i.e., drying the rinsed precipitate), and calcined to obtain a ferrite powder (i.e., obtaining a powder). The powder is compacted by uniaxial pressing into a toroidal shape (i.e., forming into a compact by pressing the powder), followed by sintering in air for 1 hour at a heating rate of 300 °C/h to a maximum temperature of 1000°C, which falls within the claimed range, and were subsequently cooled at a cooling rate of 600 °C/h to room temperature (i.e., sintering the compact through a progressive temperature rise to a maximum temperature comprised between 950°C and 1010°C, maintaining the temperature for 45 minutes to an hour and 15 minutes, and a progressive fall in temperature to reach ambient temperature) (i.e., claim 2) (Souriou, p. 1, II. Experimental Procedure).
Although there are no disclosures on the progressive temperature rise and fall being 2°C to 4°C per minute, or 3°C per minute (i.e., claim 3) as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the temperature rise and fall rate, including over the amounts presently claimed, in order to effectively sinter and cool the powder.
However, Souriou does not explicitly teach (a) rinsing the precipitate in order to obtain a rinsed precipitate and (b) grinding the rinsed precipitate in order to obtain a powder.
With respect to the difference (a), Huizing teaches the synthesis of Co-Zn ferrite by coprecipitation, wherein a precursor solution of iron, zinc, and cobalt is prepared and added to an aqueous NaOH solution. After coprecipitation, the suspension was washed (Huizing, Col. 3, lines 35-53).
As Huizing expressly teaches, the washing is performed in order to neutralize the pH of the suspension (Huizing, Col. 3, lines 50-52; claim 5).
Huizing is analogous art as it is drawn to synthesis of ferrites by coprecipitation (Huizing, Abstract).
In light of the motivation of washing the suspension as disclosed by Huizing, it therefore would have been obvious to one of ordinary skill in the art to modify the method of Souriou by washing the precipitates after coprecipitation in order to neutralize the pH, and thereby arrive at the claimed invention.
With respect to the difference (b), Manova teaches the synthesis of iron-cobalt spinel oxides includes ferrites (Manova, Abstract), wherein the synthesis includes coprecipitation and mechanical milling of the coprecipitated precursors prior to heating (Manova, p. 356, Experimental).
As Manova expressly teaches, after 1 hour of mechanical milling, ferrites are formed, and longer milling induces an increase in crystal size while defects decrease with treatment time (Manova, Abstract).
Manova is analogous art as it is drawn to the synthesis of ferrites through coprecipitation (Manova, Abstract).
In light of the motivation of milling (i.e., grinding) as disclosed by Manova, it therefore would have been obvious to one of ordinary skill in the art to modify the method of Souriou by grinding the dried precipitates in order to increase crystal size while decrease crystal defects, and thereby arrive at the claimed invention.
Regarding claims 4 and 8, Souriou, in view of Huizing and Manova, teaches the method according to claim 1 and claim 6, wherein the washing comprises suspending the precipitate in water at a temperature of 70 to 95°C (Huizing, claim 5) (i.e., each cleaning operation comprising a dilution with water), which falls within the claimed range, and further wherein the washing continues until the pH is less than 8 (Huizing, Col. 3, lines 50-52) (i.e., claim 8). Therefore, a succession of washings is disclosed by Huizing in order to decrease the pH of the suspension and would correspond to one cleaning per day as the time frame for cleaning is not restricted.
Regarding claim 5, Souriou, in view of Huizing and Manova, teaches the method according to claim 1, calcination prior to grinding to form a powder (Souriou, p. 1, II. Experimental Procedure; Manova, p. 356, Experimental) (i.e., the method does not comprise calcination of the powder).
Regarding claim 7, Souriou, in view of Huizing and Manova, teaches the method according to claim 6, wherein as Souriou, in view of Huizing and Manova, teaches the method of forming a nickel zinc cobalt spinel ferrite that is substantially identical to the claimed method, the claimed reactions implemented in the obtaining the precipitate would inherently occur in the method of Souriou, in view of Huizing and Manova.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 9, Souriou, in view of Huizing and Manova, teaches the method according to claim 1, wherein the uniaxial pressing into a toroidal shape (Souriou, p. 1, II. Experimental Procedure) corresponds to the operation of die-stamping and compressing of the powder into a powder bed, as die-stamping is the process of shaping a metal by pressing with a die and in Souriou, the powder is pressed into a toroidal shape, i.e., a toroidal shaped die. Further, a person of skill in the art would know to eject the compacted powder in order to use the final product (i.e., operation of ejecting the compact).
Regarding claim 11, Souriou, in view of Huizing and Manova, teaches the method according to claim 1, wherein the sintering takes place for an hour (Souriou, p. 1, II. Experimental Procedure), which falls within the claimed range.
Regarding claim 12, Souriou, in view of Huizing and Manova, teaches the method according to claim 1, wherein the maximum temperature for sintering is 1000°C (Souriou, p. 1, II. Experimental Procedure). The only deficiency of Souriou in view of Huizing and Manova is that Souriou discloses the use of 1000°C for sintering, while the present claims require 995°C for sintering.
It is apparent, however, that the instantly claimed amount of 995°C and that taught by Souriou are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of 1000°C disclosed by Souriou and the amount disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the amount of 995°C, it therefore would have been obvious to one of ordinary skill in the art that the amount of 995°C disclosed in the present claims is but an obvious variant of the amounts disclosed in Souriou, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Response to Arguments
In light of applicant’s amendments to the claims, the previous claim objections and 35 U.S.C. 112(b) rejections over claims 1-9 are withdrawn from the record.
Applicant primarily argues:
“There is not sufficient information in the present record for a person having ordinary skill in the art to conclude (reasonably) that the claimed features (as amended) would have been unpatentable over the applied reference.
For example, in addition to the deficiencies relating to SOURIOU noted by the Office Action (e.g., at point 17, which states that "However, Souriou does not explicitly teach (a) rinsing the precipitate in order to obtain a rinsed precipitate and (b) grinding the rinsed precipitate in order to obtain a powder."), nowhere does SOURIOU describe or fairly suggest that for the sintering step of the compact, a progressive temperature increase at a rate of 2°C to 4°C per minute could or should be employed, much less such features in combination with a progressive temperature decrease at a rate of 2°C to 4°C per minute down to room temperature AND maintaining at the maximum temperature for forty-five minutes to three hours (i.e., the recited "hold" at the maximum temperature).
Instead, in SOURIOU's sintering step, as the Examiner acknowledges, the values are 300°C/h (i.e., 5°C/min) on heating and 600°C/h (i.e., 10°C/min) on cooling. These two values are clearly well outside the claimed ranges (2°C/min to 4°C/min). In addition to such deficiencies, the "hold" at the maximum temperature as recited in the claimed invention is not described and/or fairly suggested in the applied references either. As such, the "general conditions"/temperature profile used during sintering of the rejected claims is NOT fairly described in the prior art and the Examiner's reliance on the case law cited at point 16 of the Office Action is improper/misplaced. Thus, for at least these reasons, there are evidentiary gaps in the rejection of the claims (as amended) that are fatal to a prima facie case of unpatentability and the rejection should be withdrawn.
Here, Applicant notes that the temperature profile used during sintering is essential to obtaining the desired properties of the resulting material (e.g., the claimed invention relates to a process for obtaining a nickel-zinc-cobalt spinel ferrite in ceramic form where the purpose is to obtain a spinel ferrite ceramic material particularly suitable for antenna formation (e.g., a V/UHF antenna) with the objective of reducing antenna size (the material is advantageously magneto- dielectric and has the desired properties at the frequencies of interest, including in particular high permeability, low losses, and low conductivity)).”
Remarks, p. 6-7
The examiner respectfully traverses as follows:
Firstly, absent evidence of criticality regarding the temperature increase and decrease rates, the rejection over these values as a result effective variable stands.
Although there are no disclosures on the amounts of the progressive temperature rise and fall being 2°C to 4°C per minute as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the temperature rise and fall rate, including over the amounts presently claimed, in order to effectively sinter and cool the powder.
Secondly, applicant argues that a temperature hold is not taught by Souriou, however, the examiner respectfully disagrees. It is the examiner’s interpretation that as Souriou teaches the powder is sintered for 1 hour, and the rate to reach the sintering temperature of 1000°C is 300°C/hour, therefore, it takes over 3 hours to reach the sintering temperature which is then held for 1 hour.
Further, applicant argues that the temperature profile used during sintering is essential to obtaining the desired properties of the resulting material. However, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding the sintering profile must be supported by a declaration or affidavit. As set forth in MPEP 716.01(c), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
Applicant further argues:
“In addition, while claim 1 recites "drying and grinding the rinsed precipitate", SOURIOU proposes centrifugation of the rinsed precipitate.
The key point is that drying of the rinsed precipitate, instead of centrifugation, is an important step. In this regard, centrifugation separates the particles formed by coprecipitation from the liquid, but Applicant observed that, despite care taken during this step, a small fraction of the smallest particles always remains on the sides of the tubes. These small-average-diameter particles play a major role during subsequent thermal treatments (sintering), due to their high reactivity (linked to the surface/volume ratio, which is relatively large).
According to claim 1, drying (for example, performed in an oven, as detailed in the embodiments in the application) allows for evaporation of the liquid while preserving the small- diameter particles. Such a concept is not fairly suggested in the applied references.”
Remarks, p. 7
The examiner respectfully traverses as follows:
While applicant argues that Souriou does not teach drying the precipitate, Souriou explicitly teaches the residue is dried in an electrical oven (Souriou, p. 1, II. Experimental Procedure, Paragraph 2).
Further, while applicant argues no centrifugation is used in the method to separate particles formed from coprecipitation, the claims recite a method “comprising”, therefore additional steps, including centrifugation, are not excluded as presently claimed.
Applicant further argues:
“The deficiencies of SOURIOU are not cured by the other applied references.
For example, regarding the differences identified by the Examiner over SOURIOU, the Office Action states that HUIZING discloses, in ferrite preparation by coprecipitation, that the precipitate is rinsed to obtain a rinsed precipitate. HUIZING indicates that the suspension was continuously washed with water until the pH was below 8; after washing, the suspension was heated to 300°C (corresponding to the range "initial temperature greater than or equal to 70°C" as in the present application), then cooled. The Examiner concludes (See Office Action, point 18) that in view of HUIZING, a skilled person would be motivated to add a rinsing step to SOURIOU. Applicant disagrees.
As mentioned above, the claimed invention relates to a process for obtaining a nickel- zinc-cobalt spinel ferrite in ceramic form. The purpose is to obtain a spinel ferrite ceramic material particularly suitable for antenna formation (e.g., a V/UHF antenna) with the objective of reducing antenna size. The material is advantageously magneto-dielectric and has the desired properties at the frequencies of interest, including in particular high permeability, low losses, and low conductivity.
Conversely, HUIZING concerns a magnetic material used in magnetic recording and information reading, composed of ferrite particles with composition A1-yZnyFe2O4 where A represents one or more divalent metal ions that can be Co, Fe, Ni, Mn and Mg, and is preferably CoII (See HUIZING, col. 1, lines 3-7; col. 1, lines 56-58). The purpose of HUIZING is to provide ferrite particles intended to be used as magnetic storage elements in a recording medium with high information density (col. 1, lines 22-24). The material is characterized by monodisperse ferrite particles having an average particle size between 10 and 50 nm, and y between 0.05 and 0.20; small dimensions and monodispersity enable high information density (See HUIZING, col. 1, lines 32-40).
As such, one skilled in the art would recognize that it is clear that the claimed invention differs from HUIZING in terms of the materials to be prepared, their uses, and the corresponding required properties. Therefore, even if HUIZING suggests rinsing a precipitate, HUIZING does not provide any technical motivation that would have led a person skilled in the art to apply such rinsing in the methodology of SOURIOU for the present objective.
Moreover, HUIZING proposes centrifugation but does not fairly describe drying, and HUIZING does not suggest the claimed temperature profile(s). Thus, HUIZING does not cure the deficiencies of SOURIOU (i.e., at least regarding the recited drying and the ramp/hold parameters).”
Remarks, p. 8-9
The examiner respectfully traverses as follows:
It is noted that while Huizing does not disclose all the features of the present claimed invention, Huizing is used as a teaching reference, namely to teach rinsing the precipitate, in order to neutralize the pH of the suspension, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Applicant further argues:
“Regarding grinding of the precipitate, MANOVA discloses such grinding. For completeness, we can argue that extracting this step from MANOVA and inserting it into SOURIOU is an artificial combination. Please present this argument "for the record", while keeping the primary emphasis on (i) the temperature ramp/hold profile and (ii) drying (instead of centrifugation) and their technical significance.
Furthermore, regarding MANOVA, nothing in MANOVA fairly suggests the
combination of features recited in the claimed invention particularly, in terms of: (i) the temperature ramp/hold profile, and (ii) drying (instead of centrifugation) and their technical significance. As such, and even if MANOVA may allegedly describe the concept of grinding of the precipitate in order to obtain a powder, the claimed combination of features cannot be derived and/or fairly gleaned from the applied references, even taken in combination (e.g., extracting the necessary methodology from MANOVA and inserting it into the methodology of SOURIOU is an artificial combination and impermissible hindsight provides the only discernible reason for modifying SOURIOU in the manner necessary to arrive at the claimed combination of features).”
Remarks, p. 9-10
The examiner respectfully traverses as follows:
Firstly, it is the Examiner’s position that hindsight was not used given both Souriou and Manova are both drawn to the synthesis of ferrites through coprecipitation, and given that the motivation to combine Manova with Souriou comes from Manova itself, namely, in order to increase crystal size while decreasing crystal defects, as set forth in item #10 above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Catriona Corallo whose telephone number is (571)272-8957. The examiner can normally be reached Monday-Friday, 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu Fung can be reached at (571)270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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