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 .
Response to Arguments
Applicant's arguments filed 6 November 2025 have been fully considered but they are not persuasive.
Applicant argues that the example references within the rejection does not meet both the pH and the DLS values recited in the instant claims. This is not found to be persuasive because while the reference shows the DLS of 29 nm at a pH of 13 the pH is then adjusted to a pH of 6.5 which is within the range of the instant claims [0104]. As noted from the art [0104] states “the resulting slurry of the iron based oxide magnetic powder of Example 2. The pH of which was controlled to 6.5 by adding a sulfuric acid aqueous solution …”. Applicant states that this is a pretreatment to precipitate the iron based oxide magnetic powder. However, there is nothing in the art drawn to a precipitation. Following the pH adjustment the solution is filtered for collection. If the applicant is alleging that the change in pH as taught in [0104] by Ohkoshi would necessarily result in a change in the particle size from the 29 nm measured in the DLS by comparison with comparative example 3 of the instant specification it would be noted that the comparisons are not sufficient as the methods for pH adjustment are not the same due to the difference in concentration of the sulfuric acid solution.
Accordingly, the rejections of record are maintained.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ohkoshi et al. (JP2019175539, from the IDS dated 9 November 2022, utilizing US 20210300779 as an English translation for reference and citations, hereinafter referred to as “Ohkoshi”).
As to Claim 1: Ohkoshi teaches a slurry of an iron-based oxide with a DLS particle diameter of 65 nm or less [0068] wherein the iron-based oxide is an epsilon-based iron oxide [0029]. Specifically teaching a slurry with a pH of 6.5 wherein the DLS particle diameter is 29 nm ([0104], Table 1)
As to Claims 2 and 3: Ohkoshi teaches the slurry of claim 1 (supra). Ohkoshi further teaches that the average particle diameter via TEM is 21.0 nm which results in a ratio of less than 4 (table 2).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,401,170. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to a dispersed iron oxide magnetic powder slurry and a method of producing the slurry. Wherein the particles can have the same size and .epsilon.-iron oxide structure and are said to be in a slurry.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J OYER whose telephone number is (571)270-0347. The examiner can normally be reached 9AM-6PM EST M-F.
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/Andrew J. Oyer/Primary Examiner, Art Unit 1767