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 .
Status of Claims
Claims 1-20 are pending where claims 1, 6 and 14-17 have been amended. Claims 6-9 and 14-19 are withdrawn from consideration and claims 1-5, 10-13 and 20 remain for examination on the merits.
Status of Previous Rejections
The previous 35 USC § 103 rejections of the claims over CN111101076A to Dong et al have been withdrawn in view of amendments to the claims.
The previous 35 USC § 103 rejections of the claims over CN110295322A to Fan et al have been maintained.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-5, 10-13 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 110295322-A to Fan et al (cited in previous office action, the English language machine translation cited in previous office action has been relied upon for examination purposes).
Regarding claim 1, Fan discloses an Fe-based amorphous nanocrystalline alloy comprising the following composition (Fan, abstract, para [0009, 0016]), which lies close to the instantly claimed composition as follows:
Element
Claimed at%
Fan at%
Overlaps?
B
8-12
10.5-11.5
Yes
Si
0.2-0.9
0.4-0.6
Yes
P
2.0-6.0
1-4
Yes
C
0.5-4
>0-<0.5
Close at 0.5
Cu
0.6-1.3
0.6-0.7
Yes
Nb
0.6-0.9
0-2
Yes
Fe
Balance
Balance
Yes
Cu/Nb
1-1.4
≥0.3*
Yes
*calculated from Nb and Cu ranges of Fan
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Fan including the instantly claimed because Fan discloses the same utility throughout the disclosed ranges.
Regarding the instantly claimed C content, 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 (See MPEP 2144.05 I). See In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs/ft3 and 25 lbs/ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.) In the instant case, the carbon content of Fan of 0<C<0.5 is so mathematically close to the instantly claimed range of 0.5≤C≤4 that the difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality.
Regarding the instantly claimed Cu/Nb ratio, the instantly claimed ratio fully depends on the composition of the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v.Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. In the instant case, as the alloy of Fan is capable of falling within the boundaries of the instantly claimed ratio, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected any portion of the disclosed ranges of each element of Fan including those which fall within the boundaries of the instantly claimed composition based formulas because Fan discloses the same utility throughout the disclosed ranges.
Regarding claim 2, the alloy of Fan is in the shape of a continuous thin strip shape (Fan, para [0033]). Although the exemplary strips are less than 30 µm, where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (see MPEP 2144.04 IV A).
Regarding claims 3-5 and 11-13, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. 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 (see MPEP 2112.01 [R-3].) In the instant case, the alloy of Fan would be expected to have the same or similar properties as the instantly claimed alloy because the alloy of Fan has the same or substantially the same composition and structure.
Regarding claims 10 and 20, Fan discloses that the alloy may be made into a magnetic component (Fan, para [0005]).
Response to Arguments
Applicant's arguments filed 6/10/2026 have been fully considered but they are not persuasive.
Applicant argues that the instant claims are patentable over Fan because the specific examples of Fan are outside of the instantly claimed ranges. This is not found persuasive because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP 2123 [R-5]). Although Fan does not explicitly list specific examples of alloys falling within the instantly claimed ranges, the broader teachings of Fan reasonably suggest alloys falling within the instantly claimed ranges and as such Fan presents a prima facie case of obviousness over the instantly claimed alloy
Applicant argues that Fan does not disclose the Cu/Nb ratio as a result-effective variable. This is not found persuasive In KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103."). Thus, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process” (see MPEP 2144.05 II B). In the instant case, regarding the instantly claimed Cu/Nb ratio, the instantly claimed ratio fully depends on the composition of the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v.Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. In the instant case, as the alloy of Fan is capable of falling within the boundaries of the instantly claimed ratio, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected any portion of the disclosed ranges of each element of Fan including those which fall within the boundaries of the instantly claimed composition based formulas because Fan discloses the same utility throughout the disclosed ranges.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN D WALCK whose telephone number is (571)270-5905. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM.
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/BRIAN D WALCK/Primary Examiner, Art Unit 1738
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