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
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0027632 A1 to Hill et al. (hereinafter Hill).
Regarding claims 1-3 and 5, Hill discloses a ceramic article (para [0004]) for radio frequency applications (para [0035]), the ceramic article being formed of a ceramic material having a chemical formula represented by:
Y1-x-2yBixCa2yFe5-z-yInzVyO12 (para [0004]), where 0 < x < 1.75, 0 < y < 0.8, and
0 < z < 0.7 (para [0006]). The formula in para [0004] contains a typographical error. The value Fe1-z-y is intended to be Fe5-z-y. See the embodiment in para [0007] which is Bi1.4Y0.62Ca0.98Fe4.13V0.47In0.4O12.
This formula overlaps the instantly claimed formula:
Bi1.0+aY2.0-a-2yCa2yFe5-y-zVyInzO12, where 0 < z ≤ 0.5, 0 < y ≤ 0.25, and 0 ≤ a ≤ 0.5, which broadly overlaps the claimed formula. Hill further discloses overlapping amounts of Bi and Y (para [0006]-[0007]), which overlap and encompass overlapping amounts of instantly claimed ranges a > 0, particularly 0.3 ≤ a ≤ 0.5, which includes an “a” of about 4. 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’.
The preamble of the claim recites “for radio frequency applications”, which is an intended use limitation. See MPEP 2111.02(II), which states that ‘To satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim’. In the instant case, Hill teaches that the material can be used in a variety of applications including RF applications (para [0059]). Therefore, the Hill ceramic is deemed capable of performing the intended use.
Regarding claim 4, Hill discloses the ceramic article of claim 1, wherein 0 < z(In) < 0.7 (para [0006]), which overlaps the instantly claimed range of 0.3 ≤ z(In) < 0.5. See MPEP 2144.05(I), cited above.
Regarding claim 6, Hill discloses the ceramic article of claim 1, wherein 0 < y < 0.8 (para [0006]), which overlaps the instantly claimed range of 0.14 ≤ y ≤ 0.25. See MPEP 2144.05(I), cited above.
Regarding claim 7, Hill discloses the ceramic article of claim 1, wherein the ceramic material consists essentially of Bi, Y, Ca, Fe, In, V and O (para [0004] and [0007]).
Regarding claim 8, Hill discloses a ceramic article (para [0004]) for radio frequency applications (para [0035]), the ceramic article being formed of a ceramic material having a chemical formula represented by:
Y1-x-2yBixCa2yFe5-z-yInzVyO12 (para [0004]), where 0 < x < 1.75, 0 < y < 0.8, and 0 < z < 0.7 (para [0006]) that overlaps the instantly claimed formula:
Bi1.0+aY2.0-a-2yCa2yFe5-y-zVyInzO12, where z > 0, y >0, and 0 ≤ a ≤ 0.5, as discussed above. See MPEP 2144.05(I), cited above.
As discussed above, the reference teaches a ceramic with a formula that overlaps the instantly claimed formula Bi1.0+aY2.0-a-2yCa2yFe5-y-2VyInzO12, but is silent regarding the limitation “the ceramic material having a composition such that a normalized change in magnetization (Δ4πMs), defined as Δ4πMs = [(4πMs at 20oC) - (4πMs at 120oC)] / (4πMs at 20oC), is less than about 0.35.” However, 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’. Hill does teach an overlapping formula comprising overlapping amounts of the same elements. The reference also teaches that the ceramics are temperature stable (para [0044]), undergoing less than a 5 gauss change in magnetization per 10oC (para [0063]). Therefore, one of ordinary skill in the art would expect the Hill ceramic to have overlapping properties including but not limited to an overlapping normalized change in magnetization (Δ4πMs), absent evidence to the contrary.
The preamble of the claim recites “for radio frequency applications”, which is an intended use limitation. See MPEP 2111.02(II), cited above. In the instant case, Hill teaches that the material can be used in a variety of applications including RF applications (para [0035]). Therefore, the Hill ceramic is deemed capable of performing the intended use.
Regarding claim 9, Hill discloses the ceramic article of claim 8, wherein the ceramic material has a dielectric constant of at least 30 (para [0004]), which falls within the instantly claimed range of greater than 28.
Regarding claim 10, Hill discloses the ceramic article of claim 8, wherein the ceramic material has a saturation magnetization of at least 1200 Gauss (para [0010]), which overlaps the instantly claimed range of 1550 - 1850 Gauss. MPEP 2144.05(I), cited above.
Regarding claim 11, Hill discloses the ceramic article of claim 8, wherein the ceramic material is a low loss ferrite (para [0108]) but is silent regarding a dielectric loss tangent of less than 0.001. However, the reference does teach a low loss ferrite with an overlapping formula consisting essentially of the same elements, and comprising overlapping amounts of said elements, as discussed above. Therefore, per MPEP 2112.01(I) cited above, one of ordinary skill in the art would expect the Hill ceramic to have overlapping properties including but not limited to a dielectric loss tangent that at least overlaps a range of less than 0.001, absent evidence to the contrary.
Regarding claim 12, Hill discloses the ceramic article of claim 8, wherein the ceramic material has a 3 dB linewidth of below 100 Oe (below about 60 Oe in some embodiments, para [0068]), which overlaps the instantly claimed range of less than 50 Oe. See MPEP 2144.05(I), cited above.
Regarding claim 13, Hill discloses the ceramic article of claim 8, wherein the ceramic material has a Curie Temperature of at least 210°C (para [0010]), which overlaps the instantly claimed range of between 200°C and 300°C. See MPEP 2144.05(I), cited above.
Regarding claim 14, Hill discloses the ceramic article of claim 8, wherein the ceramic article is an isolator or a circulator (para [0032]).
Regarding claim 15, Hill discloses the ceramic article of claim 14, wherein the isolator or the circulator (para [0092]) is a single piece article having a disc (disk 302, 312) shape without being attached to a dielectric ring (Fig. 7A, para [0106]-[0107]).
Regarding claim 16, Hill discloses a radio frequency (RF) circulator (300, Fig. 7A) comprising:
a ceramic disk (302, 312, para [0104]) formed of a ceramic material having a formula represented by:
Y1-x-2yBixCa2yFe5-z-yInzVyO12 (para [0004]), where 0 < x < 1.75, 0 < y < 0.8, and 0 < z < 0.7 (para [0006]), which overlaps the instantly claimed formula:
Bi1.0+aY2.0-a-2yCa2yFe5-y-zVyInzO12, where 0 < z ≤ 0.5, 0 < y ≤ 0.25, and 0 ≤ a ≤ 0.5, as discussed above. See MPEP 2144.05(I), cited above.
As discussed above, the reference teaches a ceramic with a formula that overlaps the instantly claimed formula of Bi1.0+aY2.0-a-2yCa2yFe5-y-2VyInzO12, but is silent regarding the limitation “the ceramic material having a composition such that a normalized change in magnetization (Δ4πMs), defined as Δ4πMs = [(4πMs at 20oC) - (4πMs at 120oC)] / (4πMs at 20oC), is less than about 0.35.” However, see MPEP 2112.01(I), cited above. Hill does teach an overlapping formula comprising overlapping amounts of the same elements. The reference also teaches that the ceramics are temperature stable (para [0044]), undergoing less than a 5 gauss change in magnetization per 10oC (para [0063]). Therefore, one of ordinary skill in the art would expect the Hill ceramic to have overlapping properties including but not limited to an overlapping normalized change in magnetization (Δ4πMs), absent evidence to the contrary.
The preamble of the claim recites “for radio frequency applications”, which is an intended use limitation. See MPEP 2111.02(II), cited above. In the instant case, Hill teaches that the material can be used in a variety of applications including RF applications (para [0035]). Therefore, the Hill ceramic is deemed capable of performing the intended use.
Regarding claim 17, Hill discloses the RF circulator of claim 15, wherein:
0 <z(In)< 0.7 (para [0006]), which overlaps instantly claimed range 0 <z≤ 0.5 (In),
0 < y(V) < 0.8 (para [0006]), which overlaps instantly claimed range y ≤0.25 (V), and overlaps instantly claimed range of a>0, as Bi (x) range overlaps values greater than 0 and the Y and Ca ranges overlap values less than 2 (para [0006]-0007]). See MPEP 2144.05(I), cited above.
Regarding claim 18, Hill discloses the RF circulator of claim 16, wherein the isolator or the circulator (para [0092]) is a single piece article having a disc (disk 302, 312) shape without being attached to a dielectric ring (Fig. 7A, para [0106]-[0107]).
Regarding claim 19, Hill discloses the RF circulator of claim 16, wherein the ceramic material has a dielectric constant of at least 30 (para [0005]), which falls within the instantly claimed range of greater than 28.
Regarding claim 20, Hill discloses the RF circulator of claim 16, wherein the ceramic material has a saturation magnetization of at least 1200 Gauss (para [0010]), which overlaps the instantly claimed range of 1550 - 1850 Gauss. MPEP 2144.05(I), cited above.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-10, and 17-20 of U.S. Patent No. 11,417,450 B2 (hereinafter 450). Although the claims at issue are not identical, they are not patentably distinct from each other because both teach overlapping ceramic materials with overlapping chemical formulas and overlapping amounts of each element in the formulas (instant claims 1-7 and 450 claims 1 and 17-20). The 450 claims are silent regarding a normalized change in magnetization for the aforementioned ceramic material. However, the 450 claims recite overlapping ceramic materials with overlapping chemical formulas and overlapping amounts of each element in the formulas, as discussed above. Therefore, per MPEP 2112.01(I) cited above, one of ordinary skill in the art would expect overlapping normalized changes in magnetization as set forth in instant claims 8 and 16, absent evidence to the contrary. Both teach overlapping dielectric constants, saturation magnetization, and Curie temperatures (instant claims 9, 10, and 13 and 450 claims 4-7, 9, and 10). The 450 claims are silent regarding dielectric loss tangents and 3 dB linewidths as set forth in claims 11 and 12. However, as discussed above, the 450 claims recite overlapping ceramic materials. Therefore, per MPEP 2112.01(I) cited above, one of ordinary skill in the art would expect overlapping dielectric loss tangents and 3 dB linewidths, absent evidence to the contrary. Both teach that the ceramic is an isolator or circulator (instant claims 14-18 and 450 claim 8) with overlapping dielectric constant and saturation magnetization (instant claims 19 and 20 and 450 claims 7-10). Note that the 450 disclosure states that the terms “circulator” and “isolator” can be used interchangeably in col 17, ln 15-17.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of the U.S. Patent Nos. in the table below. Although the claims at issue are not identical, they are not patentably distinct from each other because all teach overlapping ceramic materials with overlapping chemical formulas and overlapping amounts of each element in the formulas (instant claims 1-7). The listed claims are silent regarding a normalized change in magnetization for the aforementioned ceramic material. However, the listed claims recite overlapping ceramic materials with overlapping chemical formulas and overlapping amounts of each element in the formulas, as discussed above. Therefore, per MPEP 2112.01(I) cited above, one of ordinary skill in the art would expect overlapping normalized changes in magnetization as set forth in instant claims 8 and 16, absent evidence to the contrary. Most claims teach overlapping dielectric constants, saturation magnetization, dielectric loss tangents, 3 dB linewidths, and Curie temperatures (instant claims 9-13, 19 and 20). Alternatively, some claims are silent regarding dielectric constants, saturation magnetization, dielectric loss tangents, 3 dB linewidths, and Curie temperatures. However, as discussed above, the listed claims recite overlapping ceramic materials. Therefore, per MPEP 2112.01(I) cited above, one of ordinary skill in the art would expect overlapping dielectric constants, saturation magnetization, dielectric loss tangents, 3 dB linewidths, and Curie temperatures, absent evidence to the contrary. All also teach that the ceramic is an isolator or circulator (instant claims 14-18).
Patent No.
hereinafter
Conflicting claims in Patent
Instant claims
11,787,703 B2
703
1-12
1-20
11,814,301 B2
301
1-18
1-20
11,830,647 B2
647
1-15
1-20
Response to Arguments
Applicant’s arguments, see page 4, filed 12/9/25, with respect to the 112 rejections have been fully considered and are persuasive. The most recent amendments to the claims resolve the issues.
Therefore, the 112(b) rejection of claims 8-20 has been withdrawn.
The 112(d) rejection of claim 17 has also been withdrawn.
Applicant’s arguments, see pages 4-5, filed 12/9/25, with respect to Cruikshank have been fully considered and are persuasive. The newly amended claims require the presence of V. The reference does not teach or suggest the presence of V or wherein y>0.
Therefore, the 103 rejection of claims 1-6, 8, 9 and 11-19 as obvious over Cruikshank has been withdrawn.
Applicant requested that all double patenting rejections be held in abeyance until claims of the present application are determined to be otherwise allowable. No claims are allowed at this time.
Therefore, the obviousness double patenting rejection of claims 1-20 as unpatentable over the claims of 450 stand.
The obviousness double patenting rejections of claims 1-20 as unpatentable over the claims of the patents listed in the table below also stand.
Patent No.
hereinafter
Conflicting claims in Patent
Instant claims
11,787,703 B2
703
1-12
1-20
11,814,301 B2
301
1-18
1-20
11,830,647 B2
647
1-15
1-20
The provisional double patenting rejection over the claims of 13/381779 is a typographical error. The correct application number is 18/381779. This application issued as US 12,387,891 B2 on 8/12/25. However, the effective filing date of the issued patent is 7/14/22, which is later than the effective filing date of the instant application, 9/30/21.
Therefore, the provisional obviousness double patenting rejection of claims 1-20 as obvious over the claims of 779 has been withdrawn.
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 LYNNE EDMONDSON whose telephone number is (571)272-2678. The examiner can normally be reached M-F 10-6:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/L.E./Examiner, Art Unit 1734
/Matthew E. Hoban/Primary Examiner, Art Unit 1734