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 § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the fourth paragraph of pre-AIA 35 U.S.C. 112, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 15 recites that the material comprises said dielectric material or said binder. This limitation is stated in parent claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 2, 5-7, 9-18, 36, and 37 are rejected under 35 U.S.C. 103 as being unpatentable over WO2019/066951 A1 to Sankarasubramanian et al. (hereinafter Sankarasubramanian).
Regarding claims 1 and 15, Sankarasubramanian discloses a composite material (Fig. 1, 110) comprising (i) ferromagnetic metallic particles (140, page 6, ln 26-31), (ii) resistive magnetic material (150, page 7, ln 6-20) and (iii), dielectric material or binder (cured 130, page 6, ln 12-25) in which the particles of (i) or (ii) are embedded, wherein (i) is present in the form of core particles (140) and the other (ii) is present in the form of coating particles (150) which at least in part coat the core particles in part coat the core particles, and wherein a first portion of the coating particles is bound to the core particles and a second portion of the coating particles is embedded in the dielectric (130) material (Fig. 1 and pages 6-7).
The reference does not expressly recite the resistive magnetic material (coating material) as resistive magnetic particles. However, the reference does teach that the coating may be applied by known methods including powder methods such as heating stoichiometric quantities of ferrites with oxides, spark plasma sintering processes and co-precipitation processes. It would therefore be obvious to one of ordinary skill in the art that the resistive magnetic coating materials are selected from a group that includes particles.
Regarding claim 2, Sankarasubramanian discloses the composite material of claim 1, wherein the core particles (140) comprise said ferromagnetic metallic particles and the coating particles (150) comprise said resistive magnetic particles (Fig. 1 and pages 6-7).
Regarding claim 5, Sankarasubramanian discloses the composite material of claim 1, wherein essentially all of the coating particles (2) are bound to the core particles (Fig. 1).
Regarding claim 6, Sankarasubramanian discloses the composite material of claim 1, wherein the core particles have a form selected from spheroids (Fig. 1), which appear to have an aspect ratio (longest dimension to thickness) that at least overlaps the instantly claimed range of about 1:1 to about 10:1. 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 7, Sankarasubramanian discloses the composite material of claim 1, wherein the core particles have an average particle size of less than 450 microns (page 7, ln 5) which overlaps the instantly claimed range of about 50 nm to about 500 micrometers. See MPEP 2144.05(I), cited above.
Regarding claim 9, Sankarasubramanian discloses the composite material of claim 1, wherein the ferromagnetic metallic particles (FeSi, page 6, ln 29) have an electrical resistivity of about 80 microOhm-cm (from Google text search), which falls completely within the instantly claimed range of about 20 microOhm-cm to about 500 microOhm-cm.
Regarding claim 10, Sankarasubramanian discloses the composite material of claim 1, wherein the resistive magnetic particles (for example, Ni-Zn-Fe ferrite, page 7, ln 2) have an electrical resistivity from about 106 to 109 Ohm-cm (from Google text search), which overlaps the instantly claimed range of 108 Ohm-cm to about 1012 Ohm-cm. See MPEP 2144.05(I), cited above.
Regarding claim 11, Sankarasubramanian discloses the composite material of claim 1, wherein the ferromagnetic metallic particles comprise a material selected from a group comprising FeSi, FeNi, and FeCo alloys (page 6, ln 28-31).
Regarding claim 12, Sankarasubramanian discloses the composite material of claim 1, wherein the resistive magnetic particles comprise a material selected from the group consisting of: (i) spinel ferrites of formula [Me1δ,Me21-δ]Fe2O4 wherein 0< δ <1, and wherein Me1δ and Me21-δ are selected from Mn, Ni, Zn, Fe, and combinations thereof (page 7, ln 12-16).
Regarding claim 13, Sankarasubramanian discloses the composite material of claim 1, wherein the resistive magnetic particles comprise a crystal structure of spinel-type (page 7, ln 13-14).
Regarding claim 14, Sankarasubramanian discloses the composite material of claim 1, but is silent regarding the amount of coating particles, particularly wherein the coating particles are present in an amount of greater than 0.01 wt-% and less than 2 wt-% based on the weight of the core particles as 100%. However, see MPEP 2144.05(II)(A), which states that ‘Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical’. One of ordinary skill in the art is expected to arrive at the optimal amount of coating particles to provide the desired coating thickness (page 7, ln 20-23) via routine experimentation, absent evidence to the contrary.
Regarding claim 16, Sankarasubramanian discloses the composite material of claim 1, wherein the material has reduced losses (page 3, ln 18-20) but is silent regarding the limitation “wherein the provides a reduction in core loss of at least about 60%, at least about 70%, or at least about 80% compared to a conventional ferromagnetic core when used in an inductor at any frequency from 10kHz to 5 MHz, or from 10kHz to 10 MHz, or from 10kHz to 50 MHz, or from 10kHz to 100MHz. However, the reference teaches an overlapping composite. 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’. Sankarasubramanian teaches an overlapping composite material. Therefore, one of ordinary skill in the art would expect overlapping reductions in core loss under the same conditions, absent evidence to the contrary.
Regarding claim 17, Sankarasubramanian discloses an electronic device or component comprising the composite material of claim 1 (page 2, ln 14-20).
Regarding claim 18, Sankarasubramanian discloses a method of incorporating the composite material of claim 1 into an electronic device, the method comprising incorporating the composite material into an electronic device selected from the group consisting of an inductor (page 7, ln 26-28), a power supply (page 9, ln 5-8), modules (page 8, ln 9-12), and communication devices (page 9, ln 22-page 10, ln 10).
Regarding claim 36, Sankarasubramanian anticipates the instantly claimed composite material (page 2, ln 14-20). Claim 36 is a product by process claim. It is noted that Sankarasubramanian does not explicitly teach the claimed process as written, however, MPEP 2113 states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
MPEP 2113 also states “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979)”. In the instant case, it is found that the instantly claimed process of making the claimed product does not impart any structural or functional characteristics to the claimed product, absent evidence to the contrary.
The limitations directed to the method for producing the claimed composition are not considered to add patentable weight to the examination of the product claims. It is well settled that if the examiner can find a product in the prior art that is the same or so similar as to have been obvious, the burden can be shifted to the applicant to demonstrate that the process for producing the composition somehow imparts a patentable distinction to the composition under examination.
Regarding claim 37, Sankarasubramanian anticipates the instantly claimed electronic device comprising the composite (page 2, ln 14-20). Claim 37 is a product by process claim. It is noted that Sankarasubramanian does not explicitly teach the claimed process as written, however, see MPEP 2113 cited above.
In the instant case, it is found that the instantly claimed process of making the claimed product does not impart any structural or functional characteristics to the claimed product, absent evidence to the contrary.
The limitations directed to the method for producing the claimed composition are not considered to add patentable weight to the examination of the product claims. It is well settled that if the examiner can find a product in the prior art that is the same or so similar as to have been obvious, the burden can be shifted to the applicant to demonstrate that the process for producing the composition somehow imparts a patentable distinction to the composition under examination.
Response to Arguments
Applicant’s arguments, see pages 8-10, filed 5/21/26, with respect to the claim objections have been fully considered and are persuasive. The most recent amendments to the claims resolve the issues. The amendments to claims 12 and 29 further clarify known spinel [A,B]2O4], garnet [(Y,C)]3Fe5O12, and hexaferrite formulas [Ba,Me](Fe,D)12O19. Notations such as "[A,B]” are understood to mean any combination of A and B.
Therefore, the objection to claims 12, 18, 19, and 29 has been withdrawn.
Applicant’s arguments, see page 8, filed 5/21/26, with respect to the 112(b) rejections have been fully considered and are persuasive. The most recent amendments to the claims resolve the issues.
Therefore, the objection to claims 6, 12, 18, 21, and 29 has been withdrawn.
Applicant’s arguments, see page 9, filed 5/21/26, with respect to Abe have been fully considered and are persuasive. Abe does not teach the particles embedded in the dielectric material as required in the newly amended claims.
Therefore, the 102(a)(1) rejection of claims 1, 2, 9, 11-13, 17-20, 26, 28-30, 32, 36, and 37 as anticipated by Abe has been withdrawn.
The 102(a)(1) rejection of claim 5 as anticipated by Abe is moot because the claim has been canceled.
The 103 rejection of claims 6-8, 10, 14, 16, 21, 22, 24, 25, 27, and 31 as obvious over Abe has been withdrawn.
The 103 rejection of claims 33-35 as obvious over Abe is moot because the claims have been canceled.
The 103 rejection of claim 23 as obvious over Abe in view of Ma has also been withdrawn.
Applicant’s arguments, see page 9, filed 5/21/26, with respect to Lanphere have been fully considered and are persuasive. Lanphere does not teach the ferrite coating in particle form, particularly particles embedded in the dielectric material as required in the newly amended claims. The reference teaches the coating applied as a liquid suspension and not as solid particles.
Therefore, the 103 rejection of claims 1-4, 6-10, and 12-15 as obvious over Lanphere has been withdrawn.
The 103 rejection of claim 4 as obvious over Lanphere is moot because the claims have been canceled.
Allowable Subject Matter
Claims 3 and 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art, Sankarasubramanian, teaches a composite comprising a ferromagnetic core coated with resistive magnetic particles but does not teach or suggest a resistive magnetic core coated with ferromagnetic particles. Neither does the reference teach or suggest resistive magnetic particles with the instantly claimed diameter.
Claims 19-32, 36, and 37 are allowed.
The following is an examiner’s statement of reasons for allowance: The closest prior art, Sankarasubramanian, teaches a method of making a composite comprising a ferromagnetic particle coated with a resistive magnetic particles and embedded in a dielectric material but does not teach or suggest that the resistive, coating material is in present in unbound form.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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.
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/L.E./Examiner, Art Unit 1734
/Matthew E. Hoban/Primary Examiner, Art Unit 1734
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