DETAILED ACTION
Response to Amendment
Amendments, filed on March 20, 2023, have been entered in the above-identified application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Analysis
The present application contains one active independent claim(s) (claim 1) and nine active dependent claims (claims 2 - 10).
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Regarding the limitation(s) of claim 2, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants’ specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, the steel powder must include >0 mass% of at least one of Si and Cr, as well as being 6.5 mass% or less.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 – 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a content of the epoxy resin being 2 – 5 mass% based on the total mass of the Fe-based soft magnetic powder, the epoxy resin, the solid lubricant and the inorganic insulating film (per Paragraph 0035 of the as-filed disclosure), does not reasonably provide enablement for the epoxy being 2 – 5 mass% based on just the resins in the composition. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims. This rejection can be overcome by amending claim 1 to positive recite that the mass % is determined based on the recitation above, which draws support from Paragraph 0035 of the as-filed disclosure.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION — The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 3 – 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
The term “low-alloy” in claim 1 is a relative term which renders the claim indefinite. The term “low-alloy” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of evaluating the prior art, the Examiner has interpreted ‘low alloy’ steel as any alloy comprising at most 6.5% of additional elements; i.e. at least 93.5% Fe (as required by claim 2).
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 of this title, 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 pre-AIA 35 U.S.C. 103(a) 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claims 1 – 10 are rejected under 35 U.S.C. 103(a) as being unpatentable over Harano et al. (U.S. Patent App. No. 2017/0297096 A1) in view of Blettner et al. (WO 2011/117783 A2) and one or both of Kim et al. (U.S. Patent App. No. 2014/0265716 A1) and/or Sik et al. (KR 2018/084207 A), the above evidenced by Ishida et al. (U.S. Patent App. No. 2021/0313100 A1). See provided English Abstract Translation of KR ‘207 A.
Regarding claim 1, Harano et al. disclose a magnetic core material (Title; Abstract) comprising: an Fe-based soft magnetic powder (Paragraph 0025) in which an inorganic insulating film is provided on surfaces of Fe-based soft magnetic particles (Paragraph 0025 – 0027); an epoxy resin material (Title; Abstract; example); wherein the epoxy resin material includes a curing agent and an epoxy resin (Figures and example; see also Paragraph 0031), the Fe-based soft magnetic particles are a pure iron powder or a low-alloy steel powder (Paragraph 0025), and a content of the epoxy resin material is 2 mass% or more and 5 mass% or less (Paragraph 0035 and example).
Harano et al. fail to disclose using a solid lubricant and a mixture of epoxy resins resin includes a bisphenol A-type epoxy resin and a novalac-type epoxy resin.
However, Blettner et al. teach that it is conventional to use solid lubricants when forming similar epoxy-novolak + magnetic powder compositions to aid in making the part, as well as in the properties (pages 6 -7 of WO document). Regarding the use of mixtures, Kim et al. disclose that mixtures of epoxy resins, including mixtures of novalac and bisphenol-A type epoxy resins is functionally equivalent to using a single resin (at least Paragraph 0078) – again, in similar epoxy + magnetic powder applications. Sik et al. is more explicit, teaching that one should use a mixture of a novalac epoxy resin and a bisphenol A type resin inorder to provide good durability and heat resistance to the inductor compound (See English Abstract provided). Furthermore, Sik et al. provides additional guidance for the amount of epoxy resin (up to 4 wt% recited) in the magnetic composition.
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Harano et al. to use an amount and mixture type of epoxy resin as claimed, as taught by Kim et al. and/or Sik et al., since mixtures of epoxy resins are known in the art and the use of the claimed novalac and bisphenol A-type epoxy resins is known to provide good durability and heat resistance. Likewise, Blettner et al. renders obvious the use of a solid lubricant to aid in making the part and to provide improved properties. It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Harano et al. to use an amount and mixture type of epoxy resin as claimed, as well as a solid lubricant in order to provide a magnetic composition that is easier to manufacture and has improved properties, including durability and heat resistance.
Regarding the exact amount of epoxy resin used, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the mass % of the epoxy mixture + curing agent through routine experimentation, especially given the teaching in Harano et al. and Sik et al. above. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 2, while Harano et al. disclose similar steel alloys (Paragraph 0025), they do not disclose the mass% of Si or Cr. However, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the mass % of the Si and/or Cr in a ‘low-alloy’ steel powder through routine experimentation, especially given the teaching in Kim et al. regarding similar “low-alloy’ steel powders used in inductor applications (at least Table 2). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 3, these limitations are met by the citations above (with regard to claim 1) and the optimization of the mass% epoxy as set forth above.
Regarding claim 4, Harano et al. teaches a similar size requirement (Paragraph 0028), as does Kim eta l. (at least Paragraph 0087). Regarding the exact D50 size of the magnetic powder, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the D50 median diameters through routine experimentation, especially given the teaching in Harano et al. and Kim et al. above. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 5, Harano et al. disclose curing the composition (at least Figures and example).
Regarding claim 6, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the relative permeability of the core through routine experimentation, especially given the knowledge in the art that relative permeability is important and that values within the claimed range are acceptable for magnetic inductor cores, as evidenced by at least Ishida et al. (Table 1). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 7, Harano et al. disclose the claimed property magnitude (Table 1) and the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the claimed property of the core through routine experimentation, especially given teaching that values within the claimed range are acceptable for magnetic inductor cores, as set forth above. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 8, Harano et al. disclose the claimed property magnitude (Table 1) and the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the claimed property of the core through routine experimentation, especially given teaching that values within the claimed range are acceptable for magnetic inductor cores, as set forth above. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 9, Harano et al. disclose the claimed property magnitude (Table 1) except for 1 kHz comparison, not 5 kHz, and the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the claimed property of the core through routine experimentation when looking at both 1,000 kHz and 5 kHz, especially given teaching that values within the claimed range are acceptable for magnetic inductor cores, as set forth above. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 10, Harano et al. disclose nominal inductors meeting the claimed limitations (at least Paragraph 0053), though the Examiner notes that coils in the magnetic core are conventional.
Conclusion
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
February 3, 2026