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 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 1-7 and 9-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The specification in the instant application is drawn to a system and method for enhancing visualization of an eye image through mapping of an image in various color spaces. The specification, drawings, and abstract filed do not support any of the claims as set forth. As this is the case, the instant claims do not comply with the written description requirement as none of the subject matter therein is described in the specification that was filed with the application and thus the disclosure as filed does not reasonably convey to those of skill in the relevant art that the inventor had possession of the claimed invention at the time of filing.
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 1-7 and 9-20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “substantially aligned” in claim 1 is a relative term which renders the claim indefinite. The term “substantially” 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. It is not clear to what term or degree the flakes must be aligned with the first and second surfaces to be considered ‘substantially aligned’. As this is the case, the metes and bounds of the claim are currently unclear.
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 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) 1-7 and 9-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kou in WO2019082013.
Regarding Claim 1: Kou teaches the creation of a high frequency power inductor material having first and second opposed major surfaces (See Paragraph 9). The material of Kou comprises a high temperature binder, which may be a polymer binder such as an epoxy resin (See Paragraph 9 and 30). The material further comprises a plurality of multilayered flakes dispersed in the polymeric binder. The flakes comprise at least two layer pairs, wherein each layer pair comprises a layer of ferromagnetic material and a dielectric electrical isolation layer so that the ferromagnetic layers are electrically isolated from each other by dielectric layers, and wherein the multilayered flakes are substantially aligned parallel to the first and second major surfaces (See Paragraph 9).
Kou teaches in the examples that the flakes used to create such a composite have a lateral size of less than 500 micrometers (See Example 1) and greater than 120 micrometers (See Example 2). Kou thus teaches a useful lateral size range from 120 to 500 microns. Those of ordinary skill in the art would be aware that all of the particles within such a range have a size from 120-500 micrometers and thus the median size (the size at 50% of a total cumulative distribution by volume) must also be between 120 and 500 micrometers. Kou thus teaches an overlapping range of lateral flake sizes with the claimed range of median lateral flake size. Those of ordinary skill in the art would have found it obvious to provide a median flake size anywhere within the range of particle size taught by Kou from 120 to 500 microns, including within the overlapping portion of said range of less than 400 microns.
Regarding Claim 2: Kou teaches that the flake thickness may be about 6 microns (See Paragraph 40) or up to 10 micrometers (See Paragraph 28).
Regarding Claim 3: Kou teaches that the flakes may have an aspect ratio of up to 100:1 (See Paragraph 35).
Regarding Claim 4: Kou teaches that the ferromagnetic material comprises crystalline ferromagnetic material (See paragraph 20).
Regarding Claim 5-6: Kou teaches that the ferromagnetic material is a NiFe soft magnetic alloy (See Paragraph 20).
Regarding Claim 7: Kou teaches that each of the ferromagnetic material layers have a thickness of up to 1000 nm (See Paragraph 22).
Regarding Claim 9: Kou teaches that the flakes are present in the material in an amount of at least 10 percent by volume (See Paragraph 29).
Regarding Claim 10: Kou teaches that the polymer resin may be a polyhydric phenol, acrylate, benzoxazine, cyanate ester, polyimide, polyamide, polyester, polyurethane, or epoxy resins (See Paragraph 30).
Regarding Claim 11: Kou teaches that the composite has a relative permeability of at least 20 (See Paragraph 31).
Regarding Claim 12: Kou teaches that the saturation magnetic induction is at least 0.2 Tesla (See Paragraph 32).
Regarding Claim 13: Kou teaches that the magnetic resonance frequency is in the range from 800-1400 megahertz (See paragraph 33).
Regarding Claim 14: Kou teaches that the magnetic coercivity is not greater than 10 oersted (See Paragraph 34).
Regarding Claim 15: Kou teaches that the material as set forth has a skin depth, wherein the ferromagnetic layer thickness is less than the skin depth. Kou is silent in terms of the skin depth at a particular electrical excitation of 20 MHz; however, as the materials of Kou are the same as those claims in terms of composition and structure, the layer thickness of Kou would necessarily be less than the skin depth at the claimed electrical excitation at 20 MHz. Materials of the same composition and structure must necessarily have the same properties as those properties stem directly from the composition and structure.
Regarding Claims 16-17: Kou teaches that the material has a core loss density of less than 10,000 KW/m3 at 20 MHz and maximum induction of 10 mT and less than 210000 kW/m3 at 20 MHz with a maximum induction of 15 mT. Kou is silent in terms of the magnetic DC bias field being from 0 to about 2500 A/m under the testing conditions; however, as the materials of Kou are the same as those claims in terms of composition and structure, the core loss density would be the same as that which is claimed under such a DC bias field. Materials of the same composition and structure must necessarily have the same properties as those properties stem directly from the composition and structure.
Claim(s) 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kou in WO2019082013 in view of Rutz in US5063011.
Regarding Claim 18: Kou teaches a means for making a high frequency power inductor material, wherein the method comprises-
providing a plurality of multilayered flakes, comprising at least two layer pairs, wherein each layer pair comprises a layer of ferromagnetic material and a dielectric electrical isolation layer so that the ferromagnetic layers are electrically isolated from each other by dielectric layers,
and mixing (dispersing) the multilayered flakes with a polymeric binder such as epoxy (See paragraph 17 and Example 1-2). The flakes are described as being dispersed within the binder by Kou. As this is the case, the process of mixing meets the claimed ‘dispersing’ step.
Kou is silent in terms of surface-treating the multilayered flakes with a phosphoric acid solution prior to dispersing.
However, the treatment of Fe-based magnetic materials with phosphoric acid is well known in the art and is taught by Rutz. Rutz teaches that iron based magnetic materials must maintain insulation between the iron domains in order to retain their properties and reduce core losses (See Field of Invention). Rutz teaches that insulation may be provided by creating an Iron phosphate layer. Rutz teaches that iron-based magnetic materials may be treated with phosphoric acid by mixing the iron based magnets with phosphoric acid and heating at a temperature from 300 to 700F. By doing this, an insulating layer of iron phosphate is formed on the surface of the powder (See Column 2, Line 63- Column 3, Line 31). This insulation provides isolation for the iron domains particularly when further combined with thermoplastic materials (See Column 3, Line 45-52). Those of ordinary skill in the art would have found it obvious to apply the phosphoric-acid treatment step of Rutz to the multilayered flakes of Kou.
While those of ordinary skill in the art would consider the lateral surface of the flakes of Kou to be electrically insulated by the dielectric layers, they would not consider the surfaces orthogonal to the lateral surface to be electrically insulated as the iron-based magnetic layers extend to the orthogonal surface of the composite-flakes. Thus those of ordinary skill would have found it obvious to passivate these surfaces of the plurality of multilayered flakes with conventional means, such as with the phosphoric acid treatment of Rutz prior to mixing with a binder. Those of ordinary skill in the art would have been motivated to combine the references based on the desire to ensure that the magnetic domains within the material were isolated, which improves and maintains properties and reduces core losses according to Rutz.
Regarding Claim 19: Rutz teaches that the magnetic material is surface-treated by mixing the material with a phosphoric acid solution (See Paragraph bridging columns 2 and 3). The mixture may then be heated to an elevated temperature from 300-700F (See Column 3, Lines 16-31).
Regarding Claim 20: Kou in view of Rutz are silent in terms of the distribution range of loss tangent Tan(theta) being less than 0.12; however, as the material of Kou in view of Rutz is of the same composition and structure as that which is claimed, it would necessarily have the same level of distribution range of loss tangent Tan(theta) of less than 0.12. Materials of the same composition and structure must necessarily have the same properties as those properties stem directly from the composition and structure.
Response to Arguments
Applicant's arguments filed 6/29/26 have been fully considered but they are not persuasive. Applicant’s amendment to the claims have resolved various issues identified in the previous action. Specifically, amendments have been made to remove broad and narrow ranges in claims 1 and 20 and claim 8 has been cancelled. The rejection/objection of these issues has been withdrawn with the amendments to the claims. Applicant’s discussion of the terms ‘high frequency’ and ‘substantially aligned’ are noted. The examiner agrees with applicant that those of ordinary skill in the art would consider a high frequency in the context of the claims to be a frequency within the MHz range as discussed. The rejection of the claims for use of this term is withdrawn. Applicant sets forth argument that the term ‘substantially aligned’ is “defined” by the applied prior art. The prior art sets forth an example of an arrangement that may be considered to be substantially aligned (i.e., with a full width half maximum (FWHM) of flake angle distribution relative to the film plane of less than 20°) but fails to explicitly define the term. In a copending application, applicant also uses this term ‘substantially aligned’ at paragraph 33 of US2022/0354032 and sets forth that substantially aligned can refer to at least 60% of particles oriented within 4°, 4.5°, 5°, or 5.5°. Those of ordinary skill in the art would not be apprised of the scope of the claims based on the disparate meaning associated with this term. Thus, the term ‘substantially aligned’ does not appear to be a term of art and causes the metes and bounds of the claims to be unclear as the term or degree of alignment is relative.
Applicant sets forth argument against the rejections of the claims 1-17 under USC 103 over Kou. Applicant argues that the prior art to Kou does not teach a flake lateral size at 50% of a volume distribution as claimed. The examiner agrees that Kou does not teach a median lateral size; however, Kou does clearly teach a maximum and minimum lateral size. Example 1 specifically states that the particulate material used has ‘a lateral size less than 500 micrometers (See Page 11, Line 21). Example 2 specifically sets forth that the FFDM particles used in example 1 ‘were sieved to select a lateral size larger than 120 micrometers’. Thus Kou explicitly teaches that the particles of example 2 have a range of lateral sizes from greater than 120 to less than 500 micrometers. Those of ordinary skill in the art would have found it obvious to provide particles having this range of lateral sizes and would have found it obvious to provide a median lateral size (50% in a volume distribution) anywhere within this range. It is noted that the rejection over Kou is made under USC 103 as the teachings therein render the claimed distribution obvious to those of ordinary skill in the art.
Applicant sets forth argument against the 103 rejection claims 18-20 under USC 103 over Kou in view of Rutz. Applicant argues that the ferromagnetic layers of Kou are already isolated. The rejection of the claims specifically point out that while the lateral surfaces of the particles are isolated from one another, the surfaces orthogonal to the lateral surfaces are not insulated and the ferromagnetic material is exposed on these surfaces. Rutz teaches that providing exposed surfaces of iron based magnetic materials with an iron phosphate layer as is set forth above can help the material retain its properties and prevent core loss. The rejection of the claims sets forth clear rationale in terms of the combination of references. Applicant argues that there is a difference between the iron particles of Rutz and the multilayered flakes of Kou; however, as is set forth in the rejection of the claims, the multilayer flakes of Kou contain iron based ferromagnetic material that would benefit from the treatment of Rutz. The benefits of such a treatment would provide ample motivation to those of ordinary skill in the art.
The rejection of the claims under USC 112(a) is noted. As is discussed in the response, the examiner attempted to discuss the application with individuals in OPAP, but no response or guidance was received by the examiner. The examiner agrees that this rejection will be withdrawn once the correct specification is properly associated with the application.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW E HOBAN whose telephone number is (571)270-3585. The examiner can normally be reached M-F 9:30am-6:00pm.
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.
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/Matthew E. Hoban/Primary Examiner, Art Unit 1734
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