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 .
Election/Restrictions
Applicant’s election without traverse of Group I comprising an epoxy resin and a phenoxy resin in the reply filed on December 22, 2025 is acknowledged.
Claims 15, 16 and 19-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 22, 2025.
Claim Rejections - 35 USC § 112
Claims 1, 11-14, 17 and 18 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.
In claim 1, lines 5-6, to the extent only two metals are recited, i.e., Co and Zn, the text “at least two” is confusing and redundant. It is suggested that the claim language be amended to recite “metal which is selected from any one of or a combination of Co, and Zn”.
In claim 13, it is unclear whether the magnetic permeability is referring to the temperature drift coefficient limitation per claim 1.
In claim 17, there is no express antecedent basis from claim 1 for an “organic matter”. Is said organic matter referring to the resin per claim 1 or to an additional organic component?
In claim 18, line 2, to the extent only two resins are recited, i.e., epoxy resin and phenoxy resin, the text “at least two” is confusing and redundant. It is suggested that the claim language be amended to recite “resin comprises any one of or a combination of an epoxy resin and a phenoxy resin”.
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.
Claims 1, 11-14, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over CN 109553955 A (Yin) abstract and machine translation.
Yin discloses a magnetic-dielectric resin composition comprising
(a) 30 to 100 pbw resin inclusive of epoxy resins, phenoxy resins and mixtures thereof (p2);
(b) 50 to 500 pbw magnetic filler inclusive of cobalt ferrite having a resistivity of 1,000 to 10 Ω M, a particle size of 0.1 to 30 µm (p2) and a permeability of 5 to1,000 (p3); and
(c) 0.1 to 7 pbw of an accelerator (e.g., abstract, pp2-5, examples, claims).
Notably, Yin’s magnetic filler is prepared (p4) from a method virtually identical to that used to produce the presently claimed magnetic filler (specification p6:25-p7:12). Specifically, Yin’s magnetic filler used in the examples is obtained by mixing and sintering the metal oxides (zinc oxide, iron oxide nickel oxide and magnesium oxide) at high temperatures of 800 to 1,000 °C for 3 to 5 hours (p4) and crushing by ball milling.
In essence, Yin differs from claims 1 and 11 in not expressly setting forth a working embodiment wherein the magnetic fillers are obtained from iron oxide with cobalt oxide and/or zinc oxide and the resulting magnetic fillers are governed by the presently claimed temperature drift coefficient. With respect to the first difference, Yin clearly discloses (p2) cobalt ferrite, i.e., obtained from iron oxide and cobalt oxide, as a viable magnetic filler alternative. As to the second difference, it would be expected that said cobalt ferrite magnetic filler, being obtained by a process virtually identical to that used to produce the presently claimed magnetic filler, i.e., sintering at high temperatures for 3 to 5 hours and crushing by ball milling, would necessarily result in a cobalt ferrite governed by the presently claimed temperature drift coefficient. Thus, it is within the purview of Yin’s inventive disclosure, and obvious to one having ordinary skill in the art, to formulate a resin composition meeting the presently claimed components.
As to claim 12, it would be expected that said cobalt ferrite magnetic filler, being obtained by a process virtually identical to that used to produce the presently claimed magnetic filler, i.e., sintering at high temperatures for 3 to 5 hours and crushing by ball milling, would necessarily result in a cobalt ferrite governed by the claimed temperature drift coefficient at 0.1-18 GHz.
As to claim 13, Yin’s magnetic filler has the same particle size of 0.1 to 30 µm (p2) and permeability of 5 to1,000 (p3).
As to claim 14, Yin’s cobalt ferrite is not specifically described in terms of iron oxide content and, as such, implicitly includes any desired iron oxide content (inclusive of that presently claimed), absent evidence of unusual or unexpected results.
As to claim 17, Yin’s magnetic-dielectric resin composition comprises (a) 30 to 100 pbw resin and (b) 50 to 500 pbw magnetic filler, overlapping the presently claimed magnetic filler content. Differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating criticality for the claimed ranges. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”, In re Aller, 105 USPQ 233.
As to claim 18, Yin’s examples use epoxy resins and phenoxy resins (Example 1, p5).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765