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.
Claims 1, 2, 4-6, 9-11, 13-15, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0341341 A1 to Kim et al. (hereinafter Kim).
Regarding claims 1 and 10, Kim discloses a cured product obtained by curing a magnetic resin composition (para [0108]-[0109]) comprising:
magnetic particles (para [0030]), wherein the magnetic particles include metal particles and ferrite particles (para [0055]); and
an epoxy resin having an epoxy equivalent of about 80 g/eq to about 1000 g/eq (para [0080]-[0081]), which overlaps the instantly claimed range of 400 g/eq or more,
wherein the average particle size of the metal particles is, for example, about 1 to about 300 µm (para [0059]), which overlaps the instantly claimed range of 4 µm or more, and
the average particle size of the ferrite particles is about 1 nm to about 1 mm (para [0059]), which overlaps the instantly claimed range of 0.9 µm or less.
Kim does not explicitly recite the phrase “wherein a filling rate of the magnetic particles is 70 or more on an area basis”. However, the reference does teach that the composition may comprise 50 to 95% by weight magnetic particles (para [0085]) selected from metals and ferrites as discussed above (para [0055]) and 5 to 40% by weight of a binder resin (para [0086]) selected from polyurethane-based and epoxy-based resins (para [0066]). Volume percentages are calculated from a 1:1 mixture of NiZn ferrite and Permalloy combined with a bisphenol A epoxy resin. Upper and lower ends of the ranges are calculated.
Component
By weight
Density
By volume
NiZn Ferrite
25
4.95
12.2
Permalloy
25
8.7
6.94
Bisphenol A
40
1.195
80.86
50% magnetic
NiZn Ferrite
47.5
4.95
49.88
Permalloy
47.5
8.75
28.38
Bisphenol A
5
1.195
21.75
95% magnetic
As shown in the table above, Kim teaches a magnetic particle fill rate of 19.14 to 78.26 % on a volume basis. One of ordinary skill in the art would recognize that volume% is an integral of each area%. Therefore, Kim teaches a magnetic particle fill rate that overlaps the instantly claimed rate of 70% or more on an area basis. 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 claims 2 and 11, Kim discloses the magnetic resin composition according to claim 1 and the cured product according to claim 10. The reference is silent regarding a void ratio of less than 0.30% on an area basis. However, one of ordinary skill in the art would understand the need to minimize void ratio to facilitate formation of a thin film component with improved properties (para [0208]) and less degradation in performance (para [0002]).
Regarding claims 4, 5, 13, and 14, Kim discloses the magnetic resin composition according to claim 1 and the cured product according to claim 10, wherein the magnetic particles include metal particles selected from a group that includes Ni ,Fe, and Mo (para [0055]-[0057]).
Regarding claims 6 and 15, Kim discloses the magnetic resin composition according to claim 1 and the cured product according to claim 10, wherein an average particle size of the metal particles is, for example, about 1 to about 300 µm (para [0059]), which overlaps the instantly claimed range of less than 10.0 µm. See MPEP 2144.05(I), cited above.
Regarding claims 9 and 18, Kim discloses the magnetic resin composition according to claim 1 and the cured product according to claim 10. The reference is silent regarding the limitation “wherein a coercive force Hc of the ferrite particles is of 30.0 Oe or more”. However, one of ordinary skill in the art would recognize the relationship between the composition of the magnetic particles and coercive force Hc. As discussed above, Kim teaches overlapping magnetic particles comprising Fe (and Fe alloys) that may further comprise ferrites (para [0055], mixed powders). See MPEP 2112.01(I), which states ‘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’. As discussed above, Kim teaches an overlapping magnetic resin comprising overlapping magnetic particles with overlapping compositions and overlapping sizes. Therefore, per MPEP 2112.01(I), one of ordinary skill in the art would expect the Kim magnetic particles to have a coercive force Hc of the ferrite particles that at least overlaps the instantly claimed range of 30.0 Oe or more, absent evidence to the contrary.
Regarding claim 19, Kim discloses an electronic component comprising:
the cured product according to claim 10 (para [0109]).
Response to Arguments
Applicant's arguments filed 10/30/25, regarding Kim, have been fully considered but they are not persuasive. Applicant argues that Kim teaches a weight% of magnetic particles but does not teach or suggest a filling rate of the magnetic particles of 70% or more on an area basis. However, as discussed above, Kim does teach a magnetic particle fill rate of 19.14 to 78.26 % on a volume basis, which overlaps the instantly claimed rate of 70% or more on an area basis. See MPEP 2144.05(I), cited above.
Therefore, the rejection of claims 1, 2, 4-6, 9-11, 13-15, 18, and 19 as obvious over Kim stands.
The rejection of claims 3, 7, 8, 12, 16, and 17 as obvious over Kim is moot because the claims have been canceled.
Applicant’s arguments, see page 7, filed 10/30/25, with respect to 368 have been fully considered and are persuasive. The newly amended claims require ferrite, which is not taught or suggested by the 368 claims.
Therefore, the provisional obviousness double patenting rejection of claims 1, 2, 6, 10, 11, 15, and 19 as unpatentable over the claims of 368 has been withdrawn.
The provisional obviousness double patenting rejection of claims 3 and 12 as obvious over the claims of 368 are moot because the claims have been canceled.
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