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 .
Status of Claims
Claims 1 and 5 are amended. Claim 4 is cancelled. Claims 1-3 and 5-10 are pending.
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.
Claims 1-3 and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over JP’418 (JPH08-83418A, IDS dated 12/17/2025).
Regarding claims 1-2 and 9-10, JP’418 teaches ([0008] to [0069]; Figs. 1-9) a magnetic thin film composed of magnetic metal particles dispersed in a non-magnetic base material, wherein Co, Fe, Ni, etc., or alloys thereof are used as the magnetic metal particles, an element of the magnetic metal particles (magnetic element) is present in the non-magnetic base material, a compound represented by the general formula M-G is used as the material of the non-magnetic base material, M is at least one selected from the group consisting of Si, Al, Zr, Ti, In, Sn and B, G is at least one selected from the group consisting of O, N, and C, the filling ratio of the magnetic metal particles in the non-magnetic base material is 0.7 or less, preferably 0.5 or less (about 0.65 in the first and second embodiments), and the average particle size of the magnetic metal particles in the film plane is 3-4 nm.
JP’418 discloses ([0062] and [0063]) an example comprising a magnetic thin film composed of magnetic metal particles made of FeCo and a non-magnetic base material having a composition close to Al2O3, the content of Al and O, which are constituent elements of the non-magnetic base material, is 5 atomic% or less in the central portion of the FeCo magnetic metal particles, and the content of Co and Fe, which are magnetic elements constituting the magnetic metal particles, is 5 atomic% or less in a specific region of the Al-O non-magnetic base material. Since Fe and Co are contained in the magnetic metal particles and the non-magnetic base metal in substantially the same ratio, the magnetic metal particles contain Fe, Co and Al-O in the following ratio: Fe: Co: (Al2O3) = 42.5 : 42.5 : 5; and the non-magnetic base material contain Fe, Co and Al-O in the following ratio: Fe: Co: (Al2O3) = 5 : 5 : 90. In a non-magnetic base material having a composition close to Al2O3, the ratio of Al and O is 2/5 and 3/5, respectively. Thus, the magnetic metal particles contain Fe, Co, Al and O in the following ratio: Fe: Co: Al: O=42.5: 42.5: 2.0: 3.0, and the non-magnetic base material contain Fe, Co, Al and O in the following ratio: Fe: Co: Al: O=5 : 5 : 36 : 54 . According to the instant Specification, oxygen content is not considered when calculating the content ratio, the magnetic metal particles contain Fe, Co and Al in the following ratio: Fe: Co: Al=48.85 : 48.85 : 2.30 , and the non-magnetic base materials contain Fe, Co and Al in the following ratio: Fe: Co: Al = 10.87 : 10.87 : 78.26. Thus, (the content ratio of Fe in the magnetic metal particles) / (the content ratio of Fe in the non-magnetic base material) = 48.85/10.87= 4.49, and (the content ratio of Co in the magnetic metal particles) / (the content ratio of Co in the non-magnetic base material) = 48.85/10.87= 4.49. Therefore, JP’418 discloses a magnetic film having the largest one of A(Fe1)/A(Fe2) and A(Co1)/A(Co2) overlapping the recited ratio in claim 1. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 I. Thus, claim 1 is obvious over JP’418.
In the example of JP’148, A(Fe1)/A(Fe2) = 4.49 and A(Co1)/A(Co2) = 4.49. {A(Co1)/A(Co2)} / {A(Fe1)/A(Fe2)} =1, which is close to the recited ratio in claim 1. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05 I. Thus, claim 1 is obvious over JP’418.
Regarding claim 3, JP’418 discloses that the magnetic phase is FeCo ([0062]; [0063]). It’s well-known to one of ordinary skill in the art that FeCo has bcc structure. Thus, claim 3 is obvious over JP’418.
Regarding claim 6, JP’418 discloses that the magnetic thin film is used in a magnetic recording medium or a magnetic recording / reproducing device (Abstract), which meets the recited limitation in claim 6.
Regarding claims 7 and 8, as set forth in the rejection of claim 1 using the second example of JP’148, the magnetic metal particles contain Fe, Co and Al in the following ratio: Fe: Co: Al=48.85 : 48.85 : 2.30. Thus, (Fe+Co) / (Fe+Co+Al)=97.7%, which meets the limitation recited in claims 7 and 8.
Allowable Subject Matter
Claim 5 is 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.
Response to Argument
The Affidavit under 37 CFR 1.132 filed 06/23/2026 is insufficient to overcome the rejection of claim 1 based upon JP’148 as set forth in the last Office action because:
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Claim 1 recites the nanogranular magnetic film comprises Fe and Co, which includes a scope that the nanogranular magnetic film contains greater than 0 wt% but less than 100 wt.% of Fe and greater than 0 wt% but less than 100 wt.% of Co. However, the Examples and Comparative Examples in the Table all have composition of Fe60Co40, which is much narrower than the film composition as recited in claim 1.
Claim 1 recites that the second phase comprises at least one selected from the group consisting of O, N and F. However, the Examples and Comparative Examples in the Table contain O, which is much narrower than the recited composition in claim 1.
The amount of Fe, Co, O, N and F all have an effect on ƥ, Bs and Hc of the nanogranular magnetic film and the claimed broader composition has not been shown to have the same properties as Example 12 and 68-71. Therefore, the evidence of nonobviousness is not commensurate in scope with the claims.
In summary, ƥ, Bs and Hc are a result of a combination of Fe, Co, O, N and F composition. The good ƥ, Bs and Hc may not be as a result of the claimed
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. The criticality of
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≥1.06 has not been established.
The difference between
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=1 and
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=1.06 is within experimental error. Therefore, claims 1-3 and 6-10 are obvious over JP’148.
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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/XIAOWEI SU/Primary Examiner, Art Unit 1733
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