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 .
This communication is responsive to claim set and Response to Restriction filed 01/16/2026. Claims 1, 8, 11-13 are currently pending. Applicant elected the previously presented claims 1-7 in Response to Restriction Requirements. Applicant has incorporated the limitations of previously presented claims 2-7 into the instant Claim 1 and canceled Claims 2-7. Therefore, the instant Claim 1 is under consideration.
Claims 8 and 11-13 are withdrawn.
Claim 1 is rejected for the reasons set forth below.
Election/Restrictions
Applicant’s election of previously presented claims 1-7 in the reply filed on 01/16/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Specification
Applicant submitted amendments of paragraph [0008], [0009], [0010], [0011], [0013], [0024], [0040], [0041] and [0058]. Examiner did not find support for the amendments. Therefore, the amendments are not accepted.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention must be to one of the four statutory categories of processes, machines, manufactures and compositions of matter (See MPEP 2106 I). the instant Claim 1 lines 1-38 recite an isolation sheet which is in the category of composition of matter. The last three lines of Claim 1 recite the isolation sheet is manufactured by mixing … …, then milling … …., and subsequently cutting … …” which recites a process. Therefore, the instant Claim 1 directs to two categories of subject matters.
Additionally, the last three lines of instant Claim 1 direct to the non-elected Group III, a method of manufacturing an isolation sheet. Therefore, the last three lines of instant Claim 1 are not considered in this Office Action.
While a product by process claim would be statutorily acceptable, the claim as presented cannot be definitely inferred to be a single category versus simultaneously two categories.
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.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Maezawa et al. (US2007/0252771 A1).
Maezawa teaches an electromagnetic interference suppressor sheet comprising soft magnetic powder and binder (claim 1), wherein one of the preferred binder is polyurethane elastomer ([0084] and Table 1) and suitable soft magnetic powder candidates include JEM powder made by Mitsubishi Material Corporation ([0174] and Table 1). JEM powder made by Mitsubishi Material Corporation is the preferred soft magnetic powder of the instant application, as such the limitations of spherical in shape, core/shell structure, coated with a phosphate film and a silicate film and the particle size of 1 to 5 μm are met. Maezawa further teaches the preferred sheets having thickness of 60 to 100 μm ([0178]). The preferred sheets Example 3 and Example 4 each contains about 1wt.% of dispersing agent. However, Maezawa furthermore teaches it is preferable to add a dispersing agent to the soft magnetic powder ([0106]), therefore, Maezawa discloses non-preferred embodiments that the sheet consists of the soft magnetic powder and polyurethane elastomer. Moreover, Maezawa teaches the sheet contains 30 to 80% by volume of soft magnetic powder and 20 to 70% by volume of a binder. The sheets Example 3 and Example 4 contain 81-82 wt.% soft magnetic powder and 18-19 wt.% polyurethane elastomer, and resulted in 40 vol% of soft magnetic powder and 56 vol% polyurethane elastomer. It is reasonable to infer that the wt.% of the soft magnetic powder would fall within the claimed 70 – 77.5 wt.% and the wt.% of polyurethane elastomer would fall within the claimed 20-22.5 wt.% as the vol% of soft magnetic powder moving toward 30 vol% and the vol% of polyurethane elastomer moving toward 70 vol%. In addition, decreasing the weight ratio of soft magnetic powder to polyurethane elastomer would increase flexibility and durability of the sheet, however, may attenuate the magnetic properties; Thus, one of ordinary skill in the art must balance the benefits of decreasing the weight ratio of soft magnetic powder to polyurethane elastomer (improving mechanical properties) with the disadvantages (reducing the magnetic properties). The weight ratio of soft magnetic powder to polyurethane elastomer, therefore, would be considered a result effective variable by one of ordinary skill in the art before the effective filing date of instant application. As such, without showing unexpected results, the weight ratio of soft magnetic powder to polyurethane elastomer cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of instant application would have optimized, by routine experimentation, the weight ratio of soft magnetic powder to polyurethane elastomer to obtain a modified electromagnetic interference suppressor sheet with the wt.% of the soft magnetic powder to polyurethane elastomer falling within or overlapping the claimed ranges, for the desired mechanical properties, balanced by magnetic properties; since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).)
Another motivation to decrease the weight ratio of soft magnetic powder to polyurethane elastomer is that dispersing of soft magnetic powder in polyurethane elastomer would be improved, so as to eliminate the use of dispersing agents.
Although Maezawa is silent on the electromagnetic properties of the modified electromagnetic interference suppressor sheet, the electromagnetic interference suppressor sheet consists soft magnetic powder and polyurethane elastomer in the claimed wt.% ranges, and has thickness falling within the claimed range. Therefore, the modified electromagnetic interference suppressor sheet is substantially identical to the claimed isolation sheet, as such, the claimed electromagnetic properties would naturally arise. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients and thickness of the isolation sheet.
While the method limitations are excluded due to the impropriety of the dual statutory categories of the claim, art has been found and applied for compact prosecution. The examiner further notes that there appears to be no product limitations intended to be covered by the method limitations that is not already limited by the strictly-product limitations, and thus the art rejection is considered complete whether or not weight is given to the process limitations as product by process limitations.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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/HUIHONG QIAO/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763