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 Office Action is in response to Amendment and Arguments/Remarks filed on 2/5/2026.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 6 - 7 is/are rejected are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Breton (US 3864124A).
Regarding claim 1, Breton teaches the polymer composite comprising polytetrafluoroethylene matrix intermetallic metal alloys (abstract). In the absence of a definition, the term “intermetallic” will be given the broadest reasonable interpretation of two or more metals. Breton teaches a metal alloy with PTFE in a preferred embodiment (col. 7, example 1) thereby reading on the “consisting essentially of an intermetallic metal alloy dispersed in a perfluoropolymer matrix”.
Regarding claim 6, Breton teaches the particles can have a particle size range from about 0.1 to 200 microns (col 5, line 21-22).
Regarding claim 7, Breton teaches the polymer composite comprising fluoropolymers such as fluorinated ethylene/-propylene, polytetrafluoroethylene (col 6, line 6-9).
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claim(s) 2 and 8 is/are rejected under 35 U.S.C. 102(a) (1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Oikawa et al. (US 20140158929 A).
Regarding the limitations “yield strength and strain to failure” (claim 2) and “steady state wear rate” (claim 8), Breton does not explicitly recite these properties. However, Breton teaches a composite having the same perfuoropolymer (PTFE) as claimed with the same magnetic alloy particles as claimed. Therefore, the composite of Breton has the same properties, including yield strength and strain to failure, and steady state wear rate as claimed. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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.
Claim(s) 1-3, 5-6, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oikawa et al. (US 20140158929 A).
Regarding claim 1, Oikawa discloses a material in which magnetic particles are dispersed in the composite material (¶ 18, 16). In the absence of a definition, the term intermetallic will be given the broadest reasonable interpretation of two or more metals. Oikawa teaches a magnetic composite material comprising a dielectric material and magnetic metal particles (claim 1) wherein the dielectric material is chosen from a fluoropolymer (¶ 53) thereby reading on the “consisting essentially of an intermetallic metal alloy dispersed in a perfluoropolymer matrix”.
Oikawa does not particularly teach fluoropolymers in a preferred embodiment.
However, Oikawa teaches the flouropolymer with “sufficient specificity” that one of ordinary skill in the art would arrive at the claimed combination (claim 13). Moreover, one of ordinary skill in the art at the time of the claimed invention would have found it “obvious to try” flouropolymers as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
Regarding the limitations “yield strength and strain to failure” (claim 2) and “steady state wear rate” (claim 8), Oikawa does not explicitly recite these properties. However, Oikawa teaches a composite having the same fluoropolymer as claimed with the same magnetic alloy particles as claimed. Therefore, the composite of Oikawa has the same properties, including yield strength and strain to failure, and steady state wear rate as claimed. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 3, Oikawa teaches the magnetic particles which are iron or iron-cobalt alloy (¶ 45).
Regarding claim 5, Oikawa teaches the magnetic composite material may comprise the magnetic metal particles in an amount of about 25 to about 35 volume % (¶ 54).
Regarding claim 6, Oikawa teaches the metal particles about 10 to about 1000 nanometers (nm) (¶43).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oikawa (US 20140158929 A) in view of Smith (US 5403547 (A) as set forth above for claims 1-8.
The discussion with respect to Oikawa as set forth above is incorporated herein by reference.
Oikawa does not particularly teach the magnetic polymer intermetallic alloy further consists of an iron-cobalt intermetallic alloy with other metals.
Smith teaches metal alloys containing nickel, about 5% to 45 or 50% cobalt, niobium, molybdenum, vanadium and the method of manufacture of the alloy with the balance of the alloy being iron (col. 4, lines 6 – 13). Smith teaches these alloys have good general oxidation resistance, dynamic grain boundary oxidation resistance, room temperature ductility while in use (col.2, lines 60-61). Therefore, it would have been obvious to one of ordinary skill in the art to use other metals as taught by Smith in magnetic composite material of Oikawa, thereby arriving at the claimed invention.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oikawa (US 20140158929 A) in view of Spencer (US 5519172 A) as set forth above for claims 1, 3, 5, 6.
The discussion with respect to Oikawa as set forth above is incorporated herein by reference.
Oikawa does not particularly teach the polymer composite comprises the particular fluoropolymers required by the instant claim.
Spencer teaches expanded polytetrafluoroethylene to produce a flexible and durable composite (abstract), expanded PTFE, fluorinated ethylene propylene (FEP), perfluoroalkoxy polymer (PFA), polyesters, silicone rubber, and nylon. These materials may be applied over the conductors in a variety of ways, including by extrusion, tape wrap, insertion within pre-formed tubes, shrink wrap. etc. The choice of material or materials and the manner or manners of application over a conductor are all design choices heavily dependent upon the required properties sought and the conditions anticipated for the conductor while in use (col. 1, lines 24 – 36). Therefore, it would have been obvious to one of ordinary skill in the art to use polytetrafluoroethylene (PTFE) as taught by Spencer in magnetic composite material of Oikawa, thereby arriving at the claimed invention.
Response to Arguments
Applicant' s arguments, see p. 4- 8, filed 2/5/2026, with respect to the rejections under 35 U.S.C. 102 over Horn and the rejections under 35 U.S.C. 103 over Chen have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, and in light of the amendment, a new ground(s) of rejection is made in view of 35 U.S.C. 103.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMADAS SATHUNURU whose telephone number is (571)272-1687. The examiner can normally be reached Monday – Friday, 7:30am- 3:30pm.
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/RAMADAS SATHUNURU/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764