DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/30/2026 has been entered.
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
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 1-3, 6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Oikawa et al. (US PG Pub 2014/0158929 A1).
Regarding claim 1, Oikawa et al. teach a magnetic composite material including a dielectric material and magnetic metal particles in the dielectric material (Abstract, claim 1) wherein the dielectric material is selected from a fluoropolymer (claim 13), wherein the magnetic metal particles are present in an amount of 25 to 35 volume percent based on a total volume of the magnetic metal particles and the dielectric material (claim 15) thereby reading on the claimed range of between 1 and 50 wt%, and wherein in preferred embodiments the magnetic composite material only comprises a dielectric material and magnetic metal particle (claim 15, 0053) thereby reading on the “consisting essentially of intermetallic metal allow dispersed in perfluoropolymer matrix” as required by the instant claim. Absent a definition, the term ‘intermetallic’ is interpreted by its broadest reasonable interpretation of two or more metals. The magnetic metal particles of Oikawa et al. contain more than one metal [0045] thereby reading on “intermetallic”.
Oikawa et al. do not particularly teach the magnetic alloy particles are formed from magnetic alloy powders.
However, the recitation “formed from magnetic alloy powders” is a product-by-process limitation. Case law has held that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113. There is no explicit definition for “powder” given in the instant specification, and as such, the term “powder” is given its broadest reasonable interpretation. The term “powder” is interpreted as “a matter in a finely divided state: particulate matter”. The metal particles of Oikawa et al. thereby read on the “formed from magnetic alloy powders”.
Oikawa et al. do not particularly teach the fluoropolymers in a preferred embodiment.
However, Oikawa et al. teach fluoropolymers with “sufficient specificity” that one of ordinary skill in the art would arrive at the claimed combination. Moreover, one of ordinary skill in the art at the time of the claimed invention would have found it “obvious to try” fluoropolymers as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
Regarding claims 2 and 8, Oikawa et al. do not teach the properties of yield strength, strain-to- failure or steady-state wear rate.
However, the mechanical properties of yield strength, strain-to- failure or steady-state wear rate are functions of the composition. Oikawa et al. teach the same composition comprising a magnetic metal particle in a fluoropolymer material as set forth in the rejection above. Therefore, the mechanical properties of yield strength, strain-to- failure or steady-state wear rate in the composite of Oikawa et al. are expected to be the same mechanical properties as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
Regarding claim 3, Oikawa et al. teach the magnetic particles consist essentially of iron-cobalt alloy [0045], [0049].
Regarding claim 6, Oikawa et al. teach the metal particles having a length of 10 to about 1000 nm [0043] thereby reading on the claimed range of greater than 100 nm but less than 100 mm.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Oikawa et al. (US PG Pub 2014/0158929 A1) in view of Smith (US 5,403,547).
Oikawa et al. teach the composite according to claim 1 as set forth above and incorporated herein by reference. Oikawa et al. teach the magnetic particles are iron-cobalt [0045] in an amount of 90 to 95 parts by mass based on 100 parts by mass of the metal particles.
Oikawa et al. do not particularly teach the magnetic particles further comprising vanadium, chromium, niobium, molybdenum, or nickel.
Smith et al., in the same field of endeavor, namely metal alloys, teach metal alloys comprising nickel and cobalt, niobium, molybdenum, vanadium with the balance of the alloy being iron (col. 4 lines 6-13). Smith et al. offer the motivation of using these metal alloys due to their ability to have good oxidation resistance, dynamic grain boundary oxidation resistance and room temperature ductility (col. 2 lines 60-61). In light of these benefits, it would have been obvious to one of ordinary skill in the art to use nickel, niobium, molybdenum or vanadium as taught by Smith et al. with the iron-cobalt metal particles of Oikawa et al., thereby arriving at the claimed invention.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Oikawa et al. (US PG Pub 2014/0158929 A1) in view of Spencer (US 5,519,172).
Oikawa et al. teach the composite according to claim 1 as set forth above and incorporated herein by reference. Oikawa et al. teach the dielectric material is selected from fluoropolymer (claim 13).
Oikawa et al. do not particularly teach the particular fluoropolymers are required by the instant claim.
Spencer, from the same field of endeavor, namely polymeric composites, teach polytetrafluoroethylene to produce a flexible and durable composite (Abstract). Spencer offers the motivation of using PTFE due to its ability to be applied over conductors that have been plated with metal alloys (Abstract, col. 9 lines 35-55). In light of these benefits, it would have been obvious to choose PTFE as disclosed by Spencer as the fluoropolymer of Oikawa et al., thereby arriving at the claimed invention.
Response to Arguments
Applicant’s arguments, see p. 1-4, filed 6/30/2026, with respect to the 102 and 102/103 rejections over Breton have been fully considered and are persuasive. The 102 and 102/103 rejections over Breton have been withdrawn.
Applicant's arguments filed 6/30/2026 over Oikawa et al. have been fully considered but they are not persuasive. Regarding the 103 rejection over Oikawa et al., Applicant states the magnetic alloy particles of the present invention are formed from magnetic alloy powder and would not have the needle like shape and aspect ratio of Oikawa and are believed to be distinguishable from Oikawa.
In response, attention is drawn to the language of claim 1, wherein claim 1 does not recite any particular shape or aspect ratio. Further, the recitation “formed from magnetic alloy powders” is a product-by-process limitation as set forth in the rejection above. Case law has held that the patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. Further, there is no explicit definition for “powder” given in the instant specification, and as such, the term “powder” is given its broadest reasonable interpretation. The term “powder” is interpreted as “a matter in a finely divided state: particulate matter”. The metal particles of Oikawa et al. thereby read on the “formed from magnetic alloy powders” as recited in the instant claim.
It is for these reasons that Applicant’s arguments are not found to be persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LANEE REUTHER whose telephone number is (571)270-7026. The examiner can normally be reached M-F 7:30-3:30.
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/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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