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 .
Response to Amendment
Applicant’s amendments, see page 7, filed 19 September 2025, with respect to the specification, the drawings, and the claims have been entered. Therefore, the objections to the specification and the drawings, and the rejections of the claims under 35 U.S.C. 112(b) and 35 U.S.C. 112(d), have been withdrawn.
Response to Arguments
Applicant’s arguments, see page 9, that Ohkoshi et al. (U.S. Patent No. 8,072,365 B2), hereinafter Ohkoshi (2011), in view of Han et al. (U.S. Patent Application Publication No. 2020/0095648 A1), hereinafter Han, and regarding claim 6, Yamaji et al. (U.S. Patent Application Publication No. 2020/0246867 A1), hereinafter Yamaji, or regarding claim 7, Takahashi et al. (U.S. Patent Application Publication No. 2012/0082844 A1), hereinafter Takahashi (2012), do not disclose or suggest the claimed Si/Fe ratio, and that the claimed ratio produces “superior and unexpected results”, have been fully considered but are not persuasive.
Paragraphs 0023-0024 of the instant specification disclose advantageous effects of “lattice matching and stability of the core and the shell layer” resulting from an “appropriate” ratio; however, the instant specification discloses this ratio as falling in the range from 0.04 to 12 for silicon/iron, and the range from 0.01 to 3 for zirconium/iron. The instant specification does not disclose any criticality or unexpected results from the specifically claimed ranges of 0.44 to 12 (silicon/iron) or 0.1 to 3 (zirconium iron), other than the advantages obtained by the broader range.
Furthermore, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Further still, optimizing component ratios in a composite structure is well within the bounds of normal experimentation. See MPEP 2144.05 II (A). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Furthermore, “[a] particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation.” In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In the case at hand, Ohkoshi (2011) teaches that “[t]he larger blend ratio of the electromagnetic wave absorbing material powder is more advantageous for improving the electromagnetic wave absorbing capability thereof; however, when too much, the powder may be difficult to mix and knead with the polymer substrate” (Column 9, lines 8-12). As such, Ohkoshi (2011) identifies ratios of elements in an electromagnetic shielding material as variables which achieve a recognized result, i.e., adjusting the electromagnetic wave absorbing capability of the material while maintaining the ability to blend components of the material. Therefore, the prior art teaches adjusting component ratios in a composite structure and identifies said component ratios as result-effective variables. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective time of filing to optimize the molar ratios of silicon/iron and zirconium/iron to meet the claimed molar ratios since it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.
Therefore, the rejections of the claims over Ohkoshi (2011) in view of Han are maintained. Additionally, a new ground(s) of rejection is made in view of newly found prior art reference(s).
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Ohkoshi et al. (U.S. Patent No. 8,072,365 B2), hereinafter Ohkoshi (2011), in view of Han et al. (U.S. Patent Application Publication No. 2020/0095648 A1), hereinafter Han.
Regarding claim 1, Ohkoshi (2011) discloses an electromagnetic wave absorbing material, comprising:
a core (column 6, lines 6-8), wherein the core comprises an iron oxide (column 6, line 8), the iron oxide is ferric oxide or ferric oxide doped with an element (column 6, line 8), and a crystal form of the iron oxide is orthorhombic (column 6, line 8); and
a shell layer (column 8, line 51), covering the core (column 8, line 51), wherein the shell layer comprises an inorganic compound selected from a group consisting of oxides, nitrides, or any combination thereof (column 8, lines 51-52).
The limitations “wherein a molar ratio of silicon/iron within the electromagnetic wave absorbing material is 0.44 to 12 when the inorganic compound comprises silicon oxide; and a molar ratio of zirconium/iron within the electromagnetic wave absorbing material is 0.1 to 3 when the inorganic compound comprises zirconium oxide” are alternative limitations which are not required to be taught by the broadest reasonable interpretation of the claim. The claim language broadly requires that the inorganic compound is any oxide, nitride, or combination thereof. The claimed ratios of silicon/iron and zirconium/iron are only required by the claims when the inorganic compound comprises the specific alternatives of silicon oxide or zirconium oxide. In this case, Ohkoshi (2011) discloses that the inorganic compound comprises aluminum oxide (column 8, lines 51-52). Therefore, the claimed ratios of silicon/iron and zirconium/iron have no patentable weight, due to the use of an alternative oxide.
Ohkoshi (2011) fails to disclose that the core has a first thermal expansion coefficient; and the shell layer has a second thermal expansion coefficient less than the first thermal expansion coefficient.
However, Han discloses a core having a first thermal expansion coefficient (paragraph 0043, lines 9-11); and
a shell layer having a second thermal expansion coefficient less than the first thermal expansion coefficient (paragraph 0043, lines 9-11).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Ohkoshi (2011) to include that the core has a first thermal expansion coefficient; and the shell layer has a second thermal expansion coefficient less than the first thermal expansion coefficient, based on the teachings of Han that the difference in thermal expansion coefficients improves the tensile strength of the material (Han, paragraph 0051, lines 6-8).
Claims 1, 3-5, 8, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Naoi et al. (U.S. Patent No. 11,348,711 B2) as evidenced by the International Union of Pure and Applied Chemistry (IUPAC), Physical Chemistry Division, “Quantities, Units and Symbols in Physical Chemistry”, 1993, and CAS SciFinder, hereinafter Naoi, in view of Han.
Regarding claim 1, Naoi discloses an electromagnetic wave absorbing material (column 38, lines 63-64), comprising:
a core (column 6, line 7), wherein the core comprises an iron oxide (column 6, line 9), the iron oxide is ferric oxide or ferric oxide doped with an element (column 6, line 31), and a crystal form of the iron oxide is orthorhombic (column 6, lines 35-36); and
a shell layer (column 30, lines 7-8), covering the core (column 8, line 54), wherein the shell layer comprises an inorganic compound selected from the group consisting of oxides, nitrides, or any combination thereof (column 30, lines 7-8),
wherein a molar ratio of silicon/iron within the electromagnetic wave absorbing material is 0.44 to 12 when the inorganic compound comprises silicon oxide (column 10, lines 17-30: see further notes below).
The International Union of Pure and Applied Chemistry (IUPAC), Physical Chemistry Division, “Quantities, Units and Symbols in Physical Chemistry”, 1993, hereinafter IUPAC, defines the molecular weight of a substance
M
r
as its mass m divided by the number of moles n of the substance (IUPAC, page 41). Therefore, the molar ratio of Si/Fe can be calculated using the masses and molecular weights of Si and Fe (denoted below as m(Si), w(Si), m(Fe), and w(Fe), respectively):
m
o
l
S
i
m
o
l
F
e
=
m
S
i
w
S
i
*
w
F
e
m
F
e
The molecular weights of Si and Fe are 28.09 and 55.85, respectively (CAS SciFinder, Substance Properties). Therefore, the molar ratio of Si/Fe can be calculated as:
m
o
l
S
i
m
o
l
F
e
=
m
S
i
m
F
e
*
55.85
28.09
=
1.988
*
m
(
S
i
)
m
(
F
e
)
Naoi discloses a mass ratio of Fe/Si in the range of ½ to 1/15 (column 10, lines 17-30). Using the above equations, the disclosed mass ratio is equivalent to a molar ratio of Si/Fe in a range of 3.976 to 29.82, which overlaps with the claimed molar ratio range of 0.44 to 12 for Si/Fe.
When a claimed range “overlap[s] or lie[s] inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP 2144.05 I; 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). In the case at hand, Naoi teaches a molar ratio of Si/Fe in the range of 3.976 to 29.82, which overlaps with the claimed range of 0.44 to 12. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have met the claimed range of the molar ratio of Si/Fe based on the teachings of Naoi.
Furthermore, optimizing component ratios in a composite structure is well within the bounds of normal experimentation. See MPEP 2144.05 II (A). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Furthermore, “[a] particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation.” In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In the case at hand, Naoi teaches that “[b]y setting the Fe/Si ratio in the core-shell particle…it is possible to sufficiently prevent aggregation of cores obtained in a case of calcinating…” (column 6, lines 20-24), and “…setting the Fe/Si ratio…generat[es] epsilon type iron oxide-based compound particles having lesser impurities” (column 10, lines 24-30). As such, Naoi identifies ratios of elements in an electromagnetic shielding material as variables which achieve a recognized result, i.e., preventing aggregation of cores and reducing impurities. Therefore, the prior art teaches adjusting component ratios in a composite structure and identifies said component ratios as result-effective variables. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective time of filing to optimize the molar ratio of silicon/iron to meet the claimed molar ratio since it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.
The limitation “wherein a molar ratio of zirconium/iron within the electromagnetic wave absorbing material is 0.1 to 3 when the inorganic compound comprises zirconium oxide” is an alternative limitation which is not required to be taught by the broadest reasonable interpretation of the claim. The claim language broadly requires that the inorganic compound is any oxide, nitride, or combination thereof. The claimed ratio of zirconium/iron is only required by the claims when the inorganic compound comprises the specific alternative of zirconium oxide. In this case, Naoi discloses that the inorganic compound comprises silicon oxide (column 30, lines 7-8). Therefore, the claimed ratio of zirconium/iron has no patentable weight, due to the use of an alternative oxide.
Naoi fails to disclose that the core has a first thermal expansion coefficient; and the shell layer has a second thermal expansion coefficient less than the first thermal expansion coefficient.
However, Han discloses a core having a first thermal expansion coefficient (paragraph 0043, lines 9-11); and
a shell layer having a second thermal expansion coefficient less than the first thermal expansion coefficient (paragraph 0043, lines 9-11).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Naoi to include that the core has a first thermal expansion coefficient; and the shell layer has a second thermal expansion coefficient less than the first thermal expansion coefficient, based on the teachings of Han that the difference in thermal expansion coefficients improves the tensile strength of the material (Han, paragraph 0051, lines 6-8).
Regarding claim 3, Naoi in view of Han as applied to claim 1 discloses the electromagnetic wave absorbing material of claim 1.
In addition, Naoi discloses that the iron oxide is represented as follows (column 17, lines 9-18),
M
x
F
e
2
-
x
O
3
wherein M is at least one element having an oxidation number of +1, +2, +3, +4, +5, or +6 (column 17, lines 10-11: trivalent, i.e., +3); and x is a value between greater than or equal to 0 and less than 1 (column 17, line 18: x = 0.25).
Regarding claim 4, Naoi in view of Han as applied to claim 3 discloses the electromagnetic wave absorbing material of claim 3.
In addition, Naoi discloses that M is at least one metal element selected from a group consisting of molybdenum, zirconium, magnesium, cerium, lanthanum, yttrium, titanium, silver, aluminum, gallium, barium, rhodium and nickel (column 17, lines 9-18).
Regarding claim 5, Naoi in view of Han as applied to claim 1 discloses the electromagnetic wave absorbing material of claim 1.
In addition, Naoi discloses that the inorganic compound is at least one selected from a group consisting of silicon oxide, zirconium oxide, vanadium oxide, boron nitride, and aluminum nitride (column 30, lines 7-8).
Regarding claim 8, Naoi in view of Han as applied to claim 1 discloses the electromagnetic wave absorbing material of claim 1.
In addition, Naoi discloses that the shell layer has a thickness of 1 to 50 nm (column 10, lines 40-46).
When a claimed range “overlap[s] or lie[s] inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP 2144.05 I; 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). In the case at hand, Naoi teaches a thickness of the shell layer in the range of 0.5 nm to 30 nm, which overlaps with the claimed range of 1 nm to 50 nm. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have met the claimed range of the shell layer thickness based on the teachings of Naoi.
Regarding claim 11, Naoi in view of Han as applied to claim 1 discloses the electromagnetic wave absorbing material of claim 1.
In addition, Naoi discloses a composite structure for suppressing electromagnetic interference ((column 38, lines 63-64)), comprising the electromagnetic wave absorbing material according to claim 1, a functional filler (column 23, lines 43-48), and a matrix (column 19, lines 30-40).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Naoi in view of Han as applied to claim 1 above, and further in view of Takahashi et al. (U.S. Patent Application Publication No. 2015/0021512 A1), hereinafter Takahashi (2015), and Watanabe et al. (U.S. Patent Application Publication No. 2009/0174512 A1), hereinafter Watanabe.
Regarding claim 2, Naoi in view of Han as applied to claim 1 discloses the electromagnetic wave absorbing material of claim 1.
In addition, Han discloses an intermediate layer (FIG. 1, element 11) disposed between the core (FIG. 1, element 10) and the shell layer (FIG. 1, element 20).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Naoi in view of Han to include an intermediate layer disposed between the core and the shell layer, based on the additional teachings of Han that the intermediate layer improves adhesion between the core and the shell layer (Han, paragraph 0077).
Naoi in view of Han fails to disclose that the intermediate layer is amorphous and comprises the iron oxide diffused from the core and the inorganic compound diffused from the shell layer, the concentration distribution of the iron oxide gradually decreases from the inside towards the outside of the electromagnetic wave absorbing material, and the concentration distribution of the inorganic compound gradually increases from the inside towards the outside of the electromagnetic wave absorbing material.
However, Takahashi (2015) discloses an amorphous intermediate layer (FIG. 1, element 3), wherein the amorphous intermediate layer comprises the iron oxide diffused from the core (paragraph 0043, lines 13-16) and the inorganic compound diffused from the shell layer (paragraph 0044).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Naoi in view of Han to include an amorphous intermediate layer, wherein the amorphous intermediate layer comprises the iron oxide diffused from the core and the inorganic compound diffused from the shell layer, based on the teachings of Takahashi (2015) that the mechanical strength of the material is improved by including the intermediate layer (Takahashi (2015), paragraph 0043).
Naoi in view of Han and Takahashi (2015) fails to disclose that the concentration distribution of the iron oxide gradually decreases from the inside towards the outside of the electromagnetic wave absorbing material, and the concentration distribution of the inorganic compound gradually increases from the inside towards the outside of the electromagnetic wave absorbing material.
However, Watanabe discloses that the concentration distribution of the iron oxide gradually decreases from the inside towards the outside of the electromagnetic wave absorbing material (paragraph 0135, section (55), lines 10-13), and the concentration distribution of the inorganic compound gradually increases from the inside towards the outside of the electromagnetic wave absorbing material (paragraph 0135, section (55), lines 10-13).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Naoi in view of Han and Takahashi (2015) to include that the concentration distribution of the iron oxide gradually decreases from the inside towards the outside of the electromagnetic wave absorbing material, and the concentration distribution of the inorganic compound gradually increases from the inside towards the outside of the electromagnetic wave absorbing material, based on the teachings of Watanabe that these concentration distributions improve adherence between the core and the shell layer (Watanabe, paragraph 0046).
Claims 9 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Naoi in view of Han as respectively applied to claims 1 and 11 above, and further in view of Ohkoshi et al. (U.S. Patent Application Publication No. 2021/0151895 A1), hereinafter Ohkoshi (2021).
Regarding claim 9, Naoi in view of Han as applied to claim 1 discloses the electromagnetic wave absorbing material of claim 1.
Naoi in view of Han fails to disclose that the core accounts for 5 to 95 volume percent of the entire electromagnetic wave absorbing material, and the shell layer accounts for 5 to 95 volume percent of the entire electromagnetic wave absorbing material.
However, Ohkoshi (2021) discloses that the core accounts for 5 to 95 volume percent of the entire electromagnetic wave absorbing material (paragraph 0043), and the shell layer accounts for 5 to 95 volume percent of the entire electromagnetic wave absorbing material (paragraph 0056).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Naoi in view of Han to include that the core accounts for 5 to 95 volume percent of the entire electromagnetic wave absorbing material, and the shell layer accounts for 5 to 95 volume percent of the entire electromagnetic wave absorbing material, based on the teachings of Ohkoshi (2021) that this composition improves the return loss and the absorption bandwidth of the material (Ohkoshi (2021), paragraph 0037).
Furthermore, when a claimed range “overlap[s] or lie[s] inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP 2144.05 I; 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). In the case at hand, Ohkoshi (2021) teaches that the core accounts for 5% to 70% of the material by volume (paragraph 0043), which overlaps with the claimed range of 5% to 95%, and that the shell layer accounts for 5% to 70% of the material by volume (paragraph 0056), which overlaps with the claimed range of 5% to 95%. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Naoi in view of Han to meet the claimed volume percent ranges of the core and shell layer, based on the teachings of Ohkoshi (2021).
Regarding claim 14, Naoi in view of Han as applied to claim 11 discloses the composite structure of claim 11.
In addition, Naoi discloses that the matrix contains epoxy resin, polypropylene resin, or polyimide resin (column 19, lines 30-40).
Naoi in view of Han fails to disclose that the matrix accounts for greater than or equal to 5 volume percent of the entire composite structure.
However, Ohkoshi (2021) discloses that the matrix accounts for greater than or equal to 5 volume percent of the entire composite structure (paragraph 0056).
When a claimed range “overlap[s] or lie[s] inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP 2144.05 I; 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). In the case at hand, Ohkoshi (2021) teaches that the matrix accounts for 5% to 70% of the composite structure by volume (paragraph 0056), which overlaps with the claimed range of greater than or equal to 5 volume percent. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Naoi in view of Han to meet the claimed volume percent range of the matrix, based on the teachings of Ohkoshi (2021).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Naoi in view of Han as applied to claim 1 above, and further in view of Ohkoshi (2011) and Takahashi (2015).
Regarding claim 10, Naoi in view of Han as applied to claim 1 discloses the electromagnetic wave absorbing material of claim 1.
Naoi in view of Han fails to disclose a method for manufacturing the electromagnetic wave absorbing material, comprising: providing a shell layer material precursor and a core material precursor; coating the core material precursor with the shell layer material precursor to form a combination; sintering the combination at a high temperature to form a core and a shell layer, and materials of the core and the shell layer diffuse with each other; and etching the shell layer.
However, Ohkoshi (2011) discloses a method for manufacturing (column 8, lines 39-40) the electromagnetic wave absorbing material (column 7, lines 55-57), comprising:
providing a shell layer material precursor (column 8, lines 54-57) and a core material precursor (column 8, lines 39-41);
coating the core material precursor with the shell layer material precursor to form a combination (column 8, lines 47-57); and
sintering the combination at a high temperature (column 8, lines 54-55) to form a core (column 6, lines 6-8) and a shell layer (column 6, lines 6-8); and
etching the shell layer (column 8, lines 35-38).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Naoi in view of Han to include a method for manufacturing the electromagnetic wave absorbing material, comprising: providing a shell layer material precursor and a core material precursor; coating the core material precursor with the shell layer material precursor to form a combination; sintering the combination at a high temperature to form a core and a shell layer; and etching the shell layer, based on the teachings of Ohkoshi (2011) that this process results in a structure with closely packed particles, which is advantageous for electromagnetic wave absorbing applications (Ohkoshi (2011), column 8, lines 58-66).
Naoi in view of Han and Ohkoshi (2011) fails to disclose that the materials of the core and the shell layer diffuse with each other.
However, Takahashi (2015) discloses that materials of the core and the shell layer diffuse with each other (paragraphs 0043-0044).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Naoi in view of Han and Ohkoshi (2011) to include that materials of the core and the shell layer diffuse with each other, based on the teachings of Takahashi (2015) that this diffusion forms an intermediate layer which improves the mechanical strength of the material (Takahashi (2015), paragraph 0043).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Naoi in view of Han as applied to claim 11 above, and further in view of Takahashi (U.S. Patent Application Publication No. 2003/0008969 A1), hereinafter Takahashi (2003).
Regarding claim 12, Naoi in view of Han as applied to claim 11 discloses the composite structure of claim 11.
Naoi in view of Han fails to disclose that the electromagnetic wave absorbing material accounts for 5 to 95 volume percent of the entire composite structure.
However, Takahashi (2003) discloses that the electromagnetic wave absorbing material accounts for 5 to 95 volume percent of the entire composite structure (paragraph 0032, lines 1-2).
When a claimed range “overlap[s] or lie[s] inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP 2144.05 I; 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). In the case at hand, Takahashi (2003) teaches that the electromagnetic wave absorbing material accounts for 5% to 70% of the composite structure by volume (paragraph 0032), which overlaps with the claimed range of 5 to 95 volume percent. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Naoi in view of Han to meet the claimed volume percent range of the electromagnetic wave absorbing material within the composite structure, based on the teachings of Takahashi (2003).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Ohkoshi (2011) in view of Han as applied to claim 11 above, and further in view of Chen et al. (U.S. Patent Application Publication No. 2019/0221343 A1), hereinafter Chen.
Regarding claim 13, Ohkoshi (2011) in view of Han as applied to claim 11 discloses the composite structure of claim 11.
Ohkoshi (2011) in view of Han fails to disclose that the functional filler accounts for greater than or equal to 5 volume percent of the entire composite structure, and the functional filler contains at least one compound selected from a group consisting of silicon dioxide, boron nitride, aluminum nitride, and silicon carbide.
However, Chen discloses that the functional filler accounts for greater than or equal to 5 volume percent of the entire composite structure (paragraph 0043), and the functional filler contains at least one compound selected from a group consisting of silicon dioxide, boron nitride, aluminum nitride, and silicon carbide (paragraph 0041).
When a claimed range “overlap[s] or lie[s] inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP 2144.05 I; 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). In the case at hand, Chen teaches that the functional filler accounts for 5% to 60% of the composite structure by volume (paragraph 0043), which overlaps with the claimed range of greater than or equal to 5 volume percent. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Ohkoshi (2011) in view of Han to meet the claimed volume percent range of the functional filler within the composite structure, based on the teachings of Chen.
Furthermore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Ohkoshi (2011) in view of Han to include that the functional filler contains at least one compound selected from a group consisting of silicon dioxide, boron nitride, aluminum nitride, and silicon carbide, based on the teachings of Chen that these types of filler can be advantageously used in high-frequency applications, such as antenna applications (Chen, paragraph 0027).
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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/A.K./Examiner, Art Unit 2881
/MICHAEL J LOGIE/ Primary Examiner, Art Unit 2881