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, filed 28 April 2026, with respect to the claims have been entered. Claims 1-5 and 8-14 remain pending in the application.
Response to Arguments
Applicant’s arguments, filed 28 April 2026, that none of the previously cited references teach the use of
Z
r
W
2
O
8
as a shell layer material have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly found prior art reference(s).
Regarding applicant’s argument, see page 7, that Naoi fails to disclose the use of zirconium-containing materials, Naoi discloses that the metal alkoxide in the shell may include zirconium (Naoi, column 9, line 26).
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.
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), hereinafter Naoi, in view of Starkovich (U.S. Patent Application Publication No. 2003/0187117 A1), hereinafter Starkovich, and Shigemoto et al. (U.S. Patent Application Publication No. 2018/0025819 A1), hereinafter Shigemoto.
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 (column 30, lines 7-8).
Naoi fails to disclose that the core has a first thermal expansion coefficient; the shell layer has a second thermal expansion coefficient less than the first thermal expansion coefficient; wherein the inorganic compound comprises
Z
r
W
2
O
8
, and wherein a molar ratio of zirconium/iron within the electromagnetic wave absorbing material is 0.1 to 3.
However, Starkovich discloses that the inorganic compound comprises
Z
r
W
2
O
8
(paragraph 0018, line 17).
The disclosure of Starkovich demonstrates that the function of
Z
r
W
2
O
8
is known in the art of radiation resistant composite materials (Starkovich, paragraph 0017). Starkovich also shows that substituting
Z
r
W
2
O
8
for another material with a low or negative coefficient of thermal expansion in a composite material yields the predictable result of a composite material with a coefficient of thermal expansion of zero or less (Starkovich, paragraph 0018). “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” United States v. Adams, 383 U.S. 39 (1966). 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 inorganic compound comprises
Z
r
W
2
O
8
because it is not inventive to substitute one known element for another which yields predictable results to one of ordinary skill in the art. See MPEP 2143 I (B).
Furthermore, optimizing the relative coefficients of thermal expansion of components in a composite material 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, Starkovich teaches that “the composite materials of the invention are formulated for the property of coefficient of thermal expansion…the resin typically has a relatively higher coefficient of thermal expansion, and the filler material has a negative thermal coefficient of expansion so that in principle, composites with coefficient of thermal expansion of zero or less can be formulated” (paragraph 0018). As such, Starkovich identifies the thermal expansion coefficient of materials forming a composite material as variables which achieve a recognized result, i.e., the thermal expansion coefficients of the material components affect the thermal expansion coefficient of the composite material as a whole. Therefore, the prior art teaches adjusting the relative coefficients of thermal expansion of components in a composite material and identifies said thermal expansion coefficients 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 thermal expansion coefficients of the core and the shell layer to meet the claimed relationship between the thermal expansion coefficients since it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.
Naoi in view of Starkovich fails to disclose that a molar ratio of zirconium/iron within the electromagnetic wave absorbing material is 0.1 to 3.
However, Shigemoto discloses that a molar ratio of zirconium/iron within the electromagnetic wave absorbing material is 0.1 to 3 (paragraph 0053: 80 mol% Fe/20 mol% Zr produces a molar ratio of 0.25).
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, Shigemoto teaches a molar ratio of 0.25, which lies inside the claimed range of 0.1 to 3. 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 Starkovich to meet the claimed range of molar ratios based on the teachings of Shigemoto.
Regarding claim 3, Naoi in view of Starkovich and Shigemoto 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 Starkovich and Shigemoto 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 Starkovich and Shigemoto as applied to claim 1 discloses the electromagnetic wave absorbing material of claim 1.
In addition, Naoi discloses that the inorganic compound comprises 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 Starkovich and Shigemoto 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 Starkovich and Shigemoto 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 Starkovich and Shigemoto as applied to claim 1 above, and further in view of Ishida et al. (U.S. Patent Application Publication No. 2021/0304931 A1), hereinafter Ishida.
Regarding claim 2, Naoi in view of Starkovich and Shigemoto as applied to claim 1 discloses the electromagnetic wave absorbing material of claim 1.
In addition, Shigemoto discloses the inorganic compound diffusing from the shell layer (paragraph 0043, lines 12-16).
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 Starkovich and Shigemoto to include the inorganic compound diffusing from the shell layer, based on the additional teachings of Shigemoto that this reduces undesirable magnetic coupling effects (Shigemoto, paragraph 0043).
Naoi in view of Starkovich and Shigemoto fails to disclose an amorphous intermediate layer disposed between the core and the shell layer, wherein the amorphous intermediate layer comprises the iron oxide diffused from the core, 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, Ishida discloses an amorphous intermediate layer (FIG. 1, element 30) disposed between the core (FIG. 1, elements 10, 20) and the shell layer (FIG. 1, element 40), wherein the amorphous intermediate layer comprises the iron oxide diffused from the core (paragraph 0048), the concentration distribution of the iron oxide gradually decreases from the inside towards the outside of the electromagnetic wave absorbing material (paragraphs 0048-0049), and the concentration distribution of the inorganic compound gradually increases from the inside towards the outside of the electromagnetic wave absorbing material (paragraph 0049).
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 Starkovich and Shigemoto to include an amorphous intermediate layer disposed between the core and the shell layer, wherein the amorphous intermediate layer comprises the iron oxide diffused from the core, 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 Ishida that this produces a composite with improved insulation resistance and magnetic permeability (Ishida, paragraphs 0059, 0072).
Claims 9 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Naoi in view of Starkovich and Shigemoto 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 Starkovich and Shigemoto as applied to claim 1 discloses the electromagnetic wave absorbing material of claim 1.
Naoi in view of Starkovich and Shigemoto 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 Starkovich and Shigemoto 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 Starkovich and Shigemoto 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 Starkovich and Shigemoto 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 Starkovich and Shigemoto 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 Starkovich and Shigemoto 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 Starkovich and Shigemoto to meet the claimed volume percent ranges of the core and shell layer, 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 Starkovich and Shigemoto as applied to claim 1 above, and further in view of Ohkoshi et al. (U.S. Patent No. 8,072,365 B2), hereinafter Ohkoshi (2011).
Regarding claim 10, Naoi in view of Starkovich and Shigemoto as applied to claim 1 discloses the electromagnetic wave absorbing material of claim 1.
In addition, Shigemoto discloses that materials of the core and the shell layer diffuse with each other (paragraph 0043, lines 12-16).
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 Starkovich and Shigemoto to include that materials of the core and the shell layer diffuse with each other, based on the additional teachings of Shigemoto that this reduces undesirable magnetic coupling effects (Shigemoto, paragraph 0043).
Naoi in view of Starkovich and Shigemoto 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 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 Starkovich and Shigemoto 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).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Naoi in view of Starkovich and Shigemoto as applied to claim 11 above, and further in view of Takahashi (U.S. Patent Application Publication No. 2003/0008969 A1), hereinafter Takahashi.
Regarding claim 12, Naoi in view of Starkovich and Shigemoto as applied to claim 11 discloses the composite structure of claim 11.
Naoi in view of Starkovich and Shigemoto fails to disclose that the electromagnetic wave absorbing material accounts for 5 to 95 volume percent of the entire composite structure.
However, Takahashi 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 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 Starkovich and Shigemoto to meet the claimed volume percent range of the electromagnetic wave absorbing material within the composite structure, based on the teachings of Takahashi.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Naoi in view of Starkovich and Shigemoto 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, Naoi in view of Starkovich and Shigemoto as applied to claim 11 discloses the composite structure of claim 11.
Naoi in view of Starkovich and Shigemoto 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 Naoi in view of Starkovich and Shigemoto 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 Naoi in view of Starkovich and Shigemoto 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Li et al. (CN Patent No. 103524767 A), hereinafter Li (English machine translation provided), teaches a radiation resistant material comprising
Z
r
W
2
O
8
.
Zhao et al. (U.S. Patent Application Publication No. 2023/0364677 A1), hereinafter Zhao, teaches an electromagnetic wave absorbing material, wherein a molar ratio of zirconium/iron within the electromagnetic wave absorbing material is in the range of 0.1 to 3.
Herbert et al. (U.S. Patent No. 12,278,031 B2), hereinafter Herbert, teaches a particle comprising a core, a shell layer covering the core, and an amorphous intermediate layer disposed between the core and the shell layer, wherein the amorphous intermediate layer comprises iron oxide diffused from the core and the inorganic compound diffused from the shell layer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALINA R KALISZEWSKI whose telephone number is (703)756-5581. The examiner can normally be reached Monday - Friday 8:00am - 5:00pm EST.
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/A.K./Examiner, Art Unit 2881
/DAVID E SMITH/Examiner, Art Unit 2881
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