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 .
The Amendment filed October 8, 2025 has been entered. Claims 1-6 are pending in this application and examined herein.
Rejections -- 35 U.S.C. 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 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2022/0305243).
With respect to claims 1-4, this rejection is for reasons set forth in item no. 3 of the Office Action dated May 9, 2025. Claims 1-4 have not been amended since that time. With respect to new claim 6, the prior art structure is a solid material, and any substance upon which that structure rests can be defined as a “substrate” as presently claimed. Thus, for reasons previously indicated, the disclosure of Park et al.is held to create a prima facie case of obviousness of a magnetic film structure as presently claimed.
Response to Arguments
Applicant’s remarks filed October 8, 2025 have been fully considered, but are not persuasive of patentability for the following reasons.
Applicant argues that in a nanogranular magnetic film as claimed, a magnetic material whose insulator (equivalent to the claimed “second phase”) mainly includes polymer material as in Park does not correspond to the claimed film. In response, the examiner’s position is that independent claim 1 requires only that the composition of the second phase includes at least one of three elements, and the polymer of Park includes at least two of those three elements. Any further limitations regarding this material and the manner by which it was made that may be disclosed in the specification but not included in the claims are not read into the claims; see In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed.Cir. 1993).
Applicant asserts that Table 4 of the present specification indicates some unobviousness of the presently claimed porosity range. The examiner respectfully disagrees. While Table 4 shows some difference in properties between comparative examples below the minimum value of the claimed range and examples within (and in the lower portion of) the claimed range, nothing in Table 4 would suggest that a range of “0.17 or more and 0.30 or less” as claimed results in any unexpected or unobvious features. For instance, the Table does not show any examples in the upper 2/3 of the claimed range, nor any comparative examples in excess of the claimed range.
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art does not disclose or suggest a structure as claimed and in which the second phase is formed from one or more of the compounds specifically recited in claim 5.
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 George Wyszomierski whose telephone number is (571) 272-1252. The examiner can normally be reached on Monday thru Friday from 8:30 am to 5:00 pm Eastern time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks, can be reached on 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GEORGE WYSZOMIERSKI/ Primary Examiner, Art Unit 1733 October 27, 2025