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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/15/2025 are being considered by the examiner. The IDS is marked with “No IDS fee size is required under 37 CFR 1.17(v) at this time.
Continued Prosecution Application
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/22/2026 has been entered.
Status of Claims
Amendment of the claims filed on 06/22/2026 has been entered.
Claims 1, 9 and 11-13 have been amended, however, amendment finds support at least in the paragraph [0030]-[0033] of the instant specification of the disclosure, therefore, no new matter is presented.
Claim 2 and 10 are cancelled.
Therefore, claims 1, 3-9 and 11-13 are remaining for examination on the merits.
Status of Previous Objection/Rejections
The previously cited claim objection have been withdrawn, due to amendment of the claim 1.
The previously cited 35 USC § 112(b) rejections of the claims 1, 3-9 and 11-13 have been withdrawn due to amendment of claim 1.
The previously cited 35 USC § 102(a)(1) and 35 USC § 103 rejections of the claims 1, 3-9 and 11-13 have been withdrawn due to amendment of claim 1.
Claim Rejections - 35 USC § 112 (b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-9 and 11-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the transition phrase “comprising” in line 1 and then “contains” in line 8, and line 10, renders the claim indefinite, because, the transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements, [see MPEP § 2111.03], in this case, claim recites “the Fe-Ni based soft magnetic metal contains 20 mass% or more of Fe and 20 mass% or more of Ni”, i.e. use of “contains” is open-ended and does not exclude additional, unrecited elements, and then claim further recites “the Fe-Ni based soft magnetic metal contains 0 to 3 parts by mass of elements other than Fe, Ni, Co, Si, Cr, and P with respect to 100 parts by mass of the total of Fe, Ni, Co, Si, Cr, and P”, i.e. use of “contains” make the claims again open-ended does not exclude additional, unrecited elements, and therefore the scope of the claim is not clear.
Claim 1 is further unclear, because claim recites the “0-3 part by mass of element other than Fe, Ni, Co, Si, Cr, and P with respect to 100 parts by mass of the total of Fe, Ni, Co, Si, Cr, and P”, therefore, it is not clear whether claim 1 requires Fe and Ni or all recited elements of Fe, Ni, Co, Si, Cr, and P or not, for example, according to the Table 1 of the specification of the instant disclosure, the Example 1 comprises Fe and Ni, Example 2 comprises Fe, Ni and Co, Example 3 comprises Fe, Ni, Co and Si, and Example 4 comprises Fe, Ni, Co, Si and Cr etc. i.e. none of these alloy recites all of Fe, Ni, Co, Si, Cr, and P. If an alloy contains 20% or more of Fe and 20% or more of Ni similar as Example 1, and contains 0.05 % other elements, then how the part by mass of the other element would be calculated with respect to 100 parts by mass of the total of Fe, Ni, Co, Si, Cr, and P, as the alloy similar to Example 1 contains only Fe and Ni, and does not contain any Co, Si, Cr and P.
Claim 6-8 recites the term “coil-type” in line 1 of each of the claim, which is a relative term which renders the claim indefinite, because it was unclear what "type" was intended to convey [see MPEP § 2173. E], a coil is known to ordinary skill in the art, but what does a “coil-type” mean whether it is not a coil, or something different than coil . Applicant is suggested to read the claim as “an electric component comprising the magnetic element body according to claim 5 and a coil inductor” in claim 6 and “The coil inductor” in claim 7 and 8.
Appropriate correction is required.
Claim 3-9 and 11-13 are directly or indirectly dependent of claim 1 and therefore rejected for the same reason.
Claim Interpretation
As shown above claim 1 is indefinite as the scope of the claim is not clear and it is also not clear whether the claim requires all the elements of Fe, Ni, Co, Si, Cr, and P, or not. However, based on claim 3, 11-13, paragraph [0027]-[0031], and Table 1 of the specification of the instant disclosure, and as recited by the instant claim language, Examiner interpreted that the claim 1 requires the Fe-Ni based soft magnetic alloy contains 20 mass % or more of Fe and 20 mass % or more of Ni and 0-3 % by mass of element other than Fe, Ni, Co, Si, Cr, and P, with respect to total amount of the Fe-Ni based soft magnetic alloy for the examination purpose in this office action.
Claim Rejections - 35 USC § 102
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 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.
Claims 1, and 9 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Panpan Jing, et.al. [“Dependence of phase configurations, microstructures and magnetic properties of iron-nickel (Fe-Ni) alloy nanoribbons on deoxidization temperature in hydrogen”, SCIENTIFIC REPORTS | 6:37701 | DOI: 10.1038/srep37701, Published: 23 November 2016] (Jing, hereafter).
Regarding claim 1, 4-5, and 9, Jing teaches a soft magnetic metal particle comprising an Fe-Ni based soft magnetic metal wherein the soft magnetic metal particle (Fe-Ni alloy nanostructures, nanofibers, nanotubes and nanoribbons, etc. (see Jing’s Page 1-2, Abstract, Introduction), wherein each of nanoribbon is constructed by small nanoparticles (NPs), see Jing’s Figure 1, page 3, Results and Discussion) includes both a face-centered cubic (fcc) phase and a body-centered cubic (bcc) phase (the example S2 are constructed by the fcc and bcc Fe-Ni NPs, see Jing’s Abstract, Page 3, Fig. 1, and Page 4, Fig. 2(g–i), Results and Discussion), a diffraction peak of the fcc phase appears 2[Symbol font/0x71] = 43.88° in an X-ray diffraction chart, and a diffraction peak of the bcc phase appears 2[Symbol font/0x71] = 44.76° (the fcc Fe-Ni phase, the XRD peaks marked by red diamond is at about 2[Symbol font/0x71] = 43.88°, and the bcc Fe-Ni phase, the XRD peaks marked by blue diamond is at 2[Symbol font/0x71] = 44.76°, example S2, see Jing’s Figure 1, page 3, Results and Discussion).
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Examiner annotated (as shown dotted lines) the peak of the fcc and bcc with the corresponding baseline in the X-ray diffraction chart for the example S2, in Figure 1 of Jing, and then a value is being calculated by dividing a diffraction peak intensity of the bcc peak in an X-ray diffraction chart by a diffraction peak intensity of the fcc. As the height of the bcc peak in the annotated an X-ray diffraction chart is about 0.5 of the height of the fcc peak in the annotated an X-ray diffraction chart, which is within the range as recited in both instant claim 1 and 9.
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[AltContent: connector][AltContent: connector][AltContent: connector][AltContent: textbox (Peak of FCC (111))][AltContent: textbox (Peak of BCC (110))][AltContent: textbox (Base line)]Jing’s diffraction peak of the fcc and bcc phase appear at 2[Symbol font/0x71] and the ratio of intensity of bcc to intensity of fcc, all are within the ranges as recited in the instant claim.
Therefore, it is anticipatory when the prior art is within a claimed range. [See MPEP § 2131.03].
Jing further teaches the Fe-Ni based soft magnetic metal contains the complex of fcc Fe-Ni + bcc Fe-Ni (S2) total atomic ratios of Fe: Ni is 50.9: 25.3, see Jing’s page 4, Results and Discussion), therefore, calculated mass% from the atomic ratio would be 65.69 mass% of Fe and 34.31 mass% Ni, which are within the ranges as recited in the instant claim.
Therefore, it is anticipatory when the prior art is within a claimed range. [See MPEP § 2131.03].
Jing further teaches the Fe-Ni based soft magnetic metal contains 0 to 3 parts by mass of elements other than Fe, Ni, Co, Si, Cr, and P with respect to 100 parts by mass of the total of Fe, Ni, Co, Si, Cr, and P, as Jing’s Fe-Ni alloy does not contain any other element.
Regarding claim 5, all the discussions above claim 1 are applicable for claim 5, in addition, Jiang teaches a magnetic element body comprising the soft magnetic metal particle (Fe-Ni alloys owing to their outstanding soft magnetic properties including high saturation magnetization (Ms), high permeability (μ), high Curie Temperature (Tc) and low coercivity (Hc) and energy loss, have their widely applications in electromagnetic microwave absorption, magnetic refrigeration systems, magnetic recording devices, magnetic resonance imaging and sensors, i.e. each of these magnetic device read on magnetic element body, as claim does not specify any specific magnetic element. see Jing’s page 1, Abstract).
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 3, 5-8 and 11-13 are rejected are rejected under 35 U.S.C. 103 as being unpatentable over Panpan Jing, et.al. [“Dependence of phase configurations, microstructures and magnetic properties of iron-nickel (Fe-Ni) alloy nanoribbons on deoxidization temperature in hydrogen”, SCIENTIFIC REPORTS | 6:37701 | DOI: 10.1038/srep37701, Published: 23 November 2016] (Jing, hereafter) as applied to claim 1, and in view of Takashi Suzuki, et.al. [US20220336128A1] (PCT Filed: Sep. 25, 2020) (Suzuki, hereafter).
Regarding claim 3 and 12, all the discussions above claim 1 are applicable for claim 3 and 12, Jing discloses the soft magnetic metal particle comprises Fe, and Ni (see Jing’s, Abstract).
But Jing is silent about Co and therefore silent about the soft magnetic metal particle comprises Fe, Ni, and Co as a main component.
However, Suzuki discloses a soft magnetic metal particle comprises Fe, Ni, and Co as a main component (Suzuki’s soft magnetic metal particle contains 37-45.0 mass % of Fe, 20-32 mass % of Ni and 20-40.0 mass % of Co, see Suzuki’s Example 8, 9, 9a and 10 on TABLE 2), wherein Suzuki’s Fe and Ni content are within as recited in the instant claim 1 and Co is a main component.
With respect to claim 12, Suzuki’s Co content is within as recited in the instant claim 12.
Suzuki further discloses to provide a soft magnetic metal powder capable of providing a soft magnetic metal sintered body having high permeability µ and specific resistance p included in a coil type electronic component which has sufficiently high inductance L and Q value while rarely causing a plating elongation and a short circuit, (see Suzuki’s [0006]) and by producing the soft magnetic metal sintered body using the soft magnetic metal powder constituted by the soft magnetic metal particles satisfying the composition, the soft magnetic metal sintered body having higher permeability µ and specific resistance p can be obtained(see Suzuki’s [0059]).
Suzuki is directed top a soft magnetic metal powder including soft magnetic metal particles each constituted by an Fe-Ni (Fe-Ni-Si-M) based alloy and therefore, analogous to the instant claim and Jing.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the present invention to have Suzuki’s teachings to combine with the teachings of soft magnetic particle of Jing to have a coil-type electronic component comprising the magnetic element body with high permeability µ and specific resistance p are required while lowering the risk of short circuit for an intended application.
Regarding claim 5, all the discussions above claim 1 are applicable for claim 5, while Jiang is sufficient to meet this limitation of the claim, in addition, Suzuki also discloses a magnetic element body comprising the soft magnetic metal particle (a soft magnetic metal powder capable of providing a soft magnetic metal sintered body having high permeability µ and specific resistance p included in a coil type electronic component which has sufficiently high inductance L and Q value while rarely causing a plating elongation and a short circuit [Section 0006]. Suzuki’s FIG. 1 is a multilayer coil 1 includes an element body 2, wherein, a coil conductor 5 is embedded three dimensionally and spirally in a magnetic element 4 ([0042], [0065]-[0066]) and a soft magnetic sintered body comprising the soft magnetic metal powder (Suzuki’s claims 1, and 6)).
Regarding claim 6, all the discussions above claim 1 and 5 are applicable for claim 6, but Jing is silent about a coil-type electronic component comprising the magnetic element body and a coil conductor.
However, Suzuki discloses a magnetic element body comprising the soft magnetic metal particle and a coil-type electronic component comprising the magnetic element body and a coil conductor (a soft magnetic metal powder capable of providing a soft magnetic metal sintered body having high permeability µ and specific resistance p included in a coil type electronic component which has sufficiently high inductance L and Q value while rarely causing a plating elongation and a short circuit, (see Suzuki’s [0006]) and Suzuki’s FIG. 1 is a multilayer coil 1 includes an element body 2, wherein, a coil conductor 5 is embedded three dimensionally and spirally in a magnetic element 4 (see Suzuki’s [0042], [0065]-[0066]) and a coil type electronic component comprising a magnetic element and a coil conductor embedded in the magnetic clement (Suzuki’s claim 7)).
Regarding claim 7, all the discussions above claim 1 and 6 are applicable for claim 7, Jing is silent about the coil-type electronic component, wherein the coil conductor is disposed inside the magnetic element body.
However, Suzuki discloses the coil-type electronic component, wherein the coil conductor is disposed inside the magnetic element body (and a coil type electronic component comprising a magnetic element and a coil conductor embedded in the magnetic clement, see Suzuki’s claim 7) and also in Suzuki’s FIG. 1 a multilayer coil 1 includes an element body 2 a coil conductor 5 is embedded three dimensionally and spirally in a magnetic element 4 ([0042], [0065]-[0066])
Regarding claim 8, all the discussions above claim 1 and 7 are applicable for claim 8, Jing is silent about the coil-type electronic component and thus, silent about the coil inner-diameter region and a cover region of the magnetic element body comprise the soft magnetic metal particle.
However, Suzuki discloses the coil-type electronic component according to claim 7, wherein a coil inner-diameter region and a cover region of the magnetic element body comprise the soft magnetic metal particle (the soft magnetic metal particles included in the coil type electronic component may be each covered with the same coating film which covers each of the soft magnetic metal particles included in the coil type electronic component [00127] and soft magnetic metal powder along with binder, granulated and molded in a pressure, to a toroidal shape having an outer diameter of 13 mm x an inner diameter of 6 mm x a height of 2.7 to 3.3 mm is formed [0135]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the present invention to have Suzuki’s teachings to combine with the teachings of soft magnetic particle of Jing to have a coil-type electronic component with a magnetic element body to have required magnetic properties as required for an application.
Regarding claim 11, and 13, all the discussions above claim 1 and 3 are applicable for claim 11, and 13 respectively, but Jing is silent about the Si, Cr, and P, therefore, Jing is silent about the Fe-Ni based soft magnetic metal contains 1 mass% or more and 6 mass% or less of Si, 0.2 mass% or more and 5 mass% or less of Cr, and 0.01 mass% or more and 1 mass% or less of P.
However, Suzuki discloses a soft magnetic metal powder Fe-Ni-Si-M based metal alloy powder containing Co (see Suzuki’s [0010], [0018], [0056]-[0059] see Suzuki’s Examples TABLE1 and TABLE 2), contains, mass % of the element and corresponding claimed mass % have shown in following table,
Element
Instant claim 11 and 13 (mass %)
Suzuki's composition (mass %) (Table 1)
Within/Overlaps with claimed range
Si
1 to 6
2.0 or more and 6.0 or less (see Suzuki’s [0010])
Within
Cr
0.2 to 5
less than 2.0 (see Suzuki’s [0010])
Overlaps
P
0.01 to 1
0.01 (100 ppm) or more and 0.5 (5000 ppm) or less of (see Suzuki’s [0016]).
Within
Suzuki’s mass % of Si, and P are within the range as recited in the instant claim of both 11 and 13 and Cr overlaps within the range as recited in the instant claim of both 11 and 13.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected and produced a composition from the teachings of Yasushi that falls within the instantly-claimed ranges, because “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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)” [See MPEP § 2144.05.I].
Suzuki further teaches by producing the soft magnetic metal sintered body using the soft magnetic metal powder constituted by the soft magnetic metal particles satisfying the above composition, the soft magnetic metal sintered body having higher permeability µ and specific resistance p can be obtained compared to the case of producing a soft magnetic metal sintered body using a soft magnetic metal powder constituted by soft magnetic metal particles which do not satisfy the above composition (see Suzuki’s [0059]). Particularly, the amount of Si provides the required specific resistance (see Suzuki’s [0060]), while with the amount of Cr, the permeability µ and the specific resistance p are increased (see Suzuki’s [0109]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the present invention to have Suzuki’s teachings of the amount of Cr, Si and P in the composition of a soft magnetic alloy powder to combine with the teachings of the magnetic particle of Jing to have a magnetic metal particle for having the soft magnetic metal sintered body having higher permeability µ and specific resistance p can be obtained compared to the case of producing a soft magnetic metal sintered body using a soft magnetic metal powder constituted by soft magnetic metal particles.
Response to Arguments
Applicant’s arguments with respect to claims 1, 3-9 and 11-13, filed 06/22/2026 have been considered but are moot because the new ground of rejection does not rely on any reference, specifically Bo applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The previously cited prior art Suzuki has been used to reject the dependent claims, however Applicant did not show any argument regarding the dependent claims over Suzuki.
A new 35 USC § 102 (a) (1) rejection and 35 USC § 103 rejection of the claims have been associated with this office action due to the amendments (please check the section of the 35 USC § 102 (a) (1) rejection and 35 USC § 103 rejection associated with this office action for further details).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Issei Nakamura, et.al. [US4844977] discloses magnetic metallic powder contains an alloy system of at least one metal selected from the group consisting of iron, nickel and cobalt as the main component(s) with or without at least one other element, such as Fe-Ni-Co, Fe-Co-Ni-P, Fe-Co-Ni-Cr etc., see Nakamura’s Abstract). Nakamura further discloses the magnetic metallic powder whose differential thermal curve will not change up to a temperature of at least 80°C, even after repeated running of the medium, the magnetic metallic powder will not be easily oxidized and there will be no deterioration of the electro-to-magnetic conversion characteristics, (see Nakamura’s col. 7, line 29-35).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NAZMUN NAHAR SHAMS whose telephone number is (571)272-5421. The examiner can normally be reached M-F 11:00 AM-7:00PM (EST).
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/NAZMUN NAHAR SHAMS/Examiner, Art Unit 1738
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