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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/13/2026 has been entered.
Response to Amendment
Applicants’ amendment filed 7/13/2026 has been entered. Currently, claims 1-21 are pending and claim 21 is new.
Claim Rejections - 35 USC § 103
Claims 1-7, 10-14 and 17-21 are rejected under 35 U.S.C. 103 as being obvious over Miyata et al. (12,609,226).
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
With regard to claims 1-7, 10-14 and 17-21, Miyata et al. disclose a composition and cured substance that can have magnetic particles made of permalloy having a diameter of 5 microns or more, which reads on 100% by mass of the magnetic particles being soft ferrite magnetic particles having a primary particle diameter of 4 microns or more, a resin having a graft chain according to formula (1), (2) or (4), which reads on the resin A having a graft chain claimed, and a solvent having a boiling point of from 170-250 C at 1% to 25% by mass of the composition (col. 6, lines 25-32, col. 7, lines 36-38, col. 23, col. 56, line 38 to col. 57, line 3). The magnetic particles can be present at 50% to 99% by mass of the total solid content of the composition and there may be a curable epoxy in the composition (col. 8, lines 54-57 and col. 19, lines 53-60). The composition can be cured to form a film, which reads on applicants’ cured substance (col. 60, lines 10-41); however, Miyata et al. do not specifically teach a composition having all of the materials claimed.
It would have been obvious to one having ordinary skill in the art to have made a composition with permalloy magnetic particles having a particle size of 5 microns or greater, a resin having a graft chain, an epoxy compound and a solvent having the boiling point as taught in the prior art. These are all known materials for forming composition as taught in the prior art and there would have been predictable results in forming a composition from these materials.
The Examiner notes there is overlap in the content of magnetic particles and content of the solvent taught in the prior art with the content claimed, and therefore a prima facie case of obviousness exists. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 8, 9, 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Miyata et al. (12,609,226) in view of Homma et al. (WO 2020/022393) of which EP 3828901 is the EPO national stage entry and will be used as translation.
Miyata et al. render obvious all of the limitations above. They also teach that their composition can be used to form an inductor (col. 58, lines 18-23); however, they do not teach the structure claimed.
Homma et al. teach a magnetic paste that can be placed into the through hole of a substrate and cured for forming a circuit board that is used for an inductor, which reads on applicants’ magnetic particle-introduced substrate and electronic material [0008] and [0095]-[0098].
Since Miyata et al. and Homma et al. are both drawn to curable magnetic particle containing compositions for inductors, it would have been obvious to one having ordinary skill in the art to have used the circuit board for use as an inductor having holes of Homma et al. with the composition of Miyata et al. The results of such a combination would have been predictable to one having ordinary skill; further, each of the elements would have performed the same in combination as they did separately.
Response to Arguments
Applicant’s arguments, see Remarks, filed 7/13/2026, with respect to the objections to the rejections based on Homma et al. as a primary reference have been fully considered and are persuasive. The relevant rejections have been withdrawn.
Applicants’ arguments filed 7/13/2026 have been fully considered but they are not persuasive.
Applicants argue that the new limitations that “the one or more components is a resin A having a graft chain which contains one or more polymer structures selected from the group consisting of a polyester structure and a poly(meth)acrylate structure” has overcome the prior art and led the case to be in condition for allowance.
While the Examiner agrees that this has overcome the previous prior art rejection, Miyata et al. renders obvious all the new limitations for the reasons noted above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
