DETAILED ACTION
Response to Amendment
Applicant's amendment filed 2/4/2026 has been entered. Currently, claims 1-20 are pending.
Applicants’ amendments to the specification and the claims have overcome the issues of benefit to a prior filed application noted in section 2 of the previous Office action.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 103
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Homma et al. (WO 2020/022393) of which EP 3828901 is the EPO national stage entry and will be used as translation.
With regard to claims 1-7, 10-14 and 17-20, Homma et al. teach a resin composition layer comprising a magnetic paste and an organic solvent, such as N-methylpyrrolidone, which reads on applicants’ composition [0008], [0092] and [0093]. N-methylpyrrolidone has a boiling point of approximately 202 C. The resin composition layer can be thermally cured, which reads on applicants’ cured substance [0134]. The magnetic paste can include ferrite magnetic powder, such as Cu-Zn-based ferrite which reads on applicants’ soft magnetic particles, and an epoxy resin [0014], [0015] and [0024]. The dried resin composition layer may have an organic solvent content of 10% by mass or lower, which overlaps with the solvent content claimed [0093]. The content of the magnetic powder can be 98% by mass or lower of the non-volatile components and the average particle diameter of the magnetic powder can be from 1 micron to 10 microns, wherein both of these ranges overlap with the ranges claimed [0018] and [0022]; however, Homma et al. do not specifically teach the ranges or materials claimed.
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).
It would have been obvious to one having ordinary skill in the art to have made the organic solvent of the resin composition layer be N-methylpyrrolidone and be from 3 to 10 mass% of the resin composition layer, to have made the ferrite magnetic powder be Cu-Zn-based ferrite and be from 91 to 98 mass% of the total solid content of the resin composition layer and to have made the magnetic particles have an average particle diameter of 4 microns to 10 microns with a normal distribution of particle sizes as these are all materials taught in the reference and the amounts are within the ranges taught in the prior art. A normal distribution of particle sizes with the average particle size in the range claimed would intrinsically have 25% by mass or more of the magnetic particles having a primary particle diameter of 4 microns or more.
With specific regard to claims 7-9, 14-16 and 20, the Examiner notes that these are product-by-process claims, i.e. “formed from the composition according to”, as the solvent does not have to be present in the final product formed from the composition. It has been held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Please see MPEP 2112 and In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
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’ cured substance, magnetic particle-introduced substrate and electronic material [0008] and [0095]-[0098].
The magnetic paste can include ferrite magnetic powder, such as Cu-Zn-based ferrite which reads on applicants’ soft magnetic particles, and an epoxy resin [0014], [0015] and [0024]. The content of the magnetic powder can be 98% by mass or lower of the non-volatile components and the average particle diameter of the magnetic powder can be from 1 micron to 10 microns, wherein both of these ranges overlap with the ranges claimed [0018] and [0022]; however, Homma et al. do not specifically teach the ranges claimed.
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).
It would have been obvious to one having ordinary skill in the art to have made the ferrite magnetic powder be Cu-Zn-based ferrite and be from 91 to 98 mass% of the total solid content of the magnetic paste and to have made the magnetic particles have an average particle diameter of 4 microns to 10 microns with a normal distribution of particle sizes as these are all materials taught in the reference and within the ranges taught in the prior art. A normal distribution of particle sizes with the average particle size in the range claimed would intrinsically have 25% by mass or more of the magnetic particles having a primary particle diameter of 4 microns or more.
When the magnetic paste rendered obvious above is filled into the holes of a substrate and thermally cured according to the process [0095]-[0098], it will read on the structure of claims 7-9, 14-16 and 20, despite being formed by a different process, i.e. formed from a different initial composition.
Response to Arguments
Applicant’s arguments, see Remarks, filed 2/4/2026, with respect to the objections to the specification, the objections to the claims, the 112(b) rejection and the rejections based on Sato have been fully considered and are persuasive. The relevant objections/rejections have been withdrawn.
Applicant's arguments filed 2/4/2026 have been fully considered but they are not persuasive.
Applicants argue that the new limitations that “the magnetic particles contain ferrite particles” has overcome the prior art and led the case to be in condition for allowance.
The Examiner respectfully disagrees and notes that applicants’ amendment has necessitated the rejection based on Homma et al. set forth above, which renders obvious all the claims.
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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
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