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 .
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.
The instant claims contain the transitional phrase “comprising”. Per MPEP 2111.03 ‘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 or method steps'. This open-ended definition has been taken into consideration in the following rejections.
Claims 1-3 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over WO2021/055083 A1 to Zhang, filed in the 3/23/23 IDS.
Regarding claims 1 and 5, Zhang teaches a magnetic bead (para [004]) comprising:
a magnetic metal powder (core, para [032]); and
a coating layer (shell) that covers a particle surface of the magnetic metal powder (para [0033]), has an average thickness of 20 to 100 nm (para [033]), which overlaps the instantly claimed range of 20 nm or more, and is made of an oxide material, particularly silica, para [035]). The reference is silent regarding coercive force. However, the beads overlap, as discussed above. See MPEP 2112.01(I), which states that ‘Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established…“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.”…Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product’. The products overlap. Therefore, one of ordinary skill in the art would expect the Zhang bead to have overlapping properties, including but not limited to a coercive force of 80 A/m or less, absent evidence to the contrary.
Zhang discloses wherein an average thickness of the coating layer is t, 20 to 100 nm (para [033]), and an average particle diameter of the magnetic bead is D50, less than about 1 µm, particularly between about 200 nm and 1000 nm (para [031]) or about 0.2 µm to about 1 µm. This provides a ratio t/D50 of about 0.02 to about 0.5, which overlaps the instantly claimed range of 0.0001 or more and 0.05 or less. See MPEP 2144.05(I), which states that ‘In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists’.
Regarding claim 2, Zhang teaches the magnetic bead according to claim 1, wherein
the magnetic metal powder contains a nanocrystalline structure (para [032]).
Regarding claim 3, Zhang teaches the magnetic bead according to claim 1, wherein
the magnetic metal powder is made of an alloy containing Fe as a main component (para [032]).
Regarding claim 6, Zhang discloses the magnetic bead according to claim 1,
but is silent regarding the limitation “the magnetic bead has a saturation magnetization of 50 emu/g or more”. However, the magnetic material comprises a Fe-based soft magnetic material (para [032]). The saturation magnetization of Fe is about 220 emu/g. The material may further comprise Co, which has a saturation magnetization of about 160 emu/g, and/or Ni, which has a saturation magnetization of about 55 emu/g. Fe, Ni and Co are all soft magnetic materials. When the magnet is all Fe, the saturation magnetization falls within the instantly claimed range. When Co and Ni are present in the Fe-based material, the saturation magnetization of the alloy is expected to at least overlap the instantly claimed range as each of Fe, Ni and Co have saturation magnetizations that fall within the instantly claimed range. See MPEP 2144.05(I), cited above.
Regarding claim 7, Zhang discloses the magnetic bead according to claim 1, wherein
the magnetic bead has an average particle diameter of less than about 1 µm, particularly between about 200 nm and 1000 nm (para [031]) or about 0.2 µm to about 1 µm, which overlaps the instantly claimed range 0.5 µm or more and 50 µm or less. See MPEP 2144.05(I), cited above.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 and 5-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5 of U.S. Patent No. 11,901,101 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both teach overlapping magnetic beads comprising a core of an Fe based alloy with a shell of an oxide such as silica. 101 claim 5 recites a coercivity of 7 Oe or less, which overlaps the instantly claimed range of 1 Oe or less. (instant claims 1-3 and 5 and 101 claims 1, 2, and 5). Both also teach overlapping particle diameters (instant claim 7 and 101 claim 3). The 101 claims are silent regarding a saturation magnetization of 50 emu/g or more as set forth in instant claim 6. However, see MPEP 2112.01(I) cited above. The 101 claims recite an overlapping magnetic bead with overlapping coercive force, as discussed above. Therefore, one of ordinary skill in the art would expect the 101 bead to have overlapping properties, including but not limited to overlapping saturation magnetization, absent evidence to the contrary. 101 claim 1 recites an average thickness t of 5 to 300 nm or 0.005 to 0.3 µm. 101 claim 3 recites an average particle diameter D50 of 1 to 50 µm. This provides a ratio t/D50 of 0.0001 to 0.3, which overlaps the instantly claimed range of 0.0001 or more and 0.05 or less. See MPEP 2144.05(I), cited above.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7 of copending Application No. 18/191086 (hereinafter 086). Although the claims at issue are not identical, they are not patentably distinct from each other because both teach overlapping magnetic beads comprising a core of an Fe based alloy with a shell of an oxide such as silica (instant claims 1-3 and 5 and 086 claims 1, 3, and 4). The 086 claims are silent regarding coercive force and saturation magnetization as set forth in instant claims 1 and 6. However, see MPEP 2112.01(I) cited above. The 086 claims recite an overlapping magnetic bead comprising an overlapping Fe based alloy, as discussed above. Therefore, one of ordinary skill in the art would expect the 086 bead to have overlapping properties, including but not limited to overlapping coercive force and overlapping saturation magnetization, absent evidence to the contrary. Both teach overlapping particle diameters (instant claim 7 and 086 claim 5). Both also teach overlapping Fe based alloys containing overlapping amounts of Si, B, and Cr (instant claim 4 and 086 claims 2 and 7). 086 claim 3 recites an average thickness t of 10 to 200 nm or 0.010 to 0.2 µm. 086 claim 5 recites an average particle diameter D50 of 0.1 to 100 µm. This provides a ratio t/D50 of 0.0001 to 2, which overlaps the instantly claimed range of 0.0001 or more and 0.05 or less. See MPEP 2144.05(I), cited above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 12/16/25 have been fully considered but they are not persuasive. Applicant argues that Zhang does not teach the new limitation regarding the relationship between coating thickness and particle diameter. However, as discussed above, Zhang teaches a coating thickness of 20 to 100 nm (para [033]) and a diameter of between about 200 nm and 1000 nm (para [031]). This provides a t/D50, thickness to average diameter ratio of about 0.02 to about 0.5, which overlaps the instantly claimed range of 0.0001 or more and 0.05 or less. See MPEP 2144.05(I), cited above.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., controlling the average thickness relative to the average particle diameter to render the coating less likely to peel off) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Zhang does teach an overlapping t/D50 ratio, as discussed above.
Therefore, the 103 rejection of claims 1-3 and 5-7 and obvious over
Zhang stands.
Applicant has elected to defer filing of a Terminal Disclaimer at this time.
As discussed above, the claims of both 101 and 086 recite overlapping t/D50 ratios.
Therefore, the obviousness double patenting rejection of claims 1-3 and 5-7 as unpatentable over the claims of 101 stands.
The provisional obviousness double patenting rejection of claims 1-7 as unpatentable over the claims of 086 also stands.
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.
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/L.E./ Examiner, Art Unit 1734
/Matthew E. Hoban/Primary Examiner, Art Unit 1734
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