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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/18/26 has been entered.
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 US 2019/0279801 A1 to Yoshidome et al. (hereinafter Yoshidome).
Regarding claim 1, Yoshidome discloses a magnetic bead (powder 1, Fig. 1, para [0026]) comprising:
a magnetic metal powder (2, para [0038]); and
a coating layer (11) that covers a particle surface of the magnetic metal powder, has an average thickness of 1 to 30 nm, which overlaps the instantly claimed range of 20 nm or more, and is made of an oxide material (para [0052]), wherein
the magnetic metal powder, such as Fe-Si-B-Cr-C alloy, contains an amorphous structure (para [0042]),
a coercive force is 0.02 to 6 Oe or 2 to 500 A/m (for amorphous Fe-Si-B-Cr-C alloy, data from Google text search), which overlaps the instantly claimed range of 1.0 Oe or less, which overlaps the instantly claimed range of 80 A/m, or less, and
when an average thickness of the coating layer (11) is t, 1 to 30 nm (para [0052]) and an average particle diameter of the magnetic bead is D50, 0.3 to 100 µm (para [0039] and para [0104] for correct units), a ratio t/D50 is 0.0001 to 0.1, 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 claims 3 and 4, Yoshidome discloses the magnetic bead according to claim 1, wherein the magnetic metal powder is made of an alloy, such as Fe-Si-B-Cr-C alloy (para [0042]) containing Fe as a main component, wherein the alloy has a Si content of 6.7%, which falls within the instantly claimed range of 2.0 mass% or more and 9.0 mass% or less, a B content of 2.5%, which falls within the instantly claimed range of 1.0 mass% or more and 5.0 mass% or less, and a Cr content of 2.5%, which falls within the instantly claimed range of 1.0 mass% or more and 3.0 mass% or less (Table 2, amorphous alloys).
Regarding claim 5,Yoshidome discloses the magnetic bead according to claim 1, wherein the oxide material contains a silicon oxide (para [0052]).
Regarding claim 6,Yoshidome discloses the magnetic bead according to claim 1, wherein the magnetic bead has a saturation magnetization of 150-175 emu/g for amorphous Fe-Si-B-Cr-C alloy (para [0042]), data from Google text search, which overlaps the instantly claimed range of 50 emu/g or more. See MPEP 2144.05(I), cited above.
Regarding claim 7,Yoshidome discloses the magnetic bead according to claim 1, wherein the magnetic bead has an average particle diameter of 0.3 to 100 µm (para [0039] and para [0104]), which overlaps the instantly claimed range of 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 in the Office Action mailed 3/27/26. 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. The 101 claims do not expressly recite an amorphous magnetic material. However, the 101 claims do recite a soft magnetic material (101 claim 1). The soft magnetic material is defined as crystalline, amorphous, or microcrystalline. See col 4, ln 37-40 of the 101 disclosure. Therefore, one of ordinary skill in the art would expect the soft magnetic material of the 101 claims to be crystalline, amorphous, or microcrystalline. Amorphous is one of three available options.
Response to Arguments
Applicant’s arguments, see page 3, filed 6/18/26, with respect to the 086 application have been fully considered and are persuasive. The 086 application has been abandoned.
Therefore, the provisional obviousness double patenting rejection of claims 1 and 3-7 as unpatentable over the claims of 086 has been withdrawn.
The provisional obviousness double patenting rejection of claim 2 as unpatentable over the claims of 086 is moot because the claim has been canceled.
Applicant’s arguments, see page 3, filed 6/18/26, with respect to the 101 patent have been fully considered but are not persuasive. Applicant argues that the 101 patent is silent regarding a coercive force of 1.0 Oe and is silent regarding the instantly clamed t/D50 ratio as set forth in the instant claims. However, 101 claim 5 recites a coercivity of 7 Oe or less, which overlaps the instantly claimed range of 1 Oe or less. 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. Applicant further argues that the 101 patent does not recite the newly claimed feature of the magnetic powder having an amorphous structure. However, the 101 claims do recite a soft magnetic material (101 claim 1). The soft magnetic material is defined as crystalline, amorphous, or microcrystalline, with amorphous and microcrystalline preferred for reduced coercive force. See col 4, ln 37-43 of the 101 disclosure. Therefore, one of ordinary skill in the art would expect the soft magnetic material of the 101 claims to be crystalline, amorphous, or microcrystalline.
Therefore, the obviousness double patenting rejection of claims 1 and 3-7 as unpatentable over the claims of 101 stands.
The obviousness double patenting rejection of claim 2 as unpatentable over the claims of 101 is moot because the claim has been canceled.
Applicant's arguments filed 6/18/26, regarding Zhang, have been fully considered and are persuasive. Zhang does not teach or suggest an amorphous magnetic metal powder.
Therefore, the 103 rejection of claims 1, 3 and 5-7 and obvious over
Zhang has been withdrawn
The 103 rejection of claim 2 and obvious over Zhang is moot because the claim has been canceled.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNNE EDMONDSON whose telephone number is (571)272-2678. The examiner can normally be reached M-F 10-6:30.
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/L.E./ Examiner, Art Unit 1734
/Matthew E. Hoban/Primary Examiner, Art Unit 1734
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