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 .
Status of Claims
Claims 6 and 8 are cancelled. Claims 1-5 and 7 are pending where claim 1 has been amended.
Status of Previous Rejections
The previous 35 USC § 103 rejections of the claims have been withdrawn in view of amendments to the claims.
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 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.
Claim(s) 1-5 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0306831 to Mori et al in view of “Introduction to Characterization of Powders” by Hu and US 2012/0064448 A1 to Sakamoto et al.
Regarding claim 1, Mori teaches a soft magnetic metal powder containing Fe, wherein the soft magnetic metal powder includes particles each including a soft magnetic metal portion and a coating portion coating a surface of the soft magnetic metal portion (Mori, para [0006, 0042]).
Mori teaches the soft magnetic metal portion includes Fe-based nanocrystals having an average crystal grain size of 5-30 nm (within the instantly claimed range of 1 nm or more and 60 nm or less (Mori, para [0057-0058]). Mori teaches that the soft magnetic metal portion can have a nanocrystal structure, wherein when an amorphization ratio is less than 85% of the microstructure, the soft magnetic alloy powder is indicated as having a crystalline structure. Particularly, the integrated intensities of the amorphous and crystalline phases are determined through XRD [0049-0051], providing phase content ratios in the microstructure reading on a volume fraction. Mori teaches the nanocrystals being easily formed in the soft magnetic metal portion through subjecting the powder to a heat treatment (Mori, para [0077]).
Mori further teaches an example of the soft magnetic metal powder produced using composition 1 represented by Fe0.735Nb0.03B0.09Si0.135Cu0.01 in atomic ratio (Mori, para [0129]). Mori teaches the example having a first coating portion, and further, that the powder was subjected to heat treatment (Mori, para Pg. 9, Table 1 – sample no. 6). Mori teaches that a soft magnetic metal portion of the powder subjected to heat treatment was confirmed to have a structure including only nanocrystals (Mori, para [0146]), such that it necessarily follows that the soft magnetic metal portion contains 100% of a nanocrystal phase (within the instantly claimed range of 30% by volume or more and 100% by volume or less).
Mori does not explicitly disclose “wherein a ratio D90/D50 of a 90% particle diameter D90 to an average particle diameter D50 is 3.00 or less” nor does Mori explicitly disclose “wherein the coating layer includes a functional group configured to bind to a biological substance, the functional group being selected from the group consisting of a trimethylsilyl group and an NHS group and the coating layer includes at least one of polyethylene glycol and albumin.”
Hu discloses that sieving analysis is the most common and convenient method for particle size distributions of a powder when the majority of the particles are more than 20 μm and uses a set of sieves with different opening sizes to generate narrowly classified fractions of the powder and further discloses that 20 μm and 25 μm are standard sieve opening sizes (Hu, page 41, “Particle Size and Particle Size Distribution,” Table 1).
Sakamoto discloses that magnetic powder may be subjected to hydrophobic surface treatment using a silane-based surface treating agent such as trimethylsilyl mercaptan prior to suspending the powder in a continuous phase which may be polyethylene glycol which is then dried for the purpose of allowing the resulting magnetic composite particles to exhibit a good environmental stability such as a good moisture resistance (Sakamoto, abstract, para [0050-0052, 0081-0093]).
Regarding claim 1, it would have been obvious to one of ordinary skill in the art at the time the invention was made to subject the powder of Mori to conventional sieving analysis as suggested by Hu, resulting in a sieved fraction of powder with a minimum particle size of 20 μm and a maximum particle size of 25 μm (i.e. a D90/D50 size of less than 25/20 or 1.25). The motivation for doing so is that sieving analysis is the most common and convenient method for particle size distributions of a powder when the majority of the particles are more than 20 μm (Hu, page 41, “Particle Size and Particle Size Distribution,” Table 1) and the particle size of Mori is 24 μm (Hu, para [0130]). Furthermore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to subject the magnetic powder of Mori to hydrophobic surface treatment using a silane-based surface treating agent such as trimethylsilyl mercaptan prior to suspending the powder in a continuous phase which may be polyethylene glycol which is then dried, i.e. coated on the powder. The motivation for doing so would be for allowing the resulting magnetic composite particles to exhibit a good environmental stability such as a good moisture resistance (Sakamoto, abstract, para [0050-0052, 0081-0093]).
Regarding the limitation “that extracts biological substances to be tested from a specimen,” a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the magnetic bead of Mori in view of Hu and Sakamoto could be used to extract biological substances to be tested from a specimen.
Regarding claim 2, composition 1 of the soft magnetic metal powder in Mori of Fe0.735Nb0.03B0.09Si0.135Cu0.01 (atomic ratio) (Mori, para [0129]) meets the instant compositional formula. Particularly, when converted to atomic percentage, composition 1 of Mori provides: Fe73.5Nb3B9Si13.5Cu1, wherein 73.5% = 100-3-9-13.5-1, and 0≤Nb≤30.0, 0≤B≤25.0, 0<Si≤30.0, and 0≤Cu≤3.0. It is noted that all remaining elemental ranges as claimed are inclusive of 0 at.% and are considered to be optional.
Regarding claims 3-4, Mori teaches the coating portions of the soft magnetic metal powder example includes an oxide of Si (Mori, para [0134]). Mori teaches further processing of the soft magnetic powder sample to include an additional insulating coating portion, wherein additional coating portion includes SiO2 [0147]. Mori teaches the additional coating portion in the sample having a thickness of 20 nm, and a thickness of all the coating portions totaling 28 nm (Mori, para [0040], Pg. 17, Table 5 – sample no. 103).
Regarding claim 5, Mori teaches an average particle size of the soft magnetic metal powder sample to be 24 µm (Mori, para [0040,0130, 0132]).
Regarding claim 7, the soft magnetic metal powder in Mori has a composition of Fe0.735Nb0.03B0.09Si0.135Cu0.01 (atomic ratio) (Mori, para [0129]), which lies within the instantly claimed composition ranges with the exception of the Nb content of 3 at% being less than the instantly claimed 6 to 30 at%. However, Mori more broadly discloses that the amount of Nb may be from 0 to 14 at% (Mori, para [0066-076]), overlapping the instantly claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Mori including the instantly claimed because Mori discloses the same utility throughout the disclosed ranges.
Claims 1, 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0085931 to Ohta et al in view of “Introduction to Characterization of Powders” by Hu and US 2012/0064448 A1 to Sakamoto et al and the evidentiary reference “Standard sieves and Mesh sizes” by De Lloyd.
Regarding claim 1, Ohta teaches a magnetic alloy in powder form having a composition represented by Fe100-x-y-zCuxByXz (atomic %), wherein 0.1≤x≤3, 10≤y≤20, 0<z≤10, and X is preferably Si, wherein the magnetic alloy has a structure containing crystal grains having an average diameter of 60 nm or less, the crystal grains being dispersed in an amorphous matrix in a proportion of 30% or more by volume [0010-0013]. Encompassing ranges are prima facie obviousness. See MPEP 2144.05(I).
Ohta further teaches that the magnetic alloy may be provided with an insulating coating layer of SiO2 in order to lower eddy current at high frequencies, thereby reducing a core loss [0077-0078].
Ohta does not explicitly disclose “wherein a ratio D90/D50 of a 90% particle diameter D90 to an average particle diameter D50 is 3.00 or less” nor does Ohta explicitly disclose “wherein the coating layer includes a functional group configured to bind to a biological substance, the functional group being selected from the group consisting of an OH group, a COOH group, a NH2 group, an epoxy group, a trimethylsilyl group, and an NHS group.”
Hu discloses that sieving analysis is the most common and convenient method for particle size distributions of a powder when the majority of the particles are more than 20 μm and uses a set of sieves with different opening sizes to generate narrowly classified fractions of the powder and further discloses that 20 μm, 25 μm, 45 μm, and 75 μm are standard sieve opening sizes (Hu, page 41, “Particle Size and Particle Size Distribution,” Table 1).
Sakamoto discloses that magnetic powder may be subjected to hydrophobic surface treatment using a silane-based surface treating agent such as trimethylsilyl mercaptan prior to suspending the powder in a continuous phase which may be polyethylene glycol which is then dried for the purpose of allowing the resulting magnetic composite particles to exhibit a good environmental stability such as a good moisture resistance (Sakamoto, abstract, para [0050-0052, 0081-0093]).
Regarding claim 1, it would have been obvious to one of ordinary skill in the art at the time the invention was made to subject the powder of Ohta to conventional sieving analysis as suggested by Hu. The motivation for doing so is that sieving analysis is the most common and convenient method for particle size distributions of a powder when the majority of the particles are more than 20 μm (Hu, page 41, “Particle Size and Particle Size Distribution,” Table 1) and the particle size of Ohta is up to 170 mesh size sieve (Ohta, para [0133]) or 88 µm or lower when converted (De Lloyd, Pg. 3). Subjecting the powder of Ohta to a fraction of powder with a minimum particle size of 20 μm and a maximum particle size of 25 μm (i.e. a D90/D50 size of less than 25/20 or 1.25), a fraction of powder with a minimum particle size of 25 μm and a maximum particle size of 45 μm (i.e. a D90/D50 size of less than 45/25 or 1.8), and a fraction of powder with a minimum particle size of 45 μm and a maximum particle size of 75 μm (i.e. a D90/D50 size of less than 75/45 or 1.67). Furthermore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to subject the magnetic powder of Ohta to hydrophobic surface treatment using a silane-based surface treating agent such as trimethylsilyl mercaptan prior to suspending the powder in a continuous phase which may be polyethylene glycol which is then dried, i.e. coated on the powder. The motivation for doing so would be for allowing the resulting magnetic composite particles to exhibit a good environmental stability such as a good moisture resistance (Sakamoto, abstract, para [0050-0052, 0081-0093]).
Regarding the limitation “that extracts biological substances to be tested from a specimen,” a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the magnetic bead of Ohta in view of Hu and Sakamoto could be used to extract biological substances to be tested from a specimen.
Regarding claim 2, the alloy composition in Ohta of Fe100-x-y-zCuxByXz (atomic %), wherein 0.1≤x≤3, 10≤y≤20, 0<z≤10, and X is preferably Si (Ohta, para [0011]), meets the instant compositional formula. Particularly, the ranges in Ohta fall within the claimed ranges of 0≤B≤25.0 and 0≤Cu≤3.0, and 0<Si≤30.0. It is noted that all remaining elemental ranges as claimed are inclusive of 0 at.% and are considered to be optional.
Regarding claim 5, Ohta teaches that the alloy powder may be formed and classified through a 170 mesh size sieve [0133], such that an obtained powder has a particle size of 170 mesh or lower, or 88 µm or lower when converted (De Lloyd Pg. 3). Overlapping ranges are prima facie obviousness. See MPEP 2144.05(I).
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0085931 to Ohta et al in view of “Introduction to Characterization of Powders” by Hu and US 2012/0064448 A1 to Sakamoto et al and the evidentiary reference “Standard sieves and Mesh sizes” by De Lloyd as applied to claims 1, 2 and 5 above and further in view of US 2008/0220231 to Suetsuna et al.
Regarding claims 3-4, Ohta teaches that the magnetic alloy powder may be provided with an insulating coating layer of SiO2 [0077-0078]. Ohta further teaches an objective for the magnetic alloy to have high saturation magnetic flux density and excellent soft magnetic properties [0002]. However, Ohta does not teach a coating layer having an average thickness of 10-200 nm as claimed.
Suetsuna teaches a core-shell type magnetic particle comprising a magnetic metal particle and an oxide coating layer formed on the surface of the magnetic metal particle, wherein the magnetic metal particles can be formed from an Fe-based alloy [0014-0015]. Suetsuna teaches that the oxide coating layer can be an oxide of Si [0025-0026]. Suetsuna further teaches an oxide coating layer having a coating thickness of 0.1-100 nm in order obtain sufficient oxidation resistance, reduce eddy-current loss, maintain a high packing ratio of the particle, as well as maintaining saturation magnetization and magnetic permeability [0027]. Overlapping ranges are prima facie obviousness. See MPEP 2144.05(I).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify an SiO-2 coating layer in the magnetic alloy powder of Ohta and select a coating layer thickness to be within the range of 0.1-100 nm in order to obtain the desired balance of sufficient oxidation resistance, reduced eddy-current loss, high packing ratio of the particle, and high saturation magnetization and magnetic permeability.
Response to Arguments
Applicant’s arguments, see pages 5-7, filed 8/04/2025, with respect to the rejection(s) of claim(s) 1-5 and 7 under 35 U.S.C. 103 as unpatentable over US 2020/0306831 to Mori et al in view of “Introduction to Characterization of Powders” by Hu and JP 63297504 to Kusakaishi et al, as well as in view of US 2011/0085931 to Ohta et al in view of “Introduction to Characterization of Powders” by Hu and JP 63297504 to Kusakaishi et al have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of US 2020/0306831 to Mori et al in view of “Introduction to Characterization of Powders” by Hu and US 2012/0064448 A1 to Sakamoto et al, as well as in view of US 2011/0085931 to Ohta et al in view of “Introduction to Characterization of Powders” by Hu and US 2012/0064448 A1 to Sakamoto et al.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 20230170115 and US 20210035719 teach soft magnetic powders including soft magnetic metal particles and oxide parts covering the metal particles, wherein the powders can have a nanocrystal structure.
US 20200243236 and US 20190333663 teach soft magnetic powders having a crystalline structure, wherein the crystalline structure has an average diameter of 1.0-30.0 nm and is present at 30 vol.% or more.
US 20190043646 teaches a soft magnetic alloy composed of an Fe-based nanocrystal and an amorphous phase, wherein the magnetic alloy is in powder form, the nanocrystals occupy an area ratio of 25-80%, and the powder surface can contain an insulating coating.
US 20180301258 and US 20170178776 teach soft magnetic powders having a crystalline structure, wherein the crystalline structure has an average diameter of 1.0-30.0 nm and is present at 40 vol.% or more.
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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/BRIAN D WALCK/Primary Examiner, Art Unit 1738