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 .
Election/Restrictions
Applicant's election with traverse of claims 44-50 in the reply filed on 12/17/2025 is acknowledged. The traversal is on the ground(s) that the prior art does not teaches or suggest the special technical feature of strontium hexaferrite. This is not found persuasive because the prior art of Christensen WO 2015000491 in the rejections below teach strontium hexaferrite (Page 11, l. 5-15).
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 44-50 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1 the phrase “characterized by its most intense Bragg reflections being the (006), (008), (107), and (0014) reflections” is indefinite because the disclosure does not make clear what the lower threshold is for determining what is considered to be “most”. For example, in instant Figure 9 it shows large peaks for (006), (008), (107), and (0014), but it also shows substantial peaks for at 2-theta = 20, which are not considered the “most intense”. Thus, it is unclear the intensity the peak should be in ordered to be included with the “most” intense peaks.
In claim 45, the term “pronounced” is indefinite because it is unclear how to determine whether a peak is pronounced or insignificant.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 44-50 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Christensen WO 2015000491.
Regarding claim 44-46 and 50, Christensen teaches a hexaferrite material (Abstract) that may form into a permanent magnet (Abstract). The material may be strontium hexaferrite SrFe12O19 (Page 11, l. 5-15). The hexaferrite material may have Bragg reflections (Page 32, l. 30, Fig. 7, 724).
Christensen does not expressly state that the most intense reflections are at (006), (008), (107), and (0014), nor that the integrated intensity ratio of (008)/[(110+008)] is at least 0.5, nor that there is a pronounced Bragg reflection along the (001) reflection, nor the 2-theta angle intensities as recited in instant claim 46. However, “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112. The product of Christensen is substantially similar to the claimed product because it has intense peaks at similar locations to the material of the instant invention. Christensen does not name the claimed Bragg reflection information recited in instant claims 45-46 and 50, but the x-ray diffraction intensities shown in Fig. 7 seem to match the required peaks in instant claims 44-46, and 50, in particular instant claim 46. (Compare Instant Fig. 9 with Christensen Fig. 7).
Regarding claim 50, Christensen does not necessarily require the process of claim 43. However, claims 50 is a product-by-process claims. “[E]ven 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.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claims 47-49, Christensen teaches that the product may have a square-shaped hysteresis curve (Example VIII).
Christensen does not expressly state the hysteresis squareness ratios (Mt/Ms) as recited in instant claims 47-49. However, “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112. The product of Christensen is substantially similar because Christensen teaches that the product may have a square-shaped hysteresis curve (Example VIII).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES A FIORITO whose telephone number is (571)272-9921. The examiner can normally be reached Monday-Friday 9AM-5PM.
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/JAMES A FIORITO/Primary Examiner, Art Unit 1731