DETAILED ACTION
Pending Claims
Claims 1-5 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 .
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Response to Arguments
Applicant’s arguments regarding the prior art rejection (under 35 U.S.C. 102/103) of claims 1-5 over Aramaki et al., (see pages 4-8, particularly pages 7-8 of the response filed June 25, 2026), have been fully considered and are persuasive. Accordingly, the following rejections have been withdrawn:
The rejection of claims 1-5 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Aramaki et al. (US 2010/0099365 A1).
The rejection of claims 1-5 rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Aramaki et al. (US 2010/0099365 A1).
However, claims 1 and 3-5 are still rejectable under 35 U.S.C. 103 as obvious over Aramaki et al. (US 2010/0099365 A1).
Additionally, upon further consideration, a new ground(s) of rejection is made in view of Park et al. (US 2014/0001397 A1).
Claim Rejections - 35 USC § 112, 2nd paragraph (b)
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 1 and 3-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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.
Evidence that claims 1 and 3-5 fail to correspond in scope with that which the inventor or a joint inventor, or for pre-AIA applications the applicant regards as the invention can be found in the reply filed June 25, 2026. In that paper (see bottom of page 7), the inventor or a joint inventor, or for pre-AIA applications the applicant has stated that the technological thought of the present invention is maintaining a certain ratio on the first principal surface and the second principal surface. This statement indicates that the invention is different from what is defined in the claim(s) because only claim 2 of the claimed invention maintains the ratio on the first principal surface and the second principal surface. Claims 1 and 3-5 maintain the ratio on the first principal surface or the second principal surface.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Aramaki et al. (US 2010/0099365 A1).
Regarding claims 1 and 3-5, Aramaki et al. disclose: (1) a magnetic sheet (Abstract; paragraphs 0069-0086) comprising: a first principal surface and a second principal surface (paragraphs 0088-0092; Figure 1A), the first principal surface and second principal surface facing each other in a thickness direction (paragraphs 0088-0092; Figure 1A), the magnetic sheet containing magnetic particles (paragraphs 0070-0072) and resin (0073-0077); and (5) an inductor comprising: a wire; and the magnetic sheet and covering the wire (paragraph 0109; Figures 2A, 2B & 3). Aramaki et al. fail to explicitly disclose the following properties of the instantly claimed invention:
(1 & 5) wherein a ratio of a total amount of carbon and oxygen on the first principal surface or second principal surface is 10 mass% or more and 60 mass% or less;
(3) wherein: [1] the ratio of the total amount on the first principal surface equals the ratio of the total amount on the second principal surface; or [2] the ratio of the total amount on one surface of the first principal surface and second principal surface is lower than the ratio of the total amount on the other surface, and the ratio of the total amount on the one surface to the ratio of the total amount on the other surface is 0.3 or more and less than 1.0; and
(4) wherein: [3] the ratio of the total amount on one surface of the first principal surface and second principal surface equals the ratio of the total amount at a central part in the thickness direction; or [4] the ratio of the total amount on the one surface is lower than the ratio of the total amount at the central part, and the ratio of the total amount on the one surface to the ratio of the total amount at the central part is 0.3 or more and less than 1.
This ratio of a total amount of carbon and oxygen relates to the resin content of the magnetic sheet.
The magnetic sheet of Aramaki et al. has a preferred magnetic powder content of 60% by mass to 95% by mass (see paragraph 0085), which corresponds to a resin content of 5% to 40% by mass. Similar to the exemplary embodiments of the instant invention, the production method of Aramaki et al. involves applying a solvent-based varnish to a release sheet, where the varnish contains the magnetic particles and resin (see paragraphs 0076-0077). Aramaki et al. also allow their sheet to rest at ambient conditions for at least two minutes prior to hot-air drying (see paragraph 0091). During drying, the magnetic powder sediments to some degree, resulting in a concentration gradient from one surface to the other (see paragraph 0092). Aramaki et al. suggest that the duration of the drying step influences the extent of the sedimentation and the variation of the resulting concentration gradient (see paragraph 0092). This would render the duration of the drying step a result-effective variable.
In light of the overall resin content (5% to 40% by mass) disclosed by Aramaki et al. and the result-effective nature of their drying time, the skilled artisan would have expected the magnetic sheet of Aramaki et al. to obviously embrace embodiments having a ratio of a total amount of carbon and oxygen on the first principal surface or second principal surface of 10 mass% or more and 60 mass% or less, as well as properties [2] and [4]. Furthermore, it has been found that, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation,” – In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); and “A particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation,” –In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Therefore, the skilled artisan would have expected the magnetic sheet of Aramaki et al. to obviously embrace embodiments having a ratio of a total amount of carbon and oxygen on the first principal surface or second principal surface of 10 mass% or more and 60 mass% or less, as well as properties [2] and [4], because: (a) this ratio of a total amount of carbon and oxygen relates to the resin content of the magnetic sheet; (b) the magnetic sheet of Aramaki et al. has a preferred magnetic powder content of 60% by mass to 95% by mass, which corresponds to a resin content of 5% to 40% by mass; (c) similar to the exemplary embodiments of the instant invention, the production method of Aramaki et al. involves applying a solvent-based varnish to a release sheet, where the varnish contains the magnetic particles and resin; (d) Aramaki et al. also allow their sheet to rest at ambient conditions for at least two minutes prior to hot-air drying, where the magnetic powder sediments to some degree, resulting in a concentration gradient from one surface to the other; and (e) Aramaki et al. suggest that the duration of the drying step influences the extent of the sedimentation and the variation of the resulting concentration gradient, rendering the duration of the drying step a result-effective variable. Furthermore, (f) it has been found that, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation;” and (g) it has been found that “A particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation”.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2014/0001397 A1).
Regarding claims 1-5, Park et al. disclose: (1) a magnetic sheet (Abstract; claims 1-7; see also “200” in Figure 2B) comprising: a first principal surface and a second principal surface (claims 1-7; see also “200” in Figure 2B), the first principal surface and second principal surface facing each other in a thickness direction (claims 1-7; see also “200” in Figure 2B), the magnetic sheet containing magnetic particles and resin (claims 1-7; see also paragraphs 0067-0079 and Figure 5); and (5) an inductor comprising: a wire; and the magnetic sheet and covering the wire (Abstract; claims 8-19). Park et al. fail to explicitly disclose the following properties of the instantly claimed invention:
(1) wherein a ratio of a total amount of carbon and oxygen on the first principal surface or second principal surface is 10 mass% or more and 60 mass% or less;
(2) wherein the ratio of the total amount on each of the first principal surface and second principal surface is 10 mass% or more and 50 mass% or less;
(3) wherein: [1] the ratio of the total amount on the first principal surface equals the ratio of the total amount on the second principal surface; or [2] the ratio of the total amount on one surface of the first principal surface and second principal surface is lower than the ratio of the total amount on the other surface, and the ratio of the total amount on the one surface to the ratio of the total amount on the other surface is 0.3 or more and less than 1.0; and
(4) wherein: [3] the ratio of the total amount on one surface of the first principal surface and second principal surface equals the ratio of the total amount at a central part in the thickness direction; or [4] the ratio of the total amount on the one surface is lower than the ratio of the total amount at the central part, and the ratio of the total amount on the one surface to the ratio of the total amount at the central part is 0.3 or more and less than 1.
This ratio of a total amount of carbon and oxygen relates to the resin content of the magnetic sheet.
The film of Park et al. includes metal powder particles M1, metal powder particles M2, and a polymer (resin) P (see paragraphs 0067-0071). The metal powder particles are present in a weight ratio of from 75-98 wt% (see paragraphs 0072-0074), which corresponds to a polymer (resin) content of from 2-25 wt%. This appears to overlap the instantly claimed ratio of total surface carbon and oxygen of from 10 mass% or more and 60 mass% or less (and 10 mass% or more and 50 mass% or less). In light of this, it has been found 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 – see MPEP 2144.05. In addition, the metal powder particles M1 have a diameter of 20-100 mm, and the metal powder particles M2 have a diameter of below 10 mm (see paragraphs 0076-0079). This combination of particles sizes allows for a “uniform distribution stability” of metal particles within the film (see paragraph 0075). The skilled artisan would have expected this “uniform distribution stability” to be present throughout the film of Park et al., including the surfaces. This would obviously satisfy: a ratio of a total amount of carbon and oxygen on the first principal surface or second principal surface of 10 mass% or more and 60 mass% or less; and a ratio of the total amount on each of the first principal surface and second principal surface of 10 mass% or more and 50 mass% or less. This would also obviously satisfy property [1] (when truly uniform) or [2] (when not exactly uniform) and property [3] (when truly uniform) or [4] (when not exactly uniform).
Therefore, the skilled artisan would have expected the magnetic sheet of Park et al. to obviously embrace embodiments having a ratio of a total amount of carbon and oxygen on the first principal surface or second principal surface of 10 mass% or more and 60 mass% or less, a ratio of the total amount on each of the first principal surface and second principal surface of 10 mass% or more and 50 mass% or less, as well as properties [1] or [2] and [3] or [4] because: (a) this ratio of a total amount of carbon and oxygen relates to the resin content of the magnetic sheet; (b) the film of Park et al. includes metal powder particles M1, metal powder particles M2, and a polymer (resin) P; (c) the metal powder particles are present in a weight ratio of from 75-98 wt%, which corresponds to a polymer (resin) content of from 2-25 wt%; (d) the polymer (resin) content of Park et al. appears to overlap the instantly claimed ratio of total surface carbon and oxygen of from 10 mass% or more and 60 mass% or less (and 10 mass% or more and 50 mass% or less); and (e) it has been found 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. In addition: (f) the metal powder particles M1 have a diameter of 20-100 mm, and the metal powder particles M2 have a diameter of below 10 mm, where this combination of particles sizes allows for a “uniform distribution stability” of metal particles within the film; and (g) the skilled artisan would have expected this “uniform distribution stability” to be present throughout the film of Park et al., including the surfaces.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
September 1, 2026
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