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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The disclosure is objected to because of the following informalities: On page 23 line 2 there is an extra space between the quotation mark and Curezol.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Oura (WO 2020075745, Foreign Patent Document 5 from IDS dated 5/31/2023, herein using US version US 20210225569).
Regarding Claim 1,
Oura teaches a magnetic paste that is comprised of a magnetic powder and binder resin (Abstract) in which the binder resin is preferred to be an epoxy resin (Paragraph 58) and which additionally includes a curing agent (Paragraph 95). Oura additionally teaches that the curing temperature of the composition 180 °C (Paragraph 118). While Oura is silent on the thermogravimetric reduction rate, Oura does teach a composition that is substantially similar to that of the instant application by using substantially similar resins (liquid epoxy resins, Paragraph 62) and magnetic powders (Paragraph 48) as described in the applicant’s specification. As such, it would logically follow that the cured composition would possess similar material properties. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.II.
Regarding Claims 2, 4, and 8,
Oura teaches that the composition may contain a curing agent (Paragraph 95) and that the curing agent is preferred to be an amine or imidazole (Paragraph 96). Further, Oura teaches the use of amines such as triethylamine and tributylamine (Paragraph 97) and that a preferred curing agent is 1,8-diazabicyclo(5.4.0)-undecene, also known as DBU (Paragraph 97), all of which are liquid at room temperature, meeting the requirements of claim 4. Additionally, Oura teaches the use of amines such as benzyldiethylamine (Paragraph 97) as well as various aromatic-containing imidazoles (Paragraph 98) and including 1-benzyl-2-phenylimidazole as a preferred imidazole (Paragraph 99), meeting the requirements of claim 8.
Regarding Claim 3,
Oura teaches that the use of liquid epoxy resins such as those derived from bisphenol A and bisphenol F (Paragraph 63) and that in order to improve viscosity, it is preferred that the epoxy resin be liquid at 25 °C (Paragraph 62).
Regarding Claims 5 and 6,
Oura teaches that the amount of magnetic powder is preferably more than 60% by mass of the composition (Paragraph 55) and additionally teaches compositions in which the amount of the magnetic powder is 80-95% by mass (Table 2, examples 1-2, and 4), meeting the requirements of the instant claims.
Regarding Claim 7,
While Oura is silent on the viscosity of the composition prior to curing, Oura does teach that it is preferably to use liquid epoxy resins to reduce the composition’s viscosity (Paragraph 62) and further that composition has the capability of being easily discharged (Paragraph 117) and that the composition can be dispensed from a syringe via a 22 gauge needle (Paragraph 147). Oura also teaches that small amounts of solvent may be used to improve the workability of the paste (Paragraph 114). As such, Oura discloses a composition that would have a low viscosity based upon these statements. In particular, as Oura teaches the use of only liquid epoxy resins to control the viscosity, one of ordinary skill in the art would recognize that lower viscosities are preferred by Oura for ease of dispensing. It would therefore have been obvious prior to the effective filing date of the instant application to have selected a viscosity between 1 and 600 Pa*s.
Regarding Claim 9,
Oura is silent on the coefficient of thermal expansion, however the composition of Oura contains magnetic particles such as ferrites, Fe-Si-Al, Fe-Si, Fe-Ni and Fe-CO alloys (Paragraph 48) as mentioned in the applicant’s specification in similar amounts as well as epoxy resins comprised of bisphenol A or bisphenol F also mentioned in the applicant’s specification. Given the substantial similarity between the compositions as well as substantially similar curing conditions, it would logically follow that the cured products would maintain this substantial similarity in terms of the physical properties. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.II.
Regarding Claim 10,
Oura teaches that the composition may be printed onto a substrate via overall or pattern printing through a dispenser (Paragraph 127). While Oura does not explicitly state that the composition may be used in screen printing, because Oura notes a variety of application techniques, an ordinarily skilled artisan would note that because the paste may be printed, that the composition could be applied using screen printing with a reasonable expectation of success. As such, it would have been obvious prior to the effective filing date of the instant application to have applied the paste using screen printing.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shinkai (JP2018-113435) teaches a paste that is comprised of magnetic particles and liquid epoxy resin. Tanaka (EP 3885062) teaches a magnetic paste comprised of magnetic powder, liquid epoxy resin, and curing agents which has a viscosity of less than 160 Pa*s and is cured at 180 °C.
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/A.J.B./Examiner, Art Unit 1765
/HEIDI R KELLEY/Supervisory Patent Examiner, Art Unit 1765