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 applicant has amended the specification. As a result, the objection to the specification is withdrawn.
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 1-12 and 14-20 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) as evidenced by Mori (US 20170098499).
Regarding Claims 1 and 11,
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.
With regard to the use of an iron alloy powder with an insulated coating and based upon a Fe-Si-B or Fe-Si-B-P-Nb-Cr alloy, Oura is silent. However, Oura does teach the use of Fe-Si, Fe-Si-Al, and Fe-Cr based alloys (Paragraph 48). Additionally, Fe-Si-B alloys are known to be used for the same purpose as evidenced by Mori, which teaches the use of Fe-Si-Al, Fe and Fe-Si-B based alloys (Paragraph 62) as well as noting that the powder can be coated with an insulating material (Paragraphs 50 and 62). As the art recognizes that these alloys are equivalents, it would have been obvious prior to the effective filing date of the instant application to have substituted a Fe-Si-B alloy for one taught by Oura. See MPEP 2144.06.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.
Regarding Claim 12,
Oura teaches the use of imidazole based curing agents (Paragraph 96) and further teaches the use of 2-ethyl-4-methylimidazole (Paragraph 99), meeting the requirements of the instant claim.
Regarding Claims 14-16,
Oura is silent on the thermogravimetric reduction rate of the cured paste. However, because Oura teaches a composition which contains the required components that are cured in substantially the same manner, it would logically follow that the cured composition of Oura would possess the required thermogravimetric reduction rate. "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 17,
Oura as evidenced by Mori teaches the composition as required by claim 1 as noted above. Oura further teaches that two or more kinds of magnetic powder may be used in combination (Paragraph 50) and the use of coated or uncoated magnetic powder is noted to be equivalent as evidenced by Mori (Paragraph 50). As such, it would have been obvious prior to the effective filing date of the instant application to have used more than one magnetic powder whether coated or uncoated.
Claim 13 is 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) as evidenced by Mori (US 20170098499) as applied to Claims 1-12 and 14-20 above and further evidenced by Takahashi (JP 2011-201986).
Regarding Claim 13,
Oura teaches the use of 2-ethyl-4-methylimidazole as noted above in regard to claim 12, however does not teach the use of 2-6,diamino-3,5-diethyltoluene or 3,3’-dimethyl- 3,3’-diethyl-4,4’-diaminodiphenylmethane. However, all of these compounds, including 2-ethyl-4-methylimidazole are known in the art to serve as curing agents for epoxy resins as evidenced by Takahashi (Paragraph 20). As the art recognizes that these curing agents as equivalents, it would have been obvious prior to the effective filing date of the instant application to have substituted these curing agents for one taught by Oura. See MPEP 2144.06.II.
Response to Arguments
Applicant's arguments filed 4/28/2026 have been fully considered but they are not persuasive for the following reasons.
On pages 8 and 9, the applicant argues that the newly amended claim 1 which now requires the inclusion of either a Fe-Si-B or Fe-Si-B-P-Nb-Cr based alloy is not taught by Oura, an issue which has been addressed in the amended rejection above. Additionally, the applicant speaks to the material included in the newly added claims 11-20, all of which have also been addressed in the rejection above.
Conclusion
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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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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