Prosecution Insights
Last updated: April 19, 2026
Application No. 18/275,785

MAGNETIC COMPOSITE

Non-Final OA §103§DP
Filed
Aug 03, 2023
Examiner
BERNATZ, KEVIN M
Art Unit
1785
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Powdertech Co. Ltd.
OA Round
1 (Non-Final)
88%
Grant Probability
Favorable
1-2
OA Rounds
2y 8m
To Grant
99%
With Interview

Examiner Intelligence

Grants 88% — above average
88%
Career Allow Rate
920 granted / 1046 resolved
+23.0% vs TC avg
Moderate +12% lift
Without
With
+12.0%
Interview Lift
resolved cases with interview
Typical timeline
2y 8m
Avg Prosecution
41 currently pending
Career history
1087
Total Applications
across all art units

Statute-Specific Performance

§101
0.1%
-39.9% vs TC avg
§103
40.3%
+0.3% vs TC avg
§102
19.9%
-20.1% vs TC avg
§112
20.2%
-19.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1046 resolved cases

Office Action

§103 §DP
DETAILED ACTION Claim Analysis The present application contains one active independent claim(s) (claim 1 ) and nineteen active dependent claims (claim s 2 - 20 ). Examiner’s Comments The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 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 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. Column and line ( or Paragraph Number ) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “ Figure 1, element 1 ” should be construed as inherently also reciting “and relevant disclosure thereto”. Double Patenting The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg , 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp . Claims 1 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/852,420 (U.S. Patent App. No. 2025/0218631 A1) in view of Takashima et al. (U.S. Patent App. No. 2017/0040665 A1). This is a provisional nonstatutory double patenting rejection. Regarding claim 1, the above identified App. claims a magnetic composite ( claim 1 ) comprising a base material ( claim 1 ) and a ferrite layer provided on a surface of the base material ( ibid ) , wherein the base material has a thickness ( dR ) of 10 µm or more ( ibid, noting extensive overlap given the ‘or more’ language ) , and the ferrite layer has a thickness ( dF ) of 2.0 µm or more ( ibid ) , and has a ratio (I222/1311) of 0.00 or more and 0.03 or less, the ratio being of an integrated intensity (I222) of a (222) plane to an integrated intensity (I311) of a (311) plane in X-ray diffraction analysis ( claim 2 ) . The above identified application fails to explicitly disclose that the ferrite contains spinel-type ferrite as a principal component . However, the Examiner notes that various types of ferrites are taken as functional equivalents and the Examiner notes that the X-ray diffraction limitations ( that are identical ) would appear to require a spinel-type ferrite in the above identified application. Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, both applications require ferrites and the various types of ferrites are deemed functional equivalents in the field of suitable ferrites for magnetic compositions. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950). The above identified application fails to disclose a resin base layer. However, substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, magnetic compositions for shielding structures can be applied to a variety of bases, all of which are recognized as functional equivalents in the field of known base materials for magnetic shielding layers ( see Takashima et al., at least Paragraph 0042 ). In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950). Regarding claim 2, the above identified App. teaches the claimed Fe2O3 amounts ( claim 1 ). Regarding claim 3, the above identified App. teaches the claimed materials ( claim 3 ) . Regarding claim 4, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the Sa and Sa/ dF ratio through routine experimentation, especially given the teaching in the above identified App. regarding the desire to control roughness ( in terms of Ra – see claim 4 ). In re Boesch , 205 USPQ 215 (CCPA 1980); In re Geisler , 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller , 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955). Regarding claim 5, the above identified App. teaches the claimed materials ( claim 5 ). Regarding claims 6 and 7, the exact choice of resin is deemed obvious from among functionally equivalent resins for the reasons set forth above. The Examiner takes Official Notice that specific gravity values of resins can exceed 0.95 g/cc and that the specific gravity of resins is art recognized as impacting the adhesion characteristics to adjoining materials . Regarding claims 8 – 20, these limitations are met for the reasons set forth above. Claims 1 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/261,237 (U.S. Patent App. No. 2024/0079172 A1) in view of Takashima et al. (U.S. Patent App. No. 2017/0040665 A1). This is a provisional nonstatutory double patenting rejection. Regarding claim 1, the above identified App. claims a magnetic composite ( claim 1 ) comprising a base material ( claim 1 ) and a spinel-containing ferrite layer provided on a surface of the base material ( ibid ) , wherein the base material has a thickness ( dR ) of 10 µm or more ( ibid, noting extensive overlap given the ‘or more’ language ) , and the ferrite layer has a thickness ( dF ) of 2.0 µm or more ( ibid ) , and has a ratio (I222/1311) of 0.00 or more and 0.03 or less, the ratio being of an integrated intensity (I222) of a (222) plane to an integrated intensity (I311) of a (311) plane in X-ray diffraction analysis ( claim 1 ) . The above identified application fails to disclose a resin base layer. However, substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, magnetic compositions for shielding structures can be applied to a variety of bases, all of which are recognized as functional equivalents in the field of known base materials for magnetic shielding layers ( see Takashima et al., at least Paragraph 0042 ). In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950). Regarding claim 2, the above identified App. teaches the claimed Fe2O3 amounts ( claim 2 ). Regarding claim 3, the above identified App. teaches the claimed materials ( claim 3 ). Regarding claim 4, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the Sa and Sa/ dF ratio through routine experimentation, especially given the teaching in the above identified App. regarding the desire to control roughness ( in terms of Ra – see claim 4 ). In re Boesch , 205 USPQ 215 (CCPA 1980); In re Geisler , 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller , 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955). Regarding claim 5, the above identified App. teaches the claimed materials ( claim 5 ). Regarding claims 6 and 7, the exact choice of resin is deemed obvious from among functionally equivalent resins for the reasons set forth above. The Examiner takes Official Notice that specific gravity values of resins can exceed 0.95 g/cc and that the specific gravity of resins is art recognized as impacting the adhesion characteristics to adjoining materials . Regarding claims 8 – 20, these limitations are met for the reasons set forth above. 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 of this title, 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 pre-AIA 35 U.S.C. 103(a) 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. Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience . Claim s 1 – 20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Takashima et al. (U.S. Patent App. No. 2017/0040665 A1 ) in view of Fukuo (JP 2008-207988 A), as evidenced by Murayama et al. (U.S. Patent App. No. 2009/0246509 A1) and Umebayashi et al. (U.S. Patent App. No. 2007/0264522 A1) . See provide Abstract Translation. Regarding claim 1, Takashima et al. discloses a magnetic composite ( Title; Abstract – Ferrite shield ) comprising a resin base material ( Paragraph 0042 ) and a ferrite layer provided on a surface of the base material ( Figures; Abstract; examples; and at least Paragraphs 0044 - 0045 ) , and the ferrite layer has a thickness ( dF ) of 2.0 µm or more ( Paragraph 0044 ). The above identified application fails to disclose that the ferrite contains spinel-type ferrite as a principal component , the thickness of the base material ( dR ) being 10 µm or more , nor the ratio (I222/1311) of 0.00 or more and 0.03 or less, the ratio being of an integrated intensity (I222) of a (222) plane to an integrated intensity (I311) of a (311) plane in X-ray diffraction analysis. Regarding the X-ray diffraction intensity ratio, Fukuo teaches that controlling a ferrite to possess a ratio of I222/I311 to be 0.011 or less results in a ferrite that can be used in mobile communication ( same use as Takashima et al. ) and provides reduced electric power loss even at high frequencies ( Advantages section, but see entire Abstract Translation ). It would, therefore, have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Takashima et al. to use a ferrite possessing the claimed X-ray diffraction intensity ratio as taught by Fukuo , as such a ferrite can provide reduced electric power loss even at high frequencies in the same field of endeavor. Regarding the choice of a spinel-ferrite , the Examiner notes that various types of ferrites are taken as functional equivalents and the Examiner notes that the X-ray diffraction limitations ( that are substantially identical ) would appear to require a spinel-type ferrite in the above identified application. Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, both applications require ferrites and the various types of ferrites are deemed functional equivalents in the field of suitable ferrites for magnetic compositions. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950). Regarding the thickness of the resin layer ( dR ), the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the resin base layer thickness through routine experimentation, especially given the teaching in Takashima et al. regarding the desire to use ‘thick’ resin base layers ( Paragraph s 0077 - 0079 ). In re Boesch , 205 USPQ 215 (CCPA 1980); In re Geisler , 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller , 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955). Regarding claim 2, Takashima et al. teaches Fe2O3 as a known, potential component of the ferrite material ( Paragraph 0064 ), but not as required. The present claims encompass ferrites with no a-Fe2O3, which are also taught by Takashima et al. ( see at least Paragraphs 0044 – 0045, as well as 0064 ). Regarding claim 3, Takashima et al. discloses ferrites reading on the claimed limitations ( ibid ). Regarding claim 4, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the Sa and Sa/ dF ratio through routine experimentation, especially given the knowledge in the art regarding the desire to control roughness , as evidenced by Umebayashi et al. ( see Abstract and entire disclosure, though directed to Ra, not Sa ) . In re Boesch , 205 USPQ 215 (CCPA 1980); In re Geisler , 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller , 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955). Regarding claim 5 , Takashima et al. teaches that a binder may be included, but only if the ferrite does not have good adhesion to the base material ( Paragraph 0065 ). Embodiments without the binder are taken to read on these claimed limitations. Regarding claims 6 and 7, the exact choice of resin is deemed obvious from among functionally equivalent resins for the reasons set forth above , noting that Takashima et al. explicitly disclose resins reading on the limitations of claim 7 ( at least Paragraph 0042 ) . The Examiner takes Official Notice that specific gravity values of resins can exceed 0.95 g/cc and that the specific gravity of resins is art recognized as impacting the adhesion characteristics to adjoining materials . Regarding claims 8 – 20, these limitations are met for the reasons set forth above. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The Examiner particularly notes Yonekura et al. (‘983 A1), which is cited as providing support for the Examiner’s position that various types of ferrites ( e.g. see Paragraph 0036 ) are known to be used for a wide variety of industrial products, such as cores, shielding layers, etc. ( see at least Paragraph 0107 ). Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT KEVIN M BERNATZ whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-1505 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Mon-Fri (variable: ~0600 - 1500 ET) . Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FILLIN "SPE Name?" \* MERGEFORMAT Mark Ruthkosky can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-272-1291 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /KEVIN M BERNATZ/ Primary Examiner, Art Unit 1785 March 7, 2026
Read full office action

Prosecution Timeline

Aug 03, 2023
Application Filed
Mar 07, 2026
Non-Final Rejection — §103, §DP (current)

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Prosecution Projections

1-2
Expected OA Rounds
88%
Grant Probability
99%
With Interview (+12.0%)
2y 8m
Median Time to Grant
Low
PTA Risk
Based on 1046 resolved cases by this examiner. Grant probability derived from career allow rate.

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