Prosecution Insights
Last updated: April 18, 2026
Application No. 18/286,949

METHOD FOR PRODUCING MAGNETOSTRICTIVE MATERIAL, MAGNETOSTRICTIVE MATERIAL, AND METHOD FOR PRODUCING ENERGY CONVERSION MEMBER

Non-Final OA §103§112
Filed
Oct 13, 2023
Examiner
JANSSEN, REBECCA
Art Unit
1733
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Tohoku Steel Co. Ltd.
OA Round
1 (Non-Final)
61%
Grant Probability
Moderate
1-2
OA Rounds
2y 10m
To Grant
90%
With Interview

Examiner Intelligence

Grants 61% of resolved cases
61%
Career Allow Rate
212 granted / 349 resolved
-4.3% vs TC avg
Strong +30% interview lift
Without
With
+29.7%
Interview Lift
resolved cases with interview
Typical timeline
2y 10m
Avg Prosecution
51 currently pending
Career history
400
Total Applications
across all art units

Statute-Specific Performance

§101
0.8%
-39.2% vs TC avg
§103
44.0%
+4.0% vs TC avg
§102
24.4%
-15.6% vs TC avg
§112
23.5%
-16.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 349 resolved cases

Office Action

§103 §112
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. Information Disclosure Statement The information disclosure statement(s) (IDS) submitted on 10/13/23 and 2/26/26 have been considered by the examiner. Election/Restrictions Applicant's election with traverse of claims 1-6 in the reply filed on 3/16/26 is acknowledged. The traversal is on the ground(s) that there is no burden. This is not found persuasive because t his argument appears based on restriction practice in accordance with 37 CFR1.141-1.146; and it is not found persuasive because only U.S. national applications filed under 35 U.S.C. 111(a) are subject to restriction practice in accordance with 37 CFR 1.141-1.146. See MPEP § 803. U.S. national stage applications (which entered the national stage from international applications after compliance with 35 U.S.C. 371) (such as this current application) are subject to unity of invention practice in accordance with 37 CFR 1.475 and 1.499 (effective May 1, 1993). As this current application was not filed under 35 U.S.C. 111 (a) the examiner is not required to demonstrate a "serious burden". Though not required to make such a demonstration, as a courtesy, the examiner asserts that serious burden exists in the differing issues likely to arise during the prosecution of the different inventions and species . The requirement is still deemed proper and is therefore made FINAL. Response to Amendment The Amendment s filed 3/16/26 and 3/19/26 have been entered. Claims 1 and 4-8 remain pending in the application. Claim(s) 7-8 have been withdrawn. Claim(s) 2-3 have been canceled. Claim Rejections - 35 USC § 112 The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. 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. Claims 1 and 4-6 are rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The supplemental amendment of 3/19/25 added the limitation “to obtain a predetermined magnetic anisotropy” to claim 1. The instant specification is silent to obtaining a predetermined magnetic anisotropy . The instant specification states “ The method for producing a magnetostrictive material according to the present invention preferably includes a step of cutting a laminated magnetostrictive material in a predetermined direction. In this case, a magnetostrictive material that has different properties depending on the cutting direction can be produced . ” paragraph [0006] . The instant specification fails to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of “ cutting a laminated magnetostrictive material in a predetermined direction to obtain a predetermined magnetic anisotropy . ” Claims 4-6 are rejected due to their dependence on rejected claim 1. Claims 1 and 4-6 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 1 recites the limitation “cutting a laminated magnetostrictive material in a predetermined direction to obtain a predetermined magnetic anisotropy.” The limitation “ to obtain a predetermined magnetic anisotropy ” is considered functional language. T he use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart , 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008) (noting that the Supreme Court explained that a vice of functional claiming occurs "when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty") (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938)); see also United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 234, 55 USPQ 381 (1942) (holding indefinite claims that recited substantially pure carbon black "in the form of commercially uniform, comparatively small, rounded smooth aggregates having a spongy or porous exterior"). When a claim limitation employs functional language, the examiner’s determination of whether the limitation is sufficiently definite will be highly dependent on context . Examiners should consider the following factors when examining claims that contain functional language to determine whether the language is ambiguous: (1) whether there is a clear cut indication of the scope of the subject matter covered by the claim; (2) whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained ; and (3) whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim. These factors are examples of points to be considered when determining whether language is ambiguous and are not intended to be all inclusive or limiting . See MPEP § 2173.05(g) . Here, the result “ to obtain a predetermined magnetic anisotropy ” is obtained by “ cutting a laminated magnetostrictive material in a predetermined direction . ” It is unclear if cutting in any predetermined direction will result in a predetermined magnetic anisotropy , or if more is needed . The instant specification fails to provide any guidance on how to obtain a predetermined magnetic anisotropy . Claims 4-6 are rejected due to their dependence on rejected claim 1. 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 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. Language from the reference(s) is shown in quotations. Limitations from the claims are shown in quotations within parentheses. Examiner explanations are shown in italics. 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. 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 set forth in Graham v. John Deere Co. , 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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. Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Nishida et al., (US 20220220594 A1 ) , previously cited . Regarding claim 1 , Nishida teaches that “a Fe-Al-based alloy vibration-damping component (hereinafter, also simply referred to as vibration-damping component) of the present invention includes 4.0 to 12.0% by mass of Al, with the balance being Fe and inevitable impurities” (paragraph [0022]). Nishida teaches that “Al dissolves in Fe and increases magnetostriction, which contributes to vibration-damping properties” (which reads on “a magnetostrictive material”; paragraph [0022]). Nishida teaches that “as Al increases, magnetostriction becomes larger, and reaches a maximum at about 10%” (which reads on “a magnetostrictive material”; paragraph [0022]). Nishida teaches “a method for manufacturing a Fe-Al-based alloy vibration-damping component” (which reads on “a method for producing a magnetostrictive material comprising”; paragraph [0012]). Nishida teaches that “the method for manufacturing a component having such a complex shape includes an additive manufacturing method in which metal powder is locally melted and solidified by a laser or the like, and a structure can be shaped into any shape” (which reads on “the melting being performed by a laser or electron beam using a metal 3D additive manufacturing machine”; paragraph [0005]). Nishida teaches that “the powder additive manufacturing method includes, for example, a powder bed method, a direct metal deposition method, and the like” (which reads on “melting raw material powder for a magnetostrictive material by a directed energy deposition method to perform additive manufacturing”; paragraph [0026]; direct metal deposition reads on directed energy deposition ). For the purposes of applying prior art, the result “to obtain a predetermined magnetic anisotropy” will be interpreted as being obtained by “cutting a laminated magnetostrictive material in a predetermined direction.” Nishida teaches that “ a processing step such as cutting may be performed on the annealed component to improve the shape precision ” (which reads upon “ cutting a laminated magnetostrictive material in a predetermined direction to obtain a predetermined magnetic anisotropy ”, as recited in the instant claim; paragraph [00 32 ]). Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Nishida et al. (US 20220220594 A1), as applied to claim 1 above, and further in view of Narita et al. ( DE 112018003021 T5 , as translated by its equivalent US 20210172812 A1). Regarding claim 4 , Nishida teaches the method of claim 1 as stated above. Nishida teaches that “the present invention relates to a Fe-Al-based alloy vibration-damping component and a method for manufacturing the same ” (paragraph [00 01 ]). Nishida teaches that “the vibration-damping alloy includes, for example, Fe-Al-based alloys, Fe-Cr-Al-based alloys, and Fe-Co-V-based alloys, which are known as ferromagnetic type vibration-damping alloys ” (paragraph [00 02 ]). Nishida teaches that “ a ll of the above alloys are materials having large magnetostriction , and that a magnetic domain wall in the material is moved by the magnetostriction corresponding to the magnitude of a strain caused by vibration, and thereby an elastic energy of the vibration is absorbed” (paragraph [00 02 ]). Nishida is silent regarding wherein the raw material powder is composed of an Fe—Co alloy. Narita is similarly concerned with the magnetostriction effect of the magnetostrictive material produced when the magnetostrictive material vibrates (paragraph [00 02 ]). Narita teaches that “ the magnetostrictive material is preferably made of an Fe—Co based alloy, an Fe—Al based alloy, Ni, an Ni—Fe based alloy, or an Ni—Co based alloy ” (paragraph [00 21 ]). Narita teaches that “ an Fe—Co based alloy was used as the magnetostrictive material ” ( which reads upon “wherein the raw material powder is composed of an Fe—Co alloy”, as recited in the instant claim; paragraph [0 05 0]). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the Fe-Al-based alloy of Nishida with a Fe —Co based alloy , as taught by Narita because both Nishida and Narita teach that either alloy is suitable as a magnetostrictive material . Further, such a substitution is merely the selection of functionally equivalent magnetostrictive material s recognized in the art and one of ordinary skill in the art would have a reasonable expectation of success in doing so . Claim s 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Nishida et al. (US 20220220594 A1), as applied to claim 1 above, and further in view of Niu et al. , Modeling and optimization of magnetostrictive actuator amplified by compliant mechanism , 2017, Smart Mater. Struct. 26 095029 . Regarding claim s 5-6 , Nishida teaches the method of claim 1 as stated above. Nishida teaches that “a Fe-Al-based alloy vibration-damping component (hereinafter, also simply referred to as vibration-damping component) of the present invention includes 4.0 to 12.0% by mass of Al, with the balance being Fe and inevitable impurities” (which reads upon “ a magnetostrictive material produced by the method of producing a magnetostrictive material”, as recited in the instant claim; paragraph [0022]). Nishida teaches that “ in order to further enhance the vibration-damping effect of a vibration- damping component as described above, a complex shape, for example, a shape in which a space is arranged inside the component tends to be required ” (paragraph [00 05 ]). Nishida teaches that “the method for manufacturing a component having such a complex shape includes an additive manufacturing method in which metal powder is locally melted and solidified by a laser or the like, and a structure can be shaped into any shape ” (paragraph [00 05 ]). Nishida teaches that “ in the case of the shape as shown in FIG. 8(a) in which a hollow portion is formed in the section, the short diameter D2 is a thickness (D2 a +D2 b) excluding the hollow portion ” ( paragraph [00 24 ] and FIG. 8(a); FIG. 8(a) is similar to a honeycomb structure ). Nishida is silent regarding a honeycomb structure. Niu is similarly concerned with m agnetostrictive materials and their use in vibration control platforms ( page 1). Niu teaches that “ m agnetostriction is a property of ferromagnetic materials that their shape or dimensions will change during the process of magnetization when a magnetic field is imposed on them ” ( page 1 ). Niu teaches that “ t aking advantage of the property, magnetostrictive actuator is a kind of strain actuator with large actuation force, quick response, high resolution and broad response band [1], and has been applied to servo-valves [2–4], biosensors [5, 6], injectors [7], bending type design [8], tunable springs [9] and vibration control platforms ” ( page 1 ). Niu teaches that “ c ompliant mechanisms provide motions by elastic deformation, and achieve high precision by reducing wear and eliminating backlash. ” ( page 1 ). Niu teaches that “ t hey also have a potential for lower cost due to reduced assembly, fewer components to stock, and the possibility of simplified manufacturing ” ( page 1 ). Niu teaches that “ Therefore, they are suitable to make mechanical amplifiers for strain actuators, and various topologies have been developed including V-shaped amplifier [12], honeycomb link amplifier [13] and buckling mechanism amplifie r ” ( page s 1-2 ). Niu teaches that “the amplification gains range from several times to several dozens ” ( page 2 ). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the shape as shown in FIG. 8(a) in which a hollow portion is formed in the section of Nishida with a honeycomb shape , as taught by Niu to achieve amplification gains rang ing from several times to several dozens . Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kurita et al., Additive manufacturing and energy-harvesting performance of honeycomb-structured magnetostrictive Fe52–Co48 alloys, Additive Manufacturing 54 (2022) 102741, Available online 11 March 2022 . This is applicant’s work and is not available as prior art. However, the references cited may be considered pertinent to applicant's disclosure . Contact Information Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA JANSSEN whose telephone number is (571)272-5434 . The examiner can normally be reached on Mon-Thurs 10-7 and alternating Fri 10-6 . 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. The Examiner requests that interviews not be scheduled during the last week of each fiscal quarter or the last half of September, which is the end of the fiscal year. Q3: 6/22-6/26/26; Q4: 9/21-9/30/26. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached on (571)272-1401 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /REBECCA JANSSEN/ Primary Examiner, Art Unit 1733
Read full office action

Prosecution Timeline

Oct 13, 2023
Application Filed
Mar 31, 2026
Non-Final Rejection — §103, §112 (current)

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Prosecution Projections

1-2
Expected OA Rounds
61%
Grant Probability
90%
With Interview (+29.7%)
2y 10m
Median Time to Grant
Low
PTA Risk
Based on 349 resolved cases by this examiner. Grant probability derived from career allow rate.

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