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 a certified copy of DE 102021109597.2 filed April 16, 2021 as required by 37 CFR 1.55. Receipt is also acknowledged of a copy of WO 2022/218664, the WIPO publication of PCT/EP 2022/057642.
Restriction Requirement
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
Group I, claims 1, 2, 5-7, 10, 11, 22, and 23, drawn to a magnetic field-sensitive component.
Group II, claims 12-19, drawn to a method for producing a magnetic field-sensitive component.
Group III, claim 21, drawn to use of a magnetic field-sensitive component.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
If Group I or Group II are elected, then this application contains claims directed to more than one species of the generic invention. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1.
The species are as follows:
Species A, claims 10, 17, and 18, drawn to resin.
Species B, claims 11 and 13-16, drawn to sintering.
Applicant is required, in reply to this action, to elect a single species to which the claims shall be restricted if no generic claim is finally held to be allowable. The reply must also identify the claims readable on the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered non-responsive unless accompanied by an election.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written in dependent form or otherwise require all the limitations of an allowed generic claim. Currently, the following claims are generic: Group I: 1, 2, 5-7, 22, and 23 and Group II: claims 12 and 19.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The inventions of Groups I-III lack unity of invention because even though the inventions of these groups require the technical feature of a magnetic field-sensitive component as recited in claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Yoshizawa (US 4,985,089).
Yoshizawa discloses a magnetic field-sensitive component (1:7-13),
said magnetic field-sensitive component having particles of a soft magnetic material (2:35-43),
said magnetic field- sensitive component having a coercive field strength of less than or equal to 10 A/m (0.13 Oe), preferably of less than or equal to 5 A/m (0.06 Oe), and particularly preferably of less than or equal to 3 A/m (0.04 Oe) (9:14-19, Tables 1-2),
wherein said magnetic field-sensitive component has the particles of the soft magnetic substance in a proportion of greater than or equal to 95% by weight, preferably in a proportion of greater than or equal to 97.5% by weight, and particularly preferably in a proportion of greater than or equal to 99% by weight (dust core produced without using a binder by compressing the amorphous alloy powder) (8:36-41).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
The species of Species A and B lack unity of invention because the groups do not share the same or corresponding technical feature.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Restriction Election
During a telephone conversation with Robin Rohlicek on January 29, 2026 a provisional election was made without traverse to prosecute the invention of Group I, Species B, claims 1, 2, 5-7, 11, 22, and 23, drawn to a magnetic field-sensitive component that is sintered. Affirmation of this election must be made by applicant in replying to this Office action. Claims 10, 12-19, and 21 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Status
This Office Action is in response to Applicant’s Oral Restriction Election made January 29, 2026 and Applicant’s Claims filed November 9, 2023.
Claims Filing Date
November 9, 2023
Amended
1, 2, 5-7, 10-19, 21
New
22, 23
Cancelled
3, 4, 8, 9, 20
Withdrawn
10, 12-19, 21
Under Examination
1, 2, 5-7, 11, 22, 23
Claim 7 lines 1-2 recite “…component (10) according to any one of the preceding claims”. According to 37 C.F.R. 1.75(c), any dependent claim which refers to more than one other claim (“multiple dependent claim”) shall refer to such other claims in the alternative only. A multiple dependent claim shall not serve as a basis for any other multiple dependent claims. MPEP 608.01(n)(I).
Abstract Objection
The abstract of the disclosure is objected to because
Line 1 uses legal phraseology “said”.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The form and legal phraseology often used in patent claims, such as “said,” should be avoided.
Claim Objections
Claims 2 and 7 are objected to because of the following informality:
Claim 2 line 5 “field-sensitive component (10)” is inconsistent with the other pending claims in which (10) is removed.
Claim 7 line 1 “magnetic field-sensitive component (10)” is inconsistent with the other pending claims in which (10) is removed.
Claim 7 line 4 “[Fe1-aNia]100-x-y-z-α-β-γCuxSiyBzNbαM’βM’’γ” where 100-x-y-z-α-β-γ should be subscript.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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, 2, 5-7, 11, 22, and 23 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim 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.
Claim 1 lines 1-2 “A magnetic field-sensitive component…having particles of a soft magnetic material” renders the claim indefinite. How does the component have the particles? Are the particles in particle form in the component or is the component made of the particles, such that the form of the particles can change as a result of forming the component? For the purpose of examination claim 1 will be interpreted as the magnetic field-sensitive component being either particles or particles made into a component.
Claim 1 lines 7-8 “the particles of the soft magnetic substance” renders the claim indefinite. There is insufficient antecedent basis.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 1 recites the broad recitation in line 3 “a coercive field strength of less than or equal to 10 A/m”, and the claim also recites in lines 4-5 “preferably of less than or equal to 5 A/m, and particularly preferably of less than or equal to 3 A/m” which are the narrower statements of the range/limitation.
In the present instance, claim 2 recites the broad recitation in line 6 “a remanence of less than or equal to 0.1 T”, and the claim also recites in lines 6-7 “preferably a remanence of less than or equal to 0.05 T, and particularly preferably a remanence of less than or equal to 0.02 T” which are the narrower statements of the range/limitation.
In the present instance, claim 5 recites the broad recitation in line 3 “a saturation flux density of greater than or equal to 1 T”, and the claim also recites in lines 4-5 “preferably a saturation flux density of greater than or equal to 1.1 T, and particularly preferably a saturation flux density of greater than or equal to 1.2 T” which are the narrower statements of the range/limitation.
In the present instance, claim 6 recites the broad recitation in line 3 “extension in a range of greater than or equal to 3 um and less than or equal to 200 um”, and the claim also recites in lines 4-6 “preferably an extension in a range of greater than or equal to 4 um and less than or equal to 100 um, and particularly preferably an extension in a range of greater than or equal to 5 um and less than or equal to 50 um” which are the narrower statements of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
For the purpose of examination claims 1, 2, 5, and 6 are interpreted as requiring the broadest respective recitation.
Claim 11 lines 1-2 “said magnetic field-sensitive component is sintered” renders the claim indefinite. Claim 11 depends from claim 1, which recites in lines 1-2 “said magnetic field-sensitive component having particles of a soft magnetic material”. Applicant’s specification at [0068] defines “sintering” as requiring a material bond between the particles. Sintering bonds particles into a solid, such that after sintering they are a cohesive body and no longer particles. Does the magnetic field-sensitive component require particles or is it a body that has been sintered from particles?
Claim 23 line 2 “a nanocrystalline structure” renders the claim indefinite. Claim 23 depends from claim 22, which recites in line 2 that the soft magnetic material is a “metallic glass”. Applicant’s specification at [0047] defines a “metallic glass” as a metal-based alloy of material which does not have a crystalline but an amorphous structure”. Applicant’s specification at [0050] defines a “nanocrystalline structure” as a polycrystalline solid with a nano-microstructure. It is unclear how, according to applicant’s specification definitions, the structure can both not have a crystalline structure, yet have a nanocrystalline structure. For the purpose of examination claim 23 will be interpreted in light of the art of being a metallic glass with a nanocrystalline structure.
Claims 7 and 22 are rejected as depending from claim 1.
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, 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.
Claims 1, 2, 5-7, 11, 22, 23 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshizawa (US 4,985,089).
Regarding claim 1, Yoshizawa discloses a magnetic field-sensitive component (1:7-14),
said magnetic field-sensitive component having particles of a soft magnetic material (2:36-53, 10:64 to 11:55),
said magnetic field-sensitive component having a coercive field strength of less than or equal to 10 A/m, preferably of less than or equal to 5 A/m, and particularly preferably of less than or equal to 3 A/m (inventive examples range from 1.4 to 5.4 A/m, 0.017 to 0.068 Oe) (Tables 1-2), wherein
said magnetic field-sensitive component has the particles of the soft magnetic material substance in a proportion of greater than or equal to 95% by weight, preferably in a proportion of greater than or equal to 97.5% by weight, and particularly preferably in a proportion of greater than or equal to 99% by weight (dust core produced without using a binder by compressing the amorphous alloy powder is 100% by weight particles of the soft magnetic material) (8:36-41).
Regarding claim 2, said magnetic field-sensitive component (10) having a remanence of less than or equal to 0.1 T, preferably a remanence of less than or equal to 0.05 T, and particularly preferably a remanence of less than or equal to 0.02 T has been considered and determined to recite a property of the claimed magnetic field-sensitive component. The prior art discloses a magnetic field-sensitive component that satisfies claim 1 (Yoshizawa 1:7-14, 2:36-53, 8:36-41, 10:64 to 11:55, Tables 1-2), such that the claimed property of remanence naturally flows from the disclosure of the prior art.
Regarding claim 5, said magnetic field-sensitive component having a saturation flux density of greater than or equal to 1 T, preferably a saturation flux density of greater than or equal to 1.1 T, and particularly preferably a saturation flux density of greater than or equal to 1.2 T has been considered and determined to recite a property of the claimed magnetic field-sensitive component. The prior art discloses a magnetic field-sensitive component that satisfies claim 1 (Yoshizawa 1:7-14, 2:36-53, 8:36-41, 10:64 to 11:55, Tables 1-2), such that the claimed property of saturation flux density naturally flows from the disclosure of the prior art.
Regarding claim 7, Yoshizawa discloses the soft magnetic material with a composition that falls within the scope of that claimed (Tables 1-2). Representative examples are presented in the following table.
Element
At%
Table 1
No. 2
Table 1
No. 3
Table 2
No. 2
Table 2
No. 4
Fe, 1-a
46 to 82.4
74
77
70.5
71.5
Ni, a
0 to 24.7
-
-
-
-
Cu, x
0.6 to 1.5
1
1
1
1
Si, y
10 to 17.5
13
10
13.5
13.5
B, z
5 to 14
9
9
9
9
Nb, α
2 to 6
3
3
3
3
M’, β
V, Cr, Al, Zn
≤ 7
-
-
Al: 3
Al: 2
M’’, γ
C, Ge, P, Ga, Sb, In, Be
≤ 8
-
-
-
-
Regarding claim 11, Yoshizawa discloses said magnetic field-sensitive component is sintered (dust core produced without using a binder by compressing the amorphous alloy powder at a temperature near its crystallization temperature) (8:36-41).
Regarding claim 22, Yoshizawa discloses the soft magnetic material is a metallic glass (amorphous) (10:65 to 11:4, 27-36).
Regarding claim 23, Yoshizawa discloses the soft magnetic material has a nanocrystalline structure (average crystalline particle size does not exceed 500 angstrom, 50 nm) (5:60 to 6:11, 10:65 to 11:4, 27-36).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshizawa (US 4,985,089) as applied to claim 1 above and as evidenced by Skylighter (Mesh to Micron Conversion Chart. February 14, 2018. Skylighter.).
Regarding claim 6, Yoshizawa discloses the particles have an extension in a range of greater than or equal to 3 um and less than or equal to 200 um, preferably an extension in a range of greater than or equal to 4 um and less than or equal to 100 um, and particularly preferably an extension in a range of greater than or equal to 5 um and less than or equal to 50 um (less than 74 um, 200 mesh or smaller, Skylighter) (11:5-6, 37-39). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Related Art
Kojima (JP 2002-053939 machine translation)
Kojima discloses a magnetic field-sensitive component ([0001]) with a high saturation magnetic flux ([0005]) and a composition of Fe up to 93 at%, B 5 to 8 at%, M preferably of Nb of 4 to 9 at%, and Si at approximately 10 at% or less ([0005]-[0006], [0013], [0016], [0021]-[0026]) having a grain size of 50 nm or less in at least 50% of the structure with a remainder amorphous phase ([0007]-[0009], [0014]-[0015]). Kojima discloses a high saturation magnetic flux density of 1.5 T or more and low coercivity of 6 A/m or less ([0019]). Kojima discloses a powder that is molded into a desired shape and heat treated for crystallization, where molding includes pressure sintering ([0017], [0064]-[0068]).
Major (GB 2308386)
Major discloses soft magnetic alloys (1:3-5) with an overlapping composition includes Fe, Cu, B, Si, Nb, and Al (2:20-32) and a structure of 50% or more of fine crystalline particles less than 100 nm (nanocrystalline) (2:34 to 3:2) in the form of a powder (3:9-12). Major discloses press forming and sintering the alloy powder with an inorganic binder (3:23-26). The examples of Major have coercive force values within the scope of less than 10 A/m (3:28 to 4:30, Figs. 1-4, 9-10).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANI HILL whose telephone number is (571)272-2523. The examiner can normally be reached Monday-Friday 7am-12pm.
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, KEITH WALKER can be reached at 571-272-3458. 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.
/STEPHANI HILL/Examiner, Art Unit 1735