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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/16/2026 is being considered by the examiner.
Status of Claims
Amendment of the claims filed on 11/19/2025 has been entered.
Claims 1-3, 5-10, and 12-13 have been amended, no new matter is presented.
Claim 11 is cancelled.
Claim 20 and 21 are newly added.
Claims 1-10, and 12-21 are remaining for examination on the merits.
Status of Previous Rejections
The previously cited Specification Objection has been withdrawn as Applicant submitted the amended page of the disclosure .
The previously cited 35 USC § 112(b) rejection have been withdrawn.
The previous 35 USC § 103 rejections of the claims have been withdrawn due to the amendment.
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.
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.
Claims 1-9, 11 and 14 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Inoue Hidetoshi, et.al. [WO2020246246A1] (Machine translation) and further in view of Hirano Masanory, et.al. [WO2020100513A1] (Machine translation).
Regarding claims 1, Inoue discloses compounds containing metal powder and thermosetting resins are used as raw materials for a variety of industrial products, such as inductors, electromagnetic wave shields, or bonded magnets, etc. depending on the physical properties of the metal powder [Section 0003]. Inoue discloses a method comprising, preparing at least one SmFeN based magnetic powder-containing resin composition (providing a compound having excellent fluidity and filling properties, a molded article containing the compound, and a cured product of the compound [Section 00016], the metal powder may be a magnetic powder, a soft magnetic alloy or a ferromagnetic alloy, for example, a magnetic powder made of at least one material selected from the group consisting of an Nd-Fe-B alloy (rare earth magnet), an Sm-Fe-N alloy (rare earth magnet) etc. [Section 0055] and when the compound contains a permanent magnet such as an Sm—Fe—N alloy or an Nd—Fe—B alloy as metal powder, the compound may be used as a material for a bonded magnet) [Section 0060].
Inoue’s magnetic powder having an average particle size of the average particle size of 1 μm or more and 300 μm or less [Section 0057].
Inoue’s average particle size is overlapping with the as recited range of the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have average particle size selected from the range of Inoue, because “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” [See MPEP § 2144.05.I].
Inoue teaches at least one crystalline thermosetting resin, and at least one curing agent (the compound contains at least metal powder, epoxy resin, and the compound further contains a curing agent) [Section 0019], Inoue’s list of crystalline thermosetting resin, includes EPPN-201 and YX-4000 (same as examples of the (Table 2) of the instant specification.)] [Section 0040]. Inoue’s at least one of the thermosetting resin and the curing agent includes at least one monomer having a melting point that is higher than 70°C but not higher than 140°C (Inoue’s list of crystalline thermosetting resin, includes YX-4000 [Section 0040] which is same as examples of the (Table 2) of the instant specification, and the melting point of YX-4000 is 105°C.
Therefore, Inoue’s epoxy resins containing a monomer having a melting point that falls within the as recited in the instant claim.
Inoue also teaches the ratio of the active group in the curing agent that reacts with the epoxy group in the epoxy resin may be preferably 0.5 to 1.5 equivalents, relative to 1 equivalent of the epoxy group in the epoxy resin. If the ratio of active groups in the curing agent is less than 0.5 equivalents, it is difficult to obtain a sufficient modulus of elasticity of the resulting cured product. On the other hand, if the ratio of active groups in the curing agent exceeds 1.5 equivalents, the mechanical strength of a molded article formed from the compound after curing tends to decrease [Section 0049].
Therefore, according to Inoue, if ratio of the curing agent is 0.5 equivalents, relative to 1 equivalent of the epoxy group in the epoxy resin, then a combined amount of the thermosetting resin and the curing agent would be 1.5 equivalents, therefore, the amount of the epoxy resin (monomer) % by volume would be, (1/1.5) * 100 = 67%. If ratio of the curing agent is 1.5 equivalents, relative to 1 equivalent of the epoxy group in the epoxy resin, then a combined amount of the thermosetting resin and the curing agent would be 2.5 equivalents, therefore, the amount of the epoxy resin (monomer) % by volume would be, (1/2.5) * 100 = 40%.
The calculated amount of the monomer from Inoue’s is at least 40% by volume but not more than 67% by volume of a combined amount of the thermosetting resin and the curing agent, which is within the as recited range of the instant claim.
Inoue teaches obtaining the magnetic powder-containing resin composition by kneading the magnetic powder the thermosetting resin, and the curing agent at a temperature of higher than 70°C but not higher than 140°C and then lowering the temperature (the compound is obtained by mixing metal powder and a resin composition while heating, kneaded with a kneader, roll, stirrer, or the like while being heated. By heating and mixing the metal powder and the resin composition, the resin composition adheres to part or all of the surface of each metal particle constituting the metal powder, coating each metal particle) [Section 0061] and (The heating temperature is preferably 70°C or higher and the heating temperature is preferably 150°C or less. When the heating temperature is within the above range, the resin composition in the tank softens and tends to coat the surfaces of the metal particles that make up the metal powder, making it easier to produce a semi-cured epoxy resin and suppressing complete curing of the epoxy resin during kneading) [Section 0063]. Inoue then teaches the obtained kneaded product is cooled to room temperature [Section 0067].
Inoue’s kneading temperature is within the as recited range of the instant claim.
But Inoue does not teach crystalline curing agent.
However, Hirano teaches to provide an epoxy resin composition for composite materials that offers excellent handling at room temperature, achieves both high heat resistance and high toughness, and has excellent resin impregnation properties when used as a reinforced fiber composite material, [Section 0011], with a combination of Components [A]: Crystalline epoxy resin and Components [B]: Crystalline amine curing agent [Section 0014] and then a list of Components [A]: Crystalline epoxy resins including YX4000 (manufactured by Mitsubishi Chemical Corporation): Biphenyl type epoxy resin, melting point = 105°C and Components [B]: Crystalline amine curing agents including Bisaniline M (manufactured by Mitsui Chemicals Fine, Inc.): melting point = 114°C [Section 0075]. Hirano teaches both the YX4000 and Bisaniline M which are as the same as Ex 2 and EX 3 of the (Table 2) of the instant specification.
Hirano’s teaching is directed to a composite materials and thus analogous to Inoue as well as the instant claim as both Inoue and the instant claim require a composition mixed of magnetic material and polymer material.
Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the present invention, to have Hirano’s teaching of a combination of crystalline epoxy resin and crystalline curing agents to combine with Inoue’s teaching for having compound powder for having excellent fluidity and filling properties, for producing a molded article having improved fluidity, filling properties, storage stability, and moldability as well as high heat resistance and high toughness, and has excellent resin impregnation properties.
Regarding claims 2, all the discussions above claim 1 are applicable for claim 2, wherein, Inoue already teaches in the preparing, the thermosetting crystalline resin includes a thermosetting monomer having a melting point that is 105°C (crystalline thermosetting resin, YX-4000) [Section 0040], the same as Ex 2 and EX 3 of the (Table 2) of the instant specification with a melting point that is 105°C., which is within the as recited in the instant claim.
Alternatively, Hirano teaches an example crystalline epoxy resins including YX4000 (manufactured by Mitsubishi Chemical Corporation): Biphenyl type epoxy resin, having a melting point = 105°C [Section 0075] exactly the same as Ex 2 and EX 3 of the (Table 2) of the instant specification. Hirano’s melting point of the crystalline resin is also within the as recited in the instant claim.
Regarding claims 3, all the discussions above claim 1 and 2 are applicable for claim 3, wherein, Inoue already teaches in the preparing, the crystalline thermosetting monomer comprises an epoxy resin (Inoue’s crystalline thermosetting resin, YX-4000 [Section 0040], is the same as Ex 2 and EX 3 of the (Table 2) and paragraph [0044] of the instant specification describes that biphenyl-containing epoxy resins include YX4000. .
But Inoue does not teach crystalline curing agent.
However, Hirano teaches Components [B]: Crystalline amine curing agents including Bisaniline M (manufactured by Mitsui Chemicals Fine, Inc.): melting point = 114°C [Section 0075]. Hirano teaches both the YX4000 and Bisaniline M which are as the same as Ex 2 and EX 3 of the (Table 2) of the instant specification.
Hirano’s melting point of the crystalline curing agent is within the as recited in the instant claim.
Regarding claims 4, all the discussions above claim 1-3 are applicable for claim 4, wherein, Inoue already teaches the epoxy resin is a biphenyl-containing epoxy resin or a bisphenol- containing epoxy resin (The resin composition contains at least an epoxy resin as a thermosetting resin. The compound contains an epoxy resin, which has relatively good fluidity among thermosetting resins, and as a result, the compound has improved fluidity, filling properties, storage stability, and moldability) [Section 0037] and (the epoxy resin may be, a resin having two or more epoxy groups in one molecule (monomer), examples of such epoxy resins include biphenyl-type epoxy resins, bisphenol-type epoxy resins etc.) [Section 0038]. Inoue further teaches crystalline thermosetting resin, including EPPN-201 and YX-4000 (same as examples of the (Table 2) of the instant specification.)] [Section 0040].
Alternatively Hirano also teaches a crystalline epoxy resins including YX4000 (manufactured by Mitsubishi Chemical Corporation): Biphenyl type epoxy resin, melting point = 105°C and Components [Section 0075], same as Ex 2 and EX 3 of the (Table 2) of the instant specification.
Regarding claims 5, all the discussions above claim 1 and 2 are applicable for claim 5, wherein, Inoue also teaches the ratio of the active group in the curing agent that reacts with the epoxy group in the epoxy resin may be preferably 0.5 to 1.5 equivalents, relative to 1 equivalent of the epoxy group in the epoxy resin. If the ratio of active groups in the curing agent is less than 0.5 equivalents, it is difficult to obtain a sufficient modulus of elasticity of the resulting cured product. On the other hand, if the ratio of active groups in the curing agent exceeds 1.5 equivalents, the mechanical strength of a molded article formed from the compound after curing tends to decrease [Section 0049].
Therefore, according to Inoue, if ratio of the curing agent is 0.5 equivalents, relative to 1 equivalent of the epoxy group in the epoxy resin, then a combined amount of the thermosetting resin and the curing agent would be 1.5 equivalents, therefore, the amount of the epoxy resin (thermosetting monomer) % by volume would be, (1/1.5) * 100 = 67%. If ratio of the curing agent is 1.5 equivalents, relative to 1 equivalent of the epoxy group in the epoxy resin, then a combined amount of the thermosetting resin and the curing agent would be 2.0 equivalents, therefore, the amount of the epoxy resin (thermosetting monomer) % by volume would be, (1/2.0) * 100 = 50%.
The calculated amount of the thermosetting monomer from Inoue’s is at least 50% by volume but not more than 67% by volume of a combined amount of the thermosetting resin and the curing agent, which is within the as recited range of the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have an amount of the thermosetting monomer % by volume of a combined amount of the thermosetting resin and the curing agent, selected from Inoue’s teaching, because “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” [See MPEP § 2144.05.I].
Inoue further teaches in the preparing, the thermosetting crystalline resin includes a thermosetting monomer having a melting point that is 105°C (crystalline thermosetting resin, YX-4000) the same as Ex 2 and EX 3 of the (Table 2) of the instant specification with a melting point that is 105°C., which is within the as recited in the instant claim.
But Inoue does not teach crystalline curing agent.
However, Hirano teaches a combination of crystalline epoxy resin and crystalline amine curing agent including YX4000 (manufactured by Mitsubishi Chemical Corporation): Biphenyl type epoxy resin, melting point = 105°C and Components [B]: Crystalline amine curing agents including Bisaniline M (manufactured by Mitsui Chemicals Fine, Inc.): melting point = 114°C [Section 0075]. Hirano teaches both the YX4000 and Bisaniline M which are as the same as Ex 2 and EX 3 of the (Table 2) of the instant specification.
Hirano’s melting point of the crystalline resin and the crystalline curing agent are within the as recited in the instant claim.
Regarding claims 6, all the discussions above claim 1 and 2 are applicable for claim 6, Inoue already teaches in the preparing, the thermosetting crystalline resin includes a thermosetting monomer having a melting point that is 105°C (crystalline thermosetting resin, YX-4000) the same as Ex 2 and EX 3 of the (Table 2) of the instant specification with a melting point that is 105°C., which is within the as recited in the instant claim.
But Inoue does not teach crystalline curing agent.
However, Hirano teaches a combination of crystalline epoxy resin and crystalline amine curing agent including YX4000 (manufactured by Mitsubishi Chemical Corporation): Biphenyl type epoxy resin, melting point = 105°C and Components [B]: Crystalline amine curing agents including Bisaniline M (manufactured by Mitsui Chemicals Fine, Inc.): melting point = 114°C [Section 0075]. Hirano teaches both the YX4000 and Bisaniline M which are as the same as Ex 2 and EX 3 of the (Table 2) of the instant specification. Bisaniline M is an aromatic amine.
Hirano’s melting point of the crystalline resin and the crystalline curing agent are within the as recited in the instant claim.
Regarding claims 7 and 8, all the discussions above claim 1-2 and 6 are applicable for claim 7 and 8, wherein, Inoue already teaches in the preparing, the curing agent monomer comprises an aromatic amine curing agent (the heat-curing curing agents that cure epoxy resins when heated, examples of the heat-curing curing agent include aromatic polyamines) [Section 0043].
But Inoue is silent about the crystalline curing agent.
Hirano also teaches the curing agent monomer is a crystalline aromatic amine curing agent (Bisaniline M (manufactured by Mitsui Chemicals Fine, Inc.): melting point = 114°C [Section 0075]. the same aromatic amine curing agents as shown in the Examples of the (Table 2) and described in the paragraph [0048] of the instant specification.
Regarding claims 9, all the discussions above claim 1-2 and 6 are applicable for claim 9, wherein, Inoue teaches the ratio of the active group in the curing agent that reacts with the epoxy group in the epoxy resin may be preferably 0.5 to 1.5 equivalents, relative to 1 equivalent of the epoxy group in the epoxy resin. If the ratio of active groups in the curing agent is less than 0.5 equivalents, it is difficult to obtain a sufficient modulus of elasticity of the resulting cured product. On the other hand, if the ratio of active groups in the curing agent exceeds 1.5 equivalents, the mechanical strength of a molded article formed from the compound after curing tends to decrease [Section 0049].
Therefore, according to Inoue, if ratio of the curing agent is 0.5 equivalents, relative to 1 equivalent of the epoxy group in the epoxy resin, then a combined amount of the thermosetting resin and the curing agent would be 1.5 equivalents, therefore, the amount of the curing agent monomer % by volume would be, (0.5/1.5) * 100 = 33%. If ratio of the curing agent is 1.5 equivalents, relative to 1 equivalent of the epoxy group in the epoxy resin, then a combined amount of the thermosetting resin and the curing agent would be 2.5 equivalents, therefore, the amount of the curing agent (monomer) % by volume would be, (1.5/2.5) * 100 = 60%.
The calculated amount of the curing agent monomer from Inoue’s is at least 33% by volume but not more than 60% by volume of a combined amount of the thermosetting resin and the curing agent, which is within the as recited range of the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have an amount of the monomer % by volume of a combined amount of the thermosetting resin and the curing agent, selected from Inoue’s teaching, because “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” [See MPEP § 2144.05.I].
Inoue further teaches in the preparing, the thermosetting crystalline resin includes a thermosetting monomer having a melting point that is 105°C (crystalline thermosetting resin, YX-4000) the same as Ex 2 and EX 3 of the (Table 2) of the instant specification with a melting point that is 105°C., which is within the as recited in the instant claim.
But Inoue does not teach crystalline curing agent.
However, Hirano teaches a combination of crystalline epoxy resin and crystalline amine curing agent including YX4000 (manufactured by Mitsubishi Chemical Corporation): Biphenyl type epoxy resin, melting point = 105°C and Components [B]: Crystalline amine curing agents including Bisaniline M (manufactured by Mitsui Chemicals Fine, Inc.): melting point = 114°C [Section 0075]. Hirano teaches both the YX4000 and Bisaniline M which are as the same as Ex 2 and EX 3 of the (Table 2) of the instant specification.
Hirano’s melting point of the crystalline resin and the crystalline curing agent are within the as recited in the instant claim.
Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the present invention, to combine Hirano and Inoue’s teaching for obtaining a cured product having a sufficient modulus of elasticity as well as the mechanical strength of a molded product.
Regarding claims 14, all the discussions above claim 1 are applicable for claim 14, Inoue teaches a method of producing a tablet for transfer molding (The compound may be used for transfer molding. Transfer molding is a type of injection molding process for thermosetting resins. Transfer molding may be rephrased as injection molding) [Section 0059]. Inoue teaches the method comprising: obtaining a magnetic powder-containing resin composition by the method according to claim 1; obtaining a ground product by grinding the magnetic powder-containing resin composition (the compound is obtained by mixing metal powder and a resin composition while heating, kneaded with a kneader, roll, stirrer, or the like while being heated. By heating and mixing the metal powder and the resin composition, the resin composition adheres to part or all of the surface of each metal particle constituting the metal powder, coating each metal particle) [Section 0061]. Inoue then teaches the obtained kneaded product is cooled to room temperature and then pulverized with a hammer until the kneaded product had a predetermined particle size [Section 0067].
Inoue further teaches compressing the ground product (Transfer molding include the steps of heating and fluidizing a compound in a heating chamber, and feeding (pressing) the fluidized compound from the heating chamber into a mold. The compound exhibits excellent fluidity and filling properties when heated, so it flows easily through a narrow runner and is easily and uniformly filled into the space (cavity) in the mold. Therefore, by processing the compound by transfer molding, it is possible to produce molded articles and cured products with fewer defects such as voids or burrs) [Section 0059]
Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the present invention, to have Inoue’s teaching for producing a molded product by processing the compound by transfer molding, to produce molded articles and cured products with fewer defects such as voids or burrs.
Claims 10 is rejected under 35 U.S.C. 103 as being unpatentable over Inoue Hidetoshi, et.al. [WO2020246246A1] (Machine translation) and further in view of Hirano Masanory, et.al. [WO2020100513A1] (Machine translation) as applied to claim 1 and further in view of Yoshida Masato, et.al. [WO2020235246A1] (Machine translation).
Regarding claims 10, all the discussions above claim 1 are applicable for claim 10, but Inoue and Hirano are silent about an amount of the magnetic powder is at least 50% by volume but not more than 99.9% by volume of the magnetic powder-containing resin composition.
However, Yoshida discloses in the obtaining of the magnetic powder-containing resin composition, an amount of the magnetic powder by volume of the magnetic powder-containing resin composition (increasing the content of iron-based particles sufficiently, it is possible to improve magnetic performance (magnetic permeability, core loss, etc. [Section 0120], and on a volume basis, the content of the magnetic particles in the resin composition is preferably 60% by volume or more, more preferably 70% by volume or more, and even more preferably 80% by volume or more, based on the entire resin composition. The upper limit of this amount is, for example, 95% by volume or less in order to ensure the flowability of the resin composition in practice) [Section 0121].
Yoshida’s disclosed an amount of the magnetic powder by volume is within the as recited range in the instant claim.
Yoshida is directed to a composite powder composition containing magnetic powder and polymer binder and thus analogous to the instant claim and Inoue as well as Hirano.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have an appropriate amount of the magnetic powder from Yoshida’s teaching, to combine with Inoue and Hirano to improve magnetic performance as well as to ensure the flowability of the resin composition for producing a magnetic member.
Claims 12 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Inoue Hidetoshi, et.al. [WO2020246246A1] (Machine translation) in view of Hirano Masanory, et.al. [WO2020100513A1] (Machine translation) as applied to claim 1, and further in view of Lu-Kuei Lin, et.al. [US9719159B2].
Regarding claims 12, and 20-21, all the discussions above claim 1 are applicable for claim 12, and 20-21, wherein Inoue already teaches in the preparing, the magnetic powder comprises a SmFeN-based magnetic powder (the metal powder may be a magnetic powder, for example, a magnetic powder made of at least one material selected from the group consisting of an Nd-Fe-B alloy (rare earth magnet), an Sm-Fe-N alloy (rare earth magnet) [Section 0055], when the compound contains a permanent magnet such as an SmFeN alloy or an Nd—Fe—B alloy as metal powder used as a material for a bonded magnet [Section 0060] and Inoue’s magnetic powder having an average particle size of the average particle size of 1 μm or more and 300 μm or less [Section 0057], Inoue’s average particle size is overlapping with the as recited range of the instant claim.
While Inoue’s average particle size read on D50, but Inoue and Hirano are silent about D10, and D90 and therefore, silent about a particle size distribution, (D90- D10)/D50, that is not more than 2.5.
However, Lin teaches a mixed magnetic powders for making a magnetic core comprising a first magnetic powder and a second magnetic powder [FIG.1, (Col. 5, line 15-17), claim 1]. According to Lin, D10, D50 and D90 are used for describing the particle size distribution of magnetic powders. D10 means 10% of the total number of the particles is less than the D 10, D50 means 50% of the total 10 number of the particles is less than D50 and D90 means 90% of the total number of the particles is less than D90 [Col. 5, line 5-12]. Lin then discloses in an embodiment, the D50 of the second magnetic powder is in the range of 1.8-3.2 μm, the D10 of the second magnetic powder is in the range of 1.0-1. 7 μm, and the D90 of the second magnetic powder is in the range of 3.5 to 5.6 μm [Col. 6, line 19-26, claim 9, and TABLE 1-3]. Lin’s examples in the Table 2 shows a magnetic particle S* having the D10 of 1.66 μm, the D50 of 3.21 μm, and the D90 of 5.58 μm [TABLE 2]. With these teachings of Lin, the relation, as calculated (D90-D10)/D50 = (5.58 – 1.66)/3.21 = 1.22.
Lin’s particle size for D10, D50 and D90 all are within the as recited range of the instant claim as well as Lin’s calculated a particle size distribution, (D90- D10)/D50 is also within the as recited range of the instant claim.
Lin teaches a single particle size distribution or different hardness between different magnetic powders, has reached a limit for increasing the bulk density of the magnetic body or the magnetic core. There is to improve both the core bulk density and initial permeability without higher pressure is a desired goal in the industry [Col.1, line 42-47]. Lin then teaches a magnetic body 40 is made by using a mixture of the soft magnetic material M with different weight percentage of the adhesive material 30 (binder) and after molding the magnetic body of Lin, as shown in Table 3, the disclosed process of mixing different particle size distribution and the ratio in between the size distribution enhance the initial permeability while reducing binder material consumption (the weight percentage of the adhesive material) way higher than the conventional process [Col. 10, line 40-67, to Col. 11, line 1, TABLE 3].
With respect to claim 20, as shown above, Lin’s examples in the Table 2 shows a magnetic particle S* having the D10 of 1.66 μm, and the D90 of 5.58 μm [TABLE 2].
Lin’s particle size for both D10, and D90 are within the as recited range of the instant claim.
With respect to claim 21, as shown above, Lin’s examples in the Table 2 shows a magnetic particle S* having the D10 of 1.66 μm, the D50 of 3.21 μm, and the D90 of 5.58 μm [TABLE 2]. With these teachings of Lin, the relation, as calculated (D90-D10)/D50 = (5.58 – 1.66)/3.21 = 1.22.
Lin’s particle size for D10, and D90 all are within the as recited range of the instant claim as well as Lin’s calculated a particle size distribution, (D90- D10)/D50 is within the as recited range of the instant claim.
Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the present invention, to have Lin’s teaching of the particle size distribution to combine with Inoue and Hirano to produce a magnetic powder containing resin for producing molded magnetic product, with higher bulk density and initial permeability without using higher pressure and binder consumption during molding.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Inoue Hidetoshi, et.al. [WO2020246246A1] (Machine translation) and further in view of Hirano Masanory, et.al. [WO2020100513A1] (Machine translation) as applied, to claim 1, and further in view of Hisashi Maehara, et.al. [US10867728 B2].
Regarding claims 13, all the discussions above claim 1 and 11 are applicable for claim 13, but both Inoue and Hirano are silent about the SmFeN-based magnetic powder has a phosphate content that is higher than 0.5% by mass but not higher than 4.5% by mass and a carbon content that is not higher than 800 ppm.
However, Maehara teaches a method of producing an anisotropic magnetic powder having good magnetic properties [Col. 1, line 42-44], wherein the main phase to be obtained is SmFeN [Col. 2, line 60-61]. Maehara then teaches in the nitridation step during producing a bonded magnet, in addition to the magnetic particles, contaminants such as CaO by-product and unreacted metallic calcium, and thus forms a composite with these contaminants in sintered bulk form. In such cases, the product may be added to cool water to separate CaO and metallic calcium as suspended calcium hydroxide (Ca(OH)2) from the magnetic particles. The residual calcium hydroxide may then be sufficiently removed by washing the magnetic particles with acetic acid or the like. Next, a phosphoric acid solution as a surface treatment agent is added in the range equivalent to 0.10 to 10 wt % of PO4 relative to the solids of the magnetic particles obtained in the nitridation step. The particles may appropriately be separated from the solution and dried to obtain an anisotropic magnetic powder [Col.6, line 36-50] and Maehara then teaches the magnetic powder produced as above is SmFeN [Col. 2, line 60-61].
Maehara’s PO4 content relative to the solids of the magnetic particles is overlapping with the as recited range of the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have a PO4 content relative to the solids of the magnetic particles, selected from Maehara’s teaching, because “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” [See MPEP § 2144.05.I].
Maehara is silent about the “carbon content that is not higher than 800 ppm”, however, according to the paragraph [0031] of the instant specification, “the phosphate-coated SmFeN-based magnetic powder preferably has a carbon content of not higher than 800 ppm, more preferably not higher than 600 ppm. The carbon content indicates the amount of organic impurities in the phosphate.”. As because, Maehara’s process is using a phosphoric acid solution as a surface treatment agent, therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the present invention, to expect that there is no organic impurities, i.e. no carbon as phosphoric acid H3PO4 is an inorganic acid, i.e. no carbon, which meets the limitation of a carbon content of not higher than 800 ppm.
Maehara further teaches the composite material may be used to produce a bonded magnet [Col. 7, line 26-27].
Maehara’s process is analogous to the instant claim as well as Inoue and Hirano as Maehara is also in the same field of producing composite material for producing a magnetic part, bonded magnet.
Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the present invention, to have Maehara’s to modify Inoue and Hirano to produce a magnetic powder without contaminants such as CaO by-product and unreacted metallic calcium in the compound for producing a molded product, like bonded .
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Inoue Hidetoshi, et.al. [WO2020246246A1] (Machine translation) and further in view of Hirano Masanory, et.al. [WO2020100513A1] (Machine translation) as applied to claim 1, and further in view of Ito Teruo, et.al. [JP2021129064A] (Machine translation, provided in the IDS).
Regarding claims 15, all the discussions above claim 1 and 14 are applicable for claim 15, wherein Inoue already teaches a method of obtaining a tablet for transfer molding by the method according to claim 14; filling a mold with the tablet for transfer molding by softening the tablet, in addition, Inoue teaches a method of producing a bonded magnet (Industrial products manufactured using the compound may be, for example, automobiles, medical devices, electronic devices, electrical devices, information and communication devices, home appliances, acoustic devices, and general industrial devices. For example, when the compound contains a permanent magnet such as an Sm—Fe—N alloy or an Nd—Fe—B alloy as metal powder, the compound may be used as a material for a bonded magnet) [Section 0060].
But both Inoue and Hirano are silent about the heat-curing the filled tablet while applying magnetism in the mold.
However, Ito teaches when a magnetic compact to which a strong or special magnetic field is applied is extracted from a mold, the magnetic powder particles once oriented may be repelled by the magnetic force of the magnetic powder itself and self-destruct [Section 0004]. Ito’s objective is to provide a method of manufacturing a rare earth bonded magnet molding having high shape retention [Section 0005]. Ito teaches a process for producing a magnetic molded article for solving the above problem includes the steps of mixing an anisotropic rare earth magnet powder and a resin binder to prepare a compound powder. A method for manufacturing a rare earth bonded magnet molding comprises a step of filling a compound powder into a mold, molding a molded body by a mold, applying a magnetic field while heating the compound powder in the mold, orienting the anisotropic magnet powder, and releasing an applied magnetic field, and then cooling the same [Section 0006].
Ito’s compound powder is a mixture containing the magnet powder and the binder is generated [Section 0018], examples of the rare earth magnetic powder (magnetic powder) include samarium-cobalt s alt magnetic powder, neodymium iron boron based magnetic powder, and samarium iron nitride compound (SmFeN) based magnetic powder [Section 0019]. The binder may contain a thermosetting resin, may be at least one selected from the group consisting of epoxy resins, phenol resins [Section 0021] and the curing agent may be preferably a curing agent of the heat curing type, so that the heat resistance and mechanical strength of the molded body are easily improved [Section 0024]. Ito then teaches the magnetic field shaping apparatus 40 includes a heater 49. This heater heats the compound powder in the mold. The heating means of the heater may be selected according to the mold. The heating temperature may be appropriately selected according to the resin component, but is more preferably 100°C or higher. The temperature of the compound powder in the mold can be measured, for example, by setting a temperature sensor inside the mold [Section 0031] and the holding time at the maximum heating temperature may be selected in accordance with the resin component [Section 0032]. Ito then teaches a molded article obtained by molding in a magnetic field with heating exhibited a high crushing strength (MPa) even at a low molding pressure [Section 0038].
Ito’s process is analogous to the instant claim as well as Inoue and Hirano as Ito is also in the same field of producing composite material for producing a magnetic part, bonded magnet.
Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the present invention, to have Ito’s teaching to modify Inoue and Hirano for producing molded articles and cured products with fewer defects such as voids or burrs, obtained by molding in a magnetic field with heating with a retained shape and high crushing strength.
Regarding claims 16, all the discussions above claim, 1, 14 and 15 are applicable for claim 16, but Inoue is silent about in the heat-curing, a heat treatment temperature is at least 150°C.
However, Hirano teaches in the heat-curing, a heat treatment temperature is at least 180°C for curing resin to have time to provide an appropriate required toughness by the resin composition when composite powder is being used for press molding [Section 0081, 0083, 0084].
Hirano’s disclosed heat curing temperature is within as recited range in the instant claim.
Ito also teaches in the heat-curing, a heat treatment temperature is at least 120 to 230°C (In curing process, heating the resulting molded body to harden the resin binder, a rare earth bonded magnet can be obtained. The resin binder is cured by holding a molded body containing a resin binder in a constant temperature bath at 120 to 230°C for 1 to 5 hours under reduced pressure (1 kPa or less) or an inert gas atmosphere such as argon or nitrogen gas [Section 0036].
Ito’s disclosed heat curing temperature is overlapping with the as recited range in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have heat curing temperature, selected from Ito’s teaching, because “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” [See MPEP § 2144.05.I].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have Hirano teachings to modify Inoue for having appropriate toughness in the molded product.
Regarding Claim 17, all the discussions above claim, 1, 14 and 15 are applicable for claim 17, but Inoue is silent about a heat curing holding time at the heat treatment temperature.
Hirano teaches in the heat-curing, a heat treatment temperature is at least 180°C for curing resin to have required curing time that is required for the viscosity to provide an appropriate required toughness by the resin composition when composite powder is being used for press molding [Section 0081, 0083, 0084].
Hirano is silent about a heat curing holding time at the heat treatment temperature
However, Ito teaches a holding time at the heat treatment temperature is 1 to 5 hours (The resin binder is cured by holding a molded body containing a resin binder in a constant temperature bath for 1 to 5 hours [Section 0036], which is within the as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have Hirano teachings to modify Inoue for having appropriate toughness in the molded product.
Allowable Subject Matter
Claim 18 and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 18, all the discussions above claim, 1, and 14-16 are applicable for claim 18, but Inoue, Hirano and Ito all are silent about a holding time at the heat treatment temperature is no longer than five minutes.
However, Yoshida teaches in the heat-curing, a holding time at the heat treatment temperature (The obtained resin composition was injection molded using a low-pressure transfer molding machine (KTS-30 manufactured by Kotaki Seiki Co., Ltd.) at a mold temperature of 175°C, an injection pressure of 9.8 MPa, and a curing time of 120 seconds) [Section 0190]. Yoshida’s disclosed heat curing holding time is within the as recited range in the instant claim.
But Yoshida differs from the instant claim, as Yoshida does not teach crystalline thermosetting resin and crystalline curing agent. As the heat curing is directly related to the crystalline thermosetting resin and crystalline curing agent, therefore, Yoshida has no motivation for modifying Inoue and Hirano regarding heat-curing a holding time.
Regarding Claim 19, all the discussions above claim 1 and 14-15 are applicable for claim 19, but Inoue, is silent about the filling pressure.
Hirano teaches a maximum filling pressure of 4 MPa [Section 084], which is out of the range as recited in the instant claim.
Ito teaches a maximum filling pressure of 1 kPa or less[Section 0036], which is out of the range as recited in the instant claim.
However, Yoshida teaches a filling pressure 9.8 MPa (an injection pressure of 9.8 MPa) [Section 0190], and Yoshida’s disclosed a filling pressure is within the as recited range in the instant claim.
But, as shown above both Hirano and Ito teaches different pressure and Yoshida does not teach any motivation for filling pressure and thus, there is no motivation for modifying Inoue and/or Hirano and/or Ito regarding filling pressure during .
Response to Arguments
Applicant's arguments filed 03/04/2026 have been fully considered but they are not persuasive. Because,
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument, as Yoshida is not being used to reject claim 1.
In response to applicant's argument regarding Inoue, “Paragraph 0055 of Inoue merely lists metal powders (including SmFeN-based alloys), and paragraph 0057 of Inoue states an extremely broad particle-size range (1-300 µm). In Examples 1 and 2 of Inoue, amorphous iron powder 1 (3768 g) having an average particle size of 24 µm and amorphous iron powder 2 (1256 g) having an average particle size of 5.3 µm were mixed (paragraphs 0065, 0066; Table l); the average particle size of the mixture would exceed 10 µm, which is outside the range recited in claim 1 of the present application. Inoue therefore provides no motivation or reason to combine a magnetic powder having an average particle size that is at least 1 µm but not more than 10 µm with a crystalline thermosetting resin and a crystalline curing agent meeting the melting-point and content requirements of claim 1.”, have been considered, but does not seem persuasive, as because,
Regarding SmFeN, Inoue discloses the metal powder may be a magnetic powder, a soft magnetic alloy or a ferromagnetic alloy, for example, a magnetic powder made of at least one material selected from the group consisting of an Nd-Fe-B alloy (rare earth magnet), an Sm-Fe-N alloy (rare earth magnet) etc. [Section 0055] and when the compound contains a permanent magnet such as an Sm—Fe—N alloy or an Nd—Fe—B alloy as metal powder, the compound may be used as a material for a bonded magnet) [Section 0060], therefore, Inoue has sufficient teachings about for selecting SmFeN for the permanent magnet is required.
Regarding magnetic powder, Inoue discloses magnetic powder having an average particle size of the average particle size of 1 μm or more and 300 μm or less [Section 0057]. Inoue’s average particle size is overlapping with the as recited range of the instant claim. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have average particle size selected from the range of Inoue, because “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” [See MPEP § 2144.05.I].
Applicant argues that the instantly claimed ranges are patentable over the prior art because the prior art ranges are broader than the instantly claimed ranges. This is not found persuasive because as stated in ln re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003): “In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness .... We have also held that a prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. v. Banner, 778 F.2d 775,783 (Fed. Cir. 1985).”
It is further to be noted, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP 2123 [R-5]). Although Inoue does not explicitly list specific examples of magnetic particle size falling within the instantly claimed ranges, the broader teachings of Inoue reasonably suggest that some part of the Inoue’s magnetic particle size is falling within the instantly claimed ranges and as such Inoue presents a prima facie case of obviousness over the instantly claimed magnetic particle size.
Regarding, a crystalline thermosetting resin and a crystalline curing agent meeting the melting-point and content requirements of claim 1, Inoue teaches all the teachings of the claim 1 as shown in the rejection section, in addition Inoue teaches at least one crystalline thermosetting resin, (the compound contains at least metal powder, epoxy resin, and the compound further contains a curing agent) [Section 0019], Inoue’s list of crystalline thermosetting resin, includes EPPN-201 and YX-4000 (same as examples of the (Table 2) of the instant specification.)] [Section 0040]. Inoue’s at least one of the thermosetting resin and the curing agent includes at least one monomer having a melting point that is higher than 70°C but not higher than 140°C (Inoue’s list of crystalline thermosetting resin, includes EPPN-201 and YX-4000 [Section 0040] which is same as examples of the (Table 2) of the instant specification, and the melting point of YX-4000 is 105°C. Therefore, Inoue’s epoxy resins containing a monomer having a melting point that falls within the as recited in the instant claim.
But Inoue does not teach crystalline curing agent, however, a new art Hirano has been introduced to modify Inoue, that teaches a crystalline thermosetting resin and a crystalline curing agent meeting the melting-point as claimed in the instant claim 1 and exactly same as examples of the (Table 2) of the instant specification.
Therefore, a new 35 USC § 103 rejection of the claim 1 and other dependent claims have been made due to the amendments (please check the section of the 35U.S.C. 103 rejection associated with this office action for further details).
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 extension fee 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 date of this final action.
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/NAZMUN NAHAR SHAMS/Examiner, Art Unit 1738
/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738
4/3/2026