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 listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
The abstract of the disclosure is objected to because it has two paragraphs. 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 content of an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length. See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The disclosure is objected to because of the following informalities:
Sections [9] and [10] in paragraph [0009] teaches the electronic component including the magnetic particle containing cured substance described in [7] is used as an inductor or an antenna. It is unclear what is meant by the component being used as an inductor or as an antenna. It is unclear if this means that the component is an inductor or an antenna or if the component is capable of being used as inductor or as an antenna; but is not limited to these uses and/or has a structure different from that of an inductor or antenna. It is noted that paragraph [0085] teaches the component is an inductor or an antenna. 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 3, 4, 9-12, 17 and 18 are 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.
Claims 3 and 11 teach the magnetic particles have a plurality of peak tops. It is unclear if the peak top of claim 1 corresponds with Dmin, Dmax, or another peak top of the claimed plurality of peak tops and which is different from Dmin and Dmax. Therefore, claims 3 and 11 are indefinite
Claims 4 and 12 appear indicates Dmax is the peak top of claim 1. Since it is not clear if this is correct or not, these claims are indefinite.
Claims 9, 10, 17 and 18 teach teaches the electronic component including the magnetic particle containing cured substance described in claims 7 and15 is used as an inductor or an antenna. It is unclear what is meant by the component being used as an inductor or as an antenna. It is unclear if this means that the component is an inductor or an antenna or if the component is capable of being used as inductor or as an antenna; but is not limited to these uses and/or has a structure different from that of an inductor or antenna. Accordingly, these claims are indefinite.
Claim Interpretation
Dmax in claims 3, 4, 11 and 12 are being interpreted as reading on the peak top of claim 1, which is the broadest reasonable interpretation based on the teachings in the specification.
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 1-4, 7, 8, 11, 12, 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2005-347449.
This reference teaches a magnetic composition, a magnetic particle containing cured substance formed from the magnetic composition and an electron apparatus, or component, comprising the cured substance. The composition comprises a resin and 50-80 vol% soft magnetic particles dispersed therein. The preferred soft magnetic particles are Sendust particles, which contain about 85 wt% iron, which falls within the iron content of claims 1 and 2. The resin can be an epoxy resin. This suggested composition of an epoxy resin and 50-80 vol% Sendust contains about 82.3-96.2 wt% Sendust (based on a Sendust density of 6.5-7 g/cc and an epoxy resin density of about 1.1-1.4 g/cc). This amount of Sendust overlaps the amount of claim 1. Product claims with numerical ranges which overlap prior art ranges were held to have been obvious under 35 USC 103. In re Wertheim 191 USPQ 90 (CCPA 1976); In re Malagari 182 USPQ 549 (CCPA 1974); In re Fields 134 USPQ 242 (CCPA 1962); In re Nehrenberg 126 USPQ 383 (CCPA 1960). Also see MPEP 2144.05. The taught magnetic particles have a bimodal peak size where first peak size is within the range of 10-50 microns and a second peak size of 1 to less than 10 microns. The size is based on volume-based frequency. These size ranges overlaps those of claims 1, 4 and 12. The ratio of first peak size to second peak size is greater than 1 to 50, which overlaps the range of claims 3 and 11. The reference suggests the claimed composition, cured substance and electronic device.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. patent application publication 2014/0009252.
This reference teaches an inductor that comprises a sealing material. This taught inductor reads upon the claimed electronic component used as an inductor. The sealing material is a cured substance formed from composition comprising a thermosetting resin and at least 50 vol% of a soft magnetic alloy powder, wherein the powder has the same composition as the core (para 41-42). The preferred soft magnetic alloy powder is a Fe-Cr-Si alloy and the thermosetting resin can be an epoxy resin. Using the densities of the alloy (found in the examples of EP 4475146 and EP 4421129) and epoxy and the taught amount of at least 50 vol%, the converted mass percentage of the alloy powder is at least about 83 wt%, which overlaps the amount in claim 1. Product claims with numerical ranges which overlap prior art ranges were held to have been obvious under 35 USC 103. In re Wertheim 191 USPQ 90 (CCPA 1976); In re Malagari 182 USPQ 549 (CCPA 1974); In re Fields 134 USPQ 242 (CCPA 1962); In re Nehrenberg 126 USPQ 383 (CCPA 1960). Also see MPEP 2144.05. U.S. patent 9,287,026 teaches and applicant show the amount of iron in soft magnetic Fe-Cr-Si alloy is 78-95.5 wt%, which falls within the range of claim 1 and overlaps the amount in claim 2. Paragraphs [0045]-[0054] teaches the magnetic powder is bimodal in that it has two peak top size ranges, as determined by volume-based frequency, where the first peak, which corresponds with Dmax, has a size of about 22 microns and the second peak, which corresponds with Dmin, has a size that is ½ to 1/10 of the size of the first peak, which corresponds to a size of 2.2-11 microns. The teaching that the second peak has a size that is ½ to 1/10 of the size of the first peak means the ratio of the first size to the second size is 2-10, which falls within the range of claims 3 and 11. The taught second size range of 2.2-11 microns overlaps the Dmin range of claims 4 and 12. Thus the reference suggests the composition, cured substance, and electronic copoint of claims 1-4, 7-9, 11, 12, and 15-17.
The reference teaches the thermosetting resin can be a mixture of an epoxy resin and a phenol resin. Using the densities of the alloy and the suggested resin mixture (using the density of phenol resins which is 1.2-1.3 g/cc) and the taught amount of at least 50 vol%, the converted mass percentage of the alloy powder appears to be at least about 84 wt%, which overlaps the amount in claim 1. The taught thermosetting resin of a mixture of an epoxy resin and a phenol resin suggest the composition of claims 5, 13 and 19 where the phenol resin is the reactive diluent for the epoxy resin.
While the reference does not teach the presence of a curing agent in either of the taught epoxy based thermosetting resins, one of ordinary skill in the art would have found it obvious to add a curing agent to since curing agents are a conventional additive for epoxy resins to initiate the curing of the epoxy. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) and; Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) MPEP 2144.07. This curing agent containing composition suggests that of claims 6, 14 and 20.
Finally, while the reference does not teach antennas, inductors are known in the art to be used as an antenna, as taught in U.S. patent 3,360,730 and 3,543,761. Therefore, one of ordinary skill in the art would have found it obvious to use the taught inductor as an antenna, absent any showing to the contrary.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to C. MELISSA KOSLOW whose telephone number is (571)272-1371. The examiner can normally be reached Mon-Tues:7:45-3:45 EST;Thurs-Fri:6:30-2:00EST; and Wed:7:45-2:00EST.
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/C Melissa Koslow/Primary Examiner, Art Unit 1734
cmk
2/12/26