Response to Amendment
This action is in response to applicants’ amendment of 18 May 2026. The new abstract is acceptable and has been entered. The amendments to the specification has overcome the objections to the disclosure. The amendments to the claims have overcome the 35 USC 112(b) rejections and the art rejections. In view of the amendment to claim 1 and new claim 21, a new grounds of rejection are being made and set forth below.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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.
Applicant has amended claim 1 to now require the magnetic particles having an Fe atom content of at least 70 wt% to comprise a mixture of magnetic particles containing an amorphous alloy and magnetic particles containing a non-amorphous alloy. Dependent claims 2-20 implicitly include this newly claimed compositional limitation. Applicants’ argue paragraph [0027] and Example 5 support this newly claimed compositional limitation. There is no teaching or suggestion in paragraph [0027] that combinations of the listed alloys and thus this paragraph does not support the newly claimed compositional limitation. Example 5 teaches a mixture of a nanocrystalline Fe alloy having 83 wt% Fe with a D50 size of 16 microns and an amorphous Fe alloy having 89 wt% Fe with a D50 size of 3 microns. This single example is not a representative number of species to support the full scope of the newly claimed compositional limitation. Thus the newly added compositional limitation is not supported by the originally filed disclosure and therefore is new matter.
Allowable Subject Matter
Claim 21 is allowed.
The claimed composition is not taught or suggested by the cited art of record. The closest art is WO 2019/031462 which teaches a composition comprising an Fe nanocrystalline alloy powder and an epoxy resin, wherein the alloy powder has a D50 size of 10-30 microns based on a volume-based frequency distribution curve and the alloy comprises at least 73 at% Fe. The amount of resin in the composition is 1-10 parts per 100 parts or the alloy powder, which means the total composition comprises about 0.99-9.09 wt% resin. There is no teaching or suggestion in the art to increase the taught amount of epoxy resin so that the amount of magnetic particles in the composition at least overlaps the claimed range of 70-90 wt%.
Conclusion
U.S. patent application publication is cited as of interest since it teaches a powder core used in an inductor comprising 0.5-5wt% of an epoxy resin and 95-99.5 wt% of a mixture of magnetic Fe amorphous alloy particles having a D50 size of 15 microns or less and magnetic iron crystalline alloy particles wherein the D50 size ratio of the amorphous alloy particles to the D50 size ratio of the crystalline alloy particles is 1-3.5. There is no teaching or suggestion in the art to increase the taught amount of epoxy resin so that the amount of magnetic particles in the core at least overlaps the claimed range of 70-90 wt%.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C Melissa Koslow/Primary Examiner, Art Unit 1734
cmk
6/23/26
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