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 .
Objection to Specification
The specification is objected to because Tables 1A, 3, 4, 5, 6, 7, 8 and 9A include characters in a font having capital letters less than 0.21 cm (0.08 inch) high. Therefore these Tables in the specification do not comply with 37 C.F.R. 1.58(b).
Rejections -- 35 U.S.C. 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.
Claim 5 is 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 regards as the invention.
In line 3 of this claim, the meaning of “kinds of” small particles is unclear, i.e. it is uncertain what criteria applicant uses to distinguish between different “kinds of” particles. Further, it is uncertain whether “different in a coating composition” means that i) different coating compositions exist on at least two of the small particles or ii) the coating composition on the small particles is different from that of the insulation coating on the large particles. Clarification is required.
Rejections -- 35 U.S.C. 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.
6. Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Ishida et al. (US 2020/0312501) in view of Tonoyama et al. (US 2020/0135371).
Ishida discloses a structure including metal magnetic particles, including first particles with a diameter of 1.3-5.0 µm (with specific examples of 3 µm or more, see Ishida para [0073]) and second particles with a diameter larger than the first particles. The particles include an insulating film, with the insulating film on the first particles having a thickness smaller than that on the second particles; see Ishida para [0021]. Thus one can equate the first particles of Ishida to the claimed “second large particles” with a smaller coating thickness and equate the second particles of Ishida to the claimed “first large particles” with a thicker coating. Ishida para [0033] describes the microstructure of the prior art particles, and indicates that the first and second particles may alternatively be nanocrystalline or amorphous, and that the first and second particles may be made of different types of materials. Additionally, with respect to claim 7, the examiner’s position is that any structure formed in the prior art can be considered to be a “magnetic component” comprising a “magnetic body” containing the above particles.
Ishida does not specify the percentage of area occupied by the particles as set forth in claims 1 or 7 or a “magnetic core” as required by claims 1-6. Tonoyama is similarly directed to a magnetic material including magnetic particles of different sizes coated with an insulation coating, including large particles with a size of 10-60 µm and intermediate particles of a size of 2-10 µm (see Tonoyama para [0007-0012]), i.e. Tonoyama is in a similar field of endeavor. Tonoyama indicates that such a mixture of particles is suitable for making a “magnetic core” as presently claimed. Further, Tonoyama indicates that the large particles may comprise 39-86% of a cross section of the core and the intermediate particles may comprise 8-39% of that cross section (see Tonoyama para [0015] and [0019]), and therefore an embodiment wherein a total area ratio occupied by both particles is “75% or more” as presently claimed would have been well within the level of one of ordinary skill in the art.
With respect to claims 2 and 3, Ishida Table 1 discloses specific embodiments where the ratio of the coating thickness of the two size particles is within the range presently claimed, and where that of the smaller particles (first particles in Ishida, “second large particles” as claimed) is 10 nm. With respect to claims 4 and 5, Tonoyama para [0010] indicates it was known in the art, at the time of filing of the present invention, to further include small size powders of a size of 0.1-2.0 µm in the prior art material. Then, Ishida para [0036] discloses that the insulating film of the first and second particles therein may be made of different types of materials; such an arrangement, if combined with the small particles of Tonoyama, would inherently result in some of those small particles having a different coating composition than some of the larger particles. With respect to claim 6, Tonoyama discloses a magnetic component comprising a magnetic core.
Therefore, the combined disclosures of Ichida et al. and Tonoyama et al. would have rendered a magnetic core and/or magnetic component as presently claimed obvious to one of ordinary skill in the art.
Nonstatutory Double Patenting
7. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
8. Claims 1 and 3-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18/358433 or over claims 1-5 of copending Application No. 18/358513.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims and those of the ‘433 and ‘513 applications are all directed to magnetic cores containing magnetic particles including two particles with a diameter of 3 µm or more with different microstructures and with insulation coatings of different thicknesses. The present claims differ from those of the related applications because in the present claims the particles comprising an amorphous structure have a thicker coating than other particles whereas in the ‘433 and ‘513 applications the particles comprising an amorphous structure always have the coating of smaller thickness. However, i) the term “thicker” does not imply any large difference in thickness, i.e. the thicker coating may be only nominally larger than a thinner coating and ii) only two possibilities exist with respect to coatings of different thicknesses, i.e. one or the other will always be thicker. Given the small size of this genus, and with the two possibilities immediately apparent to one of skill in the art, no patentable distinction is seen between a material as presently claimed and that defined in the claims of the ‘433 or ‘513 applications. (Note that claim 2 which clearly requires a measurably thicker coating on the amorphous particles is not includes in this rejection).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Additional Prior Art
9. The remainder of the art cited on the attached PTO-892 and SB/08 forms is of interest. This art is held to be no more relevant to the claimed invention than the art as applied in the rejections supra.
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE WYSZOMIERSKI whose telephone number is (571) 272-1252. The examiner can normally be reached on Monday thru Friday from 8:30 am to 5:00 pm Eastern time.
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.
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/GEORGE WYSZOMIERSKI/ Primary Examiner, Art Unit 1733
September 23, 2025