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 .
Double Patenting
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.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 and 3-7 of copending Application No. 18358191, Claims 1-4 of copending Application No. 18339765, and Claims 1-5 of copending Application No. 18358513. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter sought is covered by the subject matter in copending Application Nos. ‘191, ‘765, and ‘513.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claim 3 is objected to because of the following informalities: To promote clarity, please amend "the average thickness T2" to “an average thickness T2". Appropriate correction is required.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20200312501 (“Ishida et al.”) in view of US Pub. No. 20200135371 (“Tonoyama et al.”).
With regards to Claim 1, Ishida et al. teaches a magnetic core containing metal magnetic particles, wherein the metal magnetic particles include first large particles (second particles of Ishida et al.) with a diameter larger than second large particles (first particles of Ishida et al.) and the second large particles (first particles) have a diameter of 1.3-5.0 μm (with specific examples of 3 μm or more – [0073]), and an insulation coating of the first large particles (second particles) is thicker than an insulating coating of the second large particles (first particles). Therefore, it naturally follows that a diameter of Ishida et al.’s first large particles is greater than 3 μm (Abstract, [0023], [0031], [0034], [0036], [0037], [0073], [0075], [0088], [0089], and Table 1).
Ishida et al. teaches the first and second large particles comprising core portions of magnetic material, wherein the magnetic material may be any of a crystalline material, an amorphous material, or a mixed material (including a nanocrystalline material) in which a crystalline phase (including a nanocrystalline phase) and an amorphous phase are mixed. The first and second large particles may be made of different types of materials [0033]. Thus, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Ishida et al.’s first large particles comprise of a nanocrystal structure and its second large particles comprise of an amorphous structure based upon desired properties and application [0033].
Ishida et al. does not explicitly teach a total area ratio occupied by the metal magnetic particles on a cross-section of the magnetic core is 75% to 90%.
However, Tonoyama et al. teaches a magnetic core containing metal magnetic particles, wherein a total area ratio occupied by the metal magnetic particles on a cross-section of the magnetic core overlaps the claimed range of 75% to 90% ([0093], [0095], and [0097]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Ishida et al.’s total area ratio occupied by the metal magnetic particles be 75% to 90% in order to achieve a magnetic core that is densely packed with magnetic material and to improve permeability of the magnetic core [0094].
With regards to Claims 2 and 3, Ishida et al. teaches an average thickness of the insulation coating of the first large particles (T1) is 40 nm to 100 nm, and an average thickness of the insulation coating of the second large particles (T2) is 10 nm or less (Abstract and [0027]). Example 1 in Tables 1 and 3 demonstrates a thickness ratio T1/T2 of 4.
With regards to Claim 4, Ishida et al. discloses a histogram of the particle size distribution of its magnetic core, wherein some of the particles are less than 3 μm, which corresponds to the claimed particle group (Table 2). Ishida et al. discloses all of its particles are coated with an insulating layer and recognizes that such coatings can be same or different in composition to each other [0036].
Thus, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that Ishida et al.’s metal magnetic particles include a particle group with a diameter of less than 3 μm, and includes two or more kinds of small particles having different coatings in composition to each other. Ishida et al. recognizes that having different insulating coatings in composition to each other creates a surface potential that is different from each other so that the particles can be uniformly dispersed without agglomeration [0037].
With regards to Claim 5, Ishida et al. teaches a magnetic component comprising the magnetic core (Fig. 1 and [0062]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA CHAU whose telephone number is (571)270-5496. The examiner can normally be reached Monday-Friday 11 AM-730 PM.
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/LC/
Lisa Chau
Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
Prosecution Insights