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 .
Election/Restrictions and Status of Claims
Applicant’s election without traverse of Invention I, claims 1-4 in the reply filed on 7/2/26 is acknowledged.
Claim 5 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/2/26.
As such, claims 1-4 are examined in this office action below.
Drawings
Figure 5 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-4 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.
Regarding claims 1 and 3-4, the phrase "i.e." renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Claim 2 is also rejected as it depends from claim 1 and does not solve the above issue.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by US 2020/0294702 A (cited on IDS dated 7/23/26) of Ishii.
As to claim 1, it is not clear which range is applied to the coercive force, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring 398 A/m or less as this is the modern SI unit for magnetic field strength.
Ishii discloses a soft magnetic powder with an amorphous structure (Ishii, paragraph [0025]), meeting the limitation of an amorphous alloy soft magnetic powder. Ishii discloses where each particle of the soft magnetic powder has a flat shape (Ishii, paragraph [0024]), meeting the limitation of the powder comprising a particle having a flat shape. Ishii discloses the diameter of the particles of the soft magnetic powder is about 50 to 5000 µm and where the coercive force of the powder is 800 A/m or weaker (Ishii, paragraphs [0024] and [0026]). Ishii discloses a specific example where the soft magnetic powder has an average particle diameter of 500 µm and a measured coercive force of 20 A/m (Ishii, paragraph [0036]), meeting the claim limitation wherein the amorphous alloy soft magnetic powder has a volume-based average particle diameter of more than 150 μm and 500 μm or less measured by a laser diffraction and scattering particle size distribution analyzer, and a coercive force of 398 A/m or less, i.e., 5.0 Oe or less.
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 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over 2020/0294702 A (cited on IDS dated 7/23/26) of Ishii.
As to claims 2-3, it is not clear which range is applied to the coercive force, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring the A/m range as this is the modern SI unit for magnetic field strength.
Ishii discloses a soft magnetic powder with an amorphous structure (Ishii, paragraph [0025]), meeting the limitation of an amorphous alloy soft magnetic powder. Ishii discloses where each particle of the soft magnetic powder has a flat shape (Ishii, paragraph [0024]), meeting the limitation of the powder comprising a particle having a flat shape. Ishii discloses the diameter of the particles of the soft magnetic powder is about 50 to 5000 µm and where the coercive force of the powder is 800 A/m or weaker (Ishii, paragraphs [0024] and [0026]), overlapping the claim 2 limitation where a proportion of particles having a particle diameter of more than 300 μm and 600 μm or less classified by sieving is 15 mass% or more and 40 mass% or less and the claim 3 limitation wherein a coercive force of particles having a particle diameter of more than 300 μm and 600 μm or less classified by sieving is 398 A/m or less, i.e., 5.0 Oe or less. “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”, see MPEP § 2144.05(I).
As to claim 4, it is not clear which range is applied to the coercive force, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring the A/m range as this is the modern SI unit for magnetic field strength.
Ishii discloses the diameter of the particles of the soft magnetic powder is about 50 to 5000 µm and where the coercive force of the powder is 800 A/m or weaker (Ishii, paragraphs [0024] and [0026]), overlapping where particles have a particle diameter of more than 150 μm and 212 μm or less and where these particles have a coercive force of 159 A/m or less. Ishii also discloses where the thickness of each particle of the soft magnetic powder is, for example, about 5 to 500 μm (Ishii, paragraph [0025]), meaning that the aspect ratio would be 0.1-1000, overlapping the claimed range of 4 or more and 100 or less. “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”, see MPEP § 2144.05(I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at (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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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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