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 .
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. 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 abstract of the disclosure is objected to because it is significantly longer than 150 words in length. 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).
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-8 in the reply filed on 6/2/2026 is acknowledged.
Claims 9-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 6/2/2026.
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 1-8 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.
Claim 1 recites the limitation “should be included” in line 11. The “should be included” refers to the inclusion of the elements within Formula 1. It is unclear whether “should” is optional language or not, i.e., are two or more elements required for the first, second, and third element groups or can only one element be included to satisfy this limitation. Clarification is required. For the sake of compact prosecution, the Examiner is interpreting “should” to be required, i.e., two or more elements required for the first, second, and third element groups.
Regarding dependent claims 2-8, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
Claim 3 recites the limitations of V, Cr, and Mn, can be “substituted” for some of the (Fe, Co, and Ni) and also recites “10 at.% or less”, i.e., the lower limit can be zero at.%. It is unclear whether the substitution of V, Cr, and Mn are required or not as the lower limit can be zero%. Clarification is required.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshizawa et al. (US 4918555, hereinafter “Yoshizawa”).
Regarding claims 1, 2, and 3, Yoshizawa teaches an alloy layer in a magnetic head having good soft magnetic properties and the following composition in atomic% (Yoshizawa, Column 3, lines 51-65):
Element
Present Invention
Yoshizawa
Overlap
Fe
25-85
Balance
Balance
Co
0-30
0-0.5
Within
Ni
0-30
0-0.5
Within
(B, Si, P, C)m total of 5-30%
B
5-30
0-25
5-25
Si
5-30
0-30
5-30
P
5-30
0-20
5-20
C
5-30
0-20
5-20
(Cu, Ca, Ag)n total of 0-5%
Cu
0-5
0.1-10
0.1-5
Ca
0-5
0-15
0-5
Ag
0-5
0.1-10
0.1-5
Moreover, Yoshizawa teaches the alloy has the following general formula:
(Fe1-aMa)100-x-y-z-α-β-γAxSiyBzM’αM”βXγ
where M is Co and/or Ni, A is Cu and/or Ag, M’ is at least one element selected from Nb, W, Ta, Zr, Hf, Ti, and Mo, M” is at least one element selected from V, Cr, Mn, Al, Sc, Y, REE, Au, Zn, Sn, Re, Mg, Ca, Sr, Ba, Na, K and Rb, and X is at least one element selected from C, P, Ge, Ga, Sb, In, Be, As, and N (Yoshizawa, Column 3, lines 51-61).
Yoshizawa further teaches the alloy structure is substantially amorphous (Yoshizawa, Claim 2).
The amorphous alloy of Yoshizawa corresponds to the complex concentrated soft magnetic amorphous alloy represented by Formula 1 of claim 1. Moreover, the compositional ranges of Yoshizawa overlaps with the compositional ranges of claims 1 and 3. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fe. Cir. 1990).
The possible inclusion of the elements in the table above and as taught by Yoshizawa encompasses two or more elements of a first, second, and third element group of claim 1 and three or more elements from one or more of the three groups of the first, second, and third element groups of claim 2.
Regarding claims 4, 6, 7, and 8, given the composition of the magnetic alloy of Yoshizawa is substantially identical to the composition of the soft magnetic alloy as used in the present invention, as set forth above, it is clear that the magnetic alloy of Yoshizawa would inherently have an amorphous phase with multi-complex quenched-in nuclei (claim 4), a saturation magnetization of 1 T or more (claim 6), a saturation magnetization of 1.5 T or more when Fe is 50 at.% or more (claim 7), and a coercivity of 20 A/m or less (claim 8), as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 5 and the composition based equation in the instant claim, the instantly claimed equation fully depends on the composition of the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v.Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. In the instant case, as the prediction of the saturation magnetization of Yoshizawa is capable of falling within the boundaries of the instantly claimed composition formulas, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected any portion of the disclosed ranges of each element of Co, Ni, Metalloid, and Minors including those which fall within the boundaries of the instantly claimed composition based formulas because Yoshizawa discloses the same utility throughout the disclosed ranges.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE CARDA whose telephone number is (571)270-1240. The examiner can normally be reached Monday-Friday 8:30-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738
Prosecution Insights