SOFT MAGNETIC MATERIAL AND METHOD FOR PRODUCING SOFT MAGNETIC MATERIAL

§103 §112

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 . Response to Amendments/ Status of Claims An amendment, filed 08/11/2026, has been acknowledged. New claims 9 and 10 have been added. Claims 1-10 are currently pending, and therefore, under consideration for this office action. Claim Rejections - 35 USC § 112 (b) 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 9 is 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 9 recites the limitation " the form of a plate material" in line 2, renders the claim indefinite, because it is not clear, what does the meaning of the form of a plate material, whether this is a plate material or something different. Appropriate correction 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. 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 1-7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Itoh et al. (US7226515). Regarding claim 1 and 10, Itoh et al. (hereinafter “Itoh”) teaches a Fe-Ni based permalloy (meeting claimed ‘soft magnetic material’) as follows: Element Claimed Itoh (Col. 2 lines 7-12) Analysis Ni 47-49 30-85 Claimed range lies within Mn 0.4-0.7 Not more than 1.0 Claimed range lies within Si 0.1-0.3 Not more than 1.0 Claimed range lies within Al 0.01-0.04 Not more than 0.02 Claimed range overlaps C Unavoidable impurities Not more than 0.015 Meets unavoidable impurity P Not more than 0.01 Meets unavoidable impurity S Not more than 0.005 Meets unavoidable impurity O Not more than 0.006 Meets unavoidable impurity Fe balance remainder Claimed range lies within In the interest of making the record clear, a slight shading has been applied in the ‘Element’ column above to denote the required elements of the claimed invention. Additionally, the elements C, P, S, and O would be considered by persons of ordinary skill to fall within the claimed ‘unavoidable impurities’. With respect to claim 10, Itoh’s Al content overlaps with the range as recited in the instant claim. It has been held that a prima facie case of obviousness exists where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). With regard to the claim feature requiring “a region having a crystal orientation within 10° from a <100> orientation occupies 20% or more on a surface of the soft magnetic material”, it has been held that ‘when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F. 2d 67, 205 USPQ 594, (CCPA 1980). In the instant case, there is a substantial compositional similarity between Itoh’s disclosed Fe-Ni permalloys and the instantly claimed composition. It has been held that ‘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) and that ‘when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not’. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Thus, in view of the substantial compositional similarity between Itoh’s disclosed Fe-Ni permalloys and the instantly claimed composition, a prima facie case of obviousness exists and the burden shifts to Applicant to demonstrate that the products are not the same, do not possess the claimed microstructure, and/or amend the claim to sufficiently distinguish it from the prior art. Regarding claims 2-7, Itoh teaches the composition as applied to claim 1 above but is silent to the particular properties achieved by the composition when tested according to the claimed conditions (e.g., “when a magnetic field of 100 A/m is applied… in a temperature range of -10C or high and 90C or lower… at 25C”). It has been held that ‘when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F. 2d 67, 205 USPQ 594, (CCPA 1980). Additionally, it has been held that ‘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) and that ‘when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not’. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Thus, in view of the substantial compositional similarity between Itoh’s disclosed Fe-Ni permalloys and the instantly claimed composition, a prima facie case of obviousness exists and the burden shifts to Applicant to demonstrate that the products do not possess the claimed properties and/or amend the claim to sufficiently distinguish it from the prior art. Regarding claim 9, Itoh teaches the soft magnetic material is in the form of a plate material having a thickness of 0.2 mm (cold rolled sheet or magnetic heat-treated sheet having a thickness of about 0.2 mm) (Col. 5 lines 15-17). Although, Itoh’s thickness is out of range of the instant claim, since the instant specification is silent to unexpected results, it would have been obvious to one of ordinary skill in the art to change the dimension, i.e., thickness of the soft magnetic material, since such a modification would have involved a mere change in the size (or dimension) of a component. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Change in size and shape is not patently distinct over the prior art absent persuasive evidence that the particular configuration of the claimed invention is significant. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). MPEP 2144.04 IV(A). Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Itoh et al. (US7226515) as applied to claim 1 above, and further in view of “VDM Report No. 27 Ni-Fe-based soft magnetic materials” (Cited in IDS filed 08/15/2025). Regarding claim 8, Itoh teaches the composition as applied to claim 1 above and teaches that the permalloy may be subject to cold rolling (Col. 3 lines 15-16) but is silent to the percentage of 80% or more. VDM Report No. 27 Ni-Fe-based soft magnetic materials (hereinafter “VDM”) teaches at Page 19 (based upon the numbering at the top right corner of the reference) that cold rolling may be carried out in the range between “approx. 90% and 97% (Fig. 24)” where Fig 24 depicts primary recrystallization in alloys with medium nickel content). In KSR, the Supreme Court particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art” and reaffirmed principles based on its precedent that ‘the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results’ KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 415, 82 USPQ2d 1395 (2007). In the instant case, both references are analogous art that are drawn to Fe-Ni and/or Ni-Fe based soft magnetic materials and the VDM reference expressly identifies that it is known to cold roll such a composition at a rolling rate of “approx. 90% and 97%” which meets the claimed range of “80% or more”. Therefore, there is a prima facie basis to believe that the combination of the teachings of Itoh and VDM would be obvious before the effective filing date of the claimed invention and yield no more than predictable results. Response to Arguments Applicant’s remark dated 08/11/2026 regarding the 35U.S.C. 103 rejection of the claims in the previous office action, dated 05/12/2026 have been fully acknowledged, but does not seem persuasive. With respect to Applicant’s arguments about claim 1, “the instant claims are patentable over Itoh because the specific examples of “all of the working examples in Itoh contain 0.3% or less of Mn (see, e.g., Col. 2, lines 7-12 and the examples therein), i.e. Itoh's exemplified alloys have Mn; 0.3%, outside the claimed 0.4- 0.7% Mn range” are outside of the instantly claimed ranges. This is not found persuasive because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP 2123 [R-5]). Although Itoh does not explicitly list specific examples of Mn content falling within the instantly claimed ranges, the broader teachings of Itoh reasonably suggest Mn content not more than 1.0, that overlaps and including the instantly claimed ranges and as such Itoh presents a prima facie case of obviousness over the instantly claimed Mn content. With respect to Applicant’s arguments about claim 1, “both Mn content and rolling rate is required to get <100> orientation for example alloys compared to the comparative alloys”, does not seem persuasive, as Applicant failed to show the criticality argument specially as shown examples in the Table 1, data does not commensurate in scope with the claimed limitations, i.e., there is only a single compositional data point is presented, within only one content of 0.5% Mn and only a single data point outside the range is 0.2% Mn. There is no examples of when the Mn is higher than the claimed range nor how the cold rolling affects the crystal orientation when the Mn is higher/lower than the claimed range. Moreover, Applicant’s remark requires that the cold rolling needs to be higher than 80% but only data present 85% and 90% as the data points without including the importance of cold rolling rate of 80%. With respect to Applicant’s arguments about claim 8, “VDM does not address the role of Mn content in enabling high-rate cold rolling and does not disclose the specific combination of Mn content (0.4-0.7%) and high-rate rolling (2:80%) that produces the claimed <100> microstructure. Moreover, VD M's disclosed rolling range of approximately 90-97% does not, by itself, teach or suggest combining Itoh's low-Mn alloys with high rolling rates, for the reasons given above.”, does not seem persuasive, because the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case Itoh teaches soft magnetic material with overlapping composition and cold rolling but silent about the rolling rate, and VDM Report No. 27 teaches cold rolling in the range of approximately 90-97% for Fe­Ni alloys with medium nickel content, wherein the Ni is 48% which is within the claimed range and prior art Itoh’s Fe­Ni alloys range, which is sufficient teaching for being a secondary reference for obviousness. Therefore, rejections of the claims 1-8 have been maintained, and new claims 9 and 10 are also subjected to the 35U.S.C. 103 rejection over the same prior art (please check the section of the 35U.S.C. 103 rejection associated with this office action for further details). Conclusion THIS ACTION IS MADE FINAL. 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 extension fee 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 NAZMUN NAHAR SHAMS whose telephone number is (571)272-5421. The examiner can normally be reached M-F 11:00 AM-7:00PM (EST). Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /NAZMUN NAHAR SHAMS/Examiner, Art Unit 1738 /SALLY A MERKLING/SPE, Art Unit 1738