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
Applicant’s election without traverse of Group I (Claims 1-13) in the reply filed on 01/07/2026 is acknowledged. Claims 14-20 are withdrawn. Claims 1-13 are examined herein.
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 1-13 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 “one or more of the unit areas in which the size of a cross-sectional area of a binder accounts for 50% or more of the unit area are extracted as specific unit areas” in line 8-10. It’s unclear whether one or more of the unit areas are arbitrarily extracted or all of the unit areas that meet the criteria are extracted. Appropriate correction is required.
The term “low melting” in claims 5-7 and 9 is a relative term which renders the claim indefinite. The term “low melting” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
Claims 1-2, 4-6, and 9-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US’268 (US 2021/0031268).
Regarding claims 1-2 and 6, US’268 teaches a powder magnetic core in which a magnetic powder is bonded via a binder layer, wherein the volume percentage of the binder is preferably 1-10 volume% of the volume of the magnetic powder ([0088] to [0104]; Table 2 and Table 3), thus the powder magnetic core preferably contains 90-99 volume % of magnetic powder. US’268 does not explicitly disclose the recited area ratio of binder as recited in claims 1 and 2. However, the recited area ratio of binder is determined by the mixing ratio of binder to the magnetic powder and the method of making the magnetic core.
US’268 discloses a method of making the magnetic core comprising preparing an amorphous magnetic powder; coating the amorphous magnetic powder with a binder which can be a combination of a resin and a phosphate-based glass or a combination of a resin and borate-based glass to make a coated powder; preforming the coated powder to make a powder compact; hot forming the powder compact at a temperature of Tx1-50 to Tx2 to make a magnetic core ([0077] to [0104]), which meets the processing conditions disclosed in instant Specification (See Paragraph [0050] to [0073]). In view of the fact that US’268 teaches a magnetic core containing the recited amount of binder and a method of making the magnetic core under a hot forming temperature that meet the hot forming temperature disclosed in instant Specification, one of ordinary skill in the art would expect that the magnetic core disclosed by US’268 to meet the recited area ratio of binder in claims 1 and 2. “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 4, US’268 discloses that the magnetic powder is amorphous (i.e. metallic glass) ([0086]), which meets the limitation recited in claim 4.
Regarding claims 5, 9 and 10, US’268 discloses that the binder may comprises two or more selected from resin (such as epoxy resin), phosphate-based glass, and inorganic polymer ([0088]), which meets the limitation recited in claims 5, 9 and 10.
Regarding claims 11 and 12, US’268 does not explicitly disclose the recited property limitations. However, in view of the fact that US’268 teaches a magnetic core containing the recited amount of binder and a method of making the magnetic core at a hot forming temperature that meet the hot forming temperature disclosed in instant Specification, one of ordinary skill in the art would expect that the magnetic core disclosed by US’268 to meet the recited property limitations in claims 11 and 12. “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.
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.
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.
Claims 3 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over US’268 (US 2021/0031268).
Regarding claim 3, US’268 discloses that the magnetic powder contains iron and a particle size of the magnetic powder is 1-100 µm ([0062]; [0079]), which overlaps the recited particle size in claim 2. In the case where the claimed ranges "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 (Fed. Cir. 1990). See MPEP 2144.05 I. Thus, the recited particle size is a prima facie case of obviousness over US’268.
Regarding claim 13, US’268 does not discloses an inductor made of the magnetic core and a coil. However, using magnetic core and coil to make an inductor is well-known to one of ordinary skill in the art. Thus, claim 13 is obvious over US’268.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over US’268 (US 2021/0031268), and further in view of US’985 (US 2006/0165985).
Regarding claims 1-2 and 6, US’268 teaches a powder magnetic core in which a magnetic powder is bonded via a binder layer, wherein the volume percentage of the binder is preferably 1-10 volume% of the volume of the magnetic powder ([0088] to [0104]; Table 2 and Table 3), thus the powder magnetic core contains 90-99 volume % of magnetic powder. US’268 does not explicitly disclose the recited area ratio of binder as recited in claims 1 and 2. However, the recited area ratio of binder is determined by a mixing ratio of binder to the magnetic powder and a method of making the magnetic core.
US’268 discloses a method of making the magnetic core comprising preparing an amorphous magnetic powder; coating the amorphous magnetic powder with a binder which can be a combination of a resin and a phosphate-based glass or a combination of a resin and borate-based glass to make a coated powder; preforming the coated powder to make a powder compact; hot forming the powder compact at a temperature of Tx1-50 to Tx2 to make a magnetic core ([0077] to [0104]), which meets the processing conditions disclosed in instant Specification (See Paragraph [0050] to [0073]). The difference between the method of US’268 and the method of instant Specification is that US’268 does not disclose a layer of low melting glass is formed on the surface of the magnetic powder prior to mixing the magnetic powder with a resin.
US’985 teaches a magnetic core that is analogous to the magnetic core of US’268 (See [0023] to [0041]). US’985 discloses that when a layer of low melting glass is formed on the surface of the magnetic powder prior to mixing the magnetic powder with a resin, the insulating property of the magnetic core is improved ([0003] to [0019]). Thus, it would be obvious to one of ordinary skill in the art to coat the magnetic powder with a layer of low melting glass prior to mixing with a resin binder as taught by US’985 in the process of US’268 in order to make a magnetic core having improved insulating property as disclosed by US’985.
In view of the fact that US’268 in view of US’985 teaches a magnetic core containing the recited amount of binder and a method of making the magnetic core under a condition that meet the processing conditions disclosed in instant Specification, one of ordinary skill in the art would expect that the magnetic core disclosed by US’268 in view of US’985 to meet the recited area ratio of binder in claims 1 and 2. “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 3, US’268 discloses that the magnetic powder contains iron and a particle size of the magnetic powder is 1-100 µm ([0062]; [0079]), which overlaps the recited particle size in claim 2. In the case where the claimed ranges "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 (Fed. Cir. 1990). See MPEP 2144.05 I. Thus, the recited particle size is a prima facie case of obviousness over US’268.
Regarding claim 4, US’268 discloses that the magnetic powder is amorphous (i.e. metallic glass) ([0086]), which meets the limitation recited in claim 4.
Regarding claims 5, 9 and 10, US’268 discloses that the binder may comprises two or more selected from resin (such as epoxy resin), phosphate-based glass, and inorganic polymer ([0088]). US’985 discloses phosphate-based glass and epoxy resin are used as binder ([0026]; [0027], which meets the limitation recited in claims 5, 9 and 10.
Regarding claims 7 and 8, US’985 discloses that the composite powder contains 0.3-6 wt. % low melting glass and 1-10 wt. % of resin ([0033]), which overlaps the recited amount of low melting glass and resin in claims 7 and 8. (0.3 wt.% low melting glass converts to ~0.79 vol% based on that the density of iron is 7.874 g/cm3 and the density of low melting glass is 3 g/cm3; and 1 wt. % resin converts to ~6 vol% based on that the density of iron is 7.874 g/cm3 and the density of epoxy resin is 3g/cm3). In the case where the claimed ranges "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 (Fed. Cir. 1990). See MPEP 2144.05 I. Thus, the recited amount of low melting glass and resin is a prima facie case of obviousness over US’268 in view of US’985.
Regarding claims 11 and 12, US’268 in view of US’985 does not explicitly disclosed the recited property limitations. However, in view of the fact that US’268 in view of US’985 teaches a magnetic core containing the recited amount of binder and the magnetic core is made under a processing conditions that meet the processing conditions disclosed in instant Specification, one of ordinary skill in the art would expect that the magnetic core disclosed by US’268 in view of US’985 to meet the recited property limitations in claims 11 and 12. “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 13, US’268 in view of US’985 does not discloses an inductor made of the magnetic core and a coil. However, using magnetic core and coil to make an inductor is well-known to one of ordinary skill in the art. Thus, claim 13 is obvious over US’268 in view of US’985.
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 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6 and 9-23 of copending Application No. 17/648,502 (US 2022/0293336). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-3, 6 and 9-23 of copending Application No. 17/648,502 teach all the limitation recited in claims 1-13 except that claims 1-3, 6 and 9-23 of copending Application No. 17/648,502 do not disclose the recited the percentage of the area occupied by the binder as recited in claim 1 and the specific resistance as recited in claim 12. However, in view of the fact that claims 1-3, 6 and 9-23 of copending Application No. 17/648,502 teach a method of making a powder magnetic core that meets the method recited in instant claims 14-20, one of ordinary skill in the art would expect that the magnetic core disclosed by claims 1-3, 6 and 9-23 of copending Application No. 17/648,502 to meet the recited the percentage of the area occupied by the binder as recited in claim 1 and the specific resistance as recited in claim 12. “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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/360,729 (US 2024/0087781). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 11-19 of copending Application No. 18/360,729 teach all the limitation recited in claims 1-13 except that claims 11-19 of copending Application No. 18/360,729 do not disclose the recited the percentage of the area occupied by the binder as recited in claim 1 and the specific resistance as recited in claim 12. However, in view of the fact that claims 1-19 of copending Application No. 18/360,729 teach a method of making a powder magnetic core that meets the method recited in instant claims 14-20, one of ordinary skill in the art would expect that the magnetic core disclosed by claims 1-19 of copending Application No. 18/360,729 to meet the recited the percentage of the area occupied by the binder as recited in claim 1 and the specific resistance as recited in claim 12. “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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/XIAOWEI SU/Primary Examiner, Art Unit 1733