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 .
Claim Objections - 35 USC § 112
Claim 4 is objected to over the use of the abbreviation “hcp-Co”. While “hcp-Co” has been specifically defined at paragraph [0023] of the specification, applicant is encouraged to amend at least the first occurrence of this term in each string of independent/dependent claims to reflect the full meaning of the term and to more accurately describe applicants’ claimed invention.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
The broadest reasonable interpretation of claim(s) 1-3 covers a metal powder with Co as a main component, and an average particle size of 1 nm to 100 nm. The x-ray diffraction chart of the powder contains two peaks (2Θ of 41.6 ± 0.3°, 2Θ of 47.4 ± 0.3°), and the ratio of the full width at maximum of the first peak to the full width at maximum of the second peak is 1 to 5. The ratio of the integrated intensity of the first peak to the integrated intensity of the second peak is 1 to 10, and the powder comprises one of Fe, Mg, and Cu. The specification does not provide direction on how to properly make or use the metal powder. The level of predictability is such that one of ordinary skill in the art would not be able to produce the powder as claimed in the instant application. The specification has not set forth which elements or metals, combinations of metals, the amounts needed of each, or the processing conditions required to obtain the metal powder that shows x-ray diffraction peaks at the claimed angles with the claimed ratio of full widths at half maximum. The level of direction provided in the specification does not allow for one of ordinary skill in the art to produce the powder with the claimed characteristics. Additional compositional details and processing steps would need to be known. At the time of filing, the state of the art was such that one of ordinary skill could not readily predict the effect of a change within the subject matter to which the claimed invention pertains. See MPEP 2164.03. For example, ranges for the wt% of Co are listed in the specification as “preferably 90 wt% or more” and “more preferably 93 wt% or more”. It is also noted that the “main component” represents an element occupying 80 wt% or more [0017]. It is not clear how changing the amount of Co effects the properties of the final product. The specification does not disclose the amounts of Co that will give x-ray diffraction peaks within the desired ranges. It does not disclose if there is a range of wt% of Co that would result in a powder with the claimed properties. The specification also describes the additional components of Fe, Mg, and Cu in this way. A preferred ratio of 10 to 2000 ppm and more preferably 10 to 550 ppm is disclosed for each of Fe, Mg, and Cu [0019]. Once again, it is not disclosed which concentrations of Fe, Mg, and Cu would result in the claimed invention, and what effects that changing these concentrations relative to each other, and relative to Co, would have on the product. It is also not disclosed which elements can be changed and in what amounts they can be changed to still result in the claimed invention. While some example powders are disclosed in the specification, the details of these powders such as the elements or metals, combinations of metals, the amounts needed of each, and the processing conditions are not described in any detail beyond that described in the claims. It is also not clear which of the powders, if any, would be the invention. Thus, no working examples are disclosed in the specification. Claims 5-7 are also rejected as they depend on claim 1 and do not solve the above issue.
Claim 4 is similar to claim 1 in that it covers a metal powder with Co as its main component, and an average particle size of 1 nm to 100 nm. However, claim 4 specifically mentions a powder with a crystal phase of hcp-Co. Claim 4 also identifies two x-ray diffraction peaks, not by their diffraction angle (as in claim 1), but by the corresponding crystal plane. Like claim 1, claim 4 also discloses that the ratio of the full width at half maximum of the first peak to the width at half maximum of the second peak is 1 to 5. As with claim 1, the level of direction provided in the specification does not allow for one of ordinary skill in the art to produce the powder with the claimed characteristics. At the time of filing, the state of the art was such that one of ordinary skill would not be able to reverse engineer an alloy’s composition and crystal structure from only two X-ray diffraction peaks. It is not clear how to use the diffraction peaks to produce the claimed invention. It is also not clear what range of diffraction angles would be considered related to the (100) and (101) planes. Thus, the disclosed preferred ranges of components and diffraction peaks do not bear a reasonable correlation to the full scope of the claim. Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the invention recited in claim 4. Claims 8-10 are also rejected as they depend on claim 4 and do 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.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US2014319406 (A1) of Suetsuna.
Claim 1 of the instant application requires a metal magnetic powder comprising Co as its main component. Claim 3 states that the powder further comprises at least one of Fe, Mg, and Cu. These are the only two claims that mention specific elements.
Suetsuna teaches a magnetic material, in the same field of endeavor as the instant application, containing particles from at least one of Fe, Co, and Ni and at least one or Mg, Al, Si, Ca, Zr, Ti, Hf, Zn, Mn, rare earth elements, Ba, and Sr, Para. [0040]. This reads on the compositional limitations in claims 1 and 3 as it contains Co (Claim 1) and Mg (Claim 3). Suetsuna discloses an average particle diameter for rod shaped particles of 10 nm to 100 nm, Para. [0053]. The instant application claims an average particle size of 1 nm to 100 nm in claim 1. Thus, the particle size disclosed in Suetsuna reads on the particle size of the claimed invention. Claim 1 also mentions two x-ray diffraction peaks and that the ratio of the full width at half maximum of the first peak to the full width at half maximum of the second peak is 1 to 5. Claim 2 states that the ratio of the integrated intensity of the first diffraction peak to the integrated intensity of the second diffraction peak is 1 to 10. The diffraction peaks and their related ratios are properties inherent to the claimed powder. 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, see MPEP 2112.01. While Suetsuna does not specifically mention diffraction peaks, it discloses a powder substantially identical to the claimed powder. The powder taught in Suetsuna would be expected to possess all the properties of the claimed invention including its x-ray diffraction peaks. Therefore, Suetsuna anticipates claims 1-3.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over CN 101653830 of Wang in view of US2014319406 (A1) of Suetsuna.
Claim 4 requires a metal magnetic powder having a crystal phase of hcp-Co.
Wang teaches a cobalt powder with a closed packed hexagonal structure in the same field of endeavor as the claimed invention, Para. [0003]. Wang does not teach a powder with particle size in the range of 1 nm to 10 nm as claimed in the instant application.
Suetsuna teaches a magnetic material in the same endeavor as Wang with particles within the size range of 10 nm to 100 nm, Para. [0053]. 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. Thus, the particle size disclosed in Suetsuna reads on the particle size of the claimed invention. Suetsuna discloses that these sizes are appropriate for minimizing the sum of eddy current loss and the hysteresis loss in the desired MHz range, Para. [0053]. Therefore, it would be obvious to one of ordinary skill in the art to increase the particle size of the hexagonal closed packed cobalt powder disclosed in Wang to the particle size range taught in Suetsuna to produce a powder with minimum eddy current and hysteresis loss. Claim 4 also states that the ratio of the full width at half maximum of an x-ray diffraction peak related to the (100) plane to the full width at half maximum of an x-ray diffraction peak related to the (101) plane is 1 to 5. Similarly to claim 1, the diffraction peaks and their related ratios are properties inherent to the claimed powder. 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. Products of identical chemical composition cannot have mutually exclusive properties, see MPEP 2112.01. Wang discloses an x-ray diffraction chart, [Fig 3]. This chart contains 3 peaks with 2Θ values between 40° and 50°. As wang discloses a powder that is substantially identical to the powder claimed in the instant application , the powders must have the same properties, including x-ray diffraction peaks and their related ratios. Therefore, two of the peaks disclosed in Wang would be expected to correspond to the two peaks claimed in the instant application.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over US2014319406 (A1) of Suetsuna in view of US2021230720 (A1) Kajiura.
Claims 5-7 mention a composite magnetic body, an electronic component, and an electronic component comprising a composite magnetic body. All are comprised of the powder from claim 1. While Suetsuna teaches the powder from claim 1, Suetsuna is silent on magnetic bodies and electronic components. Kajiura teaches a soft magnetic alloy powder in the same field of endeavor as Suetsuna. Kajiura also discloses a “magnetic component” which is synonymous with “composite magnetic body”. Kajiura teaches that the disclosed alloy powder is appropriately used in a magnetic component, and an electronic device, Para. [0162]. Kajiura teaches that there has been a demand for low power consumption and high efficiency in electronic/information/communication devices, particularly, in electronic devices and that a reduction in energy loss and an improvement of power efficiency are also required, Para [0002]. Therefore, it would be obvious to one of ordinary skill in the art to use the powder disclosed in Suetsuna to make a composite magnetic body and electronic components taught in Kajiura.
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over CN 101653830 of Wang in view of US2014319406 (A1) of Suetsuna further in view of US2021230720 (A1) Kajiura.
Claims 8-10 mention a composite magnetic body, an electronic component, and an electronic component comprising a composite magnetic body. All are comprised of the powder from claim 4. While Wang in view of Suetsuna teaches the powder in claim 4, they do not teach magnetic bodies and electronic components. Kajiura teaches a soft magnetic alloy powder in the same field of endeavor as Suetsuna and Wang. Kajiura discloses that the alloy powder is appropriately used in a magnetic component, and an electronic device, Para. [0162]. Kajiura teaches that there has been a demand for low power consumption and high efficiency in electronic/information/communication devices, particularly, in electronic devices and that a reduction in energy loss and an improvement of power efficiency are also required, Para [0002]. Therefore, it would be obvious to one of ordinary skill in the art to use the powder disclosed in Wang in view of Suetsuna to make a composite magnetic body and electronic components taught in Kajiura.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB BENJAMIN STILES whose telephone number is (571)272-0598. The examiner can normally be reached Monday-Friday 7:30am - 5:00pm.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/JACOB BENJAMIN STILES/Examiner, Art Unit 1733