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 .
DETAILED ACTION
Claim 1 has been amended; Claims 6-15 is added as new claims; Claims 1-15 remain for examination, wherein claim 1 is an independent claim.
Previous Rejections/Objections
Previous rejection of Claims 1-5 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 6/10/2026.
Previous rejection of Claims 1-5 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 6/10/2026.
Previous rejection of Claims 1-5 under 35 U.S.C. 103 as being unpatentable over Kenri Urata et al (JP 2012012699 A, thereafter JP’699) in view of Shinkai et al (US-PG-pub 2018/0204657 A1, thereafter PG’657) is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 6/10/2026.
However, in view of the Applicant’s amendments in the instant claims, IDS filed on 4/13/2026, and newly recorded reference(s), a new ground rejection is listed as following:
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 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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kenri Urata et al (JP 2012012699 A, thereafter JP’699) in view of Shinkai et al (US-PG-pub 2018/0204657 A1, thereafter PG’657) and Nikaido et al (WO 2018/179812 A1, corresponding to JP 2020095988 A, listed in IDS filed on 4/13/2026, with on-line translation, thereafter WO’812).
Regarding claim 1, JP’699 teaches a magnetic alloy in powder form suitable for use in transformers, inductors, motor cores, and the like (Abstract, claims, and par.[0053] and [0056] of JP’699), which reads on the claimed magnetic alloy powder as claimed in the instant claim. The comparison between the claimed alloy composition ranges and those disclosed by the Example #64 in table 5 of JP’699 is listed in the following table. All of the essential alloy composition ranges disclosed by the Example #64 in table 5 of JP’699 are within the claimed alloy composition ranges. JP’699 teaches the same magnetic alloy in powder form as claimed in the instant claim. JP’699 does not specify the powder distribution as claimed in the instant claim. PG’657 teaches a soft magnetic material in powder form, the core, and the inductor have high permittivity and excellent DC superimposition characteristic (Abstract, examples, and claims of PG’657). PG’657 teaches particle distribution with D90 (Figs.1-4 and par.[0046] and [0059]-[0066] of PG’657), which reads on the claimed D90 (Refer to the Figs.1-2 of the instant specification) and overlaps the claimed particle distributions as claimed in the instant claim. Overlapping in particles D90 distribution creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize particle D90 distribution from the disclosure of PG’657 for the alloy powder of JP’699 in order to obtain the high permittivity and excellent DC superimposition characteristic for the magnetic core. (Abstract, Examples, and claims of PG’657). JP’699 in view of PG’657 does not specify the claimed Wadell’s circularity of the particle as claimed in the instant claim. WO’812 teaches a soft magnetic powder with high permeability and exceptional DC superposition characteristics (Abstract and claims of WO’812). PG’812 specify that the average circularity of the particle group α is 1 to 0.8, and the average circularity of the particle group β is 0.8 to 0.4. (Par.[0019] of WO’812), which overlaps the claimed Wadell’s circularity of the particle as claimed in the instant claim. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize Wadell’s circularity of the particle from the disclosure of WO’812 for the alloy powder of JP’699 in view of PG’657 since WO’812 specify that: “The high degree of circularity of the coarse particles (particle group α) makes it easy for the fine particles (particle group β) to flow in the vicinity of the coarse particles during compacting, and the fine particles are easily filled in the gaps between the coarse particles” (par.[0019]-[[0020] of WO’812).
Element
From instant Claim 1 (at%)
From #64 of JP’699 (at%)
within range
(at %)
B
2-20
8
8
P
0-7
4
4
(B + P)
2-20
12
12
Si
0-10
2
2
C
>0-5
2
2
Cr
0-4
Not intended included
Not intended included
X1: at least one of Ti, Zr, Hf, Nb, Ta, Mo, W, Al, Ga, Ag, Zn, S, Ca, Mg, V, Sn, As, Sb, Bi, N, O, Au, Cu, Mn, rare earth elements, and platinum-group elements
0-3
Cu: 0.7
Cu: 0.7
Co
0.5-70
15
15
Ni
0-20
Not intended included
Not intended included
Fe
Balance
68.3
68.3
100 - (a+b+c+d+e)
79-90
84
84
Regarding claim 2, JP’699 teaches a Fe-based nanocrystalline alloy with powder form suitable for use in transformers, inductors, motor cores, and the like (par.[0053] and [0056] of JP’699).
Regarding claims 3, JP’699 indicates including resin with powder to form magnet (par.[0094] of JP’699), which reads on the claimed limitation as claimed in the instant claim.
Regarding claims 4-5, JP’699 teaches Fe-based nanocrystalline alloy suitable for use in transformers, inductors, motor cores, and the like (par.[0002] and [0056] of JP’699), which reads on the claimed limitation as claimed in the instant claims.
Regarding claims 6-7 and 9-13, The Example #64 in table 5 of JP’699 reads on the claimed limitation in the instant claims 6-7 and 9-13 (as shown in the following comparison table).
Element
From instant Claim 6 (at%)
From #64 of JP’699 (at%)
within range
(at %)
B
7.5-15
8
8
From instant Claim 7 (at%)
P
1-7
4
4
From instant Claim 8 (at%)
(B + P)
12.5-18
12
--
General formula
From instant Claim 9 (at%)
Si
0-2
2
2
From instant Claim 10 (at%)
C
0.1-2
2
2
From instant Claim 11 (at%)
Cr
0-2
Not intended included
Not intended included
From instant Claim 12 (at%)
Co
1-50
15
15
From instant Claim 13 (at%)
Ni
0-0.5
Not intended included
Not intended included
From instant Claim 14 (at%)
X1: at least one of Ti, Zr, Hf, Nb, Ta, Mo, W, Al, Ga, Ag, Zn, S, Ca, Mg, V, Sn, As, Sb, Bi, N, O, Au, Cu, Mn, rare earth elements, and platinum-group elements
0-0.1
Ti: 0-0.3;
Al: 0-0.3;
Mn: 0-1.0;
S: 0-0.3;
O: 0-0.3;
N: 0-0.3
Overlapping
Fe
Balance
68.3
68.3
From instant Claim 15 (at%)
D50
3-50 mm
3.2 mm (par.[0046] ofPG’657)
Within
Regarding claim 8, the (B + P) disclosed by The Example #64 in table 5 of JP’699 is outside the claimed range. However, the (B + P) is recognized as a general formula fully depended on the alloy composition ranges of B and P in the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition and dimension 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, in the absence of evidence to the contrary, the selection of the proportions of Si and Al from CN'285 in order to meet the claimed equation would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688. Actually, JP’699 specify adjusting B in range of 5-13 at% and P in range 0-10 at% (Abstract and claims of JP’699). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize amount of B and P as claimed since JP’699 teaches the same magnetic alloy in powder form suitable for use in transformers, inductors, motor cores, and the like as claimed throughout whole disclosing range.
Regarding claim 14, JP’699 specify that “the alloy composition contains Al, Ti, Mn, S, O and N as impurities each in the following amount: 0≤ Al ≤ 0.3 mass%, 0 ≤ Ti ≤0 .3 mass%, 0 ≤ Mn ≤ 1.0 mass%, 0 ≤ S ≤ 0.3 mass%, 0 ≤ O ≤ 0.3 mass% and 0 ≤ N ≤ 0.1 mass%” (Abstract of JP’699), which overlaps the claimed composition ranges as claimed in the instant claim. Overlapping in composition ranges creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize amount of Al, Ti, Mn, S, O, and N from the disclosure of JP’699 since JP’699 teaches the same magnetic alloy in powder form suitable for use in transformers, inductors, motor cores, and the like as claimed throughout whole disclosing range.
Regarding claim 15, PG’657 teaches particle distribution (Figs.1-4 and par.[0046] and [0059]-[0066] of PG’657) and provides example having D50 3.2 mm (par.[0046] of PG’657), which reads on the claimed D50.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-15 have been considered but they are moot in view of the new ground rejection above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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/JIE YANG/Primary Examiner, Art Unit 1734
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