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 08/20/2025 is acknowledged.
Claims 14-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 08/20/2025.
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.
Claim 13 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 13 recites the limitation "the magnetic membrane" and "the magnetic structure" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
Claim(s) 1-7 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Soda et al. (US 2020/0029477)
Regarding claims 1 and 2, Soda et al. teaches an electromagnetic shielding material that includes a plurality of layers, each layer having a crystal lattice represented by: M.sub.n+1X.sub.n (wherein M is at least one metal of Group 3, 4, 5, 6, or 7; X is a carbon atom, a nitrogen atom, or a combination thereof; and n is 1, 2, or 3), each X is positioned within an octahedral array of M, and at least one of two opposing surfaces of said each layer has at least one modifier or terminal T selected from a hydroxy group, a fluorine atom, an oxygen atom, and a hydrogen atom, and dielectric and/or magnetic nanoparticles carried on a layer surface and/or between two adjacent layers of the plurality of layers (See Abstract, paragraphs [0036] and [0038]). MXene may be an aggregation (may be also referred to as particles, powder, or flakes) of individual MXene layers (single layers) and/or laminates of MXene layers (paragraph [0062]). Given that Soda et al. teaches each layer of MXene has a thickness 0.8 nm to 5 nm and the total number of layers may be 2 to 50 (paragraph [0063]), the thickness of the MXene particle would have a thickness that overlaps the claimed range of not less than 1 nm and not more than 10 nm. Alternatively, the average particle size of the dielectric/magnetic nanoparticles may be 0.8 nm to 50 nm (paragraph [0065]).
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 (Fed. Cir. 1990); see MPEP 2144.05.
Regarding claim 3, given that Soda et al. teaches magnetic material comprising materials and structure identical to that presently claimed, the magnetic material would necessarily have a maximum saturation magnetization as presently claimed.
Regarding claim 4, Soda et al. teaches wherein the magnetic nanoparticles contain nickel, iron and cobalt (paragraph [0098]).
Regarding claim 5, Soda et al. teaches wherein the MmXn is represented by Ti3C2 (paragraph [0060]).
Regarding claim 6, given that Soda et al. teaches magnetic material comprising materials and structure identical to that presently claimed, the magnetic material would necessarily have a conductivity as presently claimed.
Regarding claim 7, Soda et al. teaches the MXene may be a mixture of single-layer structure and multi-layer structure (paragraph [0062]). Therefore, the resulting proportion of single-layer particles and few-layer particles is 100% by volume.
Regarding claim 11, while Soda et al. is silent to the amount of magnetic metal ions, Soda et al. discloses the magnetic metal ions absorb electromagnetic waves internally reflected between the layers and thus enhancing electromagnetic shielding (paragraph [0069]) and also adjusting the blending ratio magnetic nanoparticles having a certain magnetic permeability affects the resonance frequency (paragraph [0071]). Therefore, it would have been obvious to one of ordinary skill in the art to choose an amount of magnetic metal ions, including that presently claimed, in order to impart the sufficient electromagnetic shielding and control the desired resonance frequency.
Regarding claim 12, given that Soda et al. teaches magnetic nanoparticles containing nickel, iron and cobalt, which are magnetic materials, the electromagnetic shielding material would necessarily be a magnetic structure.
Regarding claim 13, given that Soda et al. teaches magnetic nanoparticles containing nickel, iron and cobalt, which are magnetic materials, the electromagnetic shielding material would necessarily be a magnetic article.
Claim(s) 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Soda et al. (US 2020/0029477) in view of Soda (US 2023/0217635), herein referred to as “Soda ‘635”.
Soda et al. is relied upon as disclosed above.
Regarding claims 8, 9, and 10, Soda et al. fails to teach wherein a total mass/volume of the single-layer particles is larger than a total mass/volume of the few-layer particles.
However, Soda ‘635 teaches wherein a volume of the single-layer particles is larger than a volume of the few-layer particles. The number of the single-layer MXene particles is as many as possible (the content ratio of the single-layer MXene particles is high) as compared with the multilayer MXene particles (paragraph [0098]-[0099]).
It would have been obvious to one of ordinary skill in the art to choose a total mass/volume of the single-layer particles being larger than a total mass/volume of the few-layer particles of Soda et al. in order to impart high orientation/conductivity (Soda ‘635, paragraphs [0096]-[0097]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787