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 .
Status of Claims
Claims 1-19 are pending and are presented for this examination. Claims 1-3, 10-12 are amended. Claims 13-19 are newly added.
Status of Previous Rejection
103 over Yoshizawa are withdrawn in view of amendment of claim 1.
112 2nd paragraph rejections are withdrawn in view of amendment of claim 1.
New grounds of art rejection are rendered in view of amendment of claim 1.
112 4th paragraph rejections of claim 3 are rendered in view of amendment of claim 1.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 12/04/2023 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretations
Instant claim 15 required C, P, S more than 0% is interpreted as impurity in view of instant application PGPUB [0056].
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Instant claim 3 required S 0.01-0.1% is outside range of S 0.03-0.5% recited in independent claim 1. Hence, instant claim 3 fails to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshizawa (JP2010229466A) in view of JP’997 (JP4217997B2).
As for claims 1-19, Yoshizawa discloses a nanocrystal soft magnetic alloy with average crystal grain size 20 nm or less (English Translation Page 5 paragraph 5 line 4) in an amorphous matrix phase. The alloy comprises (Example 3 and Figure 3):
FebalCu0.95Nb3.0Si15.5B6.8
Hence, Cu has 0.95at%, Nb has 3.0at%, Si 15.5at% and B has 6.8at % are expected which are all within claimed Si, B, Nb, Cu ranges. The same Example 3 (English translation Page 8 Example 3 paragraph 2) has coercive force Hc of 0.4A/m and saturation magnetic flux density of 1.23 T as required by instant claims 1-2 and initial permeability 168,000 as required by instant claims 7-9 and 17.
Yoshizawa further discloses C, P, S are well known element to be added to the soft magnetic alloy composition to improve workability. (English translation Page 2 paragraph 3) In addition, Inventive Example 55 (Table 2 of [0039]) discloses C is 0.5at%, hence within instants 13, 14 and 15 and 19 claimed C. Yoshizawa also explicitly discloses N, O and S are contained in a trace amount. (page 3 paragraph 3) That is, Yoshizawa have suggested C, P and S are all well known elements to be included.
Instant claims 4-6 and 10-12, 16 and 18 are inherent characteristic of claimed nanocrystalline soft magnetic material.
When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
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). "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). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
Yoshizawa does not explicitly disclose at% of S and P as required by instant claims 1, 2, 3, 15 and 19.
JP’997 discloses a Fe-Si-B based amorphous soft magnetic alloy and explicitly discloses S is added in the amount of 0.001 to 0.05% for refining the alloy particle size to prevent crack and chips [0010]. 0.001 to 0.05% of S overlaps amended S 0.03-0.5% of instant claim 1. JP’997 also explicitly discloses P is up to 0.1%. [0008] which overlaps amended P 0.01-0.1% as required by instant claim 2.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
The Fe-Si-B based amorphous soft magnetic alloy is a microcrystallized amorphous alloy(English translation paragraphs [0002][0025][0013]) which suggests a nanocrystalline alloy. Hence, JP’997 is analogous art.
Yoshizawa desired to add S and P to improve workability. (English translation Page 2 paragraph 3)
Hence, it would have been obvious to one skill in the art, at the time invention is made, to add S and P in the amount disclosed by JP’997, in the nanocrystalline soft magnetic material of Yoshizawa to arrive at claimed invention for the benefit of refining the alloy particle size to prevent crack and chips and improve workability.
Claim(s) 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshizawa (JP2010229466A).
As for claims 15-18, they are rejected for the same reason set forth in rejection of claims 15-18 above over Yoshizawa alone in view of claim interpretation above.
Yoshizawa explicitly discloses C, P and S are added to the alloy composition to improve workability is well known in the art. Hence, Yoshizawa suggests C, P and S are more than 0%. Yoshizawa also discloses S is contained in a trace amount which suggests greater than 0%.
Yoshizawa discloses Inventive Example 55 has C at 0.5%. (Table 2 of paragraph [0039]) Inventive Example 56 has P 0.3%. Hence, it meets instant claimed formula.
Claim(s) 19 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshizawa (JP2010229466A) in view of JP’997.
As for claim 19, Yoshizawa discloses presence of C, P and S.
JP’997 discloses S and P amount for the same reason set forth in rejection of claims 1-19 above over Yoshizawa in view of JP’997.
Response to Argument
Applicant’s argument filed on 08/06/2026 is considered but is not persuasive for the following reasons:
First, applicant argues amended claim 1 is distinguished from JP’997, which discloses an upper limit of 0.009% for the S content, it should be noted According to MPEP 2123 I A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including non-preferred embodiments. Merck & Co. v.Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005). Also according to MPEP 2123 II, mere disclosed examples do not constitute a teaching away from a broader disclosure because such mere disclosure does not criticize, discredit or otherwise discourage the claimed composition range. In the instant case, nothing in Hirai expressly criticize, discredit or discourage the overlapping range.
In the instant case, JP’997 broad S range is 0.001-0.05% [0010] and there is absolutely no teaching away from amended S range.
Second, applicant argues Yoshizawa contains no P. Argument is moot as claim 2 is now rejected under Yoshizawa in view of JP’997. Jp’997 explicitly discloses presence of P up to 0.1%, which meets amended claim 2 required P amount. In view of Yoshizawa’s explicitly disclosure for presence of P to adjust to improve magnetic properties. One skill in the art would be motivated to include P in the claimed product. That is, applicant’s argument is not commensurate in scope of rejection on the record.
Third, applicant argues Yoshizawa teaching noting of including C and P and S as ordered phase stabilizers as required by instant application, argument is incommensurate in scope of claim 1 and 15 which is directed to a product, not a process of including C, P and S as ordered phase stabilizers. In view of Yoshizawa’s explicitly disclosure for presence of P to adjust to improve magnetic properties and JP’997 discloses P up to 0.1%. One skill in the art would be motivated to include P in the product of Yoshizawa. That is, applicant’s argument is not commensurate in scope of rejection on the record.
Fourth, applicant argues Yoshizawa notes separately a different, unnamed patent which adding C, P and S to improved workability which is a different document for a different purpose, not Yoshizawas’s own worked disclosure. Argument is not persuasive because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including non-preferred embodiments. Adding C, P and S to improved workability is explicitly disclosed in Yoshizawa. In addition, Yoshizawa’s Inventive Example 55 discloses C at 0.5%. Yoshizawa also discloses S is contained in a trace amount. P can be included to improve magnetic properties. Hence, Yoshizawa suggests presence of C, P and S. That is, there is no need to establish motivation to add C above 0.4% as Yoshizawa’s Inventive Example 55 discloses C at 0.5%.
Fifth, applicant argues Yoshizawa provides no teaching about ordered phase stabilization mechanism which is applicant’s discovery. It should be noted the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences otherwise would be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985).
Sixth, applicant argues JP’997 is non-analogous art as JP’997 discloses an amorphous alloy which is not related to nanocrystalline alloy. Argument is not persuasive because JP’997 explicitly discloses the soft magnetic alloy powders defined in the claims should be understood to include not only amorphous but also microcrystalline structures. ([0013] line 6 and [0025] last two line) Hence, JP’997 suggests a nanocrystalline alloy because microcrystalline amorphous alloy is a nanocrystalline alloy.
Seventh, applicant argues claimed S upper limit exceed JP’997 teaching of 0.05%. It should be a prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I. In the instant case, JP’997 broad disclosure of S 0.001-0.05% overlaps amended S 0.03-0.5% at overlapping width of 0.03-0.05%. Second, claim 3 is rejected under 112 4th paragraph because 0.01-0.1% is outside 0.03-0.5%. Due to overlapping, a motivation to extent S beyond JP’997’s 0.05% upper limit is not necessary
Lastly, applicant argues specification working examples 14-15 show the combination of C, P and S has a synergistic result that neither cited art discloses or suggest for three element combination. It should be noted Example 14 and 15’s C, P, S does not commensurate in scope of claim 15 required C, P and S each greater than 0%. Instant claim 15 C, P and S greater than 0% is interpreted as impurity in view of instant application original disclosure.
Applicant is invited to submit criticality of C, P and/or S claimed amount.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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/JENNY R WU/Primary Examiner, Art Unit 1733
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