CTNF 18/546,960 CTNF 67880 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 35 U.S.C. 101 reads as follows: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. Claim 11 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki , 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner , 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966) and MPEP 2173.05(q). Claim Rejections - 35 USC § 112 07-30-01 AIA 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. 07-31-03 AIA Claim 4 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, because the specification, while being enabling for a manganese zinc ferrite comprising a main component and an auxiliary component of 0.06-0.08 wt% CaCO 3 , 0.02-0.04 wt% zirconium oxide and 0.35-0.39 wt% cobalt oxide, wherein the main component comprises 52.75-53.15 mol% iron oxide, 9.1-10.7 mol% zinc oxide and a remainder is manganese monoxide, wherein the total molar amount of the main component is 100 mol%, wherein the ferrite has a loss of less than 230 kW/m 3 at 25 o C, 100 kHz and a magnetic flux density of 200 mT , does not reasonably provide enablement for a manganese zinc ferrite comprising a main component and any auxiliary component, wherein the main component comprises 52.75-53.15 mol% iron oxide, 9.1-10.7 mol% zinc oxide and a remainder is manganese monoxide, wherein the total molar amount of the main component is 100 mol%, wherein the ferrite has a loss of less than 230 kW/m 3 at 25 o C, 100 kHz and a magnetic flux density of 200 mT . The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. The references used in the following art rejections all teach manganese zinc ferrites comprising a main component and an auxiliary component comprising cobalt oxide or comprising CaCO 3 , zirconium oxide and cobalt oxide, wherein the main component comprises iron oxide, zinc oxide and manganese monoxide in molar amounts that overlap or fall within the ranges of comprises 52.75-53.15 mol% iron oxide, 9.1-10.7 mol% zinc oxide and a remainder is manganese monoxide, wherein the total molar amount of the main component is 100 mol%. None of these taught ferrite compositions have a loss of less than 230 kW/m 3 at 25 o C, 100 kHz and a magnetic flux density of 200 mT. It is notorious well known in the art that the composition and amount of an auxiliary component in manganese zinc ferrites affect the loss of the ferrite, as discussed in paragraphs [0015] and [0016] and Comparative example 3 of the specification. It is also notoriously well known in the art that the effect of the auxiliary component in manganese zinc ferrites is unpredictable in that one cannot determine what the numerical value of the loss would be under certain conditions. Testing is required to determine if a manganese zinc ferrite having a main component whose composition at least overlaps that claimed and any auxiliary component would have a loss that at least overlaps the claimed value of less than 230 kW/m 3 . In view of these factors, which define the nature, state, and predictability of the art and which shows the level of one of ordinary skill in the art; and the fact that applicants only teaches an auxiliary component of 0.06-0.08 wt% CaCO 3 , 0.02-0.04 wt% zirconium oxide and 0.35-0.39 wt% cobalt oxide will produce a manganese zinc ferrite having a loss of less than 230 kW/m 3 at 25 o C, 100 kHz and a magnetic flux density of 200 mT; one of ordinary skill in the would have to produce an extremely larger number of ferrite compositions of a manganese zinc ferrite comprising a main component and any auxiliary component, wherein the main component comprises 52.75-53.15 mol% iron oxide, 9.1-10.7 mol% zinc oxide and a remainder is manganese monoxide, wherein the total molar amount of the main component is 100 mol% and then to test each produced ferrite to determine if they have a loss of less than 230 kW/m 3 at 25 o C, 100 kHz and a magnetic flux density of 200 mT. This level of experimentation is undue, as per the Wands factors { In re Wands , 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)} . 07-30-02 AIA 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. 07-34-01 Claims 1-11 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 uses the term “a main component” to refer to a ferrite comprising iron oxide, zinc oxide and manganese monoxide. Claim 6 uses the “a main component” to refer to a mixture of iron oxide, zinc oxide and manganese monoxide. Since applicant uses the same term for two different materials, claims 1 and 6 are indefinite. The dependent claims 2-4 and 7-10 and claim 5 which refers to claim 1 do not clarify this issue. It is suggested to amend claim 6 so that lines 1 and 2 of step (I) states “(I) mixing iron oxide, zinc oxide and manganese monoxide in a ratio to obtain the main component to form an oxide mixture; mixing the oxide mixture with water and then performing primary wet grinding,” to overcome this rejection. Claim 5 is indefinite as to the mixing ratio of iron oxide, ZnO and MnO. It is suggested to add the limitation “to obtain the main component” after “ratio” so that it is clear the mixing ratio is that necessary to produce the ferrite of claim 1. Claim 6 is indefinite as to what is meant by “specifically comprises”. Claims 7 and 9 teach the mass of the binder is 8-10 wt% and states it is optionally 7.5-10 wt%. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Furthermore, it is unclear how the weight percent of the binder can optionally be 7.5-10 wt% when it is present in an amount of 8-10 wt%. Claim 11 is indefinite since it provides for the use of the manganese zinc ferrite of claim 1, but since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. See MPEP 2173.05(q). Claim 11 is also indefinite as to what part of a power adapter comprises or uses the manganese zinc ferrite of claim 1. Finally, the claim is indefinite as to what is meant by a power adapter. Paragraph [0007] which is the only discussion of devices in which manages zinc ferrites is used refers to phone chargers and laptop power supply, which are two very different types of power adapters. 07-30-03-h AIA Claim Interpretation The optional limitations in claims 4 and 7-10 have been given no patentable weight since the claimed ferrite and claimed process do not require these limitations. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1 and 2 are rejected under 35 U.S.C. 102( a)(1 ) as being clearly anticipated by U.S. patent application publication 2009/0242827 . This reference teaches manganese zinc (MnZn) ferrites. Examples 8 and 9 of the reference teaches a MnZn ferrite of 52.8 mol% Fe 2 O 3 , 10.5 mol% ZnO and 36.7 mol% (which is the remainder) MnO. These examples teach the ferrite further comprises additives, which corresponds with the claimed auxiliary components, where the additive include cobalt oxide. These ferrites clearly anticipate the claimed ferrite . 07-15 AIA Claim s 1-3 are rejected under 35 U.S.C. 102( a)(1 ) as being clearly anticipated by CN 10296411 . This reference teaches a manganese zinc ferrite comprising a main component and an auxiliary component, wherein the main component comprises 52.7-52.8 mol% iron oxide, 9.2-9.8 mol% zinc oxide and a remainder is manganese monoxide, wherein the total molar amount of the main component is 100 mol%. Embodiment 2 teaches a manganese zinc ferrite comprising a main component and an auxiliary component comprising CaCO 3 , ZrO 2 and Co 2 O 3 , wherein the main component comprises 52.7-52.8 mol% iron oxide, 9.2-9.8 mol% zinc oxide and a remainder is manganese monoxide, wherein the total molar amount of the main component is 100 mol%. This ferrite compositions falls within and clearly anticipates claims 1-3 . 07-15 AIA Claim s 1-3 and 5 are rejected under 35 U.S.C. 102( a)(1 ) as being clearly anticipated by CN 108821760 . This reference teaches a manganese zinc ferrite comprising a main component and an auxiliary component of CaCO 3 , ZrO 2 and Co 2 O 3 , wherein the main component comprises 52.6-52.8 mol% iron oxide, 9.5-10.2 mol% zinc oxide and a remainder is manganese monoxide, wherein the total molar amount of the main component is 100 mol%. Example 3 teaches a manganese zinc ferrite comprising a main component and an auxiliary component of CaCO 3 , ZrO 2 and Co 2 O 3 , wherein the main component comprises 52.8 mol% iron oxide, 9.5 mol% zinc oxide and a remainder is manganese monoxide, wherein the total molar amount of the main component is 100 mol%. This ferrite compositions falls within and clearly anticipates claims 1-3. The examples teaches to produce the ferrite by mixing iron oxide, ZnO and MnO, wet grinding the mixture using a sand mill, pre-sintering the mixture, adding CaCO 3 , ZrO 2 and Co 2 O 3 to the pre-sintered mixture, wet grinding this mixture in a sand mill, compression molding the resulting milled mixture and then sintering. This is the process of claim 5. Thus the reference clearly anticipates the claimed process . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim s 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. patent application publication 2009/0242827 . This reference teaches MnZn ferrites. The taught ferrites comprising a main component and additives, additives, which corresponds with the claimed auxiliary components. The main component is a MnZn ferrite of 52-54 mol% Fe 2 O 3 , 6-11 mol% ZnO and 35-42 mol% (which is the remainder) MnO. These molar amounts overlap the claimed ranges. Product claims with numerical ranges which overlap prior art ranges were held to have been obvious under 35 USC 103. In re Wertheim 191 USPQ 90 (CCPA 1976); In re Malagari 182 USPQ 549 (CCPA 1974); In re Fields 134 USPQ 242 (CCPA 1962); In re Nehrenberg 126 USPQ 383 (CCPA 1960). Also see MPEP 2144.05. The taught additives comprise cobalt oxide, calcium carbonate and zirconium oxide. The reference suggests the claimed ferrite . 07-21-aia AIA Claim s 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over CN 10296411 . This reference teaches a manganese zinc ferrite comprising a main component and an auxiliary component, wherein the main component comprises 52.7-52.8 mol% iron oxide, 9.2-9.8 mol% zinc oxide and a remainder is manganese monoxide, wherein the total molar amount of the main component is 100 mol%. The amount of zinc oxide falls within the claimed range and the amounts of iron oxide and MnO overlap the claimed ranges. Product claims with numerical ranges which overlap prior art ranges were held to have been obvious under 35 USC 103. In re Wertheim 191 USPQ 90 (CCPA 1976); In re Malagari 182 USPQ 549 (CCPA 1974); In re Fields 134 USPQ 242 (CCPA 1962); In re Nehrenberg 126 USPQ 383 (CCPA 1960). Also see MPEP 2144.05. The taught auxiliary component comprises CaCO 3 , ZrO 2 and Co 2 O 3 , which are the auxiliary components of claims 2 and 3. The reference suggests the claimed ferrite . 07-21-aia AIA Claim s 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over CN 108821760 . This reference teaches a manganese zinc ferrite comprising a main component and an auxiliary component CaCO 3 , ZrO 2 and Co 2 O 3 , wherein the main component comprises 52.6-52.8 mol% iron oxide, 9.5-10.2 mol% zinc oxide and a remainder is manganese monoxide, wherein the total molar amount of the main component is 100 mol%. The amount of zinc oxide falls within the claimed range and the amounts of iron oxide and MnO overlap the claimed ranges. Product claims with numerical ranges which overlap prior art ranges were held to have been obvious under 35 USC 103. In re Wertheim 191 USPQ 90 (CCPA 1976); In re Malagari 182 USPQ 549 (CCPA 1974); In re Fields 134 USPQ 242 (CCPA 1962); In re Nehrenberg 126 USPQ 383 (CCPA 1960). Also see MPEP 2144.05. The taught auxiliary component is that of claims 2 and 3. The taught ferrite is produced by mixing iron oxide, ZnO and MnO, wet grinding the mixture using a sand mill, pre-sintering the mixture, adding CaCO 3 , ZrO 2 and Co 2 O 3 to the pre-sintered mixture, wet grinding this mixture in a sand mill, compression molding the resulting milled mixture and then sintering. This is the process of claim 5. The reference suggests the claimed ferrite and process . 07-21-aia AIA Claim s 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over CN 101090017 . This reference teaches MnZn ferrites. The taught ferrites comprising a main component and claimed auxiliary components. The main component is a MnZn ferrite of 51-52 mol% Fe 2 O 3 , 6-13 mol% ZnO and 39-43 mol% (which is the remainder) MnO. These molar amounts overlap the claimed ranges. Product claims with numerical ranges which overlap prior art ranges were held to have been obvious under 35 USC 103. In re Wertheim 191 USPQ 90 (CCPA 1976); In re Malagari 182 USPQ 549 (CCPA 1974); In re Fields 134 USPQ 242 (CCPA 1962); In re Nehrenberg 126 USPQ 383 (CCPA 1960). Also see MPEP 2144.05. The taught auxiliary component comprises CaCO 3 , ZrO 2 and Co 2 O 3 , which are the auxiliary components of claims 2 and 3. The taught ferrite is produced by mixing iron oxide, ZnO and MnO, wet grinding the mixture using a sand mill, pre-sintering the mixture, adding the auxiliary components to the pre-sintered mixture, wet grinding this mixture in a sand mill, molding the resulting milled mixture into a blank and then sintering. While the reference does not teach to use compression molding to mold the milled mixture into a blank, compression molding is a conventional ferrite article molding method, as shown by the other art of record. Compression molding is done to ensure the mixture is uniformly distributed in the mold, there are no voids in the molded blank and that the molded blank has a uniform density. In view of these desirable properties of the blank, one of ordinary skill in the art would have found it obvious to compression mold the taught milled mixture of the pre-sintered material and the auxiliary components. The resulting suggested process is that of claim 5. The reference suggests the claimed ferrite and process . 07-21-aia AIA Claim s 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over CN 102486957 . This reference teaches MnZn ferrites. The taught ferrites comprising a main component and claimed auxiliary components. The main component is a MnZn ferrite of 51-54 mol% Fe 2 O 3 , 9-11.5 mol% ZnO and 34.5-40 mol% (which is the remainder) MnO. These molar amounts overlap the claimed ranges. Product claims with numerical ranges which overlap prior art ranges were held to have been obvious under 35 USC 103. In re Wertheim 191 USPQ 90 (CCPA 1976); In re Malagari 182 USPQ 549 (CCPA 1974); In re Fields 134 USPQ 242 (CCPA 1962); In re Nehrenberg 126 USPQ 383 (CCPA 1960). Also see MPEP 2144.05. The taught auxiliary component comprises CaCO 3 , ZrO 2 and Co 2 O 3 , which are the auxiliary components of claims 2 and 3. The reference suggests the ferrite of claims 1-3 . 07-21-aia AIA Claim s 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over CN 102693803 . This reference teaches MnZn ferrites. The taught ferrites comprising a main component and claimed auxiliary components. The main component is a MnZn ferrite of 51-54 mol% Fe 2 O 3 , 9-13 mol% ZnO and 35-38 mol% (which is the remainder) MnO. These molar amounts overlap the claimed ranges. Product claims with numerical ranges which overlap prior art ranges were held to have been obvious under 35 USC 103. In re Wertheim 191 USPQ 90 (CCPA 1976); In re Malagari 182 USPQ 549 (CCPA 1974); In re Fields 134 USPQ 242 (CCPA 1962); In re Nehrenberg 126 USPQ 383 (CCPA 1960). Also see MPEP 2144.05. The taught auxiliary component comprises CaCO 3 , ZrO 2 and Co 2 O 3 , which are the auxiliary components of claims 2 and 3. The reference suggests the ferrite of claims 1-3. The taught ferrite is produced by mixing iron oxide, ZnO and MnO, wet grinding the mixture using a sand mill, pre-sintering the mixture, adding the auxiliary components to the pre-sintered mixture, wet grinding this mixture in a sand mill, molding the resulting milled mixture into a blank and then sintering. While the reference does not teach to use compression molding to mold the milled mixture into a blank, compression molding is a conventional ferrite article molding method, as shown by the other art of record. Compression molding is done to ensure the mixture is uniformly distributed in the mold, there are no voids in the molded blank and that the molded blank has a uniform density. In view of these desirable properties of the blank, one of ordinary skill in the art would have found it obvious to compression mold the taught milled mixture of the pre-sintered material and the auxiliary components. The resulting suggested process is that of claim 5. The reference suggests the claimed ferrite and process . Allowable Subject Matter 07-43-02 AIA Claim s 6-10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The claimed process where step (I) includes the addition of a binder to the wet ground mixture of iron oxide, zinc oxide and MnO before the wet mixture is granulated is not taught or suggested by the above references. All the above references simply teach granulating wet ground mixture of iron oxide, zinc oxide and MnO. There would be no motivation to add a binder to this mixture since a binder would add impurities to the taught pre-sintered material which would negatively affect the magnetic properties of the pre-sintered material. Any inquiry concerning this communication or earlier communications from the examiner should be directed to C. MELISSA KOSLOW whose telephone number is (571)272-1371. The examiner can normally be reached Mon-Tues:7:45-3:45 EST;Thurs-Fri:6:30-2:00EST; and Wed:7:45-2:00EST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /C Melissa Koslow/Primary Examiner, Art Unit 1734 cmk 3/4/26 Application/Control Number: 18/546,960 Page 2 Art Unit: 1734 Application/Control Number: 18/546,960 Page 3 Art Unit: 1734 Application/Control Number: 18/546,960 Page 4 Art Unit: 1734