Response to Amendment
This action is in response to applicants’ amendment of 2 June 2026. The cancelation of claims 2, 3, 5 and 11 have overcome the rejections over these claims. The amendments to claim 1 which limit the auxiliary component to one consisting of 0.06-0.08 wt% calcium carbonate, 0.02-0.04 wt% zirconia and 0.35-0.39 wt% cobalt oxide based on the total mass of the main component has overcome the 35 USC 112(a) rejection over claim 4, all of the 35 USC 102(a)(1) art rejections and the 35 USC 103 art rejections over U.S. patent application publication 2009/0242827, CN 102964117 (written as CN 1026411), CN 101090017, CN 102486957 and CN 102693803.The amendments to claims 6, 7 and 9 have overcome the 35 USC 112(b) rejections over claims 1 and 6-10. Applicant's arguments with respect to the remaining art rejection over CN 108821760 have been fully considered but they are not persuasive.
In view of several indefiniteness issues and rejections not raised in the previous action, this action is being made NON-FINAL.
Specification
The disclosure is objected to because of the following informalities:
The composition of the binder used in the disclosed granulating process is not taught in the specification.
Step b in paragraph [0025] and the examples refer to the mixture of pre-sintered material and the auxiliary component as “a sintered material” and then teaches to sinter this sintered material. The use of the term “a sintered material” to refer to an unsintered mixture is confusing. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 6-10 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.
The composition of the binder used in the claimed granulating processes is not taught in the claims. Thus the claims are indefinite as to what binders applicants intend to include in the claimed process and what binders are excluded.
Step II in claims 1 and 6 refer to the mixture of pre-sintered material and the auxiliary component as “a sintered material” and then teaches to sinter this sintered material. The use of the term “a sintered material” to refer to an unsintered mixture is confusing and makes the claims indefinite. Dependent claims 7-10 do not clarify this issue and therefore are also indefinite for this issue.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 1 is 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 of 0.04-0.08 wt% CaCO3, 0.015-0.04 wt% ZrO2 and 0.35-0.4 wt% Co2O3 where the percentages are based on the total weight of the main components, 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, MnO, CaCO3, ZrO2 and Co2O3 all 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 ferrite is produced by mixing iron oxide, ZnO and MnO, adding this mixture with water into sand mill and wet grinding the mixture, granulating the ground mixture by spraying and pelletizing, pre-sintering the mixture, adding CaCO3, ZrO2 and Co2O3 to the pre-sintered mixture, adding this mixture with water in a sand mill and wet grinding, granulating the ground mixture by spraying and pelletizing, compression molding the granulated mixture and then sintering. Given this process of making the taught ferrite, it is clear the taught ferrite is a sintered ceramic. While the process in the reference is not identical to that in claim 1 in that a binder is not used during the taught granulating process, the taught ferrite and that of claim 1, which is produced by the process given within claim 1, appear to be identical, absent any showing to the contrary. This is because the binders in the process set forth in claim 1 would not be present in the ferrite of claim 1 and claim 1 is a product-by-process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). There is no indication that ferrite of claim 1 includes materials that would also not be present in the taught ferrite due to any binder residue since it is notoriously well known and conventional in the ferrite/ceramic art to remove all of the binder and residue thereof during the pre-sintering and sintering steps so as to not to introduce impurities that could impair the magnetic properties of the ferrite. Since the composition of the binder used in the process set forth claim 1 is not disclosed, it is assumed to be any conventional one which is completely removed either during the granulating or the pre-sintering and/or sintering steps. The taught ferrite suggests the ferrite of claim 1, absent any showing to the contrary.
Response to Arguments
Applicants’ arguments are based on the process conditions set forth in claim 1. Since claim 1 is a product-by-process claim and there is no showing that the use of a binder during the granulation step produces a ferrite different from that taught, this argument is unconvincing.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., power loss) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In addition, there is no showing that the taught ferrite does not have the argued microstructure since the only difference between the taught process and that in claim 1 is the presence of a binder during the granulation step.
The argument that the overlapping ranges are insufficient to motivate one of ordinary skill in the art to select the claimed ranges is not convincing since 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 fact that a ferrite having a zinc amount outside the claimed range has an increase power loss does not mean that it is not prima facia obvious to select the values from that taught range that also fall within the claimed range. Applicant have not shown that the argued power loss values when the ferrite has a composition within the claimed range is unexpected and that the amounts, alone, are critical to obtain the argued property. It is noted applicants admit that the argued power loss depends on the preparation conditions and the resulting microstructure, which means that the argued amounts, alone, are not critical to obtain the argued property. For these reasons, the rejection is maintained.
Allowable Subject Matter
Claim 4 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 6-10 would be allowable if rewritten or amended 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.
Claims 6-10 are allowable for the resons given in the previous action.
There is no teaching or suggestion in the art of record of a sintered manganese zinc ferrite ceramic comprising a main component and an auxiliary component, wherein the main component comprises 52.75-53.15 mol% iron oxide, 9.1-10.7 mol% zinc oxide and a remainder of MnO and the auxiliary component consists of 0.06-0.08 wt% calcium carbonate, 0.02-0.04 wt% zirconia and 0.35-0.39 wt% cobalt oxide based on the total mass of the main component which has a loss that at least overlaps the loss range of claim 4, under the claimed test conditions.
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
6/10/26
Prosecution Insights