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 & Status of Claims
Claims 1-3 and 6 are examined in the instant action of which claims 1-2 were amended in Applicant’s reply dated 06/17/2026.
Claims 4 and 7-12 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 10/29/2025 (and affirmed on 6/17/2026).
Claim Rejections - 35 USC § 112
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.
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.
Claims 1-3 and 6 are 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, does not reasonably provide enablement for a powder for an annealing separator, the powder comprising: a chemical composition containing magnesium oxide as a main component as recited in the instant claims. 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 and use the invention commensurate in scope with these claims.
MPEP § 2164.01(a) indicates that there are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
While the analysis and conclusion of a lack of enablement are based on the factors discussed in MPEP § 2164.01(a) and the evidence as a whole, it is not necessary to discuss each factor in the enablement rejection. Instead, the explanation of the rejection should focus on those factors, reasons, and evidence that lead the examiner to conclude e.g., that the specification fails to teach how to make and use the claimed invention without undue experimentation, or that the scope of any enablement provided to one skilled in the art is not commensurate with the scope of protection sought by the claims. This can be done by making specific findings of fact, supported by the evidence, and then drawing conclusions based on these findings of fact. For example, doubt may arise about enablement because information is missing about one or more essential parts or relationships between parts which one skilled in the art could not develop without undue experimentation. In such a case, the examiner should specifically identify what information is missing and why one skilled in the art could not supply the information without undue experimentation. See MPEP § 2164.06(a). References should be supplied if possible to support a prima facie case of lack of enablement, but are not always required. In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971). However, specific technical reasons are always required. See also MPEP § 2164.04.
In the instant case, the instant specification dated 08/18/2023 sets forth as follows.
[0019] The experiment results that led to the presently disclosed techniques will be described below.
First, samples were produced in the following manner:
As a starting material, High Purity & Ultrafine Single Crystal Magnesia Powder 2000A produced by Ube Material Industries, Ltd. was used. The purity of the magnesia was extremely high with 99.98 mass % MgO.
[0020] The starting material was hydrated in pure water to obtain a magnesium hydroxide slurry.
The magnesium hydroxide slurry was then compressed using a filter press to obtain a magnesium hydroxide cake. In the magnesium hydroxide slurry, boric acid slurry, boric acid (H3BO3), magnesium sulfate (MgSO4), diammonium phosphate ((NH4)2HPO4), etc. were added to adjust the trace component amounts in the magnesium oxide after baking.
The trace component amounts can be adjusted as appropriate not only by adjusting the addition amount to the slurry but also by adjusting the degree of water washing of the magnesium hydroxide cake, the baking temperature, and the like.
[0021] 400 g of the obtained magnesium hydroxide cake was put in an alumina crucible, and baked in air in an electric furnace (SPX1518T-17 produced by Marusho Denki Co., Ltd.) at a temperature of 700° C. for 60 minutes after the electric furnace recuperated. The resultant baked product was cooled in the furnace, and then ground. After the grinding, the particle size of the obtained powder was adjusted using a sieve to obtain magnesium oxide used in this experiment.
The properties of the obtained magnesium oxide are shown in Table 1. In the table, “particle size (mass %)” represents what mass % of the sieved powder passed through a sieve of the indicated mesh size. 100.0 mass % means that the whole powder passed through the sieve. The same applies to Tables 2, 4, and 5.
[0037] <Production Method for Powder for Annealing Separator>
The production method for the powder for an annealing separator according to the present disclosure is not limited, but magnesium oxide obtained by sintering raw material is typically used as a main component. Examples of the raw material include magnesium hydroxide, magnesium carbonate, and magnesium chloride.
[0038] The amount of each of the foregoing components B, SO3, and P2O3 can be adjusted by adding borate, sulfate, and phosphate to the raw material before baking such as magnesium oxide. Here, in the case where Na salt is used, sodium remains in magnesium oxide. Since sodium may promote self-sintering of particles during annealing as with B, SO3, and P2O3, the sodium (Na) content in the particles of more than 45 μm and 75 μm or less is preferably less than 0.010 mass %. The sodium (Na) content may be 0 mass %. The Na content can be measured by dissolving the particles to be measured in acid and performing ICP optical emission spectrometry.
[0039] The magnesium oxide used in the present disclosure may contain B, SO3, P2O3, and Na besides MgO, and may contain Cl, CaO, SiO2, Fe2O3, Al2O3, and inevitable impurities in addition to these components.
The purity of magnesium oxide (MgO content in magnesium oxide) is preferably 95 mass % or more, and more preferably 98 mass % or more.
Therefore, the content of the components other than MgO in the magnesium oxide is preferably 5 mass % or less, and more preferably 2 mass % or less.
The contents of boron (B), sulfur, and phosphorus contained in the particles of more than 45 μm and 75 μm or less also include B, SO3, and P2O3 in the magnesium oxide.
[0040] The powder for an annealing separator may contain, in addition to magnesium oxide, reaction aids such as titanium oxide and strontium hydroxide. Moreover, the powder for an annealing separator may be mixed with another powder for an annealing separator and applied to the coil as an annealing separator.
Therefore, the instant disclosure provides a magnesium oxide powder and how to manufacture it with the MgO powder having B: 0.020 mass % or more and 0.200 mass % or less, SO3: 0.030 mass % or more and 1.000 mass % or less, and P2O3: 0.050 mass % or more and 1.000 mass % or less, and does not provide any guidance for an powder for annealing separator having 50 mass% or more (main component) of MgO with the amount of unrecited constituents to be as high as 47.8 mass% (50-2.2: sum of the maximums of B, SO3 and P2O3) as is allowed/claimed by the instant claims.
Claims 1-3 and 6 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.
Regarding claims 1-3 and 6, instant claim 1 recites as follows.
“A powder for an annealing separator, the powder comprising:
a chemical composition containing magnesium oxide as a main component and containing B: 0.020 mass % or more and 0.200 mass % or less, SO3: 0.030 mass % or more and 1.000 mass % or less, and P2O3: 0.050 mass % or more and 1.000 mass % or less”
It is unclear whether the limitation of “B: 0.020 mass % or more and 0.200 mass % or less, SO3: 0.030 mass % or more and 1.000 mass % or less, and P2O3: 0.050 mass % or more and 1.000 mass % or less” to be what is part of the MgO or whether it is directed to the amount of each of these compounds that is outside MgO.
Claims 2-3 and 6 are dependents of claim 1, do not resolve the issue above and thereby also indefinite.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/169853 A1 via its US English equivalent US 2020/0115250 A1 of Kitagaki (US’250).
Regarding claims 1-3 and 6, WO 2017/169853 A1 via its US English equivalent US 2020/0115250 A1 of Kitagaki (US’250) teaches “magnesium oxide for an annealing separator which is useful for obtaining grain-oriented electromagnetic steel sheets with excellent magnetic properties and insulating properties” “magnesium oxide powder” wherein “Preferably, the magnesium oxide for an annealing separator of the present invention contains 0.04 to 0.15 mass % boron and has a chlorine content of not more than 0.05 mass %.” “The magnesium oxide of the present invention may contain trace components such as calcium (Ca), phosphorus (P), boron (B), sulfur (S), fluorine (F) and chlorine (Cl). When the magnesium oxide of the present invention contains calcium (Ca), the content of calcium is preferably 0.2 to 2.0 mass % in terms of CaO. When the magnesium oxide of the present invention contains phosphorus (P), the content of phosphorus is preferably 0.03 to 0.15 mass % in terms of P2O3. When the magnesium oxide of the present invention contains boron (B), the content of boron is preferably 0.04 to 0.15 mass %. When the magnesium oxide of the present invention contains sulfur (S), the content of sulfur is preferably 0.01 to 1.5 mass % in terms of SO3. When the magnesium oxide of the present invention contains fluorine (F), the content of fluorine is preferably not more than 0.05 mass %. When the magnesium oxide of the present invention contains chlorine (Cl), the content of chlorine is preferably not more than 0.05 mass %. When the magnesium oxide of the present invention contains silicon (Si), the content of silicon is preferably 0.05 to 0.5 mass %. Here, “mass %” in the present specification means the same as “wt %”.” (emphasis added) {abstract, [0001]-[0057]. Therefore, the prior art reads on the powder for annealing separator as well as the composition as recited in claim 1. In the case where the claimed ranges "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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding the recited limitation of the particle size, its range and its composition of instant claim 1, it is noted that the prior art does not teach of these limitations. However, making various powder sizes of MgO is routine and well known in the art. Therefore, it 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 to take the MgO of the prior art and make powders with various particle sizes as making powders and various particle sizes of MgO is routine to one skilled in the art. In addition, the composition of the powder with the various particle sizes would be consistent the particle size or structure as the structure of the powder (the powder size) would have the composition. 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). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II.
Regarding the recited limitation of Na and its range of instant claim 2, the prior art does not require the presence of Na in its MgO and therefore would read on the instant recited limitations as no Na means that there is no Na in any particle of the MgO.
Regarding the recited limitation of the purity of MgO of instant claims 3 and 6, the composition of the MgO as recited above reads on the recited purity of as the prior art does not require the impurities to be higher than 5%.
Response to Arguments
Applicant's arguments filed 06/17/2026 have been fully considered but they are not persuasive.
Regarding the arguments directed at the 112(a) rejection specifically “the disclosure provides clear direction, predictable parameters, and distinct preparation examples (paragraphs [0019]-[0024], [0045]-[0049]). Because the selection, blending, and optimization of these conventional reaction aids and raw materials are well within the routine capabilities of a skilled artisan, no "undue experimentation" is required to practice the full scope of the invention”, the specification specifically points out that the “[0037] <Production Method for Powder for Annealing Separator> The production method for the powder for an annealing separator according to the present disclosure is not limited, but magnesium oxide obtained by sintering raw material is typically used as a main component. Examples of the raw material include magnesium hydroxide, magnesium carbonate, and magnesium chloride. [0038] The amount of each of the foregoing components B, SO3, and P2O3 can be adjusted by adding borate, sulfate, and phosphate to the raw material before baking such as magnesium oxide. Here, in the case where Na salt is used, sodium remains in magnesium oxide. Since sodium may promote self-sintering of particles during annealing as with B, SO3, and P2O3, the sodium (Na) content in the particles of more than 45 μm and 75 μm or less is preferably less than 0.010 mass %. The sodium (Na) content may be 0 mass %. The Na content can be measured by dissolving the particles to be measured in acid and performing ICP optical emission spectrometry. [0039] The magnesium oxide used in the present disclosure may contain B, SO3, P2O3, and Na besides MgO, and may contain Cl, CaO, SiO2, Fe2O3, Al2O3, and inevitable impurities in addition to these components. The purity of magnesium oxide (MgO content in magnesium oxide) is preferably 95 mass % or more, and more preferably 98 mass % or more. Therefore, the content of the components other than MgO in the magnesium oxide is preferably 5 mass % or less, and more preferably 2 mass % or less. The contents of boron (B), sulfur, and phosphorus contained in the particles of more than 45 μm and 75 μm or less also include B, SO3, and P2O3 in the magnesium oxide. [0040] The powder for an annealing separator may contain, in addition to magnesium oxide, reaction aids such as titanium oxide and strontium hydroxide. Moreover, the powder for an annealing separator may be mixed with another powder for an annealing separator and applied to the coil as an annealing separator.” Moreover, instant specification points out via Tables 1, 2 and 3 that the powder is MgO: Table 1 shows six different MgO with specific distribution of particle sizes and Table 2 and 3 shows the annealing powder with various blends of the six different powders. There is no teaching from all of the instant examples that would indicate that only the main component of the annealing separator is MgO.
Regarding the arguments directed to the 112(b) rejection, it is noted that the Applicant argues that “containing B: 0.020 mass % or more and 0.200 mass % or less, SO3: 0.030 mass % or more and 1.000 mass % or less, and P2O3: 0.050 mass % or more and 1.000 mass % or less” “merely require these elements to be present within the overall chemical composition of the final powder, regardless of whether they are situated inside or outside the main component magnesium oxide”. However, instant claim is not clear in reciting it as it does not recite a “final powder”. Moreover, the specification indicates that these components are directed to the MgO as the instant specification teaches [0037]-[0039] “The amount of each of the foregoing components B, SO3, and P2O3 can be adjusted by adding borate, sulfate, and phosphate to the raw material before baking such as magnesium oxide. Here, in the case where Na salt is used, sodium remains in magnesium oxide.” “The magnesium oxide used in the present disclosure may contain B, SO3, P2O3, and Na besides MgO, and may contain Cl, CaO, SiO2, Fe2O3, Al2O3, and inevitable impurities in addition to these components.” There is no indication that these would be outside of the MgO as argued by the Applicant.
Regarding the arguments directed at 103 rejection, , making various powder sizes of MgO is routine and well known in the art. Therefore, it 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 to take the MgO of the prior art and make powders with various particle sizes as making powders and various particle sizes of MgO is routine to one skilled in the art. In addition, the composition of the powder with the various particle sizes would be consistent the particle size or structure as the structure of the powder (the powder size) would have the composition. 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). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II.
Conclusion
THIS ACTION IS MADE FINAL. 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 JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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