Prosecution Insights
Last updated: April 19, 2026
Application No. 18/556,133

MAGNETOSTRICTIVE MEMBER AND METHOD FOR MANUFACTURING MAGNETOSTRICTIVE MEMBER

Non-Final OA §103
Filed
Oct 19, 2023
Examiner
CHAU, LISA N
Art Unit
1785
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Sumitomo Metal Mining Co., Ltd.
OA Round
2 (Non-Final)
25%
Grant Probability
At Risk
2-3
OA Rounds
4y 10m
To Grant
39%
With Interview

Examiner Intelligence

Grants only 25% of cases
25%
Career Allow Rate
124 granted / 500 resolved
-40.2% vs TC avg
Moderate +14% lift
Without
With
+14.4%
Interview Lift
resolved cases with interview
Typical timeline
4y 10m
Avg Prosecution
57 currently pending
Career history
557
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
53.9%
+13.9% vs TC avg
§102
13.9%
-26.1% vs TC avg
§112
24.2%
-15.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 500 resolved cases

Office Action

§103
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 . Terminal Disclaimer The terminal disclaimer filed on 10/10/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US App. No. 17777097 has been reviewed and is accepted. The terminal disclaimer has been recorded. Response to Amendment Examiner acknowledges amended Specification and Claims 1-4, cancelled Claim 6, and withdrawn Claims 9-13 in the response filed on 10/10/2025. Response to Arguments Applicant’s arguments filed 10/10/2025, with respect to the rejection(s) of Claim 5 under 35 U.S.C. 103 have been fully considered and are persuasive (i.e. perfecting foreign priority). Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of US Pub. No. 20080011390 (“Clark et al.”), US Pub. No. 20200105997 (“Nakamura et al.”), and CN 104947194 A. 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. Claims 1-5, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2021002609 (“Furuya et al.”), in view of US Pub. No. 20080011390 (“Clark et al.”), and in view of US Pub. No. 20200105997 (“Nakamura et al.”). With regards to Claims 1 and 5, Furuya et al. teaches a magnetostrictive member comprising an iron-based alloy crystal having magnetostrictive characteristics, such as FeGa alloy, being a plate body having front and back faces. Furuya et al. teaches an example wherein one of the front and back faces of its magnetostrictive member has a thickness of 0.1 mm and a surface roughness Ra of 6.85 μm. Therefore, Furuya et al. satisfies the claimed Expression (1): log Ra ≥ 0.48t – 0.62 (i.e. 0.84 ≥ -0.57) (Figs. 1-3, [0021]-[0023], and [0037]). Furuya et al. does not teach a parallel magnetostriction amount/magnetostriction constant ratio of the magnetostrictive member is 80% or more, magnetostriction constant of 250 ppm or more, and a parallel magnetostriction amount of 250 ppm or more. Clark et al. teaches magnetostrictive iron-gallium alloys are called Galfenol. Galfenol is an interesting material because of both its high magnetostriction and its desirable mechanical properties. The magnetostriction can be as high as 400 ppm in single crystals and 250 ppm in textured polycrystals [0007]. Thus, it would have been obvious to one of ordinary skill in the art that Furuya et al.’s FeGa alloy have the conventional magnetostriction constant of 250-400 ppm, as disclosed by Clark et al., in order to have a desirable mechanical properties. Nakamura et al. teaches an FeGa-base magnetostriction element having a maximum parallel magnetostriction amount of 250 ppm or more (Abstract, [0039], [0048], and [0050]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Furuya et al.’s magnetostrictive member have a parallel magnetostriction amount of 250 ppm or more in order to have a sufficiently high magnetostriction level in the parallel direction that will ultimately produce a high magnitude of mechanical strain [0007]. In light of the prior art teaches, the prior art of record teaches a parallel magnetostriction amount/ magnetostriction constant ratio of the magnetostriction member overlapping the claimed ratio of 80% or more. With regards to Claims 2-4, the limitations are given non-patentable weight since the conditions are not met. Please see MPEP 2111.04(II). Therefore, Furuya et al. teaching its thickness of its magnetostrictive member at 0.1 mm satisfies the instant claims [0037]. \With regards to Claim 8, Furuya et al. teaches the thickness of the magnetostrictive member is 30 μm or more and 1 mm or less [0023]. Examiner notes that 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. Claims 1-5, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2021002609 (“Furuya et al.”), in view of CN 104947194 (“CN ‘194”), and in view of US Pub. No. 20200105997 (“Nakamura et al.”). With regards to Claims 1 and 5, Furuya et al. teaches a magnetostrictive member comprising an iron-based alloy crystal having magnetostrictive characteristics, such as FeGa alloy, being a plate body having front and back faces. Furuya et al. teaches an example wherein one of the front and back faces of its magnetostrictive member has a thickness of 0.1 mm and a surface roughness Ra of 6.85 μm. Therefore, Furuya et al. satisfies the claimed Expression (1): log Ra ≥ 0.48t – 0.62 (i.e. 0.84 ≥ -0.57) (Figs. 1-3, [0021]-[0023], and [0037]). Furuya et al. does not teach a parallel magnetostriction amount/magnetostriction constant ratio of the magnetostrictive member is 80% or more, magnetostriction constant of 250 ppm or more, and a parallel magnetostriction amount of 250 ppm or more. CN ‘194 teaches a FeGa-base alloy having a magnetostriction constant of 300-1500 ppm (Abstract). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Furuya et al.’s FeGa alloy’s magnetostriction constant be 300-1500 ppm in order to have good usability and be able to be used in a variety of applications (Abstract). Nakamura et al. teaches an FeGa-base magnetostriction element having a maximum parallel magnetostriction amount of 250 ppm or more (Abstract, [0039], [0048], and [0050]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Furuya et al.’s magnetostrictive member have a parallel magnetostriction amount of 250 ppm or more in order to have a sufficiently high magnetostriction level in the parallel direction that will ultimately produce a high magnitude of mechanical strain [0007]. In light of the prior art teachings, the prior art of record teaches a parallel magnetostriction amount/magnetostriction constant ratio of the magnetostriction member overlapping the claimed ratio of 80% or more. With regards to Claims 2-4, the limitations are given non-patentable weight since the conditions are not met. Please see MPEP 2111.04(II). Therefore, Furuya et al. teaching its thickness of its magnetostrictive member at 0.1 mm satisfies the instant claims [0037]. \With regards to Claim 8, Furuya et al. teaches the thickness of the magnetostrictive member is 30 μm or more and 1 mm or less [0023]. Examiner notes that 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. Conclusion The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure. US Pub. No. 20090039714 discloses FeGa alloys have several unique properties. In particular, the magnetostriction of the alloys, as measured along the [100] axis at room temperature, can be at least 250 ppm [0029]. Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA CHAU whose telephone number is (571)270-5496. The examiner can normally be reached Monday-Friday 11 AM-730 PM. 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, Mark Ruthkosky can be reached at (571) 272-1291. 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. /LC/ Lisa Chau Art Unit 1785 /Holly Rickman/Primary Examiner, Art Unit 1785
Read full office action

Prosecution Timeline

Oct 19, 2023
Application Filed
Jun 11, 2025
Non-Final Rejection — §103
Oct 10, 2025
Response Filed
Feb 16, 2026
Non-Final Rejection — §103 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12555601
MAGNETIC RECORDING DISK WITH HIGH INTERNAL STRESS TO REDUCE DISK DEFLECTIONS FROM SHOCK FORCES AND METHODS FOR USE WITH THE DISK
2y 5m to grant Granted Feb 17, 2026
Patent 12475923
MAGNETIC RECORDING MEDIUM, MAGNETIC STORAGE APPARATUS, AND METHOD FOR MANUFACTURING MAGNETIC RECORDING MEDIUM
2y 5m to grant Granted Nov 18, 2025
Patent 12421400
MAGNETIC FLOOR SURFACE
2y 5m to grant Granted Sep 23, 2025
Patent 12394436
MAGNETIC RECORDING MEDIUM
2y 5m to grant Granted Aug 19, 2025
Patent 12313843
LIGHT SCANNING APPARATUS
2y 5m to grant Granted May 27, 2025
Study what changed to get past this examiner. Based on 5 most recent grants.

AI Strategy Recommendation

Get an AI-powered prosecution strategy using examiner precedents, rejection analysis, and claim mapping.
Powered by AI — typically takes 5-10 seconds

Prosecution Projections

2-3
Expected OA Rounds
25%
Grant Probability
39%
With Interview (+14.4%)
4y 10m
Median Time to Grant
Moderate
PTA Risk
Based on 500 resolved cases by this examiner. Grant probability derived from career allow rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month