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 .
Response to Amendment
Examiner acknowledges amended Claim 1, canceled Claim 6, and withdrawn Claims 9-13 in the response filed on 5/7/2026.
Response to Arguments
Applicant's arguments filed 5/7/2026 have been fully considered but they are not persuasive.
Applicant argues that claim 1 requires that, in one of the front and back faces which has grinding marks, the thickness and the surface roughness Ra as measured in a direction perpendicular to the direction of the grinding marks satisfy Expression (1). Furuya et al. does not disclose that one of the front and back faces has grinding marks, much less the particular directional relationship now required by claim 1. Specifically, Furuya only teaches polished surface irregularities for improving interfacial interaction in a laminated piezoelectric/magnetostrictive structure. Furuya does not disclose directional grinding marks formed by grinding, does not identify grinding direction, and does not disclose measuring Ra in a direction perpendicular to such a grinding direction.
However, Applicant’s arguments are unpersuasive. Regarding the limitation “grinding marks”, 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, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113). In the instant case, the “grinding marks” are merely marks that forms the surface roughness Ra in one of the front and back faces of a magnetostrictive member, wherein surface roughness Ra is irregularities or how uneven a surface is. Thus, the only structure implied by this process step is the presence of marks which correspond to the surface roughness Ra. In that regard, Furuya teaches one of the front and back surfaces have a surface roughness Ra of 50 μm or less [0019], and therefore these surface irregularities/surface roughness Ra are considered the claimed “marks”.
While the Examiner deems that “grinding” is a process limitation that is not germane to the determination of patentability of the claimed product, it is noted that the term “grind” is defined as “to wear down, polish, or sharpen by friction”. Furuya teaches the surface of the magnetostrictive film was polished with # 2000 mesh [0037], which produces marks because of the formed concavities and convexities on the surface of the magnetostrictive member after said process, and the irregularities produces a surface roughness Ra of 50 μm or less ([0019] and [0037]). Therefore, Furuya teaches “grinding marks” and “a direction of the grinding marks”. Even after polishing with #2000 mesh (grit), the surface is not perfectly smooth as argued by Applicant because the magnetostrictive member has a surface irregularities/surface roughness Ra.
Furuya teaches that it is desirable to set the unevenness of the first surface to have a surface roughness Ra to be 50 μm or less [0019]. While the reference does not specifically disclose measuring the surface roughness Ra in a direction perpendicular to a direction of the grinding/polishing marks, it is noted that the magnetostrictive member of Furuya still satisfies the claimed Expression (1) of log Ra ≥ 0.48t – 0.62. Absence of evidence to the contrary, there is a sound basis that Furuya’s magnetostrictive member produces still satisfies Expression (1) when using the claimed measuring methodology.
As such, the Examiner deems that Furuya teaches the claimed limitation despite the distinction in the method of measuring surface roughness Ra when determining the characterization of the magnetostrictive member. Moreover, the difference in measuring methodology does not produce an invention that has an unobvious difference, the Examiner deems that reference renders obvious the claimed limitation as the characterization methodology are both used to characterize a known property, surface roughness Ra. Furuya provides clear guidance on what is a desirable surface roughness Ra, as such the slight distinction in methodology to measure said surface roughness would have been obvious to a person of ordinary skill in the art, to produce finished products of a magnetostrictive member with excellent magnetostrictive properties.
Further, the limitation(s) "a direction of the grinding marks" in the claims, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants' specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, the Examiner notes that a direction of the grinding marks will be planar/along the surface of the magnetostrictive member (i.e. horizontal). Determining a surface roughness is dependent on the profile of the irregularities, so evaluating the surface roughness will necessarily have to be perpendicular to the direction of grinding marks to evaluate the profile of the irregularities.
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]).
Regarding the limitation “grinding marks”, 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, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113). In the instant case, the “grinding marks” are merely marks that forms the surface roughness Ra in one of the front and back faces of a magnetostrictive member, wherein surface roughness Ra is irregularities or how uneven a surface is. Thus, the only structure implied by this process step is the presence of marks which correspond to the surface roughness Ra. In that regard, Furuya teaches one of the front and back surfaces have a surface roughness Ra of 50 μm or less [0019], and therefore these surface irregularities/surface roughness Ra are considered the claimed “marks”.
While the Examiner deems that “grinding” is a process limitation that is not germane to the determination of patentability of the claimed product, it is noted that the term “grind” is defined as “to wear down, polish, or sharpen by friction”. Furuya teaches the surface of the magnetostrictive film was polished with # 2000 mesh [0037], which produces marks because of the formed concavities and convexities on the surface of the magnetostrictive member after said process, and the irregularities produces a surface roughness Ra of 50 μm or less ([0019] and [0037]). Therefore, Furuya teaches “grinding marks” and “a direction of the grinding marks”. Even after polishing with #2000 mesh (grit), the surface is not perfectly smooth because the magnetostrictive member has a surface irregularities/surface roughness Ra.
As noted above, Furuya teaches that it is desirable to set the unevenness of the first surface to have a surface roughness Ra to be 50 μm or less [0019]. While the reference does not specifically disclose measuring the surface roughness Ra in a direction perpendicular to a direction of the grinding/polishing marks, it is noted that Furuya’s magnetostrictive member still satisfies the claimed Expression (1) of log Ra ≥ 0.48t – 0.62. Absence of evidence to the contrary, there is a sound basis that Furuya’s magnetostrictive member still satisfies Expression (1) when using the claimed measuring methodology.
As such, the Examiner deems that Furuya teaches the claimed limitation despite the distinction in the method of measuring surface roughness Ra when determining the characterization of the magnetostrictive member. Moreover, the difference in measuring methodology does not produce an invention that has an unobvious difference, the Examiner deems that reference renders obvious the claimed limitation as the characterization methodology are both used to characterize a known property, surface roughness Ra. Furuya provides clear guidance on what is a desirable surface roughness Ra, as such the slight distinction in methodology to measure said surface roughness would have been obvious to a person of ordinary skill in the art, to produce finished products of a magnetostrictive member with excellent magnetostrictive properties.
Further, the limitation(s) "a direction of the grinding marks" in the claims, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants' specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, the Examiner notes that a direction of the grinding marks will be planar/along the surface of the magnetostrictive member (i.e. horizontal). Determining a surface roughness is dependent on the profile of the irregularities, so evaluating the surface roughness will necessarily have to be perpendicular to the direction of grinding marks to evaluate the profile of the irregularities.
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]).
Regarding the limitation “grinding marks”, 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, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113). In the instant case, the “grinding marks” are merely marks that forms the surface roughness Ra in one of the front and back faces of a magnetostrictive member, wherein surface roughness Ra is irregularities or how uneven a surface is. Thus, the only structure implied by this process step is the presence of marks which correspond to the surface roughness Ra. In that regard, Furuya teaches one of the front and back surfaces have a surface roughness Ra of 50 μm or less [0019], and therefore these surface irregularities/surface roughness Ra are considered the claimed “marks”.
While the Examiner deems that “grinding” is a process limitation that is not germane to the determination of patentability of the claimed product, it is noted that the term “grind” is defined as “to wear down, polish, or sharpen by friction”. Furuya teaches the surface of the magnetostrictive film was polished with # 2000 mesh [0037], which produces marks because of the formed concavities and convexities on the surface of the magnetostrictive member after said process, and the irregularities produces a surface roughness Ra of 50 μm or less ([0019] and [0037]). Therefore, Furuya teaches “grinding marks” and “a direction of the grinding marks”. Even after polishing with #2000 mesh (grit), the surface is not perfectly smooth because the magnetostrictive member has a surface irregularities/surface roughness Ra.
As noted above, Furuya teaches that it is desirable to set the unevenness of the first surface to have a surface roughness Ra to be 50 μm or less [0019]. While the reference does not specifically disclose measuring the surface roughness Ra in a direction perpendicular to a direction of the grinding/polishing marks, it is noted that Furuya’s magnetostrictive member still satisfies the claimed Expression (1) of log Ra ≥ 0.48t – 0.62. Absence of evidence to the contrary, there is a sound basis that Furuya’s magnetostrictive member still satisfies Expression (1) when using the claimed measuring methodology.
As such, the Examiner deems that Furuya teaches the claimed limitation despite the distinction in the method of measuring surface roughness Ra when determining the characterization of the magnetostrictive member. Moreover, the difference in measuring methodology does not produce an invention that has an unobvious difference, the Examiner deems that reference renders obvious the claimed limitation as the characterization methodology are both used to characterize a known property, surface roughness Ra. Furuya provides clear guidance on what is a desirable surface roughness Ra, as such the slight distinction in methodology to measure said surface roughness would have been obvious to a person of ordinary skill in the art, to produce finished products of a magnetostrictive member with excellent magnetostrictive properties.
Further, the limitation(s) "a direction of the grinding marks" in the claims, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants' specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, the Examiner notes that a direction of the grinding marks will be planar/along the surface of the magnetostrictive member (i.e. horizontal). Determining a surface roughness is dependent on the profile of the irregularities, so evaluating the surface roughness will necessarily have to be perpendicular to the direction of grinding marks to evaluate the profile of the irregularities.
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].
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.
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/LC/
Lisa Chau
Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
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