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 .
Status of Claims
Claims 10-14 are canceled. Claims 1-9 and 15-19 are pending where claims 1-3, 5 and 6 have been amended.
Status of Previous Rejections
The previous 35 USC § 102 rejections of the claims over US 2004/0140016 A1 to Sakamoto et al and over CN 101206943 to Zhang et al have been withdrawn in view of amendments to the claims.
The previous 35 USC §112 rejections of the claims as well as the 35 USC § 103 rejections of the claims over US 2004/0140016 A1 to Sakamoto et al and over CN 101206943 to Zhang et al have been maintained.
Claim Rejections - 35 USC § 112(a)
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.
Claims 1-9 and 15-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Instant claim 1 recites the limitation “Fe, Ni, Cr and Co: 78.00% or more and 86.00% or less wherein one or more of Ni, Cr, and Co are present in an amount of 0 to 10.0 atom%.” This limitation appears to be an attempt to incorporate the limitation of cancelled claims 7 and 10-14 which previously recited “wherein at least one or more elements among Ni, Cr, and Co replaces the Fe in 10.0 atom% or less in range.” It is clear that the cancelled limitations limited the sum of Ni, Cr and Co to 10.0 atom% or less.” The new limitation as written, appears to allow for amounts of one or more of Ni, Cr and Co to be present in an amount greater than 10.0 atom%, so long as “one or more of Ni, Cr and Co are present in an amount of 0 to 10.0 atom%,” e.g. a Ni content 78.0% with trace amounts of Cr, Co and Fe would appear to fall within the scope of the amended claim as written (as Cr and Co would be present in an amount of 0 to 10.0 atom%) despite not being contemplated in the original specification or claims as filed.
To overcome this rejection, Examiner suggests changing the limitation “wherein one or more of Ni, Cr, and Co are present in an amount of 0 to 10.0 atom%” to “wherein the sum of Ni, Cr and Co is 0 to 10.0 atom%.”
Instant claims 2-9 and 15-19 depend on instant claim 1 and fail to comply with the written description requirement for at least the same reasons.
Claim Rejections - 35 USC § 112(b)
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 1-9 and 15-19 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.
Instant claim 1 recites the limitation “An Fe-based amorphous alloy comprising, by atom%... balance: impurities of 0.1% or less.” In the remarks filed 6/10/2026, applicant argues that “balance: impurities of 0.1% or less” excludes any element not recited in the claims at a total amount of greater than 0.1 atome%. However, the transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP 2111.03 I. Thus, the limitation is indefinite as it is unclear whether intentionally added non-impurity elements are permitted by the instant claim in amounts greater than 0.1 atom%. For the purposes of search and examination, the claim has interpreted under the broadest reasonable interpretation as open-ended and does not exclude additional, unrecited non-impurity elements which have been deliberately added in amounts of greater than 0.1 atom%.
If applicant is intending to exclude additional, unrecited elements in amounts greater than 0.1 atom%, the transitional phrase “consisting of” should be used in place of “comprising.” See MPEP 2111.03 II.
Instant claims 2-9 and 15-19 depend on instant claim 1 and are indefinite for at least the same reasons.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7 and 9 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Instant claim 7 recite the limitation “wherein at least one or more elements among Ni,Cr, and Co replaces the Fe in 10.0 atom% or less in range.” This limitation appears to fail to further limit claim 1 (from which claim 7 depends) insofar as claim 1 already recites “Fe, Ni, Cr and Co: 78.00% or more and 86.00% or less wherein one or more of Ni, Cr, and Co are present in an amount of 0 to 10.0 atom%.”
Instant claim 9 depends on instant claim 7 and is rejected for at least the same reasons.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102/103
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.
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.
Claim(s) 1-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0140016 A1 to Sakamoto et al.
Regarding claims 1 and 7-9, Sakamoto discloses an Fe-based amorphous alloy thin strip (i.e. ribbon) overlapping the instantly claimed composition (Sakamoto, abstract, claims 37-42) as well as numerous Fe-based amorphous alloy thin strips (i.e. ribbons) lying close to the instantly claimed composition, such as Sakamoto alloy 12 which comprises the following composition (Sakamoto, abstract, example 2, Para [0152-0154], Table 2, No 12) which lies close to the instantly claimed composition as follows:
Element
Claimed at%
Sakamoto at%
Sakamoto No 12 at%
Overlaps/Lies within?
B
8.0-18.0
5-16
15.4
Yes/Yes
Si
2.0-9.0
0.02-<4
2.6
Yes/Yes
C
0.10-5.00
0.02-8
1.0
Yes/Yes
Al
0.005-1.50
0.01-0.2
silent
Yes/See below
P
0-1.00
0.2-12
0.3
Yes/Yes
Mn
0-0.30
≤impurity
≤impurity
Yes/Yes
Fe+Ni+Cr+Co
78.00-86.00
Fe: 78-86
Fe: 80.7
Yes/Yes
A least one of Ni, Cr, Co
0-10.0
≤impurity
Ni + Cr + Co: ≤impurity
Yes/Yes
Wherein Sakamoto No 12 has an iron loss at a magnetic flux density 1.3T and frequency 50 Hz of the amorphous alloy is 0.082 W/kg, within the claimed range of 0.095 W/kg or less.
Sakamoto is silent as to the Al content of Sakamoto No 12. However, Sakamoto discloses that the Al content should preferable be within a range of 0.01-0.2 mass% (within the claimed range of 0.005-1.50 at%) as a deoxidizing agent for reducing raw material costs (Sakamoto, para [0141-0143]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the range of Sakamoto No 12 to be within 0.01-0.2 mass%, the motivation for doing so being to use Al as a deoxidizing agent for reducing raw material costs (Sakamoto, para [0141-0143]).
Additionally, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Sakamoto including the instantly claimed because Sakamoto discloses the same utility throughout the disclosed ranges.
Regarding the limitation “a saturation magnetic flux density of the amorphous alloy is 1.60 T or more,” when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. 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 (see MPEP 2112.01 [R-3].) In the instant case, the alloy of Sakamoto would be expected to have the same or similar properties as the instantly claimed alloy because the alloy of Sakamoto has the same or substantially the same composition and structure.
Regarding claims 2-6 and 10-19, the alloy of Sakamoto overlaps the instantly claimed ranges (Sakamoto, abstract, claims 37-42).
Claim(s) 1-3, 7-11, 15 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 101206943 to Zhang et al (an English language machine translation has been relied upon for examination purposes).
Regarding claims 1 and 7-9, Zhang discloses Fe-based amorphous alloy thin strips (i.e. ribbons) lying close the instantly claimed composition, (Zhang, abstract, para [0008]) which lies close to the instantly claimed composition as follows:
Element
Claimed at%
Zhang at%
Lies within?
B
8.0-18.0
7-13
Yes
Si
2.0-9.0
4-7
Yes
C
0.10-<3.00
3-6
Close at 3 at%
Al
0.005-1.50
1-4
Yes
P
0-1.00
≤impurity
Yes
Mn
0-0.30
≤impurity
Yes
Fe
78.00-86.00
77-83
Yes
Ni+Cr+Co
0-10.0
≤impurity
Yes
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Zhang including the instantly claimed because Sakamoto discloses the same utility throughout the disclosed ranges.
Regarding the instantly claimed carbon content, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties (See MPEP 2144.05 I). See In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs/ft3 and 25 lbs/ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.) In the instant case, the carbon content of Zhang of 3-6 atom percent is so mathematically close to the instantly claimed range of less than 3.00 atom% C that the difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality.
Regarding the limitation “a saturation magnetic flux density of the amorphous alloy is 1.60 T or more and an iron loss at a magnetic flux density 1.3T and frequency 50 Hz of the amorphous alloy is 0.095 W/kg or less,” when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. 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 (see MPEP 2112.01 [R-3].) In the instant case, the alloy of Zhang would be expected to have the same or similar properties as the instantly claimed alloy because the alloy of Zhang has the same or substantially the same composition and structure.
Regarding claims 2, 3, 10, 11, 15 and 16, the alloy of Zhang overlaps or lies close to the instantly claimed ranges (Zhang, abstract, para [0008]).
Response to Arguments
Applicant's arguments filed 6/10/2026 have been fully considered but they are not persuasive.
Applicant argues that the in the alloys disclosed by Sakamoto, 1% or more of elements which are not contained in the alloy of the claimed invention are contained and/or the iron loss is more than 0.095 W/kg. This is not found persuasive for the following reasons. Firstly, as set forth above in the 35 USC 112 rejection, the instant claims recite the transitional phrase “comprising.” The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP 2111.03 I. Regardless, even if the claims are interpreted as closed language excluding additional unrecited elements, Sakamoto discloses alloy 12 (Sakamoto, abstract, example 2, Para [0152-0154], Table 2, No 12) wherein Sakamoto No 12 has an iron loss at a magnetic flux density 1.3T and frequency 50 Hz of the amorphous alloy is 0.082 W/kg, within the claimed range of 0.095 W/kg or less and Sakamoto No 12 does not disclose any elements not recited in the instant claims.
Applicant argues that the instant claims are patentable over Zhang because the specific examples of Zhang are outside of the instantly claimed ranges. This is not found persuasive because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP 2123 [R-5]). Although Zhang does not explicitly list specific examples of aloys falling within the instantly claimed ranges, the broader teachings of Zhang reasonably suggest alloys lying close to the instantly claimed ranges and as such Zhang presents a prima facie case of obviousness over the instantly claimed alloy.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. JP-2018167298-A and JP-2017078186-A both disclose Fe-based amorphous alloy thin strips relevant to the instant claims.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 BRIAN D WALCK whose telephone number is (571)270-5905. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM.
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/BRIAN D WALCK/ Primary Examiner, Art Unit 1738
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