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 .
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, 9 and 10-14 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 claims 7 and 10-14 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 allows for Fe content outside of the range of claim 1, from which claims 7 and 10-14 depend) and thus fails to include all of the limitations of the claim upon which it depends.
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
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 7-11, 15 and 16 is/are rejected under 35 U.S.C. 102(a)(1 and 2) as being anticipated by US 2004/0140016 A1 to Sakamoto et al.
Regarding claims 1 and 7-9, Sakamoto discloses numerous Fe-based amorphous alloy thin strips (i.e. ribbons) lying within the instantly claimed composition, such as Sakamoto alloy 25 which comprises the following composition (Sakamoto, abstract, example 34, Para [0280-0281], Table 40, No 25) which lies within the instantly claimed composition as follows:
Element
Claimed at%
Sakamoto No 25 at%
Lies within?
B
8.0-18.0
14.0
Yes
Si
2.0-9.0
2.7
Yes
C
0.10-5.00
1.0
Yes
Al
0.005-1.50
0.15
Yes
P
0-1.00
≤impurity
Yes
Mn
0-0.30
≤impurity
Yes
Fe
78.00-86.00
80.4
Yes
Ni+Cr+Co
0-10.0
≤impurity
Yes
Sakamoto anticipates instant claims 1 and 7-9 because Sakamoto discloses a specific example of an Fe-based amorphous alloy thin strip (i.e. ribbon) lying wholly within the instantly claimed ranges.
Regarding claims 2, 3, 10, 11, 15 and 16, Sakamoto alloy 25 lies wholly within the instantly claimed ranges (Sakamoto, abstract, example 34, Para [0280-0281], Table 40, No 25).
Claim(s) 1 and 7-9 is/are rejected under 35 U.S.C. 102(a)(1 and 2) as being anticipated by 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 numerous Fe-based amorphous alloy thin strips (i.e. ribbons) lying within the instantly claimed composition, such as Zhang Fe80B10C5Si4.5Al0.5 which comprises the following composition (Zhang, abstract, para [0005], Table 2, Fe80B10C5Si4.5Al0.5) which lies within the instantly claimed composition as follows:
Element
Claimed at%
Zhang at%
Lies within?
B
8.0-18.0
10
Yes
Si
2.0-9.0
4.5
Yes
C
0.10-5.00
5
Yes
Al
0.005-1.50
0.5
Yes
P
0-1.00
≤impurity
Yes
Mn
0-0.30
≤impurity
Yes
Fe
78.00-86.00
80
Yes
Ni+Cr+Co
0-10.0
≤impurity
Yes
Zhang anticipates instant claims 1 and 7-9 because Zhang discloses a specific example of an Fe-based amorphous alloy thin strip (i.e. ribbon) lying wholly within the instantly claimed ranges.
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, such as Sakamoto alloy 25 which comprises the following composition (Sakamoto, abstract, claims 37-42) which overlaps the instantly claimed composition as follows:
Element
Claimed at%
Sakamoto at%
Lies within?
B
8.0-18.0
5-16
Yes
Si
2.0-9.0
0.02-<4
Yes
C
0.10-5.00
0.02-8
Yes
Al
0.005-1.50
0.01-0.2
Yes
P
0-1.00
0.2-12
Yes
Mn
0-0.30
≤impurity
Yes
Fe
78.00-86.00
78-86
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 Sakamoto including the instantly claimed because Sakamoto discloses the same utility throughout the disclosed ranges.
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 numerous Fe-based amorphous alloy thin strips (i.e. ribbons) lying within the instantly claimed composition, such as Zhang Fe80B10C5Si4.5Al0.5 which comprises the following composition (Zhang, abstract, para [0008]) which lies within 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
0.10-5.00
3-6
Yes
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 claims 2, 3, 10, 11, 15 and 16, the alloy of Sakamoto overlaps the instantly claimed ranges (Sakamoto, abstract, claims 37-42).
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.
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.
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, Sally Merkling can be reached at 571-272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN D WALCK/Primary Examiner, Art Unit 1738