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/Restriction
Claims 7-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/24/26.
Applicant’s election without traverse of claims 1-6 and 12-20 in the reply filed on 8/24/26 is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/3/25 has been considered except for NPL documents 83, 84, and 85, that are lined through.
NPL documents 83, 84, and 85 do not have English translations and do not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed above.
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 instant claims contain the transitional phrase “comprising”. Per MPEP 2111.03 ‘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'. This open-ended definition has been taken into consideration in the following rejections.
Claims 1, 2, 4-6, 13, 15, 17, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0101177 A1 to Nandwana et al. (hereinafter Nandwana).
Regarding claim 1, Nandwana discloses a ferrite particle having a spinel crystal structure represented by the formula:
MgxMn1-xFe2O4 where x=0.1 to 0.9 (para [0020]),
which inherently belongs to a space group Fd-3m. See evidentiary reference, US 10,766,787 B1 to Sunkara et al., col 8, ln 57-60.
The Nandwana formula overlaps instantly claimed formula (1):
(Fe3+u,Mn2+v,Mg2+w) (Mn3+x,Fe2+y,Fe3+z) 2O4 (1)
wherein
u + v +w =1
x + y + z =1
0.870 ≤ v < 1.000
0.001 ≤ w < 0.070
0.000 ≤ x ≤ 0.075.
In instantly claimed formula (1), when u=x=z=0, formula (1) is
(Mn2+v,Mg2+w)(Fe2+y)2O4
where v+w=1, y=1, 0.870 ≤ v < 1, and 0.001 ≤ w < 0.070. The formulas overlap. See MPEP 2144.05(I), which states that ‘In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists’.
Regarding claim 2, Nandwana discloses the ferrite particle according to claim 1, wherein Mgx is x=0.1 to 0.9 (para [0020]), which overlaps the instantly claimed “w” (Mg2+w) range of 0.003 ≤ w ≤ 0.060. See MPEP 2144.05(I), cited above.
Regarding claims 4 and 13, Nandwana discloses the ferrite particle according to claims 1 and 2, respectively. The reference is silent regarding porosity, particularly wherein the particle has an internal porosity is 4.0% or less. As discussed above, the ferrite particles overlap. See MPEP 2112.01(I), which states that ‘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…"When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."…Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product’. The ferrite particles overlap, comprising overlapping structures and compositions. Therefore, one of ordinary skill in the art would expect the Nandwana particles to have overlapping properties, including but not limited to internal porosity, absent evidence to the contrary.
Regarding claims 5, 15, and 17, Nandwana discloses the ferrite particle according to claims 1, 2, and 4, respectively. The reference further discloses examples of doped Mn-ferrites with saturation magnetization ranging from 86 Am²/kg (emu/g) to 95 Am²/kg (para [0039]). The examples of para [0039]) do not expressly recite Mg doped Mn-ferrites or that saturation magnetization obtained.by B-H measurement at a time of applying a magnetic field of 3K.1000/4π A/m is 70 Am²/kg or more and 90 Am²/kg or less. However, Nandwana does teach that the saturation magnetization is dependent upon particle size, composition (para [0039]) and the magnetic field applied (para [0014]). Therefore, it would be obvious to one of ordinary skill in the art to expect the Nandwana doped Mn-ferrites to have overlapping properties, including but not limited to saturation magnetization, when measured under the same conditions. See MPEP 2144.05(I), cited above.
Regarding claims 6, 18, and 20, Nandwana discloses the ferrite particle according to claims 1, 2, and 4, respectively. The reference is silent regarding density, particularly wherein the particle has an apparent density of 2.10 g/cm³ or more and 2.40 g/cm³ or less. As discussed above, the overlapping ferrite particles comprise overlapping structures and compositions. Therefore, per MPEP 2112.01(I) cited above, one of ordinary skill in the art would expect the Nandwana particles to have overlapping properties, including but not limited to apparent density, absent evidence to the contrary.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 and 12-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 4-6 of U.S. Patent No.12386281 B2 (hereinafter 281). Although the claims at issue are not identical, they are not patentably distinct from each other because both teach overlapping ferrite particles having a spinel structure and an overlapping formula comprising overlapping amounts of Mn and Mg (instant claims 1 and 2 and 281 claims 1, 5, and 6). Both also teach an overlapping amount of Sr in the particles (instant claims 3 and 12 and 281 claims 1 and 2 ). The 281 claims do not teach internal porosity. This suggests that the 281 ferrite particles do not contain internal porosity. No (0%) porosity falls within the instantly claimed range of 4.0% or less, as set forth in instant claims 4, 13, and 14. 281 claim 4 recites the ferrite particles having a saturation magnetization of 55 Am2/kg (emu/g) to 65 Am2/kg (emu/g) when a magnetic field of 1K.1000/4π A/m is applied. The claim does not expressly recite the instantly claimed range of 70 Am2/kg to 90 Am2/kg when a magnetic field of 3K.1000/4π A/m is applied, as set forth in instant claims 5 and 15-17. However, as discussed above, the ferrite particles overlap. Therefore, per MPEP 2112.01(I) cited above, one of ordinary skill in the art would expect the 281 ferrite particles to have an overlapping saturation magnetization when the same (1K.1000/4π A/m) magnetic field is applied, absent evidence to the contrary. The 281 claims are silent regarding apparent density as set forth in instant claims 6 and 18-20 . However, as discussed above, the ferrite particles overlap. Therefore, per MPEP 2112.01(I) cited above, one of ordinary skill in the art would expect the 281 ferrite particles to have overlapping apparent density, absent evidence to the contrary. See MPEP 2144.05(I) cited above.
Claims 1-6 and 12-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-5 of copending Application No. 18/564577 (hereinafter 577). Although the claims at issue are not identical, they are not patentably distinct from each other because both teach overlapping ferrite particles having a spinel structure and an overlapping formula comprising overlapping amounts of Mn and Mg (instant claims 1 and 2 and 577 claim 1). Both also teach an overlapping amount of Sr in the particles (instant claims 3 and 12 and 577 claim 3). The 577 claims do not teach internal porosity. This suggests that the 577 ferrite particles do not contain internal porosity. No (0%) porosity falls within the instantly claimed range of 4.0% or less, as set forth in instant claims 4, 13, and 14. Both teach the ferrite particles having an overlapping saturation magnetization (instant claims 5 and 15-17 and 577 claim 4). 577 claim 5 teaches an apparent density that falls completely within the claimed range set forth in instant claims 6 and 18-20). See MPEP 2144.05(I) cited above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNNE EDMONDSON whose telephone number is (571)272-2678. The examiner can normally be reached M-F 10-6:30.
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/L.E./ Examiner, Art Unit 1734
/Matthew E. Hoban/Primary Examiner, Art Unit 1734
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