CTNF 18/568,922 CTNF 91540 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Election/Restrictions 18-18 REQUIREMENT FOR UNITY OF INVENTION As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art. The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e). When Claims Are Directed to Multiple Categories of Inventions: As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories: (1) A product and a process specially adapted for the manufacture of said product; or (2) A product and a process of use of said product; or (3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or (4) A process and an apparatus or means specifically designed for carrying out the said process; or (5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process. Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c). 18-19 AIA Restriction is required under 35 U.S.C. 121 and 372. This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1. In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted. Group I, claims 10-13 and 19-22, drawn to a soft magnetic alloy powder. Group II, claims 14-18 and 23-29, drawn to a production method for soft magnetic alloy powder. 18-07 AIA The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: 18-07-02 AIA Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a soft magnetic alloy powder , this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of US 2011/0267167 A1 of Ogawa ( US’167 ). US’167 teaches [0126] “With the base material using a soft magnetic alloy for an electronic component as proposed by the present invention, the above treatment is applied to alloy powder constituted by iron, silicon and other element that oxidizes more easily than iron, to achieve high magnetic permeability and high saturation magnetic flux density” and points out in Fig. 5 that the Cr decreases from the surface which reads on the recited limitation of “a weight ratio of Cr contained in the soft magnetic alloy powder gradually decreases from a surface of the alloy powder to a predetermined depth in a depth direction” thereby making the instant technical feature not a special technical feature . 08-23 AIA During a telephone conversation with MATTHEW KOZIARZ on 12 MAR 2026 a provisional election was made WITHOUT traverse to prosecute the invention of Group I , claim s 10-13 and 19-22, drawn to a soft magnetic alloy powder . Affirmation of this election must be made by applicant in replying to this Office action. Claim s 14-18 and 23-29 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention. 08-23-02 AIA Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i). 08-21-04 AIA The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined. In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01. Specification 07-29 AIA The disclosure is objected to because of the following informalities: Table 1 and Table 2 contain illegible/hard to read characters . Appropriate correction is required. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-12-aia AIA (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. 07-15 AIA Claim s 10-13 and 19-22 are rejected under 35 U.S.C. 102( a)(1) and (a)(2 ) as being anticipated by US 2011/0267167 A1 of Ogawa ( US’167 ) . Regarding claim 10, US 2011/0267167 A1 of Ogawa ( US’167 ) teaches [0126] “With the base material using a soft magnetic alloy for an electronic component as proposed by the present invention, the above treatment is applied to alloy powder constituted by iron, silicon and other element that oxidizes more easily than iron, to achieve high magnetic permeability and high saturation magnetic flux density” “[0153] In addition, it is desirable that the multiple grains constituting the base material using a soft magnetic alloy for an electronic component, as proposed by the present invention, should have a composition of “2 percent by weight ≦ Chromium ≦ 8 percent by weight,” “1.5 percent by weight ≦ Silicon ≦ 7 percent by weight” and “88 percent by weight ≦ Iron ≦ 96.5 percent by weight.”” and points out in Fig. 5 that the Cr decreases from the surface which reads on the recited limitation of “a weight ratio of Cr contained in the soft magnetic alloy powder gradually decreases from a surface of the alloy powder to a predetermined depth in a depth direction” thereby anticipating the recited limitation of claim 10. This would also read on the limitation of “a weight ratio of Cr oxide/metal Cr gradually decreases from the surface of the alloy powder in the depth direction” of instant claims 13 and 20-22 because the prior art teaches oxide and Cr decreasing as a function of depth and therefore Cr oxide / Cr would decrease would decrease as a function of depth from the surface to the inner thickness. Regarding claim 11, the prior art teaches “Example 1 [0187] For the material grains to obtain a base material using a soft magnetic alloy for an electronic component, alloy powder (PF-20F manufactured by Epson Atmix) was used which is a type of water-atomized powder whose average grain size (d50%) is 10μ and composition ratio was 5 percent by weight of chromium, 3 percent by weight of silicon and 92 percent by weight of iron.” “Example 2 [0203] Evaluation samples were created in the same manner as in Example 1, except that the composition ratio of material grains was changed to 3 percent by weight of chromium, 5 percent by weight of silicon and 92 percent by weight of iron.” “Example 3 [0205] Evaluation samples were created in the same manner as in Example 1, except that the average grain size (d50%) of material grains was changed to 6 μm. The obtained results are shown in Tables 1 and 2.” and points out in specific examples of alloys with having specific compositions wherein specific examples, Examples 1-4 and 7, that lie within the claimed compositional range of the instant claims thereby anticipating the alloy of the instant claims. A specific example in the prior art which is within a claimed range anticipates the range. “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.” Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)) See MPEP § 2131.03 I . Regarding the limitation of “the alloy further contains at least one of Mn, P, S, and O” of instant claims 12 and 19, one skilled in the art recognizes that P and S are inevitable impurities found in steel. Therefore, one skilled in the art would have expected P and S to be present in the steel of the prior art as these elements are present in steel as inevitable impurities. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 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, KEITH HENDRICKS can be reached at (571)272-1401. 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. /JOPHY S. KOSHY/Primary Examiner, Art Unit 1733 Application/Control Number: 18/568,922 Page 2 Art Unit: 1733 Application/Control Number: 18/568,922 Page 3 Art Unit: 1733 Application/Control Number: 18/568,922 Page 5 Art Unit: 1733 Application/Control Number: 18/568,922 Page 6 Art Unit: 1733 Application/Control Number: 18/568,922 Page 8 Art Unit: 1733 Application/Control Number: 18/568,922 Page 9 Art Unit: 1733