CTFR 18/572,658 CTFR 85234 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. Response to Amendment Examiner acknowledges amended Claim 1, canceled Claims 2-10 and 12-14, and new Claims 20-22 in the response filed on 2/18/2026. Response to Arguments 07-37 AIA Applicant's arguments filed 2/18/2026 have been fully considered but they are not persuasive. Applicant argues that the primary reference Shirata is directed to high-density recording by using a high coercive force (Hc) of at least as high as 957 kA/m (See, Shirata, for example, Abstract and claim 1), thus effectively teaching away from the claimed coercive force Hc range. However, Applicant’s arguments are unpersuasive. Coercive force Hc is the magnitude of applied magnetic field required to reduce the magnetization to zero after the material has been magnetically saturated, wherein coercive force Hc is measured in-plane (longitudinal, horizontal, etc.) or out-of-plane (vertical, perpendicular, etc.). The claimed coercive force Hc in a vertical direction is therefore directed to a coercive force Hc measured in the out-of-plane direction. Shirata discloses of coercive force Hc to be 319 kA/m<Hc<957 kA/m [0044], but does not specifically disclose it to be vertical coercive force Hc. While Shirata’s coercive force Hc range is outside Applicant’s claimed vertical coercive force Hc range, Shirata does not necessarily teach away from having a vertical coercive force Hc of 300 kA/m or less. Terakawa et al. teaches a coercive force measured in the direction of thickness of its magnetic recording medium is 220 kA/m or more and 300 kA/m or less [0026] (i.e. vertical coercive force). Therefore, the Examiner maintains that 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 Shirata’s magnetic recording medium have a coercive force of Hc in a vertical direction of the magnetic recording medium be at 220 to 300 kA/m in order to obtain a magnetic recording medium with good signal to noise ratio [0026]. Applicant argues that Applicant has recognized and demonstrated that a magnetic recording medium including the claimed magnetic layer features (e.g., average magnetic cluster size, H1/H2 ratio is 2.00 or less, H1 is 12.0 nm or less, H2 is 7.5 nm or less, and a coercive force Hc of 165 kA/m to 300 kA/m) contributes to enhanced magnetic recording medium characteristics. Applicant’s cited Examples 1-6 in Tables 1 and 2 and compared them to Comparative Examples 5 and 6. However, the Examiner respectfully disagrees. The evidence pointed to in the specification is not commensurate in scope with the claims. In particular, the tables, inter alia , disclose specific materials and ranges for the average magnetic cluster size, H1/H2 ratio, H1, H2, etc. Applicant’s Tables 1 and 2 do not provide enough examples and comparative examples that demonstrate that the entire ranges of an average magnetic cluster size of 1702 nm 2 or less , H1/H2 of 2.00 or less , H1 is 12.0 or less , H2 is 7.5 or less , and the coercivity of 165-300 kA/m are criticality/unexpected in producing enhanced magnetic recording medium characteristics. That is, the claims recite broad ranges that are not supported in achieving unexpected results. As shown in the Tables, the magnetic layer features narrower average magnetic cluster size, H2/H2 ratio, H1, H2, vertical coercive force, specific materials for the first and second particles to achieve the argued “enhanced magnetic recording medium characteristics.” Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim s 1, 11, 15-17, and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20180358044 (“Shirata et al.”), in view of US Pub. No. 20100246073 (“Katayama”), in view of US Pub. No. 20050079389 (“Ichikawa et al.”), and in view of US Pub. No. 20190362753 (“Terakawa et al.”) . With regards to Claims 1 and 20-22, Shirata et al. teaches a magnetic recording medium comprising a magnetic layer containing a magnetic powder, the magnetic recording medium having an average magnetic cluster size of greater than 500 nm 2 to less than 3000 nm 2 , preferably greater than 500 nm 2 to less than 2000 nm 2 , the average magnetic cluster size measured on a basis of a MFM image of a surface on a side of the magnetic layer, and the magnetic layer containing first particles include carbon particles having conductivity (e.g. carbon black) and second particles include non-magnetic inorganic particles having a Mohs hardness of 7 or more (e.g. alumina) ([0031]-[0037], [0076], [0173]-[0176], and [0189]-[0193]). Shirata et al. does not teach protrusions are formed by the first and second particles on the surface on the side of the magnetic layer, and a ratio (H 1 /H 2 ) of an average height H 1 of the protrusions formed by the first particles to an average height H 2 of the protrusions formed by the second particles is 2.00 or less. Shirata et al. does not teach the average height H 1 is 12.0 nm or less and the average height H 2 is 7.5 nm or less. Shirata et al. does not teach a coercive force Hc in a vertical direction of the magnetic recording medium is 165 kA/m or more and 300 kA/m or less. Katayama discloses a magnetic recording medium comprising a magnetic layer containing magnetic powders, wherein the magnetic layer contains first particles having conductivity (protrusions formed from carbon black) and second particles of which Mohs hardness is 7 or more (protrusions formed of a substance with a Mohs’ hardness exceeding 7), wherein protrusions are formed on a surface of the magnetic layer side in accordance with the first particles and the second particles, wherein a ratio (H 1 /H 2 ) of an average height (H 1 ) of protrusions formed in accordance with the first particles to an average height (H 2 ) of protrusions formed in accordance with the second particles is 2.3 or less (Abstract, [0023], [0045]-[0055], Table 2, and examples). It would have been obvious to one of ordinary skill in the art prior to the effective fling date of the claimed invention to have Shirata et al.’s magnetic layer have the claimed H 1 /H 2 ratio in order to maintain good friction characteristics during running [0054]. Ichikawa et al. teaches that forming magnetic media having protrusions between the heights of 3 to 7 nm on the surface of the magnetic layer is known to provide extremely flat magnetic media having excellent electromagnetic performance and running characteristics (Abstract; examples, and [0018]-[0019]). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to control the two distinct heights from the two types of protrusion forming particles to both be less than 5.5 nm as controlling the heights of the protrusions to fall within the range of 3 to 5.5 nm results in an extremely flat, magnetic media having excellent electromagnetic performance and running characteristics. Terakawa et al. teaches a coercive force measured in the direction of thickness of its magnetic recording medium is 220 kA/m or more and 300 kA/m or less [0026]. 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 Shirata et al.’s magnetic recording medium have a coercive force of Hc in a vertical direction of the magnetic recording medium be at 220 to 300 kA/m in order to obtain a magnetic recording medium with good signal to noise ratio [0026]. With regards to Claim 11, Shirata et al. teaches its magnetic recording medium having a thickness tT of 2.16-83.85 μm ([0069], [0227], [0263], and [0276]). It would have been obvious to one of ordinary skill in the art at the time of the invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari , 182 USPQ 549. With regards to Claims 15 and 16, Shirata et al. modified by Katayama teach a magnetic recording medium comprising a number of protrusions formed by the first and second particles on the surface on the side of the magnetic layer, as set forth above. Katayama teaches that the number and heights of the protrusions on the magnetic recording layer can be varied to effect the running characteristics and the electromagnetic performance of the disclosed media (see citations above, especially examples). Therefore, the Examiner deems that it would have been obvious to one having ordinary skill in the art to determine the relative number of protrusions emanating from the first (carbon particles) and second (protrusions formed of a substance with a Mohs’ hardness exceeding 7) particles, as well as the relative heights of these protrusions to meet Applicants’ claimed limitations by optimizing the results effective variable through routine experimentation. In re Boesch , 205 USPQ 215 (CCPA 1980); In re Geisler , 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller , 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955). With regards to Claim 17, Shirata et al. teaches the magnetic layer has a thickness of 30 nm to 100 nm [0227]. With regards to Claim 19, since Shirata et al. discloses a magnetic tape recording/reproduction device, they necessarily disclose the nominal magnetic recording cartridge [0061] . 07-21-aia AIA Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20180358044 (“Shirata et al.”) in view of US Pub. No. 20190362753 (“Terakawa et al.”) . Shirata et al. teaches a magnetic recording medium comprising a magnetic layer containing a magnetic powder, the magnetic recording medium having an average magnetic cluster size of greater than 500 nm 2 to less than 3000 nm 2 , the average magnetic cluster size measured on a basis of an MFM image of a surface on a side of the magnetic layer ([0031]-[0037] and [0076]). 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. Shirata et al. does not teach a coercive force Hc in a vertical direction of the magnetic recording medium is 165 kA/m or more and 300 kA/m or less. However, Terakawa et al. teaches a coercive force measured in the direction of thickness of its magnetic recording medium is 220 kA/m or more and 300 kA/m or less [0026]. 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 Shirata et al.’s magnetic recording medium have a coercive force of Hc in a vertical direction of the magnetic recording medium be at 220 to 300 kA/m in order to obtain a magnetic recording medium with good signal to noise ratio [0026]. Conclusion 07-39 AIA 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. Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA CHAU whose telephone number is (571)270-5496. The examiner can normally be reached Monday-Friday 11 AM-730 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, Mark Ruthkosky can be reached at (571) 272-1291. 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. /LC/ Lisa Chau Art Unit 1785 /Holly Rickman/Primary Examiner, Art Unit 1785 Application/Control Number: 18/572,658 Page 2 Art Unit: 1785 Application/Control Number: 18/572,658 Page 3 Art Unit: 1785 Application/Control Number: 18/572,658 Page 4 Art Unit: 1785 Application/Control Number: 18/572,658 Page 5 Art Unit: 1785 Application/Control Number: 18/572,658 Page 6 Art Unit: 1785 Application/Control Number: 18/572,658 Page 7 Art Unit: 1785
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