Election/Restrictions
Applicant’s election without traverse of Group II, original claim 10 and new claims 11-16, in the reply filed on 28 August 2028 is acknowledged.
Claims 1-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse.
Information Disclosure Statement
The listing of references WO 2017/164376 and WO 2018/155608 in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
The disclosure is objected to because of the following informalities:
The specification teaches the M component main phase of the coating mainly contains an M component. It is unclear what amount of the M component applicants considers as “mainly contains”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 12 and 13 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.
Claims 12 and 13 were added in the amendment filed 28 August 2026 and thus are not part of the originally filed disclosure.
Claim 12 teaches the coating contains oxygen and phosphorous and that the oxygen content is larger than the amount of phosphorous. Paragraph [0060] teaches the coating contains a metal phosphorous compound and can further contain oxygen and phosphorous, wherein the amount of oxygen in the additional oxygen and phosphorous is larger than the amount of phosphorous. This teaching is different from what is claimed. Thus this claim is new matter.
Claim 13 teaches the M component main phase further contains Fe. The only teaching in the specification of the M component main phase further contains Fe is in paragraph [0023] which teaches the M phosphate main phase further contains Fe. No other M main phase taught in the specification contains Fe. This teaching is different from what is claimed. Thus this claim is new matter.
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 10-16 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.
Claim 10 teaches the M component main phase of the coating mainly contains an M component. It is unclear what amount of the M component applicants considers as “mainly contains”. Since dependent claims 11-16 implicitly include this unclear limitation, claims 10-16 are indefinite.
Claim 14 is indefinite as to what is the composition of the second phase containing X of the Fe-X alloy. Lines 3-4 of the implies that the second contain contains Fe and X, but this is not clearly stated in the claim.
Claim 16 recites the limitation "the maximum value". There is insufficient antecedent basis for this limitation in the claim or in claim 10, from which it depends.
Claim 16, which depends from claim 10, teaches, in the direction from the surface of the coating toward the soft magnetic material, the amount of M shows a maximum value, then decreases and then increases. Claim 10 teaches in the direction from the surface of the coating toward the soft magnetic material, the amount of M at the surface is that in the M component main phase and then it decreases in the direction toward the soft magnetic material. The gradient structure of the coating of claim 10 is different from that of claim 16. Thus claim 16 is indefinite.
Allowable Subject Matter
Claims 10, 11, 14 and 15 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
There is no teaching or suggestion in the cited art of record of a coated soft magnetic material comprising a soft magnetic material, and a coating on the surface of the material, wherein the coating comprising a M component main phase and a M compositional gradient phase positioned between the main phase and the soft magnetic material which has a thickness of at least 20 nm; where in the M compositional gradient phase, the M component content decreases in a direction toward the soft magnetic material, and the M component is at least one of Cr, W, Mn, Mo, Nb and V.
U.S. patent application 2019/0228892 is cited as of interest since it teaches coated ferromagnetic particles, such as iron particles, wherein the manganese ferrite containing coating wherein the manganese content in the coating decreases in a direction toward the ferromagnetic particles. The thickness of the gradient region of the coating is not taught or suggested by the reference.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to C. MELISSA KOSLOW whose telephone number is (571)272-1371. The examiner can normally be reached Mon-Tues:7:45-3:45 EST;Thurs-Fri:6:30-2:00EST; and Wed:7:45-2:00EST.
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/C Melissa Koslow/Primary Examiner, Art Unit 1734
cmk
9/22/26
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