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 Objections
Claim 1 and 7 are objected to because of the following informalities: It is unclear why the word layer is underlined in the claims and throughout the specification. The underlining of passages is typically used to show additions to the text of the claims or specification. Appropriate correction is required.
Specification
The disclosure is objected to because of the following informalities: It is unclear why the word layer is underlined in the claims and throughout the specification. The underlining of passages is typically used to show additions to the text of the claims or specification..
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-4 and 6-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishizawa in JP2021034460 (citations are based on the machine translation provided).
Regarding Claim 1 and 3: Nishizawa teaches the creation of magnetic beads comprising a magnetic metal particle and a coating layer covering a surface of the magnetic metal particle and containing an inorganic oxide (See Example 1-4, pages 10-11). Nishizawa teaches that the magnetic metal particles are carbonyl iron powder that are coated with a layer of SiO2 through a Stober process. The properties of the magnetic beads are shown in Table 1. Nishizawa reports the specific surface area measured by gas absorption is 0.71 (Example 1). Nishizawa reports that the D50 particle size on a volume basis is 5.5 microns. A specific surface area calculated by a volume-based particle size distribution would be based on such a D50 value and would be approximated as SAB1=6/(d*ρ). Nishizawa teaches that the density of the pure powder is 6.3g/cc. Those of ordinary skill in the art would expect the density of a 5.5 micron powder coated with a 5 nm layer of SiO2 to be approximately the same as the powder density alone. The SAB1=6/(6.3g/cc*0.00055cm)=1731cm2/g*(1/100)2=0.1731 m2/g. The value of A/B1 for example 1 of Nishizawa is thus expected to be A/B1=0.71/0.1731=4.1, falling within the claimed range. In terms of instant claim 3, it is expected that a number size distribution would have a d50 value smaller than a volume size distribution as large particles no longer skew the distribution. In order for the SAB2 to be greater than 0.71 (making A/B2 less than 1), the value of D50 in the number distribution would have to be less than 7100cm-2/g=6/(6.3g/cc*d) or d=1/(7100*(6.3/6))=0.000134 cm or 1.34 microns. From the distribution set forth by Nishizawa, one of ordinary skill would expect that the D50 value on a number basis would be greater than 1.34 microns and would expect that the value of A/B2 would inherently be greater than 1 and less than 6 as claimed.
Regarding Claim 2: Nishizawa teaches that the bead is coated with silicon oxide (See Example 1-4).
Regarding Claim 4: Nishizawa teaches that the particle is an Fe-based alloy, carbonyl iron (alloy of C and Fe) (See Example 1-4).
Regarding Claim 6: Nishizawa teaches that the D50 based on volume distribution is 5.5 microns (See Table 1).
Regarding Claim 7: Nishizawa teaches that the D50 value is 5.5 microns and the thickness of the silica coating is 5.2 nm, providing a ratio of 5.2/5500=0.0009.
Regarding Claim 8: Nishizawa teaches that the silica coated beads are dispersed in a slurry (dispersion medium; See Section- Solid liquid separation process and Example 1-4).
Claim Rejections - 35 USC § 103
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) 1-8 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tanoue in US20210060642, as evidenced by Jiehuang Chiyang in their publication “Iron-Nickel Alloy: A comprehensive Overview”.
Regarding Claim 1 and 3: Tanoue teaches magnetic powders (beads) comprising a soft magnetic powder (particle) as a core (See Paragraph 19) and a coating layer covering a surface of the magnetic particle and containing an inorganic oxide (See Paragraph 23). Tanoue shows the creation of such a bead in Examples 1-5, wherein Fe-Ni magnetic particles having an average particle diameter of 1.9 microns are provided. A coating layer of SiO2 having a thickness from 2-20 nm is provided on the surface thereof (See Table 1). Tanoue teaches that the initial powder has a specific surface area A measured by BET (a gas absorption method) of 0.77 m2/g. Tanoue teaches that the powder has an average (d50- see paragraph 64) particle size of 1.9 microns. In order to calculate density by a volume based particle size method, the d50 particle size and actual density must be known (compact density is a green density that includes voids). Tanoue is silent in terms of the density of Fe50Ni; however, the density of such a material is a material property and is 8.25 g/cc as is evidenced by Jiehuang Chiyang. As the density of this material is known, the surface area B1 calculated based on a volume-based particle size distribution may be determined as SAb1= (SA/V*ρ)=(4pi()r2)/((4/3pi()r3*ρ)=3/(r*ρ)=6/(d*ρ) (where d=2r). The SSA of the initial metal particles of Tanoue are thus 6/(8.25g/cc*0.00019cm)=3827cm2/g=0.38327m2/g.
The ratio A/B1 of the initial particles of Tanoue is thus 0.77/0.3827=2.012. Those of ordinary skill in the art would have expected the Fe50Ni particles of Tanoue having a 2-20 nm coating of SiO2 to have a similar surface area A and surface B1 as the initial magnetic particle and would have expected the product of Tanoue to have the same ratio of these two surface areas as claimed. Thus, those of ordinary skill would expect the beads of Tanoue to inherently have a surface area between 0.3 m2/g and less than 10 m2/g and a ratio A/B1 between 1 and 9. Those of ordinary skill in the art would have also expected similar results when the calculation was based on a number- based particle size (B2) as is set forth in claim 3 and would have expected that the value of A/B2 of the particles of Tanoue would have fallen within the range from 1 to 6 as claimed.
Alternatively, in the case that the claimed properties were not inherent in any of the beads of examples 1-5, Tanoue teaches a magnetic bead having a magnetic metal particle as a core and an inorganic oxide layer coated on the surface of said particle as a coating layer (See Paragraph 19 and 23). Tanoue is silent in terms of the claimed specific surface area A being between 0.3 m2/g and 10 m2/g and a surface area B1 as calculated by particle size, wherein the ratio of A/B1 is from 1 to 9.
However, Tanoue teaches an overlapping range of magnetic bead compositions having an overlapping range of magnetic metal particle compositions and size (See Paragraph 19 and 36). Tanoue teaches providing an overlapping thickness of silica coating on the magnetic particles and teaches that this coating is provided by a similar process that is instantly disclosed (See paragraphs 23-26 of Tanoue and paragraph 177 of the instant disclosure). Both Tanoue and the original disclosure teach that the layer is formed through a Stober method using a mixed solvent of ethanol, water and ammonia. The instant disclosure and Tanoue thus teach a material having the same composition (metal particle with silica coating) and structure (overlapping size and coating thickness) made by the same process. Those of ordinary skill in the art would expect the product made by Tanoue to necessarily have the same properties as claimed, as the beads of the prior art have the same composition and structure as that which is claimed and are made by an extremely similar process of providing a metal particle and creating a silica coating thereon through a Stober process. Thus, those of ordinary skill in the art would expect the material of Tanoue to necessarily have a specific surface area A between 0.3 m2/g and 10 m2/g, and a ratio of A/B1 between 1 and 9 as claimed and a ratio of A/B2 between 1 and 6 as claimed.
(The calculation method at paragraphs 70-78 of the original disclosure is noted. The claims do not require the use of this particular method only setting forth that B1 is calculated based on a volume-based particle size distribution and a number based particle size distribution in claim 3. Calculation based on 6/( d*ρ) is calculated based on a volume-based particle size distribution as claimed, since the value of d is based on a volume particle size distribution. Those of ordinary skill in the art would expect a number- sized distribution to shift the average size to a lower value to the same degree as is instantly set forth. Even if the calculation of B1 as is set forth in paragraphs 70-78 were claimed, those of ordinary skill in the art would still expect that the value of B1, B2, A/B1 and A/B2 would be the same as that which is disclosed and claimed as the materials of the prior art are of the same composition and structure and made by the same method.)
Regarding Claim 2: The coating of Tanoue is silicon oxide (See Example 1-5 and paragraph 23).
Regarding Claim 4: Tanoue teaches that the magnetic metal particle is an Fe alloy being Fe50Ni (See Example 1-5 and Paragraph 19).
Regarding Claim 5: Tanoue teaches that the powder may be provided as an amorphous structure by the addition of Mo (See Paragraph 19). Tanoue thus teaches the use of amorphous structures as the Fe-based alloy of the magnetic metal particle.
Regarding Claim 6: Tanoue teaches that the average diameter is determined on a volume basis and is equivalent to a D50 value as claimed (See paragraph 64). Tanoue teaches that the D50 value of the beads may range from 1.9 to 3.5 microns, falling within the claimed range (See Table 1). Tanoue teaches that the average size may be from 1 to 5 microns (See Paragraph 36).
Regarding Claim 7: Tanoue teaches that the particle diameter may be 1.9 microns and the average thickness of the shell may be 2 nm. This represents a ratio of 2/1900=0.0011. Tanoue teaches that the particle diameter may be 3.5 and the average thickness may be 20 nm, which represents a ratio of 0.0057. Tanoue also teaches generally that the particle size may be from 1 to 5 microns (See Paragraph 36) and the coating thickness may be from 1 to 25 nm (See Paragraph 26), which provide an overlapping range of ratios.
Regarding Claim 8: Tanoue teaches that the silicon oxide coating is provided on the surface of the magnetic particles while said particles are disposed in a mixed solvent as a slurry. The magnetic beads are dispersed in this mixed solvent and meets the limitations of the magnetic bead reagent as claimed (See Example 1 and Paragraph 38).
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 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11901101. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims teach an overlapping range of materials with those instantly claimed.
Regarding Claim 1 and 3: Patented claim 1 teaches that the core particle may comprise Fe and one or more of Si, Cr, and Al. The magnetic core is a soft magnetic particle. An oxide film is formed on the surface of the core. Patented claim 1 is silent as to the range of the specific surface area as measured by a method such as BET; however, the patented claim teaches the same core and shell, being an iron based core and a silica based shell, which would necessarily have the same density as the material claimed, and an overlapping range of particle diameter (see Patented Claim 3). Patented claim 4 teaches that the measured surface area is 1 to 3.2 times greater than the SSA as calculated from the volume based particle size distribution (6/(d*p) or a number based particle size distribution as set forth in claim 3. As the patented material is of the same composition and structure as that which is claimed (a metallic particle coated with a silicon oxide having overlapping diameters), those of ordinary skill would have expected the material of the Patented claims to also have a specific surface area between 0.3 to 10 m2/g as measured by gas adsorption. Materials of the same composition and structure must necessarily have the same properties.
Regarding Claim 2: Patented claim 2 teaches that the oxide film, which contains ceramics may contain silicon oxide.
Regarding Claim 4: Patented claim 1 teaches that the core is an Fe-based alloy.
Regarding Claim 5: Patented claim 1 sets forth that the material of the core is an Fe based alloy, which includes both amorphous and crystalline materials.
Regarding Claim 6: Patented claim 3 teaches that the average particle diameter (d50) is between 1 and 50 microns, representing an overlapping range of particle sizes.
Regarding Claim 7: Patented claim 1 sets forth that the insulating film has a thickness between 5 and 300 nm and patented claim 3 sets forth that the average particle size is between 1 micron and 50 microns. The range of t/D50 in 300/1000 to 5/50000 or from 0.0001 to 0.33. Thus, the claimed ratio overlaps with the patented ratio.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW E HOBAN whose telephone number is (571)270-3585. The examiner can normally be reached M-F 9:30am-6:00pm.
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/Matthew E. Hoban/Primary Examiner, Art Unit 1734
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