DETAILED ACTION
Claim Analysis
The present application contains one active independent claim(s) (claim 1) and thirteen active dependent claims (claims 2 - 14).
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
Specification
The title of the invention was not descriptive. The following Title is suggested: “Magnetic Tape Having Characterized Magnetic Layer, Magnetic Tape Cartridge, …”.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Applicants have filed several applications directed to similar inventive concepts. This not impermissible but the Examiner has deemed that these Applications are not patentably distinct from one another for the reasons noted below. In prior office actions in the below indicated applications, the Examiner has provided detailed analysis of each rejection and the secondary references relied upon therein. In the interest of compact prosecution and the saving of trees, the Examiner will, instead, present the same information in an easy to read table format.
Each copending application or published patent recites a related characterization technique, structure or methodology on which novelty relies. The below tables will break up the double patenting rejections by both the related characterization technique, structure or methodology and whether the rejection is non-provisional (i.e. over a published patent) or provisional (over a copending application only). Each table will present the document the double patenting rejection is predicated on, which limitations are met (and by which claims) and which limitations are lacking in the document. After each table, the Examiner will lay out where the missing limitations are taught in the prior art as mere obvious modifications (again, this mirrors the prior double patenting rejections put forth in previous office actions in the FUJIFILM Applications handled by Mr. Sylvester).
Non-Provisional DP Rejections predicated on Frictional Force at 45 degree tilt angle
Patent
Tape or device and which claims
Binder-type magnetic layer w/ FM powder
Frictional Force at 45 degree head tilt angle
Stnd dev of Frictional Force at 0, 15, 30, 45 tilt angles
Stnd dev of curviture
Squareness in vertical direction
Other limitations
Composite non-mag particles
Device with plural heads
US Effective Priority Date
11,894,034
Tape c1-14
Dev/cartridge c15-17
Claim 1
Claim 1
Claim 1
Claim 4
Claim 13
Edge weave in Claim 1
Claim 6
Claim 17
9/28/22
11,900,977
Tape c1-15
Dev/cartridge c16-18
Claim 1
Claim 1
Claim 1
Claim 5
Claim 14
Ra via AFM in Claim 1
Claim 7
Claim 18
9/28/22
11,869,552
Tape c1-13
Dev/cartridge c14-16
Claim 1
Claim 1
Claim 1
Claim 5
Claim 12
None
Claim 7
Claim 16
9/27/22
11,894,033
Tape c1-12
Dev/cartridge c13-15
Claim 1
Claim 1
Claim 1
Claim 4
See below
SFD in Claim 1
Claim 6
Claim 15
9/28/22
11,887,637
Tape c1-13
Dev/cartridge c14-16
Claim 1
Claim 1
Claim 1
Claim 3
Claim 12
C-H deriv carbon in Claim 1
Claim 5
Claim 16
9/28/22
12,308,057
Tape c1-13
Dev/cartridge c11-16
Claim 1
Claim 1
Claim 1
Claim 3
Claim 12
C-H deriv carbon in Claim 1
Claim 5
Claim 16
9/28/22
12,308,059
Tape c1-12
Dev/cartridge c13-15
Claim 1
Claim 1
Claim 1
Claim 4
See below
SFD in Claim 1
Claim 6
Claim 15
9/28/22
12,308,060
Tape c1-14
Dev/cartridge c15-17
Claim 1
Claim 1
Claim 1
Claim 4
Claim 13
Edge weave in Claim 1
Claim 6
Claim 17
9/28/22
12,300,287
Tape c1-10
Dev/cartridge c11-13
Claim 1
Claim 1
Claim 1
Claim 3
Claim 9
None
Claim 5
Claim 13
7/21/22
Non-provisional and Provisional DP Rejections predicated on Frictional Force at 45 degree tilt angle
Copending Application
Tape or device and which claims
Binder-type magnetic layer w/ FM powder
Frictional Force at 45 degree head tilt angle
Stnd dev of Frictional Force at 0, 15, 30, 45 tilt angles
Stnd dev of curviture
Squareness in vertical direction
Other limitations
Composite non-mag particles
Device with plural heads
US Effective Priority Date
THIS APP
Tape c1-11
Dev/cartridge c12-14
Claim 1
Claim 1
Claim 1
Claim 3
Claim 11
PEN w/ EY >= 10GPa
Claim 6
Claim 14
11/29/22
Regarding the requirement for any claimed surface roughness on the magnetic layer side, Imaoka (U.S. Patent No. 8,535,817) discloses similar magnetic tapes and devices meeting the claimed surface roughness limitations as obvious for improved running characteristics (col. 19, lines 44 – 59). This is deemed regardless of how the surface roughness is determined.
Regarding the requirement for a back coating layer and/or non-magnetic underlayer, Imaoka (‘817) teaches that these layers are conventional in magnetic tapes for improving the electromagnetic and running characteristics of a tape (col. 17, lines 45 – 63 and examples).
Regarding the requirement for any claimed lubricants, reference Imaoka (‘817) teaches that these classes of lubricants are well established as additives for the magnetic layer, back coat layer, etc. (at least examples).
Regarding the thickness values of the various layers, including the use of a non-magnetic layer under the magnetic layer, and the total overall thickness of the medium, the Examiner notes that these are all results effective variables that can be optimized to meet the claimed ranges as taught by Imaoka (col. 5, lines 1 – 21; col. 17, lines 59 – 67; col. 22, lines 50 – 58; and examples).
Regarding the distinction between the above documents which claim a device including the magnetic tape versus the presently claimed limitations directed solely to the tape, the Examiner notes that other than the use of a TMR head limitation, the device limitations are nominal and would not support a restriction requirement between the magnetic tape of claim 1 and the device of the document claims. The use of MR, including TMR, GMR, etc., heads is nominal/old, as taught by Imaoka ‘817 (at least Title; Abstract; Examples; and col. 20, lines 1 – 14 and col. 26, lines 20 - 23).
Regarding the use of a squareness ratio in the vertical direction meeting the claimed requirements, Harasawa et al. (U.S. Patent App. No. 2012/0243120 A1) disclose that it is known in the art to ensure the squareness ratio in the vertical direction meets the claimed limitations (obvious to optimize to high values) for improved SNR and thermal stability (Abstract and at least Paragraphs 0010 – 0015).
Regarding the use of a PEN substrate/support having a Young’s modulus in the width direction of 10 GPa or more, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the Young’s modulus in the width direction through routine experimentation, especially given the teaching in Meguro et al. (U.S. Patent App. No. 2006/0257693 A1) regarding the desire to use Young’s modulus values in the width direction meeting the claimed limitations (Paragraph 0028). 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). The Examiner takes Official Notice that PEN is a conventional support/substrate material for magnetic tapes, as evidenced by at least Meguro et al. (Paragraph 0025).
It would, therefore, have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of the above cited documents in view of the secondary references indicated above to produce a magnetic tape meeting the claimed limitations and having improved dispersibility combined with good running characteristics and electromagnetic performance.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: As indicated above, there are several, related FUJIFILM applications handled by Mr. Sylvester and subject to similar prosecution as this application. In these application file records, it is made clear that the claimed frictional force limitations convey patentability to the claimed invention (e.g. see prosecution history of 17/954,800, 17/954,808, etc.). As such, other than the above noted double patenting rejections, the present claims are deemed allowable for the same reasons as set forth in these other, related, applications.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
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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.
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
April 18, 2026
Prosecution Insights