DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/18/2026 has been entered.
Response to Amendment
Examiner acknowledges amended Specification, amended Claims 1 and 14, canceled Claim 3, and new Claims 16-20 in the response filed on 6/18/2026.
Response to Arguments
Applicant’s arguments with respect to Claims 1, 2, and 4-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Claim 1, 2, and 4-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-15 of copending Application No. 19150141 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter sough is substantially covered by the subject matter in copending Application No. 19150141.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claims 1, 2, and 4-20 are objected to because of the following informalities.
For Claims 1, 2, 4, and 14, please amend “the part having a chlorine count equal to or more than the threshold” to “the part having the chlorine count equal to or more than the threshold” to promote clarity (emphasis added – For independent Claims 1 and 14, the instant limitation is directed to the amended portion and not to the earlier recitation).
For Claims 1, 2, 4 and 14, please amend to delete the limitation “in the underlayer” to promote clarity (i.e. the last three words of the respective claims). Appropriate correction is required.
With regards to Claim 17, please amend “remining” to “remaining”.
With regards to Claims 18-19, in order for the nomenclature to be consistent throughout the claim set, please amend “the chlorine containing binder” to “the chlorine-containing binder”.
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.
Claim 20 is 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.
Claim 20 recites the negative limitation “the underlayer does not include a chlorine-free binder”. Negative limitation(s) in the claim(s) must have explicit support in the specification to satisfy the description requirement of 35 USC 112, In re Grasselli, 231 USPQ 393. Also please see MPEP 2173.05(i) which states, "The mere absence of a positive recitation is not basis for an exclusion."
Furthermore, the term “chlorine-free binder” in the claim, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants' specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, the Examiner notes that this term is a broad term and encompasses any material that does not contain chlorine. Therefore, an underlayer reciting that it does not include a chlorine-free binder also precludes from having a non-magnetic powder (per Claim 9), a lubricant (per Claim 10), fillers, additives, etc. The Examiner suggests using explicit/positive language (if possible) from Applicant’s Specification as an option to overcome the rejection.
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.
Claim 17 is 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 17 recites the limitation "the chlorine content". There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1, 2, 4-16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20190378540 (“Sekiguchi et al.”).
With regards to Claims 1, 2, 4-8, 14, and 16, Sekiguchi et al. teaches a magnetic recording medium comprising a magnetic layer (13), an underlayer (12), and a base layer (11) in this order, wherein the underlayer contains a chlorine-containing binder (Fig. 1, [0024], [0026], [0030], [0047], [0048], [0053], and [0056]).
Sekiguchi et al. teaches the magnetic layer has a thickness of 35-90 nm, and the underlayer has a thickness of 0.6 μm or more and 2.0 μm or less [0054]. Therefore, Sekiguchi et al. teaches a total thickness of the magnetic layer and the underlayer is 635-2090 nm. 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.
Sekiguchi et al. does not explicitly teach the underlayer including a part having a thickness of 130 nm or less or 12% or less of a thickness of the underlayer, the part having a chlorine count equal to or more than a threshold. The threshold as defined as: [the threshold] = [an average chlorine count in the underlayer] + 6 x [a standard deviation determined in calculation of the average chlorine count].
However as noted above, Sekiguchi et al. teaches the underlayer includes a chlorine-containing binder, such as polyvinyl chloride ([0048] and [0056]). It would have been obvious to one of ordinary skill in the art that this chlorine-containing binder is distributed uniformly throughout the underlayer to ensure consistency.
Therefore, any portion of the underlayer, including in proximity, 200 nm or less from an interface between the underlayer and the base layer, and/or greater than 0 to 12% the thickness of the underlayer, would have a chlorine count equal to the claimed threshold. That is, [the threshold] = [average chlorine count in the underlayer], wherein a standard deviation determined in calculation of the average chlorine count is 0 or negligible (i.e. there is no chlorine content gradient within the underlayer).
With regards to Claims 9 and 10, Sekiguchi et al. teaches the underlayer contains a non-magnetic powder and a lubricant [0053].
With regards to Claim 11, Sekiguchi et al. teaches the magnetic recording medium having an average thickness tT of 5.5 μm or less [0061].
With regards to Claims 12 and 13, Sekiguchi et al. teaches the magnetic layer contains a magnetic powder, wherein the magnetic powder contains ε-iron oxide ([0030] and [0037]).
With regards to Claim 15, Sekiguchi et al. teaches a magnetic recording cartridge comprising a magnetic recording medium in a state being wound around a reel, the magnetic recording medium accommodated in a case ([0112], [0115], and [0122]).
With regards to Claim 20, Sekiguchi et al. teaches its underlayer only having a chlorine-containing binder, and therefore Sekiguchi et al.’s underlayer does not include a chlorine-free binder ([0056] and [0233]).
Allowable Subject Matter
Claims 17-19 are objected to as being dependent upon a rejected base, but would be allowable if rewritten in independent form including all of the limitations of the base claim (Claims 1 and 14) and any intervening claims.
Conclusion
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.
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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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/LC/
Lisa Chau
Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
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