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 .
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on June 08, 2026 is acknowledged. The traversal is on the ground(s) that the grouping of claim 4 is incorrect. This is not found persuasive because this is not a traversal of the restriction as a whole. There is no argument made that group II has unity with group I therefore it is not persuasive. Examiner agrees that claim 4 should be in Group I and has adjusted below.
The requirement is still deemed proper and is therefore made FINAL.
Claims 3 and 8-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on June 08, 2026
Claims 1, 2 and 4-7 are pending, claim 1 is independent.
Claim Interpretation
Regarding claim 4, as presently recited only two or more particles must have the claimed particle size “contains particles having”.
Regarding claim 5, no amount of coverage is required, any amount of side surface can be “covered” as presently recited.
Regarding claim 6, the granular oxide that contains magnetite does not contain crystalline hematite as presently recited, this does not preclude crystalline hematite being present elsewhere in an oxide layer on the iron core.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. Specifically, “Provided is” is language that can be implied.
Drawings
The drawings are objected to because in Fig. 4A and 4B there is no difference in the lines shown as Hematite and Magnetite (possibly originally shown in color). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
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.
Claims 1, 2 and 4-7 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Regarding claim 1, “a contact angle of a water droplet until 20 minutes elapses after dropping the water droplet on the side surface covered with the granular oxide is 80⁰ or more” is indefinite, as it fails to contain sufficient information to repeat the test. Applicants’ specification fails to provide a definition of this test, but does indicate that the height of a tip of a syringe dropping the droplet is important, the temperature and amount of water, measurement device and temperature of the air are important (example [0056]; examiner notes an example is not the same as a definition). Further the orientation of the sample when the droplet is added would be critical. For purposes of examination, any structure meeting the rest of claim 1 limitations shall be considered to meet this limitation under some compilation of circumstances (larger or smaller droplet, change in temperatures etc.).
Regarding claims 2 and 4-7, these claims are rejected for their incorporation of the above due to their respective dependencies on claim 1.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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, 2 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kozono et al. (WO-2018216496-A1, herein referring to the Google Patents June 27, 2026 machine translation), hereinafter Kozono (original and translation provided herewith).
Regarding claims 1 and 2, Kozono teaches a laminate of electromagnetic steel sheets as a motor core (steel sheets are “iron”, so this is an iron core) of a split core (Pg. 2 [11]) that has a black rust (Fe3O4) formed on a surface of the laminate (Pg. 3 [9]; black rust Fe3O4 is magnetite). Examiner notes that any surface of the laminate depending on orientation is a “side surface” under broadest reasonable interpretation. One of ordinary skill in the art reasonably understands that when formed black rust Fe3O4 (magnetite) is at least partially crystalline (granular).
Regarding “a contact angle of a water droplet until 20 minutes elapses after dropping the water droplet on the side surface covered with the granular oxide is 80⁰ or more” is rejected above as indefinite, as it fails to contain sufficient information to repeat the test. As the structure of Kozono meets the rest of claim 1 limitations it is considered to meet this limitation under some compilation of circumstances (larger or smaller droplet, change in temperatures etc.).
Regarding claim 4, Kozono teaches each limitation of claim 1, and discussed above and further teaches black rust (Fe3O4) formed on a surface of the laminate (Pg. 3 [9]; black rust Fe3O4 is magnetite and black rust is a “film” broadly”). One of ordinary skill in the art reasonably understands that when formed black rust Fe3O4 (magnetite) is at least partially crystalline, and crystals have particle size (granular). Kozono does not specifically teach having a particle size of 300 nm or more. The motivation to modify Kozono to a specific particle size range overlapping that claimed is where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (MPEP 2144.04 IV A).
Examiner further notes that as noted above only two particles need to meet this claim limitation; additionally this is an extremely broad range of size (300 nm or more). Therefore, no criticality or “difference in performance” would be expected due to a change in size.
Regarding claim 5, Kozono teaches each limitation of claim 1, and discussed above and further teaches black rust (Fe3O4) formed on a surface of the laminate (Pg. 3 [9]; black rust Fe3O4 is magnetite and black rust is a “film” broadly”). Examiner notes that any surface of the laminate depending on orientation is a “side surface” under broadest reasonable interpretation and “covers” is subject to broadest interpretation as noted above in “claim interpretation”. One of ordinary skill in the art reasonably understands that when formed black rust Fe3O4 (magnetite) is at least partially crystalline (granular).
Regarding claim 6, Kozono teaches each limitation of claim 1, and discussed above and further teaches black rust (Fe3O4) formed on a surface of the laminate (Pg. 3 [9]; black rust Fe3O4 is magnetite). Kozono is silent to the presence of hematite (including crystalline), such that it is not considered to be present in an appreciable amount. If this is not listed it is understood to one of ordinary skill in the art that it is reasonable that it is not present. Therefore crystalline hematite is considered to be present in an amount within, or at least overlapping, applicant’s claimed proportions (which include 0%)
Regarding claim 7, Kozono teaches each limitation of claim 1, and discussed above and further teaches a laminate of electromagnetic steel sheets as a motor core (steel sheets are “iron”, so this is an iron core) (Pg. 2 [11]). Regarding “stamped” steel sheets” and “are fastened to each other by swaging”, this is product-by-by process language. Product-by-process claims are limited by and defined by the process, however, the determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113. In this instance, the patentable distinction structurally of “stamped” steel sheets” and “are fastened to each other by swaging” is that of laminated electromagnetic steel sheets, addressed above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kitahara et al. (JP-H06293921-A), herein referring to the Google Patents June 27, 2026 machine translation (original and translation provided herewith), teaches electromagnetic steel sheet as an iron core with a surface oxide ([0001]), including magnetite as the oxide (Pg. 3 [8]) and steel plates laminated (Pg. 4 [9]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE CHRISTY whose telephone number is (303)297-4363. The examiner can normally be reached Monday-Thursday, 7am-4pm MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE A CHRISTY/Primary Examiner, Art Unit 1784
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