Specification
The disclosure is objected to because of the following informalities:
The specification teaches the milled particles have a particle size of “X50”. It is unknown what is meant by “X50” since it does not correspond with any known symbol used to indicate particle size.
The specification teaches the nickel source in the raw materials is Ni2O. This material is a hypothetical, postulated and/or unstable suboxide that doesn’t exist. The Examiner was unable to find any evidence that this oxide is commercially available and/or used to form nickel containing ferrites, or any other nickel containing mixed metal oxides. Thus it is unclear how the disclosed W-type ferrite is produced using this non-existent nickel oxide.
In Comparative Examples 8 and 9, the ball-milling treatment time is not taught, it is listed as “h” and the particle size resulting from the treatment is not given. The size is listed as “of µm”. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-15 are rejected under 35 U.S.C. 101 because the disclosed invention is inoperative and therefore lacks utility. The claims teach the nickel source in the raw materials is Ni2O. This material is a hypothetical, postulated and/or unstable suboxide that doesn’t exist. The Examiner was unable to find any evidence that this oxide is commercially available and/or used to form nickel containing ferrites, or any other nickel containing mixed metal oxides. Since Ni2O does not actually exists, the claimed process cannot be performed and thus is inoperative.
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 1-15 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The claims teach the nickel source in the raw materials of the process is Ni2O. This material is a hypothetical, postulated and/or unstable suboxide that doesn’t exist. The Examiner was unable to find any evidence that this oxide is commercially available and/or used to form nickel containing ferrites, or any other nickel containing mixed metal oxides. Since Ni2O does not actually exists, the claimed process cannot be performed, and therefore the claimed process does not enable one skilled in the art to which it pertains, or with which it is most nearly connected, to use the claimed process to produce a W-type hexagonal microwave ferrite having the formula BaGdxNi2Fe16-xO27, where 0.1<x<0.25, which has a line-width of less than 400 Oe. If a claim fails to meet the utility requirement of 35 U.S.C. 101 because it is shown to be nonuseful or inoperative, then it necessarily fails to meet the how-to-use aspect of the enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. As noted in In re Fouche, 439 F.2d 1237, 169 USPQ 429 (CCPA 1971), if "compositions are in fact useless, appellant’s specification cannot have taught how to use them." 439 F.2d at 1243, 169 USPQ at 434. See MPEP 2164.07IA.
In addition, the process of claims 1-9, 11 and 13-15 teaches, in step (4), sintering the second ball-milled slurry in air and then sintering the slurry in oxygen at 1150-1250oC. This step reads on sintering in air at any known sintering temperature for a W-type hexagonal microwave ferrite having the formula BaGdxNi2Fe16-xO27, where 0.1<x<0.25, in a flux having the composition set forth in step (3), which shoes the mature and breath of the invention It is notorious well known to one of ordinary skill in the magnetic ferrite art that the composition of the ferrite, the presence and amounts of additive and the sintering conditions such as atmosphere and temperature all affect the magnetic properties of the ferrite, as shown by the examples; and that the effect of each of these factor on the magnetic properties is unpredictable. The only temperature taught the specification teaches for the sintering in air step is 1000oC. There is no other guidance given in the specification to allow one of ordinary skill in the art to determine what other temperatures can be used in the step so as to produce a W-type hexagonal microwave ferrite having the formula BaGdxNi2Fe16-xO27, where 0.1<x<0.25, which has a line-width of less than 400 Oe. The above notorious well known facts describe the state of the prior art, the level of one of ordinary skill in the art and the predictability of the art. Since there is no guidance given in the specification as to what other temperatures, besides 1000oC, can be used in the process; and the facts that the sintering temperature affect the magnetic properties of a magnetic ferrite and the effect is unpredictable; it would require undue experimentation to determine what temperatures can be used in the claimed process. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
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 1-15 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.
Claims 1 and 12 teach the milled particles have a particle size of “X50”. It is unknown what is meant by “X50” since it does not correspond with any known symbol used to indicate particle size and thus these claims are indefinite. Dependent claims 2-11 and 13-15, which implicitly include this limitation, do not clarify this issue and therefore are also indefinite.
The process of claims 1-9, 11 and 13-15 teaches, in step (4), first sintering the second ball-milled slurry in air and then sintering the slurry in oxygen at 1150-1250oC. The temperature range of the claimed step of sintering the second ball-milled slurry in air is not claimed. This missing condition makes the process indefinite since the claims do not clear set forth the metes and bounds of this temperature range of this sintering step since it is unclear what sintering temperatures applicants intended to include and what sintering temperatures applicants intended to exclude. It is noted that the only temperature taught for this step in the specification is 1000oC.
Conclusion
The Liu et al article is cited as of interest since it teaches a method for producing a W-type hexagonal microwave ferrite having the formula BaGdxNi2Fe16-xO27, where 0.1<x<0.5.
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
7/8/26
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