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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 24 July 2024 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Office.
The information disclosure statement (IDS) submitted on 25 March 2025 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Office.
The information disclosure statement (IDS) submitted on 28 October 2025 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Office.
Specification
The disclosure is objected to because of the following informalities:
The specification repeatedly references “the volume ratio of the magnetic powder to the adhesive is 35 vol % or lower”. However, 35 vol% is a volume percent and not a ratio.
Appropriate correction is required.
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.
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 1-8 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.
As to Claim 1: The claim sets forth the limitation “a volume ratio of the magnetic powder to the adhesive is 35 vol% or lower”. The property is recited as a percentage and not a ratio and it is unclear what the ratio is supposed to be. For the purposes of further consideration, the amount of the magnetic powder is considered to be less than 35% of the composition by volume.
As to Claim 2: The claim sets forth the limitation “a volume ratio of the magnetic powder to the adhesive is 20 vol% or higher”. The property is recited as a percentage and not a ratio and it is unclear what the ratio is supposed to be. Additionally, no upper bound is recited in the claim. For the purposes of further consideration, the amount of the magnetic powder is considered to be between 20 and 35 vol% of the composition by volume.
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.
Claims 1, 3-5, 7 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Toshioka et al. (US2011/0256342, hereinafter referred to as “Toshioka”).
As to Claim 1: Toshioka teaches an adhesive composition comprising bisphenol F liquid epoxy resin having a molecular weight of 350, a curing agent, and nickel particles (i.e., magnetic powder) wherein the magnetic particle is present in an amount of 0.2% by volume [0049].
As to Claim 3: Toshioka teaches the adhesive of claim 1 (supra). Toshioka further teaches that the composition can include a silane coupling agent [0046].
As to Claim 4: Toshioka teaches the adhesive of claim 1 (supra). Toshioka further teaches that the composition can include glycidyl methacrylate copolymer (i.e., a dispersant) [0049].
As to Claim 5: Toshioka teaches the adhesive of claim 1 (supra). Toshioka further teaches that the nickel powder has a size from 1 to 12 microns (i.e., more than 0.8 microns) [0049].
As to Claim 7: Toshioka teaches the adhesive of claim 1 (supra). Toshioka does not expressly teach the glass transition temperature in a cured state is 125°C or higher. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Toshioka. However, Toshioka teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, there were no special materials or steps completed to cause the glass transition temperature. Therefore, the claimed effects and physical properties, i.e. the glass transition temperature in a cured state is 125°C or higher, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
As to Claim 8: Toshioka teaches the adhesive of claim 1 (supra). Toshioka does not expressly teach the adhesion strength of the adhesive in a cured state per 25 square millimeters with respect to alumina is 10 MPA or higher. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Toshioka. However, Toshioka teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, there were no special materials or steps completed to cause the adhesion strength. Therefore, the claimed effects and physical properties, i.e. the adhesion strength of the adhesive in a cured state per 25 square millimeters with respect to alumina is 10 MPA or higher, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
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 2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Toshioka et al. (US2011/0256342, hereinafter referred to as “Toshioka”).
As to Claim 2: Toshioka teaches the composition of claim 1 (supra).
Toshioka does not teach an example where the amount of nickel is between 20 and 35 vol%.
However, Toshioka teaches that the amount of the nickel can be between 0.01 and 30 vol% [0045]. At the time of filing, it would have been obvious to a person having ordinary skill in the art to select an amount of nickel between 20 and 30% from the teaching of Toshioka because Toshioka teaches this is an acceptable amount of the nickel powder [0045].
As to Claim 6: Toshioka teaches the composition of claim 1 (supra).
Toshioka does not teach an example where the size of the nickel is 2.5 microns or smaller.
However, Toshioka teaches that the size of the nickel can be between 1 and 12 microns [0049]. At the time of filing, it would have been obvious to a person having ordinary skill in the art to select size of the nickel between 1 and 2.5 microns from the teaching of Toshioka because Toshioka teaches this is an acceptable size of the nickel powder [0049].
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J OYER whose telephone number is (571)270-0347. The examiner can normally be reached 9AM-6PM EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Andrew J. Oyer/Primary Examiner, Art Unit 1767
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