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 .
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 1-5 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.
Claim 1, ln 6-7 recites “an air permeability method (Blaine Method)”, which renders the claim indefinite. The “Blaine method” is not clearly defined in a manner that distinguishes the Blaine method from other air permeability measuring methods in the instant claims or in the original disclosure. Claims 2-5 are dependent from claim 1.
While not a suggestion of claim language, in the interest of compact prosecution, all air permeability methods of determining particle size are considered to read on the instant claims. The limitation “an air permeability method (Blaine Method)” is treated as ‘an air permeability method’.
Appropriate correction is required.
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 instant claims contain the transitional phrase “comprising”. Per MPEP 2111.03 ‘The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps'. This open-ended definition has been taken into consideration in the following rejections.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over JP2022-024885 A to Yamaji et al. (hereinafter Yamaji), provided with a machine translation in the IDS filed 8/7/24.
Regarding claims 1 and 2, Yamaji discloses a ferrite particle powder for electromagnetic wave absorption (radio wave absorber, para [0004]), the ferrite particle powder comprising magnetoplumbite-type ferrite represented by a chemical formula of
BaFe(12-x)(B10.5B20.5)O19
where B1 is selected from a group comprising Ti, B2 is selected from a group comprising Mn and x is 0.1 to 2.6 (para [0009]). This provides the chemical formula
BaFe(12-x)(Ti0.5Mn0.5)O19
which is the instantly claimed chemical formula of
AxFe(12-y)(TizMn(1-z))yO19
where A is at least one selected from Ba, Sr, Ca, and Pb (para [0027]) and x is 0.9 to 1.1 (A is Ba and x=1 in Yamaji, para [0009]). Yamaji discloses an Fe range of 9.4 to 11.9 (12-x, where x is 0.1 to 2.6, para [0009]), which falls within the instantly claimed Fe range of 7 to 12 (12-y, where y is 5.0 or less). The Yamanji amounts of Ti and Mn are each 0.5, which fall within the instantly claimed z range of 0.35 to 0.65.
Yamaji further discloses the ferrite powder having
an average particle diameter of 1 to 5.2 µm (para [0033]), which overlaps the instantly claimed range of 0.50 to 3.0 µm and
a specific surface area of 2 m2/g or less (para [0034]), which overlaps the instantly claimed range of 0.5 to 4 m2/g. See MPEP 2144.05(I), which states that ‘In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists’. Yamaji determines particle size by laser diffraction analysis (para [0033]) whereas the instant claims recite size determination by an air permeability method. However, one of ordinary skill in the would not expect substantial differences in particle size based on the method of measuring, absent evidence to the contrary.
The preamble of the instant claims recites “for electromagnetic wave absorption”. This is an intended use limitation. See MPEP 2111.02(II), which states that ‘During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art…To satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim’. In the instant case, the reference discloses that the ferrite powder is used in radio absorbers (para [0007]). Therefore, the Yamaji ferrite powder is deemed capable of the intended use.
Yamaji is silent regarding a compressed density of 3.00 g/cm³ or more. However, as discussed above, the reference does teach overlapping ferrite powders with overlapping size and surface area. See MPEP 2112.01(I), which states that ‘Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established…"When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."…Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product’. Yamaji teaches an overlapping ferrite powder with overlapping size and surface area properties, as discussed above. The reference further teaches that the powder is made by an overlapping method, as discussed below. Therefore, one of ordinary skill in art would expect the Yamaji powder to have overlapping compressed density, absent evidence to the contrary.
This rejection is based on the interpretation set forth in para #3, above.
Regarding claim 3, Yamaji discloses a method for manufacturing the ferrite particle powder for electromagnetic wave absorption according to claim 1, the method comprising:
mixing (para [0021]), molding (by granulation, para [0022]), and firing (para [0023]) an iron raw material, a titanium raw material, a manganese raw material, and a compound raw material of an element A to produce magnetoplumbite-type ferrite (para [0020]-[0021]);
pulverizing (grinding) the magnetoplumbite-type ferrite (para [0024]); and
annealing the pulverized magnetoplumbite-type ferrite (para [0025]).
Regarding claim 4, Yamaji discloses a resin composition comprising the ferrite particle powder for electromagnetic wave absorption according to claim 1 and a resin (para [0030]).
Regarding claim 5, Yamaji discloses a resin composition comprising the ferrite particle powder for electromagnetic wave absorption according to claim 2 and a resin (para [0030]).
Conclusion
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/L.E./Examiner, Art Unit 1734
/Matthew E. Hoban/Primary Examiner, Art Unit 1734
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