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
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/30/2026.
Claims 1, 4-13, and 21-22 are pending in this application. Claims 2 and 3 were canceled by applicant.
Information Disclosure Statement
The information disclosure statements filed on 09/03/2026, 03/04/2026, and 12/09/2024 have been considered by the Examiner. The reference JP 2020-180038 A was not considered due to a legible copy not having been provided with the IDS.
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, 4-13, and 21-22 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 recites a limitation in parentheses, therefore rendering unclear whether this constitutes a positive recitation of a limitation or is an optional feature, and rendering unclear which limitation is the ferrite precursor since claim 1 appears to modify “a complexing agent” with “(ferrite precursor)” while claims 4 and 5 appear to modify “the aqueous solution” with “(ferrite precursor).”
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.
Claims 1, 4-6, 8-10, 13, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable Arai et al. 2020 (WO 2020241065 A1), cited on the IDS filed on 12/09/2024 as JP 2020-193140 A. Arai 2026 (US 12540082 B2) is cited herein as an English translation.
Regarding claims 1 and 21, Arai teaches a method for producing cobalt ferrite particles (C1/L8) comprising performing a thermal treatment on an aqueous solution containing a divalent iron salt and a cobalt salt stabilized by a complexing agent (ferrous salt, C2/L35-40, wherein ferrous is known in the art to be defined as divalent iron), wherein the thermal treatment is a hydrothermal treatment performed in a pressure vessel within a temperature range overlapping with the claimed range of 190 °C to 260 °C (130° C to 190° C, C2/L50). As set forth in MPEP 2144.05, in the case where the claimed range "overlap or lie inside ranges disclosed by the prior art," a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. 1990). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to perform a method for producing cobalt ferrite particles as suggested by Arai where the temperature of the hydrothermal treatment is in any workable or optimum range overlapping with 130° C to 190° C as taught by Arai including the claimed range in order to obtain a temperature suitable for the reaction.
Regarding claim 4, Arai teaches the invention as applied to claim 1. Arai further teaches wherein a trivalent iron salt is further added to the aqueous solution (C2/L40-43).
Regarding claim 5, Arai teaches the invention as applied to claim 1. Arai further teaches wherein a pH buffer is further added to the aqueous solution (C2/L45).
Regarding claim 6, Arai teaches the invention as applied to claim 1. Arai further teaches wherein the divalent iron salt and the cobalt salt are iron(II) chloride and cobalt(II) chloride, respectively (C2/L50-55).
Regarding claim 8, Arai teaches the invention as applied to claim 1. Arai further teaches wherein, as the complexing agent, one selected from citrate, nitrilotriacetate or malate is used (C2/L55-60).
Regarding claim 9, Arai teaches the invention as applied to claim 1. Arai further teaches wherein the thermal treatment is performed in the presence of an oxidant in addition to the complexing agent (C2/L60).
Regarding claim 10, Arai teaches the invention as applied to claim 1. Arai further teaches that the oxidant is nitrate (C2/L64).
Regarding claim 13, Arai teaches the invention as applied to claim 1. Arai further teaches wherein an alkaline aqueous solution or the ferrite precursor is press-injected into a pressure vessel in the middle of the thermal treatment or after an end of the thermal treatment, and a thermal treatment is further performed (C2/L65-C3/L3).
Regarding claim 22, Arai teaches the invention as applied to claim 1, where Arai teaches a temperature range of 130° C to 190° C (C2/L50). Arai further teaches that there is a need to perform the hydrothermal reaction at high temperatures (C1/L65-C2/L2) in order to perform the Schikorr reaction and teaches that JP H5-275224 A teaches a temperature range of 160 to 300 °C for the Schikorr reaction (C1/L55-60). Arai therefore discloses that the range of temperatures claimed for the hydrothermal processing, of 200 to 260 °C, is known in the art, and therefore one skilled in the art would reasonably expect predictable performance by raising the temperature taught by Arai through routine optimization to the known temperature ranges in the art, since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation;” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), and thereby arrive at the claimed invention prior to the effective filing date.
Claims 7 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Arai as applied to claim 1 above, and further in view of JP 6-033116 A, referred to herein as Document 2, provided on the IDS filed on 12/09/2024.
Regarding claim 7, Arai teaches the invention as applied to claim 1. Arai further teaches wherein the divalent iron salt is iron(II) sulfate (C3/L66) and that the cobalt(II) salt is preferably cobalt(II) chloride (C4/L5). Document 2 further teaches an analogous method of synthesizing cobalt ferrite by using cobalt(II) sulfate as the cobalt(II) salt (0021); therefore Document 2 teaches the use of cobalt(II) sulfate as a known equivalent in the art. The courts have held that an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious; see MPEP 2144.06(II), In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). Therefore a prima face case of obviousness case exists for the claimed limitation since one of ordinary skill in the art would have predictably replaced the cobalt(II) chloride taught by Arai with the cobalt(II) sulfate taught by Document 2 and arrive at the claimed invention.
Regarding claim 11, Arai teaches the invention as applied to claim 1. Arai does not explicitly teach that a seed particle is further added to the aqueous solution (ferrite precursor), as claimed. However, Document 2 discloses that in the analogous process for preparing ferromagnetic metal powder comprising cobalt ferrite, other elements may be added to control parameters such as particle size, shape, and magnetic properties (0044) which performs the effective function of a seed crystal, therefore is interpreted to meet the limitation of a seed crystal. It would be obvious to one skilled in the art to add a seed particle, as suggested by Document 2, in combination with the teachings of Arai, and thereby arrive at the claimed invention; one would be motivated to do so in order to control parameters including particle size, shape, and magnetic properties of the material, as Document 2 suggests. One skilled in the art would therefore arrive at the claimed invention prior to the effective filing date.
Regarding claim 12, Arai and Document 2 teach the invention as applied to claim 11 above. Document 2 further teaches that the particle can be ferrite, where ferrite is known in the art to be an iron oxide (0044). Arai and Document 2 therefore teach the claimed invention, where the seed particle is iron oxide.
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.
Claims 1, 4-6, 8-10, 13, and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,540,082. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are fully anticipated by the patented claims.
Claim 1 is rejected over claim 1 of ‘082 is directed to a method for producing cobalt ferrite particles comprising performing a hydrothermal treatment on an aqueous solution containing a divalent iron salt (ferrous salt, C9/L34) and a cobalt salt stabilized by a complexing agent (C9/L35) wherein the hydrothermal treatment is performed in a pressure vessel within a range of 130 to 190 °C (C9/L42). While the temperature range overlaps with the instant claimed range of 190 to 260 C, as set forth in MPEP 2144.05, in the case where the claimed range "overlap or lie inside ranges disclosed by the prior art," a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. 1990). It would be obvious to one skilled in the art to arrive at the claimed invention from the teachings and invention of ‘082.
Claim 4 is rejected over claim 2 of ‘082.
Claim 5 is rejected over claim 3 of ‘082.
Claim 6 is rejected over claim 4 of ‘082.
Claim 8 is rejected over claim 5 of ‘082.
Claim 9 is rejected over claim 1 of ‘082.
Claim 10 is rejected over claim 6 of ‘082.
Claim 13 is rejected over claim 7 of ‘082.
Claim 21 is rejected over claim 1 of ‘082.
Claims 7, 11, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,540,082 in view of Document 2.
Claim 7 is rejected over claim 4 of ‘082 in view of Document 2. While the patented claim is directed to chloride salt, Document 2 teaches an analogous method of synthesizing cobalt ferrite by using cobalt(II) sulfate as the cobalt(II) salt (0021); therefore Document 2 teaches the use of cobalt(II) sulfate as a known equivalent in the art. The courts have held that an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious; see MPEP 2144.06(II), In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). Therefore a prima face case of obviousness case exists for the claimed limitation since one of ordinary skill in the art would have predictably replaced the cobalt(II) chloride taught by Arai with the cobalt(II) sulfate taught by Document 2, and would thereby arrive at the claimed invention from the patented invention of ‘082.
Claim 11 is rejected over claim 1 of ‘082 in view of Document 2. Document 2 discloses that in the analogous process for preparing ferromagnetic metal powder comprising cobalt ferrite, other elements may be added to control parameters such as particle size, shape, and magnetic properties (0044) which performs the effective function of a seed crystal, therefore is interpreted to meet the limitation of a seed crystal. It would be obvious to one skilled in the art to add a seed particle, as suggested by Document 2, in combination with the invention of claim 1 of ‘082, and thereby arrive at the claimed invention; one would be motivated to do so in order to control parameters including particle size, shape, and magnetic properties of the material, as Document 2 suggests. One skilled in the art would therefore arrive at the claimed invention from the patented invention.
Claim 12 is rejected over claim 1 of ‘082 in view of Document 2. Document 2 further teaches that the particle can be ferrite, where ferrite is known in the art to be an iron oxide (0044). One skilled in the art would therefore arrive at the claimed invention from the patented invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eileen Moudou whose telephone number is (571)272-1768. The examiner can normally be reached M-Th 8 AM - 4 PM EST.
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/Eileen Moudou/ Examiner, Art Unit 1738
/MICHAEL FORREST/ Primary Examiner, Art Unit 1738
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