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 without traverse of group I in the reply filed on 08/03/2026 is acknowledged.
Claims 24 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/03/2026.
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.
Claim(s) 13-23 and 25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rogin et al. (US 2012/0279712).
Regarding claim 13, Rogin discloses spherical magnetic objects, i.e. balls, comprising a ferrite material (0009, 0013).
Regarding claim 14, Rogin discloses the balls of claim 13, wherein the balls are sintered (0030).
Regarding claims 15-17, Rogin discloses the balls of claim 13, wherein a diameter of the balls is 1 to 20 mm, i.e. controlled size and homogenous shape, (0008).
Regarding claim 18, Rogin discloses the balls of claim 13, wherein a density of the ball is 3 to 10 g/cm3, i.e. 3000 kg/m3 to 10,000 kg/m3, (0016).
Regarding claim 19, Rogin discloses the balls of claim 13, wherein the balls are used in magnetic mixture (0015, 0055, 0058).
Regarding claim 20, Rogin discloses the balls of claim 13, wherein the balls are sintered (0030) and comprises MnZn ferrites, i.e. sintered spinel structure of MnZn ferrites, (0013).
Regarding claim 21, Rogin discloses the balls of claim 13, wherein the balls are formed by plate pelletizing process, i.e. disc pelletizing, (0031).
Regarding claim 22, Rogin discloses the balls of claim 13, wherein given that the balls of Rogin discloses the same material as claimed, it is clear that the balls of Rogin would inherently have the same permeability as presently claim.
Regarding claim 23, Rogin discloses the balls of claim 13, wherein given that Rogin discloses ball shape and given that there is no roughness listed by Rogin, it is clear that the balls of Rogin is smooth.
Regarding claim 25, Rogin discloses spherical magnetic objects, i.e. balls, comprising a ferrite material (0009, 0013), wherein diameter of the balls is 1 to 20 mm (0008) and a density of the ball is 3 to 10 g/cm3, i.e. 3000 kg/m3 to 10,000 kg/m3, (0016).
Claim(s) 13-16 and 19-23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stijntjes et al. (US 4431979).
Regarding claim 13, Stijntjes discloses balls comprising ferrite material (col 4, line 65 to col. 5, line 16).
Regarding claim 14, Stijntjes discloses the balls of claim 13, wherein the balls are sintered (col. 2, lines 7-8).
Regarding claims 15-16, Stijntjes discloses the balls of claim 13, wherein given that the balls of Stijntjes have diameter of 2.8 mm (col. 5 line 16), it is clear that the balls of Stijntjes comprise a controlled size and homogeneous shape.
Regarding claim 19, Stijntjes discloses the balls of claim 13, wherein the balls are used in magnetic mixture (col 5, lines 3-10).
Regarding claim 20, Stijntjes discloses the balls of claim 13, wherein the balls are sintered and comprises MnZn ferrites, i.e. sintered spinel structure, (col 4, line 65 to col 5, line 13).
Regarding claim 21, Stijntjes discloses the balls of claim 13, but fails to disclose disc pelletizing process or granulating process.
Although Stijntjes does not disclose disc pelletizing process or granulating process, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, 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 as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Stijntjes meets the requirements of the claimed balls, Stijntjes clearly meets the requirements of the present claims.
Regarding claim 22, Stijntjes discloses the balls of claim 13, wherein given that Stijntjes discloses the same material as claimed in present claim, it is clear that the balls of Stijntjes would inherently have the same properties as presently claim.
Regarding claim 23, Stijntjes discloses the balls of claim 13, wherein given that there is no roughness on the balls of Stijntjes, it is clear that the balls of Stijntjes are smooth.
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.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stijntjes et al. (US 4431979).
Regarding claim 17, Stijntjes discloses the balls of claim 13, wherein Stijntjes discloses a diameter of the balls is 2 mm to 2.8 mm (col 5, lines 13-15).
Stijntjes disclose diameter in a range of 2 to 2.8 mm, while the present claims require 3 to 15 mm.
It is apparent, however, that the instantly claimed diameter and that taught by Stijntjes are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the diameter disclosed by Stijntjes and the diameter disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the diameter disclosed in the present claims is but an obvious variant of the diameter disclosed in Stijntjes, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787
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