Prosecution Insights
Last updated: July 17, 2026
Application No. 18/904,483

MAGNETIC SHIELD SHEET

Non-Final OA §103
Filed
Oct 02, 2024
Priority
Oct 03, 2023 — JP 2023-172367
Examiner
CHEN, VIVIAN
Art Unit
Tech Center
Assignee
Proterial Ltd.
OA Round
1 (Non-Final)
57%
Grant Probability
Moderate
1-2
OA Rounds
1y 7m
Est. Remaining
86%
With Interview

Examiner Intelligence

Grants 57% of resolved cases
57%
Career Allowance Rate
563 granted / 989 resolved
-3.1% vs TC avg
Strong +30% interview lift
Without
With
+29.6%
Interview Lift
resolved cases with interview
Typical timeline
3y 5m
Avg Prosecution
45 currently pending
Career history
1050
Total Applications
across all art units

Statute-Specific Performance

§101
0.1%
-39.9% vs TC avg
§103
84.5%
+44.5% vs TC avg
§102
2.3%
-37.7% vs TC avg
§112
11.5%
-28.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 989 resolved cases

Office Action

§103
DETAILED ACTION Notice of Pre-AIA or AIA Status Claim(s) 1-6 is/are pending. Claim(s) 1-6 is/are rejected. 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 . 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 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. Claim Rejections - 35 USC § 103 (AIA ) 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. 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. Claim(s) 1, 3-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over: • JANG ET AL (US 2015/0342099), in view of JP 2008-196006 (YOSHIZAWA-JP ‘006), and in view of JP 2014-151496 (KINOSHITA-JP ‘496), and in view of NIENART (US 4,174,419), and in view of CN 1340585 A (QIU-CN ‘585). JANG ET AL ‘099 discloses an electromagnetic (EM) wave absorbing sheet which provides EM shielding (corresponding to the recited “magnetic shield sheet”), wherein the sheet comprises: • a resin film (11) (corresponding to the recited “first resin layer”) (e.g., polyethylene terephthalate (PET) film; polyimide film; polyphenylene sulfide (PPS) film, etc.) with a typical thickness of 1-50 microns; • a first adhesive layer (12); • a thin-film magnetic sheet (2, 2a) comprising a Fe-based nanocrystalline alloy, wherein the magnetic sheet has a typical thickness of 15-35 microns, and wherein the magnetic sheet can be in the form of a single piece (2) or a plurality of magnetic sheet pieces (20), wherein said individual magnetic sheet pieces have a width which is smaller than the overall width of the EM shielding sheet; • a second adhesive layer (33); • a base film (32) (corresponding to the recited “second resin layer”); PNG media_image1.png 347 390 media_image1.png Greyscale PNG media_image2.png 158 466 media_image2.png Greyscale wherein the EM shielding sheet has a typical overall thickness of 30-300 microns. (entire document, e.g., Figure 1, 6, 9, etc.; paragraph 0001, 0004-0005, 0064-0079, 0083, 0092, 0095, 0098, etc.) However, the reference does not specifically discuss magnetic materials with specific magnetostriction constants, or melting points of resin layers or adhesive layers. YOSHIZAWA-JP ‘006 discloses that it is well known to form magnetic components (e.g., amorphous magnetic alloy thin strips, etc.) for magnetic products (e.g., magnetic shields, etc.) from Fe-based nanocrystalline soft magnetic alloys with superior toughness, wherein the Fe-based magnetic alloy has magnetostriction constant values of -3.5x10-6 to +3.5x10-6 in order to reduce vibration and noise issues caused by dimensional changes caused by exposure to magnetic fields, thereby facilitating miniaturization and thinner components compared to magnetic materials with higher magnetostriction constants. (paragraph 0001-0002, 0006, 0008, 0010-0011, 0013, 0018, etc.) KINOSHITA’JP ‘496 disclose that it is well known in the art to utilize heat-resistant, dimensionally stable polymer films at elevated temperatures (e.g., 200 °C or higher) with typical thicknesses of 1-200 microns.in electronic and optical applications, wherein the heat-resistant, dimensionally stable polymer films can exhibit heat-shrinkages of less than 1% at temperatures of 150 °C or higher (e.g., 180 °C, etc.). The reference further discloses that the heat-resistant polymer films comprise polymer films with a melting point (Tm) of 220 °C or higher -- for example: polyethylene terephthalate (PET) (Tm = 266 °C); polyetherimide (PEI) (Tm = 275 °C); polyphenylene sulfide (PPS) (Tm = 280 °C); polyethylene naphthalate (PEN) (Tm = 270 °C); etc. (paragraph 0001-0002, 0011-0012, 0015, 0043, 0049, 0056, 0085, etc.) NIENART ‘419 discloses that it is well known in the art to utilize heat-curable adhesives (e.g., applied from hot melt, etc.) as bonding layers for magnetic shield materials and laminates. The reference further discloses that it is well known in the art to utilize punching to shape magnetic shield materials. (line 13-25, col. 1; line 9-33, col. 5; line 1-17, col. 6; line 54-64, col. 6; etc.) QIU-CN ‘585 discloses that it is well known in the art to utilize curable high melting point polyester hot melt adhesive (e.g., 160 °C or more) in bonding applications wherein heat resistance, fast crystallization speed, and/or fast curing speed is desired and/or required. (paragraph 0003, 0015-0016, 0022, etc.). Regarding claims 1, 3, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize known Fe-based nanocrystalline magnetic alloys with small magnetostriction constant values (as suggested in YOSHIZAWA-JP ‘006) as the thin-film magnetic sheet (2, 2a) in the EM shielding sheet of JANG ET AL ‘099 in order to reduce vibration and noise issues caused by dimensional changes caused by exposure to magnetic fields, which facilitates miniaturization and thinner components compared to magnetic materials with higher magnetostriction constants. Further regarding claim 1, one of ordinary skill in the art would have utilized known polymer films which are heat-resistant and dimensionally stable at elevated temperatures (e.g., 200 °C or higher) formed from resins with melting points above 250°C (as disclosed in KINOSHITA’JP ‘496) as both resin film (11) and base film (32) in the EM shielding sheet of JANG ET AL ‘099 in order to produce heat-resistant, dimensionally stable EM shielding sheets capable of functioning and retaining shape at elevated use temperatures. Further regarding claim 1, one of ordinary skill in the art would have utilized known hot melt-type adhesives (as suggested in NIENART ‘419) with high melting points (as disclosed in QIU-CN ‘585) as both first adhesive layer (12) and second adhesive layer (33) in the EM shielding sheet of JANG ET AL ‘099 in order to produce delamination-resistant EM shielding sheets which can be rapidly produced. Further regarding claim 1, one of ordinary skill in the art would have selected the thicknesses of the first adhesive layer (12) and second adhesive layer (33) in the EM shielding sheet of JANG ET AL ‘099 to be the minimum thickness needed to provide desired performance properties (e.g., adhesive strength, flexibility, strength, etc.) in order to facilitate the production of thin EM shielding materials suitable for incorporation in smaller and/or thinner electronic devices. Regarding claim 4, one of ordinary skill in the art would have selected: (i) the materials used in the EM shielding sheet of JANG ET AL ‘099; and (ii) the individual and overall thickness of EM shielding sheet of JANG ET AL ‘099; in order to produce flexible EM shielding materials which can be easily wound into a conventional intermediate form such as a roll for convenient handling and/or easy dispensing for subsequent manufacturing operations (e.g., cutting, shaping, laminating, etc.). Regarding claim 5, the use of punching is a product-by-process limitation and is not further limiting in as so far as the structure of the product is concerned. "[E]even 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 or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show a 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. 1993). Additionally and/or alternatively, one of ordinary skill in the art would have utilized known, conventional shielding material shaping methods (e.g., punching, etc. as suggested in NIENART ‘419) to form the EM shielding sheet of JANG ET AL ‘099 for specific applications and incorporating into particular products. Regarding claim 6, one of ordinary skill in the art would utilized known polymer films which are heat-resistant and highly dimensionally stable at elevated temperatures (e.g., 200 °C or higher) with very low heat shrinkage values (e.g., less than 1% at 180°C or more, as disclosed in KINOSHITA’JP ‘496) as both resin film (11) and base film (32) in the EM shielding sheet of JANG ET AL ‘099 in order to produce EM shielding sheets which are highly dimensionally stable (as represented by a low AxB value of 30%*µm or less) after exposure to elevated temperatures (e.g., curing temperatures used to thermally cure known hot melt-type adhesives with high melting points (as disclosed in QIU-CN ‘585) used as both first adhesive layer (12) and second adhesive layer (33) in the EM shielding sheet of JANG ET AL ‘099. Claim(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over: • JANG ET AL (US 2015/0342099), in view of JP 2008-196006 (YOSHIZAWA-JP ‘006), and in view of JP 2014-151496 (KINOSHITA-JP ‘496), and in view of NIENART (US 4,174,419), and in view of CN 1340585 A (QIU-CN ‘585). as applied to claim 1 above, and further in view of WO 2014/054499 (YAMADA-WO ‘499). YAMADA-WO ‘499 discloses that it is well known in the art to form magnetic sheets having a shorter lateral width (W, W1) and a longer longitudinal width (W2) using individual magnetic alloy strips or ribbons arranged in parallel to form magnetic sheets with lateral widths (W, W1) which are greater (e.g., 100 mm or more) than the width (L) of individual magnetic alloy strips or ribbons (2, 2a, 2b, 2c) (e.g., having a width L of 3-90 mm) in order to facilitate the production of larger magnetic sheets while avoiding manufacturing and quality issues related to producing wide (e.g., greater than 100 microns) magnetic strips or ribbons, wherein the individual magnetic strips (2, 2a) are arranged in parallel across the desired lateral width (W1) of the magnetic sheet so that the longer length of the magnetic strips or ribbons runs lengthwise along the longitudinal length (W2) (which not particularly limited) of the magnetic sheet (corresponding to the recited “arranged in parallel in a longitudinal direction of the elongated body”), wherein the magnetic strips (2, 2a) are sandwiched between two adhesive layers (3) and two resin films (4). PNG media_image3.png 264 511 media_image3.png Greyscale PNG media_image4.png 373 339 media_image4.png Greyscale The reference further discloses that adhesive layers (e.g., applied as hot melt, etc.) used in the magnetic sheets have a typical thickness of 5-15 microns. (Figure 1-2, etc.; pages 2-7 of English machine translation) Regarding claim 2, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize relatively narrow strips or ribbons (e.g., having typical widths of 3-90 mm as suggested in YAMADA-WO ‘499) as the individual magnetic sheet pieces (20) in the EM shielding sheet of JANG ET AL ‘099, and arrange said individual pieces (20) in parallel across the desired width (W1) of a magnetic sheet and running lengthwise along the length of the magnetic sheet (corresponding to the recited “arranged in parallel in a longitudinal direction of the elongated body”) in order to facilitate the production of larger magnetic sheets while avoiding manufacturing issues related to producing wide (e.g., greater than 100 microns) magnetic strips or ribbons (as suggested in YAMADA-WO ‘499). Regarding claim 1, one of ordinary skill in the art would have selected the thicknesses of the first adhesive layer (12) and second adhesive layer (33) in the EM shielding sheet of JANG ET AL ‘099 to be the minimum thickness needed to provide desired performance properties (e.g., adhesive strength, flexibility, strength, etc.) (e.g., 5-15 microns, as suggested by YAMADA-WO ‘499) in order to minimize the overall thickness of the EM shielding sheet of JANG ET AL ‘099 and thereby facilitate the production of thin EM shielding materials suitable for incorporation in smaller and/or thinner electronic devices. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. WAKAYAMA ET AL (US 2005/0003079) disclose laminated magnetic sheets. SHIMADA ET AL (US 5,135,818) disclose magnetic materials with small magnetostriction constants. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300. The General Information telephone number for Technology Center 1700 is (571) 272-1700. Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). 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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form. June 13, 2026 /Vivian Chen/ Primary Examiner, Art Unit 1787
Read full office action

Prosecution Timeline

Oct 02, 2024
Application Filed
Jun 17, 2026
Non-Final Rejection mailed — §103 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
57%
Grant Probability
86%
With Interview (+29.6%)
3y 5m (~1y 7m remaining)
Median Time to Grant
Low
PTA Risk
Based on 989 resolved cases by this examiner. Grant probability derived from career allowance rate.

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