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 .
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 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, and 3-14 of copending Application No. 17/361,797 in view of US 2018/0005738. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the instant claims are obvious variant of the claims of application 17/361,797. Although the reference application discloses an oxide insulating film, the reference application fails to disclose that the insulating film is formed via by oxidizing surfaces of the metal magnetic particles as presently claimed.
Yamamoto discloses a magnetic base body comprising a plurality of metal magnetic particles, wherein it comprises an oxide insulating film. Yamamoto discloses a metal oxide may be formed on the surface of the metal magnetic alloy powder, wherein an oxidation progresses in a high temperature heat treatment. The metal oxide of the insulating film is derived from the metal magnetic allow powder [0056].
It would have been obvious to one of ordinary skill in the art that the metal oxide film of the reference application is produced by oxidizing the surface of the metal magnetic particles, since, that this is a known method of forming a metal oxide insulation film of a magnetic particle.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claims 1-16 would be allowable if a terminal disclaimer has been filed to obviate the obviousness-type double patenting rejection, set forth in this Office action.
The closest prior art of record Ishimine et al. (US 2010/0044618) discloses a magnetic base body comprising metal magnetic particles, wherein the metal magnetic particles exhibiting a volume-based particle size distribution where a most frequent particle size is 1-70 um [0012-0013], an Fe and metal oxide insulating film formed on a surface of each of the metal magnetic particles [0064]. Further, although Ishimine discloses that the magnetic particle is controlled to be of 1 µm or more and have a coefficient of variation to be 0.40 or less ([0015], [0030], [0054-0055], Ishimine fails to teach, suggest, or otherwise render obvious the claimed volume-based particle size distribution and a cumulative frequence of particle sizes ranges for the reasons set forth in the Patent Board Decision dated 3/2/26 of the parent application (17/361,797).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785