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 Objections
Claims 1 and 3 are objected to because of the following informalities: Ln 3 of claim 1 and ln 3 of claim 3 both recite “an Si oxide film”. This appears to be a typographical error. The term “an Si oxide film” is treated as ‘a Si oxide film’.
Appropriate correction is required.
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.
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Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-11 of U.S. Patent No. 11,742,141.
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the instant claims substantially encompasses the claims of US ‘141 and/or obvious variant of one another with slight optimization of ranges.
With regarding to the temperature of the heat treatment in forming the oxide layer, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the instant case, the difference between lower than 750°C and from 750°C (or 749.99999°C and 750°C) does not appear confer patentability to the claims in the absence of a showing of critically associated with the claimed heat treatment temperature.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 12,308,162.
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the instant claims substantially encompasses the claims of US ‘162 and/or obvious variant of one another with slight optimization of ranges.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5-7, 9, and 12-13 of U.S. Patent No. 12,435,398 in view of Orimo et al. (US 2018/0374619)
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the instant claims substantially encompasses the claims of US ‘398 and/or obvious variant of one another with slight optimization of ranges with regards to thickness of the coating film.
US ‘398 fails to disclose that the temperature of the heat treatment of forming the oxide layer is 750-850°C.
Orimo discloses a method of manufacturing a metal magnetic particle wherein a temperature of the heat treatment is from 600-800°C in forming an oxide layer [0097]. It would have been obvious to one of ordinary skill in the art to modify US ‘398 to have a heat treatment temperature as claimed, since Orimo discloses that this is a typical temperature in forming an oxide layer [0097].
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Orimo et al. (US 2018/0374619).
Regarding claim 1, Orimo discloses a method for manufacturing a metal magnetic particle [0011], the method comprising:
mixing a raw material particle having, on a surface of an alloy particle containing Fe and Si ([0020] Fe and L, where L is Si), an Si oxide film and an Fe oxide film ([0012], first and second layers) from a side of the alloy particle [0014] with Si alkoxide and alcohol [0029];
forming a coating film forming particle formed with a coating film containing silicon oxide (Fe and SiO, [0070]) by hydrolyzing and drying (heating) the Si alkoxide [0028-0029]; an average thickness of the coating film is ≤ 1 to 30 nm (≤ the thickness of the second layer, [0070], which is 1 to 30 nm, [0069]), and
forming an oxide layer (third layer F13, [0070]) on the surface of the alloy particle by performing heat treatment on the coating film forming particle in an oxidizing atmosphere [0027], wherein a temperature of the heat treatment is from 600°C to 800°C [0097], which overlaps the instantly claimed range of 750°C to 850°C. 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’.
Regarding claim 2, Orimo discloses the Si alkoxide is tetraethoxysilane [0029].
Regarding claim 3, Orimo discloses a method for manufacturing a metal magnetic core [0074], the method comprising:
mixing a raw material particle having, on a surface of an alloy particle containing Fe and Si ([0020] Fe and L, where L is Si), an Si oxide film and an Fe oxide film ([0012], first and second layers) from a side of the alloy particle [0014] with Si alkoxide and alcohol [0029];
forming a coating film forming particle formed with a coating film containing silicon oxide (Fe and SiO, [0070]) by hydrolyzing and drying (heating) the Si alkoxide [0028-0029]; an average thickness of the coating film is ≤ 1 to 30 nm (≤ the thickness of the second layer, [0070], which is 1 to 30 nm, [0069]),
molding the coating film forming particle [0107],
forming an oxide layer (third layer F13, [0070]) on the surface of the alloy particle by performing heat treatment on the coating film forming particle in an oxidizing atmosphere [0027], wherein a temperature of the heat treatment is from 600°C to 800°C [0097], which overlaps the instantly claimed range of 750°C to 850°C. 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’.
Regarding claims 4-5, please see ([0107], [0110]).
Regarding claims 6-8, Orimo discloses the Si alkoxide is tetraethoxysilane [0029].
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshidome et al. (US 2019/0279801) in view of Kaneko et al. (US 2005/0181202) and Orimo et al. (US 2018/0374619).
Regarding claims 1 and 3, Yoshidome teaches a magnetic core comprising “A soft magnetic metal powder having soft magnetic metal particles, wherein a surface of the soft magnetic metal particle is covered by a coating part, the coating part has a first coating part, a second coating part, and a third coating part in this order from the surface of the soft magnetic metal particle towards outside, the first coating part includes oxides of Si as a main component, the second coating part includes oxides of Fe as a main component” (Abstract, lines 1-8), “As the material including Fe and having soft magnetic property… Fe-Si-based alloy” (paragraph 41, lines 1-2) and “Method of Producing Soft Magnetic Metal Powder” (paragraph 35), i.e. A method for manufacturing a metal magnetic particle wherein the raw material particle raw material particle having, on a surface of an alloy particle containing Fe and Si, an Si oxide film and an Fe oxide film from a side of the alloy particle
Yoshidome further teaches that “As shown in FIG. 1, the third coating part 13 covers the surface of the second coating part 12. In the present embodiment, the third coating part 13 includes a compound of at least one element selected from the group consisting of… Si” (paragraph 70, lines 1-5) and “As the coating part has the third coating part, the coated particle exhibits high insulation property, therefore the resistivity of the dust core constituted by the soft magnetic metal powder including the coated particle” (paragraph 76), lines 1-5).
Yoshidome is silent on forming the third coating part by mixing a raw material particle… with Si alkoxide and alcohol; forming a coating film forming particle formed with a coating film containing silicon oxide by hydrolyzing and drying the Si alkoxide… forming an oxide layer on the surface of the alloy particle by performing heat treatment on the coating film forming particle
Kaneko teaches “Accordingly, an object of the present invention is to provide fine composite metal particles with high saturation magnetization and chemical stability and excellent in other properties, and a method for producing such fine composite metal particles” (paragraph 11).
Kaneko further teaches “The metal core is preferably composed of at least one magnetic transition metal selected from the group consisting of Fe, Co and Ni. It may be formed by… alloys of Fe, Co and/or Ni containing other transition metals such as…Si” (paragraph 63).
Kaneko further teaches “The outermost layer of each fine composite metal particle is preferably a silicon oxide-based layer, not only to secure electric insulation between the particles, but also to have properties as an extraction carrier of nucleic acids. Though other insulating inorganic materials may be used, silicon oxide is most practical from the aspect of mass production at a low cost” (paragraph 95, lines 1-7).
Kaneko further teaches “The silicon oxide may be obtained, for instance, by the hydrolysis reaction of silicon alkoxides” (paragraph 96).
Kaneko teaches “In the case of using tetraethoxysilane, the fine composite metal particles having the metal core coated with the first inorganic layer are dispersed in a solution of an alcohol, for instance, a lower alcohol such as ethanol, methanol, isopropanol, etc.” (paragraph 98).
Kaneko teaches “To coat the fine composite metal particles uniformly with silicon oxide, the alkoxide solution and the fine composite metal particles are fully mixed using a motor stirrer, a V-type mixer, a ball mill, a dissolver, or an ultrasonic machine, etc. The mixing should be conducted longer than necessary for the hydrolysis of tetraethoxysilane reaction” (paragraph 102) and “Thereafter, the resultant dispersion was stirred by a ball mill, while properly adjusting the concentration of the tetraethoxysilane and the stirring time by a ball mill. It was then dried at 100° C. or higher in the air, and further heat-treated at 400° C. in a nitrogen atmosphere” (paragraph 147, lines 11-15), i.e. forming a coating film forming particle formed with coating film containing silicon oxide by hydrolyzing and drying the Si alkoxide… forming an oxide layer on the surface of the alloy particle by performing heat treatment on the coating film forming particle.
Kaneko further teaches “With a controlled amount of the electrolyte, the thickness of the silicon oxide can be adjusted in a range of 5 to 400 nm. The silicon oxide layer thicker than 400 nm decreases the saturation magnetization of the fine composite metal particles. The more preferred thickness of the silicon oxide layer is 5 to 100 nm” (paragraph 107, lines 7-13), i.e. a range that overlaps with an average thickness of the coating film is from larger than 10 nm to 30 nm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to replace the third coating of Yoshidome with the silicon oxide layer of Kaneko such that the process includes mixing a raw material particle… with Si alkoxide and alcohol; forming a coating film forming particle formed with a coating film containing silicon oxide by hydrolyzing and drying the Si alkoxide and an average thickness of the coating film overlaps with from larger than 10 nm to 30 nm because Kaneko teaches that such a layer secure electric insulation, advantageous properties for an extraction carrier of nucleic acid and is the most practical from the aspect of mass production at low cost.
Yoshidome discloses molding the coating film as claimed [0078, 0098].
Yoshidome and Kaneko is silent on performing its heat treatment in an oxidizing atmosphere and a temperature of the heat treatment is 750-850°C as presently claimed.
Orimo discloses a method of manufacturing a metal magnetic particle wherein a temperature of the heat treatment is from 600-800°C in an oxidizing atmosphere in forming an oxide layer [0097].
It would have been obvious to one of ordinary skill in the art to modify Yoshidome in view of Kaneko’s method to have a heat treatment temperature as claimed, since Orimo discloses that this is a typical temperature in forming an oxide layer and that high magnetic permeability of the overall magnetic powder can be ensured [0097-0098].
Regarding claims 2 and 6-8, Yoshidome is silent on the Si alkoxide.
Kaneko further teaches “Tetraethoxysilane is a preferable silicon alkoxide to provide silicon oxide (silica) by a controlled hydrolysis reaction with good reproducibility. In addition, tetraethoxysilane provides a highly insulating coating at a relatively low cost” (paragraph 96, lines 14-18).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have the Si alkoxide is tetraethoxysilane in the combined process of Yoshidome and Kaneko (see above) because Kaneko teaches that tetraethoxysilane has a controlled hydrolysis reaction with good reproducibility and provides highly insulating coatings at relatively low cost.
Regarding claims 4-5, although Yoshidome discloses molding as claimed, Yoshidome fails to explicitly disclose the type of molding, specifically molding including laminating and pressing a green sheet containing the coating film forming particles per claim 4, or molding includes printing with and drying paste containing the coating film forming particles per claim 5.
Orimo discloses a method of making a metal magnetic particle, wherein the method includes a molding process with the types as claimed (0107], [0110]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Yoshidome’s magnetic core to be molded as claimed, since Orimo discloses that this is a typical process of forming a magnetic core [0107].
Conclusion
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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785