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 .
Foreign Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on August 14, 2025 is in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. Accordingly, the information disclosure statement has been considered by the examiner.
Drawings
The drawings were received on August 14, 2025. These drawings are accepted.
Specification/Minor Claim Informalities
The disclosure is objected to because of the following informalities:
(i) The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
(ii) The abstract of the disclosure is objected to because it is not "within the range of 50 to 150 words in length," and should be limited to a single paragraph. See MPEP § 608.01(b).
(iii) With regard to claim 1 (line 14), the period after the term "170 ppm" should be deleted and replaced with a colon.
(iv) With regard to claim 1 (line 17), a period should be placed at the end of the term "average chlorine count]".
(v) With regard to claim 11 (line 15), the period after the term "170 ppm" should be deleted and replaced with a colon.
(vi) With regard to claim 11 (line 18), a period should be placed at the end of the term "average chlorine count]".
Appropriate correction is required.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/689,299 in view of WO 2022/211020 A1 (see also, US 2024/0161778 A1, which is the US patent application filing to WO 2022/211020 - for an English translation). The following double patenting rejection is being made based on the latest filing of claim amendments to copending Application No. 18/689,299 (claim amendment filed December 16, 2025).
This is a provisional nonstatutory double patenting rejection.
As per claim 1 of the instant invention, claim 1 of copending Application No. 18/689,299 recites a magnetic recording medium comprising a magnetic layer, an underlayer, and a base layer in this order, the underlayer including a chlorine-containing binder, the underlayer including a part having a thickness of ranging from 130 nm to greater than 0 nm, the part having a chlorine count equal to or more than a threshold described below: [the threshold] = [an average chlorine count in the underlayer] + 6 x [a standard deviation determined in calculation of the average chlorine count], which is provided for in lines 1-8 and 15-17 of claim 1 of the instant application.
Moreover as per claim 11 of the instant application, copending Application No. 18/689,299 further claims a magnetic recording medium comprising a magnetic layer, an underlayer, and a base layer in this order, the underlayer including a chlorine-containing binder, the underlayer including a part having a thickness ranging from 12% to greater than 0% of a thickness ranging from of the underlayer, the part having a chlorine count equal to or more than a threshold described below: [the threshold] = [an average chlorine count in the underlayer] + 6 x [a standard deviation determined in calculation of the average chlorine count]. See claim 14 of copending Application No. 18/689,299.
However copending Application No. 18/689,299 does not claim an average width variation of the magnetic recording medium before and after the magnetic recording medium is left for 40 hours in an environment with a temperature of 500C and a relative humidity of 40% RH with a tension of 0.55 N applied in a longitudinal direction is less than or equal to 170 ppm.
Such features, however, are known in the art.
WO 2022/211020 A1 discloses an analogous magnetic tape, in the same field of endeavor as copending Application No. 18/689,299, wherein as per claims 1 and 11 of the instant application, inclusive of a magnetic recording medium comprising a magnetic layer, an underlayer, and a substrate (base layer) in that order (see claim 3, paragraph [0023], and fig. 3), where: a binder in the underlayer contains a vinyl chloride resin (see paragraphs [0096] and [0117]); and the average width change amount ΔA of a magnetic tape MT before and after being left to stand for 40 hours in an environment with a temperature of 50°C and a relative humidity of 40% RH under a tension of 0.55 N applied longitudinally is 0-170 ppm (see claim 1, and paragraphs [0123] and [0332]), and a magnetic recording cartridge that includes the magnetic recording medium (see claims 1 and 20, and fig. 1).
Given the express teachings and motivations, as espoused by WO 2022/211020 Al, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to provide the features not claimed in copending Application No. 18/689,299, but known in the art as evidenced by WO 2022/211020 Al, in order to advantageously enhance tape dimensional stability in an environment over a sustained period of time, as taught by WO 2022/211020 Al.
In an obviousness analysis, it is not necessary to find precise disclosure directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this regard, "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421.
As the U.S. Supreme Court has stated, obviousness requires an "expansive and flexible" approach that asks whether the claimed improvement is more than a "predictable variation" of "prior art elements according to their established functions." KSR, 550 U.S. at 415, 417.
As per claim 2 of the instant application, see claim 2 of copending Application No. 18/689,299.
As per claim 3 of the instant application, see claim 3 of copending Application No. 18/689,299.
As per claim 4 of the instant application, see claim 4 of copending Application No. 18/689,299.
As per claim 5 of the instant application, see claims 5 and 6 of copending Application No. 18/689,299.
As per claim 6 of the instant application, see claim 7 of copending Application No. 18/689,299.
As per claim 7 of the instant application, see claim 9 of copending Application No. 18/689,299.
As per claim 8 of the instant application, see claim 11 of copending Application No. 18/689,299.
As per claim 9 of the instant application, see claim 12 of copending Application No. 18/689,299.
As per claim 10 of the instant application, see claim 13 of copending Application No. 18/689,299.
As per claim 12 of the instant application, see paragraph [0183] of US 2024/0161778 A1, which is the US patent application filing to WO 2022/211020 - for an English translation.
As per claim 13 of the instant application, see paragraph [0071] of US 2024/0161778 A1, which is the US patent application filing to WO 2022/211020 - for an English translation.
As per claim 14 of the instant application, see paragraph [0073] of US 2024/0161778 A1, which is the US patent application filing to WO 2022/211020 - for an English translation.
As per claim 15 of the instant application, see paragraph [0068] of US 2024/0161778 A1, which is the US patent application filing to WO 2022/211020 - for an English translation.
As per claim 16 of the instant application, see paragraph [0279] of US 2024/0161778 A1, which is the US patent application filing to WO 2022/211020 - for an English translation.
As per claim 17 of the instant application, see Fig. 4 of WO 2022/211020.
As per claim 18 of the instant application, see paragraph [0066] of US 2024/0161778 A1, which is the US patent application filing to WO 2022/211020 - for an English translation.
As per claim 19 of the instant application, see Fig. 1 of WO 2022/211020.
Citation of Prior or Relevant Art on enclosed PTO-892
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The cited art made of record (see the enclosed PTO-892), not applied to the rejection of the claims, supra, each disclose aspects of the claimed invention, including wherein magnetic media including chlorine-based binders in underlayers. See PTO-892.
The best prior art has been applied to the claimed invention (see the rejection of the claims on the applied prior art, supra). However, if Applicant chooses to amend the claims in a manner to obviate the applied prior art, as noted in the rejection, supra, the Applicant is advised to not only carefully review the applied prior art for all it teaches and/or suggests, but also the cited prior art of record in order to obviate any potential rejections based on potential amendment(s); by doing so, compact prosecution on the merits can be enhanced.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William J Klimowicz whose telephone number is (571)272-7577. The examiner can normally be reached Monday-Thursday, 8:00AM-6PM, ET.
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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Lim can be reached at (571)270-1210. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM J KLIMOWICZ/ Primary Examiner, Art Unit 2688
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