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 .
Response to Amendment
Examiner acknowledges amended Claims 1, 2, 7, 14, 16, and 19, cancelled Claim 3, and new Claim 21 in the response filed on 1/20/2026.
Response to Arguments
Applicant’s arguments with respect to Claims 1, 2, and 4-21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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, 2, and 4-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-24 of copending Application No. 18888719 in view of US Pub. No. 20150002255 (“Kim et al.”).
The subject matter sought is substantially covered by the subject matter in copending Application No. 18888719.
Copending Application No. 18888719 does not disclose the plurality of first magnetic particles include an Fe-Si-Cr alloy, a plurality of second magnetic particles including a phosphate first layer, and a plurality of third magnetic particles having an average particle diameter smaller than an average particle diameter of the plurality of second magnetic particles.
However, Kim et al. teaches a magnetic component comprising a magnetic body, wherein the magnetic body includes a plurality of first magnetic particles (132) including an Fe-Si-Cr alloy component and a plurality of second magnetic particles (136) including an Fe component and having an average particle diameter smaller than an average particle diameter of the plurality of first magnetic particles (Figs. 1 and 3, [0029], [0059], and [0061]).
Kim et al. teaches at least one of the plurality of first magnetic particles (132) includes a Fe oxide first layer (132b) formed on a surface of a core (132a) of the plurality of first magnetic particles, and at least some of the plurality of second magnetic particles (136) include a phosphate first layer (136b) formed on a surface of a core (136a) of the plurality of second magnetic particles (Fig. 3, [0059], and [0061]-[0063]).
Kim et al. further teaches the magnetic body includes a plurality of third magnetic particles (134) having an average particle diameter smaller than an average particle diameter of the plurality of second magnetic particles and include a first layer formed as an insulating film on a surface of the plurality of third magnetic particles (i.e. the insulating binder on the third magnetic particle) (Fig. 3 and [0066]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have said features in order to have a high filling rate/density in the magnetic body with desirable insulation between the magnetic particles [0034].
This is a provisional nonstatutory double patenting rejection.
Claim Objections
Claim 4 is objected to because of the following informalities: Please amend “later” to “layer”. Appropriate correction is required.
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, 2, 4-7, 9, and 13-21 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20150002255 (“Kim et al.”) in view of US Pub. No. 20180374619 (“Orimo et al.”).
With regards to Claims 1, 5, 6, and 9, Kim et al. teaches a magnetic component comprising a magnetic body, wherein the magnetic body includes a plurality of first magnetic particles (132) including an Fe component and a plurality of second magnetic particles (136) including an Fe component and having an average particle diameter smaller than an average particle diameter of the plurality of first magnetic particles (Figs. 1 and 3, [0029], [0059], and [0061]).
Kim et al. teaches at least one of the plurality of first magnetic particles (132) includes a Fe oxide first layer (132b) formed on a surface of a core (132a) of the plurality of first magnetic particles, and at least some of the plurality of second magnetic particles (136) include a phosphate first layer (136b) formed on a surface of a core (136a) of the plurality of second magnetic particles (Fig. 3, [0059], and [0061]-[0063]).
Kim et al. does not teach a Si oxide second layer formed on a surface of the first layer (132b) of the plurality of first magnetic particles (132), wherein the average thickness of the second layer of the plurality of first magnetic particles is 5 nm to 35 nm and is 2 to 10 times greater than an average thickness of the first layer of the plurality of first magnetic particles. Kim et al. also does not teach its second layer of the plurality of first magnetic particles includes 30 to 70 wt% of a Si component and does not include a Sn component.
However, Orimo et al. teaches a magnetic component comprising a magnetic body, wherein the magnetic body includes a plurality of magnetic particles including an Fe component. At least one of the plurality of the magnetic particles includes a first layer (F11) formed on a surface of a core (P1) of the plurality of magnetic particles and a second layer (F12) formed on a surface of the first layer (F11). The first layer (F11) of the plurality of magnetic particles includes an Fe oxide, and the second layer (F12) of the plurality of magnetic particles includes Si oxide, wherein the second layer (F12) has a Si component concentration of at least 50 wt% and does not include a Sn component (Figs. 1-2, [0068], and [0069]).
Orimo et al. further teaches the thickness of its first layer (F11) of the plurality of magnetic particles has a thickness smaller than the thickness of the second layer (F12). The thickness of the first layer (F11) is not limited in any way, and is 0.5 nm to 10 nm, for example. Orimo et al. teaches the thickness of its second layer (F12) is 1 nm to 30 nm (Figs. 1-2, [0068], and [0069]). As shown in Figs. 9-10, the thickness of the second layer is optimized to achieve desirable magnetic permeability and resistivity of the magnetic particles ([0100]-[0102]). In light of the instant teachings, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to incorporate a second layer with an average thickness of 5 nm to 30 nm and is 2 to 10 times greater than an average thickness of the first layer on Kim et al.’s first layer of the first magnetic particles in order to obtain excellent insulation, permeability, and resistivity properties ([0033] and [0100]-[0102]).
With regards to Claim 2, Kim et al. teaches an average particle diameter of the plurality of first magnetic particles is 20 μm (Fig. 3, [0064], and [0069]).
With regards to Claim 4, Kim et al. teaches the first layer of the plurality of first magnetic particles includes less than 1 wt% of a Si component [0059].
With regards to Claim 7, Kim et al. teaches an average particle diameter of the plurality of second magnetic particles is 1 μm to 5 μm [0065].
With regards to Claim 13, Kim et al. teaches the plurality of first magnetic particles include an Fe-Si-Cr alloy [0059].
With regards to Claim 14, Kim et al. teaches the magnetic body includes an Fe component and further includes a plurality of third magnetic particles (134) having an average particle diameter smaller than an average particle diameter of the plurality of second magnetic particles (Fig. 3).
With regards to Claim 15, Kim et al. teaches the average particle diameter of the plurality of third magnetic particles is 300 nm [0069].
With regards to Claims 16-18 and 20, Kim et al. teaches a magnetic component comprising a magnetic body, wherein the magnetic body includes a plurality of first magnetic particles (132) including an Fe component, a plurality of second magnetic particles (136) including an Fe component and having an average particle diameter smaller than an average particle diameter of the plurality of first magnetic particles, and a plurality of third magnetic particles (134) having an average particle diameter smaller than the average particle diameter of the plurality of second magnetic particles (Figs. 1 and 3, [0029], and [0059]-[0061]).
Kim et al. teaches at least one of the plurality of first magnetic particles (132) includes a Fe oxide first layer (132b) formed on a surface of a core (132a) of the plurality of first magnetic particles, at least some of the plurality of second magnetic particles (136) include a P oxide first layer (136b) formed on a surface of a core (136a) of the plurality of second magnetic particles, and at least some of the plurality of third magnetic particles include a first layer formed as an insulating film on a surface of a core of the plurality of third magnetic particles (i.e. the insulating binder on the third magnetic particle) (Fig. 3, [0059], [0061]-[0063], and [0066]).
Kim et al. does not teach a second layer formed on a surface of the first layer (132b) of the plurality of first magnetic particles (132), wherein the second layer includes Si oxide, is substantially free from the Fe oxide, and the average thickness of the second layer of the plurality of first magnetic particles is 5 nm to 35 nm.
However, Orimo et al. teaches a magnetic component comprising a magnetic body, wherein the magnetic body includes a plurality of magnetic particles including an Fe component. At least one of the plurality of the magnetic particles includes a first layer (F11) formed on a surface of a core (P1) of the plurality of magnetic particles and a second layer (F12) formed on a surface of the first layer (F11). The first layer (F11) of the plurality of magnetic particles includes an Fe oxide, and the second layer (F12) of the plurality of magnetic particles includes Si oxide and is substantially free from the Fe oxide. Orimo et al. further teaches the thickness of its second layer (F12) is 1 nm to 30 nm (Figs. 1-2, [0068], and [0069]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to incorporate a second layer, as demonstrated by Orimo et al., on a surface of Kim et al.’s first layer of the first magnetic particles in order to obtain excellent insulation properties [0033].
With regards to Claim 19, Kim et al. teaches an average particle diameter of the plurality of first magnetic particles is 20 μm (Fig. 3, [0064], and [0069]).
With regards to Claim 21, Kim et al. teaches the first layer of the plurality of first magnetic particles includes an Fe-Si-O based material having less 1 wt% of a Si component [0059]. That is, a Si content of 0 wt% is within the scope of the instant limitation.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20150002255 (“Kim et al.”) in view of US Pub. No. 20180374619 (“Orimo et al.”) as applied to Claim 1 above, and further in view of US Pub. No. 20220254553 (“Nakazawa et al.”).
Kim et al. teaches the first layer of the plurality of second magnetic particles as set forth above.
Kim et al. does not teach an average thickness of the phosphate first layer of the plurality of second magnetic particles is 5 nm to 15 nm.
However, Nakazawa et al. teaches a phosphate layer on a plurality of magnetic particles, wherein a thickness of the phosphate layer is 12.1 nm, for example (Fig. 5, [0039], [0048], [0049], and Table 4). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to optimize the thickness of Kim et al.’s phosphate first layer in order to maintain a high insulation between the magnetic particles [0066].
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20150002255 (“Kim et al.”) in view of US Pub. No. 20180374619 (“Orimo et al.”) as applied to Claim 1 above, and further in view of US Pub. No. 20220157513 (“Lee et al.”).
The prior art of record does not teach the plurality of first magnetic particles further include a third layer formed on a surface of the second layer, wherein the third layer comprises the claimed functional group(s).
However, Lee et al. teaches a magnetic component comprising a plurality of first magnetic particles (1201 or relevant thereof) including an Fe component, and at least one of the plurality of the first magnetic particles include a first layer (additional configurational element disclosed in [0030]) formed on a surface of a core (121) of the plurality of first magnetic particles, a second layer (122) formed on a surface of the first layer, and a third layer (123) formed on a surface of the second layer. Lee et al. teaches the third layer includes a compound having at least one functional group selected from the group consisting of an alkyl group, a carbonyl group, and a urethane acrylate (Figs. 1A-3, [0030]-[0037], and [0039]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to incorporate a third layer, as demonstrated by Lee et al., in order to provide excellent adhesion/coupling to the first magnetic particles [0037].
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20150002255 (“Kim et al.”), in view of US Pub. No. 20180374619 (“Orimo et al.”), and in view of US Pub. No. 20220157513 (“Lee et al.”) as applied to Claim 11 above, and further in view of US Pub. No. 20220254553 (“Nakazawa et al.”).
The prior art of record does not teach an average thickness of the third layer that includes a compound having at least one functional group selected from the group consisting of an alkyl group, a carbonyl group, and a urethane acrylate.
However, Nakazawa et al. teaches a layer comprising the claimed functional group(s) on a plurality of magnetic particles, wherein a thickness of said layer is 9.7 nm, for example (Fig. 5, [0039], [0048], [0049], and Table 3). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to optimize the thickness of the third layer as claimed in order to maintain a high insulation between the magnetic particles [0066].
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA CHAU whose telephone number is (571)270-5496. The examiner can normally be reached Monday-Friday 11 AM-730 PM.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LC/
Lisa Chau
Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
Prosecution Insights