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 .
Status of Claims
Claims 1 and 11 are amended. Claims 2-3, 5-6, 12-13 and 15-16 are cancelled. Claims 8-9 are withdrawn. Claims 1, 4, 7, 10-11 and 14 are examined herein.
Status of Previous Rejections
The rejections of claims 11-13 under 35 U.S.C. 102(a)(1) as being anticipated by Hagiwara (US2012/0075046) have been withdrawn in view of the amendment.
The rejections of claims 1, 4, 7, 10-11 and 14 under 35 U.S.C. 103 as being unpatentable over US’333 (US 2013/0241333), and further in view of Huang (Journal of Applied Physics, Vol 75, Page 6280-6282, 1994) are maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 4 recites a limitation that has been recited in claim 1 and thus claim 4 does not further limit claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 4, 7, 10-11 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over US’333 (US 2013/0241333), and further in view of Huang (Journal of Applied Physics, Vol 75, Page 6280-6282, 1994).
Regarding claims 1, 4, 7, 11 and 14, US’333 teaches a Sm-Co magnet having composition of
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, wherein:
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US’333 discloses an example having composition of (Sm0.85Nd0.15)(Fe0.28Zr0.025Cu0.05Cobal)7.8 (Abstract; [0015]; [0065]; Table 1, Example 1), which converts to 24.48 mass% R, 4.07 mass% Cu, 2.91 mass% Zr and 19.98 mass% Fe and the balance is Co and meets the recited composition in claims 1 and 11. Thus, the composition disclosed in US’333 overlaps the recited composition in claims 1 and 11.
US’333 discloses that the magnet includes a plurality of main phase grain and grain boundaries ([0029]). US’333 discloses that grain boundary phase is a Cu-rich phase ([0029] to [0047]). Since the Cu to Zr atomic ratio in (Sm0.85Nd0.15)(Fe0.28Zr0.025Cu0.05Cobal)7.8 magnet is 2 and Cu tends to enrich in grain boundary phase, the Cu to Zr atomic ratio in the grain boundary phase of (Sm0.85Nd0.15)(Fe0.28Zr0.025Cu0.05Cobal)7.8 magnet is expected to be greater than 2.
US’333 discloses that the cell size of the examples are 80-115 nm (Table 3), which meets the cell size limitation recited in claims 1 and 11.
US’333 discloses that the magnet has residual magnetization of 1.18 T or more and the coercive force is 200-500 kA/m ([0033]; Table 3, Example 1), which meets the recited residual magnetization and overlaps the recited coercivity in claims 1, 4, and 11.
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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Thus, the recited composition, residual magnetization and coercivity are obvious over US’333.
US’333 does not explicitly disclose the squareness ratio limitation and re-magnetization property as recited in claims 1 (line 11-17) and 14, and the I(006)/I(303) as recited in claims 7 and 11. However, these structure and property limitations are determined by the magnet alloy composition and the process of making the magnet.
US’333 discloses that the magnet is made by sintering at 1100-1300 ºC, a solution heat treatment at 1130-1230 ºC, a first aging heat treatment at 730-850 ºC followed by cooling to room temperature at a cooling rate of 0.2-2 ºC/min, and a second aging heat treatment at 830-875 ºC followed by cooling to 450-600 º at a cooling rate of 1.2-1.3 ºC/min and then quenching is started ([0028]; [0050] to [0065]), which are very similar to the processing conditions disclosed in instant Specification (Compare [0050] to [0068] of US’333 with [0016] of instant Specification). The difference between the method of US’333 and the instant application is that US’333 does not explicitly disclose that rapid cooling is performed after the solution heat treatment. However, performing rapid cooling after solution heat treatment in making Sm-Co magnet is well-known to one of ordinary skill in the art as evidenced as Huang. Huang teaches a sintered Sm-Co magnet and a method of making a sintered Sm-Co magnet that is analogous to (Abstract; Page 6280, left Column, last paragraph). Huang discloses that after solution heat treatment, the magnet is quenched to room temperature (Page 6280, left Column, last paragraph). Thus, it would be obvious to one of ordinary skill in the art to perform quenching after the solution heat treatment as taught by Huang in the process of US’333 in order to reduce production time.
In view of the fact that US’333 in view of Huang teaches a magnet composition that meets the recited composition in claim 1 and a method of making the magnet with the processing conditions that are very similar to the disclosed processing in instant Specification, one of ordinary skill in the art would expect that the magnet disclosed by US’333 in view of Huang to meet the structure and property limitations recited in instant claims. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
Regarding claim 10, US’333 discloses that the magnet is used in a motor and a power generator ([0002]), which meets the limitation recited in claim 10.
Response to Arguments
Applicant's arguments filed 04/08/2026 have been fully considered but they are not persuasive.
The applicants argued that Horiuchi and Huang, neither of these references evaluates the features of amended claims 1 and 11, namely a high squareness ratio and re-magnetization (i.e., obtaining magnetization of 95% or more of the saturation magnetization under a low magnetic field). There is no reasonable expectation of success that magnets having these characteristics could be obtained by the methods of Horiuchi or Huang.
In response, as set forth in the art rejection above, in view of the fact that US’333 in view of Huang teaches a magnet composition that overlaps the recited composition in claim 1 and a method of making the magnet with the processing parameters that overlap the disclosed processing parameters in instant Specification, one of ordinary skill in the art would expect that the magnet disclosed by US’333 in view of Huang to meet the squareness ratio and re-magnetization limitations recited in claims 1 and 11. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
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 Xiaowei Su whose telephone number is (571)272-3239. The examiner can normally be reached 8:00-5:00.
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/XIAOWEI SU/Primary Examiner, Art Unit 1733
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