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 .
Status of Claims
Claim 1 is amended. Claims 6-15 are withdrawn. Claims 1-5 are examined herein.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/05/2025 has been entered.
Status of Previous Rejections
The rejections of Claims 1 and 3-5 under 35 U.S.C. 102(a)(1) as being anticipated by, or in the alternative, under 35 U.S.C. 103 as being unpatentable over Hu (2015/0348685) are maintained.
The rejections of Claim 2 under 35 U.S.C. 103 as being unpatentable over Hu (2015/0348685), and further in view of JP’026 (JP 2007-266026A, IDS dated 05/25/2022) is maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “magnet consisting of R2T14B main phase crystal grains and a grain boundary” in line 1-2. Claim 1 also recites “R2T14B main phase crystal grains in contact with secondary phases” in line 11-12. It’s unclear whether “grain boundary” and “secondary Phases” are the same thing. Appropriate correction is required.
Claim 1 recites “T is at least one iron group element” in line 4. The definition of iron group element is unclear. The expression “T is at least one iron group element” causes confusion whether T may include an element that is not an iron group element. Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 and 3-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by, or in the alternative, under 35 U.S.C. 103 as being unpatentable over Hu (2015/0348685).
Regarding claims 1 and 3-5, Hu teaches an R-T-B based permanent magnet comprising R2T14B main phase crystal grains and a grain boundary (Abstract; [0017] to [0035]). Hu discloses an example containing 22.50 wt% Nd, 3.5 wt% Pr, 1wt% Dy and 2 wt% Tb, 500 ppm O and 0.94 wt% B (Table 2, Example 13), which meets the recited B amount in claim 1, the O amount in claim 3 and the R amount in claim 5. Hu also discloses this example has residual magnetic flux density of 14.6 kG (Table 2, Example 13), which meets the limitation recited in claim 4. Hu discloses that Example 13 has area ratio of main phase of 95.2% (Table 2) which meets the main phase ratio recited in claim 1.
Hu is silent on the coverage ratio of main phase by a grain boundary phase. However, this limitation is determined by the alloy composition of the sintered magnet and the method of making the magnet. Hu discloses that the magnet is made by sintering at 1048 ºC, followed by first aging at 925 ºC and second aging at 480 ºC (Table 2, Example 13), which meets the sintering temperature and the second aging temperature and close to the first aging temperature disclosed in instant Specification (See [0072] to [0084]). In view of the fact that Hu teaches a magnet composition that meets the recited composition in claim 1 and a process of making the magnet under conditions that is close to the processing conditions disclosed in instant Specification, one of ordinary skill in the art would expect that the sintered magnet disclosed by Hu to meet the coverage ratio recited in claim 1. “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 the amended feature in claim 1, the limitation “magnet consisting of R2T14B main phase crystal grains and a grain boundary” in line 1-2 only defines that the magnet structure does not contain additonal phases other than R2T14B main phase and grain boundary phase. Hu discloses that the magnet consists of R2T14B main phase crystal grains and a grain boundary phase ([0017] to [0035]), which meets the structure limitation recited in claim 1.
The amended feature “R is at least one rare-earth element consisting of at least one light rare-earth element” encompass a scope that R includes two rare-earth elements: one is a light rare-earth element and one is a heavy rare earth element. Further, an R-T-B magnet may contain additional elements other than R, T and B. Thus, heavy rare earth elements are not excluded in claim 1 and claim 1 is met by Hu.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Hu (2015/0348685), and further in view of JP’026 (JP 2007-266026A, IDS dated 05/25/2022).
Regarding claim 2, Hu is silent about the C content. JP’026 teaches a method of making a sintered RTB magnet and discloses impurities such as O, C and N should be as low as possible in order to make a magnet having good magnetic properties (Page 3 to 6). JP’026 further discloses that a lubricant removal step is performed to reduce the carbon amount to 600 ppm or less (Pahe 6, last 6 paragraphs). Thus, it would be obvious to one of ordinary skill in the art to lower the carbon amount to 600 ppm or less by performing a lubricant removal step as taught by JP’026 in the process of Hu in order to make a magnet having good magnetic properties as disclosed by JP’026. The amount of carbon disclosed by JP’026 overlaps the recited carbon amount in claim 2 and thus the recited amount of carbon is a prima facie case of obviousness over Hu in view of JP’026. See MPEP 2144.05 I.
Response to Arguments
Applicant’s arguments dated 09/05/2025 have been fully considered but they are not persuasive.
The applicants argued that Hu specifies that Dy + Tb is 2 to 13.5 wt%. Hu does not meet the amended feature. Further, as discussed during the interview, it was agreed that the recitation of "An R- T-B based permanent magnet consisting of R2T14B main phase crystal grains and a grain boundary" excludes the heavy rare-earth element of Hu, overcoming the rejection.
In response, the amended feature “R is at least one rare-earth element consisting of at least one light rare-earth element” encompass a scope that R includes two rare-earth elements: one is a light rare-earth element and one is a heavy rare earth element. Further, an R-T-B magnet may contain additional elements other than R, T and B.
The limitation “magnet consisting of R2T14B main phase crystal grains and a grain boundary” in line 1-2 only defines that the magnet structure does not contain additional phases other than R2T14B main phase and grain boundary phase. This amendment limits the magnet structure, not the magnet composition.
Therefore, heavy rare earth elements are not excluded in claim 1 and claim 1 is met by Hu.
Conclusion
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/XIAOWEI SU/Primary Examiner, Art Unit 1733