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 .
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 l.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and the fee set forth in 37 CFR l.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/16/2026 has been entered.
Response to Amendments / Declaration and Status of Previous Rejections
The declaration under 37 CFR 1.132 filed 10/16/2026 is insufficient to overcome the rejection of claim claims 1-2, 4, 11 and 15-21, based upon Zhong Zhenchen [CN109434092A] (machine translation) under 35 U.S.C.103 as set forth in the last Office action because:
Applicant’s argument is about “that the references fail to show certain features of the invention, (1) the adjustment of abundance ratio of Ti, Ga, Al, Cu and Co in the composition has a synergistic effect and (2) Hcj can reach 20.52-23.2 kOe, Br can reach 12.5-13.5 kGs or more, has been acknowledged, but does not seem persuasive, as because, those are not recited in the rejected claim. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Therefore, the 35 USC § 103 rejections rejection of claims 1-2, 4, 11 and 15-21 over Zhong Zhenchen [CN109434092A] (machine translation) have been maintained.
In response to applicant's argument about the with respect to grain boundary phase Rx-(Cua-Gab-Alc)y with high Cu and low Al and magnetic properties, that applied to claim 3 and 6, seems persuasive and therefore, the rejection of the claim 3 has been withdrawn.
However, as claim 3 depends from claim 1, therefore, claim 3 has been objected (please see the allowable subject matter section, associated with this office action for further details).
Status of Claims
An amendment, filed 10/16/2026 is acknowledged.
Claims 1-4, 6-8, 10-11 and 13-21 are pending.
Claim 5, 9, and 12 are canceled.
Claims 1-2, have been amended, however, amendments find support in the specification, therefore, no new matter is presented.
Claims 7-9, 10, and 13-14 are withdrawn from the consideration.
Claims 15-21 are newly added, however, find support in the specification, therefore, no new matter is presented.
Therefore, claims 1-4, 6, 11 and 15 - 21 remain for examination on the merits for this office action.
Claim Objections
Applicant is advised that should claim 2 be found allowable, claim 15-17, will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Because, claim 2 and claims 15-17 depend from claim 1, and
claim 15 recites Ti content that is same as recited in claim 2,
claim 16 recites Ga content is same as recited in claim 2,
claim 17 recites Al content is same as recited in claim 2,
therefore, the scope of the claim 2, and claim 15-17 are the same scope of claim 2, i.e. duplicate claims.
Applicant is advised that should claim 4 be found allowable, claim 19-21, will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Because, claim 4 and claims 19-21 depend from claim 1, and
claim 19 recites the R-T-B sintered magnet composition that is same as recited in claim 4,
claim 20 recites the R-T-B sintered magnet composition that is same as recited in claim 4,
claim 21 recites the R-T-B sintered magnet composition that is same as recited in claim 4,
therefore, the scope of the claim 4, and claim 19-21 are the same scope of claim 2, i.e. duplicate claims.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claim Rejections - 35 USC § 112 (d)
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 ejected 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.
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Claim 4 recites following two alloys, wherein the Cu content is outside of the range as recited in the claim 1 upon which it depends.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-2, 4, 11 and 15-21 are rejected under 35 U.S.C. 103 as being unpatentable over Zhong Zhenchen [CN109434092A] (machine translation).
Regarding claim 1, Zhong teaches an R-T-B-based sintered magnet [Section 0011] and the following composition an R-T-B-based sintered magnet:
Element (mass %)
Instant Claim 1
Zhong's composition wt. % [Section 0025]
Within/Overlapping Range
R (Nd)
29.0 – 33.0
28-33 (PrNd)
Overlapping
B
0.86 - 0.93
0.92 – 1.05
Overlapping
Ti
0.05 - 0.25
0 – 3.0
Overlapping
Ga
0.3 – 0.5, exclusive of 0.5
0 – 3.0
Overlapping
Al
0.6 – 1.0 exclusive of 0.6
0 – 3.0
Overlapping
Cu
0.45 – 0.55
0 – 3.0
Overlapping
T (Fe and Co)
Balance
Co : 0-3.0
Fe: Balance
Overlapping
Zhong’s composition for all elements is overlapping with the as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected and produced a composition from the teachings of Zhong that falls within the instantly-claimed ranges, because “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)” [See MPEP § 2144.05.I].
Regarding claim 2 and 15-17, all the discussions above claim 1 are applicable for claim 2, and 15-17, wherein Zhong already teaches wherein R is 28-33 (PrNd) wt. % [Section 0025].
Zhong’s composition for all elements is overlapping with the as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected and produced a composition from the teachings of Zhong that falls within the instantly-claimed ranges, because “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)” [See MPEP § 2144.05.I].
The similar rejection is applied for other element, RH or B, or Ti, or Ga, or Al, as shown an overlapping composition above in the claim 1.
Regarding claim 4 and 19-21, all the discussions above claim 1 are applicable for claims 4 and 19-21, wherein Zhong already teaches an overlapping composition [Section 0013].
Zhong’s composition is overlapping with all elements as recited percentages in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected and produced a composition from the teachings of Zhong that falls within the instantly-claimed ranges, because “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)” [See MPEP § 2144.05.I].
Regarding claim 11, all the discussions above claim 1 are applicable for claim 11, wherein Zhong already teaches 0-3% cobalt [Section 0025].
Zhong’s content of cobalt is overlapping the as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected and produced a composition from the teachings of Zhong that falls within the instantly-claimed ranges, because “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)” [See MPEP § 2144.05.I].
Regarding claim 18, all the discussions above claim 1 are applicable for claim 18, wherein Zhong already teaches an overlapping composition [Section 0013].
Zhong’s composition is overlapping with all elements as recited percentages in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected and produced a composition from the teachings of Zhong that falls within the instantly-claimed ranges, because “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)” [See MPEP § 2144.05.I].
Allowable Subject Matter
Claim 3 and 6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claim 3, all the discussions above for claim 1 are applicable for claim 3. But Zhong is silent about the grain boundary phase comprises Rx-(Cua-Gab-Alc)y and rare earth oxide phase. In addition, Applicant’s argument about the criticality about “the adjustment of abundance ratio of Ti, Ga, Al, Cu and Co in the composition has a synergistic effect and a grain boundary phase Rx-(Cua-Gab-Alc)Y with high Cu and low Al is formed during the aging phase, and the coercivity and the remanence of the sintered magnet are improved”. While Zhong teaches overlapping composition including Ti, Ga, Al, Cu and Co [Section 0025] and Zhong’s aging comprising the first aging (tempering) temperature is 900°C and the second aging (tempering) temperature is 490°C to obtain the required magnet material as similar aging as described in the instant specification [Section 0049], but Zhong's Hcj is 16.85-21.55kOe, which is out of the claimed range. Therefore, it would not be expected to have the similar grain boundary phase in Zhong's magnet.
Claim 6 is depends on claim 3, and would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, for the same reason.
Response to Arguments
Applicant’s arguments filed dated 10/16/2026 regarding the 35U.S.C. 103 rejection of claims 1-4, 6 and 11 in the previous office action, dated 07/03/2025 have been fully acknowledged, and partially persuasive. Because,
In response to applicant's argument with respect to claim 1, “that the references fail to show certain features of the invention, (1) the adjustment of abundance ratio of Ti, Ga, Al, Cu and Co in the composition has a synergistic effect and (2) Hcj can reach 20.52-23.2 kOe, Br can reach 12.5-13.5 kGs or more, has been acknowledged, but does not seem persuasive, as because, those are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In addition, the specification has no support for “the adjustment of abundance ratio”, the instant specification only mention “the adjustment of abundance ratio” in a paragraph [0070], but there is no definition of what does “the adjustment of abundance ratio” mean, and there is no description and/or any statement how the adjustment of abundance ratio is carried out. In this case, claim 1 recites a NdFeB magnet composition, Zhong also teaches a NdFeB magnet composition is overlapping with the as recited in the instant claim and provided as shown in the rejection as taught in Zhong’s [Section 00025 and 0026].
In response to applicant's argument with respect to claim 1, that, the instant claims are patentable over Zhong as Zhong discloses broad range of copper. This is not found persuasive because as stated in ln re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003): “In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness .... We have also held that a prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. v. Banner, 778 F.2d 775,783 (Fed. Cir. 1985).” In this case, Zhong teaches the broader teachings of copper content reasonably suggest, and Cu content of 0.45-0.55 is within the Zhong’s disclosed range also falling within the instantly claimed ranges and as such range presents a prima facie case of obviousness over the instantly claimed Cu content.
Therefore, the 35 USC § 103 rejections rejection of claims 1-2, 4, 11 and 15-21 over Zhong Zhenchen [CN109434092A] (machine translation) have been maintained, (please see the section of the 35 USC § 103 rejection associated with this office action for further details).
In response to applicant's argument about the with respect to grain boundary phase Rx-(Cua-Gab-Alc)y with high Cu and low Al and magnetic properties, that applied to claim 3, seems persuasive and therefore, the rejection of the claim 3 has been withdrawn. However, as claim 3 depends from claim 1, therefore, claim 3 has been objected (please see the allowable subject matter section, associated with this office action for further details).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NAZMUN NAHAR SHAMS whose telephone number is (571)272-5421. The examiner can normally be reached M-F 11:00 AM-7:00PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached on (571)2726297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NAZMUN NAHAR SHAMS/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738