Detailed Office Action
Notice of Pre-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
Information Disclosure Statement
The information disclosure (IDS) submitted on 07/11/2025 was filed after the mailing date of the Non-Final on 04/09/2025. The submission is in compliance with the provisions of 37 CFR 1.97 (the fee was submitted). Accordingly, the IDS has been considered by the examiner.
Response to Amendments
The amendment filed on 07/17/2025 has been entered. Claims 26 – 30 are newly added and find support in at least the original claim set. Claims 17 – 18 and 24 has been canceled. Claims 9 – 10, 16, 19 – 20, and 26 – 29 are withdrawn as being directed to a non-elected invention.
Applicant has overcome the previous objections to claims 14, 21, and 22. The objection to claim 15 remains (a space is needed between “mas%” and B)
Applicant has overcome the previous rejection under 112(b)
Claim Objections
Claim 15 is objected to because of the following informalities:
Claim 15 is objected to because of the following informalities: The compositional ranges for the sub-alloy are missing “wherein mas% refers to the mass percentage relative to the heavy rare earth alloy” and should be included for consistency and clarity purposes.
Claim Rejections – U.S.C. §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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 7 – 8, 12 – 13, 21 – 23, 25 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over LV (US2015/0071810, cited with the OA of 04/09/25)
Regarding claim 7, LV teaches forming a rare earth permanent magnet R-T-B containing Nd [Abstract, Title], wherein the formation is done by mixing an auxiliary phase alloy and mother alloy [0009], meeting the claimed limitation of “raw material”. The master alloy interpreted as the claimed main alloy and the auxiliary phase alloy interpreted as the claimed sub-alloy.
The mother alloy contains [0015]:
at least Nd and one or more other rare earth elements, meeting the claimed limitation of “R” comprising Nd. The total amount of Nd and the one or more other rare earth elemenet is 28.5 – 33 wt%, which falls within the claimed range of “R”.
An additional element “X” which can be Co, Mn, Cu, Al, Ti, Ga, Zr, V, Hf, W, Nb, or a mixture thereof, meeting the claimed limitation of “M”. Present in a range of 0 – 5 wt%, which overlaps with the claimed range of “M”.
B in a range of 0.9 – 1.2 wt%, which overlaps with the claimed range.
Fe in a range of 60.8 – 70.6 wt% (based on the range of other components disclosed), which overlaps with the claimed range.
The mother alloy does not require any element that this not listed in the claimed composition, meeting the limitation of “consisting of”.
The auxiliary alloy contains [0009]:
R which is one or more rare earth element of Gd, Tb, Dy, Ho, or a mixture thereof, meeting the claimed limitation of RH consisting of one or more of the listed elements. Present in a range of 30 – 100 wt%, which overlaps with the claimed range of “RH”
An additional element(s) “M” which includes Zr and/or Ti, meeting the claimed limitation of “X”. Present in a range of 0 – 70 wt%, which overlaps with the claimed range of “X”.
B can be present (but is not required) as part of “M” in a range of 0 – 70 wt%, which overlaps with the claimed range.
Fe is the balance (~0 – 70 wt%) which overlaps with the claimed range based on the range of other components disclosed.
The auxiliary phase alloy does not require any element that is not listed in the claimed composition, meeting the limitation of “consisting of”.
Lastly, LV teaches that the ratio of the auxiliary alloy included is in a range of approximately 0 – 25 wt%, which overlaps with the claimed range [0011].
With regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “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)”
Regarding claim 8, LV teaches the invention as applied in claim 7. LV teaches that the ratio of the auxiliary alloy included is in a range of approximately 0 – 25 wt%, which overlaps with the claimed range [0011]. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
The other limitations of claim 8 are optional and as such, LV meets claim 8. However, for purposes of compact prosecution, LV overlaps with and/or meets the limitations the limitations required [0015].
Regarding claim 12, LV teaches the invention as applied in claim 8. LV teaches that R of the main phase alloy comprises Nd and one or more other rare earth elements in a total range of 28.5 – 33 wt% [0009]. Wherein one or more other rare earth elements of Pr, Dy, and Tb can be selected in amounts overlapping the claimed ranges of ~0 – 33 wt%. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
The other limitations of claim 12 are optional and as such, LV meets claim 12.
Regarding claim 13, LV teaches the invention as applied in claim 8. LV teaches the main phase alloy contains an additional element “X” which can be Co, Mn, Cu, Al, Ti, Ga, Zr, V, Hf, W, Nb, or a mixture thereof, meeting the claimed limitation of “M” [0015]. Present in a range of 0 – 5 wt%, which overlaps with the claimed range of “M”. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
Regarding claim 21, LV teaches the invention as applied in claim 7. LV teaches the auxiliary alloy contains R which is one or more rare earth element of Gd, Tb, Dy, Ho, or a mixture thereof, meeting the claimed limitation of RH consisting of one or more of the listed elements. Present in a range of 30 – 100 wt%, which overlaps with the claimed range of “R” [0009]. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
The other limitations of claim 21 are optional and as such, LV meets claim 21. For purposes of compact prosecution, LV teaches ranges that overlaps with the other claimed ranges.
Regarding claim 22, LV teaches the invention as applied in claim 21. LV teaches the auxiliary alloy contains R which is one or more rare earth element of Gd, Tb, Dy, Ho, or a mixture thereof, meeting the claimed limitation of RH consisting of one or more of the listed elements. Present in a range of 30 – 100 wt% [0009], which overlaps with the claimed range of “RH comprises Tb, Dy, Ho, Gd”. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
The other limitations of claim 22 are optional and as such, LV meets claim 22.
Regarding claim 23, LV teaches the invention as applied in claim 7. LV teaches the auxiliary alloy contains an additional element(s) including Zr and/or Ti in a range of 0 – 70 wt% [0009], which overlaps with the claimed range. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
Regarding claim 25, LV teaches the invention as applied in claim 7. LV teaches the auxiliary alloy contains an additional element(s) including Zr and B in a range of 0 – 70 wt% [0009], which overlaps with the claimed range. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
Regarding claim 30, LV teaches the invention as applied in claim 7. LV teaches the auxiliary alloy contains R which is one or more rare earth element of Gd, Tb, Dy, Ho, or a mixture thereof, meeting the claimed limitation of RH being Dy.
Response to Arguments
Applicant’s amendments and arguments thereto have overcome the previous rejections of:
Claims 7 – 8, 12 – 13, and 21 – 23 under 35 U.S.C. 103 as being unpatentable over Deng (CN103426578, using espacenet translation, cited in the IDS of 12/19/22))
Claims 7 – 8, 12 – 13, and 21 – 25 under 35 U.S.C. 103 as being unpatentable over Tamura (US2002/0033205)
However, upon further consideration, a new rejection is made of:
Claims 7 – 8, 12 – 13, 21 – 23, 25 and 30 under 35 U.S.C. 103 as being unpatentable over LV (US2015/0071810, cited with the OA of 04/09/25)
Allowable Subject Matter
Claim 14 is allowed. The following is an examiner’s statement of reasons for allowance:
Regarding claim 14, the prior art does not anticipate or reasonably render obvious the cumulative limitations of claim 14, with particular attention to the combination of main alloy composition and sub-alloy composition. The closest prior art is LV (US2015/0071810) which discloses an overlapping composition to the main alloy and sub-alloy and an overlapping ratio thereof. However, based upon the preponderance of the evidence, LV does not reasonably suggest the particular combination of elements and their respective ranges for each of the main alloy and sub-alloy. As such, the disclosure of LV does not anticipate or reasonably render obvious the limitations of claim 14. Furthermore, the prior art does not teach or suggest arriving at the claimed combination of elements and their respective amounts of the main alloy and sub-alloy.
Claim 15 would be allowable if rewritten to overcome the objection set forth in this Office action. The following is an examiner’s statement of reasons for allowance:
Regarding claim 15, the prior art does not anticipate or reasonably render obvious the cumulative limitations of claim 15, with particular attention to the combination of main alloy composition and sub-alloy composition. The closest prior art is LV (US2015/0071810) which discloses an overlapping composition to the main alloy and sub-alloy and an overlapping ratio thereof. However, based upon the preponderance of the evidence, LV does not reasonably suggest the particular combination of elements and their respective ranges for each of the main alloy and sub-alloy. As such, the disclosure of LV does not anticipate or reasonably render obvious the limitations of claim 15. Furthermore, the prior art does not teach or suggest arriving at the claimed combination of elements and their respective amounts of the main alloy and sub-alloy.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738