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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/18/2026 has been entered.
Status of claims
Claims 3-5, 9, 16-19, 21-22, and 24 have been cancelled; Claims 1-2, 7, and 20 have been amended; claims 7-8 and 11-13 are withdrawn as non-elected claims; Claims 1-2, 6, 10, 14-15, 20, and 23 remain for examination, wherein claim 1 is an independent claim. It is acknowledged of the Applicant’s “132 Declaration” filed on 11/18/2025. It is noted the Application’s “Terminal Dis claimer” filed on 10/14/2025, which is disapproved since the filing date for 17/635156 in the text does not match the record in view of the “review of the Terminal Disclaimer” dated 10/19/2025.
Previous Rejections/Objections
Previous objections of Claims 1 and 18-19 because of informalities are withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 11/18/2025.
Previous rejection of Claims 1-2, 5-6, 10, 14-15, 18-20, and 23-24 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 11/18/2025.
However, in view of the Applicant’s “Arguments/Remarks with amendment” filed on 11/18/2025, and newly recorded reference(s). a new ground rejection has listed as following:
Claim Objections
Newly amended claim 7 is objected to because of the following informalities: there is typo in the instant claim for limitation of “Al/RH: 0.12-2.700.489-1.9”. 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.
Claim(s) 1-2, 6, 10, 14-15, 20, and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dong et al (US-PG-pub 2011/0074530 A1, thereafter PG’530) alone, or further in view of Yan et al (US-PG-pub 2011/0234350 A1, thereafter PG’350).
Regarding claims 1-2, 6, 14-15, 20 and 23, PG’530 teaches a Nd-Fe-B permanent magnet (Abstract, claims, and examples of PG’530), which reads on the claimed Nd-Fe-B based permanent material as recited in the instant claims. The comparison between the claimed alloy composition ranges and the alloy disclosed in Example #E7 in table 1 of PG’530 is listed in the following table. All of the essential alloy composition ranges disclosed by the Example #E7 in table 1 of PG’530 are within the claimed alloy composition ranges. The ratios of B/R calculated by the Example #E7 in table 1 of PG’530 read on the claimed in the instant claims 1 and 20. The ratios of R/RH calculated by the Example #E7 in table 1 of PG’530 read on the claimed in the instant claim 2. PG’530 reads on the R in the alloy (cl.23). PG’530 teaches including 0.2wt% Zr in the Example #E7 in table 1 of PG’530. Nb is in the same M group as Zr (par.[0012] of PG’530). It would have been obvious to one of ordinary skill in the art at the time the invention was made to replace Zr with the functional equivalent element Nb as disclosed in PG’530 with expect success. MPEP 2144 06. The Example #E7 in table 1 of PG’530 does not specify the claimed Al/RH range of 0.489-1.9 as claimed in the instant claim 1. However, Al/RH is considered as a general formula fully depended on the amount of alloy elements Al and RH in the alloy. PG’530 teaches including 2.5wt% Dy in the Example #E7 in table 1 of PG’530 and adjusting Al in range 0.3-3 wt% (par.[0013] of PG’530), which overlaps the claimed Al range. It is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art. In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v. Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. In the instant case, in the absence of evidence to the contrary, the selection of the proportions of Al and RH from PG’530 in order to meet the claimed equation would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688.
Element
From instant Claim 1 and 6 (wt%)
Example #E7 in table 1 of PG’530 (wt%)
within range
(wt %)
R including RL and RH
28-33 (cl.1)
28-31 (cl.6)
Nd: 11.54 (RL)
Pr: 16.25 (RL)
Dy (2.5)
Total 30.3
30.3
RH
0.5-2.5
Dy: 2.5
2.5
Cu
0.35-0.55
0.2
Adjustable: 0.3-3 (par.[0013])
Overlapping
0.35-0.55
Al;
0.44-0.95
0.4
Adjustable: 0.3-3 (par.[0013])
Overlapping
0.44-0.95
Co
0.85-1.5
2
Adjustable 0.1-5 (par.[0015])
Overlapping
0.85-1.5
B
0.855-1.05
1.03
1.03
Fe
66-69
Balance
overlapping
Selected one form Nb, Zr, Ti, and Hf
Nb:0-0.5;
Zr: 0-0.3;
Ti: 0-0.3
Zr: 0.2
Nb is in the same metal group as Zr (par.[0012])
Nb
Zr: 0.2
B/R
0.033-0.037
0.0339
0.0339
Al/RH
0.489-2.7
0.16
Al: 0.3-3 (par.[0015])
--
overlapping
From instant Claim 2
Example #E7 in table 1 of PG’530 (wt%)
Optionally
RH/R: >0 to 0.11
0.082
0.082
From claim 14
Example #E7 in table 1 of PG’530 (wt%)
Optional B
0.85, 0.9, 0.95, 1.2, 1.3, or 1.5
1.03
1.03
From claim 15,
Example #E7 in table 1 of PG’530 (wt%)
M: Nb or Ti
0.15-0.25
Nb is in the same metal group as Zr (par.[0012])
with M amount 0.3-3
Nb
From claim 20
Example #E7 in table 1 of PG’530 (wt%)
Optional B/R
0.033, 0.0331, 0.0332, 0.0339, 0.036
0.0339
0.0339
From claim 23
(wt%)
Example #E7 in table 1 of PG’530 (wt%)
Within range
One of conditions (1)-(6)
(1): R: 29-33
R: 30.3
30.3
Still regarding claim 1, PG’530 does not specify the R-rich intergranular phase as claimed in the instant claim. PG’350 teaches a sintered Nd--Fe--B permanent magnet with high corrosion resistance (Abstract, claims, and examples of PG’350). PG’350 teaches including different intergranular-phases (Fig.2-7 and par.[0015]-[0020] of PG’350), more specifically, Cu-Al-Co included R-rich phases (par.[0017] and [0019] of PG’350). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to form a Cu-Al-Co contained R-rich phase in the R-T-B magnet during sintering process as demonstrated by PG’350 in the alloy of PG’530 since PG’350 and PG’530 teach the same sintered R-T-B based magnet as claimed throughout whole disclosing range.
Regarding claim 10, PG’530 teaches that the permanent magnet such as mixed rare-earth permanent magnet for various devices such as computer, motor, generator, motor vehicle, wind turbine, windmill, etc. (par.[0002] of PG’530).
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-2, 6, 10, 14-15, 20, and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of 17/635156 (PG-Pub 2022/0301754 A1).
Regarding Claims 1-2, 6, 10, 14-15, 20, and 23, although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of 17/635156 (PG-Pub 2022/0301754 A1) teaches the same R-T-B based permanent magnet material with all of alloy composition ranges overlap the claimed alloy composition ranges as claimed in the instant claims and the R-rich grain boundary phase disclosed in claims of 17/635156 (PG-Pub 2022/0301754 A1), which create a prima facie case of obviousness. MPEP 2144 05 I. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the ranges on alloy composition ranges from the disclosure of claims 1-20 of 17/635156 (PG-Pub 2022/0301754 A1) to meet the claimed alloy composition ranges since claims 1-20 of 17/635156 (PG-Pub 2022/0301754 A1) teaches the same R-T-B based permanent magnet material as claimed throughout whole disclosing range. Thus, no patentable distinction was found in the instant claims compared with claims 1-20 of 17/635156 (PG-Pub 2022/0301754 A1).
This is a provisional obvious-type double patenting rejection since the conflict claims in the copending application have not in fact been patented.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-2, 6, 10, 14-15, 20, and 23 have been considered but they are moot in view of the new ground rejection as stated as above. Regarding the Applicant’s “132 Declaration” filed on 11/18/2025, which has been fully considered but is insufficiently overcome the rejections as stated above since Firstly, there is no any properties for example, Br, Hcj, BHmax, and/or bending strength has been claimed in the instant claims; Secondly, to show the criticality of the ratio of Al/RH, the comparison data should compared with the closest example in the cited prior art(s) (in this case, the Example #E7 in table 1 of PG’530); Finally, it is noted that the working example #4 in table 1-3 of US-PG-pub 2023/0021711 A1—corresponding to the specification of the instant application, which has 0.133 of Al/RH, it has Br ≥13.18 kOe and BHmax ≥41.76kGs, which contrary to the criticality of the ratio of Al/RH as argued.
The Applicant’s arguments have been listed in the following:
1, the cited prior art(s) does not specify the Al/RH range and it has criticality in term of the alloy’s properties;
2, ODP rejection has been overcome by the Applicant’s “Terminal Disclaimer” filed on 10/14/2025.;
In response,
Regarding the argument 1, The arguments related to the Applicant’s “132 declaration” can refer to the response to the arguments above.
Regarding the argument 2, regarding the Application’s “Terminal Dis claimer” filed on 10/14/2025, which is disapproved since the filing date for 17/635156 in the text does not match the record in view of the “review of the Terminal Disclaimer” dated 10/19/2025.
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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/JIE YANG/Primary Examiner, Art Unit 1734
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