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 .
Response to Amendment and Status of Claims
Applicant’s amendment filed 01/12/2026 has been entered.
Amended: claim 1
Cancelled: claims 3 and 5-7
Pending and under examination: claims 1-2, 4, and 8-14
Response to Arguments
Applicant’s arguments filed 01/12/2026 have been fully considered but they are not persuasive.
Regarding the applicant’s request pertaining to drawings, the examiner maintains that no drawings were filed, nor do the priority documents have any drawings themselves.
The applicant’s arguments characterized by “difference 1” (see pages 4-5 of arguments), the argument is not found persuasive because Table 3 only shows data within the claimed range and not data outside of the claimed range; to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (MPEP 716.02(d) II.). With regard to assertions of “an excellent coercive force enhancement effect can be realized while minimizing the decrease in residual magnetization”, this does not demonstrate criticality of ranges or unexpected results. Applicants have the burden of explaining proffered data (716.02(b)). "It is well established that, while a change in the proportions of a combination shown to be old, such as is here involved, may be inventive, such changes must be critical as compared with the proportions used in the prior processes, producing a difference in kind rather than degree."); In re Wells, 56 F.2d 674, 675 (CCPA 1932) (MPEP 2144.05 III. A.).
The applicant’s arguments characterized by “difference 2” (see pages 4-5 of arguments) are not found persuasive because Table 2 does not demonstrate criticality of the claimed ranges; rather, it supports a conclusion of obviousness of Ito’s ranges because the values range as high as 15% diffusion amount; to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (MPEP 716.02(d) II.). With regard to assertions of “an excellent coercive force enhancement effect is realized[…]while the decrease in residual magnetization is minimized”, this does not demonstrate criticality of ranges or unexpected results. Applicants have the burden of explaining proffered data (716.02(b)). "It is well established that, while a change in the proportions of a combination shown to be old, such as is here involved, may be inventive, such changes must be critical as compared with the proportions used in the prior processes, producing a difference in kind rather than degree."); In re Wells, 56 F.2d 674, 675 (CCPA 1932) (MPEP 2144.05 III. A.).
With regard to the currently-claimed diffusion metal range of 6-9 parts by weight, Ito teaches that the “contact alloy” amount is 10% [0094], which is close, but not overlapping with the claimed range of. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). 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 (MPEP 2144.05 I.). A POSITA would additionally find it obvious to vary the “contact alloy” amount to lower than 10%, such as from 6-9%, if higher proportions of rare earth elements (such as Dy, Tb, Nd, or Pr) are present in the contact alloy, because the magnetic properties would be stronger and therefore less of the material would be needed to achieve a similar effect of the magnetic properties.
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.
Claims 1-2, 4, and 7-14 are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. (US 20160141083 A1).
Regarding claim 1, with regard to the claimed “A rare-earth magnet comprising: a rare-earth magnet precursor including a composition of (R1(1-x)R2x)yFe(100-y-z-v-w)CozBvTM1w in which R1 comprises At least one of Nd or Pr, and R2 comprises Ce”, Ito teaches a rare earth magnet comprising a crystal grain having an overall composition of (R2(1-x)R1x)yFe100-y-w-z-vCowBzTMv, wherein R2 is at least one of Nd, Pr, Dy and Tb, and R1 is an alloy of at least one or two or more of Ce, La, Gd, Y and Sc (Abstract).
With regard to the claimed “and a diffusion metal including a composition of (LRE(100-p-q)HREp)TM2q, and a portion of the composition of (LRE(100-p-q)HREp)TM2q is diffused from a surface of the rare-earth magnet precursor, wherein the LRE in the diffusion metal comprises light rare earth, and the HRE comprises heavy rare earth”, Ito teaches a step of diffusing and impregnating a modifying metal composed of an R2 element or an R2-TM alloy into the rare earth magnet precursor [0027], and further teaches that the R2 element can be at least one of Nd, Pr, Dy, and Tb (meeting the claimed LRE and HRE), and the TM element can be at least one of Ga, Al, Cu, Au, Ag, Zn, In, and Mn [0031].
With regard to the claimed (1) “…to an inside of the rare-earth magnet precursor” and (2) “…wherein the diffusion metal is positioned at an interface of a magnetic phase”, (1) diffusion necessarily means that the diffusion is being diffused from the outside “to an inside” (Ito, [0027]), which meets the limitation, and (2), the claim does not specify at which “interface of a magnetic phase” the diffusion metal is positioned.
A POSITA before the effective filing date of the claimed invention would understand that grain boundary diffusion of rare earth metals means that the rare earth metals are diffused into the grain boundaries, starting at the surface of the magnet (at which the “diffusion metal” initially lies), then inwards. As such, the diffused metal would then reside at a grain boundary in the interior of the magnet, i.e., be “at an interface of a magnetic phase”, which meets the latter limitation (2).
With regard to the claimed “wherein in the composition of the diffusion metal, the p is 5 to 50”, in the Nd70Cu30 diffusion alloy [0094], p would be equal to 30.
With regard to the claimed “and in the composition of the diffusion metal, the q is greater than 10 and less than 40”, Ito teaches that Dy and/or Tb can be used [0031] (which are heavy rare earth metals), however, although Ito does not explicitly teach a specific range for Dy and/or Tb, Ito does teach general ranges for Nd, which is in the same “R2” category as Dy and Tb. As such, Dy and Tb are considered as being entirely substitutable for Nd (from 0% to 100%), which meets the claimed range.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). 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 (MPEP 2144.05 I.).
Ito further teaches that the “contact alloy” amount is 10% [0094], which is close, but not overlapping with the claimed range of “wherein the diffusion metal is 6 to 9 parts by weight based on 100 parts by weight of the rare-earth magnet precursor”. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). 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 (MPEP 2144.05 I.). A POSITA would additionally find it obvious to vary the “contact alloy” amount to lower than 10%, such as from 6-9%, if higher proportions of rare earth elements (such as Dy, Tb, Nd, or Pr) are present in the contact alloy, because the magnetic properties would be stronger and therefore less of the material would be needed to achieve the same/similar effect of the magnetic properties.
Regarding claims 2 and 4, Ito teaches the magnet of claim 1, and as discussed in the rejection of claim 1, Ito meets the limitations.
Regarding claim 8, Ito teaches the magnet of claim 1, and teaches that TM is at least one of Ga, Al, Cu, Au, Ag, Zn, In and Mn (Abstract).
Regarding claims 9-13, Ito teaches the magnet of claim 1 and teaches in the Abstract:
x (equivalent to the claimed x) is greater than 0 and less than 1;
y (equivalent to the claimed y) is from 12 to 20;
w (equivalent to the claimed z) is from 0 to 8;
z (equivalent to the claimed v) is from 5.6 to 6.5; and
v (equivalent to the claimed w) is from 0 to 2.
All of the above overlap with the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). 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 (MPEP 2144.05 I.).
Regarding claim 14, Ito teaches the magnet of claim 1 above and teaches that the magnet is hot pressed in the first step (claim 4 of Ito).
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 Adil Siddiqui whose telephone number is (571)272-8047. The examiner can normally be reached M-F 10AM-6PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADIL A. SIDDIQUI/Primary Examiner, Art Unit 1735
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