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 .
Election/Restrictions
Claims 7-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/04/25.
Applicant’s election without traverse of claims 1-6 in the reply filed on 11/04/25 is acknowledged.
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 instant claims contain the transitional phrase “comprising”. Per MPEP 2111.03 ‘The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps'. This open-ended definition has been taken into consideration in the following rejections.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over “Effects of REFe2 on microstructure and magnetic properties of Nd-Ce-Fe-B sintered magnets” by Zhang et al. (hereinafter Zhang).
Regarding claim 1, Zhang discloses a final cerium magnet; and the final cerium magnet comprises a 2-14-1 main phase, an enhanced REFe2 phase, and a rare earth-enriched phase; the 2-14-1 main phase is selected from the group consisting of a (Ce,RE")₂Fe₁₄B main phase, ((Ce,Nd)2Fe14B main phase (page 23, para 1)), and a (Ce,RE',RE”)2Fe₁₄B main phase, ((Pr,Nd,Ce)2Fe14B main phase (page 23, para 3)), the enhanced REFe₂ phase is selected from the group consisting of a (Ce,RE")Fe₂ phase and a (Ce,RE',RE")Fe₂ phase; and RE" is one or more selected from the group consisting of Pr and Nd (page 23, para 1 and 3). The reference does not expressly disclose “(Ce,RE)Fe2” or “(Ce,RE’RE”)Fe2” as written in the instant claim. However, the reference does teach both CeFe2 and REFe2. Therefore, (Ce,RE”)Fe2 and (Ce,RE’,RE”)Fe2 are understood to be present. The magnet also includes a rare-earth enriched phase (page 23, para 1). The REFe2 and RE rich phases are also disclosed as grain boundary phases (page 24, para 2).
Every limitation prior to the recitation of the final cerium magnet is drawn to a method of obtaining the final cerium magnet, particularly citing “a grain boundary diffusion cerium-based magnet containing a REFe2 phase, wherein an original cerium magnet has a chemical composition of (Cex,RE’1-x)aFe99-a-bB0.9-1.2TMb, x is greater than or equal to 20 wt.% and less than or equal to 85 wt.%, a is greater than or equal to 28 and less than or equal to 35, and b is greater than or equal to 0 and less than or equal to 10; TM is one or more selected from the group consisting of Co, Al, Cu, Ga, Nb, Mo,Ti, Zr, and V; the original cerium magnet is prepared by sintering or hot pressing, and comprises a 2-14-1 main phase, the REFe2 phase, and a rare earth-enriched phase; the REFe2 phase is selected from the group consisting of a Ce Fe2phase and a (Ce,RE')Fe2 phase, and RE' is one or more selected from the group consisting of La, Pr, Nd, Pm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb, Lu, and Y; and
an RE" element of a rare earth diffusion source is diffused into the original cerium magnet through the grain boundary diffusion at a melting point of the REFe2 phase as a diffusion temperature; a treated original cerium magnet is directly cooled to room temperature or cooled to room temperature after tempering to obtain a final cerium magnet”. These are product-by-process limitations.
Zhang discloses an overlapping magnet, as discussed above. Zhang does not explicitly teach the claimed process as written, however, MPEP 2113 states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
MPEP 2113 also states “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979)”. In the instant case, it is found that the instantly claimed process of making the claimed product does not impart any structural or functional characteristics to the claimed product. The limitations directed to the method for producing the claimed magnet are not considered to add patentable weight to the examination of the product claims.
It is well settled that if the examiner can find a product in the prior art that is the same or so similar as to have been obvious, the burden can be shifted to the applicant to demonstrate that the process for producing the composition somehow imparts a patentable distinction to the composition under examination.
Regarding claim 2, Zhang discloses the grain boundary diffusion cerium-based magnet containing a REFe₂ phase according to claim 1, wherein the RE" element (Nd) forms a (Ce,RE")₂Fe₁₄B main phase (page 23, para 1).
Regarding claim 3, Zhang discloses the grain boundary diffusion cerium-based magnet containing a REFe₂ phase according to claim 1, but is silent regarding the limitation “wherein an anisotropy field of the RE"2Fe₁₄B phase is larger than that of the Ce₂Fe₁₄B phase or the (Ce,RE')₂Fe₁₄B phase”. However, Zhang does teach an overlapping magnet comprising the same main phases and similar grain boundary phases. See MPEP 2112.01(I), which states that ‘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..."When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not…"…Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product’. As discussed above, the magnets overlap. Therefore, one of ordinary skill in the art would expect overlapping properties including but not limited to a larger anisotropy field under similar conditions, absent evidence to the contrary.
Claims 4-6 are product by process claims. Zhang discloses the grain boundary diffusion cerium-based magnet containing a REFe₂ phase according to claim 1. As discussed above, Zhang does not explicitly teach the claimed process as written, however, see MPEP 2113 cited above. In the instant case, it is found that the instantly claimed process of making the claimed magnet does not impart any structural or functional characteristics to the claimed product.
The limitations directed to the method for producing the claimed composition are not considered to add patentable weight to the examination of the product claims. It is well settled that if the examiner can find a product in the prior art that is the same or so similar as to have been obvious, the burden can be shifted to the applicant to demonstrate that the process for producing the composition somehow imparts a patentable distinction to the composition under examination.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNNE EDMONDSON whose telephone number is (571)272-2678. The examiner can normally be reached M-F 10-6:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/L.E./Examiner, Art Unit 1734
/Matthew E. Hoban/Primary Examiner, Art Unit 1734