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 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/24/2026 has been entered.
Status of Claims
Claims 5, 8 and 12 are cancelled. Claims 16-20 are withdrawn. Claims 1-4, 6-7, 9-11 and 13-15 are examined herein.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 9-11 and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being as being anticipated by Li (CN 1986856A).
Regarding claims 9 and 14-15, Li teaches an isotropic magnet alloy containing 11.6 at% Pr-Nd, 5.6 at% B, 1.9 at% Co, 0.15-0.60 at% Nb and having Nd2Fe14B main phase grains (Abstract; Examples 6-8), which meets the recited composition in claims 9 and 15. Li discloses that the grain size is 25-35 nm (claim 5), which meets the recited grain size in claim 9.
Li discloses that the flux density is 0.878-0.89 T, an intrinsic coercivity is 790-892 kA/m and a maximum energy product is 121-125 kJ/m3 (Examples 6-8), which meet the recited property limitations in claim 14. Li is silent on the grain boundary thickness for Examples 6-8, however, in view of the fact that Li discloses an alloy composition that meets the recited composition in claim 9, the alloy has grain size that meets the recited grain size in claim 9, and the magnet alloy has properties that meets the recited property limitation in claim 14, one of ordinary skill in the art would expect that the magnet alloy disclosed by Li to have a grain boundary phase that meets the recited width in claim 9. “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.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
Regarding claims 10-11 and 13, Li does not explicitly disclose that the grain boundary phase is a ferromagnetic phase comprising RE and Fe as main component as recited in claims 10-11 and that the main phase has a ratio of 70-99 vol% and the grain boundary phase has a ratio of 1-30 vol% as recited in claim 13, however, these limitations are determined by the alloy composition and the method of making the alloy.
Li discloses that the alloy is made by melting the alloy, injecting the molten metal onto a rotating roll at a mass flow rate of 0.5-0.7 kg/min and crystallizing the alloy at 650-700 ºC (Page 6-7; Examples 4-8), which meets the recited limitation in claim 16.
In view of the fact that Li teaches an alloy that meets the recited composition in claim 9, and a method of making the alloy that meets the recited limitation in claim 16, one of the ordinary skill in the art would expect that the alloy disclosed by Li to meet the limitations that the grain boundary phase is a ferromagnetic phase comprising RE and Fe as main component as recited in claims 10-11 and that the main phase has a ratio of 70-99 vol% and the grain boundary phase has a ratio of 1-30 vol% as recited in claim 13.
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.
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.
Claims 1-4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Li (CN 1986856A).
Regarding claims 1-4, Li teaches an isotropic magnet alloy containing 11.6 at% Pr-Nd, 5.6 at% B, 1.9 at% Co, 0.15-0.60 at% Nb and having Nd2Fe14B main phase grains (Abstract; Examples 6-8), which meets the recited RE and M amount in claim 1 and close to the recited B amount in claim 1. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Thus, the recited composition in claims 1 and 3-4 is a prima facie case of obviousness over Li. See MPEP 2144.05 I.
Li discloses that the grain size is 25-35 nm (claim 5), which meets the recited grain size in claim 1.
Li discloses that the flux density is 0.878-0.89 T, an intrinsic coercivity is 790-892 kA/m and a maximum energy product is 121-125 kJ/m3 (Examples 6-8), which meet the recited property limitations in claim 2. Li is silent on the grain boundary thickness for Examples 6-8, however, in view of the fact that Li discloses an alloy composition that is very close to the recited composition in claim 1, the alloy has grain size that meets the recited grain size in claim 1 and the magnet alloy has properties that meets the recited property limitation in claim 2, one of ordinary skill in the art would expect that the magnet alloy disclosed by Li to have a grain boundary phase that meets the recited width in claim 1. “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.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
Regarding claims 6-7, Li does not explicitly disclose that the grain boundary phase is a ferromagnetic phase comprising RE and Fe as main component as recited in claims 6-7, however, these limitations are determined by the alloy composition and the method of making the alloy.
Li discloses that the alloy is made by melting the alloy, injecting the molten metal onto a rotating roll at a mass flow rate of 0.5-0.7 kg/min and crystallizing the alloy at 650-700 ºC (Page 6-7; Examples 4-8), which meets the recited limitation in claim 16.
In view of the fact that Li teaches an alloy that meets the recited composition in claim 1, and a method of making the alloy that meets the recited limitation in claim 16, one of the ordinary skill in the art would expect that the alloy disclosed by Li to meet the limitations that the grain boundary phase is a ferromagnetic phase comprising RE and Fe as main component as recited in claims 6-7.
Claims 1-4, 6-7, 9-11 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (US 2021/0062310).
Regarding claims 1-2, Chen teaches an isotropic magnet alloy containing 8-14 at% rare earth, 0-2 at% M (M is a metal selected from the group consisting of Zr, Nb, Mo, Ti etc.), 5-7 at% B and the balance being Fe ([0043] to [0116]), which overlap the recited composition in claim 1. It would have been obvious to one of ordinary skill in the art to have selected the amount of R, B and M based on the ranges disclosed by Chen to make a magnet alloy that meets the recited magnet alloy in claim 1. See MPEP 2144.05 I.
Chen discloses that the alloy has an average grain size of 20-40 nm ([0080]), which meets the grain size limitation recited in claim 1. Chen discloses that the alloy contains a RE-rich phase or an α-Fe phase ([0119]), which meets the limitation that a grain boundary phase surrounding the main phase. Chen is silent on the thickness of grain boundary phase. However, in view of the fact that Chen discloses an alloy composition that meets the recited composition in claim 1, the alloy has grain size that meets the recited grain size in claim 1, the alloy has main phase ratio that meets the recited main phase ratio in claim 13, and the magnet alloy has properties that meets the recited property limitation in claim 2 (See Table 1 and Table 2), one of ordinary skill in the art would expect that the magnet alloy disclosed by Chen to have a grain boundary phase that meets the recited width in claim 1. “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.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
Regarding claims 3-4 and 15, Chen discloses that RE may contain Pr and T may contain Co ([0156] to [0165]), which meets the limitations recited in claims 3-4 and 15.
Regarding claims 6 and 10, Chen does not explicitly disclose that the grain boundary phase comprises RE and Fe as main component. However, Chen discloses an example containing (Nd0.75Pr0.25)11.2Fe83.4B5.4 ([0175]), which contains rare earth amount that is close to the recited rare earth amount in claims 1 and 9 and B amount that is lower than the stoichiometric composition of the RE2Fe14B main phase and meets the recited B amount in claims 1 and 9. One of ordinary skill in the art would expect that the alloy disclosed by Chen to meet the limitation that the grain boundary phase comprises RE and Fe as main component as recited in claims 6 and 10. “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.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
Regarding claim 7, Chen discloses that the alloy contains a RE-rich phase or an α-Fe phase ([0119]), which meets the limitation recited in claim 7.
Regarding claims 9 and 11, Chen teaches an isotropic magnet alloy containing 8-14 at% rare earth, 0-2 at% M (M is a metal selected from the group consisting of Zr, Nb, Mo, Ti etc.), 5-7 at% B and the balance being Fe and containing RE2Fe14B main phase (Abstract; [0043] to [0116]), which overlap the recited composition in claim 9. It would have been obvious to one of ordinary skill in the art to have selected the amount of R, B and M based on the ranges disclosed by Chen to make a magnet alloy that meets the recited magnet alloy in claim 9. See MPEP 2144.05 I. Chen discloses an example containing (Nd0.75Pr0.25)11.2Fe83.4B5.4 ([0175]), which contains rare earth amount that is close to the recited rare earth amount and B amount that meets the limitation that the B content is lower than the stoichiometric composition of the RE2Fe14B main phase.
Chen discloses that the alloy has an average grain size of 20-40 nm ([0080]), which meets the grain size limitation recited in claim 9. Chen discloses that the alloy contains a RE-rich phase or an α-Fe phase ([0119]), which are known grain boundary phase surrounding the main phase grains and the RE-rich phase meets the limitation recited in claim 11.
Chen is silent on the thickness of grain boundary phase. However, in view of the fact that Chen discloses an alloy composition that meets the recited composition in claim 9, the alloy has grain size that meets the recited grain size in claim 9, the alloy has main phase ratio that meets the recited main phase ratio in claim 13, and the magnet alloy has properties that meets the recited property limitation in claim 14 (See Table 1 and Table 2), one of ordinary skill in the art would expect that the magnet alloy disclosed by Chen to have a grain boundary phase that meets the recited width in claim 9. “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.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
Regarding claim 13, Chen discloses that the alloy contains at least 80 vol% main phase RE2Fe14B ([0079]), thus the grain boundary phase is 20 vol% or less and the main phase and grain boundary phase ratio disclosed by Chen overlaps the phase proportion in claim 13. 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). Thus, claim 13 is obvious over Chen.
Regarding claim 14, Chen discloses examples (See Table 1 and Table 2) that meet the recited properties in claim 14.
Affidavit
The Affidavit under 37 CFR 1.132 filed 02/24/2026 is insufficient to overcome the rejection based upon Li as set forth in the last Office action because:
The rejection is based on Examples 6-8 of Li. Li teaches an isotropic magnet alloy containing 11.6 at% Pr-Nd, 5.6 at% B, 1.9 at% Co, 0.15-0.60 at% Nb (Abstract; Examples 6-8). However, the “Similar product” presented in the Affidavit contains 7.4 at% Nd and 6.8 at% B, which has much lower rare earth content and much higher boron content. The applicants didn’t provide a TEM-EDX image on a sample that has the same composition as Examples 6-8 of Li. The applicants only provided a TEM-EDX on the “similar product” which has a different composition from Li’s Examples 6-8 and therefore is not valid evidence to show that Li does not have the claimed grain boundary phase.
Response to Arguments
Applicant's arguments filed 02/24/2024 have been fully considered but they are not persuasive.
First, the applicants argued that as shown in the declaration, the "auxiliary phase (FeαMß)" of Li's material, comprising components (Zr, Nb, Ti), which have a high melting point and form a strong crystal, exhibits poor wettability with respect to the main phase. This results in a structure with coarse crystals sprinkled, making it impossible to produce a structure where a fine grain boundary phase with a thickness of 1-10 nm uniformly surrounds the main phase.
In response, Li discloses that FeαMß phase has a size smaller than 1 nm (Page 4, 5th paragraph), not coarse crystals as asserted by the applicants. The Office Action didn’t not suggest that the FeαMß phase is a grain boundary phase. On the contrary, the position of the examiner is that the claimed grain boundary phase is an inherent structure in Li since the alloy disclosed by Li has a composition, grain size and properties that meet the claimed composition, grain size and properties in the instant claims.
Second, the applicants argued that since the compositions of Li undergo a heat treatment of longer duration than that of the similar product, the "FeaMB phase" of Li is made much coarser than that of the similar product. Id. at 1 15 (see Fig. 5 of Li for reference). This result occurs because the "auxiliary phase" of Li is a compound of Fe and high-melting-point metals such as Nb, Zr, and Ti.
In response, Li discloses that FeαMß phase has a size smaller than 1 nm (Page 4, 5th paragraph), not coarse crystals as asserted by the applicants. Li discloses an isotropic magnet alloy containing 11.6 at% Pr-Nd, 5.6 at% B, 1.9 at% Co, 0.15-0.60 at% Nb (Abstract; Examples 6-8). However, the “Similar product” presented in the Affidavit contains 7.4 at% Nd and 6.8 at% B, which has much lower rare earth content and much higher boron content. Therefore, the TEM-EDX of the “similar product” is not valid evidence to show that Li does not have the claimed grain boundary phase.
Third, the applicants argued that since the alloy in Chen does not undergo a crystallization heat treatment, it would not be possible to form a fine structure in which the grain boundary phase surrounds the main phase, and where a width of the grain boundary phase is 1 nm to less than 10 nm.
In response, Chen discloses an example containing (Nd0.75Pr0.25)11.2Fe83.4B5.4 ([0175]), which contains B amount that is lower than the boron content for stoichiometric composition of the RE2Fe14B main phase. Thus, there is more rare earth and Fe required to form RE2Fe14B main phase and these extra rare earth and Fe will exist between RE2Fe14B main phase grains to form grain boundary phase.
in view of the fact that Chen discloses an alloy composition that meets the recited composition in claims 1 and 9, the alloy has grain size that meets the recited grain size in claims 1 and 9, the alloy has main phase ratio that meets the recited main phase ratio in claim 13, and the magnet alloy has properties that meets the recited property limitation in claims 2 and 14 (See Table 1 and Table 2), one of ordinary skill in the art would expect that the magnet alloy disclosed by Chen to have a grain boundary thickness that meets the recited width in claims 1 and 9.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 Xiaowei Su whose telephone number is (571)272-3239. The examiner can normally be reached 8:00-5:00.
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/XIAOWEI SU/Primary Examiner, Art Unit 1733
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