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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/24/25 has been entered.
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 .
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Claim Interpretation:
Claims 1 and 21 recites “a degree of orientation of SmCo5 is 70% or more”. Given that SmCo5 is a magnetic and has a structural feature, the broadest reasonable interpretation of the claimed “orientation” can be interpreted it as magnetization orientation, structural orientation, or crystal orientation.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-7, and 21-34 are rejected 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.
Claims 1 and 21 recites that a degree of orientation of SmCo5 is 70% or more, however, it is unclear the methodology in determining the degree of orientation. It is unclear to the examiner the parameters that must take into account in determining the structural, crystallinity, or even magnetization property. Given the broad meaning of “orientation”, clarification is needed on how degree of orientation is determined and calculated.
According to the instant specification, it appears that orientation is based upon crystallinity. It is noted if applicant should amend the claim to be “crystal orientation”, the examiner contends that clarifying it to be “crystal orientation” would be insufficient as it doesn’t describe the methodology in achieving said crystal orientation properties. It is suggested to the applicant to amend the claims to reflect that the degree of orientation is determined by “a ratio of the sum of diffraction peaks based on a crystal orientation [00L] component to the sum of diffraction peaks based on a crystal plane (hk1) of the SmCo5 film” as disclosed in paragraph 42.
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.
Claims 1, 3-7, 21-23, 25-34 are rejected under 35 U.S.C. 103 as being unpatentable over Kuwert (US 2004/0195924) in view of Jekal (Dependence of Atomic Thickness on Interfacial Conditions and Magnetocrystalline Anisotropy in SmCo5/Sm2Co17 Multilayer).
Regarding claims 1, 3, and 21-23, Kuwert discloses a magnet comprising a yoke portion (26) that contains a soft magnetic material [0030], a magnetic portion (30) that is formed on a main surface of the yoke portion and contains a hard magnetic material [0035] (Fig. 3), wherein an interface of the magnet portion and the yoke portion as viewed in cross-section has an uneven shape ([0099]: surface roughness or waviness and all Figs).
Kuwert discloses a magnet comprising a yoke portion that contains a soft magnetic material and a magnet portion that contains a hard magnetic material as set forth above, however, Kuwert fails to explicitly disclose that the soft magnetic material in the yoke portion is Sm2Co17 and the hard magnetic material in the magnet portion is SmCo5 as presently claimed.
Jekal discloses a magnet comprising a layer structure of SmCo5/Sm2Co17, wherein the hard material is SmCo5 and the soft material is Sm2O17 (pg. 1-2). Jekal discloses that the exchange coupling between the layers is enhance and provides a strong magnetocrysalline anisotropy (Conclusions). Jekal further discloses that it is known in the art that a crystal orientation [00L] of SmCo5 is oriented in a thickness direction of SmCo5 (Abstract, Fig. 1a). It is also known in the art that SmCo5 is a CaCu5 crystal structure.
It would have been obvious to one of ordinary skill in the art to modify Kuwert’s hard magnetic material to be of SmCo5 with the crystal orientation as claimed, and soft magnetic material to be of Sm2O17, since Jekal discloses that this would enhance exchange coupling and provide strong magnetocrysalline anisotropy.
Furthermore, given that Kuwert in view of Jekal discloses that SmCo5 is a CaCu5 crystal structure and comprises of the same magnetic material as claimed, Kuwert in view of Jekal discloses a degree of (magnetization or crystal) orientation of 70% or more.
It has been held that where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the burden of proof is shifted to applicant to show that prior art products do not necessarily or inherently possess characteristics of claimed products where the rejection is based on inherency under 35 USC § 102 or on prima facie obviousness under 35 USC § 103, jointly or alternatively. In re Best, Bolton, and Shaw, 195 USPQ 430. (CCPA 1977).
Although Kuwert discloses an uneven shape of the interface (surface roughness present), Kuwert fails to explicitly disclose that the degree of unevenness is 1.21-1.94 per claim 1 or 1-2 per claim 22 as presently claimed.
However, a person having ordinary skill in the art before the effective filling date of the invention would have arrived at the claimed invention by routine experimentation alone, without exercising undue experimentation.
Additionally, a person having ordinary skill in the art has good reason to pursue known option within his or her technical grasp. It would have been obvious to one or ordinary skill in the art at the time of the invention was made to optimize the degree of uneveness since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not invention to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed amount is critical and has unexpected results. In the present invention, one would have been motivated to optimize the degree of unevenness to obtain suitable adhesion properties between the yoke portion and the magnetic portion [0099].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of Applicants' invention to modify the interface of Kuwert to form a degree of unevenness between 1.21 and 1.94 or between 1 and 2, since the degree of unevenness is a known results effective variable in the magnet art.
Regarding claim 4, Kuwert fails to explicitly disclose a thickness range of the magnet portion. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to optimize the thickness within the limits known in the art based on the desired end use of the magnet since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA) 1980. The burden is upon the Applicant to demonstrate that the claimed thickness is critical and has unexpected results.
Regarding claims 5-7 and 26-34, Kuwert discloses the application as claimed (All Figs).
In addition, the limitation(s) "a micro motor", “a microactuator”, and “a sensor” that uses the magnet has been considered to be a recitation of intended use because the body of each of Claims 5-7 do not depend on the preamble for completeness. Intended use limitations are not further limiting in so far as the structure of the product is concerned. Note that "in apparatus, article, and composition claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art." In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967); In re Otto, 312 F.2d 937, 938, 136 USPQ 458,459 (CCPA 1963). See MPEP § 2111.02." In the instant case, the magnet of Kuwert is deemed capable of using it as "a micro motor", “a microactuator”, and “a sensor”.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 3-7, 21-23, 25-34 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues that it would not have been obvious to combine the teachings of Kuwert and Jekal to arrive the claimed invention. This is because applicant stated that the Office Action attempts to graft the atomic-level physics of Jekal onto the macroscopic, rough manufacturing process of Kuwert, thereby they are fundamentally incompatible and would not provide a reasonable expectation of success. This has been found unpersuasive.
However, note that while Jekal do not disclose all the features of the present claimed invention, Jekal is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely the specific materials used for hard and soft magnetic material in a magnet, and in combination with the primary reference, discloses the presently claimed invention.
Furthermore, although Kuwert and Jekal involves different processes involving how the hard magnetic layer is over soft magnetic layer (Kuwert: molding of a magnetic portion onto a yoke portion and then later sintering; Jekal: layer stacking to be structurally well matched), 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, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113). Both Kuwert and Jekal discloses a magnet comprising a soft magnetic layer is directly stacked or on a soft magnetic layer.
Additionally, the examiner contends that direct contact between two crystallinity shape magnetic layers that are “structurally well match” does not preclude from not having an interface of “uneven shape” between two magnetic layers.
It is noted that "the arguments of counsel cannot take the place of evidence in the record", In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the Examiner's position that the arguments provided by applicant(s) regarding the alleged unexpected results should be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), "the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001". Applicant has not provided evidence that Jekal’s interface between the soft and magnetic layers is “smooth”. Nevertheless, the examiner is not taking the position of the structural features of the overall magnet in Jekal as set forth above.
Applicant argues that one of ordinary skill in th eart would not expect to replace the steel yoke in Kuwert with Sm2Co17. The examiner respectfully disagrees. Although Kuwert discloses the soft magnetic material is “preferably” soft magnetic steel, Kuwert does not impose any generalized limit of the type of soft magnetic material that can be used. Thus, it would have been obvious to use the soft magnetic material of Jekal in a magnet. Further, Kuwert does not create an issue of "teaching away from" with respect to type of soft magnetic material [0042]. Thereby, it would have been obvious to use any conventional soft magnetic material in Kuwert absence of evidence to the criticality of Sm2Co17 material.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argues the criticality of the specific combination of claimed material, uneven interface surface having a defined degree of unevenness, and a high degree of orientation.
However, the evidence pointed to in the specification is not commensurate in scope with the claims. In particular, the evidence does not support that the entire degree of unevenness range is unexpected, specifically 1-2, and the entire “degree of orientation” range is unexpected, specifically 70% or more. It is noted that claim 21 doesn’t require a specific range of degree of unevenness, but rather broadly claim “uneven shape”. Furthermore, it appears other factors, such as specific film thickness for each of the magnet and yoke portion contributes to the surface magnetic flux.
In addition, the examiner contends that the data points in the instant specification example is not sufficiently close to the degree of orientation, thus are not in commensurate in scope with the claims. The closest values outside the claimed lower and upper limit are having 47% and 49% (Comparative Examples 1-2: none of the examples discloses both presence of the soft magnetic layer and hard magnetic layer). Without additional data points, especially data points closer to the upper and lower endpoint, the criticality of the range cannot be adequately evaluated. These data points are not close enough to the endpoint to be persuasive in establishing an unexpected result. Therefore, there is no showing that the claimed range of degree of orientation of more than 70% is unexpectedly superior in surface magnetic flux as argued by the Applicant.
Examiner acknowledges the arguments and respectfully notes that MPEP states that “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” (see MPEP § 716.02(d).II.). In this instance, it is not clear in the Specification (see Specification Table 5), the criticality of the claimed degree of unevenness.
Although Applicant appears to argue an unexpected result of improvement of surface magnetic flux, the issues with the data as highlighted above illustrate that such unexpected results have not been persuasively demonstrated.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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, Mark Ruthkosky can be reached at (571)272-1291. 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.
Linda Chau
/L.N.C/ Examiner, Art Unit 1785
/Holly Rickman/ Primary Examiner, Art Unit 1785