Detailed Office Action
Notice of Pre-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
Information Disclosure Statement
The information disclosure (IDS) submitted on 02/06/2026 was filed after the mailing date of the Non-Final on 09/02/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS has been considered by the examiner.
Response to Amendments
The amendment filed on 12/01/2025 has been entered. Claims 10 – 21 remain pending. Claims 19 – 21 remain withdrawn. Claims 22 and 23 have been added and find support in at least the original claim set and [0020] of the specification.
Claim Rejections – U.S.C. §102
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 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 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 10 – 18 and 22 – 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakano (JP6359232, using espacenet translation, cited with the OA of 09/02/25)
Regarding claim 10, Nakano teaches rare earth magnet which is sintered and has grain boundaries [0006, 0018] and includes a R2Fe14B crystal structure [0010], meeting the claimed limitation of the main phase. Nakano teaches that the magnet includes samarium and neodymium [0006], meeting the claimed limitation.
Nakano does not expressly disclose the concentration of samarium in the main phase as compared to the grain boundary phase.
However, as shown by Nakano in Fig 7. and Fig 8., the substitution of samarium for Nd(f) and Nd(g) is more favored than lanthanum. Therefore, the substitution of samarium in the main phase is more favored than lanthanum which would result in samarium being present in a higher content in the main phase than the grain boundary. This is further evidenced by [0024] of the instant invention. Additionally, Nakano discloses a substantially identical composition [Fig 4., Example 4] as compared to the Table 3, Ex 5 of the instant invention.
Therefore, there is reasonable expectation to an ordinarily skilled artisan that the Sm content of the sintered rare earth magnet of Nakano would be higher in the main phase than grain boundary.
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, in this case composition, a
prima facie case of anticipation is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA
1977) (See MPEP 2112.01)).
Regarding claim 11, Nakano teaches the invention as applied in claim 10. Nakano does not expressly disclose the concentration of lanthanum in the main phase as compared to the grain boundary phase.
However, as shown by Nakano in Fig 7. and Fig 8., the substitution of samarium for Nd(f) and Nd(g) is more favored than lanthanum. As such, the presence of lanthanum in the grain boundary phase would be more favored than the main phase. This is further evidenced by [0028, 0033 – 0034] of the instant invention. Additionally, Nakano discloses a substantially identical composition [Fig 4., Example 4] as compared to the Table 3, Ex 5 of the instant invention.
Therefore, there is reasonable expectation to an ordinarily skilled artisan that the La content of the sintered rare earth magnet of Nakano would be higher in the grain boundary than main phase. 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, in this case composition, a prima facie case of anticipation is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (See MPEP 2112.01)).
Regarding claims 12 and 16, Nakano teaches the invention as applied in claims 10 – 11. Nakano does not explicitly state that Sm or (Sm and La) are part of an oxide (NdO) phase due to substitution. However, Nakano teaches a substantially identical composition [Fig 4, Ex 4] to the instant invention [Table 3, Example 5].
Furthermore, as evidenced by [0035, 0036] of the instant invention (pg-pub US2023/0420166) when Sm and La are present, they partially substitute Nd in said phase. As such, given that the Nakano teaches a substantially identical composition, including the presence of La and Sm and in a substantially identical amount to the instant invention, there is reasonable expectation to an ordinarily skilled artisan that Nakano would possess the features of claims 12 and 16, absent objective evidence to the contrary.
Regarding claims 13 – 15, Nakano teaches the invention as applied in claims 10 – 12. Nakano discloses an example in which the content of Nd is larger than Sm [Fig 4, Example 4].
Regarding claims 17 – 18, Nakano teaches the invention as applied in claims 11 and 16. Nakano discloses an example in which the content of Nd is larger than Sm and La combined [Fig 4, Example 4].
Regarding claim 22, Nakano teaches the invention as applied in claim 10. Nakano discloses that the rare earth magnet is subjected to crushing, molding and sintering [0016 – 0018]. Wherein cooling following sintering is implied. While Nakano does not explicitly teach the parameters, the patentability of the product does not depend upon its method of production, only the structure implied. In this case, the structure implied being a molded and sintered product which Nakano also discloses.
"[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.” (MPEP 2113 I)
Regarding claim 23, Nakano teaches the invention as applied in claim 11. Nakano does not explicitly disclose the La is substituted at a Fe(c) site of a R2Fe14B crystal structure.
However, Nakano teaches a sintered rare earth magnet with a substantially identical composition to the claimed invention and instant invention [Fig 4., Example 4] as compared to the Table 3, Ex 5 of the instant invention.
Therefore, there is reasonable expectation to an ordinarily skilled artisan that some of the La of the sintered rare earth magnet of Nakano would be substituted into the Fe(c).
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, in this case composition and process, a prima facie case of anticipation is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (See MPEP 2112.01)).
Response to Arguments
Applicant's arguments 12/01/2025 have been fully considered but they are not persuasive.
For clarity of the record the prior art previously cited Yoshikazu (JP6359232) is now referred to as Nakano (JP6359232).
Applicant argues that the contention that the substitution of samarium into the main phase is more favored than lanthanum is not relevant/does not provide support/evidence that the samarium is higher in the main phase than the grain boundary phase of Nakano. As such, the office action has failed to show that Nakano discloses anything about the content of samarium in the grain boundary phase at all. This has been fully considered but is not persuasive. To further elaborate on the assertion in the previous office action, because Sm is more favored in substitution with Nd(f) and Nd(g) than lanthanum, there is an expectation that the Sm would remain concentrated in the main phase with Nd (and not the grain boundary phase) while lanthanum was concentrated into the grain boundary area, thus resulting in the amount of Sm in the main phase being higher than the grain boundary phase which is favored to be La. Nevertheless, the inherency assertion also relied upon the explicit facts that Nakano teaches a sintered magnet (which is substantially identical in process of manufacture of the claimed product in that sintering takes place) which possesses a substantially identical composition to the claimed invention and instant invention. See Nakano [Fig 4., Example 4] as compared to the Table 3, Ex 5 of the instant invention.
While Applicant further argues (page 3 of remarks) that Nakano requires the La and Sm to be the same while the instant invention has different contents. This is not persuasive because the inventive example composition(s) of Table 3 is/are substantially identical to the examples of Nakano vis-a-vis the amounts of Nd, La, and Sm; and the instant invention nor the claimed invention requires Sm and La to be different. Moreover, the claimed invention merely requires the presence of Sm (claim 10) and La (in claim 11). 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, in this case composition and process, a prima facie case of anticipation is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (See MPEP 2112.01)).
Additionally, Applicant asserts that because of the sintering time and temperature and the particular cooling step following sintering, the property of Sm distribution is achieved. However, Nakano teaches sintering (which would also have a cooling step following the heating/sintering step) and the Applicant has not provided evidence to show that the particular parameters are required to achieve the claimed property because the comparative examples of Table 3 only demonstrate differences in composition, not method. Therefore, the Office has provided a sound basis that Nakano would possess the claimed feature because Nakano teaches a substantially identical composition to the claimed invention and instant invention, is subjected to sintering (and resultantly to afterwards cooling), and as explained (and as shown by stabilization energies in Nakano’s Fig 7. and Fig 8.) the substitution of samarium for Nd(f) and Nd(g) is more favored than lanthanum, thus resulting in an increased amount of Sm in the main phase while La is higher than the grain boundary phase (which would decrease the amount of Sm therein). For these reasons and that the USPTO does not possess the capability to test samples of the prior art to determine the properties/microstructure as claimed, the burden is shifted to applicant to demonstrate that the prior art does not possess such feature(s) (In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980))(MPEP 2112 V). "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." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). (MPEP 2112.02 I)
Lastly, Applicant argues that Nakano teaches the La does not enter the Fe(c) site [0034, Nakano]. However, this is not found persuasive because this describes a product after melting and cooling with ice and is not directed to the molded and sintered magnet described by Nakano [0018, 0019] which is relied upon.
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 Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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, Sally Merkling can be reached at (571) 272-6297. 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.
/AUSTIN POLLOCK/Examiner, Art Unit 1738 /SALLY A MERKLING/SPE, Art Unit 1738