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 .
Status of Claims
Claims 1-9 are examined in the office action of which claims 1 and 5 were amended and claim 9 is a newly added claim.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1: The terms “at%” should not be in parentheses.
Appropriate correction is required.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2014/157451 A1 via its US English equivalent US 2016/0042848 A1 of Kuniyoshi (US’848).
Regarding claims 1-9, WO 2014/157451 A1 via its US English equivalent US 2016/0042848 A1 of Kuniyoshi (US’848) teaches {[0010]-[0021], [0045]-[0049]} “an R-T-B based sintered magnet which includes an Nd2Fe14B type compound as a main phase, and comprises the main phase, a first grain boundary phase located between two main phases, and a second grain boundary phase located between three or more main phases, the R-T-B based sintered magnet comprising:” “R: 29.0% by mass or more and 31.5% by mass or less (R being Nd and/or Pr),” “B: 0.86% by mass or more and 0.90% by mass or less,” “Ga: 0.4% by mass or more and 0.6% by mass or less,” “Al: 0.5% by mass or less (including 0% by mass), and” “balance being T (T is a transition metal element and inevitably includes Fe) and inevitable impurities.” “which further includes:” “Cu: 0.05% by mass or more and 0.20% by mass or less.” “an R—Ga phase including R: 70% by mass or more and 95% by mass or less, Ga: 5% by mass or more and 30% by mass or less, and Fe: 20% by mass or less (including 0) is present in the first grain boundary phase.” “an R—Ga phase including R: 70% by mass or more and 95% by mass or less, Ga: 5% by mass or more and 30% by mass or less, and Fe: 20% by mass or less (including 0), and an R—Ga—Cu phase in which Ga of the R—Ga phase is partially replaced with Cu are present in the first grain boundary phase.” “In the present invention, the R-T-Ga phase may include: R: 15% by mass or more and 65% by mass or less (preferably, R: 40% by mass or more and 65% by mass or less), T: 20% by mass or more and 80% by mass or less, Ga: 2% by mass or more and 20% by mass or less (when the content of R is 40% by mass or more and 65% by mass or less, the content of T may be 20% by mass or more and 55% by mass or less, and the content of Ga may be 2% by mass or more and 15% by mass or less), and examples thereof include an R6Fe13Ga1 compound. More specifically, the R-T-Ga phase may be entirely composed of an R6Fe13Ga1 compound or may include an R6Fe13Ga1 compound, as long as it includes R: 15% by mass or more and 65% by mass or less (preferably, R: 40% by mass or more and 65% by mass or less), T: 20% by mass or more and 80% by mass or less, Ga: 2% by mass or more and 20% by mass or less (when the content of R is 40% by mass or more and 65% by mass or less, the content of T may be 20% by mass or more and 55% by mass or less, and the content of Ga may be 2% by mass or more and 15% by mass or less).” thereby reading on sintered R-T-B based magnet with main phase of R2T14B compound, grain boundary phase containing R-T-M and R-M compound of instant claim 1.
As shown above, the prior art teaches R-T-B based sintered magnet with a composition wherein the claimed ranges of the constituent elements (R, Ga, Cu) of the instant alloy of the instant claims 2-4 overlap or lie inside the ranges of various elements of the alloy of the prior art. With respect to Tb and Dy, the prior teaches “The present invention has been made so as to solve the above problems and an object thereof is to provide an R-T-B-based sintered magnet having high Br and high HcJ without using Dy.” and does not require the presence of Tb in its magnet thereby reading on recited limitations of claim 5. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed 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. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding the limitations of “a remanence (Br) is 1.4 T or more and a coercivity (HcJ) is 2000 kA/m or more” of instant claim 9, the prior art teaches “[0004] To increase H.sub.cJ, numerous heavy rare-earth elements (mainly, Dy) have hitherto been added to the R-T-B-based sintered magnet. However, there arose a problem that a residual magnetic flux density Br (hereinafter sometimes simply referred to as “Br”) decreases. Therefore, there has recently been employed a method in which heavy rare-earth elements are diffused from the surface into the inside of the R-T-B-based sintered magnet to thereby increase the concentration of the heavy rare-earth elements at the outer shell part of main phase crystal grains, thus obtaining high H.sub.cJ while suppressing a decrease in Br.” and points out via examples in Table 1 that it can attain a Br of 1.4 or more thereby meeting the Br limitation. With respect to the coercivity, the prior art teaches that “[0003] However, in the R-T-B-based sintered magnet, coercivity H.sub.cJ (hereinafter sometimes simply referred to as “H.sub.cJ”) decreases at an elevated temperature to cause irreversible thermal demagnetization. Therefore, when used particularly in motors for hybrid vehicles and electric vehicles, there is a need to maintain high H.sub.cJ even at an elevated temperature.” Therefore, it 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 to take the magnet of the prior art and increase coercivity as the prior teaches that it interest lies in producing a product with high coercivity to maintain the magnetic properties at high temperature and “[0008] However, Patent Document 1 had a problem that since the B concentration is significantly decreased than usual, an existence ratio of a main phase decreases, leading to a significant reduction in B.sub.r. Although H.sub.cJ increases, H.sub.cJ is insufficient to satisfy requirements in recent days. [0009] The present invention has been made so as to solve the above problems and an object thereof is to provide an R-T-B-based sintered magnet having high B.sub.r and high H.sub.cJ without using Dy.”
It is noted that the prior art is silent regarding its alloy having the properties of a) [R], [T] and [M] in R-T-M and R-M compounds satisfying specific ratios (claim 1), b) the area ratios of R-T-M and R-M compounds and their sum (claim 1), c) the gradual decrease of the rare earth elements and M from surface to interior (claims 6-8) as recited in the instant claims. With respect to Tb, the prior art teaches the inclusion of R in its magnet and Tb is part of the R or rare earth elements and therefore would be obvious to include from an amount not exceeding the maximum amount of R prescribed in the prior art including an amount of zero. 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. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in structure or composition (see compositional analysis) and b) the claimed and prior art products are produced by identical or substantially identical processes {instant alloy: instant specification [0058]-[0067]; Prior art: [0043]-[0057]}. Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Response to Arguments
Applicant's arguments filed 09/04/2025 have been fully considered but they are not persuasive.
Regarding the argument that the prior art does not teach the ratio, as noted above, , it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in structure or composition (see compositional analysis) and b) the claimed and prior art products are produced by identical or substantially identical processes {instant alloy: instant specification [0058]-[0067]; Prior art: [0043]-[0057]}. It is noted that the Applicant does not provide any objective factual evidence such as testing data in support of the arguments that the prior art has substantially identical structure or composition and produced by identical or substantially identical processes would not have the recited properties of the instant claims.
With respect to the arguments that the embodiments provided by the prior art do not teach the claimed matter, the arguments have been fully considered but they are not persuasive. Patents are relevant as prior art for all they contain. "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).See MPEP § 2123.
As noted above, the prior art renders the instant claims obvious. If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990). Rebuttal evidence and arguments can be presented in the specification, In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995), by counsel, In re Chu, 66 F.3d 292, 299, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995), or by way of an affidavit or declaration under 37 CFR 1.132, e.g., Soni, 54 F.3d at 750, 34 USPQ2d at 1687; In re Piasecki, 745 F.2d 1468, 1474, 223 USPQ 785, 789-90 (Fed. Cir. 1984). However, arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). See MPEP § 2145. Attorney argument is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection. See MPEP § 2129 and § 2144.03 for a discussion of admissions as prior art. 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); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). See MPEP § 716.01(c) for examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration. See MPEP § 2145 I.
Conclusion
THIS ACTION IS MADE FINAL. 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 JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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, KEITH HENDRICKS can be reached at (571)272-1401. 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.
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733