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 .
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 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 1-22 and 24-36 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.
Claim 1 recites “a magnet cladding containing a shell magnetic material, wherein said shell magnetic material comprises (i) a magnetic compound that is chemically the same as said core magnetic material… wherein said magnet cladding is produced by solidifying a melt pool containing said magnetic compound, wherein said melt pool does not contain said core magnetic material” (emphasis added).
The examiner is unclear how it is possible if the magnetic compound in the magnet cladding is the same as the core magnetic material but yet the magnet cladding is produced from a melt pool containing magnetic compound but does not contain core magnetic material, which is the same material to the magnetic compound. Clarification is needed.
Claim 1 recites cladded permanent magnetic is not additively manufactured in “an integrated process”. The term “integrated” process renders the claims indefinite as it is unclear the metes and bounds that would encompass “integrated” additive manufacturing (3D printing). Applicant stated that additive manufacturing in an integrated process is “essentially one go” in the response, but it is unclear to the examiner what is meant by “essentially one go” as there are multiple steps and processes involving 3D printing.
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 1-22 and 24-35 are rejected under 35 U.S.C. 103 as obvious over Simon et al. (US 2017/0154713) in view of Branagan et al. (Transition metal carbide formation in the Nd2Fe14B system and potential as alloying additions).
Regarding claims 1-4 and 8, Simon discloses a permanent magnet comprising a core magnet region (23) containing a core magnetic material [0039], a magnet containing a shell magnetic material (24), wherein said shell magnetic material comprises a magnetic compound that is chemically the same as said core magnetic material ([0039], [0043]: can comprise of FeB based alloy), one or more rare earth elements [0043], and Zr [0044], and wherein said magnet is disposed on said core magnet region (Fig. 6-9), and wherein said magnet containing a shell magnetic is chemically distinct and physically distinct from said core magnet region ([0043], all Figs).
Although Simon discloses FeB-based alloy shell magnetic material comprising RE and Zr, Simon fails to explicitly disclose that the magnetic containing a shell magnetic material comprises of 0.1-10 wt.% ZrC inoculant nanoparticles in the FeB-RE material.
Branagan discloses a permanent magnet comprising transition metal carbide, such as ZrC, with a particle size as claimed (Fig. 7 and 12), are added or precipitated from an NdFeB system. Branagan discloses that the addition of 10.1 wt.% ZrC controls the grain growth in NdFeB type magnets and leads to stabilized fine-grained microstructure (Abstract, 4. Summary), which results an enhance coercivity (3.2 Equilibrium solubility, 3.5 TEM).
Although Branagan discloses 10.1 wt.% of ZrC in the example, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the instant case, the difference between 10 wt.% and 10.1 wt.% does not appear confer patentability to the claims in the absence of a showing of critically associated with the claimed inoculant nanoparticles content.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Simon’s FeB-based alloy shell magnetic material comprising inoculate particle of ZrC with the amount and particle size as claimed, as suggested by Branagan, in order to achieve a stabilized fine-grained microstructure and to enhance the coercivity.
Simon discloses that the magnet has a higher magnetic coercivity than that of the core magnet region and overlaps the claimed range (claim 36). Although Simon discloses that the coercivity relationship is greater than 10%, or 50% (claim 36: no upper bound for magnet), Simon fails to disclose that the coercivity was measured according to the specific testing parameters (ambient-temperature magnetic coercivity is measured at 25ºC and at elevated temperature at 150ºC). While Simon is silent of the specific testing parameters used in calculating the coercivity as claimed, the coercivity relationship between the magnet and core magnet region still generate the magnetic property as claimed of greater than 10% or 50%. There is a sound basis that Simon’s magnet and core magnetic region produces similar coercivity relationship as claimed when subjecting to the same testing parameters. USPTO does not have a laboratory to test out and experiment Simon’s invention. Thus, one of ordinary skill in the art would recognize that the testing parameter will possess similar results from any testing parameter, especially since Simon discloses having the claimed coercivity relationship to be greater than 10%, or 50%, which overlaps the claimed range absent of evidence to the contrary.
As such, the Examiner deems that Simon fully anticipates the claimed limitation despite the distinction in measuring when determining the property of the magnet and core magnet region. Moreover, a process limitation, as such, is not germane to the patentability of the claimed product unless it produces an unobvious difference, which does not appear to be the case.
However, given the distinction, alternative to anticipation should it be shown that the difference in methodology does produce an invention that has an unobvious difference, the Examiner deems that Simon renders the claimed limitations obvious as the characterization methodology are both used to characterize the magnet. Simon provides clear guidance on what is a desirable coercivity, as such the slight distinction in methodology would have been obvious to a person of ordinary skill in the art, to produce a magnet with the coercivity relationship as claimed in order to ensure a high overall magnetic performance and efficiency of a magnet body [0022].
In the alternative, 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 coercivity between core magnetic and magnet, 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 coercivity on what the end use permanent magnetic was used for.
Regarding the limitation “cladded” and a magnet “cladding” and “magnet cladding is produced by…”, even 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, 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). As set forth above, Simon discloses a magnet containing a shell magnetic material is chemically distinct and physically distinct from said core magnet region ([0043], all Figs). Nevertheless, Simon discloses a method of cladding [0034]. Additionally, Simon also discloses that the method of making magnet can be produce without using additive manufacturing or 3D printing [0011-0016], thereby reads upon claimed magnet is not additively manufactured in an integrated process.
Regarding claims 5-6, Simon discloses the material as claimed ([0039] and [0046]).
Regarding claim 7, please see [0061].
Regarding claim 9, please see Fig. 9 and 9a.
Regarding claims 10 and 12-13, please see Fig. 7.
Regarding claim 11, please see ([0022], [0036], [0064]).
Regarding claim 14, please see Fig. 6-8.
Regarding claims 15-17, please see [0047]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Regarding claim 18, Simon discloses that the magnet comprises of RE, thereby disclose the structure as claimed.
Regarding claims 19-21, Simon fails to disclose the areas of the one or more rare earth elements in the magnet would have the concentration as claimed. However, Simon discloses that graded magnetic properties can be tuned, which therefore encompasses the RE concentration as it is directed to magnetic properties. 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 areas of RE concentration, 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 relationship is critical and has unexpected results. In the present invention, one would have been motivate to optimize the areas of RE concentration as claimed to obtain a suitable magnetic property and dependent on what the end use magnet was used for.
Regarding claim 22, please see all Figs.
Regarding claim 24, the examiner is taking the position that the grain between two grains corresponds to the claimed grain boundaries. Alternative, Simon in view of Branagan discloses grain boundaries.
Regarding claim 25, please see Fig. 3-4.
Regarding claim 26, Simon discloses that the grains are equiaxed grains (Fig. 4).
Regarding claim 27, Simon discloses that the grains have a magnetic easy axis that is dictated by a crystallographic texture of said grains (Fig. 3-4).
Regarding claim 28, Simon discloses a high-energy product material [0044]. Further, the examiner is taking the position that the upper stratum of the magnetic grain would corresponds to the claimed thermally stable shell material as there is no structural or material difference between areas of the magnetic grain. Given that Simon in view of Branagan discloses the grain as claimed, high-energy product material as claimed.
Regarding claim 29, Simon discloses the coercivity is more than 10 kA/m [0062]. Although Simon discloses that the coercivity is more than 10 kA/m, Simon fails to disclose that the coercivity was measured according to the specific temperature. While Simon is silent of the specific testing parameters used in calculating the coercivity as claimed, the coercivity still generate the magnetic property as claimed of at least 4000 Oe. There is a sound basis that the Simon discloses the magnet’s coercivity as claimed when subjecting to the same testing parameters. USPTO does not have a laboratory to test out and experiment Simon’s invention. Thus, one of ordinary skill in the art would recognize that the testing parameter will possess similar results from any testing parameter, especially since Simon discloses having the claimed coercivity, which overlaps the claimed range absent of evidence to the contrary.
Regarding claims 30-31, the limitation “formed from…” even 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, 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)
Regarding claims 32-33, Simon discloses the shaped as claimed (Fig. 6-7).
Regarding claim 34, Simon discloses a prismatic shape (Fig. 8-9a).
Regarding claim 35, Simon discloses the product as claimed [0064].
Claims 1-7, 9-22, and 24-36 are rejected under 35 U.S.C. 103 as obvious over Simon et al. (US 2017/0154713) in view of Filip (Growth kinetics and TiC precipitation phenomena in Nd-Fe-B-TiC melts in dependence on cooling parameters and composition).
Regarding claims 1-4 and 36, Simon discloses a permanent magnet comprising a core magnet region (23) containing a core magnetic material [0039], a magnet containing a shell magnetic material (24), wherein said shell magnetic material comprises a magnetic compound that is chemically the same as said core magnetic material ([0039], [0043]: can comprise of FeB based alloy), one or more rare earth elements [0043], and Zr [0044], and wherein said magnet is disposed on said core magnet region (Fig. 6-9), and wherein said magnet containing a shell magnetic is chemically distinct and physically distinct from said core magnet region ([0043], all Figs).
Although Simon discloses FeB-based alloy shell magnetic material comprising RE and Ti, Simon fails to explicitly disclose that the magnetic containing a shell magnetic material comprises of 0.1-10 wt.%, or 0.1-8 wt.% per claim 36, metal containing inoculant nanoparticles in the FeB-RE material.
Filip teaches a R-Fe-B type rare earth permanent magnet containing TiC particles in the amount of 0.5-3 at% with size of 30-50 nm (Pg. 1046, right column, first paragraph), which are within the recited dimension and content of the metal containing inoculant nanoparticles in the instant claims. Filip further teaches that the TiC precipitates are beneficial for grain refinement of Nd-FeB alloy (Abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Simon’s FeB-based alloy shell magnetic material comprising inoculate particle of TiC with the amount and particle size as claimed, as suggested by Filip, in order to achieve grain refinement of Nd-FeB alloy (Abstract).
Simon discloses that the magnet has a higher magnetic coercivity than that of the core magnet region and overlaps the claimed range (claim 36). Although Simon discloses that the coercivity relationship is greater than 10%, or 50% (claim 36: no upper bound for magnet), Simon fails to disclose that the coercivity was measured according to the specific testing parameters (ambient-temperature magnetic coercivity is measured at 25ºC and at elevated temperature at 150ºC). While Simon is silent of the specific testing parameters used in calculating the coercivity as claimed, the coercivity relationship between the magnet and core magnet region still generate the magnetic property as claimed of greater than 10% or 50%. There is a sound basis that Simon’s magnet and core magnetic region produces similar coercivity relationship as claimed when subjecting to the same testing parameters. USPTO does not have a laboratory to test out and experiment Simon’s invention. Thus, one of ordinary skill in the art would recognize that the testing parameter will possess similar results from any testing parameter, especially since Simon discloses having the claimed coercivity relationship to be greater than 10%, or 50%, which overlaps the claimed range absent of evidence to the contrary.
As such, the Examiner deems that Simon fully anticipates the claimed limitation despite the distinction in measuring when determining the property of the magnet and core magnet region. Moreover, a process limitation, as such, is not germane to the patentability of the claimed product unless it produces an unobvious difference, which does not appear to be the case.
However, given the distinction, alternative to anticipation should it be shown that the difference in methodology does produce an invention that has an unobvious difference, the Examiner deems that Simon renders the claimed limitations obvious as the characterization methodology are both used to characterize the magnet. Simon provides clear guidance on what is a desirable coercivity, as such the slight distinction in methodology would have been obvious to a person of ordinary skill in the art, to produce a magnet with the coercivity relationship as claimed in order to ensure a high overall magnetic performance and efficiency of a magnet body [0022].
In the alternative, 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 coercivity between core magnetic and magnet, 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 motivate to optimize the coercivity on what the end use permanent magnetic was used for.
Regarding the limitation “cladded” and a magnet “cladding” and “magnet cladding is produced by…”, even 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, 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). As set forth above, Simon discloses a magnet containing a shell magnetic material is chemically distinct and physically distinct from said core magnet region ([0043], all Figs). Nevertheless, Simon discloses a method of cladding [0034]. Additionally, Simon also discloses that the method of making magnet can be produce without using additive manufacturing or 3D printing [0011-0016], thereby reads upon claimed magnet is not additively manufactured in an integrated process.
Regarding claims 5-6, Simon discloses the material as claimed ([0039] and [0046]).
Regarding claim 7, please see [0061].
Regarding claim 9, please see Fig. 9 and 9a.
Regarding claims 10 and 12-13, please see Fig. 7.
Regarding claim 11, please see ([0022], [0036], [0064]).
Regarding claim 14, please see Fig. 6-8.
Regarding claims 15-17, please see [0047]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Regarding claim 18, Simon discloses that the magnet comprises of RE, thereby disclose the structure as claimed.
Regarding claims 19-21, Simon fails to disclose the areas of the one or more rare earth elements in the magnet would have the concentration as claimed. However, Simon discloses that graded magnetic properties can be tuned, which therefore encompasses the RE concentration as it is directed to magnetic properties. 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 areas of RE concentration, 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 relationship is critical and has unexpected results. In the present invention, one would have been motivate to optimize the areas of RE concentration as claimed to obtain a suitable magnetic property and dependent on what the end use magnet was used for.
Regarding claim 22, please see all Figs.
Regarding claim 24, the examiner is taking the position that the grain between two grains corresponds to the claimed grain boundaries. Alternative, Simon in view of Filip discloses grain boundaries.
Regarding claim 25, please see Fig. 3-4.
Regarding claim 26, Simon discloses that the grains are equiaxed grains (Fig. 4).
Regarding claim 27, Simon discloses that the grains have a magnetic easy axis that is dictated by a crystallographic texture of said grains (Fig. 3-4).
Regarding claim 28, Simon discloses a high-energy product material [0044]. Further, the examiner is taking the position that the upper stratum of the magnetic grain would corresponds to the claimed thermally stable shell material as there is no structural or material difference between areas of the magnetic grain. Given that Simon in view of Filip discloses the grain as claimed, high-energy product material as claimed.
Regarding claim 29, Simon discloses the coercivity is more than 10 kA/m [0062]. Although Simon discloses that the coercivity is more than 10 kA/m, Simon fails to disclose that the coercivity was measured according to the specific temperature. While Simon is silent of the specific testing parameters used in calculating the coercivity as claimed, the coercivity still generate the magnetic property as claimed of at least 4000 Oe. There is a sound basis that the Simon discloses the magnet’s coercivity as claimed when subjecting to the same testing parameters. USPTO does not have a laboratory to test out and experiment Simon’s invention. Thus, one of ordinary skill in the art would recognize that the testing parameter will possess similar results from any testing parameter, especially since Simon discloses having the claimed coercivity, which overlaps the claimed range absent of evidence to the contrary.
Regarding claims 30-31, the limitation “formed from…” even 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, 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)
Regarding claims 32-33, Simon discloses the shaped as claimed (Fig. 6-7).
Regarding claim 34, Simon discloses a prismatic shape (Fig. 8-9a).
Regarding claim 35, Simon discloses the product as claimed [0064].
Claim 8 is rejected under 35 U.S.C. 103 as obvious over Simon et al. (US 2017/0154713) in view of Filip (Growth kinetics and TiC precipitation phenomena in Nd-Fe-B-TiC melts in dependence on cooling parameters and composition) and in view of McCallum (US 5,486,240).
Simon in view of Filip discloses a RE magnet as set forth above, however, fails to disclose the specific material of the inoculant particles as presently claimed.
The difference between Simon in view of Filip and instant claims is that Filip teaches that the rare earth magnet contains TiC (Abstract) while the instant claims recite Zr or ZrC. McCallum teaches a method for making a R-Fe-B type magnet (Abstract) and discloses that TRC precipitates minimize the grain growth during elevated temperature consolidation (Abstract). McCallum further discloses that TR is a transitional metal selected from at least one of Ti, Zr, Hf etc. (Abstract). Thus, TiC and ZrC are considered functional equivalents in controlling the grain growth of R-Fe-B alloy at elevated temperature as disclosed by McCallum. It would be obvious to one of ordinary skill in the art that substituting TiC for ZiC in the magnet of Simon in view of Filip would lead to expected success of controlling the abnormal grain growth of the R-Fe-B alloy at elevated temperature as disclosed by McCallum.
Claims 1-7, 9-22, and 24-36 are rejected under 35 U.S.C. 103 as obvious over Simon et al. (US 2017/0154713) in view of Nakazawa et al. (US 2012/0048431).
Regarding claims 1-4, Simon discloses a permanent magnet comprising a core magnet region (23) containing a core magnetic material [0039], a magnet containing a shell magnetic material (24), wherein said shell magnetic material comprises a magnetic compound that is chemically the same as said core magnetic material ([0039], [0043]: can comprise of FeB based alloy), one or more rare earth elements [0043], and Zr [0044], and wherein said magnet is disposed on said core magnet region (Fig. 6-9), and wherein said magnet containing a shell magnetic is chemically distinct and physically distinct from said core magnet region ([0043], all Figs).
Although Simon discloses FeB-based alloy shell magnetic material comprising RE, Simon fails to explicitly disclose that the magnetic containing a shell magnetic material comprises of 0.1-10 wt.%, or 0.1-8 wt.% per claim 36, metal containing inoculant nanoparticles in the FeB-RE material.
Nakazawa teaches a R-Fe-B type rare earth permanent magnet containing HfC particles in the amount of 0.2-3 at% with size of 5-100 nm (Abstract), which are within the recited dimension and content of the metal containing inoculant nanoparticles in the instant claims. Nakazawa further teaches that the HfC are beneficial for grain refinement of Nd-FeB alloy and to improve coercive force (Abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Simon’s FeB-based alloy shell magnetic material comprising inoculate particle of HfC with the amount and particle size as claimed, as suggested by Nakazawa, in order to achieve grain refinement of Nd-FeB alloy and to improve the coercive force (Abstract).
Simon discloses that the magnet has a higher magnetic coercivity than that of the core magnet region and overlaps the claimed range (claim 36). Although Simon discloses that the coercivity relationship is greater than 10%, or 50% (claim 36: no upper bound for magnet), Simon fails to disclose that the coercivity was measured according to the specific testing parameters (ambient-temperature magnetic coercivity is measured at 25ºC and at elevated temperature at 150ºC). While Simon is silent of the specific testing parameters used in calculating the coercivity as claimed, the coercivity relationship between the magnet and core magnet region still generate the magnetic property as claimed of greater than 10% or 50%. There is a sound basis that Simon’s magnet and core magnetic region produces similar coercivity relationship as claimed when subjecting to the same testing parameters. USPTO does not have a laboratory to test out and experiment Simon’s invention. Thus, one of ordinary skill in the art would recognize that the testing parameter will possess similar results from any testing parameter, especially since Simon discloses having the claimed coercivity relationship to be greater than 10%, or 50%, which overlaps the claimed range absent of evidence to the contrary.
As such, the Examiner deems that Simon fully anticipates the claimed limitation despite the distinction in measuring when determining the property of the magnet and core magnet region. Moreover, a process limitation, as such, is not germane to the patentability of the claimed product unless it produces an unobvious difference, which does not appear to be the case.
However, given the distinction, alternative to anticipation should it be shown that the difference in methodology does produce an invention that has an unobvious difference, the Examiner deems that Simon renders the claimed limitations obvious as the characterization methodology are both used to characterize the magnet. Simon provides clear guidance on what is a desirable coercivity, as such the slight distinction in methodology would have been obvious to a person of ordinary skill in the art, to produce a magnet with the coercivity relationship as claimed in order to ensure a high overall magnetic performance and efficiency of a magnet body [0022].
In the alternative, 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 coercivity between core magnetic and magnet, 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 coercivity on what the end use permanent magnetic was used for.
Regarding the limitation “cladded” and a magnet “cladding” and “magnet cladding is produced by…”, even 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, 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). As set forth above, Simon discloses a magnet containing a shell magnetic material is chemically distinct and physically distinct from said core magnet region ([0043], all Figs). Nevertheless, Simon discloses a method of cladding [0034]. Additionally, Simon also discloses that the method of making magnet can be produce without using additive manufacturing or 3D printing [0011-0016], thereby reads upon claimed magnet is not additively manufactured in an integrated process.
Regarding claims 5-6, Simon discloses the material as claimed ([0039] and [0046]).
Regarding claim 7, please see [0061].
Regarding claim 9, please see Fig. 9 and 9a.
Regarding claims 10 and 12-13, please see Fig. 7.
Regarding claim 11, please see ([0022], [0036], [0064]).
Regarding claim 14, please see Fig. 6-8.
Regarding claims 15-17, please see [0047]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Regarding claim 18, Simon discloses that the magnet comprises of RE, thereby disclose the structure as claimed.
Regarding claims 19-21, Simon fails to disclose the areas of the one or more rare earth elements in the magnet would have the concentration as claimed. However, Simon discloses that graded magnetic properties can be tuned, which therefore encompasses the RE concentration as it is directed to magnetic properties. 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 areas of RE concentration, 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 relationship is critical and has unexpected results. In the present invention, one would have been motivated to optimize the areas of RE concentration as claimed to obtain a suitable magnetic property and dependent on what the end use magnet was used for.
Regarding claim 22, please see all Figs.
Regarding claim 24, the examiner is taking the position that the grain between two grains corresponds to the claimed grain boundaries. Alternative, Simon in view of Nakazawa discloses grain boundaries.
Regarding claim 25, please see Fig. 3-4.
Regarding claim 26, Simon discloses that the grains are equiaxed grains (Fig. 4).
Regarding claim 27, Simon discloses that the grains have a magnetic easy axis that is dictated by a crystallographic texture of said grains (Fig. 3-4).
Regarding claim 28, Simon discloses a high-energy product material [0044]. Further, the examiner is taking the position that the upper stratum of the magnetic grain would corresponds to the claimed thermally stable shell material as there is no structural or material difference between areas of the magnetic grain. Given that Simon in view of Nakazawa discloses the grain as claimed, high-energy product material as claimed.
Regarding claim 29, Simon discloses the coercivity is more than 10 kA/m [0062]. Although Simon discloses that the coercivity is more than 10 kA/m, Simon fails to disclose that the coercivity was measured according to the specific temperature. While Simon is silent of the specific testing parameters used in calculating the coercivity as claimed, the coercivity still generate the magnetic property as claimed of at least 4000 Oe. There is a sound basis that the Simon discloses the magnet’s coercivity as claimed when subjecting to the same testing parameters. USPTO does not have a laboratory to test out and experiment Simon’s invention. Thus, one of ordinary skill in the art would recognize that the testing parameter will possess similar results from any testing parameter, especially since Simon discloses having the claimed coercivity, which overlaps the claimed range absent of evidence to the contrary.
Regarding claims 30-31, the limitation “formed from…” even 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, 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)
Regarding claims 32-33, Simon discloses the shaped as claimed (Fig. 6-7).
Regarding claim 34, Simon discloses a prismatic shape (Fig. 8-9a).
Regarding claim 35, Simon discloses the product as claimed [0064].
Claim 8 is rejected under 35 U.S.C. 103 as obvious over Simon et al. (US 2017/0154713) in view of Nakazawa et al. (US 2012/0048431) and in view of McCallum (US 5,486,240).
Simon in view of Filip discloses a RE magnet as set forth above, however, fails to disclose the specific material of the inoculant particles as presently claimed.
The difference between Simon in view of Nakazawa and instant claims is that Nakazawa teaches that the rare earth magnet contains HfC (Abstract) while the instant claims recite Zr or ZrC. McCallum teaches a method for making a R-Fe-B type magnet (Abstract) and discloses that TRC precipitates minimize the grain growth during elevated temperature consolidation (Abstract). McCallum further discloses that TR is a transitional metal selected from at least one of Zr, Hf, etc. (Abstract). Thus, HfC and ZrC are considered functional equivalents in controlling the grain growth of R-Fe-B alloy at elevated temperature as disclosed by McCallum. It would be obvious to one of ordinary skill in the art that substituting HfC for ZiC in the magnet of Simon in view of Nakazawa would lead to expected success of controlling the abnormal grain growth of the R-Fe-B alloy at elevated temperature as disclosed by McCallum.
Response to Arguments
Applicant’s arguments with respect to claim 1 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 Simon does not teach a “cladded permanent magnetic”. This is because Simon discloses a magnet body which has graded compositions in the form of first and second regions in the body, wherein Simon discloses that the manufacturing method allows to tune the magnet body such that the chemical composition of the first region differs from the chemical composition of the second region, wherein the second region is located at the periphery of the magnetic body. Thereby, applicant concluded that Simon’s second region located at the periphery of the magnetic body is not considered physically distinct magnetic cladding that is disposed on a core magnetic region. The examiner respectfully disagrees.
Although Simon fails to explicitly disclose that the “second region” is “magnet cladding” and that “magnet body” or “first region” is “core magnet region”, nomenclatures of different portion of a magnet does not give patentable weight. See In re Danly, 263 F.2d 844, 847 (CCPA 1959) (holding that, “[r]egardless of the terminology used by the reference, claims are obvious where the prior art discloses or suggests the claimed structure”). As the Examiner finds, Simon discloses a permanent magnet comprising a core magnet region (23) containing a core magnetic material [0039], a magnet containing a shell magnetic material (24), wherein said shell magnetic material comprises a magnetic compound that is chemically the same as said core magnetic material ([0039], [0043]: can comprise of FeB based alloy), one or more rare earth elements [0043], and Zr [0044], and wherein said magnet is disposed on said core magnet region (Fig. 6-9), and wherein said magnet containing a shell magnetic is chemically distinct and physically distinct from said core magnet region ([0043], all Figs). see also Fritch, 972 F.2d at 1264.
Given that Simon discloses that the second region is physically distinct and disposed on a first region, with the composition as claimed, Simon’s second region would suggest “magnet cladding” and Simon’s first region would suggest “core magnet region as recited in claim 1 (Fig. 6-9 clearly depicts that the first and second regions are physically distinct). With the term “cladding”, Simon discloses a method of cladding [0034], thereby would consider to be cladded regions.
Applicant has amended the claims to provided product-by-process limitations to distinguished the claimed structure of Simon.
Regarding the limitation “cladded” and a magnet “cladding” and “magnet cladding is produced by…”, even 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, 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).
As set forth above, Simon discloses a magnet containing a shell magnetic material is chemically distinct and physically distinct from said core magnet region ([0043], all Figs). Nevertheless, Simon discloses a method of cladding [0034]. Additionally, Simon also discloses that the method of making magnet can be produce without using additive manufacturing or 3D printing [0011-0016], thereby reads upon claimed magnet is not additively manufactured in an integrated process. Simon discloses the material and structural features in the claimed magnet.
Further, there appears to be no criticality or structural difference between cladded permanent magnet is and is not additively manufactured in an integrated process. The instant specification recites, “it is possible to additively manufacture the entire cladded permanent magnet, including the core magnet region, which may have been previously additively manufactured or may be additively manufactured in an integrated process” (PGPUB: [0246]). These two different processes would still result of a core/shell magnet comprising a core and shell being materially different as well as being physically distinct from each other. In other words, there appears to be no material or structural difference between 3D-integral printing and 3D-non integral printing. Therefore, the examiner contends that Simon discloses the material and structure of a magnet as claimed.
Applicant argues that it would not have been obvious to modify Simon’s second region or shell with the teachings of Branagan, Filip, or Nakazawa. This is because the concentration of the carbide particles in Branagan, Filip, or Nakazawa is directed to a whole magnet body, and not specific regions of a magnet body (shell). Additionally, applicant argues that Simon’s structure in FIG. 6 implies a ratio of the second region (24) of about 5%, thereby argues it is theoretically impossible to add, for example, 10.1 wt.% ZrC of Branagan. Applicant’s arguments have been found unpersuasive.
However, note that while Branagan, Filip, and Nakazawa do not disclose all the features of the present claimed invention, Branagan, Filip, and Nakazawa 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 concentration of the carbide particles in relations to a magnet region, and in combination with the primary reference, discloses the presently claimed invention.
Although applicant argues Simon’s structure in FIG. 6 implies a ratio of the second region (24) of about 5%, thereby argues it is theoretically impossible to add, for example, 10.1 wt.% ZrC of Branagan. However, the concentration in the prior arts are based upon the magnet itself, not the area relationship between first and second region. Therefore, Simon’s second region are open to include 10 wt% of inoculant nanoparticles based upon 100% of second region, not to the overall magnet. Nonetheless, the core magnet region is open to include inoculant nanoparticles, thereby would overlap the claimed range. Additionally, Filip and Nakazawa discloses a narrower concentration that would also overlap the claimed range. Applicant has not provided any criticality associated with the concentration of the inoculant nanoparticles.
Furthermore, applicant stated that Simon’s structure in Fig. 6 implies a ratio of the second region (24) of about 5%, however, the examiner notes that attorney arguments cannot take the place of evidence in the record. There is no evidence of record that Simon discloses an area ratio of 5%. In fact, Simon discloses another configuration of the second region that does not imply or must be about 5% (Fig. 7-9). Therefore, for these reasons, Simon in view of Branagan, Filip, or Nakazawa would disclose the concentration as claimed absence of evidence to the criticality of the claimed range.
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 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.
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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
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