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 22, 30 and 36-38 have been amended, claim 23 has been canceled, and therefore claims 22 and 24-38 are currently under consideration in the application.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 22 and 24-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 11,607,731. Although the claims at issue are not identical, they are not patentably distinct from each other because even though the instant claim 22 as amended includes a preamble that recites a method of making a magnet, however said claim sets forth no substantial steps involved in the process, except reciting, substantially the same structural features of a caster assembly as recited in the Patented claim 1, to include a powder generating assembly configured to receive a material from a melting vessel, the powder generating assembly comprising: (aa) a feeding chamber; and (bb) a feeding device disposed at least partially within the feeding chamber, the feeding device comprising at least one nozzle configured to inject inert fluid, where the inert fluid is a gas, liquid, or combination of the two, into the feeding chamber, the feeding device further comprising a material inlet through which the material is configured to flow into the feeding chamber to be exposed to the inert fluid; a flake generating assembly comprising a wheel configured to selectively receive the material; and a book molding assembly comprising a book mold. Hence the scope of the Patented claim 1 and the instant claim 22 as amended are coextensive.
Claim Objections
Claims 22 and 30 are objected to because of the following informalities:
In claim 22, lines 1-3, it is suggested to replace “A method of making a magnet, comprising: producing atomized powders, strip casted flakes, or bulk alloy objects using a caster assembly; and” with --“A method of making a magnet, comprising: producing atomized powders, strip casted flakes, and bulk alloy objects using a caster assembly; and” --. Because the body of the claim as instantly amended requires all the three products namely, atomized powders, strip casted flakes, and bulk alloy objects to be produced without any one of them being optional.
In claim 1, lines 15-16, it is suggested to replace “a flake generating assembly comprising a wheel configured to selectively receive the material” with -- a flake generating assembly comprising a wheel configured to selectively receive the material from a melting vessel--.
In claim 30, the status identifier of claim 30 should be changed from “(Previously presented)” to “(Currently amended)”. Appropriate correction is required.
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 22 and 24-38 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.
Claim 22 as instantly amended raises a new issue of clarity, in that the powder generating assembly is configured to receive a material from a melting vessel, and the flake generating assembly comprising a wheel configured to selectively receive the material; however, the book molding assembly lacks any step of or means for receiving the material from a melting vessel. Furthermore, it is unclear from the manner in which the claim is written as to how the receipt of the material from the melting vessel by the wheel of the flake generating assembly is selectively performed; and how it is different from the manner in which the material is received in the case of the powder generating assembly. The claim is therefore rendered indefinite since the scope is unascertainable.
Double Patenting
Applicant requests for the non-statutory double patenting rejection of claims 22 and 24-38 as being unpatentable over claims 1-27 of U.S. Patent No. 11,607,73 in the previous office action to be held in abeyance until an indication of allowable subject matter is acknowledged.
Response to Arguments
Applicant’s arguments with respect to claims 2, and 24-38 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.
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.
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/M.A/Examiner, Art Unit 1733
/JESSEE R ROE/Primary Examiner, Art Unit 1759