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 .
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.
The instant claims contain the transitional phrase “comprising”. Per MPEP 2111.03 ‘The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps'. This open-ended definition has been taken into consideration in the following rejections.
Claims 20-24, 27, 28, 30, 36, and 39 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2013-098254A to Tada et al. (hereinafter Tada), using a machine translation.
Regarding claim 20, Tada discloses a method for producing a phosphate-coated SmFeN-based anisotropic magnetic powder (para [0003] and [0015]), the method comprising:
a phosphate treatment of adding an inorganic acid to a slurry (solution) containing an SmFeN-based anisotropic magnetic powder, water, and an inorganic phosphate compound, as needed, to adjust a pH of the slurry to a range of 3 to 5 (para [0036]-[0037), which overlaps the instantly claimed range of 1 to 4.5 to form a phosphate-coated SmFeN-based anisotropic magnetic powder having a surface coated with a phosphate (para [0037]). See MPEP 2144.05(I), which states ‘In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists’.
Regarding claim 21, Tada discloses the method for producing a phosphate-coated SmFeN-based anisotropic magnetic powder according to claim 20, wherein a content of a phosphate in the phosphate-coated SmFeN-based anisotropic magnetic powder is 5 parts by weight (para [0049]), which overlaps the instantly claimed range of greater than 0.5 mass%. See MPEP 2144.05(I),cited above.
Regarding claim 22, Tada discloses the method for producing a phosphate-coated SmFeN-based anisotropic magnetic powder according to claim 20, but is silent regarding the limitation “wherein in the phosphate-coated SmFeN-based anisotropic magnetic powder formed in the phosphate treatment, a phosphate coating present on a surface of the phosphate-coated SmFeN-based anisotropic magnetic powder has a region in which an Sm atomic concentration is higher than an Sm atomic concentration in the SmFeN-based anisotropic magnetic powder”. However, see MPEP 2112.01(I), which states that ‘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…"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."…Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product’. The powders overlap and are made by overlapping methods. Therefore, one of ordinary skill in the art would expect the Tada powder to have overlapping properties including but not limited to overlapping Sm concentrations, absent evidence to the contrary.
Regarding claim 23, Tada discloses the method for producing a phosphate-coated SmFeN-based anisotropic magnetic powder according to claim 20, wherein in the phosphate treatment, the adjusting of the pH of the slurry is carried out over a period of 10 minutes (para [0049]), which overlaps the instantly claimed range of 10 minutes or longer. See MPEP 2144.05(I), cited above.
Regarding claim 24, Tada discloses the method for producing a phosphate-coated SmFeN-based anisotropic magnetic powder according to claim 20, wherein in the phosphate treatment, the pH of the slurry is adjusted to a range of 3 to 5 (para [0037]), which overlaps the instantly claimed range of 1.6 to 3.9. See MPEP 2144.05(I), cited above.
Regarding claim 27, Tada discloses a phosphate-coated SmFeN-based anisotropic magnetic powder having a phosphate content of 5 parts by weight (para [0049]), which overlaps the instantly claimed range of greater than 0.5 mass%. See MPEP 2144.05(I),cited above. Both the acid and the phosphate are inorganic in an aqueous solution comprising SmFeN-based magnetic powder. No organic materials are used. As no carbon is expected to the present, the Tada phosphate coated magnetic particle is expected to have 1000 ppm or less carbon content, absent evidence to the contrary. The reference is silent regarding an exothermic onset temperature according to differential scanning calorimetry (DSC) of 170°C or higher. However, see MPEP 2112.01(I), cited above. The reference teaches an overlapping powder made by an onlapping method. Therefore, one of ordinary skill in the art would expect an exothermic onset temperature according to differential scanning calorimetry (DSC) of 170°C or higher, absent evidence to the contrary.
Regarding claim 28, Tada discloses the phosphate-coated SmFeN-based anisotropic magnetic powder according to claim 27, but is silent regarding the limitation “wherein in an XRD diffraction pattern of the phosphate-coated SmFeN-based anisotropic magnetic powders, a ratio (I)/(II) of a diffraction peak intensity (I) of a (110) plane of αFe to a diffraction peak intensity (II) of a (300) plane is 2.0 X 10⁻² or less”. The reference teaches an overlapping SmFeN-based powder made by an onlapping method. Therefore, per MPEP 2112.01(I), cited above, one of ordinary skill in the art would expect overlapping XRD patterns, absent evidence to the contrary.
Regarding claim 30, Tada discloses the phosphate-coated SmFeN-based anisotropic magnetic powder according to claim 27 but is silent regarding the limitation “wherein a phosphate coating present on a surface of the phosphate-coated SmFeN-based anisotropic magnetic powder has a region in which an Sm atomic concentration is higher than an Sm atomic concentration in the SmFeN-based anisotropic magnetic powder”. However, see MPEP 2112.01(I), cited above. The powders overlap and are made by overlapping methods. Therefore, one of ordinary skill in the art would expect the Tada powder to have overlapping properties including but not limited to overlapping Sm concentrations, absent evidence to the contrary.
Regarding claims 36 and 39, Tada discloses a bonded magnet compound (para [0046]-[0047]).
Claim 36 is a product by process claim. It is noted that Tada does not explicitly teach the claimed process as written, however, MPEP 2113 states “[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. 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
MPEP 2113 also states “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979)”. In the instant case, it is found that the instantly claimed process of making the claimed product does not impart any structural or functional characteristics to the claimed product.
The limitations directed to the method for producing the claimed composition are not considered to add patentable weight to the examination of the product claims. It is well settled that if the examiner can find a product in the prior art that is the same or so similar as to have been obvious, the burden can be shifted to the applicant to demonstrate that the process for producing the composition somehow imparts a patentable distinction to the composition under examination.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Tada in view of over JP2002-43109 A to Yamamoto et al. (hereinafter Yamamoto) provided with a machine translation in the IDS filed 5/18/23.
Regarding claim 25, Tada discloses the method for producing a phosphate-coated SmFeN-based anisotropic magnetic powder according to claim 20, further comprising, after the phosphate treatment, oxidation by heat treating the phosphate-coated SmFeN-based anisotropic magnetic powder via known methods to form an oxide film (para [0038]) but fails to further disclose the oxidation method.
However, Yamamoto does teach a method of oxidizing a phosphate coated magnetic powder in an oxygen-containing atmosphere at a temperature in a range of 130°C to 300°C (para [0008]) which overlaps the instantly claimed range of 150°C to 250°C. See MPEP 2144.05(I),cited above.
It would be obvious to one of ordinary skill in the art to employ the known method of oxidizing the coated powder in an oxygen-containing atmosphere at a temperature that at least overlaps the instantly claimed temperature range as set forth in Yamamoto as the oxidation treatment of Tada to facilitate formation of inorganic oxide films such as silica and alumina on the surface of the coated magnetic particles (Tada, para [0037]) in a simple and cost-effective manner.
Claims 31-35, 37, and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Tada in view of US 2019/0224747 A1 to Yamanaka et al. (hereinafter Yamanaka).
Regarding claim 31, Tada discloses a method for producing a bonded magnet compound, the method comprising:
providing an additive comprising a thermosetting resin (epoxy or styrene) and additional additives (para [0039], [0044], and [0045]);
kneading the additive comprising a thermosetting resin, the phosphate-coated SmFeN-based anisotropic magnetic powder according to claim 27 (para [0049]), and a thermoplastic resin (PPS) to form a bonded magnet compound (para [0046]-[0047]).
Tada does not expressly recite forming a bonded magnet additive by heat curing a thermosetting resin and additional additives wherein the additives include a curing agent, wherein a ratio of a number of reactive groups in the curing agent to a number of reactive groups in the thermosetting resin is in a range of 2 to 11. Tada also teaches a 60 vol% filling ratio of the phosphate-coated SmFeN-based magnetic powder (para [0052]) but is silent regarding a filling ratio of the phosphate-coated magnetic powder in the bonded magnet compound of 91.5 mass% or higher.
However, Yamanaka does teach a method of forming a bonded magnet comprising forming a bonded magnet additive by heating a thermosetting resin and curing agent, wherein a ratio of a number of reactive groups in the curing agent to a number of reactive groups in the thermosetting resin is in a range of 2 to 10, kneading the bonded magnet additive and a coated magnetic powder, such as SmFeN-based powder (para [0016]) and heat curing the mixture to form a bonded magnet (para [0006] and [0021]). A range of 2 to 10 closely overlaps the instantly claimed range of 2 to 11. See MPEP 2144.05(I), cited above. Yamanaka further teaches a filling ratio of the phosphate-coated magnetic powder in the bonded magnet compound of 93 mass% or higher (para [0040]), which falls within the instantly claimed range of 91.5 mass% or higher.
It would be obvious to one of ordinary skill in the art to optimize the filling ratio of magnetic powder in the bonding compound to improve remanence (Yamanaka, para [0040]). It would also be obvious to employ the curing agent of Yamanaka, wherein a ratio of a number of reactive groups in the curing agent to a number of reactive groups in the thermosetting resin is in a range of 2 to 10, as an additive in the bonding agent material of Tada to impart moderate mechanical strength to the cured product and compound for bonded magnets when kneading with thermoplastic resins, in addition to improving remanence (Yamanaka, para [0014]).
Regarding claim 32, Tada discloses a method for producing a bonded magnet compound (para [0046]), the method comprising:
forming an additive comprising a thermosetting resin (styrene polymers, para [0044]) and additional additives (para [0039], [0044], and [0045]);
kneading the bonded magnet additive and a thermoplastic resin to form a bonded magnet resin composition (para [0047]); and
kneading the bonded magnet resin composition and the phosphate-coated SmFeN-based anisotropic magnetic powder according to claim 27 (para [0051)] to form a bonded magnet (para [0053]).
Tada does not expressly recite forming a bonded magnet additive by heat curing a thermosetting resin and a curing agent, wherein a ratio of a number of reactive groups in the curing agent to a number of reactive groups in the thermosetting resin is in a range of 2 to 11;
However, Yamanaka does teach a method of forming a bonded magnet comprising forming a bonded magnet additive by heating a thermosetting resin and curing agent, wherein a ratio of a number of reactive groups in the curing agent to a number of reactive groups in the thermosetting resin is in a range of 2 to 10, (para [0006]). A range of 2 to 10 closely overlaps the instantly claimed range of 2 to 11. See MPEP 2144.05(I), cited above
It would be obvious to one of ordinary skill in the art to employ the curing agent of Yamanaka, wherein a ratio of a number of reactive groups in the curing agent to a number of reactive groups in the thermosetting resin is in a range of 2 to 10, as an additive in the bonding agent material of Tada to impart moderate mechanical strength to the cured product and compound, in addition to improving remanence (Yamanaka, para [0014]).
Regarding claim 33, Tada in view of Yamanake discloses the method for producing a bonded magnet compound according to claim 31. Tada further discloses wherein the thermoplastic resin is a nylon resin (para [0042]).
Regarding claim 34, Tada in view of Yamanake discloses the method for producing a bonded magnet compound according to claim 31.Tada further discloses wherein a particle size distribution of the phosphate-coated SmFeN-based anisotropic magnetic powder is a mono-dispersion, 2 to 3 µm (para [0029]), substantially uniform or monodisperse.
Regarding claim 35, Tada in view of Yamanake discloses the method for producing a bonded magnet compound according to claim 31. Tada further discloses wherein the phosphate-coated SmFeN-based anisotropic magnetic powder comprises Sm, Fe, and N (para [0031]).
Regarding claim 37, Tada discloses a method for producing a bonded magnet compound (polymer alloy resin compound, para [0051]), the method comprising:
forming an additive comprising a thermosetting resin (styrene polymers, para [0044]) and additional additives (para [0039], [0044], and [0045]);
kneading the bonded magnet additive and a thermoplastic resin to form a bonded magnet resin composition (para [0047]); and
kneading the bonded magnet resin composition, a thermoplastic resin and the phosphate-coated SmFeN-based anisotropic magnetic powder according to claim 27 to form a bonded magnet compound (polymer alloy resin compound, para [0051])
kneading the additive comprising a thermosetting resin, the phosphate-coated SmFeN-based anisotropic magnetic powder according to claim 27, and a thermoplastic resin to form a bonded magnet compound (para [0051]) in which a filling ratio of the phosphate-coated SmFeN-based anisotropic magnetic powder in the bonded magnet compound is 60 vol% (para [0052]); and
injection molding the formed bonded magnet compound (para [0052]).
Tada does not expressly recite forming a bonded magnet additive by heat curing a thermosetting resin and additional additives wherein the additives include a curing agent, wherein a ratio of a number of reactive groups in the curing agent to a number of reactive groups in the thermosetting resin is in a range of 2 to 11 or a filling ratio of the phosphate-coated magnetic powder in the bonded magnet compound of 91.5 mass% or higher.
However, Yamanaka does teach a method of forming a bonded magnet comprising forming a bonded magnet additive by heating a thermosetting resin and curing agent, wherein a ratio of a number of reactive groups in the curing agent to a number of reactive groups in the thermosetting resin is in a range of 2 to 10, kneading the bonded magnet additive and a coated magnetic powder, such as SmFeN-based powder (para [0016]) and heat curing the mixture to form a bonded magnet (para [0006] and [0021]). A range of 2 to 10 closely overlaps the instantly claimed range of 2 to 11. See MPEP 2144.05(I), cited above. Yamanaka further teaches a filling ratio of the phosphate-coated magnetic powder in the bonded magnet compound of 93 mass% or higher (para [0040]), which falls within the instantly claimed range of 91.5 mass% or higher.
It would be obvious to one of ordinary skill in the art to optimize the filling ratio of magnetic powder in the bonding compound to improve remanence (Yamanaka, para [0040]). It would also be obvious to employ the curing agent of Yamanaka, wherein a ratio of a number of reactive groups in the curing agent to a number of reactive groups in the thermosetting resin is in a range of 2 to 10, as an additive in the bonding agent material of Tada to impart moderate mechanical strength to the cured product and compound for bonded magnets when kneading with thermoplastic resins, in addition to improving remanence (Yamanaka, para [0014]).
Regarding claim 38, Tada discloses a method for producing a bonded magnet compound (para [0051]), the method comprising:
providing an additive comprising a thermosetting resin and additional additives (para [0039], [0044], and [0045]);
kneading the bonded magnet additive and a thermoplastic resin to form a bonded magnet resin composition (two or more, para [0047]); and
kneading the bonded magnet resin composition, the phosphate-coated SmFeN-based anisotropic magnetic powder according to claim 27 to form a bonded magnet compound (para [0051]); and
injection molding the formed bonded magnet compound (para [0047]).
Tada does not expressly recite forming a bonded magnet additive by heat curing a thermosetting resin and a curing agent, wherein a ratio of a number of reactive groups in the curing agent to a number of reactive groups in the thermosetting resin is in a range of 2 to 11;
However, Yamanaka does teach a method of forming a bonded magnet comprising forming a bonded magnet additive by heating a thermosetting resin and curing agent, wherein a ratio of a number of reactive groups in the curing agent to a number of reactive groups in the thermosetting resin is in a range of 2 to 10, (para [0006]). A range of 2 to 10 closely overlaps the instantly claimed range of 2 to 11. See MPEP 2144.05(I), cited above
It would be obvious to one of ordinary skill in the art to employ the curing agent of Yamanaka, wherein a ratio of a number of reactive groups in the curing agent to a number of reactive groups in the thermosetting resin is in a range of 2 to 10, as an additive in the bonding agent material of Tada to impart moderate mechanical strength to the cured product and compound, in addition to improving remanence (Yamanaka, para [0014]).
Response to Arguments
Applicant’s arguments, see page 6, filed 6/30/26, with respect to the claim objection have been fully considered and are persuasive. The most recent amendment to the claim resolves the issues.
Therefore, the objection to claim 39 has been withdrawn.
Applicant’s arguments, see page 6, filed 6/30/26, with respect to the double patenting rejections, have been fully considered and are persuasive. A proper terminal disclaimer was filed on 6/30/26.
Therefore, the nonstatutory double patenting rejection of claims 20-25 as unpatentable over claims 1 and 5-17 of 958 has been withdrawn.
The nonstatutory double patenting rejection of claim 26 as unpatentable over the claims of 958 is moot because the claim has been canceled.
The nonstatutory double patenting rejection of claims 31-35, 37, and 38 as unpatentable over claims 1-7 and 9-17 of 438 has been withdrawn.
The provisional nonstatutory double patenting rejection of claims 20-25, 27, 28, 30, 34, 36, and 39 as unpatentable over claims 15-24 and 27-32 of 676 has also been withdrawn.
The provisional nonstatutory double patenting rejection of claims 26 and 29 as unpatentable over the claims of 676 is moot because the claims have been canceled.
Applicant’s arguments, see pages 6-9, filed 6/30/26, with respect to Yamamoto have been fully considered and are persuasive. The newly amended claims require the addition of an inorganic acid to an aqueous slurry comprising magnetic particles and an inorganic phosphate compound with pH adjustment. Yamamoto adds magnetic powder to an aqueous solution of the phosphate compound that has a pH of 2. While the addition of a neutral magnetic powder is not expected to substantially alter pH, there is no positive step of pH adjustment. Yamamoto also teaches that the acid can be inorganic or organic. However, the phosphate compounds are all organic. Some residual carbon may be present after heating, but the reference does not teach that the magnetic powder contains less than 1000 ppm carbon.
Therefore, the 103 rejection of claims 20-30, 34, 36, and 39 as obvious over Yamamoto has been withdrawn.
The 103 rejection of claims 31-33, 35, 37, and 38 as obvious over Yamamoto in view of Yamanaka has also been withdrawn.
The 103 rejection of claims 26 and 29 as obvious over Yamamoto is moot because the claims have been canceled.
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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/L.E./Examiner, Art Unit 1734 /Matthew E. Hoban/Primary Examiner, Art Unit 1734
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