Detailed Office Action
Notice of Pre-AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA
Request to Continue Examination
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/30/26 has been entered.
Status of Claims
The response filed on 06/30/26 has been entered. Claims 15 – 38 are pending. Claims 15 – 25 and 28 – 30 remain withdrawn. Claims 26 – 27 and 31 – 38 are under examination.
Declaration under 37 CFR § 1.132
The declaration under 37 CFR 1.132 filed 06/30/26 is sufficient to overcome the rejection of claims 26 – 27 and 31 – 38 under 35 U.S.C. 103 as obvious over Yamamoto (JP2002/008911, using espacenet translation) in view of Tada (US2019/0027286).
The declarant is a named co-inventor of the pending application. The declaration provides data testing example 8 of Yamamoto and showing that the phosphate adhesion is below the claimed range. The examiner finds this persuasive that the examples of Yamamoto wherein the phosphate compound is added to the coating solution in an amount of 1 part per 100 parts relative to magnetic powder, would not necessarily result in magnetic powder possessing a PO4 content of greater than 0.5 wt%. The rejection is withdrawn.
Response to Arguments
Applicant’s arguments and the declaration provided (see discussion above) have been fully considered and are persuasive. The rejection of claims 26 – 27 and 31 – 38 under 35 U.S.C. 103 as obvious over Yamamoto (JP2002/008911) in view of Tada (US2019/0027286) has been withdrawn.
However, upon further consideration, a new rejection is made of:
Claims 26 – 27 and 31 – 38 under 35 U.S.C. 103 as obvious over Yamanaka (JP2017/043804, using espacenet translation) in view of Tada (US2019/0027286)
Claim Rejections – U.S.C. §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 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 26 – 27 and 31 – 38 are rejected under 35 U.S.C. 103 as obvious over Yamanaka (JP2017/043804, using espacenet translation) in view of Tada (US2019/0027286)
Regarding claim 26, Yamanaka teaches forming a bonded magnet with surface treated powder [0001].
Yamanaka teaches a SmFeN powder that is coated with a phosphate film [0029]. Yamanaka does not expressly state the content of phosphate in the coated magnetic powder, however, Yamanaka teaches a substantially identical method of coating the powder including mixing an SmFeN powder with a phosphoric acid solution and inorganic acid to adjust the pH to 3.2 [0029]. As such, there is a reasonable expectation to an ordinarily skilled artisan that Yamanaka would possess a phosphate content of greater than 0.5 wt%.
Yamanaka does not explicitly teach the inclusion of Mo in the phosphate coating. Yamanaka teaches any thermoplastic resin for injection molding can be used but does not expressly teach polypropylene.
Tada teaches a method of producing a rare earth-iron-nitrogen bonded magnet with hot water resistance [Abstract]. Tada also discloses that the coating contains a resin and is subjected to a phosphating treatment [0024]. Tada states that the acid-modified polypropylene (meeting the limitation of polypropylene) can be used to increase adhesion of the powder and improve hot water resistance [028, 0029]. Moreover, Tada teaches that Mo ions can be included in the phosphoric acid solution for phosphate coating because Mo acts as a crystal grain refining agent [0024].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified Yamanaka to include/use acid-modified polypropylene resin, as taught by Tada, as the binder resin. Tada is directed to phosphate coating of SmFeN bonded magnets and as such, an ordinarily skilled artisan would have considered the teachings of Tada to be pertinent to the invention of Yamanaka. Moreover, given that both Yamanaka and Tada use a resin and can form the bonded magnet via injection molding, an ordinarily skilled artisan would have had a reasonable expectation of success in using the acid-modified polypropylene resin in Yamanaka. Lastly, an ordinarily skilled artisan would have been motivated to modify the teachings of Yamanaka with those of Tada because Tada teaches that the acid-modified polypropylene resin increases adhesion of the individual powders and improves hot water resistance, a benefit an ordinarily skilled artisan would appreciate the magnet of Yamanaka [0005, 0018].
Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the phosphoric acid solution of Yamanaka to include Mo ions as taught by Tada. Tada is directed to phosphate coating of SmFeN bonded magnets and as such, an ordinarily skilled artisan would have considered the teachings of Tada to be pertinent to the invention of Yamanaka. Moreover, given that both Yamanaka and Tada use a phosphoric acid solution, an ordinarily skilled artisan would have had a reasonable expectation of success in including Mo ions with the teachings of Yamanaka. Lastly, an ordinarily skilled artisan would have been motivated to modify the teachings of Yamanaka with those of Tada because Tada teaches that the inclusion of Mo ions with the coating solution serves to refine the crystal grain of the coating.
Regarding claim 27, Yamanaka in view of Tada teaches the invention as applied in claimed 26. Yamanaka does not explicitly teach testing the exothermic onset of the SmFeN powder. However, Yamanaka as-modified discloses performing a phosphate coating at a pH of 3.2 and heat treating at 200°C to form a silica film [0029]
As such, there is a reasonable expectation to an ordinarily skilled artisan that the bonded magnet of Yamanaka as-modified would meet the claimed limitation.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, in this case composition and process of making, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (See MPEP 2112.01)).
Regarding claim 31, Yamanaka in view of Tada teaches the invention as applied in claimed 26. Yamanaka does not explicitly teach the atomic concentration of Sm or Fe following phosphating and oxidation.
However, Yamanaka teaches a substantially identical method of coating the powder including mixing an SmFeN powder with a phosphoric acid solution and inorganic acid to adjust the pH to 3.2 followed by heat treating at 200°C to form a silica film [0029]. As such, there is a reasonable expectation to an ordinarily skilled artisan that the bonded magnet of Yamanaka as-modified would meet the claimed limitation.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, in this case composition and process of making, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (See MPEP 2112.01)).
Regarding claim 32, Yamanaka in view of Tada teaches the invention as applied in claimed 26. Yamanaka does not explicitly disclose the presence of carbon and therefore, the carbon content is interpreted as ~0 ppm, meeting the claimed limitation.
Regarding claim 33, Yamanaka in view of Tada teaches the invention as applied in claimed 26. Yamanaka teaches that the powder has a thin film of silicon oxide formed [0029], meeting the claimed limitation.
Regarding claims 34 – 35, Yamanaka in view of Tada teaches the invention as applied in claimed 26. Yamanaka does not expressly disclose the formation of a first region with a high Mo-concentration layer/area.
However, Yamanaka in view of Tada discloses performing a phosphate coating treatment by mixing the SmFeN powder with a phosphoric acid solution and inorganic acid to adjust the pH to 3.2 and also including Mo ions as a crystal grain refining agent [0024, Tada]. Subsequently the phosphate coated powder is heat treated at 200°C to form a silica film [0029]. [0026] of the instant invention discloses that this treatment produces a first and second region of the phosphate coating with atomic concentration ratios that meet the claimed limitations.
As such, there is a reasonable expectation to an ordinarily skilled artisan that the bonded magnet of Yamanaka in view of Tada would naturally result in meeting the claimed limitation of the phosphate coating having a first region with a high Mo-concentration layer and said layer having a concentration of Mo that is 1.1 – 40 times the concentration of Mo in the first region, excluding the layer.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, in this case composition and process of making, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (See MPEP 2112.01)). "[I]n order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis – the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." Id. at 1195-96, 112 USPQ2d at 1952. But see, Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements." (emphasis in original). (MPEP 2112 IV)
Regarding claim 36, Yamanaka in view of Tada teaches the invention as applied in claimed 26. Yamanaka does not expressly disclose the formation of a first and/or second high Mo-concentration layer.
However, Yamanaka in view of Tada discloses performing a phosphate coating treatment by mixing the SmFeN powder with a phosphoric acid solution and inorganic acid to adjust the pH to 3.2 and also including Mo ions as a crystal grain refining agent [0024, Tada]. Subsequently the phosphate coated powder is heat treated at 200°C to form a silica film [0029]. [0026] of the instant invention discloses that this treatment produces a first and second region of the phosphate coating with atomic concentration ratios that meet the claimed limitations.
As such, there is a reasonable expectation to an ordinarily skilled artisan that the bonded magnet of Yamanaka in view of Tada would naturally result in meeting the claimed limitation of the phosphate coating having a first region with a first high Mo-concentration layer, a second region with a second high Mo-concentration layer, that the first layer has a concentration of Mo that is 1.1 – 40 times the concentration of Mo in the first region, and that the second layer has a concentration of Mo that is 1.1 – 20 times the concentration of Mo in the second region.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, in this case composition and process of making, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (See MPEP 2112.01)). "[I]n order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis – the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." Id. at 1195-96, 112 USPQ2d at 1952. But see, Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements." (emphasis in original). (MPEP 2112 IV)
Regarding claim 37 – 38, Yamanaka in view of Tada teaches the invention as applied in claimed 36. Yamanaka does not expressly disclose a thickness of a first and/or second high Mo-concentration layer.
However, Yamanaka in view of Tada discloses performing a phosphate coating treatment by mixing the SmFeN powder with a phosphoric acid solution and inorganic acid to adjust the pH to 3.2 and also including Mo ions as a crystal grain refining agent [0024, Tada]. Subsequently the phosphate coated powder is heat treated at 200°C to form a silica film [0029]. [0026] of the instant invention discloses that this treatment produces a first and second region of the phosphate coating with atomic concentration ratios that meet the claimed limitations.
As such, there is a reasonable expectation to an ordinarily skilled artisan that the bonded magnet of Yamanaka in view of Tada would naturally result in meeting the claimed limitation of the first and second layers having a thickness of 1 to 40 nm.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, in this case composition and process of making, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (See MPEP 2112.01)). "[I]n order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis – the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." Id. at 1195-96, 112 USPQ2d at 1952. But see, Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements." (emphasis in original). (MPEP 2112 IV)
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US2011/0315913 – Discussion of surface treating permanent rare earth magnets including SmFeN. The first coating is a phosphoric acid compound added in a range of 0.1 – 5 wt%, a alkoxysilyl group coating, a silane coupling agent coating, and a polypropylene binder resin
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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