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
Response to Amendments
The amendment filed on 03/02/2026 has been entered. Claims 34 – 38 are newly added and finds support in at least [0031] of specification. The amendments find support in at least [0037, 0038] of the specification.
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 Yamamoto (JP2002/008911, using espacenet translation) in view of Tada (US2019/0027286)
Regarding claim 26, Yamamoto teaches forming a bonded magnet [0040]. Yamato teaches a SmFeN powder that contains a phosphate compound coating [0007]. Yamamoto teaches an example in which SmFeN magnetic powder is mixed with a phosphoric acid compound such that the phosphor amount is at least 1 part by weight per 100 parts of magnetic powder [0018], which falls within the claimed range, wherein the wt% content of phosphate (PO4) would be higher than phosphorous alone and therefore be reasonably expected to be greater than 0.5 wt%.
Yamamoto discloses producing the SmFeN with a phosphate coating and oxidation treatment applied to the phosphate coating [0030 – 0031]. Yamamoto teaches that the powder is mixed with a resin to form the bonded magnet [0021] and that one such resin is polypropylene [0022].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected the combination of the polypropylene as the resin with the disclosed powder example(s) of Yamamoto to make the bonded magnet disclosed in [0031] of Yamamoto. Given that polypropylene resin is explicitly disclosed as a suitable resin by Yamamoto, an ordinarily skilled artisan would have a reasonable expectation of success in achieving predictable results. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP 2144.07)
Yamamoto does not explicitly teach testing the change in total flux following immersion in 120°C hot water for 1000 hrs. However, Yamamoto discloses applying a phosphate coating at a pH of less than 5 [0017] and applying an oxidation treatment on the surface of powder at 200°C in the atmosphere (i.e. oxygen-containing) for 2 hours. Wherein [0023] and Table 1 of the instant invention discloses that this treatment produces an iron oxide film that meets the claimed test. As such, there is a reasonable expectation to an ordinarily skilled artisan that the bonded magnet of Yamamoto 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 anticipation is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (See MPEP 2112.01)).
Yamamoto does not explicitly teach the inclusion of Mo in the phosphate coating.
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 polypropylene and is subjected to a phosphating treatment [0024]. Tada teaches that Mo ions can be included in the phosphoric acid solution 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 the phosphoric acid solution of Yamamoto 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 Yamamoto. Moreover, given that both Yamamoto 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 Yamato. Lastly, an ordinarily skilled artisan would have been motivated to modify the teachings of Yamamoto 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, Yamamoto in view of Tada teaches the invention as applied in claimed 26. Yamamoto does not explicitly teach testing the exothermic onset of the SmFeN powder. However, Yamamoto as-modified discloses performing a phosphate coating at a pH of less than 5 [0017] and further discloses applying an oxidation treatment on the surface of powder at 200°C in the atmosphere (i.e. oxygen-containing) for 2 hours. Wherein Table 1 of the instant invention discloses that this treatment achieves a bonded magnet that meets the claimed test. As such, there is a reasonable expectation to an ordinarily skilled artisan that the bonded magnet of Yamamoto 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, Yamamoto in view of Tada teaches the invention as applied in claimed 26. Yamamoto does not explicitly teach the atomic concentration of Sm or Fe following phosphating and oxidation. However, Yamamoto discloses performing a phosphate coating at a pH of less than 5 [0017] and further discloses applying the oxidation treatment on the surface of powder at 200°C in the atmosphere (i.e. oxygen-containing) for 2 hours and [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 Yamamoto 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, Yamamoto in view of Tada teaches the invention as applied in claimed 26. Yamamoto 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, Yamamoto in view of Tada teaches the invention as applied in claimed 26. Yamamoto teaches that the powder has a thin film of silicon oxide formed [0038], meeting the claimed limitation.
Regarding claims 34 – 35, Yamamoto in view of Tada teaches the invention as applied in claimed 26. Yamamoto does not expressly disclose the formation of a first region with a high Mo-concentration layer/area.
However, Yamamoto in view of Tada discloses performing a phosphate coating at a pH of less than 5 [0017] with the inclusion of Mo ions as a crystal grain refining agent [0024, Tada] and further discloses applying the oxidation treatment on the surface of powder at 200°C in the atmosphere (i.e. oxygen-containing) for 2 hours and [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 Yamamoto 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, Yamamoto in view of Tada teaches the invention as applied in claimed 26. Yamamoto does not expressly disclose the formation of a first and/or second high Mo-concentration layer.
However, Yamamoto in view of Tada discloses performing a phosphate coating at a pH of less than 5 [0017] with the inclusion of Mo ions as a crystal grain refining agent [0024, Tada] and further discloses applying the oxidation treatment on the surface of powder at 200°C in the atmosphere (i.e. oxygen-containing) for 2 hours and [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 Yamamoto 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, Yamamoto in view of Tada teaches the invention as applied in claimed 36. Yamamoto does not expressly disclose a thickness of a first and/or second high Mo-concentration layer.
However, Yamamoto in view of Tada discloses performing a phosphate coating at a pH of less than 5 [0017] with the inclusion of Mo ions as a crystal grain refining agent [0024, Tada] and further discloses applying the oxidation treatment on the surface of powder at 200°C in the atmosphere (i.e. oxygen-containing) for 2 hours and [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 Yamamoto 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)
Response to Arguments
Applicant's amendments and arguments thereto have overcome the previous rejection of claims 26 – 27 and 31 – 33 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Yamamoto (JP2002/008911, using espacenet translation). Yamamoto does not teach the inclusion of Mo in the coating. Therefore, the rejection is 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 Yamamoto (JP2002/008911) in view of Tada (US2019/0027286).
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 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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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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