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 .
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18266007 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are drawn to a composition having an overlapping range in terms of R, Co, B, Al, Cu, Ga, Zr, and Fe (See Instant claims 1 and 5-16 and Copending Claims 6 and 8-17). The copending and instant claims each teach an overlapping amount and type of R, Co, B, Al, Cu, Ga, Zr and Fe. The copending claims teach the content of Ce is 15 to 25% relative to the total content of R (See Copending Claim 4). Overlapping ranges have been held to present a prima facie case of obviousness over the prior art. Those of ordinary skill would only need to select from the overlapping portion of the range to arrive at the invention as claimed. The subject matter of instant claim 2 is taught by copending claim 1. As the instant and copending composition is compositionally the same, the subject matter of instant claim 3 would have necessarily followed from the creation of the copending composition. Instant Claim 4 corresponds to copending Claim 15. Instant claims 5-14 correspon generally to copending claims 6-14. Instant Claim 15 corresponds to copending claim 5. Instant claim 16 corresponds to copending claim 17. Thus all of the instant claims are anticipated or rendered obvious by the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18266168 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are drawn to a composition having an overlapping range in terms of R, Co, B, Al, Cu, Ga, Zr, and Fe (See Instant claims 1 and 5-16 and Copending Claims 1-2 and 5-15). The copending and instant claims each teach an overlapping amount and type of R, Co, B, Al, Cu, Ga, Zr and Fe. Copending Claim 1 sets forth similar contents of cerium relative to the rest of the rare earth component. The copending claims set forth the present of RTB grains and the presence of a grain boundary, but are silent in terms of what phases are present in the grain boundary and content of cerium relative to the main phase (Re: instant claims 2-3); however, the composition of the copending claims is of the same composition and structure as that which is claimed. As this is the case, the composition of the copending claims would have been expected to have the same components in the grain boundary, which would include an RT phase and a content of Ce greater than the amount in the main phase. Instant claim 4 corresponds to copending claim 16. Instant claims 5-14 variously correspond to copending claims 1-2 and 5-15. Instant Claim 15 corresponds with copending claim 3. Instant claim 16 corresponds with copending claim 18.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, see page 5, filed 4/7/26, with respect to the rejection(s) of claim(s) 1-5 under USC 103 over Furuta have been fully considered and are persuasive. Applicant’s other amendments are also noted, which render moot the previously made rejections under USC 112. On this basis the rejections under USC 103 and 112 are withdrawn. However, upon further consideration, a new ground(s) of rejection is made under nonstatutory double patenting. The two copending cases were previously cited as not being relevant to the claims as they did not anticipate or render obvious each and every feature of the instant claims. However, in the time since the previous communication, the copending claims and instant claims have been amended to include an overlapping range of subject matter; namely, the copending claims have been amended to include an overlapping range of all of the instantly claimed composition requirements.
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 MATTHEW E HOBAN whose telephone number is (571)270-3585. The examiner can normally be reached M-F 9:30am-6:00pm.
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, Jonathan Johnson can be reached at 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew E. Hoban/Primary Examiner, Art Unit 1734
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