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 1-2,4-15 and 18-23 are pending. Claims 1-2,4-13 and 18-23 are presented for this examination. Claims 14-15 are withdrawn. Claims 1-2, 5, 7, 12, 18 are amended. Claims 3, 16-17 are cancelled. Claims 19-23 are newly added.
Status of Previous Rejection
Rejection over Scharrer are maintained from previous office action of 12/23/2025.
Rejection over Ozeki are withdrawn from previous office action of 12/23/2025.
A new ground of art rejection and 112 1st are both rendered in view of amendment of claim 1.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 08/07/2023, 11/16/2023 and 11/26/2025 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Instant claims 21-23 recitation are neither supported by original specification nor original claims.
Hence, claims 21-23 are rejected under 112 1st for new matter.
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 18, 22 and 23 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 pre-AIA the applicant regards as the invention.
Claim 18 recites the limitation "the second mixture" in line 2. Since claim 18 depends on claim 9, which depends on claim 1, there is insufficient antecedent basis for this limitation in either claims 1, 9 or 18. It is unclear whether it refers to the second mixture of claim 7 or something else. Clarification is required.
Claim 22 recites the limitation "the magnetic base materials" in line 3. There is insufficient antecedent basis for this limitation in the claim. Does it refer to “the first and second magnetic base materials” or something else?
Claim 23 recites the limitation "the layer" in line 3. There is insufficient antecedent basis for this limitation in the claim. Does it refer to “the separating layer” or something else?
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 4-6, 8, 11, 20-21 and 23 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Johnson (US20100243946A1).
As for claims 1-2, 4-6, 8, 11, 20-21 and 23, Johnson discloses a method of making high resistivity magnetic materials (title) Figure 9 below discloses a multilayer structure 920 having a first permanent magnetic layer 902 from a first magnetic base powder; and a second permanent magnetic layer 904 from a second magnetic based powder, an interaction layer 908 which is a chemical reaction product between Nd of the NdFeB of layer (904 or 902) and a non-conductive layer 906 [0068], aligning the multilayer within an external magnetic field (claim 2) after manufacturing of the first and second permanent magnetic materials, compressing the multilayer and sintering the multilayer; followed by annealing the layer. Hence, the non-conductive layer 906 supports instant amended separating layer forming substance into contact with at least one connection surface selected from the first and the second magnetic layers. The interaction layer 908 supports claimed separating layer. The interaction layer is expected to be electrically insulating layer as required by instant claim 2. The non-conductive layer is rare earth oxide ([0063] and claim 4) as required by instant claim 4. The first and second magnetic base powder is NdFeB (claim 9) as required by instant claim 5 or SmCo (Claim 9) as required by instant claim 6. Since the multilayer structure if formed by uniaxial compression 9[0063], it supports instant claim 8 wherein clause. Compress step meets instant claim 11 required substance to substance bonding. Since Figure 7 disclose aligning step 708 is before sintering step 706, instant claim 20 is expected. Since the non-conductive layer includes a mixture of rare earth oxide and an oxide compound, [0063] which suggests a chemical reduction reaction of the rare earth oxide and the oxide compound each chemically reacts with the first and second magnetic powder respectively as required by claim 21. Annealing step after the sintering step supports instant claim 23 required post sintering surface treatment step.
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Claim(s) 1-2, 4-5, 8, 11 and 17 and 20 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Scharrer (DE102012208362A1).
As for claim 1, Scharrer discloses a method of making a permanent magnet, the method comprising:
Depositing a first layer of magnetic powder in a mold, which reads on claimed manufacturing a first raw form from a first magnetic base material [0022]
Depositing an intermediate layer on top of the first layer of magnetic powder, which reads on claimed separating layer.[0022]
Further depositing a second layer on top of the intermediate layer, the magnetic powder of the second layer different from the magnetic powder of the first layer [0023], which reads on claimed manufacturing a second raw form from a second magnetic base material.
Given the intermediate layer is between the first and second layer of magnetic powder, instant claimed separating layer being provided between a first connection surface of the first raw form and a second connection surface of the second raw form is met. Instant claimed manufacturing a third raw form from the first and second raw form by joining the first and second raw forms together is expected.
During each depositing step, exposing the mold to a magnetic field [0028], which reads on claimed applying an external magnetic field
Sintering the mold (i.e. claimed third raw form) after each depositing steps [0005]
With respect to amendment, Scharrer explicitly discloses the intermediate layer is a substance (i.e. claimed separating layer forming substance) that reacts chemically with the magnetic powder (i.e. claimed first and/or second magnetic base material) to ultimately form a poorly conductive layer (i.e. claimed separating layer), which is capable of reducing eddy current losses. [0013]
Hence, Scharrer anticipated instant claim 1.
As for claim 2, since the intermediate layer is electrically non-conductive [0006],instant claimed wherein clause is met.
As for claim 4, the intermediate layer is made of ceramic compounds (i.e. claimed forming substance) ([0008])
As for claim 5, Scharrer discloses the magnetic powder of the first layer and second layer is rare earth metal and material such as B, Co. [0024] Hence, RxTyB is expected if R is rare earth, T is Co.
As for claim 8, Scharrer discloses pressing process is repeated after each depositing step. [0026] Hence, instant claimed cold pressing is expected.
As for claim 11, Scharrer discloses depositing step is repeated until the mode (i.e. claimed third raw form) is filled. Hence, claimed substance to substance bonding is expected.
As for claim 17, since the magnetic powder is made of rare earth metal [0024], instant claimed particles of a rare earth rich phase is expected.
As for claim 20, during each depositing step, exposing the mold to a magnetic field [0028], which reads on claimed wherein clause.
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 factual inquiries 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.
Claim(s) 19 is rejected under 35 U.S.C. 103 as being unpatentable over Johnson.
As for claim 19, Johnson discloses the thickness of interaction layer is less than about 1000 microns, which overlaps claimed range. It is expected to reduce eddy current loss. Hence, claimed providing controlled interruption of eddy current path is expected.
Claim(s) 19 is rejected under 35 U.S.C. 103 as being unpatentable over Scharrer
As for claim 19, thickness of the intermediate layer is a few microns to 1000 microns [0022], which overlaps claimed 1-500 microns.
Claim(s) 6, 13 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Scharrer in view of Ozeki (US20110012460A1).
As for claims 6, 13 and 22, Scharrr does not discloses instant claim 6 wherein clause and sintering in Ar or vacuum atmosphere.
Ozeki discloses method for manufacturing a permanent magnet by laminating a plurality of sheet magnets with an insulating layer arranged between the plurality of sheet magnets. A pulsed field is applied to the plurality of sheet magnets. ([0113]) The laminated structure is then sintered to produce the permanent magnet. (Claim 1) The sintering is in Ar or in a vacuum.[0114]
Since Ozeki discloses permanent magnet includes SmCo based magnet [0003], instant claim 6 required wherein clause is met.
Scharrer discloses the magnetic powder is preferably be rare earth metal.
Hence, it would have been obvious to one skill in the art, at the time of the invention is made to include SmCo of Ozeki as magnetic powder materials of Scharrer and sintering in a Ar or vacuum, in the process of Scharrer when SmCo based permanent magnet is desired.
Claim(s) 13 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson in view of Ozeki (US20110012460A1).
As for claims 13 and 22, Ozeki discloses the laminated structure is then sintered to produce the permanent magnet. (Claim 1) The sintering is in Ar or in a vacuum.[0114]
Hence, it would have been obvious to one skill in the art, at the time of the invention is made to include Ar or vacuum as sintering atmosphere, in the process of Johnson as Ozeki discloses sintering in Ar or vacuum prevents oxidation of the magnetic base material during separating layer formation.
Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over Scharrer in view of Ozeki (US20110012460A1) and Kume (WO2013176116A1)
As for claim 7, Shcarrer does not discloses a binder and a binder removal step.
Ozeki discloses a resin binder is added to and mixed with the magnetic powder to produce a slurry which uniformly disperses fine magnetic powder particle.
Kume further discloses a similar process of making permanent magnet as Scharrer. Kume expressly discloses a binder is removed from the sheet magnet by a calcination treatment for the purpose of reducing the carbon content in the laminated structure so that the entire laminated structure can be densely sintered by the subsequent sintering process.
Hence, it would have been obvious to one skill in the art, at the time the invention is made to add a binder and apply a binder removal step as disclosed by Ozeki and Kume, in the process of Scharrer for the benefit of more densely sintered permanent magnet.
Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over Johnson in view of Ozeki (US20110012460A1) and Kume (WO2013176116A1)
As for claim 7, it is rejected for the same reason applied to claim 7 above.
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable over Scharrer in view of Ozeki , Kume and Notori (JP 59136909 A).
As for claim 12, Notori discloses a resin bound permanent magnet. The resin is thermoplastic resin such as polypropylene. (abstract line 3) Notori is published in 1984.
Hence, it would have been obvious to one skill in the art, at the time the invention is made to apply well known thermoplastic resin such as polypropylene as disclosed by Notori, as binder material, in the process of Scharrer in view of Ozeki Kume with expected success.
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable over Johnson in view of Ozeki , Kume and Notori (JP 59136909 A).
As for claim 12, it is rejected for the same reason applied to claim 12 above.
Claim(s) 9-10 rejected under 35 U.S.C. 103 as being unpatentable over Scharrer in view of Ormerod (NPL document “Bonded permanent magnets: Current Status and future opportunities” published in 1997).
As for claims 9-10, Scharrer does not disclose bonding the second raw form into the first raw form by injection molding.
Ormeord discloses injection molding a magnet assembly by overmoulding. (Last page Col 2 paragraph 2 line 6). Overmoulding includes molding one material on top or around another, starting from base layer is injection molded first, and then an additional layer is molded over and around the base layer, resulting in a single, finished product. Hence, Ormerod’s overmoulding suggests injection molding a second raw form onto a first raw form as required by instant claim 9 and 10.
Because Scharrer’s insulating layer is arranged between the plurality of sheet magnets, instant claim 10 required wherein clause is expected.
Hence, it would have been obvious to one skill in the art, at the time the invention is made, to injection molding a second raw form onto a first raw form as suggested by Ormerod, in the process of Scharrer as Ormerod discloses injection molding one material layer on top another layer has the benefit of making complex geometries and easy handling.
Claim(s) 9-10 rejected under 35 U.S.C. 103 as being unpatentable over Johnson in view of Ormerod (NPL document “Bonded permanent magnets: Current Status and future opportunities” published in 1997).
As for claims 9-10, they are rejected for the same reason set forth in rejection of claims 9-10 above over Scharrer in view of Ormerod.
Claim(s) 18 is rejected under 35 U.S.C. 103 as being unpatentable over Johnson in view of Ozeki (US20110012460A1) and Kume (WO2013176116A1) and Ormerod.
As for claim 18, Ormerod discloses instant claimed feature would have been obvious for the same reason set forth in claims 9 and 10.
Response to Argument
Applicant’s argument filed on 03/23/2026 is considered but is not persuasive.
Applicant argues Ozeki does not recite in situ formation of separating layer, argument is moot since Ozeki is withdrawn.
Applicant argues Scharrer does not recite in situ formation of separating layer, argument is not persuasive because Scharrer explicitly discloses the intermediate layer is a substance (i.e. claimed separating layer forming substance) that reacts chemically with the magnetic powder (i.e. claimed first and/or second magnetic base material) to ultimately form a poorly conductive layer (i.e. claimed separating layer). [0013] Hence, Scharrer suggests in situ formation of separating layer. As a result, applicnat’s argument is merely allegation without evidence proof.
Newly cited Johnson also discloses instant claim 1 amendment as indicated in the art rejection above.
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 JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached on (571)272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNY R WU/Primary Examiner, Art Unit 1733
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