DETAILED ACTION
Applicant’s reply, filed 18 May 2026 in response to the restriction requirement mailed 8 April 2026, has been fully considered. As per Applicant’s election of Group I, claims 1-6 and 11-13 are pending under examination and claims 7-10 have been withdrawn (see below).
Election/Restrictions
Claims 7-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 18 May 2026.
Applicant's election with traverse of Group I, claims 1-6 and 11-13, in the reply filed on 18 May 2026 is acknowledged. The traversal is on the ground(s) that i) the recitations of Ti+Nb ≤ 0.24 wt% and of Al+Cu ≤ 0.5 wt% is not taught by Wang, ii) ‘other elements’ such as Cu and B “only partially overlap” and “are not identical”, iii) fails to teach remanence, coercivity, high temperature stability and squareness ‘defects’ of being unable “reach a higher level at the same time” and iv) does not constitute a search burden. This is not found persuasive because i) Wang does teach the recitations in that Wang teaches values of Nb and of Cu that meet the ranges where Ti and Al can both be zero and are not positively recited as present; ii) Applicant’s admission that the other elements do in fact overlap is noted, the Examiner further notes that ‘identical’ recitations are not required; iii) Wang is not required to teach the asserted property ‘defects’ in order to establish an RTB magnet having the broader non-special technical feature of being an Nb-Fe-B magnet with excellent magnetic properties, which is what Wang teaches; and iv) as the restriction was not subject to U.S. restriction practice but rather was a restriction under PCT Rule 13.1 the argument of a lack of unreasonable burden is not germane.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112(b)
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 1-6 and 11-13 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the preamble recites an “R-T-B magnet” and while the body of the claim defines “R” and “B” is a known element, the claim fails to clearly identify, define or otherwise link “T” to the elements recited in said claim body. This includes claims 2-6 and 11-13 as they depend from claim 1.
Regarding claim 2, firstly the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention (it is noted the phrase “such as” is repeated multiple times) (see MPEP § 2173.05(d)). Secondly, the claim recites “and/or” multiple times within the claim and it is not clear what is required and what is optional. It is not clear if each, or which of, the recited ‘wherein’ recitations are required or are optional alternatives. For the purposes of this Office action all recitations separated via semicolon are assumed optional alternatives.
Thirdly, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites: i) the broad recitation of R is 30-33 wt% and also recites the narrower statement(s) of the range/limitation of 30 wt%, 30.3 wt% or 30.8wt%; ii) a similar broad and narrow recitation of Nd; and iii) a similar broad and narrow recitation of RH. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
This includes claim 11 as it depends from claim 2.
Regarding claim 3, firstly the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention (it is noted the phrase “such as” is repeated multiple times) (see MPEP § 2173.05(d)). Secondly, the claim recites multiple range definitions for Ti (0.24 or less; ‘excluding 0’) for “Al+Cu” (0.44 or less; ‘excluding 0’; 0.1-0.44), for Al (0.08 or less; ‘excluding 0’) which is improper and indefinite as to what the claimed range is in fact intended to be.
Thirdly, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites: i) the broad recitation of Ti+Nb is 0.01-0.24 wt% and also recites the narrower statement(s) of the range/limitation of 0.1 wt%, 0.2 wt%, 0.23 wt% or 0.24 wt%; ii) a similar broad and narrow recitation of Nb; iii) a similar broad and narrow recitation of Ti; a similar broad and narrow recitation of Al+Cu; iv) a similar broad and narrow recitation of Al; and v) a similar broad and narrow recitation of Cu. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
This includes claim 12 as it depends from claim 3.
Regarding claim 4, firstly, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention (it is noted the phrase “such as” is repeated multiple times) (see MPEP § 2173.05(d)).
Secondly, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites: i) the broad recitation of B is 0.955-1.15 wt% and also recites the narrower statement(s) of the range/limitation of 0.99 wt%; ii) a similar broad and narrow recitation of Fe; and iii) a similar broad and narrow recitation of Co. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
This includes claim 13 as it depends from claim 4.
Regarding claim 5, firstly the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention (it is noted the phrase “such as” is repeated multiple times) (see MPEP § 2173.05(d)). Secondly, the claim recites “and/or” multiple times within the claim and it is not clear what is required and what is optional. It is not clear if each, or which of, the recited ‘wherein’ recitations are required or are optional alternatives. For the purposes of this Office action all recitations separated via semicolon are assumed optional alternatives.
Thirdly, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites: i) the broad recitation of Fe ratio in a two-grain boundary phase is 40-46 wt% and also recites the narrower statement(s) of the range/limitation of 42 wt%, 43 wt%, 44 wt%, 45 wt% or 46 wt%; and ii) a similar broad and narrow recitation of ratio of total area of Cu-Nb-Fe phase. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 6, optional alternative recitations #2, #3, #4, #9, #10, #20 and #22 (as recited) include amount recitations of cobalt (Co) for which there is no antecedent basis either in claim 6 or in claim 1, from which claim 6 depends, as cobalt is neither recited nor a rare earth element.
Regarding claim 11, firstly the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention (it is noted the phrase “such as” is repeated multiple times) (see MPEP § 2173.05(d)). The inclusion of the phrase “preferably” further renders the recitations unclear as to what is being claimed. Secondly, the claim recites “and/or” multiple times within the claim and it is not clear what is required and what is optional. It is not clear if each, or which of, the recited ‘wherein’ recitations are required or are optional alternatives. For the purposes of this Office action all recitations separated via semicolon are assumed optional alternatives.
Thirdly, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites: i) the broad recitation of ratio of Fe in a two-grain boundary is 40-46 wt% and also recites the narrower statement(s) of the range/limitation of 42 wt%, 43 wt%, 44 wt%, 45 wt%, or 46 wt%; and ii) a similar broad and narrow recitation of ratio of total area of Cu-Nb-Fe phase. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 12, firstly the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention (it is noted the phrase “such as” is repeated multiple times) (see MPEP § 2173.05(d)). The inclusion of the phrase “preferably” further renders the recitations unclear as to what is being claimed. Secondly, the claim recites “and/or” multiple times within the claim and it is not clear what is required and what is optional. It is not clear if each, or which of, the recited ‘wherein’ recitations are required or are optional alternatives. For the purposes of this Office action all recitations separated via semicolon are assumed optional alternatives.
Thirdly, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites: i) the broad recitation of ratio of Fe in a two-grain boundary is 40-46 wt% and also recites the narrower statement(s) of the range/limitation of 42 wt%, 43 wt%, 44 wt%, 45 wt%, or 46 wt%; and ii) a similar broad and narrow recitation of ratio of total area of Cu-Nb-Fe phase. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 13, firstly the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention (it is noted the phrase “such as” is repeated multiple times) (see MPEP § 2173.05(d)). The inclusion of the phrase “preferably” further renders the recitations unclear as to what is being claimed. Secondly, the claim recites “and/or” multiple times within the claim and it is not clear what is required and what is optional. It is not clear if each, or which of, the recited ‘wherein’ recitations are required or are optional alternatives. For the purposes of this Office action all recitations separated via semicolon are assumed optional alternatives.
Thirdly, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites: i) the broad recitation of ratio of Fe in a two-grain boundary is 40-46 wt% and also recites the narrower statement(s) of the range/limitation of 42 wt%, 43 wt%, 44 wt%, 45 wt%, or 46 wt%; and ii) a similar broad and narrow recitation of ratio of total area of Cu-Nb-Fe phase. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (CN 101266856 A; using Clarivate Analytics machine translation for English language citations; previously provided by the Examiner).
Regarding claim 1, Wang teaches R-Fe-B magnets having excellent properties and reduced costs comprising an R-(Fe,Tm)-Cu-B-X formula where: Cu is from 0.02 to 0.5 wt%; B is from 0.9 to 1.1 wt%; X is a ppm residue of O, C, N and H; R is a rare earth element from 27-30.5 wt% and comprising Nd, Pr, Dy, Tb, etc.; Tm is a combination of two or more of Ti, V, Cr, Mn, Ga, Al, Zr, Nb, Mo, and Co, where Co is from 0.2 to 4 wt% and the remaining element(s) is 0.02 to 0.5 wt%; and Fe is the remainder (approx. 63-71wt%) (abstract; claims) (where R = instant R; Tm-remainder = instant Nb; Cu = instant Cu; instant Ti+Nb met by Nb range and where Ti can be zero; instant Al+Cu met by Cu range and where Al can be zero; B = instant B; and Fe remainder = instant Fe).
While the instant claim recites no properties, it is noted that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “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.”; MPEP 2112.01)).
Regarding claim 2, Wang teaches the magnet as set forth in claim 1 above. As noted above Wang teaches: R is a rare earth element from 27-30.5 wt% (instant first recitation); R can be Nd (instant second recitation; necessarily instant third recitation); and R can be Pr (instant fourth recitation) or Tb (instant fourth recitation; instant sixth recitation).
Regarding claim 3, Wang teaches the magnet as set forth in claim 1 above. As noted above Wang teaches ranges which meet at least one or more of the recited optional alternative limitations of Ti+Nb and/or Nb and/or Ti (first range) and/or Al+Cu and/or Al (first range) and/or Cu.
Regarding claim 4, Wang teaches the magnet as set forth in claim 1 above. As noted above Wang teaches ranges which meet at least one or more of the recited optional alternative limitations of B and/or B:R and/or Fe and/or Co.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767
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