DETAILED ACTION
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 .
Election/Restrictions and Status of Claims
Applicant's election with traverse of Invention I, claims 1-6 and 11-13 in the reply filed on 5/8/26 is acknowledged. The traversal is on the ground(s) that US 2017/0372823 A1 of Ding does not disclose where Ga is less than or equal to 0.2 wt%. This is not found persuasive because while Ding does not disclose the amount of Ga, CN 108831650 A of Wu discloses the common technical feature as shown in the rejection of claim 1 below.
The requirement is still deemed proper and is therefore made FINAL.
Claims 7-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 5/8/26.
As such, claims 1-6 and 11-13 are examined in this office below.
Drawings
The drawings are objected to because the application only includes one figure, but nonetheless numbers this “FIG. 1”. 37 C.F.R 1.84(u)(1) requires that where “only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation "FIG." must not appear”, see MPEP § 608.02(V). Therefore, the drawing must be corrected to state merely “Figure”.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
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 1-2, 4-6 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.
Claim 1 recites the limitation “58-69% of Fe” in the next to last line of the claim. While all the other elements in the composition recite “wt%”, there is no recitation of what the percentage Fe is in. Thus, it is not clear if this is a weight percentage, atomic percentage, volume percentage, or some other meaning. Claims 2, 4-5, 11, and 13 are also rejected as they depend from claim 1 and do not solve the above issue.
Claim 5 recites the limitation "a neodymium-rich phase and the intergranular triangular region". Identical limitations exist in claims 6 and 11-13. All of these recitations include this limitation in quotation marks in the claim. It is not clear what is meant by the use of quotation marks. It is not clear if these phases and regions are intended to be referred to, whether this is a recitation to something merely called these phases or regions, or some other meaning.
Further, the term “a neodymium-rich phase” in claims 5-6 and 11-13 is a relative term which renders the claim indefinite. The term “neodymium-rich” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. While the claim 1 recites that 30.0 wt% or greater is a rare earth element and claim 2 notes that the rare earth element can comprise Nd, this does not disclose what constitutes neodymium-rich.
Claim Rejections - 35 USC § 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 (i.e., changing from AIA to pre-AIA ) 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.
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.
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.
Claims 1-6 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over CN 108831650 A with reference to the English translation of Wu.
As to claims 1 and 4, it is not clear what is meant by the percentage of Fe in claim 1, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as wt% as all other claimed percentages are claimed in wt%. Wu relates to a neodymium iron boron magnet and its preparation method (Wu, paragraph [0002]), meeting the limitation of an R-T-B magnet. Wu discloses a composition for the magnet in comparison to the claims in Table A below.
Table A
Element
Claim Limitation
Wu claims 1 and 3 (wt%)
Wu Inventive Example 35EH (wt%) Table 1
Rare Earth Element
Claim 1:≥30.0 wt%
Claim 2: 30.5 wt% or more
neodymium 0-35%, praseodymium 0-35%, terbium 0-10%, dysprosium 0-15%, holmium 0-15%, gadolinium 0-15%, lanthanum 0-35%, cerium 0-35%
Pr+Nd: 25.5%
Dy: 6.0%
Total RE: 31.5%
Cu
Claim 1: 0.16-0.6 wt%
Claim 3: 0.16-0.45 wt%
0-0.5%
0.2%
Ti
Claim 1: 0.4-0.8 wt%
Claim 3: 0.4-0.7 wt%
0.05-0.5%
0.08%
Ga
Claim 1: ≤ 0.2 wt%
Claim 3: 0.01-0.19 wt%
0.05-0.5%
0.15%
B
Claim 1: 0.955-1.2 wt%
Claim 3: 0.96-1.15 wt%
0.8-1.5%
0.96%
Fe
Claim 1: 58-69%
Claim 3: 66-68 wt%
Remainder
Remainder so 65.06%
Al and/or Co
Claim 4: comprises one or both
cobalt 0-10%, aluminum 0-1.5%
Co: 1.5% and Al: 0.2%
Thus, inventive example 35EH in Wu discloses a composition which anticipates the rare earth element amount, and amounts of Cu, Ga, B, and Fe in claim 1. Further, the inclusion of Co and Al meets the claim 4 limitations which require the presence of one or both of the elements. While this example does not anticipate the amount of Ti, as Wu discloses an overlapping range for titanium, a prima facie case of obviousness is established as it 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 to select the claimed Ti composition over the prior art disclosure since the prior art teaches that the addition of Ti helps refine the magnet grains (Wu, paragraph [0032]) throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) . See MPEP § 2144.05 I.
As to claim 2, as Wu discloses a total rare earth element amount of 31.5% in inventive example 35EH as well as where the rare earth elements comprises Nd, Pr and a heavy rare earth element as Dy is a heavy rare earth element, see Table A above.
As to claim 3, the claim requires one or more of the contents noted in Table A above. Thus, as Cu, Ga, and B all meet the claim 3 limitations, claim 3 is satisfied. Further, as Wu discloses overlapping ranges for all the elements including Ti and Fe a prima facie case of obviousness is established as it 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 to select the claimed Ti and Fe composition over the prior art disclosure since the prior art teaches that the addition of Ti helps refine the magnet grains (Wu, paragraph [0032]) throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) . See MPEP § 2144.05 I. Further, as Wu discloses overlapping ranges for the composition of the individual elements, there would necessarily be an overlap of the ratio of atomic percentage of B to the atomic percentage of R.
As to claims 5 and 11-13, it is not clear what is meant by “a neodymium-rich phase” nor what is meant by the recitation being in quotation marks, see 112(b) rejections above. For the purposes of applying prior art, this will be interpreted as requiring a phase including neodymium as well as this being related to this neodymium phase and the intergranular triangular region.
While Wu discloses the presence of rare earth-rich phase at the grain boundary (Wu, paragraph [0032]), Wu does not disclose comprises a TixCuyB1−x−y phase, wherein x is 20-30, y is 20-30, and 1−x−y is 40-60, wherein x, y, and 1−x−y refer to the atomic percentages of Ti, Cu, and B respectively in the TixCuyB1−x−y phase; the TixCuyB1−x−y phase is located in an intergranular triangular region, and the ratio of the area of the TixCuyB1−x−y phase to the total area of “a neodymium-rich phase and the intergranular triangular region” is 1-5%.
However, Wu discloses the same starting material, see Table A above, and applies the substantially identical method of sintering followed by a two-stage aging (Wu, paragraphs [0044] and [0049]) this matches the disclosed method in claim 7 and pg. 10, lines 4-16 of the specification of sintering followed by aging. As Wu discloses the same starting material and the same method thereto, it would be expected to have the same properties of a TixCuyB1−x−y phase, wherein x is 20-30, y is 20-30, and 1−x−y is 40-60, wherein x, y, and 1−x−y refer to the atomic percentages of Ti, Cu, and B respectively in the TixCuyB1−x−y phase; the TixCuyB1−x−y phase is located in an intergranular triangular region, and the ratio of the area of the TixCuyB1−x−y phase to the total area of “a neodymium-rich phase and the intergranular triangular region” is 1-5%. “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.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
As to claim 6, Wu’s disclosed ranges which overlap the R-T-B magnet comprises the following components of: 29.6 wt % of Nd, 1 wt % of Tb, 0.21 wt % of Cu, 0.45 wt % of Ti, 1 wt % of B, 0.19 wt % of Ga, 0.05 wt % of Al and 67.5 wt % of Fe, wherein wt % is the mass percentage of respective component in the total mass of all components; the R-T-B magnet comprises a Ti23Cu25B52 phase in an intergranular triangular region thereof, and the ratio of the area of the Ti23Cu25B52 phase to the total area of “the neodymium-rich phase and the intergranular triangular region” is 2.9%; and the R-T-B magnet comprises the following components of: 29.6 wt % of Nd, 1 wt % of Tb, 0.21 wt % of Cu, 0.4 wt % of Ti, 1 wt % of B, 0.04 wt % of Al and 67.75 wt % of Fe, wherein wt % is the mass percentage of respective component in the total mass of all components; the R-T-B magnet comprises a Ti26Cu26B48 phase in an intergranular triangular region thereof, and the ratio of the area of the Ti26Cu26B48 phase to the total area of “the neodymium-rich phase and the intergranular triangular region” is 3.5%. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the addition of Ti and Ga helps refine the magnet grains (Wu, paragraph [0032]) throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) . See MPEP § 2144.05 I.
Further, as Wu discloses the same starting material and the same method thereto, it would be expected to have the same properties the R-T-B magnet comprises a Ti23Cu25B52 phase in an intergranular triangular region thereof, and the ratio of the area of the Ti23Cu25B52 phase to the total area of “the neodymium-rich phase and the intergranular triangular region” is 2.9%, and ; the R-T-B magnet comprises a Ti26Cu26B48 phase in an intergranular triangular region thereof, and the ratio of the area of the Ti26Cu26B48 phase to the total area of “the neodymium-rich phase and the intergranular triangular region” is 3.5%. “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.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
Also, with respect to the other compositions and microstructures disclosed in claim 6, as the compositional ranges in Wu are close to the claimed compositions the compositions would be obvious in view of Wu. It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor, see MPEP § 2144.05 Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Further, as Wu discloses the same method, the same method applied to a patentably indistinct composition would produce the same properties. “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.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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