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 in the reply filed on 5/20/26 is acknowledged. The traversal is on the ground(s) that the requirement does not properly identify the common technical feature of the mass percentage of the auxiliary alloy raw material in the raw material composition. This is not found persuasive because claim 1 is directed to a raw material composition and it is this raw material composition which has a specific mass percentage of the auxiliary alloy raw material in the raw material composition. However, claim 7 is merely a preparation method of the main and auxiliary alloy-based neodymium-iron-boron magnet material and as a method of making the two materials, what is common between the inventions of claim 1 and claim 7 does not incorporate the mass percentage of the auxiliary alloy raw material in the raw material composition. Thus, the combination of Baba and Zhou teaches the common technical feature.
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Claims 7-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 5/20/26.
Claims 1-6 are examined in this office action of which claims 1-6 were amended in the preliminary amendment dated 9/7/23.
Claim Objections
Claims 1-2 and 4 are objected to because of the following informalities: Claims 1-2 and 4 all use the abbreviations “LR” and “HR” and claims 2 and 4 use the abbreviation “TRE”. The first instance of each abbreviation should be in parenthesis to properly indicate that it is an abbreviation. Appropriate correction is required.
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 1-6 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 “the composition” in line 2 of the claim. As there is “A raw material composition” and both the main and auxiliary alloy based neodymium-iron-boron magnet materials inherently have a composition, it is not clear which composition “the composition refers back to. Claims 2-6 are also rejected as they depend from claim 1 and do not solve the above issue.
Claim 1 recites “light rare earth element LR”, “heavy rare earth element HR”, “M” where M is one or more selected from a group of elements and “X” wherein X is one or more selected from a group of elements. These recitations are repeated in claims 2 and 4. However, these recitations are used with respect to both the “main alloy raw material” as well as the “auxiliary alloy raw material” and these abbreviations and variables do not represent the same elements between the two different materials. Therefore, it is not clear what elements are being referred to when LR, HR, M, and X are recited in the claims and these abbreviations and variables should be amended to differentiate between the “main alloy raw material” and the “auxiliary alloy raw material”. Claims 3 and 5-6 are also rejected as they depend from claim 1 and do not solve the above issue.
A broad range or limitation together with 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, claims 2 and 4 are replete with instances of reciting a broad recitation for the composition of an element, and the claims also recite a narrower recitation of the composition of the element connected by “preferably”, “for example” and “such as”. 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. Further, "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Also, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 5 recites three different compositions for the auxiliary alloy raw material and connects each of the compositions with “and/or”. While it is possible to claim alternate compositions for a material, it is not clear how a material can have multiple compositions as required by the use of ”and”. For example, if “and” is connecting these compositions, the claim is requiring Pr to be 15.0 mass%, 25.0 mass%, and 20.0 mass% at the same time. It is not clear how the composition can be three different amounts at the same time.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over CN 111383808 A (cited on IDS dated ) and its English translation of Jiang.
As to claims 1-3, it is not clear what composition “the composition” refers back to see 112(b) rejection above. Also, the claims contain numerous instances of broad ranges followed by narrow ranges, see 112(b) rejection above. For the purpose of applying prior art, “the composition” will be interpreted as referring to the raw material composition and the broadest of each of the element ranges will be used as these are the broadest reasonable interpretation of the claims.
Jiang discloses forming a neodymium iron boron magnet from two different alloys with one being a neodymium iron boron alloy containing mixed rare earth elements and a second alloy being a neodymium iron boron alloy without mixed rare earth elements (Jiang, paragraph [0010]). Jiang discloses the composition of these alloys in comparison to the claims in Table A for the main alloy and Table B for the Auxiliary alloy below.
Table A: Main alloy raw material composition
Element
Claim 1 Limitation (mass%)
Claim 2 limitation (mass%)
Claim 3 limitations of compositions 1) 2) and 3)
(mass%)
Jiang neodymium iron boron alloy containing mixed rare earth elements (mass %) (paragraph [0032])
LR: one or more of Y, La, Ce, Pr, and Nd
10.0-33.0 %
LR:25.0-30.0%
Nd: 18.9-22.5%
Pr:6.0-7.5%
Nd: 1) 22.125% or 2) 22.5% or 3) 18.9%
Pr: 1)7.375% or 2)7.5% or 3)6.3%
Pr-Nd: 18% to 33%
HR: one or more of Gd, Dy, Tb, and Ho
0-20.0 %
HR: 1.0-10.0%
Dy:1.0-5.0%
Ho:0.5-2.0%
Dy: 2) 1.5% or 3)4.3%
Ho: 3)1.0%
Dy: 0 to 10%, Tb: 0 to 10%, Gd: 0 to 2%, Ho: 0 to 2%
TRE
26.0-40.0%
18-57%
M: one or more of Co, Cu, Al, Ga
0.1-5.0%
M: 0.5-2.0%
Ga:0.2-0.4$
Al:0.01-0.1%
Cu: 0.1-0.25%
Co: 0.5-1.0%
Ga: 1)0.25% or 2)0.4% or 3) 0.25%
Al: 1)0.03% or 3) 0.1%
Cu: 1)0.1% or 2)0.25% or 3)0.15%
Co: 1)0.5% or 2)1% or 3)1%
Al: 0 to 1%, , Cu: 0 to 1%, Co: 0 to 3%, Ga: 0 to 2% Total:0-7%
X: one or more of Zr, Ti and Nb
0.05-0.7 %
X: 0.1-0.35%
X is Zr or Ti
Zr:1)0.11% or 2)0.35%
Ti: 3)0.15%
Nb: 0 to 5%, Zr: 0 to 2% for total: 0-7%
B
0.94-1.1 %
0.97-0.99%
1)0.98% or 2)0.97% or 3)0.97%
B: 0.5% to 2.0%
Fe
Balance
balance
balance
Table B: Auxiliary alloy raw material
Element
Claim 1 Limitation (mass%)
Claim 4 limitation (mass%)
Jiang NdFeB alloy without mixed rare earth elements (mass %) (paragraph [0033])
LR: Nd and/or Pr
0-30.0%
20.0-30.0%
Nd:10.0-20.0% or 15.0%
Pr: 15.0-25.0% or 15.0%
Pr-Nd: 28%-33%
HR: Dy and/or Tb
1-80.0 %
HR: 15.0-20.0% or
Tb:15.0% or
Dy: 20.0%
Dy: 0-10%, Tb: 0-10% so 0-20% total
Total Rare Earth
35.0-50.0%
28-53%
M: one or more of Co, Cu, Al, Ga
5.0-20.0%
Ga:2.0-10%
Co:10.0-20.0%
Al: 0-1%, Cu: 0-1.3%, Co: 0-3.2%, Ga: 0-2% for a total of 0-7.5%
X: one or more of Ti, Zr, Hf, Nb, W, Ta
3.0-12.0%
4.0-10.0%
Nb: 0-5% and Zr: 0-2% for a total of 0-7%
B
0-0.6%
0.3-0.6%
B: 0.5%-2.1%,
Fe
balance
balance
Thus, Jiang discloses overlapping ranges for the elements of both the claimed main alloy in claims 1-3 as well as the auxiliary alloy of claim 1. 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 high remanence and high coercivity (Jiang, paragraph [0033]) 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.
Jiang also discloses where the alloy powders are mixed where the proportion of the NdFeB alloy powder without mixed rare earth (which reads on the auxiliary alloy) is 10% to 12% (Jiang, paragraph [0029]), meeting the claimed range of the auxiliary alloy being 1.0-15.0 mass%.
As to claim 4, Jiang discloses overlapping ranges for total rare earth content, LR, where the LR comprises Nd at 10-20.0 mass%, where LR comprises PR at 15.0-25.0 mass%, where HR is 15.0-20.0 mass%, where the content of Ga is 2.0-10.0%, where X is 4.0-10.0 mass% and where B is 0.3-0.6 mass%. 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 high remanence and high coercivity (Jiang, paragraph [0033]) 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.
Allowable Subject Matter
Claims 5-6 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 5 recites three optional exact compositions for the auxiliary alloy of 1) the auxiliary alloy raw material comprises the following components of: 15.0 mass % of Nd; 15.0 mass % of Pr; 15.0 mass % of Tb; 10.0 mass % of Zr; 0.5 mass % of B; and Fe as the balance, wherein the mass % refers to the mass percentage of the component in the auxiliary alloy raw material; or
2) the auxiliary alloy raw material comprises the following components of: 25.0 mass % of Pr; 20.0 mass % of Dy; 4.5 mass % of Zr; 0.5 mass % of B; and Fe as the balance, wherein the mass % refers to the mass percentage of the component in the auxiliary alloy raw material; or
3) the auxiliary alloy raw material comprises the following components of: 20.0 mass % of Pr; 20.0 mass % of Dy; 5.0 mass % of Ga; 15.0 mass % of Co; 5.0 mass % of Zr; 0.4 mass % of B; and Fe as the balance, wherein the mass % refers to the mass percentage of the component in the auxiliary alloy raw material.
These three optional compositions for the auxiliary alloy raw material are also incorporated into the three optional compositions recited in claim 6 for combined compositions for both the main and auxiliary alloys with, in addition, the percentage of auxiliary alloy in the raw material composition is also recited as being 4.0 mass%, 5.0 mass% and 4.0 mass% respectively.
While Jiang discloses a neodymium iron boron magnet from two different alloys with one being a neodymium iron boron alloy containing mixed rare earth elements and a second alloy being a neodymium iron boron alloy without mixed rare earth elements (Jiang, paragraph [0010]), Jiang’s alloy without mixed rare earth elements (reading upon auxiliary alloy and with composition shown above in Table B) does not teach for composition 1) where 15.0 mass % of Tb and 10.0 mass % of Zr, for composition 2) where 20.0 mass % of Dy and 4.5 mass % of Zr, and for composition 3 where 20.0 mass % of Dy; 5.0 mass % of Ga; 15.0 mass % of Co and 5.0 mass % of Zr. Further, Jiang discloses 10% to 12% mass (Jiang, paragraph [0029]) of this “auxiliary” alloy is mixed with the main alloy which does not overlap the claimed amounts in claim 6 of 4.0 and 5.0 mass%. Thus claims 5 and 6 are distinct from the art.
Conclusion
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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