Detailed Office Action
Notice of Pre-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
Response to Amendments
The amendment filed on 04/08/26 has been entered. Claims 4 – 5 have been canceled. Claim 1 has been amended. Claims 1 – 3 and 6 – 7 remain pending and under examination.
Claim Rejections – U.S.C. §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 – 3 and 6 – 7 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, 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, claim 1 recites the broad recitation of the first stage sintering being a time shorter than the second stage sintering, and the claim also recites that the first stage sintering is no longer than half of the second stage sintering which is the narrower statement of the range/limitation. 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. For purposes of examination, the narrower range is interpreted as being required.
Claims 2 – 3 and 6 – 7 are rejected by virtue of dependency.
Claim Rejections – U.S.C. §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 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1 – 3 and 6 – 7 are rejected under 35 U.S.C. 103 as being unpatentable over Yu (CN106252012, using espacenet translation)
Regarding claim 1, Yu teaches a method of producing a Nd-Fe-B based magnet via sintering [0010]. Yu teaches that the magnet has a composition of praseodymium and neodymium, at least one transition metal including at least Fe, and boron [0102], meeting the claimed compositon of the R-T-B alloy powder of claim 1.
Yu discloses that the method includes the steps of:
Forming a Nd-Fe-B press blank [0062], meeting the claimed limitation of forming a compact from an alloy powder.
Performing sintering with a heating stage at 1040 – 1060°C, followed by a stage of cooling to 700 – 800°C, followed by reheating to 1040 – 1080°C [0074 – 0079].
This meets the claimed limitations of:
A first stage sintering step of heating to a first temperature, cooling to a cooling temperature, and a second stage sintering step of heating to a second temperature.
The first temperature and second temperature being higher than 900°C.
The cooling temperature being not higher than 900°C.
Yu does not expressly require a particular relationship between the former heating stage temperature and the latter heating stage temperature. Yu expressly states “[t]he temperature constant temperature of the second-stage temperature-increasing constant-temperature firing is not particularly limited, and those skilled in the art can select or adjust according to actual production conditions, loading amount, oxygen content, green size, etc., the second aspect of the present invention.” and “[t]he temperature constant temperature of the fourth-stage temperature-increasing high-temperature firing is not particularly limited, and those skilled in the art can select or adjust according to actual production conditions, loading amount, oxygen content, green size, etc.” [0074, 0079].
The respective stages of Yu overlap with the claimed temperature ranges of the first and second stage of claims 1 – 3. “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)”, absent evidence of criticality or unexpected results (MPEP 2144.05 I). The relationship between the first and second heating step would either be the first temperature being lower (1040°C and 1060°C), the first and second being the same (1050°C and 1050°C), or the first being higher (1060°C and 1040°C) and therefore, the relationship could be envisaged by an ordinarily skilled artisan. Yu does not particularly limit the temperature relationship and acknowledges that they can be selected based on needs and particular production conditions. Moreover, this relationship is within the scope of the temperature ranges disclosed by Yu (as evidenced by the particular temperature range noted above). As such, an ordinarily skilled artisan would have had a reasonable expectation of success in achieving predictable results.
Therefore, based on a preponderance of the evidence, it would have been obvious to one of ordinary skill in the art before the effective filing date to have selected particular temperatures within the ranges disclosed by Yu such that the former stage was at a higher temperature than the latter stage (as now claimed in claim 1).
Alternatively or in addition to this, Yu teaches that the former stage (interpreted as the claimed first stage) is at a sintering temperature [0074] and that the latter stage (interpreted as the claimed second stage) is preferably from the sintering temperature to the sintering temperature +20°C [0079]. As such, while the claimed range and the preferred embodiment range of Yu do not overlap, the ranges are so mathematically close that a prima facie case of obviousness exists without evidence of criticality, unexpected results, or other secondary considerations. “In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.” (MPEP 2144.05 I)
Yu teaches that the heating stage interpreted as the claimed first stage sintering is performed for a time of 3 – 6 hours which falls outside the claimed range [0074] and the reheating stage interpreted as the claimed second stage sintering is performed for a time of 5 – 8 hours, which falls within the claimed range.
Wherein the respective times of Yu overlap with the claimed limitation/range of the first stage time being not longer than half the second stage time.
Yu’s former heating stage (interpreted as the claimed first stage sintering) is performed for a time (3 – 6 hours) outside the claimed range (0.5 – 2 hrs). However, “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.)” (MPEP 2144.05 I).
In this case, a person of ordinary skill in the art would have expected the claimed time range and Yu’s time range to achieve substantially the same properties. Both the claimed step and Yu are performed for the same function of sintering and Yu expressly acknowledges that “[t]he present invention does not impose any particular limitation on the constant temperature firing time in the second stage. Those skilled in the art can select or adjust the time according to the actual production conditions, loading, oxygen content and green size.”. Moreover, Applicant has not provided evidence of unexpected results or criticality of the claimed time range(s).
Alternatively or in addition to this, Yu states “The present invention does not impose any particular limitation on the constant temperature firing time in the second stage. Those skilled in the art can select or adjust the time according to the actual production conditions, loading, oxygen content and green size.”. As such, it would have been obvious to a person possessing ordinary skill in the art to have determined the optimum time for the first sintering time depending on factors described by Yu, while minimizing the time necessary in order to reduce the production time required of the process. Given that Yu does not explicitly limit the time for the step, an ordinarily skilled artisan would have had a reasonable expectation of success in arriving at the claimed invention to achieve predictable results. Moreover, applicant has not provided evidence of unexpected results or criticality of the claimed range over the prior art. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 II A)
Regarding claim 2, Yu teaches the invention as applied in claim 1. Yu teaches performing sintering with a heating stage at 1040 – 1060°C (interpreted as the claimed first stage), followed by a stage of cooling to 700 – 800°C, followed by reheating to 1040 – 1080°C (interpreted as the claimed second stage) [0074 – 0079], wherein this meets the claimed limitation of the first and second stage being within 1000°C – 1100°C.
Regarding claim 3, Yu teaches the invention as applied in claim 1. Yu teaches performing sintering by [0074 – 0079]:
A heating stage at 1040 – 1060°C (interpreted as the claimed first stage), which falls within the claimed range.
A stage of cooling to 700 – 800°C
A reheating stage to 1040 – 1080°C (interpreted as the claimed second stage), which overlaps with the claimed range.
With regards to the overlapping ranges taught, “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)”, absent evidence of criticality or unexpected results (MPEP 2144.05 I). "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05 III A).
Regarding claim 6, Yu teaches the invention as applied in claim 1. Yu teaches performing sintering with a heating stage at 1040 – 1060°C (interpreted as the claimed first stage), followed by a stage of cooling to 700 – 800°C, followed by reheating to 1040 – 1080°C (interpreted as the claimed second stage) [0074 – 0079], wherein this meets the claimed limitation/range of the cooling temperature being between 700 and 900°C.
Regarding claim 7, Yu teaches the invention as applied in claim 1. Yu teaches an example which includes a composition of [0041, 0102]:
Praseodymium and neodymium being 32.5 mass%, meeting the claimed range of R
Transition metals including Cu, Co, Zr, and Fe being 65.46 mass%, meeting the range of T
Boron being 0.88 mass%, meeting the claimed range.
Wherein the composition of Yu satisfies the formula of claim 7.
14*0.88/10.8 = 1.14 and 65.46/55.85 = 1.17
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive.
Applicant argues that the claimed combination of features in the method (in particular the time and temperature ranges of the respective stages) achieve unexpected results. This not found persuasive.
First, “Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”
“In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205 (CCPA 1946) ("Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies."); E.I. DuPont de Nemours & Company v. Synvina C.V., 904 F.3d 996, 1006, 128 USPQ2d 1193, 1201 (Fed. Cir. 2018.)("[A] modification of a process parameter may be patentable if it ‘produce[s] a new and unexpected result which is different in kind and not merely in degree from the results of the prior art." (MPEP 2144.05 III A)
To this, Applicant’s assertion that the claimed temperature and/or time ranges achieve unexpected results over the prior art is not supported by a showing of objective evidence/data. The remarks assert that a high coercivity and a high squareness are achieved but no data is provided in the remarks to support this.
A review of the data provided in the specification does not show that the temperature and/or time ranges achieve unexpected results. The comparative examples of Table 2 do not perform a second sintering/heating step following cooling [Table 2 of the specification], while the inventive examples do. As such, the data provided in the specification shows that a two-stage heating with intermediate cooling achieves benefits over a single stage, but does not provide evidence that the particular temperatures and times claimed are critical for unexpected results.
Moreover, the data provided in Table 3 of the specification does not show that the claimed method achieves higher coercivity and/or higher squareness than the prior art of Yu. Yu shows in Table 1 that the inventive examples possess a coercivity ranging from at least 20.55 – 22.13 kOe (~1635 – 1761 kA/m) which encompasses the coercivities disclosed by the inventive examples in Table 3. The inventive examples of Yu also possess a squareness of 97.4 – 99.4%, which is higher than the inventive examples of the Table 3.
As such, the applicant’s remarks nor specification support the assertion of criticality of the particular temperature and time ranges claimed and nor does the data establish that the temperature and/or time ranges achieve a coercivity or squareness that is higher or unexpectedly better than the prior art.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US2018/0090249 – sintering, cooling, and reheating to temperatures that overlap with the claimed ranges.
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.
THIS ACTION IS MADE FINAL. 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.
/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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