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
Request to Continue Examination
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/04/26 has been entered.
Response to Amendments
The amendment filed on 08/04/26 has been entered. Claims 1 – 3 and 6 – 7 remain pending and under examination.
The amendments to claim 1 have overcome the previous rejection under 112(b)
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 composition 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 (referred to as the second stage in Yu) [0074]
Followed by a stage of cooling to 700 – 800°C (referred to as the third stage in Yu) [0077]
Followed by reheating to 1040 – 1080°C (referred to as the fourth stage in Yu) [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 (i.e., T1 > T2). However, the second and fourth heating 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).
Additionally, the relationship between the second heating stage and fourth heating stage of Yu would either be the first temperature being lower (1040°C and 1060°C), the first and second temperature being the same (1050°C and 1050°C), or the first temperature being higher (1060°C and 1040°C).
Lastly, 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.” [0074] 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.” [0079].
Therefore, the specific relationship of T1 being higher than T2 could be at once envisage by an ordinarily skilled artisan and this relationship is within the scope of the temperature ranges disclosed by Yu (as evidenced by the particular temperature range noted above). Further still, Yu does not particularly limit the temperature relationship and acknowledges that each of the temperatures can be selected based on the needs and particular production conditions of the process. 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.
Alternatively (or in addition), Yu teaches that the second stage (interpreted as the claimed first sintering stage) is preferably at a sintering temperature [0074] and that the fourth stage (interpreted as the claimed second sintering stage) is preferably in a range from the sintering temperature to the sintering temperature +20°C [0079].
As such, while the claimed range relationship and the preferred embodiments’ ranges 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 second heating stage (interpreted as the claimed first stage sintering) is performed for a preferred time of 3 – 6 hours which falls outside the claimed range (0.5 – 1 hr) [0074] and the fourth stage (interpreted as the claimed second stage sintering) is performed for a preferred time of 5 – 8 hours, which falls within the claimed range (1 – 8 hrs).
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.
With regard to Yu’s second heating stage (interpreted as the claimed first stage sintering) being performed for a preferred time (3 – 6 hours) outside the claimed range (0.5 – 1 hrs). “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 “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. The constant temperature firing time in the second stage of the present invention is preferably 3 to 6 hours, more preferably 3.5 to 5.5 hours, and most preferably 4 to 5 hours.” [0074]. Furthermore, Applicant has not provided evidence of unexpected results or criticality of the claimed time range(s).
Alternatively (or in addition), Yu acknowledges that “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 the sintering is performed by [0074 and 0079]:
A heating stage at 1040 – 1060°C (referred to as the second heating stage in Yu and interpreted as the claimed first stage) [0074]
An additional heating stage at 1040 – 1080°C (referred to as the fourth heating stage and interpreted as the claimed second stage) [0079].
This meets the claimed limitation/ranges 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 and 0079]:
A heating stage at 1040 – 1060°C (referred to as the second stage heating and interpreted as the claimed first stage), which falls within the claimed range [0074].
A heating stage at 1040 – 1080°C (referred to as the fourth stage heating and interpreted as the claimed second stage), which overlaps with the claimed range [0079].
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 a stage of cooling to 700 – 800°C between two heating steps of the sintering treatment [0077, 0058]. Meeting 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 with a composition that meets claimed compositional ranges [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 have been fully considered but they are not persuasive. The examiner has provided another copy/translation of Yu (CN106252012) with two separate machine translations attached to provide further clarity as Applicant’s argument are, at least in part, directed to misinterpretation of the machine translation.
Applicant argues (page 2, bottom) that due to the machine translation the examiner has misinterpreted/confused the discussion of temperature vs time in Yu. Applicant argues that Yu states that the temperature is not particularly limited but the time is strictly controlled (page 3, top). Applicant states that the second heating stage of Yu (interpreted as the claimed first heating step of sintering) teaches away from the claimed time because Yu states that the holding time is 3 – 6 hours and that under-sintering can affect magnetic properties such as squareness (page 3, bottom).
These are respectfully not found persuasive. Yu is explicitly clear that the time is not restricted and can be modified based on various factors. Yu states the disclosure of 3 – 6 hours is a preferred embodiment/example.
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. The constant temperature firing time in the second stage of the present invention is preferably 3 to 6 hours, more preferably 3.5 to 5.5 hours, and most preferably 4 to 5 hours.” [0074]. Therefore, it is clear that the time of second stage is adjustable and that the time of 3 – 6 hours is a preferred disclosure.
Moreover, per MPEP 2123 II “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).”. As such, the teaching of the holding time preferably being 3 to 6 hours does not constitute a teaching away from the claimed range.
Applicant’s argument that sintering under 3 hours would constitute under-sintering and negatively affect magnetic properties is not persuasive because Yu makes clear that 3 – 6 hours is a preferable embodiment and that the time actually required depends on factors such as actual production conditions, loading, oxygen content and green size [0074].
Applicant argues that the differences in the claimed first sintering step and Yu achieve unexpected results (page 4, middle). Applicant argues that performing the step at a higher temperature for a shorter time produces unexpected results. This is not found persuasive.
("[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) E.I. DuPont de Nemours & Company v. Synvina C.V., 904 F.3d 996, 1006, 128 USPQ2d 1193, 1201 (Fed. Cir. 2018.)
“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.");
Applicant’s assertion that the claimed time (and temperature) range achieves 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 a review of the data provided in the specification does not show that the time (and temperature) range achieve unexpected results.
First, 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. Therefore, the data provided in the specification may show that a two-stage heating with intermediate cooling achieves benefits over a single stage, but does not provide evidence that the claimed temperatures and times of the two-stage heating are critical for unexpected results.
Secondly, comparing the data provided in Table 3 of the specification with the prior art of Yu does not show that the claimed process steps nor the specific time (and temperature) range of the first sintering step achieves higher coercivity and/or higher squareness than Yu.
As discussed in the rejection of claim 7, Yu teaches an example composition that meets the claimed composition and shows in Table 1 that the inventive examples possess a coercivity ranging from 20.55 – 22.13 kOe (~1635 – 1761 kA/m) which encompasses and exceeds 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 are higher than the inventive examples of the Table 3.
As such, the specification does not support the assertion of criticality of the claimed time (and temperature) range of the first sintering step nor that the differences in time of the first sintering step of Yu and the claimed invention achieve a coercivity or squareness that is higher or unexpectedly better than the prior art of Yu.
Applicant argues that In re Brandt and Titanium Metals Corp of America v. Banner are misapplied with regards to differences in the sintering time of the first sintering step (page 4, bottom – page 5). These are respectfully not found persuasive.
First, the Examiner notes that In re Brandt was cited in regards to the sintering temperatures (T1 and T2) relationship, not the time. Therefore, arguments directed to this are not persuasive.
Applicant argues that the claimed range and the prior art range are not “merely close” under Titanium Metals and that 3 hrs represents a 200% increase over the claimed upper bound of 1 hour. This is not found persuasive. As stated in the rejection, “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). Applicant’s argument is merely directed to a difference in degree in the amount of time used and does not represent a difference in kind of the properties. As discussed above, Yu produces an RTB magnet (with a composition that meets the claimed composition of claim 7) that possess magnetic properties such as Hcj, Hk, and squareness ratio that are the same or better than those obtained in Table 3. Therefore, Applicant has not established that the differences in time produce different properties.
Conclusion
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738
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