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 .
DETAILED ACTION
Claims 8-10 have been cancelled; Claims 1 and 4 have been amended; Claims 13-23 are added as new claims; Claims 1-7 and 11-23 remain for Examination, wherein Claim 1 is an independent claim.
Previous Rejections/Objections
Previous objection of Claims 1-3 and 5 because the informalities is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 6/20/2026.
However, in view of the Applicant’s “Arguments/Remarks with amendment” filed on 6/30/2026, newly recorded reference(s), and reconsideration, a new ground rejection has listed as following:
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 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.
Claims 1-7 and 11-23 are rejected under 35 U.S.C. 103 as being unpatentable over as being unpatentable over Takeda et al (US-PG-pub 2021/0043343 A1, listed in IDS filed on 1/30/2024, which has been updated US 11,798,717 B2, thereafter PG’343) in view of Iwasaki et al (JP 6692506 B1, with on-line translation, listed in IDS filed on 1/30/2024, thereafter JP’506)
Regarding claim 1, PG’343 teaches a R-T-B permanent magnets, whose main phase is tetragonal R2T14B intermetallic compounds including Ga (Title, abstract, and examples of PG’343), and PG’343 provides example #5-5 having 13.82 at% Nd; 1.83 at% Sm; and 0.44 at% La in table 13 of PG’343 and PG’343 indicates including R-T-M main phase, T-rich boundary phase, and R-rich boundary phase (Fig. 4-5 and par.[0103] of PG’343) and PG’343 specify including proper amount oxygen in order to improve the coating of grain boundary phase to the main phase (par.[0120] of PG’343), which reads on the claimed (Nd, La, Sm)-Fe-B-M (M including one of Cu, Al, and Ga) with R2Fe14B main phase and oxide phase represented by (Nd, La, Sm)-O; and subphase having a higher concentration of Sm than main phase as claimed in the instant claim. PG’343 does not specify crystalline sub-phase as claimed in the instant claim. JP’506 teaches a rare earth magnet alloy (Abstract, Figs., Examples, and claims of JP’506) with Nd, La and Sm, and Fe and B as main constituent elements; and a crystalline subphase having O as a main constituent element (claims of JP’506). JP’506 further indicates the Sm is replaced by one of Nd(f) site and Nd (g) site and La is segregated in the crystalline subphase (Figs. and claims of JP’506), which reads on the claimed crystalline sub-phase and element segregation as claimed in the instant claim. Furthermore, JP’506 teaches the same manufacturing process including melting, primary cooling, and secondary cooling (Fig.2-4, claims, and par.[0021]-[0023] of JP’506) as indicates in the instant invention (Figs of the instant application). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to proper manufacturing process including melting, primary cooling, and secondary cooling with crystallization heat treatment for Nd-Fe-B type magnet alloy with main phase and grain boundary phase, as disclosed in JP’506 for the alloy of PG’343 in order to obtain to form R-T-B magnet with crystalline (Nd, La, Sm)-O subphase and (Nd, La)-O and element segregation (Figs. and claims of JP’506). MPEP 2112 01 and 2145 II.
Regarding claims 2-5, the claimed elements distribution as claimed in the instant claims are recognized as alloy features fully depended on the claimed alloy composition and manufacturing process. PG’343 in view of JP’506 teaches the same R-T-B permanent magnets with the same Nd, La and Sm, and Fe and B as main constituent elements; same crystalline subphase having O as a main constituent element manufactured by the same manufacturing process including melting, primary cooling, and secondary cooling as disclosed in the instant invention, the claimed elements distribution as claimed in the instant claims would be highly expected for the alloy of PG’343 in view of JP’506. MPEP 2112 01 and 2145 II.
Regarding claim 6, PG’343 indicates including Co in the alloy (par.[0036] of PG’343).
Regarding claim 7, PG’343 teaches sintering at 1030oC for 4 hours, rapid cooling (par.[0165] of PG’343) and heat treatment in temperature range 400-900oC (par.[0142] of PG’343) with one or more hours (Experiments of PG’343). PG’343 does not specify primary and secondary cooling process as claimed in the instant claim. JP’506 teaches the same manufacturing process including melting, primary cooling, and secondary cooling (Fig.2-4, claims, and par.[0021]-[0023] of JP’506) as indicates in the instant invention (Figs of the instant application). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to proper manufacturing process including melting, primary cooling, and secondary cooling with crystallization heat treatment for Nd-Fe-B type magnet alloy with main phase and grain boundary phase, as disclosed in JP’506 for the alloy of PG’343 in order to obtain to form R-T-B magnet with crystalline (Nd, La, Sm)-O subphase and element segregation (Figs. and claims of JP’506).
Regarding claims 11 and 12, JP’506 teaches a rare earth magnet alloy with a method for manufacturing the same, a rare earth magnet, a rotor and a rotating machine (Abstract, Figs., Examples, and claims of JP’506) and JP’506 indicates that the rotor core 10 is formed by laminating a plurality of disc-shaped electromagnetic steel plates in the axial direction of the rotating shaft. (par.[0031] of JP’506), which reads on the claimed limitations in the instant claims.
Regarding newly added claim 13, PG’343 provides example #5-5 having 13.82 at% Nd; 1.83 at% Sm; and 0.44 at% La in table 13 of PG’343 and PG’343 indicates including R-T-M main phase, T-rich boundary phase, and R-rich boundary phase (Fig. 4-5 and par.[0103] of PG’343) and PG’343 specify including proper amount oxygen in order to improve the coating of grain boundary phase to the main phase (par.[0120] of PG’343), which reads on the claimed (Nd, La, Sm)-Fe-B-M (M including one of Cu, Al, and Ga) with R2Fe14B main phase and oxide phase represented by (Nd, La, Sm)-O; and subphase having a higher concentration of Sm than main phase as claimed in the instant claim. The claimed limitation of different grain boundary phase having different Sm amount is recognized as alloy features fully depended on the alloy composition and manufacturing processes. Refer to the rejection for instant claims 1-7, 11-12, and 14-23, PG’343 in view of JP’506 teaches the same R-T-B permanent magnets, with the same main phase T-rich boundary phase, and R-rich boundary phase manufactured by the same manufacturing process including melting, primary cooling, and secondary cooling, therefore, the claimed features in the instant claim would be highly expected for the alloy of PG’343 in view of JP’506. MPEP 2112 01 and 2145 II.
Regarding newly added claim 14, The comparison between the claimed alloy composition ranges and the example #5-5 in table 13 of PG’343 is listed in following table. All of the alloy composition ranges disclosed by the example #5-5 in table 13 of PG’343 are within the claimed alloy composition ranges.
Element
From instant Claim 14 (at %)
Example #5-5 in table 13 of PG’343 (at %)
within range
(at %)
Nd
5-20
13.82
13.82
La + Sm
>0 -- < Nd
Sm: 0.89, La: 0.44
1.33
Fe
70-90
75.20
0.36
B
0.5-10
4.62
0.013
M including one or more of Cu, Al, Ga (cl.1)
0-5
Cu: 0.07;
Al: 0.66;
Ga: 1.38
Cu: 0.07;
Al: 0.66;
Ga: 1.38
N including one of Co, Zr, Ti, Pr, Nb, Dy, Tb, Mn, Gd, and Ho (cl.6)
0-5
Co: 0.55;
Zr: 0.09;
Pr: 0.00;
Co: 0.55;
Zr: 0.09;
Pr: 0.00;
From claims 15-17
From #5-5 in Table 14 of PG’343
Average Grain size of main phase (mm)
100 or less (cl.15)
0.1-50 (cl.17)
1.82
1.82
From claims 19-20
From par.[0133] of PG’343
Grain size of powder (mm)
200 or less (cl.19)
0.5-100 (cl.20)
1.5-3
1.5-3
From claim 21
From PG’343 (par.[0139])
Molding
under a magnetic field
Molding with a magnetic field
Reads on
From claim 22
From PG’343 (par.[0141])
Sintering condition
Inert gas or vacuum
Inert gas or vacuum
Reads on
Regarding newly added claims 15, 17 and 19-22, the disclosures in PG’343 reads on the claimed limitations (refer top the comparison table above).
Regarding newly added claims 16 and 18, PG’343 does not specify primary and secondary cooling process as claimed in the instant claim. JP’506 teaches the same manufacturing process including melting, primary cooling, and secondary cooling (Fig.2-4, claims, and par.[0021]-[0023] of JP’506) as indicates in the instant invention (Figs of the instant application). JP’506 specify the cooling rate in the primary cooling step (S2) is preferably 103 to 104 °C/second (par.[0022] of JP’506) and the cooling rate in the secondary cooling step (S3) is preferably, 10 to 102 °C/sec. (par.[0023] of JP’506), which are within the claimed cooling rate as claimed in the instant claims. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to proper manufacturing process including melting, primary cooling, and secondary cooling with the optimized cooling rates as disclosed in JP’506 for the alloy of PG’343 in order to obtain to form R-T-B magnet with crystalline (Nd, La, Sm)-O subphase and element segregation (Figs. and claims of JP’506).
Regarding claim 23, JP’506 indicates that the rotor core 10 is formed by laminating a plurality of disc-shaped electromagnetic steel plates in the axial direction of the rotating shaft. (par.[0031] of JP’506), which reads on the claimed rotor core as claimed in the instant claim.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-7 and 11-23 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 1-5 of copending application No. 17/634,251 (US 12,562,296 B2).
Regarding instant claims 1-7 and 11-23, although the conflicting claims are not identical, they are not patentable distinct from each other because claims 1-5 of copending application No. 17/634,251 (US 12,562,296 B2) teaches the same R-T-B permanent magnets, whose main phase is tetragonal R2T14B intermetallic compounds including the same main phase and sub-phase. Claims 1-5 of copending application No. 17/634,251 (US 12,562,296 B2) indicates the segregation properties of the La/Sm in different phases and the claims 1-5 of copending application No. 17/634,251 (US 12,562,296 B2) provides examples in table 1 having the Nd, Sm, and La reads on the claimed composition. Thus, no patentable distinction was found in the instant claims compared with the claims 1-5 of copending application No. 17/634,251 (US 12,562,296 B2).
Claims 1-7 and 11-23 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 10-20 of copending application No. 18/033800 (US-PG-pub 2023/0420166 A1).
Regarding instant Claims 1-7 and 11-23, although the conflicting claims are not identical, they are not patentable distinct from each other because claims 10-20 of copending application No. 18/033800 (US-PG-pub 2023/0420166 A1) teaches the same R-T-B permanent magnets, whose main phase is tetragonal R2T14B intermetallic compounds including the same main phase and sub-phase. Claims 17-18 of copending application No. 18/033800 (US-PG-pub 2023/0420166 A1) indicates Nd amount greater than amount of (Sm + La). Thus, no patentable distinction was found in the instant claims compared with the claims 10-20 of copending application No. 18/033800 (US-PG-pub 2023/0420166 A1).
This is a provisional obvious-type double patenting rejection since the conflict claims in the copending application have not in fact been patented.
Claims 1-7 and 11-23 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 1-10 of copending application No. 19/104793 (US-PG-pub 2026/0058041 A1).
Regarding instant Claims 1-7 and 11-23, although the conflicting claims are not identical, they are not patentable distinct from each other because claims 1-10 of copending application No. 19/104793 (US-PG-pub 2026/0058041 A1) teaches the same R-T-B permanent magnets, whose main phase is tetragonal R2T14B intermetallic compounds including the same main phase and sub-phases (cl.5). Thus, no patentable distinction was found in the instant claims compared with the claims 1-10 of copending application No. 19/104793 (US-PG-pub 2026/0058041 A1).
This is a provisional obvious-type double patenting rejection since the conflict claims in the copending application have not in fact been patented.
Claims 1-7 and 11-23 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 1-15 of copending application No. 19/150561 (US-PG-pub 2026/0221322 A1).
Regarding instant Claims 1-7 and 11-23, although the conflicting claims are not identical, they are not patentable distinct from each other because claims 1-15 of copending application No. 19/150561 (US-PG-pub 2026/0221322 A1) teaches the same R-T-B permanent magnets, whose main phase is tetragonal R2T14B intermetallic compounds including the same main phase and sub-phases (cl.5-6). Thus, no patentable distinction was found in the instant claims compared with the claims 1-15 of copending application No. 19/150561 (US-PG-pub 2026/0221322 A1).
This is a provisional obvious-type double patenting rejection since the conflict claims in the copending application have not in fact been patented.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-7 and 12-23 have been considered but they moot in view of the new ground rejection as stated above. Regarding the arguments related to the amended features in the instant claims, the Examiner’s position has been stated as above.
The Applicant’s arguments are summarized as following:
1, Regarding the ODP rejections in the previous office action dated 4/17/2026, ‘296 patent does not specify the claimed Sm separation feature as claimed in the instant claims, and ‘166 publication does not specify the claimed sub-phase as claimed in the instant claims.
2, Regarding the rejection of claim 1 of under 35 U.S.C. 103 as being unpatentable over as being unpatentable over Takeda et al (US-PG-pub 2021/0043343 A1, listed in IDS filed on 1/30/2024, which has been updated US 11,798,717 B2, thereafter PG’343) in view of Iwasaki et al (JP 6692506 B1, with on-line translation, listed in IDS filed on 1/30/2024, thereafter JP’506), 1) PG’343 in view of JP’506 does not specify the claimed separate (Nd, La)-O phase as claimed in the instant claim. 2) JP’506 does not specify Sm segregation. 3) neither PG’343 nor JP’506 teaches two distinct crystalline subphase structure with different Sm and M segregation.
3, regarding the r ejection of claims 2-5, the claimed features in the instant claims 2-5 are not necessary exist in the alloy of PG’343 in view of JP’506.
4, PG’343 in view of JP’506 does not specify cooling before pulverizing.
In response,
Regarding the argument 1, As pointed out in the previous office action dated 4/17/2026, Claims 1-5 of copending application No. 17/634,251 (US 12,562,296 B2) indicates the segregation properties of the La/Sm in different phases and the claims 1-5 of copending application No. 17/634,251 (US 12,562,296 B2) provides examples in table 1 having the Nd, Sm, and La reads on the claimed composition; Claims 10-20 of copending application No. 18/033800 (US-PG-pub 2023/0420166 A1) teaches the same R-T-B permanent magnets, whose main phase is tetragonal R2T14B intermetallic compounds including the same main phase and sub-phase and Claims 17-18 of copending application No. 18/033800 (US-PG-pub 2023/0420166 A1) indicates Nd amount greater than amount of (Sm + La). Proper “Terminal disclaimers” can overcome the ODP rejections.
Regarding the argument 2, Forming different subphases including (Nd, La)-O phase is recognized as material property fully depended on the alloy composition and manufacturing process. PG’343 in view of JP’506 teaches the same R-T-B permanent magnets, with the same main phase T-rich boundary phase, and R-rich boundary phase manufactured by the same manufacturing process including melting, primary cooling, and secondary cooling, therefore, the claimed features in the instant claim would be highly expected for the alloy of PG’343 in view of JP’506. MPEP 2112 01 and 2145 II.
Regarding the arguments 3-4, it is noted that the Applicant does not specify the proper evidence (for example: 132 Declaration) to show the criticality of the operation order, or example: cooling before pulverizing in claim 7, in term of the claimed features in the instant claims.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan J Johnson can be reached on 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JIE YANG/Primary Examiner, Art Unit 1734
Prosecution Insights