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
Applicant’s election without traverse of Group I, claims 1-9 and new claims 12-18 in the reply filed on 12/02/2025 is acknowledged.
Claims 10-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/02/2025.
Priority
Certified copies of the priority documents have been received.
Information Disclosure Statement
One (1) information disclosure statement (IDS) was submitted on 05/26/2023. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS are being considered by the examiner.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 1 is objected to because of the following informalities: the term “atm%” should be spelled out. The instant specification recites “atomic concentration (atm%)” ([0019], [0041]). The Examiner notes atomic percentage is typically abbreviated as “at%”. Appropriate correction is required.
Claim Interpretation
Regarding the transitional phrases of claim 1, the claim uses the terms “comprising”, “containing”, and “having”. The terms “comprising” and “containing” are synonymous and are inclusive or open-ended, and do not exclude additional, unrecited elements or method steps. See MPEP 2111.03(1). The term “having” must be interpreted in light of the specification to determine whether open or closed claim language is intended. See MPEP 2111.03 (IV). Given the use of “comprising” and “containing” in the claim, the term “having” is interpreted as open-ended.
Regarding the limitation “if Sm is present, Sm constitutes less than 50 atm% of a total R content” of claim 1, the limitation is interpreted as a contingent limitation. See MPEP 2111.04 (II). In this case, the range of Sm constitutes less than 50 atm% of a total R content will only apply if the powder of the prior art has Sm in its composition.
Note that the limitation “for magnetic field amplification” of claims 6-8 and 12-15 and “for hyper-high frequency absorption” of claims 9 and 16-18 are an intended use limitation that does not impart any structural limitations to the claimed steel sheet. “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” See MPEP §2111.02 (Il). In this case, since the magnetic materials of independent claims 6 and 9 comprise the coated rare earth-iron-nitrogen-based magnetic powder of claim 1, any magnetic powder meeting the limitations of claim 1 will be interpreted as capable of performing the intended uses “for magnetic field amplification” of claims 6-8 and 12-15 and “for hyper-high frequency absorption” of claims 9 and 16-18.
Regarding claim 8, “for use in wireless power transfer” is a statement of intended use that does not further limit the claimed invention. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that it is well settled that the recitation of a new intended use, for an old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (see MPEP § 2114). In this case, any powder meeting the limitations of claim 6, on which claim 8 depends, will be interpreted as suitable “for use in wireless power transfer”.
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.
Claims 1-9 and 12-18 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 second coating portion having average atomic concentrations of P and R lower than average atomic concentrations of P and R, respectively, in the first coating portion and containing Fe" in lines 14-16. The limitation “the second coating portion having average atomic concentrations of P and R lower than average atomic concentrations of P and R, respectively, in the first coating portion” renders the claim indefinite. The limitation “having average atomic concentrations of P and R lower than average atomic concentrations of P and R” is unclear since the average atomic concentrations cannot have two different values at the same time. An alternate reading is “the second coating portion having average atomic concentrations of P and R lower than average atomic concentrations of P and R
Claims 2-9 and 12-18 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Claim 1 recites the limitation "the second coating portion having average atomic concentrations of P and R lower than average atomic concentrations of P and R, respectively, in the first coating portion and containing Fe" in lines 14-16. The term “and containing Fe” renders the claim indefinite since it is unclear whether the limitation “containing Fe” applies to the “second coating portion”, the “first coating portion”, both portions, or a different interpretation.
Claims 2-9 and 12-18 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Claim 2 recites the limitation “having a P content that is at least 0.02% by mass but not higher than 4% by mass”. This limitation renders the claim indefinite since it is unclear whether the claimed P content range applies to the overall powder of claim 1, to only regions disclosed to contain P (“first coating portion” and “second coating portion”), to each region, or a different interpretation.
Regarding claim 3, the term “Fe-rich region” in claim 3 is a relative term which renders the claim indefinite. The term “Fe-rich region” 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 instant specification recites the first coating portion may contain a Fe-rich region and at least the atomic concentration of Fe is higher than the average atomic concentration of Fe in the first coating portion ([0044]), one of ordinary skill in the art would not reasonably understand what Fe amounts would be required for a region to read on the claimed “Fe-rich region”.
Claim 9 recites the limitation “a magnetic material for hyper-high frequency absorption”. The term “hyper-high” is a relative term which renders the claim indefinite. The term “hyper-high” is not defined by the claim. The instant specification recites “the magnetic material for hyper-high frequency absorption according to the present embodiments which contains the coated rare earth-iron-nitrogen-based magnetic powder can absorb hyper-high frequencies in a very broad frequency range of 1 GHz to 1 THz” ([0086]).
Claims 16-18 depend on claim 9, do not resolve the aforementioned issues, and are thereby also indefinite.
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 1-9 and 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2018/081970 A of Hayashi.
Regarding claim 1, Hayashi teaches iron-based magnet alloy powder including a rare earth element and having excellent salt water resistance (Abstract, reads on claimed magnetic powder). Hayashi teaches the present invention is especially suitably applied to powders of rare earth element-iron-nitrogen magnet alloys, which have high magnetic properties but are prone to rusting and teaches neodymium iron nitrogen (Nd-Fe-N) magnet alloy powders as particularly suitable ([0032], powder of Hayashi reads on claimed rare earth-iron-nitrogen-based magnetic powder of claim 1 and further reads on the claimed core region of claim 1; since the powder of Hayashi contains Nd, Fe, and N, Hayashi reads on the claimed the core region containing R, Fe, and N, where R represents at least one selected from the group consisting of Y, Ce, Pr, Nd, Gd, Tb, Dy, Ho, Er, Tm, Lu, and Sm, and if Sm is present, Sm constitutes less than 50 atm% of a total R content of claim 1).
Hayashi teaches forming a first composite metal phosphate coating containing iron phosphate and a rare earth metal phosphate on the surface of an iron-based magnetic alloy powder containing a rare earth element, and then forming a second composite metal phosphate coating containing an allyl compound having a benzene ring or an isocyanurate ring, iron phosphate, and a rare earth metal phosphate on the surface of the first composite metal phosphate coating to obtain rare earth bonded magnets and rare earth compacted magnets with excellent magnetic properties and high saltwater resistance ([0015]-[0016], first composite metal phosphate coating reads on the claimed first coating portion provided outside the core region of claim 1; second composite metal phosphate coating reads on the claimed second coating portion of claim 1). Since the powder of Hayashi contains two coatings, Hayashi reads on the claimed a coated rare earth-iron-nitrogen-based magnetic powder of claim 1.
Hayashi therefore reads on the limitations a coated rare earth-iron-nitrogen-based magnetic powder, comprising: a core region; a first coating portion provided outside the core region; and a second coating portion, the core region containing R, Fe, and N, where R represents at least one selected from the group consisting of Y, Ce, Pr, Nd, Gd, Tb, Dy, Ho, Er, Tm, Lu, and Sm, and if Sm is present, Sm constitutes less than 50 atm% of a total R content of claim 1.
Since Hayashi teaches the first and second composite metal phosphate coatings contain iron phosphate and a rare earth metal phosphate ([0015]-[0016], rare earth metal reads on claimed R), both coatings of Hayashi contain P, Fe, and R since phosphates contain P, iron phosphates will contain Fe and P, and rare earth metal phosphates will contain R and P.
Hayashi therefore reads on the limitations the first coating portion containing P and R of claim 1 and the second coating portion having P and R and containing Fe of claim 1.
However, Hayashi does not explicitly disclose the first coating portion containing an average atomic concentration of R in the first coating portion being higher than an average atomic concentration of R in the core region, and the average atomic concentration of R in the first coating portion being not higher than twice the average atomic concentration of R in the core region, and the second coating portion having average atomic concentrations of P and R lower than average atomic concentrations of P and R, respectively, in the first coating portion of claim 1.
Regarding the average atomic concentrations of P and R in the core region, first coating, and second coating of claim 1, the instant specification teaches an example where the thickness of the first coating portion is preferably at least 1 nm but not more than 200 nm so that the average atomic concentration of R in the first coating portion is not more than twice, preferably not more than 1.9 times, more preferably not more than 1.8 times the average atomic concentration of R in the rare earth-iron-nitrogen-based magnetic powder ([0103]).
Further regarding the coating compositions, the instant specification recites coating with phosphorus-containing crystalline compounds containing a rare earth phosphate or a rare earth phosphate and at least one of an iron phosphate and a M phosphate ([0038]). The instant specification recites phosphate compounds such as inorganic phosphoric acids such as orthophosphoric acid, pyrophosphoric acid, and polyphosphoric acid, and phosphates of these inorganic phosphoric acids with Na, Ca, Pb, Zn, Fe, Y, Ce, Pr, Nd, Gd, Tb, Dy, Ho, Er, Tm, Lu, Sm, ammonium, etc. are preferred among the phosphorus-containing substances ([0098]). The instant specification further recites when the phosphorus-containing substance is a phosphoric acid and consists only of hydrogen and the phosphate component (PO4), the amount of the phosphorus-containing substance, calculated as PO4, is, for example, at least 0.01% by mass but not more than 10% by mass ([0096]). The instant specification recites to improve the phase angle θ of the magnetic material, the thickness of the first coating should be 1-200 nm ([0037]) and the thickness of the second coating should be 1-100 nm ([0055]).
Hayashi teaches in the step of forming the first and second composite metal phosphate
coatings, phosphoric acid is added to the magnet alloy powder ([0022], phosphoric acid corresponds to the phosphorus-containing substance of the instant invention), Hayashi teaches examples of phosphoric acid that can be used include orthophosphoric acid, phosphorous acid, hypophosphorous acid, pyrophosphoric acid, linear polyphosphoric acid, and cyclic metaphosphoric acid ([0070], underlined acids are overlapping with examples of phosphorus-containing substances in the instant invention). Hayashi teaches the amount of phosphoric acid added is preferably in the range of 0.1 mol/kg to 2 mol/kg ([0071]). Hayashi teaches if the amount of phosphoric acid added is less than 0.1 mol/kg, the surface of the magnet alloy powder is not sufficiently coated, so the saltwater resistance of the magnet alloy powder is not improved and if the concentration exceeds 2 mol/kg, the reaction with the magnet alloy powder occurs so violently that the magnet alloy powder itself dissolves ([0071]). Hayashi teaches an example where 100 g of phosphoric acid is added to 1 kg of magnet alloy powder ([0117], Example 2). One can calculate an approximate mass percentage of phosphoric acid by dividing 100 g of phosphoric acid by 1100 g which is the total amount of powder and phosphoric acid and results in 0.09 mass% phosphoric acid, which lies within the preferred range of phosphoric acid recited in the instant specification.
Further regarding the phosphate coatings, Hayashi teaches the average thickness of the first composite metal phosphate coating is in the range of 1 nm to 100 nm ([0055], overlaps with the instant invention), the average thickness of the second composite metal phosphate coating is in the range of 3 nm to 50 nm ([0062], overlaps with the instant invention).
Regarding the second coating, Hayashi teaches the second composite metal phosphate coating contains an allyl compound having a benzene ring or an isocyanurate ring, iron phosphate, and a rare earth metal phosphate ([0084]). Hayashi teaches the allyl compound is added in the range of 0.1-5 mass% of the powder mass of the magnet alloy powder ([0086]). Since benzene has a chemical formula of C6H6, one of ordinary skill in the art understands that adding benzene to the second coating would lower the amount of P and R and therefore have a lower P and R content than the first coating of Hayashi which does not include an allyl compound.
As best understood given the 112(b) rejection in this Office action, since the powders of Hayashi and the instant invention both have a core region containing Nd, Fe, and N, and a first and second coating with overlapping composition and thicknesses formed using overlapping phosphoric acids, one of ordinary skill in the art would reasonably expect the powder of Hayashi to have average atomic concentrations of P and R in the core region, first coating and second coating overlapping with the claimed invention since the powder and coatings use similar or identical chemical compounds and have overlapping coating thicknesses.
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). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the powder of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (both powders have a core region containing R, Fe, and N, and the coatings use similar phosphate compounds) and b) the claimed and prior art products are identical or substantially identical in structure (both powders have a core region, a first coating, and a second coating and the coatings have overlapping thicknesses). Since the Office does not have a laboratory to test the reference powder, it is applicant’s burden to show that the reference powder does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
In this case, since Hayashi teaches a coated rare earth-iron-nitrogen-based magnetic powder with a first and second coating overlapping in composition and thickness with the instant invention, one of ordinary skill in the art would reasonably expect the powder of Hayashi to necessarily possess the claimed average atomic concentrations of P and R in the first and second coatings of the instant invention, despite not explicitly disclosing them.
Hayashi therefore reads on the limitation the first coating portion containing an average atomic concentration of R in the first coating portion being higher than an average atomic concentration of R in the core region, and the average atomic concentration of R in the first coating portion being not higher than twice the average atomic concentration of R in the core region, and the second coating portion having average atomic concentrations of P and R lower than average atomic concentrations of P and R, respectively, in the first coating portion of claim 1.
Since the powder of Hayashi reads on all the limitations of claim 1, as described above, and given the limitations “for magnetic field amplification” of claims 6-8 and 12-15, “for hyper-high frequency absorption” of claims 9 and 16-18, and “for use in wireless power transfer” of claim 8 are interpreted as intended use (see Claim Interpretation section), Hayashi therefore reads on the limitations a magnetic material for magnetic field amplification, comprising the coated rare earth-iron-nitrogen-based magnetic powder according to claim 1 of claim 6, the magnetic material for magnetic field amplification according to claim 6 for use in wireless power transfer of claim 8, a magnetic material for hyper-high frequency absorption, comprising the coated rare earth-iron-nitrogen-based magnetic powder according to claim 1 of claim 9.
Regarding claims 2 and 12, Hayashi teaches the powder of claims 1 and 6, as described above.
However, Hayashi does not explicitly disclose having a P content that is at least 0.02% by mass but not higher than 4% by mass of claims 2 and 12.
Regarding the amount of phosphorus of claims 2 and 12, the instant specification recites coating with phosphorus-containing crystalline compounds containing a rare earth phosphate or a rare earth phosphate and at least one of an iron phosphate and a M phosphate ([0038]). The instant specification recites phosphate compounds such as inorganic phosphoric acids such as orthophosphoric acid, pyrophosphoric acid, and polyphosphoric acid, and phosphates of these inorganic phosphoric acids with Na, Ca, Pb, Zn, Fe, Y, Ce, Pr, Nd, Gd, Tb, Dy, Ho, Er, Tm, Lu, Sm, ammonium, etc. are preferred among the phosphorus-containing substances ([0098]). The instant specification further recites when the phosphorus-containing substance is a phosphoric acid and consists only of hydrogen and the phosphate component (PO4), the amount of the phosphorus-containing substance, calculated as PO4, is, for example, at least 0.01% by mass but not more than 10% by mass ([0096]). The instant specification recites to improve the phase angle θ of the magnetic material, the thickness of the first coating should be 1-200 nm ([0037]) and the thickness of the second coating should be 1-100 nm ([0055]).
Hayashi teaches in the step of forming the first and second composite metal phosphate
coatings, phosphoric acid is added to the magnet alloy powder ([0022], phosphoric acid corresponds to the phosphorus-containing substance of the instant invention), Hayashi teaches examples of phosphoric acid that can be used include orthophosphoric acid, phosphorous acid, hypophosphorous acid, pyrophosphoric acid, linear polyphosphoric acid, and cyclic metaphosphoric acid ([0070], underlined acids are overlapping with examples of phosphorus-containing substances in the instant invention). Hayashi teaches the amount of phosphoric acid added is preferably in the range of 0.1 mol/kg to 2 mol/kg ([0071]). Hayashi teaches if the amount of phosphoric acid added is less than 0.1 mol/kg, the surface of the magnet alloy powder is not sufficiently coated, so the saltwater resistance of the magnet alloy powder is not improved and if the concentration exceeds 2 mol/kg, the reaction with the magnet alloy powder occurs so violently that the magnet alloy powder itself dissolves ([0071]). Hayashi teaches an example where 100 g of phosphoric acid is added to 1 kg of magnet alloy powder ([0117], Example 2). One can calculate an approximate mass percentage of phosphoric acid by dividing 100 g of phosphoric acid by 1100 g which is the total amount of powder and phosphoric acid and results in 0.09 mass% phosphoric acid, which overlaps with the preferred range of phosphoric acid recited in the instant specification.
Further regarding the phosphate coatings, Hayashi teaches the average thickness of the first composite metal phosphate coating is in the range of 1 nm to 100 nm ([0055], overlaps with the instant invention), the average thickness of the second composite metal phosphate coating is in the range of 3 nm to 50 nm ([0062], overlaps with the instant invention).
As best understood given the 112(b) rejection in this Office action, since the powders of Hayashi and the instant invention both have a first and second coating with overlapping composition and thicknesses formed using overlapping phosphoric acids, one of ordinary skill in the art would reasonably expect the powder of Hayashi to have a P content overlapping with the claimed invention since the powder and coatings use similar or identical chemical compounds and have overlapping coating thicknesses.
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). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the powder of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (both powders have a core region containing R, Fe, and N, and the coatings use similar phosphate compounds) and b) the claimed and prior art products are identical or substantially identical in structure (both powders have a core region, a first coating, and a second coating). Since the Office does not have a laboratory to test the reference powder, it is applicant’s burden to show that the reference powder does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
In this case, since Hayashi teaches a coated rare earth-iron-nitrogen-based magnetic powder with a first and second coating overlapping in composition and thickness with the instant invention, one of ordinary skill in the art would reasonably expect the powder of Hayashi to necessarily possess the claimed P content of the instant invention, despite not explicitly disclosing P content.
Hayashi therefore reads on the limitation having a P content that is at least 0.02% by mass but not higher than 4% by mass of claims 2 and 12.
Regarding claims 3, 13, and 17, Hayashi teaches the powder of claims 1,6, and 9, as described above.
However, Hayashi does not explicitly disclose wherein the first coating portion includes a Fe-rich region of claims 3, 13, and 17.
The instant specification recites coating with phosphorus-containing crystalline compounds containing a rare earth phosphate or a rare earth phosphate and at least one of an iron phosphate and a M phosphate ([0038]).
As best understood given the 112(b) rejection in this Office action, since Hayashi teaches the first composite metal phosphate coating contains iron phosphate and a rare earth metal phosphate and the first coating further contains a metal component selected from Al, Zn, Mn, Cu, and Ca ([0015]-[0016], [0019], corresponds to the phosphorus-containing crystalline compounds containing a rare earth phosphate or a rare earth phosphate and at least one of an iron phosphate and a M phosphate of the instant invention), one of ordinary skill in the art would reasonably expect the first coating of Hayashi to have a Fe-rich region since the powder and coatings of Hayashi and the claimed invention use the same chemical compounds.
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). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the powder of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (both powders have a core region containing R, Fe, and N, and the coatings use similar phosphate compounds) and b) the claimed and prior art products are identical or substantially identical in structure (both powders have a core region, a first coating, and a second coating). Since the Office does not have a laboratory to test the reference powder, it is applicant’s burden to show that the reference powder does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
In this case, since Hayashi teaches a coated rare earth-iron-nitrogen-based magnetic powder with a first and second coating overlapping in composition with the instant invention, one of ordinary skill in the art would reasonably expect the powder of Hayashi to necessarily possess the claimed Fe-rich region of the instant invention, despite not explicitly disclosing it.
Hayashi therefore reads on the limitation wherein the first coating portion includes a Fe-rich region of claims 3, 13, and 17.
Regarding claims 4, 5, 14, and 15, Hayashi teaches the powder of claims 1 and 6, as described above.
However, Hayashi does not explicitly disclose having a ratio of θ1/θ2 that is at least 0.8, where θ1 represents a phase angle at 100 MHz and θ2 represents a phase angle at 13 MHz of claims 4 and 14 and having a phase angle θ at 13 MHz that is at least 80° of claims 5 and 15.
The instant specification recites to improve the phase angle θ of the magnetic material, the thickness of the first coating should be 1-200 nm ([0037]), the thickness of the second coating should be 1-100 nm ([0055]), and a lower limit of the magnetic powder particle size is 0.1 μm ([0064]).
Hayashi teaches the average thickness of the first composite metal phosphate coating is in the range of 1 nm to 100 nm ([0055], overlaps with the instant invention), the average thickness of the second composite metal phosphate coating is in the range of 3 nm to 50 nm ([0062], overlaps with the instant invention), and in order to use the various magnet alloy powders described above as raw materials for rare earth bonded magnets or rare earth compacted magnets, it is preferable that the average particle size is 8 μm or less ([0064], overlaps with the instant invention).
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). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the powder of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (both powders have a core region containing R, Fe, and N, and the coatings use similar phosphate compounds) and b) the claimed and prior art products are identical or substantially identical in structure (both powders have a core region, a first coating, and a second coating with overlapping thicknesses and sizes). Since the Office does not have a laboratory to test the reference powder, it is applicant’s burden to show that the reference powder does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
In this case, since Hayashi teaches a coated rare earth-iron-nitrogen-based magnetic powder with a first and second coating overlapping in composition and thicknesses with the instant invention, one of ordinary skill in the art would reasonably expect the powder of Hayashi to necessarily possess the claimed ratio of phase angles and claimed phase angles of the instant invention, despite not explicitly disclosing them.
Hayashi therefore reads on the limitations having a ratio of θ1/θ2 that is at least 0.8, where θ1 represents a phase angle at 100 MHz and θ2 represents a phase angle at 13 MHz of claims 4 and 14 and having a phase angle θ at 13 MHz that is at least 80° of claims 5 and 15.
Regarding claims 7 and 18, Hayashi teaches the powder of claims 6 and 9, as described above.
Hayashi teaches a rare earth bonded magnet obtained by bonding the rare earth element-containing iron-based magnet alloy powder of the present invention with a thermoplastic resin or a thermosetting resin ([0024]-[0025], [0091]-[100], reads on the claimed resin).
Hayashi therefore reads on the limitation further comprising a resin of claims 7 and 18.
Conclusion
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733