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 12/16/2025 has been entered. Claim 7 has been canceled. Claims 1 – 6 and 8 remain pending and under examination.
Applicant’s submitted specification overcomes the previous objection due to blurriness. The objection is withdrawn.
Applicant’s amendments have overcome the previous rejection under 112(b).
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 10/21/2025, 12/29/2025, and 02/04/2026, were filed after the mailing date of the Non-Final on 09/16/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDSs have been considered by the examiner.
Response to Declaration under 1.132
The declaration under 37 CFR 1.132 filed 12/16/2025 is insufficient to overcome the rejection of claim 2 as set forth in the last Office action. For clarity, applicant’s amendment to claim 1 (and claims 3 – 5, 6, and 8 by dependency) has overcome the previous rejection because claim 1 is now limited to consisting of components R, Fe, Mn, Cu, and Co (and unavoidable impurities) in their respective claimed ranges. Per MPEP 2111.03 II, “The transitional phrase "consisting of" excludes any element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931)” and Horiuchi requires the presence of Zr and does not teach or suggest why an ordinarily skilled artisan would have excluded it from the composition and as such, no longer meets claim 1.
Claim 2 remains rejected under 35 U.S.C. 103 as being unpatentable over Horiuchi (US 10,770,208) and the declaration is considered in regards to this.
The declarant is co-inventor Hiroaki Machida.
The declaration presents objective evidence in the form of data by providing comparative example 6 (see table on page 2) and subjecting it to the process as stated in the bullet 4, page 1. The declarant states that this shows evidence that Horiuchi would not achieve the limitation of “a reverse magnetic field is applied to the permanent magnet, a reverse magnetic domain occurs inside at least some of the crystal grains, and the reverse magnetic domain propagates throughout the inside of the crystal grains”. This has been fully considered but is not persuasive.
First, the declarant states that the provided comparative example 6 is Example 1 with changes made to its process (see bullet 4, page 1), however, this is not true. The compositon of comparative example 6 contains 3% Mn (outside the claimed range) whereas Example 1 has 0.3% Mn (inside the claimed range). Additionally, the example relied upon in the rejection of Horiuchi (US 10,770,208) contains 0.288 wt% Mn [Table 1, Ex 3]. Further still, Example 3 of Horiuchi has a Cu concentration of 49 at% and a squareness of 93% which are higher than comparative 6 in the declaration.
As such, the declaration does not provide sufficient evidence that the example in Horiuchi (relied upon in the rejection of claim 2 under 35 U.S.C. 103) would not possess the limitation of “a reverse magnetic field is applied to the permanent magnet, a reverse magnetic domain occurs inside at least some of the crystal grains, and the reverse magnetic domain propagates throughout the inside of the crystal grains”.
Response to Arguments
Applicant's arguments filed 12/16/2025 have been fully considered.
Applicant’s amendments to claim 1 and claim 2 have overcome the previous rejections of:
Claims 1, 3 and 8 under 35 U.S.C. 103 as being unpatentable over Horiuchi (US 10,770,208, cited in the IDS of 07/18/23 as US20150270040)
Claims 4 – 5 under 35 U.S.C. 103 as being unpatentable over Horiuchi (US 10,770,208, cited in the IDS of 07/18/23 as US20150270040) alone, or alternatively in view of Horiuchi (JP2014/103239, using espacenet translation, henceforth “JP ‘239” for clarity).
Claim 6 under 35 U.S.C. 103 as being unpatentable over Horiuchi (US 10,770,208, cited in the IDS of 07/18/23 as US20150270040) alone, or alternatively in view of Horiuchi (JP2014/103239).
In particular, the amendments have clarified claim 1 (and claim 2) to be separate. Claim 1 is now limited to consisting of components R, Fe, Mn, Cu, and Co (and unavoidable impurities) in their respective claimed ranges. Horiuchi requires the presence of Zr and does not teach or suggest why an ordinarily skilled artisan would have excluded it from the composition and as such, no longer meets claim 1 (claims 3 – 5, 6, and 8 depend from and therefore require the cumulative limitations of claim 1).
However, upon further consideration, a new ground(s) of rejection is made in view of:
Claims 1, 3 and 8 under 35 U.S.C. 103 as being unpatentable over Kasai (JPS5563806) in view of Horiuchi (US 10,770,208)
Claims 4 – 6 under 35 U.S.C. 103 as being unpatentable over Kasai (JPS5563806) in view of Horiuchi (US 10,770,208), as applied to claim 1 above, in further view of Horiuchi (JP2014/103239, referred to as JP ‘239).
Applicant’s amendments and arguments in response to claim 2 have been fully considered but are not persuasive.
Applicant argues that the claimed invention is a permanent magnet which is manufactured by a manufacturing method having a distinctive feature of carrying out solution treatment in two stages (page 3, top). This is not persuasive because claim 1 nor claim 2 require this feature and instead only requires sintering (i.e. sintered compact). Moreover, “the patentability of a product does not depend on its method of production” (MPEP 2113 I). As such, these arguments are not persuasive.
Applicant further argues that the supplementary experiment provided in the declaration under 1.132 shows that Horiuchi would not attain the reverse magnetic domain limitation in claim 2 (or claim 1). However, as discussed above the supplementary experiment does not provide sufficient evidence that the Example of Horiuchi relied upon in the rejection would not possess the claimed limitation because the compositon of comparative example 6 contains 3% Mn whereas the example relied upon in the rejection over Horiuchi (US 10,770,208) contains 0.288 wt% Mn [Table 1, Ex 3]. Moreover, Example 3 of Horiuchi has a Cu concentration of 49 at% and a squareness of 93% which are higher than comparative 6 in the declaration.
As such, the arguments are not found persuasive and the rejection of Claim 2 under 35 U.S.C. 103 as being unpatentable over Horiuchi (US 10,770,208, cited in the IDS of 07/18/23 as US20150270040) is maintained.
Applicant’s amendments have overcome the previous provisional nonstatutory double patent rejection of claims 1, 3 – 5, 6, and 8 over claims 2 and 6 of copending Application No. 17/935,463 (reference application) in view of Horiuchi (US 10,770,208, cited in the IDS of 07/18/23 as US20150270040) and further in view of Horiuchi (JP2014/103239, using espacenet translation, herein “JP ‘239” for clarity)(claim 6). Claim 1 is now limited to consisting of components R, Fe, Mn, Cu, and Co (and unavoidable impurities) in their respectively claimed ranges. Copending Application No. 17/935,463 claims the presence of both Cu and Zr [Claim 2] or neither [Claim 1].
The previous rejection of claim 2 which was provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 17/935,463 (reference application) in view of Horiuchi (US 10,770,208, cited in the IDS of 07/18/23 as US20150270040) has been maintained.
For purposes of compact prosecution as well as because the independent claims 1 and 2 were amended (and as such required further consideration of the previous provisional non-statutory double patenting), the response submitted on 12/16/2025 is considered fully responsive. However, the examiner respectfully notes that provisional non-statutory double patenting rejections are not held in abeyance and must be fully responded to.
“A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.” “As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance.” (See MPEP 804 I B 1).
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 (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.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Horiuchi (US 10,770,208, cited in the IDS of 07/18/23 as US20150270040)
Regarding claim 2, Horiuchi teaches a permanent magnet that can be used for various motors and generators [Col 11, line 63 – 65], meeting the claimed limitation of a permanent magnet. Horiuchi teaches a specific composition of [Table 1, Ex 3].
Element
Claimed Invention (wt%)
Horiuchi (at%)
Horiuchi (wt%)
Relation
R (rare earth including Sm)
23 – 27%
10.81% (Sm)
23.69%
Falls within
Fe (Iron)
22 – 27%
29.43%
23.956%
Falls within
Mn (Manganese)
0.3 – 2.5%
0.36%
0.288%
Outside
Cu (Copper)
4.0 – 5.0%
5.26%
4.872%
Falls within
Co (Co)
Remainder
52.67%
45.239%
Falls within/Meets
Zr (Zirconium) (claim 2)
1.7 – 2.5%
1.47%
1.955%
Falls within
Horiuchi states that the Cu concentration of Cu-rich phases is 49 at% [Table 3, Ex 3], and that the Cu-rich phases are generated in the grain boundary [Col 11, line 29 – 31], meeting the claimed limitation of a concentration of Cu in at least part of a grain boundary is 45 at% or higher.
Horiuchi teaches that the permanent magnet has a multiple Cu-rich phases [Col 4, line 23 – 24], meeting the claimed limitation of grain boundary phases and Th2Zn17 crystal phases [Col 3, line 62 – 63], meeting the claimed limitation of a plurality of crystal grains.
While the Mn content of Horiuchi falls outside the claimed range, “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) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "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).
Horiuchi does not explicitly teach that “when a reverse magnetic field is applied to the permanent magnet, a reverse magnetic domain occurs inside at least some of the crystal grains, and the reverse magnetic domain propagates throughout the inside of the crystal grain”.
However, Horiuchi teaches a substantially identical composition to the claimed invention as well concentration of Cu in grain boundary phase. Additionally, Horiuchi teaches that the sintered compact is produced in a substantially identical manner including compacting/molding in a magnetic field [Col 14, line 31 – 34], sintering in a non-oxidizing atmosphere [Col 14, line 35 – 39], solutionizing [Col 14, line 40 – 41], rapidly cooling following solutionizing [Col 14, line 42], aging [Col 14, line 43 – 47], and slow cooling [Col 14, line 47 – 52]; [See 0068 – 0074 of the instant invention]. As such, there is a reasonable expectation to an ordinarily skilled artisan that Horiuchi would possess the claimed limitation.
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, in this case composition and process, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (SEE MPEP 2112.01))
Claims 1, 3 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Kasai (JPS5563806, using espacenet translation) in view of Horiuchi (US 10,770,208, cited in the IDS of 07/18/23 as US20150270040)
Regarding claims 1 and 8, Kasai teaches a permanent magnet with a formula of [page 1, original]:
R(Co1-u-v-(Cu+Mn)uFev-)z-
Wherein R is Sm, “u” is 0.02 – 0.25, “v” is 0.002 – 0.45, and “z” is 7 – 8.8 [page 1, original]
Kasai teaches that the Cu:Mn ratio can be at least 1:1 [page 4 of original] to 2:1 [page 3 of original].
For example, when “u” is 0.09 (Cu=0.06, Mn=0.03), “v” is 0.33, and “z” is 7.3, the composition is:
Element
Claimed Invention (wt%)
Kasai (at%)
Kasai (wt%)
Relation
R (rare earth including Sm)
23 – 27%
12.05% (Sm)
26.19%
Falls within
Fe (Iron)
22 – 27%
29.02%
23.42%
Falls within
Mn (Manganese)
0.3 – 2.5%
2.64%
2.1%
Falls within
Cu (Copper)
4.0 – 5.0%
5.28%
4.85%
Falls within
Co (Co)
Remainder
51.01%
43.45%
Falls within/Meets
As such, the composition of Kasai overlaps in the scope with the claimed composition and does not require additional elements outside of those explicitly listed in the claims, meeting the claimed limitation of “consisting of”.
Kasai teaches that the permanent magnet has industrial use, meeting the broadest reasonable interpretation of the magnet being used in a device of claim 8 [last page of translation].
Kasai teaches that the permanent magnet can be subjecting to sintering and heat treating including aging [page 5 of translation], meeting the claimed limitation of sintered compact.
Kasai discloses that a R2Co17 phase exists and CuMn rich phase is precipitated [page 3 of original and page 5 of translation], wherein this meets the broadest reasonable interpretation of plurality of crystal grains and a grain boundary phase.
Kasai does not expressly disclose the concentration of Cu in a grain boundary phase or that when a reverse magnetic field is applied to the permanent magnet, a reverse magnetic domain occurs inside at least some of the crystal grains, and the reverse magnetic domain propagates throughout the inside of the crystal grain.
Horiuchi teaches a permanent magnet that can be used for various motors and generators [Col 11, line 63 – 65] with a similar composition containing Sm, Mn, Cu, Co, and Fe as well as “M” [Abstract]. Horiuchi states that Cu-rich phases are generated in the grain boundary areas [Col 11, line 29 – 31] and that the Cu concentration of Cu-rich phases should be controlled to 45 at% or more [Col 4, line 36], which falls within the claimed range. Horiuchi discloses that doing so increases coercive force and squareness ratio [Col 4, line 38 – 40].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the permanent magnet of Kasai and controlled the Cu concentration of Cu-rich phases to be 45 at% or more, as taught by Horiuchi. Kasai and Horiuchi are directed to the same field of endeavor of SmCo sintered permanent magnets with similar compositions including Fe, Mn, and Cu and with a Th2Zn17 crystal structure and Cu-rich phases. As such, an ordinarily skilled artisan would have had a reasonable expectation of success in controlling the Cu concentration of Cu-rich phases to be 45 at% or more. Furthermore, an ordinarily skilled artisan would be motivated to apply the teachings of Horiuchi to Kasai in order to increase coercive force and squareness ratio.
With regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “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)”
Kasai in view of Horiuchi does not expressly teach that when a reverse magnetic field is applied to the permanent magnet, a reverse magnetic domain occurs inside at least some of the crystal grains, and the reverse magnetic domain propagates throughout the inside of the crystal grain.
However, Kasai in view of Horiuchi teaches a sintered permanent magnet with an overlapping composition that is subjected to sintering and heat treating including aging and contains a R2Co17 crystal structure and Cu-rich phase with a concentration of 45 at% or more. As such, there is a reasonable expectation to a person of ordinary skill in the art that the combination of Kasai and Horiuchi would naturally result in possessing the limitation of when a reverse magnetic field is applied to the permanent magnet, a reverse magnetic domain occurs inside at least some of the crystal grains, and the reverse magnetic domain propagates throughout the inside of the crystal grain.
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, in this case overlapping composition and microstructure (crystal and Cu-concentration), a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (SEE MPEP 2112.01)) "[I]n order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis – the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." Id. at 1195-96, 112 USPQ2d at 1952. But see, Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements." (MPEP 2112 IV)
Regarding claim 3, Kasai in view of Horiuchi teaches the invention as applied in claim 1. Kasai discloses that a R2Co17 phase exists [page 3 of original and page 5 of translation], meeting the claimed limitation.
Kasai does not explicitly state that a RCo5 type structure is formed. However, Kasai teaches a permanent magnet with an overlapping composition that is produced by sintering, heat treating, and aging [page 5 of translation]. The instant invention states that a 1-5 phase (and 2-17 phase) is formed during aging [0074 of instant invention] and as such, there is a reasonable expectation to an ordinarily skilled artisan that Kasai (in view of Horiuchi) would possess a RCo5 type structure.
Claims 4 – 6 are rejected under 35 U.S.C. 103 as being unpatentable over Kasai (JPS5563806, using espacenet translation) in view of Horiuchi (US 10,770,208, cited in the IDS of 07/18/23 as US20150270040), as applied to claim 1 above, in further view of Horiuchi (JP2014/103239, using espacenet translation, henceforth “JP ‘239” for clarity).
Regarding claim 4, Kasai in view of Horiuchi teaches the invention as applied in claim 1. Kasai as-modified does not explicitly the average crystal grain size.
JP ‘239 teaches a sintered permanent magnet possessing a similar composition containing Sm, Mn, Cu, Co, and Fe as well as “M”, a Cu-rich phase, and a Th2Zn17 crystal phase [0008]. JP ‘239 discloses that the crystal phase constituting the sintering body has a grain size ranging from 5 – 500 µm [0018] and preferably has an average crystal grain size of 35 to 200 µm [0023], which overlaps with the claimed range. Wherein controlling the average crystal grain size to this range attains strength of the sintered body as well as coercive force and squareness [0023].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the sintered permanent magnet of Kasai in view of Horiuchi and controlled the average grain size of the crystal phase to a range of 35 – 200 µm, as taught by JP ‘239. Kasai, Horiuchi, and JP ‘239 are directed to the same field of endeavor of SmCo permanent magnets with similar compositions including Fe, Mn, and Cu with a Th2Zn17 crystal structure and Cu-rich phases, and which are produced by sintering. As such, an ordinarily skilled artisan would have considered the teachings of JP ‘239 to be reasonably pertinent to Kasai and would have had a reasonable expectation of success in controlling said crystal structure to the average grain size range as disclosed by JP ‘239. Furthermore, an ordinarily skilled artisan would be motivated to apply the teachings of JP ‘239 to Kasai in order to attain strength in the sintered body as well as the magnetic properties of coercive force and squareness.
Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “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)”
Regarding claim 5, Kasai in view of Horiuchi and JP’239 teaches the invention as applied in claim 4. Kasai in view of Horiuchi and JP’239 does not expressly teach a coefficient of variation of the crystal grain size.
However, Kasai in view of Horiuchi and JP’239 teaches a sintered permanent magnet with an overlapping composition that is subjected to sintering and heat treating including aging and contains a R2Co17 crystal structure and Cu-rich phase with a concentration of 45 at% or more and an overlapping crystal grain size. As such, there is a reasonable expectation to a person of ordinary skill in the art that the combination of Kasai in view of Horiuchi and JP’239 would naturally result in possessing the limitation of a coefficient of variation of the crystal grain size of 0.6 or smaller.
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, in this case overlapping composition and microstructure (crystal, crystal grain size, and Cu-concentration), a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (SEE MPEP 2112.01)) "[I]n order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis – the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." Id. at 1195-96, 112 USPQ2d at 1952. But see, Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements." (MPEP 2112 IV)
Regarding claim 6, Kasai in view of Horiuchi teaches the invention as applied in claim 1. Kasai as-modified does not explicitly a grain boundary thickness.
JP ‘239 teaches a sintered permanent magnet possessing a similar composition containing Sm, Mn, Cu, Co, and Fe as well as “M”, a Cu-rich phase, and a Th2Zn17 crystal phase [0008]. JP ‘239 discloses that the Cu-rich phase constitutes the crystal grain boundary [0020] and has an average thickness of 0.05 – 2 µm (50 – 2000 nm), which overlaps with the claimed range. JP ‘239 teaches that this range ensures the density of the sintered body (which results in strength being imparted in the sintered body) as well as magnetization properties [0020, 0021].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the sintered permanent magnet of Kasai in view of Horiuchi and controlled the average thickness of the Cu-rich grain boundary phase to a range of 0.05 – 2 µm, as taught by JP ‘239. Kasai, Horiuchi, and JP ‘239 are directed to the same field of endeavor of SmCo permanent magnets with similar compositions including Fe, Mn, and Cu with a Th2Zn17 crystal structure and Cu-rich phases, and which are produced by sintering. As such, an ordinarily skilled artisan would have a reasonable expectation of success in controlling said grain boundary phase to the average thickness range as disclosed by JP ‘239. Furthermore, an ordinarily skilled artisan would be motivated to apply the teachings of JP ‘239 to Kasai as-modified by Horiuchi in order to ensure the density of the sintered body (which results in strength being imparted in the sintered body) as well as the magnetization properties [0020, 0021].
Lastly, Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 17/935,463 (reference application) in view of Horiuchi (US 10,770,208, cited in the IDS of 07/18/23 as US20150270040) and further in view of Horiuchi (JP2014/103239, using espacenet translation, herein “JP ‘239” for clarity)(claim 6). Although the claims at issue are not identical, they are not patentably distinct from each other because
Regarding claim 2, the application claims an overlapping composition for a sintered permanent magnet [Claim 2]. The application claims a plurality of crystal grains and grain boundary phases [Claim 2].
The application does not claim the copper concentration
Horiuchi teaches an overlapping composition for a sintered permanent magnet [Col 2, line 37 – 45; Col 9, line 21]. Horiuchi teaches the copper concentration in a copper rich grain boundary phase should be at least 45 at% in order to improve coercive force and squareness [Col 4, line 35 – 39], which falls within the claimed range. As such, it would have been obvious to one of ordinary skill in the art before the effective filing date to have controlled the copper concentration in the grain boundary phase to at least 40 at% as claimed.
The application does not explicitly claim the limitation of the reverse magnetic domain occurring in at least some of the crystal grains, but claims an overlapping composition as well as average grain size and coefficient of variation of said grain size and it would have been obvious before the effective filing date to have controlled the copper concentration in the grain boundary phase to at least 40 at% as claimed and therefore, the combination would be expected to inherently possess the limitation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 6,726,781 – RE-Co-Fe-Cu-T permanent magnet wherein T can be Mn
US 4,322,257 – Permanent magnet with overlapping composition
US 3,982,971 – Sintered permanent magnet with overlapping composition
JPS558468 – Permanent magnet with overlapping composition and additionally containing Ti
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738