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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/29/26 has been entered.
Status of Claims
The claim set filed on 05/29/26 has been entered. Claims 1 – 6 and 8 remain pending and under examination.
Response to Declaration under 37 CFR § 1.132
The declaration under 37 CFR 1.132 filed 05/29/26 is insufficient to overcome the rejections of:
Claim 2 under 35 U.S.C. 103 as being unpatentable over Horiuchi (US 10,770,208)
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, in further view of Horiuchi (JP2014/103239, referred to as JP ‘239).
The Declarant is co-inventor Hiroaki Machida.
The declaration presents objective evidence in the form of data by providing comparative examples 7 and 9 (see Table on Page 2) and subjecting it to the process as stated in the bullets 4 and 6, 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 provides data of forming a magnet with the composition of Example 3 with regards to the rejection of claim 2 in view of Horiuchi (US 10,770,208) with a first solution treatment at 28 hours. The examiner has considered the data of Comparative 9 presented, but it is not persuasive because the grain boundary Cu% obtained is different from that of Example 3 of Horiuchi. Specifically, Comparative Example 9 provided has a grain boundary Cu% of 34% (which notably lies outside the claimed range of claim 2) whereas the example of Horiuchi relied upon obtains a grain boundary Cu% of 49% (which lies within the claimed range) [See Table 3, Example 3]. As such, the data is insufficient to show that Example 3 of Horiuchi with its composition and a grain boundary Cu% of 49% does not necessarily possess the property of a reverse magnetic domain occurring inside at least some of the crystal grains and the reverse magnetic domain propagating throughout the inside of the crystal grain.
Likewise, the Declarant provides data [Comparative 7] of forming a magnet with the composition relied upon by the Office to show Kasai overlaps with the claimed range with a first solution treatment at 28 hours. The examiner has considered the data of Comparative 7 presented, but it is not persuasive because the grain boundary Cu% obtained is below the range suggested by the prior art combination of Kasai (JPS5563806) in view of Horiuchi (US 10,770,208). As discussed in the rejection, Kasai teaches an overlapping range and Horiuchi provides explicit motivation to control the grain boundary Cu% to 45 atomic % or more and that by increasing the Cu concentration of the Cu-rich phases the coercive force and the squareness ratio can be increased [Horiuchi, Col 4, line 36 – 38].
Comparative Example 7 has a grain boundary Cu% of 31.5% (which notably lies outside the claimed range of claim 2) whereas the Kasai as modified by Horiuchi states a grain boundary Cu% of 45% or more (which lies within the claimed range). As such, the data is insufficient to show that the combination of Kasai (JPS5563806) as modified by Horiuchi (US 10,770,208) with an overlapping composition and a grain boundary Cu% of 45% or more does not necessarily possess the property of a reverse magnetic domain occurring inside at least some of the crystal grains and the reverse magnetic domain propagating throughout the inside of the crystal grain.
As such, the declaration does not provide sufficient evidence that Horiuchi (US 10,770,208), with regards to claim 2, or Kasai (JPS5563806) in view of Horiuchi (US 10,770,208), with regards to claim 1, do not necessarily obtain the property 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 grains”.
The examiner has considered the Declarant’s argument that the squareness disclosed/measured by Horiuchi (US 10,770,208) is different from that described/measured in the instant invention and agrees.
Response to Arguments
Applicant's arguments filed 05/29/26 have been fully considered but are not persuasive.
The examiner has considered and agrees with applicant’s argument on page 2 of the remarks (the Declarant’s response) that the squareness disclosed/measured by Horiuchi (US 10,770,208) is different from that described/measured. The examiner notes that no squareness ratio is claimed.
Applicant argues (page 3) that a permanent magnet was produced by tracing Example 3 of Horiuchi as close as possible (see declaration, Comparative Example 9) but that the permanent magnet produced does not obtain the features of claim 2. This is respectfully not found persuasive.
The examiner has considered the data of Comparative 9 presented but it is not persuasive because the grain boundary Cu% obtained is different from that of Example 3 of Horiuchi. Specifically, Comparative Example 9 provided has a grain boundary Cu% of 34% (which notably lies outside the claimed range of claim 2) whereas the example of Horiuchi relied upon obtains a grain boundary Cu% of 49% (which lies within the claimed range) [Table 3, Example 3]. As such, the data is insufficient to show that Example 3 of Horiuchi with its composition and a grain boundary Cu% of 49% does not necessarily possess the property of a reverse magnetic domain occurring inside at least some of the crystal grains and the reverse magnetic domain propagating throughout the inside of the crystal grain.
Horiuchi’s Example 3 teaches a substantially identical composition to the claimed invention as well concentration of Cu in grain boundary phase, which provides a reasonable expectation that the example possesses the claimed feature 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 grains”. This expectation is further supported by [0039] of the specification which suggests that the Cu grain boundary at% is related to the reverse magnetic domain limitation. [0039] states “It is presumed that, in the permanent magnet according to this embodiment, since the concentration of Cu inside the grain boundary phases 20 is a high and the un-magnetization is remarkable, the reverse magnetic domain is less likely to occur at the grain boundaries.”.
Likewise, Applicant argues (page 3) that a permanent magnet was produced with the composition relied upon by the Office to show Kasai overlaps with the claimed range with a first solution treatment at 28 hours (see declaration, Comparative Example 7) but that the permanent magnet produced does not obtain the features of claim 2. This is respectfully not found persuasive.
The examiner has considered the data of Comparative 7 presented, but it is not persuasive because the grain boundary Cu% obtained is below the range suggested by the prior art combination of Kasai (JPS5563806) in view of Horiuchi (US 10,770,208). As discussed in the rejection, Kasai teaches an overlapping range and Horiuchi provides explicit motivation to control the grain boundary Cu% to 45 atomic % or more and that by increasing the Cu concentration of the Cu-rich phases the coercive force and the squareness ratio can be increased [Horiuchi, Col 4, line 36 – 38]. Comparative Example 7 has a grain boundary Cu% of 31.5% (which notably lies outside the claimed range of claim 2) whereas the Kasai as modified by Horiuchi states a grain boundary Cu% of 45% or more (which lies within the claimed range). As such, the data is insufficient to show that the combination of Kasai (JPS5563806) as modified by Horiuchi (US 10,770,208) which has an overlapping composition and a grain boundary Cu% of 45% or more does not necessarily possess the property of a reverse magnetic domain occurring inside at least some of the crystal grains and the reverse magnetic domain propagating throughout the inside of the crystal grain.
There is a reasonable expectation that the combination of Kasai (JPS5563806) as modified by Horiuchi (US 10,770,208) with an overlapping composition and a grain boundary Cu% of 45% or more would possess the property of a reverse magnetic domain occurring inside at least some of the crystal grains and the reverse magnetic domain propagating throughout the inside of the crystal grain. As discussed above, this expectation is further supported by [0039] of the specification which suggests that the Cu grain boundary at% is related to the reverse magnetic domain limitation.
As such, the arguments and data (via declaration) presented have been fully considered but are not persuasive.
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.
Applicant states that the double patenting rejection will be considered after scope and content of earlier application 17/935,463 has been determined. The examiner has considered the response in the context of the submitted declaration for purposes of compact prosecution and because the declaration evidence is relevant to the rejection under nonstatutory double patenting (vis-à-vis the relation of grain boundary Cu% and the reverse magnetic domain limitation(s)). However, the examiner respectfully notes that future responses which do not contain 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) will have to be considered an incomplete response to the Office Action. Per MPEP 804 I B 1, provisional rejections are not held in abeyance and must be fully responded to. The examiner notes that a request for reconsideration based on provided remarks in view of the prior art would be considered a sufficient response.
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). 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 in the grain boundary
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 45 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 45 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.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 9,774,234 Provides an Example [Example 8, Table 1] with substantially similar composition to claim 2.
Conclusion
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AUSTIN POLLOCK/Examiner, Art Unit 1738
/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738
Prosecution Insights