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 with traverse of Group I in the reply filed on 05/14/2026 is acknowledged. The traversal is on the ground(s) that Group Il and Group III claims are dependent from claim 1 so that all pending claims are closely related. Searching and examining all pending claims therefore does not constitute a serious burden. This is not found persuasive because claim 5 only recites that R, T, B and M are defined in claim 1, claims 5 and 7 do not recite the structure of claim 1. There is serious search burden to exam all three groups.
The requirement is still deemed proper and is therefore made FINAL. Claims 5-9 are withdrawn. Claims 1-4 and 10 are examined herein.
Claim Objections
Claim 1 is objected to because of the following informalities: “and optionally other metal elements present or absent” should be deleted as this limitation has no weight. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 10 is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4 and 10 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “the first-layer shell structure is a Ce-rich and/or Y-rich layer” in line 10, and the claim also recites “preferably the CeY-rich layer” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Appropriate correction is required.
Claim 1 recites that “the T comprises Fe” in line 8. It’s unclear what other elements are included in T and the scope of T is not clear. Appropriate correction is required.
The terms “Ce-rich”, “Y-rich” and “CeY-rich” in claim 1 (line 10) are relative terms which render the claim indefinite. The terms “Ce-rich”, “Y-rich” and “CeY-rich” are 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. Appropriate correction is required.
Claim 1 recites that M can be transition metals. Please clarify whether M can Be Fe or Co. Appropriate correction is required.
The term “low-melting” in claim 1 (line 12) and claim 2 (line 4) is a relative term which renders the claim indefinite. The term “low-melting” 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. Appropriate correction is required.
The term “rich” in claim 1 (line 13) is a relative term which renders the claim indefinite. The term “rich” 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. Appropriate correction is required.
Claim 2 recites “R is preferably selected from Nd and NdPr” in line 1. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Appropriate correction is required.
Claim 2 recites “the T is selected from iron (Fe) or a mixture of iron and other metal elements” in line 3. It’s unclear whether other metal elements include rare earth metal elements. Appropriate correction is required.
Claim 2 recites “preferably, the transition metal element is selected from one, two, or more of copper (Cu), zirconium (Zr), titanium (Ti), tin (Sn), and manganese (Mn)” in line 5. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Appropriate correction is required.
Claim 2 recites “the low-melting-point metal element is selected from one or two of Al, Ga, and the like” in line 7. The phrase "the like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Claim 2 recites “more preferably, the M can be selected from one or more of Cu, Ga, Al, Zr, Ti, Sn, Mn, B, V, and Se, such as one or more of Cu, Ga, Al, Zr, Ti, Sn, Mn, and Se, preferably one, two, or more of Cu, Ga, Al, Sn, and Mn” in line 9-11. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Appropriate correction is required.
Claim 3 recites “the ratio of (Pr+Nd)/RE in the main phase grains is not less than 90%” in line 4. It’s unclear whether the recited ratio is atomic ratio or weight ratio. Appropriate correction is required.
Claim 3 recites “preferably, the ratio of (Pr+Nd)/RE in the main phase grains is not less than 90%” in line 4 and “more preferably, the thicknesses of the first-layer shell structure, the second-layer shell structure, and the third-layer shell structure are the same as or different from each other, and are independently selected from 1-6 nm” in line 11-13. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Appropriate correction is required.
Regarding claim 3, the phrase "for example" (line 14) renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Appropriate correction is required.
Regarding claim 3, the phrase "such as" (line 14-17) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Appropriate correction is required.
Claim 3 recites “can be” in line 14-17. It’s unclear the limitations followed by “can be” should be treated as positive limitations. Appropriate correction is required.
Claim 4 recites “preferably, preferably not less than 0.3% and not more than 3.0%” in line 6, “preferably, the permanent magnet material can comprise Co” in line 8 and “more preferably, the balance of the permanent magnet material is Fe, O, and an inevitable impurity” in line 10. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Appropriate correction is required.
Claim 4 recites the percentage of R, B and M. It’s unclear the recited percentage is for the whole magnet and for the main phase grains. Appropriate correction is required.
Claim 10 recites use of the permanent material, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim 10 recites “and the like” in line 2. The phrase "the like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d). Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nomura (US 2023/0148121).
Regarding claims 1 and 2, Nomura teaches ([0042] to [0092]) an anisotropic sintered rare earth magnet containing R2Fe14B main phase and having a composition of
PNG
media_image1.png
16
271
media_image1.png
Greyscale
(Table 1, Example 9), which meets the composition limitation recited in claim 2. Nomura discloses that the magnet has a shell part with a composition of
PNG
media_image2.png
15
186
media_image2.png
Greyscale
(i.e. Ce-rich layer) and a grain boundary part of R’(Fe, Co)2 phase with a composition of
PNG
media_image3.png
14
174
media_image3.png
Greyscale
(i.e. Tb-rich layer) (Table 4, Example 9), which meets the first shell layer and the third shell layer limitation recited in claim 1. Nomura further discloses that between the shell part and the R’(Fe, Co)2 phase, there is a grain boundary phase containing Fe,Co and M (M is at least one selected from the group consisting of Al, Ti, V, Cr, Mn, Ni, Cu, Zn, Ga, Zr etc.) ([0046]; [0069] to [0074]), which meets the second-layer shell structure recited in claim 1.
Regarding claim 3, Nomura discloses that the core of the main phase grain has a composition of
PNG
media_image4.png
17
161
media_image4.png
Greyscale
(Table 4, Example 9), which converts to 26.77 wt% R, 72.13 wt% Fe and 1 wt% B and meets the recited amount of B in claim 3. The limitation followed by “preferably” in line 4-10 and the limitation followed by “more preferably” in line 11-17 are not given patentably weight because there is a doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 10, Nomura discloses that the magnet is used in motors ([0002]), which meets the limitation recited in claim 10.
Claim Rejections - 35 USC § 103
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Nomura (US 2023/0148121).
Regarding claim 4, Nomura teaches ([0042] to [0092]) an anisotropic sintered rare earth magnet having a composition of
PNG
media_image1.png
16
271
media_image1.png
Greyscale
in the center part (Table 1, Example 9), which converts to 32.89 wt% R, 0.957 wt.% B, 0.313 wt. % Zr+Al+Cu, 2.12 wt.% Co and the balance being Fe. The composition of Example 9 meets the recited amount of B, M and Co in claim 4 and close to the recited amount of R in claim 4. 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). See MPEP 2144.05 I. Further Nomura discloses that the amount of R can be in the range of 12-17 at% ([0042]), which overlaps the recited amount of R (after unit conversion). 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Thus, claim 4 is obvious over Nomura. See MPEP 2144.05 I.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Xiaowei Su whose telephone number is (571)272-3239. The examiner can normally be reached 8:00-5:00.
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, Keith Hendricks can be reached at 5712721401. 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.
/XIAOWEI SU/Primary Examiner, Art Unit 1733
Prosecution Insights