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
The Examiner apologizes for missing that this application is being examined under 35 USC 111(a) practice rather than PCT unity of invention practice. For the sake of compact prosecution, the Examiner is accepting the election made by Applicants of Group I, claims 1-5 and 11-12 in the response filed 5/20/2026 and is also including the correct restriction write-up for 35 USC 111(a) practice below with a response to Applicant’s arguments.
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-5 and 11-12, drawn to a neodymium-iron-boron magnet material, classified in H01F 1/0577.
II. Claims 6-9, drawn to a preparation method of a neodymium-iron-boron magnet material, classified in C22C38/005.
III. Claim 10, drawn to a use of the neodymium-iron-boron magnet material, classified in B22F2202/05.
Inventions I and III are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by another and materially different process, i.e., an alloy powder can be finely ground, placed into a non-oxidizing liquid, placed into a mold, and heated to sinter, rather than smelting, casting, pulverizing, shaping, sintering, and age treating.
Inventions I and III are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the product as claimed can be used in a materially different process, i.e., the magnet could be used to provide intense, stable magnetic fields in magnetic resonance imaging machines, rather than in electronic components.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions have acquired a separate status in the art in view of their different classification
the inventions have acquired a separate status in the art due to their recognized divergent subject matter
the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Applicant's election with traverse of Group I, claims 1-5 and 11-12 in the reply filed on 5/20/2026 is acknowledged. The traversal is on the ground(s) that Mou and Luo do not teach the Nd/Pr ratio and that the compositional ranges of other elements such as Cu and Nb only partially overlap with the claimed ranges and therefore would not result in the same invention. This is not found persuasive because first, there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v.Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. Second, Applicant has not provided any evidence, i.e., data, to establish unexpected results with respect to the present invention. S
The requirement is still deemed proper and is therefore made FINAL.
Claims 6-10 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. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/20/2026.
Claim Rejections - 35 USC § 112(b)
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.
Claim 5 is 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 5 recites two compositions in which it is unclear how they satisfy the requirements of claim 1 of which they depend. The 8th composition requires 27 wt.% Nd and 0.2 wt.% Pr, which is outside the requirement of claim 1, in which R is 28-33 wt.% and comprises Pr and 27-31.5 wt.% Nd, i.e., the total of R is only 27.2, which is outside the claimed lower limit of 28 wt.% in claim 1. The 9th composition requires 27.5 wt.% Nd and 0.1 wt.% Pr, which totals only 27.6 wt.% R and is also outside the claimed amount in claim 1. Therefore, it is unclear whether additional elements are being included in the composition of R in claim 5 to satisfy the requirements of claim 1. Clarification is required.
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 1-5 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Mou et al. (CN 110993234A, hereinafter “Mou”) in view of Luo et al. (CN 111223627A, hereinafter “Luo”).
US 2022/0325391 A1 is an English language equivalent of CN 110993234A and all citations to Mou refer to the US publication. Moreover, the Examiner is providing a machine translation of CN 111223627A.
Regarding claims 1, 2, and 3, Mou teaches a neodymium iron boron magnet comprising the following composition (Mou, [0006-0025]):
Element
Present invention, wt.%
Mou, mass%
Overlap
R
Total: 28-33
Nd: 27-31.5
Pr: included
Total: 29.5-33.5
Nd and/or Pr
29.5-33, with only Nd
Al
0.3-1.3
Claim 3: 0.45-1.15
0.5-1.25
Within
Cu
0.35-0.6
Claim 3: 0.35-0.45
0.35-0.7
0.35-0.6
Co
≥0.85
Claim 3: 0.9-2.5
0.9-2.0
Within
B
0.98-1.2
Claim 3: 0.98-1.05
0.985-1.10
Within
Nb
≥0.25
Claim 3: 0.25-0.55
0.1-0.4
0.25-0.4
Fe
62-69
Claim 3: 63-68
64-66
Within
While Mou teaches the above composition can include R which comprises Nd and/or Pr (Mou, [0008]), Mou does not explicitly disclose an amount of praseodymium or that Nd/Pr≥58.
With respect to the difference, Luo teaches a neodymium iron boron magnet material comprising 29.5-31.6 wt.% R is included and comprises R1 and R2 (Luo, [0002] and [0013]). Luo further teaches R1 includes a rare earth metal for smelting including Nd and R2 includes a rare earth metal for grain boundary diffusion in an amount of 0.2-1.0 wt.% (Luo, [0013]). Luo teaches R1 may further include one or more of Pr, La, and Ce, preferably Pr, and R1 can be in the form of a mixture of pure Pr and Nd, where Pr is in an amount of 0.1-2.0 wt.% (Luo, [0025-0026]). Luo also teaches R2 comprises Tb and may also include one or more of Pr, Dy, Ho, and Gd, where when R2 includes Pr, the preferred amount is 0.2 wt.% or less, excluding 0% (Luo, [0027-0030]).
As Luo expressly teaches, including Pr in R2 form a shell of diffused rare earth elements through the grain boundary diffusion principle (Luo, [0029]). Luo also teaches when R1 contains Pr, the form of Pr addition can be conventional in the art, i.e., including Pr and Nd together in the magnet material is known in the art (Luo, [0082]).
Mou and Luo are analogous as they are both drawn to neodymium iron boron magnet material (Mou, Abstract; Luo, [0002]).
In light of the motivation to include Pr in either R1 or R2 as taught in Luo above, it therefore would have been obvious to one of ordinary skill in the art to include the specific amounts in R element of Mou in order to form a shell of diffused rare earth elements through the grain boundary diffusion principle or have conventional amounts of an Nd and Pr alloy (Luo, [0029] and [0082]), and thereby arrive at the present invention.
The amount of Pr in R1 of Luo overlaps or falls within the range of claim 1. Moreover the Nd/Pr ratio overlaps with the range of the present invention, i.e., when considering the amount of Pr in R1 of Luo, the ratio would necessarily be 13.25-313. See calculations below:
R=R1+R2, where R is 29.5-31.6 wt.% and R2 is 0.2-1.0 wt.%, i.e., R1 is 28.5-31.4 wt.%
R1=Nd+Pr, where Pr is 0.1-2.0 wt.%, i.e., Nd is 26.5-31.3 wt.%
Nd/Pr is 13.25-313, which overlaps with the claimed range.
Therefore, the ranges of Mou in view of Luo overlap or fall within the ranges of claim 1 of the present invention.
Additionally, regarding claim 2, based on the use of “and/or” between the limitations only one limitation needs to be satisfied and the amount of Nd and/or Pr in Mou is 29.5-33 wt.%, which substantially overlaps with wherein the content of R is 29-32.5 wt.% of claim 2. Regarding claim 3, as seen in the table the ranges of Mou fall within or overlap with the claimed ranges.
As set forth in MPEP 2144.05, in the case where the claimed range “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 (Fe. Cir. 1990).
Regarding claims 4, 5, 11, and 12, given the composition of the Nd-Fe-B magnet of Mou in view of Luo is substantially identical to the Nd-Fe-B magnet as used in the present invention, as set forth above, it is clear that the magnet of Mou in view of Luo would intrinsically comprise a NdxPryCoz phase, wherein based on the total moles of the Nd, the Pr and the Co in the NdxPryCoz phase being 100%, x is 50-57%, y is 3-7%, and z is 39-46%; the NdxPryCoz phase is located in a grain boundary phase, wherein the ratio of the area of the NdxPryCoz phase to the total area of the grain boundary phase is 3-7%; and the area of the NdxPryCoz phase or the total area of the grain boundary phase respectively refers to the area thereof occupied in the vertical orientation plane of the detected neodymium-iron-boron magnet material of claims 4, 11, and 12 as well as the specific phases listed for each of the magnet compositions of claim 5.
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).
Additionally, the compositional ranges of Mou in view of Luo encompasses several of the magnet materials of claim 5, including the 6th and 14th magnet material.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE CARDA whose telephone number is (571)270-1240. The examiner can normally be reached Monday-Friday 8:30-4:00 EST.
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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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/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738
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