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 .
Status of Claims
An amendment, filed 05/26/2026, is acknowledged.
Claims 1-16 are currently pending.
Claims 12 and 16 are amended.
Claims 1-11 are withdrawn.
Claims 11-16 are currently under examination on the merits.
Status of Previous Rejections
The previous 35 USC § 103 rejections of the claims have been maintained.
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 12-14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Takashi Asada et.al. [US 20200211742A1] (Asada hereafter).
Regarding claim 12, Asada discloses a bonded magnet (Abstract, [0007]), comprising:
a magnetic powder ([0007]); and
a cured thermosetting resin ([0007]),
the bonded magnet having a magnetic powder filling factor of 71 vol% or more ([0048]) and a magnetic orientation ratio of 80% or more ([0051]) and a remanence of the bonded magnet is more preferably 0.8 Tor more ([0050]).
Asada’s magnetic powder filling factor is incorporated within a range as recited in the instant claim.
Asada’s magnetic orientation ratio and remanence of the bonded magnet both are overlapping with the ranges as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected and produced a bonded magnet with a values of filling factor, magnetic orientation ratio and remanence from Asada’s teaching, because “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)” [See MPEP § 2144.05.I].
Asada further discloses a filling factor of less than 71 % by volume tends to lead to insufficient remanence ([0048]) and insufficient remanence tends to lead to insufficient torque during use in applications such as motors and a magnetic orientation ratio of 80% or higher will lead to high remanence ([0050]).
Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the present invention was made, to have Asada’s teaching of the filling factor and orientation ratio to provide a sufficient remanence in the bonded magnet as required by the intended application.
Regarding claim 13, all the discussions above claim 12 are applicable for claim 13, in addition, Asada discloses the magnetic powder is a SmFeN-based magnetic powder (the magnetic powder is a SmFeN magnetic powder because of its heat resistance and absence of rare metals [0014]).
Regarding claim 14, all the discussions above claim 12 are applicable for claim 14, in addition, Asada discloses an average particle size of the magnetic powder is 10 μm or less ([0016]).
Asada’s average particle size of the magnetic powder is incorporated within a range as recited in the instant claim.
Regarding claim 16, all the discussions above claim 12 are applicable for claim 16, in addition, Asada discloses an intrinsic coercive force of the bonded magnet is more preferably 1150 kA/m or more and a coercive force of less than 1020 kA/m tends to lead to demagnetization during use in applications such as high-power motors ([0049]).
Asada’s intrinsic coercive force of the bonded magnet is overlapping with a range as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have intrinsic coercive force of the bonded magnet, selected from Asada’s teaching, because “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)” [See MPEP § 2144.05.I].
Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the present invention was made, to have Asada’s teaching of the remanence and intrinsic coercive force of the bonded magnet to have a bonded magnet with sufficient remanence to avoid insufficient torque and with higher coercivity to avoid demagnetization during intended application such as high-power motor.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Takashi Asada et.al. [US20200211742A1] (Asada hereafter) as applied to claim 12, and in view of Suda Sohichiro, et.al. [WO2020217476A1] (Machine translation) (Sohichiro hereafter).
Regarding claim 15, all the discussions above claim 12 are applicable for claim 15, in addition, Asada discloses the average particle size is defined as the particle size corresponding to the 50th percentile by volume (D50) from the smallest particle size in a particle size distribution ([0016]).
But Asada is silent about D90/D10 in a particle size distribution of the magnetic powder is 4 or less.
However, Sohichiro teaches compounds containing metal powder and resin compositions are used as raw materials for a variety of industrial products depending on the physical properties of the metal powder, for example, the compound is used as a raw material for bonded magnets, and the like ([Section 0002]).
Sohichiro then teaches a median diameter (D50) of the first metal powder is 1.0 μm or more and 5.0 μm or less and such fine metal powder having this D50, the filling rate of the metal filler in the compound tends to be high. The D10 of the first metal powder is 1.08 μm or more and 1.2 μm or less. The D90 of the first metal powder is 3.88 μm or more and 4.43 μm or less. When the D10 or D90 of the first metal powder is within the above range, the filling rate of the metal filler in the compound tends to be high ([Section 0028]). Sohichiro’s metal powder is magnetic powder, and a metal magnet made of an SmFeN based alloy (rare earth magnet) ([Section 0038]).
With these above teachings of Sohichiro, for a minimum value of D10 = 1.08 μm, and D90 = 3.88 μm, one of ordinary skill in the art would have a calculated value of D90/D10 in a particle size distribution of the magnetic powder is (3.88/1.08) 3.59 and for a maximum value of D10 = 1.2 μm, and D90 = 4.43 μm, one of ordinary skill in the art would have a calculated value of D90/D10 in a particle size distribution of the magnetic powder is (4.43/1.2) 3.69.
Therefore, a calculated D90/D10 in a particle size distribution of the magnetic powder from Sohichiro’s teachings is incorporated within the as recited range of the instant claim.
Sohichiro’s teaching is analogous to the instant claim as well as Asada as Sohichiro is also in the same field of producing a bonded magnet from magnetic particle, specially Sohichiro’s particle size is within the as recited range in the claimed invention and within the same range as disclosed by Asada.
Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the present invention, to have Sohichiro’s teaching of the particle size distribution to modify Yoshida to produce a magnetic powder containing resin composition with higher filling rate of the metal filler in the bonded magnet.
Response to Arguments
Applicant's arguments filed 05/26/2026 have been fully considered but they are not persuasive.
In response to Applicant’s argument, “compared with Asada the amended claim 12 differs as the process of claim 1 is different than the process of Asada” does not mees persuasive, because, Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Applicant did not show how the claim 12 differs from the prior art, rather applicant’s argument is about the limitations of claim 1, whereas, claim 1 is withdrawn non-elected claim and is different inventions, as shown in the Requirement for the Restriction, dated 12/29/2025.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the compression punch has a contact surface with the magnetic powder that is not perpendicular to a compression direction) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993), in this case, claim is directed to a bonded magnet, a magnetic powder, a cured thermosetting resin, magnetic filling factor, magnetic orientation ration and a remanence value, and prior art, Asada teaches a bonded magnet, a magnetic powder, a cured thermosetting resin, magnetic filling factor, and overlapping magnetic orientation ratio and overlapping remanence value as claimed.
In response to applicant's argument that “Asada, which had the magnetic orientation ratio of 87% at most and the remanence of 0.87 T at most” also does not seem persuasive, because,
Applicant did not cite which part of the references teaches “the magnetic orientation ratio of 87% at most and the remanence of 0.87 T at most”, nowhere in the reference Asada teaches or limiting the values of the remanence of 0.87 T at most and the magnetic orientation ratio of 87% at most 0.87 T at most,
Asada teaches an example value of the remanence of 0.87 T and an example of magnetic orientation ratio of 87% in an Example 8, however, this is a preferred example, “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP 2123 [R-5])”. In this case, Asada teaches a magnetic orientation ratio of 80% or more ([0051]) and a remanence of the bonded magnet is more preferably 0.8 Tor more ([0050]), both are overlapping with the ranges as recited in the instant claim, therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected and produced a bonded magnet with a values of filling factor, magnetic orientation ratio and remanence from Asada’s teaching, because “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)” [See MPEP § 2144.05.I]. In addition, Asada discloses the same utility throughout the disclosed ranges, as well as Asada teaches that higher filling rate and magnetic orientation is required to have higher remanence value, therefore, Asada also teaches sufficient motivation to one of ordinary skill in the art,
Therefore, the previously cited rejection of 35 USC § 103 has been maintained and enclosed with this Office Action, and has been re-written due to the amendment of the claims [ Please see the 35 USC § 103 section].
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NAZMUN NAHAR SHAMS whose telephone number is (571)272-5421. The examiner can normally be reached M-F 11:00 AM-7:00PM (EST).
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/NAZMUN NAHAR SHAMS/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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