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 without traverse of claims 1-4 in the reply filed on 5/04/2026 is acknowledged.
Claims 5-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/04/2026.
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.
Claim(s) 1, 2 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0276917 A1 to Iwasaki.
Regarding claim 1, Iwasaki discloses an R-T-B-based rare earth magnet in which R is a rare earth element, T is at least either Fe or Co, and B is boron, the R-T-B-based rare earth magnet comprising a main phase having an R2T14B-type crystal structure and a grain boundary phase present around the main phase, wherein the average grain size of the main phase is from 1 to 30 µm, overlapping the instantly claimed range of 1.0 to 10.0 μm, the main phase has a core portion and a shell portion present around the core portion, , the total content ratio of heavy rare earths including gadolinium, terbium, dysprosium and holmium is higher in the shell portion than in the core portion, the R-T-B-based rare earth magnet contains from 400 to 3000 ppm carbon, overlapping the instantly claimed range of 0.05 to 0.50 at % of carbon, and the content ratio of the carbon is higher in the grain boundary phase than in the main phase.
(Iwasaki, abstract, para [0029-0047]).
Regarding the limitation “the total content ratio of cerium, lanthanum, yttrium and scandium is higher in the core portion than in the shell portion,” the content of heavy rare earth elements in the shell of Iwasaki is increased by diffusing heavy rare earth elements into the shell (Iwasaki, para [0047]). Diffusing heavy rare earth elements into the shell would decrease the content ratio of elements other than heavy rare earths, including light rare earth elements including cerium, lanthanum, in the shell relative to the core.
Regarding the overlapping average grain size of the main phase and overlapping carbon content, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Iwasaki including the instantly claimed because a prima facie case of obviousness exists in the case of overlapping ranges.
Regarding claim 3, the B content of Iwasaki is 0.7 mass% or more and 1.5 mass% or less and the C content is 400 ppm to 3000 ppm (Iwasaki, para [0038,0043]), which appears to overlap the instantly claimed range of 0.25 to 0.75 at%. Regarding the limitation “[C]/([C]+[B]) is from 0.04 to 0.10, the instantly claimed equaiton fully depends on the composition of the alloy. It is well settled that 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. In the instant case, as the magnet of Iwasaki is capable of falling within the boundaries of the instantly claimed composition formulas, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected any portion of the disclosed ranges of each element of Iwasaki including those which fall within the boundaries of the instantly claimed composition based formulas because Iwasaki discloses the same utility throughout the disclosed ranges.
Regarding claim 4, wherein the average grain size of the main phase of Iwasaki is from 1 to 30 µm (Iwasaki, para [0030]), overlapping the instantly claimed range of 1.0 to 10.0 μm.
Allowable Subject Matter
Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Instant claim 2 is directed to a R-T-B-based rare earth magnet as set forth in the instant claims. The closest prior art of record is US 2019/0276917 A1 to Iwasaki as set forth in the above 35 USC 103 rejection. Iwasaki discloses an alloy as set forth above. Iwasaki differs from instant claim 2 at least in that Iwasaki does not disclose or suggest that the carbon content ratio is higher in the shell portion than in the core portion.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2019/0304640 A1 discloses an R-T-B based magnet similar in scope to US 2019/0276917 A1. US 2014/0283649 A1 to Kuneida discloses an R-T-B based magnet with core/shell structure with a higher concentration of heavy earth elements in the shell and a higher concentration of light earth elements in the core.
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/BRIAN D WALCK/ Primary Examiner, Art Unit 1738
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