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 .
Response to Arguments
The claim objection is withdrawn in view of Applicant’s amendment to claim 8.
The 35 U.S.C. 112 rejections are withdrawn in view of Applicant’s amendments to the claims.
Applicant’s arguments filed 8/27/2025 with respect to the 35 U.S.C. 102 rejection over Ishida et al. (US 2010/0156579) have been fully considered but are not persuasive. Applicant argues Ishida teaches the inclusion of an element such as In, Sn, or Sb which has “been observed to result in alloy brittleness” in contradiction to the claimed invention. However, nowhere in the specification is it recognized that the inclusion of elements such as In, Sn, or Sb would result in alloy brittleness or otherwise materially affect the basic and novel characteristics of the claimed invention. In addition, Attorney argument is not evidence and Applicant has not provided any evidence in support of this argument. See MPEP 2145 I. Accordingly, with respect to the additional elements required by Ishida, “consisting essentially of” is interpreted to be equivalent to “comprising”. See MPEP 2111.03 III. The rejection is therefore maintained.
Applicant’s arguments filed 8/27/2025 with respect to the 35 U.S.C. 102 rejection over Elerman (WO 2012/098017) have been fully considered but are not persuasive. Applicant argues Elerman teaches the inclusion of Ge in contradiction to the claimed invention. However, nowhere in the specification is it recognized that the inclusion of Ge would materially affect the basic and novel characteristics of the claimed invention. In addition, Attorney argument is not evidence and Applicant has not provided any evidence in support of this argument. See MPEP 2145 I. Accordingly, with respect to the additional element required by Elerman, “consisting essentially of” is interpreted to be equivalent to “comprising”. See MPEP 2111.03 III. The rejection is therefore maintained.
Applicant’s arguments filed 8/27/2025 with respect to the 35 U.S.C. 103 rejection over Liu et al. (US 2016/0256923) in view of Vieyra et al. (US 2016/0354841) have been fully considered but are not persuasive. Applicant argues Vieyra teaches the inclusion of Si or Al in contradiction to the claimed invention. However, nowhere in the specification is it recognized that the inclusion of Si or Al would materially affect the basic and novel characteristics of the claimed invention. In addition, Attorney argument is not evidence and Applicant has not provided any evidence in support of this argument. See MPEP 2145 I. Accordingly, with respect to the alleged additional element required by Vieyra, “consisting essentially of” is interpreted to be equivalent to “comprising”. See MPEP 2111.03 III. Furthermore, Applicant has not explained how Si or Al is required for the inclusion of Fe to achieve its desired effect of reducing the Curie temperature as suggested by Vieyra. The rejection is therefore maintained.
Applicant’s arguments filed 8/27/2025 with respect to the 35 U.S.C. 103 rejection over Liu et al. (US 2016/0256923) in view of Park et al. (KR 101741926) have been fully considered but are not persuasive. Applicant argues Park teaches the inclusion of Sn in contradiction to the claimed invention. However, nowhere in the specification is it recognized that the inclusion of Sn would materially affect the basic and novel characteristics of the claimed invention. In addition, Attorney argument is not evidence and Applicant has not provided any evidence in support of this argument. See MPEP 2145 I. Accordingly, with respect to the alleged additional element required by Park, “consisting essentially of” is interpreted to be equivalent to “comprising”. See MPEP 2111.03 III. Furthermore, Applicant has not exjplained how Sn is required for the inclusion of Ni to achieve its desired effect of controlling the operating temperature of the reverse magnetizing effect and thus decreasing the phase change temperature as suggested by Park. The rejection is therefore maintained.
Applicant’s arguments filed 8/27/2025 with respect to the 35 U.S.C. 103 rejection over Liu et al. (US 2016/0256923) in view of Kikkawa et al. (US 2018/0043435) have been fully considered but are not persuasive. Applicant argues Kikkawa teaches the inclusion of La and Si in contradiction to the claimed invention. However, nowhere in the specification is it recognized that the inclusion of La or Si would materially affect the basic and novel characteristics of the claimed invention. In addition, Attorney argument is not evidence and Applicant has not provided any evidence in support of this argument. See MPEP 2145 I. Accordingly, with respect to the alleged additional element required by Kikkawa, “consisting essentially of” is interpreted to be equivalent to “comprising”. See MPEP 2111.03 III. Furthermore, Applicant has not explained how La or Si is required for the inclusion of Zn to achieve its desired effect of inhibiting α-Fe phase, controlling the Curie temperature, and improving durability, as suggested by Kikkawa. The rejection is therefore maintained.
Applicant’s arguments filed 8/27/2025 with respect to the 35 U.S.C. 103 rejection over Liu et al. (US 2016/0256923) in view of Sakurada et al. (US 2007/0241305) have been fully considered but are not persuasive. Applicant argues Sakurada teaches the inclusion of REM in contradiction to the claimed invention. However, nowhere in the specification is it recognized that the inclusion of REM would materially affect the basic and novel characteristics of the claimed invention. In addition, Attorney argument is not evidence and Applicant has not provided any evidence in support of this argument. See MPEP 2145 I. Accordingly, with respect to the alleged additional element required by Sakurada, “consisting essentially of” is interpreted to be equivalent to “comprising”. See MPEP 2111.03 III. Furthermore, Applicant has not explained how REM is required for the inclusion of Mo to achieve its desired effect of lowering magnetic anisotropy or controlling the Curie temperature, as suggested by Sakurada. The rejection is therefore maintained.
Applicant’s arguments filed 8/27/2025 with respect to the 35 U.S.C. 103 rejection over Liu et al. (US 2016/0256923) in view of Li et al. (CN 105695802) have been fully considered but are not persuasive. Applicant argues Li teaches the inclusion of B in contradiction to the claimed invention. However, nowhere in the specification is it recognized that the inclusion of B would materially affect the basic and novel characteristics of the claimed invention. In addition, Attorney argument is not evidence and Applicant has not provided any evidence in support of this argument. See MPEP 2145 I. Accordingly, with respect to the alleged additional element required by Sakurada, “consisting essentially of” is interpreted to be equivalent to “comprising”. See MPEP 2111.03 III. Furthermore, Applicant has not explained how B is required for the inclusion of Nb to achieve its desired effect of modifying properties such as compressive strength, deformation, permeability, phase transition temperature, etc, as suggested by Li. The rejection is therefore maintained.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 8 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Ishida et al. (US 2010/0156579).
Regarding claim 8, Ishida discloses a ferromagnetic shape memory alloy which has a magnetocaloric effect (¶ 9). The alloy composition includes Mn, Co and/or Fe, Ti, and Ni (¶ 16).
Claim 8 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Elerman (WO 2012/098017).
Regarding claim 8, Elemen teaches an alloy having a magnetocaloric phase (¶ 3). The alloy composition includes Co, Mn, and one or more of elements such as Ti, Fe, Ni, Cu, Zn, Zr, Nb, Mo (¶¶ 24-27).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Ishida et al. (US 2010/0156579), as applied to claim 8.
Regarding claim 32, the limitations of claim 8 have been addressed above. The alloy of Ishida comprises 25%-50% at. Mn (¶ 16), with 0.1%-15% at. Fe (¶ 16). This overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Claims 30-33 are rejected under 35 U.S.C. 103 as being unpatentable over Elerman (WO 2012/098017), as applied to claim 8.
The limitations of claim 8 have been addressed above.
Regarding claim 30, based on the fractions taught by Elerman, the alloy composition includes Fe, Cu, Zn, and Ni (i.e., D and E in the formula) in an amount up to about 18.4% at. (¶¶ 24-30), resulting in an alloy composition whose ranges overlap those claimed, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 31, based on the fractions taught by Elerman, Co is present in the alloy composition in an amount up to about 31% at., and Fe is present in an amount up to about 18.4% at. (¶¶ 24-30). This overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 32, based on the fractions taught by Elerman, Mn is present in the alloy composition in an amount up to about 31% at., and Fe, Cr and Mo are present in an amount up to about 18.4% at. (¶¶ 24-30). This overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 33, based on the fractions taught by Elerman, the alloy composition includes V, Zr, and Nb (i.e., D and E in the formula) in an amount up to about 18.4% at. (¶¶ 24-30). This overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Claims 8-10, 15, 30-32 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (US 2016/0256923) in view of Vieyra Villegas et al. (US 2016/0354841) (hereinafter “Vieyra”).
Regarding claim 8, Liu teaches a Ni-Mn-Co-Ti magnetocaloric material (¶ 22). The material comprises 28%-57% at. Ni, 13%-37% at. Mn, 5%-16% at. Co, and 8%-26% at. Ti (¶¶ 9-13). Liu does not expressly teach an alloying addition of at least one of Fe, Cr, V, Sc, Zr, Nb, Mo, Zn, and Cu.
Vieyra discloses a material having magnetocaloric properties (¶ 12). The material includes Fe instead of Ni or Co to reduce the Curie temperature of the material (¶ 31). Therefore, it would have been obvious at the effective time of filing for one of ordinary skill in the art to include Fe instead of Ni or Co, as taught by Vieyra, in the Ni-Mn-Co-Ti material of Liu, for the purpose of reducing the Curie temperature.
Regarding claims 9-10, 15, 30-32 and 34, including Fe in the material of Liu as taught by Vieyra results in a composition which overlaps the claimed compositions, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Claims 8, 11, 14, 16-17 and 33-34 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (US 2016/0256923) in view of Park et al. (KR 101741926).
Regarding claim 8, Liu teaches a Ni-Mn-Co-Ti magnetocaloric material (¶ 22). The material comprises 28%-57% at. Ni, 13%-37% at. Mn, 5%-16% at. Co, and 8%-26% at. Ti (¶¶ 9-13). Liu does not expressly teach an alloying addition of at least one of Fe, Cr, V, Sc, Zr, Nb, Mo, Zn, and Cu.
Park discloses a Ni-Mn material having magnetocaloric properties (¶ 1). Park teaches including a transition metal such as Ti, V, Cr, or Cu in the material in place of Ni (¶¶ 11, 22) for the purpose of controlling the operating temperature of the reverse magnetizing effect and thus decrease the phase change temperature (¶ 15). Therefore, it would have been obvious at the effective time of filing for one of ordinary skill in the art to include Ti, V, Cr, or Cu instead of Ni, as taught by Park, in the Ni-Mn-Co-Ti material of Liu, for the purpose of decreasing the phase change temperature.
Regarding claims 11, 14, 16-17, and 33-34, including Ti, V, Cr, or Cu in the material of Liu as taught by Vieyra results in a composition which overlaps the claimed compositions, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Claims 8, 12, 18, 30 and 33-34 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (US 2016/0256923) in view of Kikkawa et al. (US 2018/0043435).
Regarding claim 8, Liu teaches a Ni-Mn-Co-Ti magnetocaloric material (¶ 22). The material comprises 28%-57% at. Ni, 13%-37% at. Mn, 5%-16% at. Co, and 8%-26% at. Ti (¶¶ 9-13). Liu does not expressly teach an alloying addition of at least one of Fe, Cr, V, Sc, Zr, Nb, Mo, Zn, and Cu.
Kikkawa discloses a magnetic refrigeration material (¶ 9), which is a synonym for magnetocaloric. Kikkawa teaches including a transition metal such as Zn in the material for the purpose of inhibiting α-Fe phase, controlling the Curie temperature, and improving durability (¶ 30). Therefore, it would have been obvious at the effective time of filing for one of ordinary skill in the art to include Zn, as taught by Kikkawa, in the Ni-Mn-Co-Ti material of Liu, for the purpose of inhibiting α-Fe phase, controlling the Curie temperature, and improving durability. Kikkawa also teaches including Sc in the material for the purpose of controlling the Curie temperature and the relative cooling power (¶ 26) Therefore, it would have been obvious at the effective time of filing for one of ordinary skill in the art to include Zn, as taught by Kikkawa, in the Ni-Mn-Co-Ti material of Liu, for the purpose of controlling the Curie temperature and the relative cooling power.
Regarding claims 12, 18, 30, and 33-34, including Zn or Sc in the material of Liu as taught by Kikkawa results in a composition which overlaps the claimed compositions, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Claims 8, 15, 32 and 34 rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (US 2016/0256923) in view of Sakurada et al. (US 2007/0241305).
Regarding claim 8, Liu teaches a Ni-Mn-Co-Ti magnetocaloric material (¶ 22). The material comprises 28-57%-% at. Ni, 13%-37% at. Mn, 5%-16% at. Co, and 8%-26% at. Ti (¶¶ 9-13). Liu does not expressly teach an alloying addition of at least one of Fe, Cr, V, Sc, Zr, Nb, Mo, Zn, and Cu.
Sakurada discloses a magnetic refrigeration material (¶ 13) and has a magnetocaloric effect (¶ 19). Sakurada teaches including a transition metal such as Mo in the material (¶ 25) for the purpose of lowering magnetic anisotropy or controlling the Curie temperature (¶ 25). Therefore, it would have been obvious at the effective time of filing for one of ordinary skill in the art to include Mo, as taught by Sakurada, in the Ni-Mn-Co-Ti material of Liu, to lower magnetic anisotropy or control Curie temperature.
Regarding claims 15, 32 and 34, including Mo in the material of Liu as taught by Sakurada results in a composition which overlaps the claimed compositions, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Claims 8, 19 and 33-34 rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (US 2016/0256923) in view of Li et al. (CN 105695802).
Regarding claim 8, Liu teaches a Ni-Mn-Co-Ti magnetocaloric material (¶ 22). The material comprises 28%-57% at. Ni, 13%-37% at. Mn, 5%-16% at. Co, and 8%-26% at. Ti (¶¶ 9-13). Liu does not expressly teach an alloying addition of at least one of Fe, Cr, V, Sc, Zr, Nb, Mo, Zn, and Cu.
Li discloses a magnetic refrigeration material (p. 1, ¶ 2), which is a synonym for magnetocaloric. Li teaches including a transition metal such as Nb in the material (p. 1, ¶ 5), and varying the Nb content permits modification of properties such as compressive strength, deformation, permeability, phase transition temperature, etc. (p. 2, ¶ 5). Therefore, it would have been obvious at the effective time of filing for one of ordinary skill in the art to include Nb, as taught by Li, in the Ni-Mn-Co-Ti material of Liu, for the purpose of inhibiting α-Fe phase, controlling the Curie temperature, and improving durability. Kikkawa also teaches including Sc in the material for the purpose of optimizing properties such as compressive strength, deformation, permeability, phase transition temperature.
Regarding claims 19 and 33-34, including Nb in the material of Liu as taught by Li results in a composition which overlaps the claimed compositions, creating a prima facie case of obviousness. See MPEP 2144.05 I.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIAOBEI WANG whose telephone number is (571)270-5705. The examiner can normally be reached M-F 8AM-5PM EST.
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/XIAOBEI WANG/Primary Examiner, Art Unit 1784