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, claims 1-4 and 10 in the reply filed on 6/3/2026 is acknowledged. The traversal is on the grounds that the groups are closely related so that searching and examining all claims does not present a serious burden. This is not found persuasive because as noted in the restriction requirement the various groups would require different searches, i.e., product searches are different than method searches as well as the differences in the products would require different key word and classification searches.
The requirement is still deemed proper and is therefore made FINAL.
Claims 5-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 6/3/2026.
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.
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.
Regarding claim 1 lines 7-8, the phrase "such as" 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).
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 “an M compound selected from one, two, or more compounds M-R and M-T-R”, and the claim also recites “preferably the M is selected from one or more of Cu, Ga, Al, Zr, Ti, Sn, Ta, and Mn” which is the narrower statement of the range/limitation. The claim is 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.
The following claims also recite broader and narrower ranges:
Claim 2, line 5: “preferably, the grain boundary”
Claim 2, line 10: “more preferably, the enrichment”
Claim 3, lines 6, 8, 10, 13, and 16 all recite “preferably” followed by a narrower range
Claim 4, line 5: “preferably, a region A”
Claim 4, line 7: “more preferably not”
Claim 10, line 3: “preferably use”
Claim 1 recites the limitation “wherein the another metal element can be selected from” in lines 10-11. It is unclear whether “can be” is optional language and whether or not the limitation following is required. For the sake of compact prosecution, the Examiner is interpreting “can be” to be optional. Clarification is required.
Regarding claim 1, lines 12-13, the phrase "for example" 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).
Claim 2 also recites “for example” in line 3 and is similarity indefinite.
Claim 3 also recites “for example” in lines 8, 10, and 13 and is similarity indefinite.
Claim 4 recites the limitation “the heavy rare earth element can be selected from” in line 3. It is unclear whether “can be” is optional language and whether or not the limitation following is required. For the sake of compact prosecution, the Examiner is interpreting “can be” to be optional. Clarification is required.
Regarding dependent claims 2-4, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
Claim 10 recites the limitation of “fields of” in line 1. It is unclear whether one field would satisfy the requirement or if more than one field needs to be used. For the sake of compact prosecution, the Examiner is interpreting “fields” to mean one or more. Clarification is required.
Claim 10 recites the limitation “and the like” in line 3. It is unclear what “and the like” all encompasses. Clarification is required.
Claim Rejections - 35 USC § 102
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 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 1-4 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakajima (US 2011/0260565 A1, hereinafter “Nakajima”).
Regarding claims 1, 2, 3, and 4, Nakajima teaches an alloy material for an R-T-B based rare earth permanent magnet and a motor using the same (Nakajima, [0001]).
Present Invention
Nakajima
Nakajima permanent magnet
Claim 1: R: Nd or NdPr
Claim 3: 28.5-32.5 mass%
R: at least one selected from Nd, Pr, Dy, and Tb [0022]
R: 27-33 mass%
Preferred: 30-32 mass% [0023]
Claim 1: T: Fe or mixture of Fe and another metal
Claim 3: balance
T: a transition metal with essentially contains Fe [0022] and [0027]
T and impurities: balance
Claim 1: B
Claim 3: 0.88-1.05 mass%
B: boron [0022]
B: 0.85-1.3 mass%
Preferred: 0.87-0.98 mass% [0023]
Claim 1: M: transition metal, non-metal, and light rare earth element
Claim 3: 0.1-4.0 mass%
A high melting point compound including an oxide, boride, carbide, nitride or silicide of any one selected from Al, Ga, Mg, Nb, Si, Ti, and Zr [0016]
High melting point compound: 0.002-2.0 mass%
Preferred: 0.1-0.7 mass% [0038]
Claim 4: heavy rare earth
R includes Dy and Tb [0022]
Dy/Tb: 4-10 mass% [0022]
The R-T-B permanent magnet of Nakajima corresponds to an R-T-B based permanent magnet material, wherein the R is selected from one or two of neodymium (Nd) and praseodymium (Pr); the T comprises at least iron (Fe); the B is boron of claim 1.
The high melting point compound of Nakajima corresponds to the permanent magnet material further comprises M, wherein the M is selected from one or more of transition metal elements, non-metal elements, and light rare earth elements and preferably, the M is preferably selected from one or more of Cu, Ga, Al, Zr, Ti, Sn, Ta, and Mn, such as one or more of Cu, Ga, and Al of claim 1.
Nakajima also teaches the examples in Table 1, which include Nd and Pr and corresponds to the R is selected from Nd and NdPr of claim 1. The essentially iron T of Nakajima corresponds to the T is selected from iron and a mixture of iron and another metal element, wherein the another metal element can be selected from one or more of transition metal elements other than iron; for example, the another metal element can be selected from one or more of copper (Cu), gallium (Ga), aluminum (Al), zirconium (Zr), titanium (Ti), tin (Sn), tantalum (Ta), and manganese (Mn) of claim 1.
Nakajima also teaches the permanent magnet is formed by mixing an R-T-B based alloy and a high melting point compound, then molding and sintering, where the high melting point compound reacts with the rare earth element at the grain boundary (Nakajima, [0015]).
Given the composition and method of making the permanent magnet of Nakajima are substantially identical to the composition and method of making the permanent magnet as used in the present invention, as set forth above, it is clear that the a grain boundary of the permanent magnet material would inherently comprise an M compound selected from one, two, or more of compounds M-R and M-T-R as presently claimed (claims 1 and 2).
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).
The preferred ranges of the R-T-B permanent magnet of Nakajima fall within the ranges of claim 3. The inclusion of Dy and/or Tb in the permanent magnet of Nakajima corresponds to comprising a heavy rare earth element; wherein the heavy rare earth element can be selected from one or more of gadolinium, terbium, dysprosium, holmium, erbium, thulium, ytterbium, lutetium, and yttrium of claim 4.
Regarding claim 10, Nakajima teaches an alloy material for an R-T-B based rare earth permanent magnet and a motor using the same (Nakajima, [0001]), which corresponds to Use of the R-T-B based permanent magnet material according to claim 1 in the fields of motors, loudspeakers, magnetic separators, computer disk drives, magnetic resonance imaging devices, and the like of claim 10.
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
Prosecution Insights