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
Claims 7-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 3/3/2026.
Applicant's election with traverse of Group II in the reply filed on 3/3/2026 is acknowledged. The traversal is on the ground(s) that CN 111223627 A (CN ‘627). This is not found persuasive because does not disclose or contemplate a mass ratio or weight percentage of Ti and Nb as in Claim 1. M includes Ti and Nb and is present at 0.4 wt % or less. The composition of Ti and Nb overlap with the claimed range based on the entire disclosure.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings were received on 08/23/2023. These drawings are accepted.
Status of Claims
Claims 1-4, 6, and 8 are as originally filed, Claims 5, 7, 9, and 10 are as currently amended, and Claims 11-13 are new.
Claim Rejections - 35 USC § 112
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 1-6 and 11-13 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.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. The examiner does not contend that the following rejections will completely address issues of indefiniteness and cautions that any amendments to the claims should conform to current U.S. practice to eliminate further rejections under this statute.
Claim 1 recites “≥ 29 wt% of R, said R is a rare earth element comprising Nd, wherein the content of Nd in all components is ≥ 22 wt%” in lines 2 and 3. It is not clear if applicant intends to recite that Nd is present in the R-T-B of ≥ 22 wt%. The limitation “the content of Nd in all components” is unclear (emphasis added). For example, Claim 2 recites “the mass percentage of Pr in the total mass of all components” (emphasis added).
Regarding Claim 2, the phrase "such as" renders the claim indefinite in lines 2, 3, 6, 8, 12, 15, and 19 because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 2, the phrase "preferably" renders the claim indefinite in lines 6, 8, 11, 12, and 15 because it is unclear whether the limitations following the phrase are part of the claimed invention.
Claim 2 recites the limitation "the ratio of the atomic percentage" in line 18. There is insufficient antecedent basis for this limitation in the claim.
In Claim 2, line 18 the ratio of 0.1 or less is not clear, since a ratio comprises a comparison of at least two values, e.g. A:B.
Regarding Claim 3, the phrase "such as" in lines 3, 4, 6, and 8 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).
In Claim 3, it is unclear what “Ground” is in line 5.
Regarding Claim 3, the phrase "preferably" renders the claim indefinite in lines 5, 12, and 15 because it is unclear whether the limitations following the phrase are part of the claimed invention.
Regarding Claim 4, the phrase "such as" in lines 2, 4, 6, 7, and 11 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).
In Claim 4 line 5, the ratio of 0.38 or more is not clear, since a ratio comprises a comparison of at least two values, e.g. A:B.
Regarding Claim 4, the phrase "preferably" renders the claim indefinite in line 11 because it is unclear whether the limitations following the phrase are part of the claimed invention.
Claim 5 recites the limitation "the ratio of the area" in line 4. There is insufficient antecedent basis for this limitation in the claim.
In Claim 5 lines 4 and 5, “the ratio … 1-2%” is not clear, since a ratio comprise a comparison of two values, e.g. A:B.
In Claim 5 line 6, the ratio of “for example, 1.3% …” is not clear, since a ratio comprises a comparison of at least two values, e.g. A:B.
Regarding claim 5, 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 6 recites the limitation "the ratio of the area" in lines 6, 12, 18, 24, 30, 36, 42, 48, 54, 60, 66, 72, 78, 84, 90, 96, 102, 108, 114, 120, and 126. There is insufficient antecedent basis for this limitation in the claim.
In Claim 6, “the ratio” is not clear, since a ratio comprise a comparison of two values, e.g. A:B. See lines 6 and 7, lines 12 and 13, lines 18 and 19, lines 23 and 24, lines 30 and 31, lines 36 and 37, lines 42 and 43, lines 48 and 49, lines 54 and 55, lines 60 and 61, lines 66 and 67, lines 72 and 73, lines 78 and 79, lines 90 and 91, lines 96 and 97, lines 102 and 103, lines 108 and 107, lines 114 and 115, lines 120 and 121, lines 126 and 127.
In Claim 6, line 93, “0.5 wt %” has no element with which it is associated.
In Claim 6, line 99, “0.5 wt %” has no element with which it is associated.
Claim 11 recites the limitation "the ratio of the area" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Regarding Claim 11, 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 12 recites the limitation "the ratio of the area" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Regarding Claim 12, 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 13 recites the limitation "the ratio of the area" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Regarding Claim 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 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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over CN 111223627 A, based on the machine translation.
CN 111223627 A (CN ‘627) teaches a neodymium-iron-boron magnet with the composition represented in the table below with respect to Claims 1-4:
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The compositions in CN ‘627 are from pages 2-4 of the machine translation. CN ‘627 teaches overlapping ranges. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists because the prior art discloses the utility of the composition over the entire disclosed range. See MPEP § 2144.05.
Regarding Claim 2, CN ‘627 teaches overlapping ranges as indicated above. Regarding the ratio of RH:R, the claimed ratio is incomplete since it does not provide a complete comparison of RH and R as indicated above in the rejection under 35 U.S.C. 112(b).
Regarding Claim 3, CN ‘627 teaches overlapping ranges as indicated above.
Regarding Claim 4, CN ‘627 teaches overlapping ranges as indicated above.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over CN 111261355 A based on the machine translation.
CN 111261355 A (CN ‘355) teaches a neodymium-iron-boron magnet with the composition represented in the table below with respect to Claims 1-4:
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The compositions in CN ‘355 are from pages 2-4 of the machine translation. CN ‘355 teaches overlapping ranges. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists because the prior art discloses the utility of the composition over the entire disclosed range. See MPEP § 2144.05.
Regarding Claim 2, CN ‘355 teaches overlapping ranges as indicated above. Regarding the ratio of RH:R, the claimed ratio is incomplete since it does not provide a complete comparison of RH and R as indicated above in the rejection under 35 U.S.C. 112(b).
Regarding Claim 3, CN ‘355 teaches overlapping ranges as indicated above.
Regarding Claim 4, CN ‘355 teaches overlapping ranges as indicated above.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 6, 14, 20, and 23 of copending Application No. 17/783,283 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Application 17/783,283 teaches overlapping ranges of the components of the magnet. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists because the prior art discloses the utility of the composition over the entire disclosed range. See MPEP § 2144.05. However, one carrying out a process in accord with the claims in Application 17/783,283 would in fact read on the product that is fully within the scope of the instant claims. Thus, no patentable distinction is seen between a product as presently claimed and a product as defined in the claims in Application 17/783,283.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 5, 6, and 11-13 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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: Claims 5, 6, and 11-13 all recite a TixNb1 phase. Neither CN ‘627 nor CN ‘355 teaches or suggests a grain phase comprising TixNb1 as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tima M. McGuthry-Banks whose telephone number is (571)272-2744. The examiner can normally be reached Monday through Friday, 7:30 am to 4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith D. Hendricks can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Tima M. McGuthry-Banks
Primary Examiner
Art Unit 1733
/TIMA M. MCGUTHRY-BANKS/Primary Examiner, Art Unit 1733
Prosecution Insights