DETAILED ACTION
Response to Amendment
Applicant's amendment filed 6/10/2026 has been entered. Currently, claims 1-9 are pending.
Claim Rejections - 35 USC § 103
Claims 1-6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al. (JP 2003-086410), machine translation included, as evidenced by Saito et al. (Scripta Mater. 2005, Vol. 53, pgs. 1117-1121).
With regard to claims 1, 3-5 and 9, Hayashi et al. teach a composition for a resin-bonded magnet and a resin-bonded magnet, which reads on applicants’ composition and cured product [0001]. The composition can comprise ferrite powder, such as alnico, or a rare earth-iron-nitrogen powder, which reads on applicants’ powdery magnetostrictive materials as it is a ferromagnetic material and will intrinsically have magnetostrictive properties [0023] and [0024]. A resin binder that may be a curing reaction thermosetting silicone rubber, which reads on applicants’ compound having a polymerizable group, wherein the silicone rubber may polymerize via addition polymerization and may have vinyl groups on side chains, which reads on a polymerizable unsaturated bond [0025] and [0026]. Azobisisobutyronirile may be used in combination as the curing agent that is included in the thermosetting resin, which reads on applicants’ azo-based polymerization initiator [0048]; however, Hayashi et al. do not specifically teach a composition having all these materials with the volume ratio claimed.
It would have been obvious to one having ordinary skill in the art to have combined the magnetic powder, the curable thermosetting silicone rubber and azobisisobutyronirile curing agent in one composition as this is suggested in the reference. There would have been a reasonable expectation of success in forming a proper curable composition; further, the rationale to including a curing agent is so that the composition fully cures upon heating.
It would also have been obvious to have added the azobisisobutyronirile curing agent in a minor amount to the composition, such as the same amount that the peroxide is added, i.e. 5% or less by weight relative to the resin. One of ordinary skill would know to add curing agents in the amount needed to facilitate the reaction, while not so large as to waste materials.
Also, in Example 1, the amount of silicone rubber can be 12 parts and the SmFeN magnetic powder acquired from Sumitomo can be 100 parts [0059] and [0070]. As evidenced by Saito et al., a SmFeN magnetic powder acquired from Sumitomo has a density of 7.67 g/cm3 (pg. 1120). Using the same calculation method as applicants have at [0075] in their specification for volume percentage, this would mean the relative volume of silicone rubber would be 12 and the magnetic particles would be about 13. This means the volume percentage of the magnetic powder is about 52% in this example (= 13/(13+12)). The volume ratio of magnetic powder to silicone rubber is 52:48 and since the amount of azobisisobutyronirile would be added is 5% or less based on the resin and the density of azobisisobutyronirile is 1.11 g/m2, this means the volume ratio of magnetic powder/(silicone rubber + azobisisobutyronirile) will still be within the range claimed and the volume percentage of magnetic powder relative to the total or P+M+R would still be in the range claimed.
Since this composition is formed from the same materials as claimed and preferentially disclosed in approximately the same volume percentage as Example 3 of the specification, it will intrinsically have negative magnetostrictive properties as claimed.
With regard to claim 2, Hayashi et al. teach that the magnetic powder #1 has 99% of particles having a particle size less than 100 microns [0059]; however, they do not specifically teach the average particle size claimed.
It would have been obvious to have made the average particle size of the SmFeN powder of Hayashi et al. any amount less than 100 microns as suggested in the prior art, including making it from 5 to 50 microns as claimed. One of ordinary skill would have wanted the particles to be large enough to have desired magnetic strength while not being so large that they did not disperse well in the resin binder.
With regard to claim 6, the curing reaction thermosetting silicone rubber reads on applicants’ thermosetting elastomer as being a rubber means it is elastomeric [0025]; furthermore, as the resin is described as a rubber, the presumption is that the resin is a rubber at room temperature; hence, the glass transition temperature between the glassy and rubbery state will necessarily be lower than room temperature; however, Hayashi et al. do not specifically teach the glass transition temperature claimed.
It would have been obvious to one having ordinary skill in the art to have made the glass transition temperature amount less than room temperature, including making it from -130 C to -5 C as claimed. One of ordinary skill would have made it low enough that the resin was in the rubbery state for the desired operating temperatures of the magnet, while not being so low that the operating temperature of the magnet would end too quickly at temperatures above room temperature.
Potential Allowable Subject Matter
Claims 7 and 8 are 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:
The prior art does not teach or suggest the combination of the features of a powdery magnetostrictive material, a radical polymerization initiator and a compound having a polymerizable group that is a urethane (meth)acrylate thermosetting elastomer having a glass transition temperature in the temperature range claimed.
The closest prior art is Hayashi et al.; however, they do not teach or suggest using a urethane (meth)acrylate thermosetting elastomer having a glass transition temperature in the range claimed. There would have been no rationale, save improper hindsight, to have made the resin binder of Hayashi et al. a completely different material with the glass transition temperature claimed.
Response to Arguments
Applicant’s arguments, see Remarks, filed 6/10/2026, with respect to the prior art rejection based on Kaneko have been fully considered and are persuasive. The relevant rejection has been withdrawn.
Applicant's arguments filed 6/10/2026 have been fully considered but they are not persuasive.
Applicants argue that Hayashi et al. do not teach an azo-based polymerization initiator.
The Examiner respectfully disagrees and notes that Hayashi et al. teach azobisisobutyronirile, which reads on applicants’ azo-based polymerization initiator at [0048]. It would have been obvious to one having ordinary skill to have added azobisisobutyronirile curing agent at a small amount relative to the resin to properly cure the resin. One of ordinary skill would know to add curing agents in the amount needed to facilitate the reaction, while not so large as to waste materials. The resultant composition would read on the volume ratio and volume percentages claimed for the reasons set forth above.
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.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
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