CTNF 18/548,394 CTNF 84135 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Priority 02-26 AIA Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Claim Rejections - 35 USC § 103 07-21-aia AIA Claim s 1-5 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kaneko (JP 2005-191426) as evidenced by Saito et al. ( Scripta Mater. 2005 , Vol. 53, pgs. 1117-1121) . With regard to claims 1, 4, 5 and 9, Kaneko teaches a resin composition for a rare-earth bonded magnet, which reads on applicants’ composition, and a bonded magnet, which reads on applicants’ cured product [0022] and [0141]. The composition can comprise a rare earth-iron-based magnet powder, which reads on applicants’ powdery magnetostrictive materials as it is a ferromagnetic material and will intrinsically have magnetostrictive properties, and a resin binder [0022] and [0025]. The resin binder may be a thermosetting urethane acrylate, which reads on applicants’ compound having a polymerizable group and a polymerizable unsaturated bond [0085] and [0086]. Also, an organic peroxide may be included for the thermosetting resin, which reads on applicants’ radical polymerization initiator [0104]. The peroxide can be included at 0.05 to 10 parts by weight relative to 100 parts of the thermosetting resin [0105]; however, Kaneko does not specifically teach a composition having all these materials. 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 a peroxide curing agent in one composition as this is explicitly suggested in the reference. There would have been a reasonable expectation of success in working a proper curable composition; further, the rationale to including a curing agent is so that the composition fully cures upon heating. With regard to claim 2, the magnetic powder may have a particle size of 1 to 50 microns, which overlaps with the range claimed [0130]; hence, a prima facie case of obviousness exists. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff , 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). With regard to claim 3, the binder can be 7.5 to 11 wt% and the magnetic powder can be 89 to 92.5 wt% [0141]. The magnetic powder can be Sm 2 Fe 17 N 3 [0143]. As evidenced by Saito et al., the SmFeN magnetic powder has a density of 7.67 g/cm 3 (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 resin binder would be 7.5 to 11 and the relative volume of magnetic particles would be about 11.6 to 12.06. This would teach a volume percentage of the magnetic powder from about 61.7% (= 12.06/(12.06+7.5)) to about 51.3 % (= 11.6/(11.6+11)). This means the volume percentage of magnetic powder overlaps with the range claimed; hence, a prima facie case of obviousness exists to make the volume of magnetic particles be from 51.3 to 60 volume % as 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 . 07-21-aia AIA Claim s 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, 4, 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]. Also, a curing agent such as an organic peroxide may be included for the thermosetting resin, which reads on applicants’ radical polymerization initiator [0046]. The peroxide can be included at 0.01 to 5% by weight based on the resin, which would be equivalent to 0.01 to 5 parts by weight relative to 100 parts of the resin [0048]; however, Hayashi et al. do not specifically teach a composition having all these materials. 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 a peroxide curing agent in one composition as this is explicitly suggested in the reference. There would have been a reasonable expectation of success in working a proper curable composition; further, the rationale to including a curing agent is so that the composition fully cures upon heating. 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 3, 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/cm 3 (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)). Even if one adds in the peroxide component to the largest extant disclosed in the reference, this means the volume percentage of magnetic powder would be approximately 50.8% (= 13/25.6, assuming 5% of peroxide relative to the unsaturated resin was included). 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 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 12-151-08 AIA 07-43 12-51-08 Claim s 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. 13-03-01 AIA 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 . Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /Gerard Higgins/Primary Examiner, Art Unit 1785 Application/Control Number: 18/548,394 Page 2 Art Unit: 1785 Application/Control Number: 18/548,394 Page 3 Art Unit: 1785 Application/Control Number: 18/548,394 Page 4 Art Unit: 1785 Application/Control Number: 18/548,394 Page 5 Art Unit: 1785 Application/Control Number: 18/548,394 Page 6 Art Unit: 1785 Application/Control Number: 18/548,394 Page 7 Art Unit: 1785 Application/Control Number: 18/548,394 Page 8 Art Unit: 1785