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 without traverse of Group II in the reply filed on 05/31/2026 is acknowledged.
Claims 7-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/31/2026.
Status of Claims
Pending and under examination: 2-3 and 5-10
Cancelled: claims 1 and 4
Withdrawn: claims 7-10
Amended: claims 2, 5, and 7
Rejected: claims 2-3 and 5-6
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 2-3 and 5-6 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 2, With regard to the claimed “…the neodymium iron boron magnet is obtained by preparing a raw material comprising a waste neodymium iron boron magnet, a first alloy and a second alloy” limitations describing mixing a first alloy and a second alloy and a raw material comprising a waste NdFeB magnet, the examiner notes that the relative proportions of each of the three components are not specified. Although a broad claim is not indefinite merely because it encompasses a wide scope of subject matter provided the scope is clearly defined, a claim is indefinite when the boundaries of the protected subject matter are not clearly delineated and the scope is unclear. (MPEP § 2173.04). In the instant case, the boundaries of the protected subject matter are not clearly delineated because the product as claimed is a product made by a process of mixing three different components, two components of which have specified compositions, the third of which has an unspecified composition, and all three of which are mixed together in unspecified quantities, which renders the metes and bounds of the claim unclear. In other words, the final composition depends on unspecified quantities of the intermediate compositions and the unspecified compositions are compounded (i.e., unspecified raw material composition compounded with an unspecified quantity of said raw material), which extends the scope of the claim to encompass a virtually infinite range of compositions so long as they include some amounts of Nd, Fe, and B.
In the interest of clarity of the record and compact prosecution, the claim will be interpreted such that the composition is broad to the extent that BRI reasonably encompasses having infinitesimally small amounts of all but one component of the composition, such as the “second alloy” being the majority (e,g., 99.9%+) of the composition.
Claim 3 recites “the formulation comprises ingredient formulation and/or performance formulation”, which is unclear to the extent that it is indefinite.
Claims 3 and 5-6 are rejected as requiring all of the limitations of claim 2.
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 2-3 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (CN112331474A: Espacenet English machine translation cited and attached).
Regarding claim 2, Liu teaches an NdFeB alloy (Abstract) having the following composition: the NdFeB magnetic powder formula is as follows:
Nd30～31Fe66.39-67.39 Cu0.15Co1Ga0.3Zr0.2B0.96, the proportions are in wt.% (claim 1 of Liu, [0030]).
Because the alloy during preparation is subjected to hydrogen crushing, it is prima facie expected that there would be a residual amount of hydrogen in the final product, meeting the claimed hydrogen range.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.).
With regard to the claimed “obtained by…” limitations describing mixing a first alloy and a second alloy and a waste NdFeB magnet, the examiner notes that the relative proportions are not specified; therefore, the composition is broad to the extent that BRI reasonably encompasses having infinitesimally small amounts of all but one component of the composition. In the interest of clarity of the record and compact prosecution, and for the purposes of examination, the claim will be interpreted such that the “second alloy” can be the majority of, or the primary basis (e,g., 99%+) of the composition despite there being a virtually infinite range of compositions (see § 112(b) rejection above). As such, the above composition (in claim 1, and [0030] of Liu) meets the claim. It is noted that the claim is directed to a product and even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (MPEP 2113).
Regarding claims 3 and 5-6, as discussed in the rejection of claim 2 above, with regard to the claimed “…obtained by” limitations describing mixing a first alloy and a second alloy and a waste NdFeB magnet, the examiner notes that the relative proportions are not specified; therefore, the composition is broad to the extent that BRI reasonably encompasses having infinitesimally small amounts of all but one component of the composition. In the interest of clarity of the record and compact prosecution, the claim will be interpreted such that the “second alloy” is the majority (e,g., 99.9%+) of the composition. As such, the above composition (in claim 1, and [0030] of Liu) meets the claim.
It is noted that the claim is directed to a product and even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (MPEP 2113). Therefore, with regard to the limitations in claims 3 and 5-6, absent a clear and specific indication of what properties of the first and second alloy and raw material components are necessarily present in the final product made from the first alloy, the second alloy, and the raw material comprising a waste neodymium iron boron magnet via the claimed product-by-process limitations, Liu’s composition meets the claim. Further regarding claim 6, Liu teaches that 1% of TbH is added [0016], meeting the claimed heavy rare earth element amount. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adil Siddiqui whose telephone number is (571)272-8047. The examiner can normally be reached M-F 10AM-6PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADIL A. SIDDIQUI/Primary Examiner, Art Unit 1735
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