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 .
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Claim Interpretation:
Claim 6 recites “the low-temperature heat treatment is carried out at a temperature range of 750°C-830°C, and the high-temperature heat treatment is carried out a temperature range of 830°C-970°C”. Although the claim has defined what is meant by “low”-temperature and “high”-temperature, there is a slight overlap between these two ranges, specifically 830°C. Therefore, the broadest reasonable interpretation of the claim can be interpreted that a temperature of 830°C would read upon both high and low temperature.
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 6-8 and 11-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/840,292 (reference application) in view of CN 109411173. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the instant claims fully encompasses the claims of application 18/840,292 and/or obvious variant of one another with slight optimization of ranges.
Reference application ‘292 fails to disclose R-Fe-B magnet with the contents as claimed. CN ‘173 discloses (PrNd)30FebalAl0.1Cu0.1Zr0.1B magnet. It would have been obvious to one of ordinary skill in the art to modify the reference R-Fe-B to the specific material as claimed, since CN ‘173 discloses that this alloy is known in the art of sintered RE magnets.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claim 8 is objected to because of the following informalities:
Claim 8 recites “the heavy rare earth component, the first organic solid, and the first solvent have a mass ratio of (40-70):(3-10):(20-50)" should be rewritten as “the heavy rare earth component, the first organic solid, and the first solvent are present in a mass ratio of (40-70):(3-10):(20-50), respectively". Appropriate correction is required.
Claim 8 recites “the metal oxide, the second organic solid, and the second solvent have a mass ratio of (30-70):(3-10):(20-50)” should be rewritten as “the metal oxide, the second organic solid, and the second solvent are present in a mass ratio of (30-70):(3-10):(20-50), respectively”. Appropriate correction is required.
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.
Claim 6 recites “the R-Fe-B magnet further comprises Fe and M…” renders the claim indefinite because it is unclear how an R-Fe-B, already defined as containing Fe, can be further described as additionally comprising Fe.
Claim 6 recites the limitation "the heavy metal component" in line 27. There is insufficient antecedent basis for this limitation in the claim.
Claims 7, 16, and 19 recites the limitations "the RH layer slurry" and “the RL layer slurry”. There is insufficient antecedent basis for these limitations in the claim.
Response to Arguments
Applicant’s arguments with respect to claim(s) 6 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Allowable Subject Matter
Claims 6-8 and 11-20 would be allowable if rewritten or amended 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.
CN 109411173 discloses a sintered NdFeB magnet, wherein the surface has an oxide adhesive layer [0022, 0028, 0049-0050], wherein a preparation method comprises disposing a composite diffusion layer on the surface of an R-Fe-B magnet to form the a R-Fe-B magnet blank (Examples), and performing a temperature holding heat treatment on the R-Fe-B magnet blank in a vacuum to obtain a sintered magnetic having an oxide adhesive layer on the surface thereof [0032]. With regards to the claimed H1 and H2 relationship, CN ‘173 discloses the relationship as claimed (Table 1, Ex. 3-4). Furthermore, CN ‘173 discloses the composite diffusion layer is by coating via a slurry and then drying ([0022, 0028], All Examples). However, CN ‘173 fails to disclose that the composite diffusion layer is at least a bilayer of RH layer and RL layer with the materials as claimed.
Morimoto et al. (US 8,038,807) discloses RE magnet comprising a composite diffusion layer comprising M layer and RH layer, wherein the layers are formed by sputtering, EP evaporated, or dipping process (col. 8, line 8-14, Tables 2-3, claim 5). Although Morimoto discloses a dipping process in the formation of the M layer and RH layer, Morimoto fails to disclose that the process involves using a slurry with the materials as claimed.
CN 115116728 discloses a sintered RE magnet comprising a composite diffusion layer, wherein the composite diffusion layer is formed by preparing a slurry of at least one powder of heavy rare earth element fluoride powder, heavy rare earth element oxide powder, heavy rare earth element hydride powder, heavy rare earth element pure metal powder and heavy rare earth element alloy powder, organic solid, and solvent with the materials as claimed (all claims, Examples discloses the usage of terbium fluoride powder, butanol as the solvent, and PVB as the organic solid).
Although the prior arts of record disclose a method of making RE magnet, the prior arts of record fails to teach, suggest, or otherwise render obvious, absent impermissible hindsight, a method of making the RE magnet meeting the totality of the claimed limitations of claim 6, specifically specific concentration of the R-Fe-B magnet, the method of making the composite diffusion layer with the materials and structure as claimed, wherein Hcj of the surface of the sintered R-Fe-B magnet in the magnetic orientation thereof is H1, Hcj at a location 2.00±0.02 mm inside the magnet from the surface of the magnet along the magnetic orientation direction thereof is H2, and the difference between H1 and H2 is not more than 50 kA/m.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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.
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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
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