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 with traverse of Group I, claims 1-5 in the reply filed on 5/22/2026 is acknowledged. The traversal is on the ground that no patentable weight is given to the method limitations within the product claim and that different manufacturing processes result in different final products and claims 2-5 include compositional and/or structural limitations that distinguish the claimed invention from Tokoro. This is not found persuasive because MPEP 2113 states a product claim is limited only by the structure implied by the method and patentability is determined based on the product even if made by another process. Tokoro teaches a sintered rare earth magnet containing an overlapping composition.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 5/22/2026.
Claim Rejections - 35 USC § 112(b)
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 2-5 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 claim2, the phrase "such as" 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). For the sake of compact prosecution, the Examiner is interpreting the rare earth elements following “such as” as a closed Markush group that has been improperly written. Clarification is required.
Regarding claim 3, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173. Moreover, it is unclear whether the B, Ga, and O are being treated as the impurities or if the impurities are different elements. Clarification is required.
Regarding claim 4, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173. Clarification is required.
Regarding claim 5, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173. Clarification is required.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Specifically, claim 4 recites the oxygen is present in the magnet in amounts of no more than 200 ppm, which is outside the claimed range of 400-1000ppm. It is unclear whether the sintered magnet contains the 400-1000ppm of claim 1 or the less than 200 ppm of claim 4. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Tokoro et al. (US 2002/0054824 A1, hereinafter “Tokoro”).
Regarding claims 1 and 2, Tokoro teaches a sintered rare earth magnet having the following composition, where R is preferably Nd, Nd+Dy, or Nd+Dy+Pr (Tokoro, Abstract, [0009-0010], and [0032-0039]):
Element
Present Invention, wt.%
Tokoro, wt.%
Overlap
R
28.5-32.5
28-33
Preferred: 28-31
Encompass
B
0.88-0.94
0.8-1.5
Preferred: 0.85-1.2
Encompass
Ga
0.1-0.3
0.01-0.2
Preferred: 0.05-0.2
0.1-0.2
Co
1.0-3.0
0.5-5.0
Encompass
O
400-1000 ppm
0-0.3, i.e., 0-3000 ppm
Preferred: 0-1800 ppm
Encompass
Balance
Fe and impurities
Fe and impurities
Same
The ranges of Tokoro overlap or encompass the ranges of claim 1. Moreover, R being Nd, Nd+Dy, or Nd+Dy+Pr of Tokoro correspond to wherein the R is selected from neodymium (Nd), or neodymium (Nd) and at least one of the following rare earth elements: rare earth elements such as lanthanum (La), cerium (Ce), praseodymium (Pr), promethium (Pm), samarium (Sm), europium (Eu), gadolinium (Gd), terbium (Tb), dysprosium (Dy), holmium (Ho), erbium (Er), thulium (Tm), ytterbium (Yb), lutetium (Lu), scandium (Sc), yttrium (Y), and the like of claim 2.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fe. Cir. 1990).
While claim 1 also recites that the magnet is manufactured by pulverizing, molding, and sintering under a protection of an inert atmosphere, claim 1 is a product claim and limited only by the structure implied by the method and patentability is determined based on the product even if made by another process. MPEP 2113.
Alternatively, Tokoro teaches the fine pulverization of a starting ally material in an inert gas under non-oxidizing conditions, introducing the fine powder to a non-oxidizing liquid to form a slurry, molding the slurry in a magnetic field by a molding apparatus, then sintering the green body rapidly from room temperature to a sintering temperature (Tokoro, [0047-0050]). The method of Tokoro corresponds to the magnet is manufactured by pulverizing, molding, and sintering under a protection of an inert atmosphere of claim 1.
Regarding claim 3, the preferred amounts of B and Ga are 0.85-1.2% and 0.05-0.2% respectively. These preferred amounts calculate to -0.025 to 0.0775, which overlaps with the amount of oxygen and satisfy the requirements of claim 3. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fe. Cir. 1990). Moreover, the limitations of “preferably” are being interpreted as being optional and therefore not required.
Regarding claim 4, Tokoro teaches the amount of oxygen ranges from 0-0.3 wt.%, i.e., 0-3000ppm, which encompasses the range of claim 4.
Regarding claim 5, Tokoro teaches the sintered magnet comprises R’2Fe14B-type intermetallic compounds as a main phase (Tokoro, [0043]). The main phase of Tokoro corresponds to wherein the sintered neodymium-iron-boron magnet comprises an R2Fe14B main phase of claim 5. Moreover, given the composition and method of making the sintered magnet of Tokoro are substantially identical to the composition and method as used in the present invention, it is clear that the sintered magnet of Tokoro would inherently have an R-rich phase, and a B-rich phase, and a face centered cubic structure as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE CARDA whose telephone number is (571)270-1240. The examiner can normally be reached Monday-Friday 8:30-4:00 EST.
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, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738
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