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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. EP16196804.5 and PCT/EP2017/077334, filed on November 2, 2016 and October 25, 2017, respectively.
The examiner is able to retrieve priority documents through parent applications 16/346198 and 17/385319.
Information Disclosure Statement
The information disclosure statement filed March 20, 2024 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because no legible copies of the foreign references nor non-patent literature were provided. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
The information disclosure statement filed March 20, 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Specification
The disclosure is objected to because of the following informalities: Par [0006] correct “mag-nets” to “magnets” (also Par [0026], [0031]) and “inter-acting” to “interacting”
Par [0013] correct “bio-logical” to “biological”
Par [0014] correct “his” to “this”
Par [0015] correct “select-ed” to “selected”
Par [0018] correct “lay-er” to “layer”
Par [0024] correct “dam-age” to “damage”
Par [0030] correct “de-scribed” to “described”
Par [0033] correct “protect-ed” to “protected” and “sol-vent” to “solvent”
Par [0038] correct “met-al” to “metal
Par [0039] correct “ox-ide” to “oxide”
Par [0049] correct “compo-site” and “at-oms”
Par [0070] correct “sur-faces”
Par [0071] correct “inspect-ed” and in first sentence “niobium” should read as “neodymium”.
Appropriate correction is required.
Claim Objections
Claim 9 objected to because of the following informalities: one of the "or" should be removed in final two lines "...bis-trimethoxysilyl functional groups or or bis-triethoxysilyl funcitonal group". Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
Claims 1-5, 8, 10, 12, 14, 16-17, 19-20, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Shinichi (JP2000256878A) in view of Hoshi et al (US PGPub 20030041920).
Regarding claim 1, Shinichi teaches a rare earth permanent magnet comprising a magnet body. The body is coated with a composite film or coating composed of three layers: a metal film or metal alloy film (metal layer) formed on the magnet body surface as a first layer, an alumina or magnesia film (a metal oxide layer on the metal layer), and a polyparaxylylene resin film on the oxide layer. While Shinichi does not specifically disclose a poly(2-chloro-p-xylylene) (also known as Parylene C) nor a linker layer, Hoshi teaches a similar rare earth magnet coated with an oxide layer (Hoshi refers to as “chemical conversion layer”), a coupling agent, and parylene C (“resin coating” according to Hoshi). In paragraphs [0066-68], Hoshi describes surface-treating the chemical conversion layer-coated magnet with a coupling agent. The magnet is immersed into the diluted solution containing a coupling agent, heated evacuated, evaporated, and cooled to obtain a “coupling agent coating formed on the surface of the chemical conversion layer”. The coupling agent coating layer serves as an interface between the chemical conversion layer (metal oxide layer) and the resin coating (parylene C). In paragraph [0008], Hoshi teaches that a chlorinated polyparaxylylene resin (parylene C) imparts excellent corrosion and thermal demagnetization resistance and that a coupling agent further improves these properties. Further, the coupling agents listed in paragraph [0067] include bifunctional compounds. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to include a coupling agent linker layer containing a disclosed bifunctional linker compound to further improve corrosion resistant properties imparted by a polyparaxylylene layer and to specifically use a chlorinated polyparaxylylene such as poly(2-chloro-p-xylylene) or parylene C as a known polyparaxylylene compound capable of imparting corrosion resistance to a permanent magnet and arrive at the invention as claimed. Thus, Shinichi and Hoshi teach the claimed “A corrosion resistant permanent magnet comprising: -a magnet body; and -a composite coating provided on and covering surfaces of the magnet body, the composite coating comprising: a metal layer on the magnet body; optionally a metal oxide layer on the metal layer at the surface facing away from the magnet body; a linker layer on the metal layer or the metal oxide layer, wherein the linker layer comprises a linker compound that is a bifunctional compound; and a layer formed from poly(2-chloro-p-xylylene) on the linker layer”.
Regarding claim 2, Shinichi and Hoshi teach the corrosion resistant permanent magnet of claim 1. In the detailed description (around paragraph [0011]), Shinichi discloses the coated member is a cast material, a sintered material, a rolled material, or the like. Further, in the provided Example 1 (around paragraph [0028]), Shinichi uses an Nd-Fe-B sintered magnet. Thus, Shinichi and Hoshi teach the claimed “The corrosion resistant permanent magnet of claim 1, wherein the magnet body is a sintered magnet body.”.
Regarding claim 3, Shinichi and Hoshi teach the corrosion resistant permanent magnet of claim 1. Shinichi teaches the coating of a Nd-Fe-B sintered magnet, thus the magnet body is rare earth metal based (Nd or neodymium). Therefore, Shinichi and Hoshi teach the claimed “The corrosion resistant permanent magnet of claim 1, wherein the magnet body is rare earth metal based”.
Regarding claim 4, Shinichi and Hoshi teach the corrosion resistant permanent magnet of claim 3. Shinichi teaches the coating of a Nd-Fe-B sintered magnet, thus the magnet body is rare earth metal based (Nd or neodymium). Therefore, Shinichi and Hoshi teach the claimed “The corrosion resistant permanent magnet of claim 3, wherein the rare earth metal is neodymium”.
Regarding claim 5, Shinichi and Hoshi teach the corrosion resistant permanent magnet of claim 1. Shinichi teaches the coating of a Nd-Fe-B sintered magnet, thus the magnet body is a rare earth metal (Nd) iron boron permanent magnet. Therefore, Shinichi and Hoshi teach the claimed “The corrosion resistant permanent magnet of claim 1,wherein the magnet body is a rare earth metal iron boron permanent magnet.”
Regarding claim 8, Shinichi and Hoshi teach the corrosion resistant permanent magnet of claim 1. In paragraph [0067], Hoshi teaches the coupling agents can be silane coupling agents. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to use a silane based coupling agent as the linker compound in the formed linker layer at the interface between the oxide layer and the parylene C layer as a known linker compound capable of improving corrosion resistance of the magnet, as informed by Hoshi, to arrive at the invention as claimed. Thus, Shinichi and Hoshi teach the claimed “The corrosion resistant permanent magnet of claim 1, wherein the linker compound forming the linker layer is selected from silanes, mercaptans, phosphines, disulfides, and silanes having a thiol, phosphine or disulfide group.”.
Regarding claim 10, Shinichi and Hoshi teach the corrosion resistant permanent magnet of claim 8. In paragraph [0067], Hoshi discloses examples of silane coupling agents which include silanes having a hydride functional group. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to select for any of the disclosed silanes of Hoshi having a hydride functional group as a known linker compound capable of improving further improving corrosion resistance properties imparted by the parylene C layer and arrive at the invention as claimed. Thus, Shinichi and Hoshi teach the claimed “The corrosion resistant permanent magnet of claim 8, wherein the silanes have a hydride functional group”.
Regarding claim 12, Shinichi and Hoshi teach the corrosion resistant permanent magnet of claim 1. Shinichi teaches that the metal of the film or metallic alloy film can be at least one of Ti, Al, Ni, Zr, Hf, V, Nb, Ta and Cr. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to provide any of aluminum, titanium, zirconium, tantalum, or niobium as a metal of the metal layer to coat the surface of a permanent magnet as a known material for improving corrosion resistance and arrive at the invention as claimed. Thus, Shinichi and Hoshi teach the claimed “The corrosion resistant permanent magnet of claim 1,wherein a metal of the metal layer is selected from aluminum, titanium, tantalum, niobium, zirconium, platinum, gold, and a metal alloy of aluminum, titanium, tantalum, niobium and zirconium”.
Regarding claim 14, Shinichi and Hoshi teach the corrosion resistant permanent magnet of claim 1. Shinichi teaches that the metal of the film or metallic alloy film can be at least one of Ti, Al, Ni, Zr, Hf, V, Nb, Ta and Cr. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to provide any of titanium or zirconium as a metal of the metal layer to coat the surface of a permanent magnet as a known material for improving corrosion resistance and arrive at the invention as claimed. Thus, Shinichi and Hoshi teach the claimed “The corrosion resistant permanent magnet of claim 1,wherein a metal of the metal layer is selected from platinum, titanium, and zirconium”.
Regarding claim 16, Shinichi and Hoshi teach the corrosion resistant permanent magnet of claim 1. Hoshi specifically describes immersing the entire magnet body into the coating solutions, thus covering and extending over all surfaces of the magnet body (see examples and paragraphs [0054-56]). In paragraph [0056], Hoshi describes proper immersion times of the magnet into the coating solution such that the layer can be “practically formed” on the magnet. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to follow the immersion steps of Hoshi to ensure a complete layer to form around the magnet and provide corrosion resistance and arrive at the invention as claimed. Thus, Shinichi and Hoshi teach the claimed “The corrosion resistant permanent magnet of claim 1, wherein all layers of the composite coating completely extends over all surfaces of the magnet body”.
Regarding claim 17, Shinichi and Hoshi teach the corrosion resistant permanent magnet of claim 1. Shinichi teaches a metal film layer that is 1-2 µm thick and a metal oxide layer that is 1-5 µm, thus totaling a combined thickness that is 2-7 µm. Shinichi teaches that balancing the thickness of the coatings is necessary as too thin of layers will not enable sufficient insulation or corrosion resistance while too thick of layers will impede magnetic properties and productivity. Overlapping ranges have been held to present a prima facie case of obviousness over the prior art. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to select from the overlapping portion of the range such that magnetic and corrosive resistance properties are adjusted to desired degrees to arrive at the invention as claimed. Thus, Shinichi and Hoshi teach the claimed “The corrosion resistant permanent magnet of claim 1, wherein a thickness of the metal layer or a combined thicknesses of the metal layer and the metal oxide layer is in a range from 5 µm to 20 µm”.
Regarding claim 19, Shinichi and Hoshi teach the corrosion resistant permanent magnet of claim 1. Shinichi teaches a polyparaxylylene resin film layer having thickness of 1-5 µm. Hoshi teaches the thickness of the resin coating (paragraph [0065]) to be around 0.5-30 µm or preferably 5-20 µm. When the thickness is below 0.5 µm, then there is no improvement of corrosion resistance. When the thickness, is above 30 µm, decrease in a magnetic flux density distribution in magnetic gaps is not negligible. Overlapping ranges have been held to present a prima facie case of obviousness over the prior art. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to select from the overlapping portion of the range as a known proper coating thickness to provide corrosion resistance without significantly detracting the magnetic properties to arrive at the invention as claimed. Thus, Shinichi and Hoshi teach the claimed “The corrosion resistant permanent magnet of claim 1, wherein a thickness of the layer formed from poly(2-chloro-p-xylylene) is in a range from 5 µm to 20 µm.”
Regarding claim 20, Shinichi and Hoshi teach the corrosion resistant permanent magnet of claim 1. Shinichi teaches that the total thickness of the coating is preferably ≤ 10 µm. Thus, Shinichi and Hoshi teach the claimed “The corrosion resistant permanent magnet of claim 1, wherein a thickness of the composite coating is no more than 200 µm.”
Regarding claim 31, Shinichi and Hoshi teach the corrosion resistant permanent magnet of claim 1. Shinichi teaches that the total thickness of the coating is preferably ≤ 10 µm. Thus, Shinichi and Hoshi teach the claimed “The corrosion resistant permanent magnet of claim 1, wherein a thickness of the composite coating is no more than 50 µm.”
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Shinichi (JP2000256878A) in view of Hoshi et al (US PGPub 20030041920) as applied to claim 1 above, and further in view of Wang (US PGPub 20120182102).
Shinichi and Hoshi teach the corrosion resistant permanent magnet of claim 1. Both Shinichi and Hoshi are silent on a neodymium iron boron material surrounding Nd2Fe14B crystals in their permanent magnets. Wang teaches a metal film coating for permanent Nd2Fe14B sintered magnets whereby in paragraphs [0007-8] Wang describes the ideal microstructure of such magnets contain Nd2Fe14B grains or crystals perfectly isolated (thus surrounded) by “Nd-rich” phases (a eutectic matrix of Nd-Fe-B and Fe-Nd phases thus a neodymium iron boron material). Further, Wang discloses that such microstructures of Nd-Fe-B sintered magnets is extremely common. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to ensure the prepared magnets of Shinichi and Hoshi contain a neodymium iron boron material that is richer in neodymium and surrounds the Nd2Fe14B crystals as a known ideal microstructure for such sintered magnets and arrive at the invention as claimed. Thus, Shinichi, Hoshi, and Wang teach the claimed “The corrosion resistant permanent magnet of claim 1,wherein the magnet body is a sintered magnet body having Nd2Fe14B crystals and a neodymium iron boron material surrounding the Nd2Fe14B crystals, said neodymium iron boron material being richer in neodymium than the Nd2Fe14B crystals”.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Shinichi (JP2000256878A) in view of Hoshi et al (US PGPub 20030041920) as applied to claim 1 above, and further in view of Leung et al (WO2016118735A1).
Shinichi and Hoshi teach the corrosion resistant permanent magnet of claim 1. Shinichi is silent on the shape of their magnet while Hoshi discloses plate or ring shaped magnets. Leung also teaches a corrosion resistant coating for NdFeB permanent magnets. In paragraph [0049], Leung teaches that the magnet can have a variety of shapes including balls, bars, rods (e.g., cylinders thus rounded edges), rings, partial rings, and plates. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to provide the magnet as a rod with rounded edges, as informed by Leung, as a known applicable shape of the provided magnet for a corrosion resistant coating application and arrive at the invention as claimed. Thus, Shinichi, Hoshi, and Leung teach the claimed “The corrosion resistant permanent magnet of claim 1, wherein the magnet body is rod-shaped with all edges being rounded”.
Claims 9, 13, and 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Shinichi (JP2000256878A) in view of Hoshi et al (US PGPub 20030041920) as applied to claims 8 and 1 above, and further in view of Masato et al (JP2016134454A).
Regarding claim 9, Shinichi and Hoshi teach the corrosion resistant permanent magnet of claim 8. Shinichi is silent on linker compounds while Hoshi does not specifically disclose silanes having acryloyloxy or methacryloyloxy functional groups and linkers having bis-trimethoxysilyl or bis-triethoxysilyl functional group. Masato teaches providing a resistant coating or layer to a base material or metal layer. To improve adhesiveness between such layers, Masato teaches use of silane compounds. While Masato teaches application to a circuit or printed wiring board, the motivation of using such a linker silane compound is shared with the teachings of Hoshi and thus would be relevant to one of ordinary skill in the art providing such a coating and linker layer to a magnet. Masato discloses known coupling agents of silanes having “a thiol group (mercapto group), vinyl group, epoxy group, (meth) acryl group, amino group, chloropropyl group, and the like”, thus methacryloyloxy functional groups would be included or relevant to one of ordinary skill in the art. Additionally, Masato gives an example of a sulfide silane compound such as “bis (triethoxysilylpropyl) tetrasulfide” thus a linker having bis-triethoxysilyl functional group. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to select from the disclosed silane coupling agents such as one possessing a bis-triethoxysilyl functional group as a known silane coupling agent capable of improving adhesiveness between a base material, such as the magnets of Shinichi and Hoshi, and a corrosion resistant coating, such as that informed by Shinichi and Hoshi, and arrive at the invention as claimed. Thus, Shinich, Hoshi, and Masato teach the claimed “The corrosion resistant permanent magnet of claim 8, wherein the silanes are selected from trimethoxysilanes and triethoxysilanes having an acryloyloxy or methacryloyloxy functional group and linker having bis-trimethoxysilyl functional group or or bis-triethoxysilyl functional group”.
Regarding claim 13, Shinichi and Hoshi teach the corrosion resistant permanent magnet of claim 1. Shinichi teaches that the metal of the film or metallic alloy film can be at least one of Ti, Al, Ni, Zr, Hf, V, Nb, Ta and Cr (see rejection of claim 12 above). It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to provide any of aluminum, titanium, zirconium, tantalum, or niobium as a metal of the metal layer to coat the surface of a permanent magnet as a known material for improving corrosion resistance and arrive at the invention as claimed. While Shinichi teaches an oxide layer outside of the metal layer, Shinichi provides an already prepared oxide of aluminum or magnesium and not forming an oxide via oxidation of a metal or metal alloy of the metal layer. Masato similarly teaches preparation of a resistant layer onto a substrate which can have a metal layer. Prior to coating, Masato teaches a pretreatment of the substrate which could include a roughening treatment to increase adhesion between base material and resin “due to anchor effect” or a chemical conversion treatment. One of the disclosed roughening treatments involves “oxidation method” thus forming an oxide. The chemical conversion treatment is a method of forming a passive film of “copper oxide”. Masato discloses copper oxide since the metal layer provided is copper, but it can be understood as forming an oxide of whatever metal is in contact to the “resist layer” which is the resin layer (akin to the corrosion resistance coating of Shinichi and Hoshi). Thus, if applying the oxidation method of Masato, the metal layer of Shinichi would be oxidized to passively form the oxide layer of Shinichi (thus formed by oxidation of the metal) as opposed to providing a separate oxide layer. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to apply a roughening treatment such as oxidation in order to improve adhesion, as informed by Masato, in forming the oxide layer on the metal layer of the composite coatings of Shinichi and Hoshi and arrive at the invention as claimed. Thus, Shinichi, Hoshi, and Masato teach the claimed “The corrosion resistant permanent magnet of claim 1,wherein a metal of the metal layer is selected from aluminum, titanium, tantalum, niobium, zirconium and a metal alloy thereof, and a surface of the metal layer facing away from the magnet body is covered by an oxide layer formed by oxidation of the metal or the metal alloy”.
Regarding claim 32, Shinichi and Hoshi teach the corrosion resistant permanent magnet of claim 1. Shinichi does not teach a linker compound, and Hoshi does not specifically disclose that the provided coupling agent or linker bonds between provided layers. Masato teaches providing a resistant coating or layer to a base material or metal layer. To improve adhesiveness between such layers, Masato teaches use of silane compounds. While Masato teaches application to a circuit or printed wiring board, the motivation of using such a linker silane compound is shared with the teachings of Hoshi and thus would be relevant to one of ordinary skill in the art providing such a coating and linker layer to a magnet. Masato teaches in their adhesion method that a method of bonding is employed. By using the surface treatment liquid (contains linking or coupling silane agent) to come into contact between two surfaces (metal layer and resist or insulating layer), chemical bonds form between the two substrates whereby the silane is the “medium” between these bonds. Additionally, under the section “Hydrolysis of azole silane compound”, Masato discloses that the coupling agent forms chemical bonds between “resin and copper” which are equivalent to the parylene C layer and metal layer of combined teachings of Shinichi and Hoshi. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to follow the treatment method of Masato when applying the linker layer in the magnet and coatings of Shinichi and Hoshi to form chemical bonds between the metal or metal oxide layer of Shinichi and the Parylene C layer of Hoshi such that adhesion is increased between such layers and arrive at the invention as claimed. Thus, Shinichi, Hoshi, and Masato teach the claimed “The corrosion resistant permanent magnet of claim 1, wherein the linker compound comprises one functional group or one molecular moiety bonding to the metal layer or the metal oxide layer, and another functional group or another molecular moiety bonding to the poly(2-chloro-p-xylylene)”.
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Shinichi in view of Hoshi et al and Masato et al as applied to claim 32 above, and further in view of Guschl (WO2005052960A2)
Shinichi, Hoshi, and Masato teach the corrosion resistant permanent magnet of claim 32. Further, Masato teaches that the silane coupling agent contains an alkoxysilyl group that is hydrolyzed and converted to hydroxysilyl group which chemically bonds with copper oxide scattered on the surface of copper (equivalent to metal or metal oxide layer of Shinichi). Guschl teaches coating formulations for rare earth transition metal boron magnet materials such as Nd-Fe-B type magnetic powders for the purpose of corrosion and/or oxidation resistance. Guschl also teaches methods of applying such coating formulations to these magnets. Guschl discloses that organosilane coupling agents are commonly employed due to their reactivity with surface hydroxyl chemical groups present on magnetic surfaces which are found to be “most effective for oxidation resistance”. Thus, it would be expected that when applying such organosilane coupling agents of Hoshi and/or Masato, that the coupling agent would bond under the method of Masato to surface hydroxyl groups of the outside layers of the magnet/metal of Shinichi. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to ensure bonding between surface hydroxyl groups of the metal or metal oxide layer and the provided coupling agent or linker compound to ensure oxidation resistance imparted by the formed coating layers and arrive at the invention as claimed. Thus, Shinichi, Hoshi, Masato, and Guschl teach the claimed “The corrosion resistant permanent magnet of claim 32, wherein the one functional group or the one molecular moiety of the linker compound is bonded to the metal layer or the metal oxide layer by reacting with surface hydroxyl groups of the metal layer or the metal oxide layer”.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Shinichi (JP2000256878A) in view of Hoshi et al (US PGPub 20030041920) as applied to claim 1 above, and further in view of Itaru et al (JP2004064895A).
Shinichi and Hoshi teach the corrosion resistant permanent magnet of claim 1. Shinichi is silent on inclusion of gold as a metal of the metal layer. Itaru teaches a method of producing a permanent magnet whereby a plating film is formed on the surface of the magnet serving to improve corrosion resistance and mechanical strength of the permanent magnet (paragraph [0096]) and further surrounded by inorganic and organic polymer materials, thus analogous to the magnets and coatings of Shinichi and Hoshi. The plating film can include Au (gold) among other disclosed metals or inorganics. Thus, it would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to use gold as a metal of the metal layer of Shinichi, as informed by Itaru, as a known alternative metal capable of improving corrosion resistance and mechanical strength and arrive at the invention as claimed. Shinichi, Hoshi, and Itaru teach the claimed “The corrosion resistant permanent magnet of claim 1,wherein a metal of the metal layer is gold”.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Shinichi (JP2000256878A) in view of Hoshi et al (US PGPub 20030041920) as applied to claim 8 above, and further in view of Itaru et al (JP2004064895A) and Helbert (US Pat No 4497890).
Shinichi and Hoshi teach the corrosion resistant permanent magnet of claim 8. Itaru provides motivation as to providing gold for the metal layer of Shinichi as described in the rejection of claim 15. Hoshi does not specifically disclose overlapping silane or disulfide compounds for the linker or coupling compound as claimed. Helbert teaches in an analogous resist layer coating for a gold surface is providing a chelating silane adhesion promoter between layers (Col. 3 lines 50-67). Helbert specifically discloses that 2-(diphenylphosphino)ethyl triethoxysilane (Col. 3 line 65) is a proper chelating silane adhesion promoter for gold surfaces. Thus, if using a gold surface as informed by Itaru in place of the metal surfaces of Shinichi, it would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to use a chelating silane agent of Helbert such as 2-(diphenylphosphino)ethyl triethoxysilane that is known to improve adhesion between gold metal surfaces and polymeric resist layers and arrive at the invention as claimed. Thus, Shinichi, Hoshi, Itaru, and Helbert teach the claimed “The corrosion resistant permanent magnet of claim 8, wherein the linker compound is selected from 3-(2-pyridylethyl)thiopropyl trimethoxysilane, 3-(4-pyridylethyl)thiopropyl trimethoxysilane, 2-(diphenylphosphino)ethyl triethoxysilane, bis(2- methacryloyl)oxyethyldisulfide, and dihexadecyldisulfide”.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Shinichi (JP2000256878A) in view of Hoshi et al (US PGPub 20030041920) as applied to claim 8 above, and further in view of Helbert (US Pat No 4497890).
Shinichi and Hoshi teach the corrosion resistant permanent magnet of claim 8. Hoshi does not specifically disclose overlapping silane or disulfide compounds for the linker or coupling compound as claimed. Helbert teaches in an analogous resist layer coating for a gold surface is providing a chelating silane adhesion promoter between layers (Col. 3 lines 50-67). Helbert specifically discloses that 2-(diphenylphosphino)ethyl triethoxysilane (Col. 3 line 65) is a proper chelating silane adhesion promoter for gold surfaces. Helbert was motivated to find suitable agents that work for gold specifically due to gold being less susceptible to oxidative damage compared to other metals such as aluminum (Col. 2 lines 1-10). Helbert discloses that typical agents that work for aluminum or mineral surfaces are generally not effective for gold surfaces. Helbert does not imply or suggest that their disclosed chelating agents will not work for other typical metal surfaces such as aluminum which is a disclosed metal of a metal layer of Shinichi. Thus, it would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to use a chelating silane agent of Helbert such as 2-(diphenylphosphino)ethyl triethoxysilane that is known to improve adhesion between metal surfaces and polymeric resist layers and arrive at the invention as claimed. Thus, Shinichi, Hoshi, and Helbert teach the claimed “The corrosion resistant permanent magnet of claim 8, wherein the linker compound is selected from 3-(2-pyridylethyl)thiopropyl trimethoxysilane, 3-(4-pyridylethyl)thiopropyl trimethoxysilane, 2-(diphenylphosphino)ethyl triethoxysilane, bis(2- methacryloyl)oxyethyldisulfide, and dihexadecyldisulfide”.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Shinichi (JP2000256878A) in view of Hoshi et al (US PGPub 20030041920) as applied to claim 1 above, and further in view of Bedinger et al (US PGPub 20080185174).
Shinichi and Hoshi teach the corrosion resistant permanent magnet of claim 1. Hoshi is silent on a thickness of the linker layer (coupling agent layer). Bedinger teaches manufacture of a passivation layer which serves to protect the substrate, which is a circuit device in the case of Bedinger. The passivation layer is composed of several dielectric layers whereby an intermediary layer serves as an adhesion layer (containing silanes, paragraph [0038]) between second and third dielectric layers whereby the third is formed of parylene (paragraphs [0030-32] and [0038]). Although Bedinger teaches a passivation layer for a circuit device, the motivation for such a layer to improve adhesion between protective layers is analogous to the linker layer to one of ordinary skill in the art when considering inventions of Shinichi and Hoshi. Bedinger discloses thicknesses of the second and third dielectric layers to be 50-2000 angstroms (5-200nm) and 100-1000 angstroms (10-100nm), respectively (paragraphs [0030-31]). Although Bedinger does not specifically reveal the thickness of the adhesion layer, its thickness would be expected to be held within a similar range to ensure compactness between layers and ensure adequate protection of the coated material without undue effect on electrical properties as explained in paragraphs [0024-26] (thus magnetic for Shinichi and Hoshi). It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to provide a linker layer with a thickness within the overlapping ranges of thicknesses of layers provided by Bedinger as a known thickness that enables proper adhesion and protection for bonding resistant layers to coat a material without sacrificing desired properties of the coated material and arrive at the invention as claimed. Thus, Shinichi, Hoshi, and Bedinger teach the claimed “The corrosion resistant permanent magnet of claim 1, wherein a thickness of the linker layer is in a range from 20 nm to 150 nm”.
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 1-20 and 31 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,107,626. Although the claims at issue are not identical, they are not patentably distinct from each other because the independent claim 1 of the pending instant application and of U.S. Patent No. 11,107,626 match limitations identically outside of the instant application specifying that there is a linker compound of the linker layer which is a "bifunctional compound" . U.S. Patent No. 11,107,626 discloses in Col. 6 lines 52-63 that the linker compound in their interface layer (the linker layer) “must be bifunctional”. Thus, linker layer that is a bifunctional compound is emcompassed or it would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to use a bifunctional linker compound as a known compound capable of adhering the metal or metal oxide layer to the parylene layer and arrive at the same invention. Therefore, the independent claims (claim 1) in the instant application and in the granted patent are not patentably distinct from one another. Subsequently, dependent claims 2-20 and 31 of the instant application map directly and identically to the dependent claims 2-21 of the granted patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ramadas (US PGPub 20160088756) discloses relevant silane coupling agents in form of dendrimer linkers.
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/NWFG/Examiner, Art Unit 1759
/MELVIN C. MAYES/Supervisory Patent Examiner, Art Unit 1759
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