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 of Group I, claims 1-11, without traverse in the reply filed on 08/04/2026 is acknowledged.
Claim 12 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 08/04/2026.
Claim Interpretation
For the purposes of examination, the Examiner is interpreting the acronym “DBE” to refer to a dibasic ester solvent, as the acronym is ubiquitously employed in the art (e.g., see US-20180102198-A1 at para. 0099).
Claim Objections
Claim 2 is objected to because of the following informality:
• Claim 2 should be amended as follows: “…and a heavy rare earth powder of a hydride, a fluoride or an oxide containing a heavy rare earth element.”
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.
Claims 1-11 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.
In claim 1, the claim claims the slurry to comprise a “rare earth powder, an organic solvent, a resin, a dispersant, and/or a leveling agent.” However, the claim then goes on to specify weight percentages that necessitate the presence of the rare earth powder, the organic solvent, and the resin, and render optional the dispersant and the leveling agent. The term “and/or” suggests embodiments where the slurry contains only a single component in the listing, e.g., only a rare earth powder, which contradicts the weight percentages later on in the claim, which necessitate at least the rare earth powder, the organic solvent, and the resin. It is further unclear whether the term “and/or” was meant to modify the entire listed grouping or to simply modify the dispersant and the leveling agent. Thus, confusion arises as to what the slurry actually requires to be present. For the purposes of examination, the Examiner is interpreting any composition that meets the claimed weight percentage ranges to read on the claim. The Examiner is further interpreting both the dispersant and the leveling agent to be optional, i.e., neither one has to be present (such an interpretation is supported in Example 8 of Applicant’s specification at para. 0134, which lacks a dispersant and a leveling agent). To correct, the Examiner suggests amending the claim to reduce confusion regarding the term “and/or” (e.g., “comprising a rare earth powder, an organic solvent, and a resin, optionally a dispersant[[,]] and/or a leveling agent, weight percentages…”). Claims 2-11 are also rejected by virtue of their dependency on claim 1.
In claim 3, the term “the heavy rare earth element” lacks sufficient antecedent basis. It is unclear whether the claimed “heavy rare earth element” is referring to the heavy rare earth element in the pure metal powder, the alloy powder, or the hydride, fluoride, or oxide powder. For the purposes of examination, the Examiner is interpreting claim 3 to require all of the heavy rare elements from claim 2 to comprise Tb, Dy, Ho, and/or Gd.
In claim 5, the trademark/trade name “texanol” is present (see US-20180102198-A1 at para. 0099, showcasing texanol as being a trademark). Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the source of the solvent rather than the solvent compound itself and, accordingly, the identification/description is indefinite. To correct, the Examiner suggests deleting texanol from the claims. For the purposes of examination, the Examiner is interpreting any composition containing 2,2,4-trimethyl-1,3-pentanediol monoisobutyrate to read on the claimed “texanol” solvent (see US-20180102198-A1 at para. 0099). Claims 6-11 are also rejected by virtue of their dependency on claim 5.
In claim 10, the term “polyethylene amide” lacks sufficient antecedent basis in the claims. There is no previous mention of a polyethylene amide in the claims, and it is unclear whether the polyethylene amide is meant to read on the previously claimed “dispersant” term from claim 7 or not. For the purposes of examination, the Examiner is interpreting the claimed polyethylene amide to read on the claimed dispersant, and that any composition containing polyethylene amide reads on claim 7.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5, and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suzuki et al. (JP-2017162900-A), with reference to the included machine translation (hereinafter referred to as “Suzuki”).
Regarding claim 1, Suzuki teaches an organic slurry for neodymium iron boron screen printing (see Suzuki at pg. 2, para. 8, teaching the formation of a paste containing a mixed powder and a polymer composition; also see Example polymer composition 3 of Suzuki at Table 1, which is reproduced at pg. 10 of the machine translation, and Suzuki at pg. 7, para. 4, teaching the formation of a paste made by combining a mixed powder and the polymer composition from Table 1 (i.e., polymer composition 3); the paste of Suzuki corresponds to the claimed “slurry;” also see Suzuki at pg. 7, para. 6-8, teaching examples where the paste is applied to a Nd-Fe-containing R-T-B system (i.e., a neodymium iron boron system) via screen printing; thus, Suzuki necessarily teaches their paste to suitably be used for neodymium iron boron screen printing), comprising:
• a rare earth powder, an organic solvent, a resin, a dispersant, and/or a leveling agent (see Example 3 of Suzuki at Table 1 at pg. 10, and Suzuki at pg. 7, para. 4, teaching the formation of a paste containing a mixed powder of Nd70Cu30 alloy particles and TbF3 particles and a polymer composition from Table 1 (i.e., example polymer composition 3) at a ratio of 8:2 (mixed powder:polymer composition); the Nd70Cu30 alloy particles and TbF3 particles collectively correspond to the claimed “rare earth powder;” polymer composition 3 further contains a base oil A, which contains 2,2,4-trimethyl-1,3-pentanediol monoisobutyrate, i.e., texanol (see Suzuki at pg. 6, para. 10); 2,2,4-trimethyl-1,3-pentanediol monoisobutyrate corresponds to the claimed “organic solvent;” polymer composition 3 further contains a combination of binder A and binder C, where binder A is an ethylcellulose solution and binder C is rosin (see Suzuki at pg. 7, para. 1-3); both the ethylcellulose and the rosin correspond to the claimed “resin;” polymer composition 3 further contains succinimide as a dispersant, see Suzuki at pg. 7, para. 3), weight percentages of which are as follows:
• rare earth powder 50%-90% (see Example 3 of Suzuki at Table 1 at pg. 10, and Suzuki at pg. 7, para. 4, teaching the formation of a paste containing a mixed powder of Nd70Cu30 alloy particles and TbF3 particles and a polymer composition from Table 1 (i.e., example polymer composition 3) at a ratio of 8:2 (mixed powder:polymer composition); accordingly, the paste of Suzuki contains 80% of rare earth powder, which falls within the claimed range);
• organic solvent 8%-50% (see Example 3 of Suzuki at Table 1 at pg. 10, and Suzuki at pg. 7, para. 4, teaching the polymer composition portion to make up only 20% of the entire paste (i.e., a ratio of 8:2 of mixed powder:polymer composition indicate 20% of the paste is composed of the polymer composition); also see example polymer composition 3 of Suzuki at Table 1 at pg. 10, teaching an example polymer composition comprising 92 mass% of base oil A, or 2,2,4-trimethyl-1,3-pentanediol monoisobutyrate; given that 20% of the polymer composition is used in the final paste, the content of 2,2,4-trimethyl-1,3-pentanediol monoisobutyrate in the final paste is necessarily 18.4% (92% in polymer composition 3 • 0.2 ratio in total paste = 18.4% in total paste); also see Suzuki at pg. 7, para. 1, teaching the binder A as containing a 5% ethyl cellulose solution, and thus, necessarily 95% of solvent in the binder; given that polymer composition 3 contains 8% of the binder A, and further given that 95% of the binder A is composed of solvent, and further given that 20% of the polymer composition is used in the final paste, the content of the solvent sourced from the binder A is 1.52% (8% binder A in polymer composition • 0.95 ratio of solvent in binder A • 0.2 ratio in total paste = 1.52% solvent sourced from binder A in the paste); accordingly, the total solvent content in the final paste is 19.92% (18.4% of 2,2,4-trimethyl-1,3-pentanediol monoisobutyrate + 1.52% solvent from the binder A = 19.92% total solvent); this value of 19.92% falls within the claimed range);
• resin 0.4%-6% (see Example 3 of Suzuki at Table 1 at pg. 10, and Suzuki at pg. 7, para. 4, teaching the polymer composition 3 as containing 8% of a 5% ethyl cellulose solution; given that 20% of the polymer composition is used in the final paste, the content of the ethyl cellulose in the final paste is 0.08% (8% binder A in polymer composition • 0.05 ratio of ethyl cellulose in binder A • 0.2 ratio in total paste = 0.08% ethyl cellulose in the paste); polymer composition 3 further contains 2% of binder C, or rosin; thus, given that 20% of the polymer composition is used in the final paste, the content of the rosin in the final paste is 0.4% (2% binder C in polymer composition • 0.2 ratio in total paste = 0.4% binder C in the paste); accordingly, the total content of resin (i.e., ethyl cellulose + the binder) is equal to 0.48% (0.08% of ethyl cellulose + 0.4% of rosin = 0.48% total resin in final paste); this value of 0.48% falls within the claimed range);
• dispersant 0%-5% (see Example 3 of Suzuki at Table 1 at pg. 10, and Suzuki at pg. 7, para. 4, teaching the polymer composition 3 as containing 1% of dispersant; thus, given that 20% of the polymer composition is used in the final paste, the content of the dispersant in the final paste is 0.2% (1% dispersant in polymer composition • 0.2 ratio in total paste = 0.2% dispersant in the paste); this value of 0.2% falls within the claimed range); and
• leveling agent 0%-3% (the examples of Suzuki do not contain a leveling agent, and thus, the leveling agent is present in an amount of 0%, which falls within the claimed range).
Regarding claims 2-3, see Example 3 of Suzuki at Table 1 at pg. 10, and Suzuki at pg. 7, para. 4, teaching the formation of a paste containing a mixed powder of Nd70Cu30 alloy particles and TbF3 particles; Nd70Cu30 alloy particles is an alloy powder containing a light rare earth element (Nd), and meets the formula RexMy, where Re is Nd, x is 70%, M is Cu, and y is 30%; further, TbF3 particles is a heavy rare earth powder of a fluoride, and contains Tb.
Regarding claim 5, 2,2,4-trimethyl-1,3-pentanediol monoisobutyrate is another term for texanol.
Regarding claim 6, see Example 3 of Suzuki at Table 1 at pg. 10, and Suzuki at pg. 7, para. 4, teaching the polymer composition 3 as containing binder A, which contains ethyl cellulose.
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.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Suzuki.
Regarding claim 4, see Suzuki at pg. 7, para. 4, teaching the particle size of the Nd70Cu30 alloy particles to range from 150 µm or less, and the particle size of the TbF3 particles to range from 100 µm or less; accordingly, Suzuki necessarily teaches a particle size range that encompasses a D50 of < 2 µm (e.g., a particle size of 1 µm necessarily satisfies a D50 of < 2 µm); these ranges overlap the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Masuzawa (JP-2021093448-A), with reference to the included machine translation (hereinafter referred to as “Masuzawa”).
Regarding claim 1, Masuzawa teaches an organic slurry for neodymium iron boron screen printing (see Masuzawa at pg. 4, last two paragraphs and pg. 12, para. 3, teaching a paint which may be adhered to a magnet base material; also see Masuzawa at pg. 1, para. 1, teaching the magnet may be an R-T-B magnet, such as Neodymium-Iron-Boron; also see Masuzawa at pg. 8, para. 1, teaching the paint may be used in screen printing; the paint of Masuzawa corresponds to the claimed “slurry”), comprising
• a rare earth powder, an organic solvent, a resin, a dispersant, and/or a leveling agent (see Masuzawa at pg. 4, para. 3, teaching the paint as containing a diffusing material, which is a chemical substance containing a heavy rare earth element, a binder, and a solvent; also see Masuzawa at pg. 12, para. 3, teaching the diffusing material may be a powder), weight percentages of which are as follows:
• rare earth powder 50%-90% (see Masuzawa at pg. 13, para. 3, teaching the content of the diffusing material (i.e., the rare earth powder) in the paint to range from 40 to 85 mass%; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05);
• organic solvent 8%-50% (see Masuzawa at pg. 13, para. 3, teaching the content of the solvent in the paint to range from 10 to 59 mass%; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05);
• resin 0.4%-6% (see Masuzawa at pg. 13, para. 3, teaching the content of the binder (i.e., the resin) in the paint to range from 1 to 15 mass%; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05);
• dispersant 0%-5% (Masuzawa does not necessitate the presence of a dispersant, and thus, necessarily teaches embodiments where the content is 0%; also see the claim interpretation set forth in the 112(b) rejection of claim 1 above); and
• leveling agent 0%-3% (Masuzawa does not necessitate the presence of a leveling agent, and thus, necessarily teaches embodiments where the content is 0%; also see the claim interpretation set forth in the 112(b) rejection of claim 1 above).
Regarding claims 2-3, see Masuzawa at pg. 13, para. 2, teaching the diffusing material may be a hydride of a heavy rare earth element, such as TbH3; since claims 2-3 do not necessitate the presence of an alloy powder, Masuzawa necessarily reads on claim 3.
Regarding claim 4, see Masuzawa at pg. 12, para. 3, teaching the diameter D50 of the
diffusing material to range from 0.5 µm or more and 15 µm or less; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claims 5-6, see Masuzawa at pg. 12, para. 4, teaching the binder may be ethyl cellulose and the solvent may be butyl carbitol.
Regarding claims 7-8, the claims do not necessitate the presence of the leveling agent or the dispersant (see the claim interpretation set forth in the 112(b) rejection of claim 1 above); consequently, Masuzawa necessarily reads on the claims.
Regarding claim 9, see Masuzawa at pg. 13, para. 2, teaching the diffusing material may be a simple substance of Tb, i.e., a pure heavy rare earth metal powder; also see Masuzawa at pg. 12, para. 4, teaching the binder may be ethyl cellulose and the solvent may be butyl carbitol; also see the concentrations from the claim 1 rejection above, which overlap the claim 9 concentrations, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 10, see Masuzawa at pg. 13, para. 2, teaching the diffusing material may be an alloy containing a heavy rare earth element, such as an alloy composed of Tb and Fe; also see Masuzawa at pg. 12, para. 4, teaching the binder may be ethyl cellulose and the solvent may be butyl carbitol; also see the concentrations from the claim 1 rejection above, which overlap the claim 10 concentrations, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 11, see Masuzawa at pg. 13, para. 2, teaching the diffusing material may be a hydride of a heavy rare earth element, such as TbH3; also see Masuzawa at pg. 12, para. 4, teaching the binder may be ethyl cellulose and the solvent may be butyl carbitol; also see the concentrations from the claim 1 rejection above, which overlap the claim 11 concentrations, establishing a prima facie case of obviousness, see MPEP § 2144.05.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 10, and 11 of U.S. Patent Application No. 18/624,935 (see claim set dated 08/03/2026) (hereinafter referred to as ‘935).
With respect to instant claims 1-11, although the claims at issue are not identical, they are not patentably distinct because instant claim 1 is met by claim 1 of ‘935; instant claims 2-8 are met by claims 2-6 of ‘935 (note that the instantly claimed dispersant and leveling agent are optional, and thus, instant claims 7 and 8 are necessarily met by ‘935); instant claim 9 is met by claim 10 of ‘935; instant claim 10 is met by claim 11 of ‘935; and instant claim 11 is met by claims 1, 2, 5, and 6 of ‘935.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Tran et al. (US-20180102198-A1) teach a thick-film paste composition (see Tran at Abstract).
Kuniyoshi (US-9415444-B2) teach a method for producing a sintered R-T-B based magnet (see Kuniyoshi at Abstract).
Gao et al. (US-20040001973-A1) teach a radiation curable composition for in-line printing (see Gao at Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
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