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 1-12, without traverse in the reply filed on 08/03/2026 is acknowledged.
Claim 13 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 08/03/2026.
Claim Objections
Claim 3 is objected to because of the following informality:
• Claim 3 should be amended as follows: “RExMy by” (i.e., a space should be added).
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).
For the purposes of examination, the term “gradient volatilization rate” as used throughout the claims will be given its broadest reasonable interpretation consistent with the specification - any change in volatilization rate across any dimension, including across time and temperature.
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 1-12 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 an anti-settling agent, and/or a synergist.” 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, the anti-settling agent, and the synergist. 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, the anti-settling agent, and the synergist grouping. 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 the dispersant, the anti-settling agent, and the synergist to be optional, i.e., none have to be present (such an interpretation is supported in Example 8 of Applicant’s specification at para. 0152, which lacks a dispersant, an anti-settling agent, and a synergist). 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,
In claims 9-12, the trademark/trade name “BYK-SYNERGIST” is present. 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 synergist rather than the synergist compound itself and, accordingly, the identification/description is indefinite. To correct, the Examiner suggests deleting any mention of BYK-SYNERGIST from the claims. For the purposes of examination, the Examiner is interpreting a composition that contains BYK-SYNERGIST 2105 or BYK-SYENRGIST 2100 to read on the claims.
In claims 10-12, the term “polyethylene glycol” lacks sufficient antecedent basis in the claims. There is no previous mention of a polyethylene glycol in the claims, and it is unclear whether the polyethylene glycol is meant to read on the previously claimed “dispersant” from claim 7 or not. For the purposes of examination, the Examiner is interpreting the claimed polyethylene glycol to read on the claimed dispersant.
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.
Claims 1-3 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 (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;”), comprising:
• a rare earth powder, an organic solvent, a resin, a dispersant, and/or an anti-settling agent, and/or a synergist (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 rosin) 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
• anti-settling 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); and
• synergist 0%-3% (the examples of Suzuki do not contain a synergist, and thus, the synergist is present in an amount of 0%, which falls within the claimed range; alternatively, even if the “coupling agent” functions as a synergist, its concentration in the final mixed paste is 0.8%, which still falls within the claimed range (4% synergist in polymer composition • 0.2 ratio of polymer composition in overall paste = 0.8% synergist in total paste)).
With respect to the limitation “with a gradient volatilization rate,” it is the Examiner’s position that the paste of Suzuki meets the claimed limitation. As indicated in the “Claim Interpretation” section above, the Examiner is interpreting the claimed “gradient volatilization rate” to broadly refer to any composition with a change in volatilization rate across any dimension, e.g., time or temperature. Here, it necessarily follows that the paste of Suzuki has a gradient volatilization rate over time and temperature. With respect to time, as the solvent evaporates over time, the concentration of the solids in the slurry increase with respect to the overall slurry. This results in the overall evaporation rate of the slurry to decrease due to the increased solids concentration. Consequently, the paste of Suzuki necessarily demonstrates a “gradient volatilization rate” over time. Further, with respect to temperature, the kinetic energy of the particles in the paste increases with increasing temperature, thus necessarily increasing the volatilization rate. Accordingly, the paste of Suzuki necessarily demonstrates a “gradient volatilization rate” over a change in temperature. As such, the paste of Suzuki necessarily reads on the claimed limitation.
Moreover, the claimed “gradient volatilization rate” is notably a property of the claimed slurry. Since the paste of Suzuki is the same as that claimed, it necessarily follows that it demonstrates the claimed “gradient volatilization rate.” Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II).
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.
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 1-4 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 (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; the paint of Masuzawa corresponds to the claimed “organic slurry”), comprising
• a rare earth powder, an organic solvent, a resin, a dispersant, and/or an anti-settling agent, and/or a synergist (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
• anti-settling agent 0%-3% (Masuzawa does not necessitate the presence of an anti-settling 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); and
• synergist 0%-3% (Masuzawa does not necessitate the presence of a synergist, 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).
With respect to the limitation “with a gradient volatilization rate,” it is the Examiner’s position that the paint of Masuzawa meets the claimed limitation. As indicated in the “Claim Interpretation” section above, the Examiner is interpreting the claimed “gradient volatilization rate” to broadly refer to any composition with a change in volatilization rate across any dimension, e.g., time or temperature. Here, it necessarily follows that the paint of Masuzawa has a gradient volatilization rate over time and temperature. With respect to time, as the solvent evaporates over time, the concentration of the solids in the slurry increase with respect to the overall slurry. This results in the overall evaporation rate of the slurry to decrease due to the increased solids concentration. Consequently, the paint of Masuzawa necessarily demonstrates a “gradient volatilization rate” over time. Further, with respect to temperature, the kinetic energy of the particles in the paint increases with increasing temperature, thus necessarily increasing the volatilization rate. Accordingly, the paint of Masuzawa necessarily demonstrates a “gradient volatilization rate” over a change in temperature. As such, the paint of Masuzawa necessarily reads on the claimed limitation.
Moreover, the claimed “gradient volatilization rate” is notably a property of the claimed slurry. Since the paint of Masuzawa is the same as that claimed, it necessarily follows that it demonstrates the claimed “gradient volatilization rate.” Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II).
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.
Claims 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Masuzawa, as applied to claim 2 above, and further in view of Mori et al. (JP-2011159919-A), with reference to the included machine translation (hereinafter referred to as “Mori”).
Regarding claim 5, while Masuzawa teaches the slurry according to claim 2 outlined above, Masuzawa fails to explicitly teach the organic solvent as comprising one or two or more of propylene glycol phenyl ether, DBE, methyl isobutyl ketone, and propylene glycol methyl ether acetate.
However, Mori teaches the preparation of a slurry containing a diffusing material dispersed in a dispersing medium (see Mori at pg. 4, para. 3). Mori further teaches the diffusing material to preferably be a heavy rare earth element, such as Tb, or a hydride of a rare earth compound (see Mori at pg. 3, para. 8). Moreover, Mori teaches the solvent for the dispersion medium may include organic solvents, such as xylene or propylene glycol monomethyl ether acetate (see Mori at pg. 5, para. 2).
Masuzawa teaches their paint as containing a “diffusing material” containing a rare earth powder, as well as a solvent, such as xylene (see Masuzawa at pg. 12, para. 3-4).
In this case, propylene glycol monomethyl ether acetate is a known material suitable for use as a solvent in a slurry containing a rare heavy earth powder (as exemplified by Mori at pg. 5, para. 2), and thus its use in the paint of Masuzawa would yield a reasonable expectation of success.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use propylene glycol monomethyl ether acetate as the solvent in the paint of Masuzawa, as the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07.
Regarding claim 6, see Masuzawa at pg. 12, para. 4, teaching the binder may be ethyl cellulose.
Regarding claims 7-9, the claims do not necessitate the presence of the dispersant, the anti-settling agent, or the synergist (see the claim interpretation set forth in the 112(b) rejection of claim 1 above); consequently, Masuzawa necessarily reads on the claims.
Regarding claim 10, 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; also see the claim 5 modification above, showing the use of propylene glycol methyl ether acetate as the solvent in Masuzawa to be obvious; 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 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; also see the claim 5 modification above, showing the use of propylene glycol methyl ether acetate as the solvent in Masuzawa to be obvious; 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.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Masuzawa in view of Mori, as applied to claim 8 above, and further in view of Baba et al. (US-20130026870-A1) (hereinafter referred to as “Baba”).
Regarding claim 12, while Masuzawa in view of Mori teaches the slurry according to claim 8 outlined above, Masuzawa fails to explicitly teach the resin as being one or two or more of vinyl chloride-vinyl acetate copolymer resin, polyester resin, and polyurethane.
However, Baba teaches a rare earth sintered magnet (see Baba at para. 0028). Baba further teaches a slurry to comprise a heavy rare earth compound containing a heavy rare earth element, a binder, and a solvent (see Baba at para. 0052). Moreover, Baba taches the rare earth compound may include a hydride of a heavy rare earth compound, such as Dy or Tb (see Baba at para. 0052). Furthermore, Baba teaches the binder may include an acrylic resin or a urethane resin (see Baba at para. 0055).
Masuzawa teaches their paint may include a binder, such as an acrylic binder (see Masuzawa at pg. 12, last paragraph).
In this case, a urethane (i.e., polyurethane) resin is a known material suitable for use as a binder in a slurry containing a rare heavy earth powder (as exemplified by Baba at para. 0028 and 0052), and thus its use in the slurry of Masuzawa would yield a reasonable expectation of success.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use a urethane (i.e., polyurethane) as the binder resin in the paint of Masuzawa, as the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07.
Following the above modification, the paint of Masuzawa reads on the claim (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 the claim 5 modification above, showing the use of propylene glycol methyl ether acetate as the solvent in Masuzawa to be obvious; also see the concentrations from the claim 1 rejection above, which overlap the claim 12 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 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9, and 10 of U.S. Patent Application No. 18/621,650 (see claim set dated 08/04/2026) (hereinafter referred to as ‘650).
With respect to instant claims 1-12, although the claims at issue are not identical, they are not patentably distinct because instant claim 1 is met by claim 1 of ‘650; instant claims 2-6 are met by claims 2-6 of ‘650; instant claim 7 is met by claim 10 of ‘650 (note that claim 10 of ‘650 claims the presence of polyethylene amide); instant claims 8-9 are met by claims 2-6 and 10 of ‘650 (note that the instantly claimed anti-settling agent and synergist are optional, and thus, instant claims 8 and 9 are necessarily met by ‘650); instant claim 10 is met by claim 9 of ‘650; instant claim 11 is met by claim 10 of ‘650; and instant claim 12 is met by claims 1, 2, 5, and 6 of ‘650.
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).
Zhang et al. (CN-109887696-A), with reference to the included machine translation (hereinafter referred to as “Zhang”) teach a rare earth permanent magnet (see Zhang 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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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
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