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 3 and 9 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.
Claim 3, which depends from claim 1, teaches the second aqueous solution is produced by adding the second metallic or semi-metallic element compound to the first aqueous solution. Claim 1 requires the second aqueous solution to contain the second metallic or semi-metallic element compound and a second phosphate compound. There is no indication in either of claim 1 or 3 that the second phosphate compound can be the same as the first phosphate compound. In view of this, claim 3 is indefinite since there does not appear to be a second phosphate compound present in the aqueous solution produced by the claimed process. In addition, claim 3 is indefinite since it is unclear if the second coating further includes the first metallic or semi-metallic element.
Claim 9 is directed to a method for producing a molded product but there is no molding step set forth in the claim. Thus the claim is indefinite.
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, 2, 4-6, and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 9, 11, and 12 of copending Application No. 18/633,804 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the process and coated magnetic material claimed in the copending application suggest the process and coated magnetic material claimed in this application.
The claimed process of copending Application No. 18/633,804 is coating procedure comprising a primary coating step of mixing a soft magnetic material and an aqueous solution containing a phosphate compound and a rare earth metal compound to from a first coating containing a rare-earth metal containing phosphorous compound on the surface of the soft magnetic material (clm 1) and then performing a secondary coating process comprising mixing an aqueous solution containing a phosphate compound and a non-rare earth metal element compound with the coated magnetic material resulting from the primary coating step to form a second coating containing a phosphate and a non-rare earth metal element on the surface of the coated magnetic material resulting from the primary coating step (clm 9), wherein an inorganic acid is added during the secondary coating step to adjust the pH to at least 1 but not high than 4.5 (clm 11). Since and acid is added, it is clear that the pH to which the secondary coating process step is adjusted must be lower than the pH of the aqueous solution containing a phosphate compound and a rare earth compound. Paragraph [0022] of copending Application No. 18/633,804 teaches the phosphorous compound of the first coating can be a phosphor. Copending claim 3 teaches the primary coating step can be the same as that of claim 5 of this application. The non-rare earth metal element can be any known non-rare earth metal element, which includes those of claim 8. Thus the process of copending claims 1, 3, 9 and 11 suggest the process of claims 1, 2, 4-6 and 8 in this application.
Copending claim 12 teaches the method of producing a molded product comprising obtaining a coated magnetic material by the method of claim 1 and heating the coated magnetic material. One of ordinary skill in the art would realize that it would have been obvious to perform the process of claim 12 using a coated magnetic material produced by any of the processes in the copending application. This means that one of ordinary skill in the art would have found it obvious to producing a molded product comprising obtaining a coated magnetic material by the method of claim 9 and heating the coated magnetic material. This is process of claim 9 in this application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claim 10 is allowed.
Claims 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
There is no teaching or suggestion in the cited art of record of producing coated magnetic particles by a primary coating step of mixing a soft magnetic material and an aqueous solution containing a first phosphate compound and a first metal or semi-metal compound to from a first coating containing a first metal or semi-metal and phosphate containing compound on the surface of the soft magnetic material and then performing a secondary coating process comprising mixing an aqueous solution containing a second phosphate compound and a second metal or semi-metal element compound with the coated magnetic material resulting from the primary coating step to form a second coating containing a phosphate and a second metal or semi-metal element on the surface of the coated magnetic material resulting from the primary coating step, wherein the first metal or semi-metal is at least one of Mo, W, Zn, Fe, Hf, Ti, Zr, Ni, Ca, Ba, Na, Cr, V, K, Mn, Mg, Si and Ta.
There is no teaching or suggestion in the cited art of record of a coated magnetic material comprising a soft magnetic material having a two layer coating on the surface thereof, wherein the first layer, or region, contains a first metal M and phosphorous and the second layer, or region, contains a second metal M and phosphorous, wherein each of the first metal M and the second metal M is at least one of Mo, W, Zn, Fe, Hf, Ti, Zr, Ni, Ca, Ba, Na, Cr, V, K, Mn, Mg, Si and Ta; and an average amount of the first metal M in the first region is less than an second metal M in the second region.
Conclusion
JP 464768 is cited as of interest since it teaches a coated magnetic material comprising a soft magnetic material having a two layer coating on the surface thereof, wherein the first layer, contains iron and phosphorous and the second layer contains a second metal M and phosphorous. There is no teaching that the average amount of iron in the first layer is less than the average amount of the second metal in the second layer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to C. MELISSA KOSLOW whose telephone number is (571)272-1371. The examiner can normally be reached Mon-Tues:7:45-3:45 EST;Thurs-Fri:6:30-2:00EST; and Wed:7:45-2:00EST.
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/C Melissa Koslow/Primary Examiner, Art Unit 1734
cmk
7/16/26
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