DETAILED ACTION
Claims 1-15 are pending, and claims 1-3 and 6-7 are currently under review.
Claims 4-5 and 8-15 are withdrawn.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of group I and the species of Ge in the reply filed on 6/08/2026 is acknowledged. The traversal is on the ground(s) that there is no search burden. This is not found persuasive because a search burden exists as explained in the previous restriction requirement. Specifically, the inventions are classified in separate CPC classifications and the species are mutually exclusive.
The requirement is still deemed proper and is therefore made FINAL.
Claims 4-5 and 8-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/08/2026.
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 7 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. Claims 3 and 7 recite the term “low temperature phase”, which is indefinite because “low” is a relative term of degree that is not further explained in the specification or claims. It is unclear whether “low” requires some particular temperature value, or whether the claimed term merely refers to some general, arbitrary category of magnetic phases, or something else entirely. The examiner interprets the instant claim to be met by any phase that forms at temperatures recognized to be “low” or any phase formed by the processing method of the instant application as recognized by one of ordinary skill.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tavoosi et al. (2022, Investigating the effect of B, Sb, and Ge elements on the structural and magnetic properties of rare earth elements-free permanent MnBi magnets).
Regarding claim 1, Tavoosi et al. discloses a permanent magnet material having a composition of Mn45Bi50Ge5 [abstract, fig.3]. The examiner considers the aforementioned magnet material of Tavoosi et al. to be MnBi-based (ie. majority of Mn and Bi). Tavoosi et al. further depicts XRD patterns corresponding to the aforementioned composition, which one of ordinary skill would recognize to mean that the crystal grain includes the aforementioned composition.
Regarding claim 3, Tavoosi et al. discloses the magnet of claim 1 (see previous). Tavoosi et al. does not expressly teach a low temperature phase as claimed. However, Tavoosi et al. discloses an anticipatory composition as explained above.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-3 and 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2021/0183547) in view of Ma et al. (CN111575532, machine translation referred to herein).
Regarding claim 1, Lee et al. discloses a Mn-Bi-Sb-based magnetic substance wherein Bi is substituted with Sb in the crystal structure (ie. phase) and Sb can be included in an amount of up to 3 atomic percent [abstract, 0061].
Lee et al. does not expressly teach that M includes Ge as claimed. Ma et al. discloses that it is known to substitute Ge for Sb in MnBi-based magnets to achieve good magnetic properties [0005]. Therefore, it would have been obvious to one of ordinary skill to modify the composition of Lee et al. by replacing Sb for Ge for the aforementioned benefit. Alternatively, the prior art expressly teaches that Ge and Sb are art-recognized equivalent inclusion elements for the same purpose of the scope of MnBi-based magnets, such that substitution of one known, art-recognized equivalent element for another in the prior art is prima facie obvious. See MPEP 2143(I)(B) & MPEP 2144.06. The examiner notes that the suggested disclosure of the aforementioned prior art combination would result in Ge replacing the Sb of Lee et al., which meets the claimed M element and overlaps with the claimed range. See MPEP 2144.05(I).
Regarding claim 2, the aforementioned prior art discloses the magnet of claim 1 (see previous). Lee et al. further teaches that Mn is included in an amount of 48 to 56 atomic percent with Bi as a remaining amount out of 100, which overlaps with the claimed ranges [0061]. See MPEP 2144.05(I).
Regarding claim 3, the aforementioned prior art discloses the magnet of claim 1 (see previous). Lee et al. further teaches about 50% or more of a low temperature phase [0024].
Regarding claim 6, the aforementioned prior art discloses the magnet of claim 1 (see previous). As stated above, the suggested disclosure of the prior art combination suggests up to 3 atomic percent Ge, which further overlaps with the claimed ranges. See MPEP 2144.05(I).
Regarding claim 7, the aforementioned prior art discloses the magnet of claim 1 (see previous). Lee et al. further teaches a saturation magnetization of 38 emu/g or greater [0094]. Alternatively, the aforementioned prior art does not expressly teach a saturation magnetization at the conditions as claimed. However, the examiner submits that overlapping magnetic properties would have naturally flowed from the suggested prior art combination. One of ordinary skill would readily recognize that magnetic properties are directly affected by controlling magnet composition and processing. The aforementioned prior art already teaches an overlapping composition as explained above. Lee et al. further teaches manufacturing the magnet through melting and casting, homogenization at 270 to 330 degrees C for 12 to 48 hours, and powder forming [0013, 0064]. This is substantially similar to the processing of the instant application of melting and casting, homogenization at 280 to 320 degrees C for 48 hours, and powder forming [0085 instant spec.]. Since the prior art discloses an overlapping composition and substantially similar method of manufacture as explained above, substantially similar overlapping magnetic properties relative to those as claimed would have naturally flowed. See MPEP 2112 & MPEP 2144.05(I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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