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 .
Claim Status
Claims 1-21 are currently pending.
Election/Restrictions
Applicant's election with traverse of Group I, Claims 1-16, in the reply filed on 8/17/2026 is acknowledged. The traversal is on the ground(s) that there would not be a serious search and examination burden. This is not found persuasive because the claims are drawn to different statutory classes of invention, having different classification, and requiring different fields of search and therefore, resulting in a serious search and examination burden.
The requirement is still deemed proper and is therefore made FINAL.
Claims 17-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 8/17/2026.
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.
Claim(s) 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kudo (US 2020/0303101) in view of Hidaka (US 2019/0080827).
With respect to Claim 1, the claim is drawn to an “R-T-B based permanent magnet.” The claim does not define “R” or “T,” but the instant specification defines “’R’ represents a rare earth element, ‘T’ represents a transition metal element, and ‘B’ represents boron.” (para. 72 of PB Pub.). Therefore, the claim is interpreted in light of the specifications in accordance with the above-recited passage.
Kudo teaches an R-T-B based permanent magnet comprising C and Zr, wherein the R-T-B based permanent magnet comprises a main phase and a grain boundary, wherein the permanent magnet has a composition comprising, in mass%, R: 29.5-33.0%, B: 0.7-0.95%, Al: 0.03-0.60%, Cu: 0.01-1.50%, Co: 0-3%, Ga: 0.1-1.0%, C: 0.05-0.30%, O: 0.03-0.40%, Zr: 0.0-1.5%, balance Fe and other elements and wherein the magnet comprises a ZrC phase with a size of 0.05 microns or less present in the grain boundary. (para. 11-15, 38, 58, 105). Thus, Kudo teaches a R-T-B based permanent magnet having a composition overlapping the instantly claimed compositional ranges, comprising a main phase and a grain boundary, and containing a ZrC phase in the grain boundary. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Kudo does not teach the present of a ZrB2 phase and therefore, may be interpreted to teach a S(C) / (S(B) +S(C)) ratio of 100%, meeting the claimed range.
Alternatively, Hidaka teaches an R-T-B based permanent magnet comprising C and Zr, wherein the R-T-B based permanent magnet comprises a main phase and a grain boundary, and wherein the permanent magnet comprises a ZrC phase present in the grain boundary. (para. 6-30, 59-65). Hidaka further teaches wherein the R-T-B based permanent magnet is configured to contain 0.5% or less of a ZrB2 phase and preferably does not contain a ZrB2 phase. (para. 94). Hidaka teaches that by optimizing the grain boundary microstructure, a magnet with improved magnetic properties, strength, and sintering stability is obtained. (para. 6). Thus, Hidaka teaches controlling the grain boundary Zr-containing phases in a R-T-B based permanent magnet to comprise a desired content of ZrC and minimize or eliminate ZrB2, and thus, to achieve a ratio of S(C) / (S(B) +S(C)) of up to 100%, meeting the instantly claimed range.
It would have been obvious to one of ordinary skill in the art to modify the R-T-B based permanent magnet of Kudo to minimize ZrB2 phase in the grain boundary and thereby achieve a S(C) / (S(B) +S(C)) of up to 100%, as taught by Hidaka, in order to obtain a magnet with improved magnetic properties, strength, and/or sintering stability. See also MPEP § 2144.05.
Finally, with respect to “Zr1” drawn to the content of Zr in the center portion of the main phase grain, the magnet of Kudo in view of Hidaka comprises a magnet with a substantially overlapping Zr content in the overall magnet composition a tailored content of a ZrC phase in the grain boundary (see above) and therefore, contains a disproportionate content of the Zr in the grain boundary relative to the main phase grains. Accordingly, the R-T-B based permanent magnet of Kudo in view of Hidaka is deemed to teach a Zr content in the main phase grains less than the overall compositional content (0-1.5 mass%) and overlapping the instantly claimed range. It would have been obvious to one of ordinary skill in the art to select a ZrC grain boundary phase content and resulting Zr content in the main phase grain from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 2, Kudo in view of Hidaka teaches controlling a ZrB2 phase to 0.5% or less, preferably, zero. (see rejection of claim 1 above; Hidaka, para. 94). Accordingly, it would have been obvious to one of ordinary It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 3, Kudo teaches wherein the ZrC phase has a grain size of 0.05 microns or less, deemed to fall within the claimed range. (para. 105). Additionally, the recited grain size of ZrB2 phase is contingent on the magnet containing a ZrB2 phase; however, the claims do not require a content of a ZrB2 phase. There, limitation drawn to the ZrB2 grain size is deemed optional. “Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure.” MPEP 2111.04.
With respect to Claim 4, Kudo teaches wherein the R is a heavy rare earth element. (para. 48).
With respect to Claims 5-8, Kudo teaches wherein the R-T-B based permanent magnet comprises contents of Ga, Al, rare earth element, and B overlapping each of the respectively claimed ranges. (see rejection of claim 1 above). It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 9, the claim is drawn to the same limitations as claim 1 above, differing in that it requires a ratio Zr1/Zr2 drawn to the Zr concentration in the center portion of the main phase grain relative to the Zr concentration of a peripheral portion of the main phase grain. It is noted that a value of 1 would correspond to uniform concentration across the main phase grain.
Kudo in view of Hidaka teach a R-T-B based permanent magnet meeting each of the claim limitations of claim 1, the above rejection incorporated here by reference. Furthermore, with respect to the Zr1/Zr2 ratio, one of ordinary skill in the art would recognize that the composition of one phase in a multiphase structure would be expected, in the absence of a contrary teaching, to necessarily have a composition uniform or substantially uniform across the center and peripheral portions of the grain and therefore, falling within or overlapping the instantly claimed range. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Moreover, with respect to Claims 1 and 9, Kudo in view of Hidaka teach a permanent magnet comprising substantially the same composition, structure, and made by a method comprising molding raw material in a magnetic field, including a two-alloy raw material process, sintering and two step aging comprising a first aging step at 700-940°C and second aging step at a temperature of 450-570C°. (para. 72-78). The instant specification discloses a method of making comprising molding raw material in a magnetic field including using a two alloy raw material process, sintering, and two step aging, wherein the first aging step may be conducted at a temperature of 800-900°C and second aging step at a temperature of 450-550°C. (para. 128, 140-148 of PG Pub.). Thus, in addition to having substantially the composition and structure, the prior art teaches a magnet made by a method having substantially the same steps and processing parameters. Accordingly, the R-T-B based permanent magnet of Kudo in view of Hidaka would necessarily be expected to result in the Zr1 and Zr1/Zr2 values of Claims 1 and 9, respectively.
"Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 195 USPQ 430, 433 (CCPA 1977). Thus, the burden is shifted to the applicant to prove that the product of the prior art does not necessarily or inherently possess the characteristics attributed to the claimed product. See In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."); MPEP 2112.01. Therefore, the prima facie case can only be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
With respect to Claim 10, Kudo in view of Hidaka teaches controlling a ZrB2 phase to 0.5% or less, preferably, zero. (see rejection of claims 1-2 and 9 above; Hidaka, para. 94). Accordingly, it would have been obvious to one of ordinary It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 11, Kudo teaches wherein the ZrC phase has a grain size of 0.05 microns or less, deemed to fall within the claimed range. (para. 105). Additionally, the recited grain size of ZrB2 phase is contingent on the magnet containing a ZrB2 phase; however, the claims do not require a content of a ZrB2 phase. There, limitation drawn to the ZrB2 grain size is deemed optional. “Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure.” MPEP 2111.04.
With respect to Claim 12, Kudo teaches wherein the R is a heavy rare earth element. (para. 48).
With respect to Claims 13-16, Kudo teaches wherein the R-T-B based permanent magnet comprises contents of Ga, Al, rare earth element, and B overlapping each of the respectively claimed ranges. (see rejection of claims 1, 5-8, and 9 above). It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. EP1675133, drawn to an R-T-B based permanent magnet comprising ZrC phase in the grain boundary, but also comprising a Zr-B based phase.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
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, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN A HEVEY/Primary Examiner, Art Unit 1735
Prosecution Insights