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
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
WHEN CLAIMS ARE DIRECTED TO MULTIPLE CATEGORIES OF INVENTIONS
As provided in 37 CFR 1.475(b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-2 and 8-10, drawn to a Nd-Fe-B magnet.
Group II, claim(s) 3-7, drawn to method of making the Nd-Fe-B magnet of Group I.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The shared special technical features between Group I and II are the Nd-Fe-B magnet as recited in instant claim 1.
Such shared special technical feature is disclosed by Luo (CN111223624A published on 06/02/2020)
Luo discloses A raw material composition for neodymium iron boron magnets, characterized in that it comprises the following components in mass content: R is Nd: 28-33%; Fe 60-70%, B: 0.9-1.1%, Cu <=0.15% and Zr, Ti and/or Nb <=0.4% (Claim 1).
Hence, the claimed inventions are said to lack unity “a posteriori,” because the special technical feature as required by instant claimed invention is anticipated by or obvious over cited prior art Luo.
During a telephone conversation with Allen Xue on 05/28/2026, a provisional election was made without traverse to prosecute the invention of Group II, claims 3-7. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-2 and 8-10 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Status of Claims
Claims 1-10 are pending. Claims 3-7 are presented for this examination. Claims 1-2 and 8-10 are withdrawn.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 03/21/2024 and 07/22/2025 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 3-7 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 pre-AIA the applicant regards as the invention.
The terms “secondary cooling, “high-temperature melting” and “high-temperature sintering treatment” in claim 3 are relative terms which renders the claim indefinite. The terms “high” and “secondary” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
It is unclear whether recited secondary cooling in claim 3 and recited secondary cooling in claim 4 is considered the same secondary cooling because there is lacks of antecedent basis of secondary cooling of claim 4. Clarification is required.
As a result of rejected claim 3, all dependent claims are also rejected under the same statue.
Claim Interpretations
Instant claim 3 required “for the Nd-Fe-B magnet as claimed in claim 1” is intended use and preamble according to MPEP 2111.02 II.
Because the preamble merely states the purpose or intended use of the invention, rather than a claim limitation, no patentable weight would be given. See MPEP 2111.02 II or if a Prior Art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. Hence, “for the Nd-Fe-B magnet as claimed in claim 1” is not given patentable distinction over prior art.
Instant claims 5-7 recitations after optional term “preferably” are interpreted as optional limitation. Hence, they are not given patentable distinction over prior art.
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.
Claim(s) 3 and 5-7 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Odaka (US20080251159).
As for claims 3, 5-7, Odaka discloses a Nd-Fe-B based magnet production method by bringing a molten alloy into casting and rapid cooling by a rotating chill roller (i.e. quenching roller as required by instant claim 5) of a strip caster [0054][0066], maintaining the rapid cooled alloy for a period of time, secondary cooling the maintained rapid cooled alloy at 10 degree C /s or greater [0076] by bringing the alloy into some cooling member [0076], which meets instant claimed step a) and instant claim 5 cooling devices in other forms, then hydrogen decrepitating the solidified alloy followed by pulverizing the hydrogen decrepitated solidified alloy to fine powder using a jet mill [0083], which meets instant claimed step b) and instant claim 6 required coarse crushing by hydrogen decrepitation and fine crushing by jet milling. Then the fine powder is compacted into a desired shape by using a powder pressing machine under an aligning magnetic field, [0085] which meets instant claimed step c) and followed by sintering within an inert gas atmosphere at 800-1000 degree C, which meet instant claimed step d). Optional, a re-heating process may be carried out at a temperature of 400-900 degree C after the sintering process [0089], which meet instant claim 7 required secondary sintering. Since the primary sintering is 800-1000 degree C and secondary sintering is 400-900 degree C, instant claim 7 required primary cooling and secondary cooling after secondary sintering are expected.
Claim(s) 3 and 6 are rejected under 35 U.S.C. 102( as being anticipated by Luo (CN111223624A)
As for claim 3, Luo discloses a method of making Nd-Fe-B magnet by smelting the raw material in a vacuum melting furnace at 1500 degree C into molten state, casting, and followed by rapid cooling (i.e claimed secondary cooling) to obtain alloy sheet[0162] which reads on claimed step (a), then hydrogen crushing the rapidly cooled alloy into an alloy powder [0163] and airflow milling the alloy powder to obtain fine powder[0164], which reads on claimed step (b), then molding the fine powder in a magnetic field of 1.5T or higher [0165] to obtain a blank, which reads on claimed step (c), and then sintering the blank at 1030-1090 degree C to obtain a sintered body [0166], which reads on claimed step (d).
Hence, Luo anticipated claim 3.
As for claim 6, Luo’s hydrogen crushing reads on claimed coarse crushing. Luo’s airflow milling reads on claimed fine crush.
Claim(s) 3 and 5-7 are rejected under 35 U.S.C. 102( as being anticipated by Yan (CN1688000A)
As for claims 3 and 5-7, Yan discloses a method of making NdFeB magnet by casting process and rapid solidification (i.e. claimed secondary cooling) sheet process[0013], which reads on claimed step (a), following by hydrogen explosion method to coarsely crush the rapidly solidified alloy flakes , then air jet milling to produce powder[0014], which reads on claimed step b). then pressing molding into a blank in a magnetic field of 1.2-2.0T [0017], which reads on claimed c), placing the blank into a high vacuum sintering furnace and sinter at 1050-1125 degree C for 2-4 hours [0018], which reads on claimed d). Hence, instant claim 6 required coarse crushing and fine crushing are met. Since the rapid solidification sheet process is by pouring molten alloy liquid onto the surface of a cooling roller [0029], instant claim 5 required quenching roller is met. Yan explicitly discloses sintering at 1050-1125 degree C for 2-4 hours, then temper at 500-650 degree C for 2-4 hours to obtain the sintered magnet [0027]. Hence, instant claim 7 primary sintering, primary cooling, secondary sintering and secondary cooling are expected.
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) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Odaka.
As for claim 4, the cooling rate of secondary cooling is 10 degree C or more per second (claim 4). Figure 2 also illustrates S2 which solid line in S2 shows temperature gradually falls. If S2 is considered claimed secondary cooling, the interval between S1 (rapid cooling) and S2 (secondary cooling) is expected to be less than 15 seconds.
Hence, less than 15 seconds overlaps instant claimed not more than 10 s. 10 degree C or more per second overlaps claimed 5-20 degree C/second.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Claim(s) 3, 4 and 6 are rejected under 35 103 as being unpatentable over Luo (CN111223624A) in view of Odaka.
As for claim 3 and 6, Luo disclose instant claims 3 and 6 required steps a), b), C) and d) except it does not disclose secondary cooling.
Odaka expressly discloses a secondary cooling as indicated in 102 rejection above for increasing the coercivity effectively by concentrating Dy, Tb and Ho in the main phase. [0027]
Luo desired to increase the coercivity.
Hence, it would have been obvious to one skill in the art, at the time the invention is made, to apply a secondary cooling process of Okada, in the NdFeB magnet manufacturing process of Luo as Okda discloses a secondary cooling advantageously increasing the coercivity.
As for claim 4, Odaka discloses instant claim limitation as indicated in rejection of claim 4 above over Odaka.
Claim(s) 3-7 are rejected under 35 103 as being unpatentable over Yan (CN1688000A) in view of Odaka.
As for claims 3, 5-7, Yan disclose instant claims required steps a), b), C) and d) as indicated in rejection of claims 3 and 5-7 above except it does not disclose secondary cooling.
Odaka expressly discloses a secondary cooling as indicated in 102 rejection above for increasing the coercivity effectively by concentrating Dy, Tb and Ho in the main phase. [0027]
Yan desired to increase the coercivity.
Hence, it would have been obvious to one skill in the art, at the time the invention is made, to apply a secondary cooling process of Okada, in the NdFeB magnet manufacturing process of Yan as Okda discloses a secondary cooling advantageously increasing the coercivity.
As for claim 4, Odaka discloses instant claim limitation as indicated in rejection of claim 4 above over Odaka.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached on (571)272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNY R WU/Primary Examiner, Art Unit 1733
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