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 without traverse of Group I, Claims 1-4 and 10-11 in the reply filed on 07/31/2026 is acknowledged.
Claims 5-9 and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 07/31/2026.
Claims 1-4 and 10-11 are presented for examination on the merits.
Priority
Copies of the certified copies of the priority documents have been received in this National Stage application from the International Bureau.
Information Disclosure Statement
Two (2) information disclosure statements (IDS) were submitted on 03/27/2024 and 07/31/2026. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS are being considered by the examiner.
Claim Interpretation
The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP 2111.03(I). The terms “comprising”, “comprises”, and “containing” in claims 1, 4, and 11 are interpreted as open-ended and therefore the claimed method, magnetic powder, and pretreatment may include additional, unrecited elements.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12027294 B2.
US12027294B2 claims “A method of producing a SmFeN-based rare earth magnet, the method comprising: dispersing a SmFeN-based anisotropic magnetic powder comprising Sm, Fe, La, W, R and N, wherein R is at least one selected from the group consisting of Ti, Ba, and Sr, using a resin-coated metal media or a resin-coated ceramic media in a vibration mill or a ball mill to obtain a dispersed SmFeN-based anisotropic magnetic powder by removing the resin-coated metal media or the resin-coated ceramic media” (emphasis added) in claim 1. Instant claim 1 recites “A method of producing a SmFeN-based anisotropic magnetic powder, the method comprising: preparing a SmFeN-based anisotropic magnetic powder before dispersion containing Sm, Fe, La, W, R, and N, wherein R is at least one selected from the group consisting of Ti, Ba, and Sr; and dispersing the SmFeN-based anisotropic magnetic powder before dispersion using resin-coated metal media or resin-coated ceramic media”. Although the claims at issue are not identical, they are not patentably distinct from each other because US12027294B2 and the instant application both teach a method of preparing a SmFeN-based anisotropic magnetic powder with the same chemical elements and dispersing the magnetic powder using resin-coated metal media or resin-coated ceramic media.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/448689 (reference application).
The copending application claims “A method of producing a rare earth magnetic powder, the method comprising: pretreating by heat-treatment in a reducing-gas-containing atmosphere an oxide containing Sm, Fe, La, W, and R, wherein R is at least one selected from the group consisting of Ti, Ba, and Sr, to obtain a partial oxide; heat-treating the partial oxide in the presence of a reducing agent to obtain alloy particles; nitriding the alloy particles to obtain a nitride; washing the nitride to obtain a SmFeN-based magnetic powder containing Sm, Fe, N, La, W, and R, wherein R is at least one selected from the group consisting of Ti, Ba, and Sr ; heat-treating a mixture comprising the SmFeN-based magnetic powder and a modifier powder containing Zn; and dispersing the heat-treated SmFeN-based magnetic powder using a resin-coated metal media or a resin-coated ceramic media” (emphasis added) in claim 1. Instant claim 1 recites “A method of producing a SmFeN-based anisotropic magnetic powder, the method comprising: preparing a SmFeN-based anisotropic magnetic powder before dispersion containing Sm, Fe, La, W, R, and N, wherein R is at least one selected from the group consisting of Ti, Ba, and Sr; and dispersing the SmFeN-based anisotropic magnetic powder before dispersion using resin-coated metal media or resin-coated ceramic media”. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application and the instant application both teach a method of preparing a SmFeN-based anisotropic magnetic powder with the same chemical elements and dispersing the magnetic powder using resin-coated metal media or resin-coated ceramic media. While the copending application adds a modifier powder containing Zn, this powder is not excluded in the instant application given the claimed powder “contains” Sm, Fe, La, W, R, and N, and does not exclude additional unrecited elements. See Claim Interpretation in this Office action.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/506354 (reference application).
The copending application claims “A method of producing a SmFeN-based rare earth magnet, the method comprising: heat-treating a SmFeN-based anisotropic magnetic powder having a surface coated with a phosphate at a temperature of at least 80°C but lower than 150°C; mixing the heat-treated SmFeN-based anisotropic magnetic powder and a Zn-containing modifier powder by dispersion using resin-coated metal media or resin-coated ceramic media to obtain a powder mixture containing the SmFeN-based anisotropic magnetic powder and the modifier powder; compacting the powder mixture in a magnetic field to obtain a magnetic field compact; and pressure-sintering the magnetic field compact to obtain a sintered compact,wherein the SmFeN-based anisotropic magnetic powder comprises lanthanum (La), tungsten (W), and R, and wherein R is at least one selected from the group consisting of titanium (Ti), barium (Ba), and strontium (Sr)” (emphasis added) in claim 1. Instant claim 1 recites “A method of producing a SmFeN-based anisotropic magnetic powder, the method comprising: preparing a SmFeN-based anisotropic magnetic powder before dispersion containing Sm, Fe, La, W, R, and N, wherein R is at least one selected from the group consisting of Ti, Ba, and Sr; and dispersing the SmFeN-based anisotropic magnetic powder before dispersion using resin-coated metal media or resin-coated ceramic media”. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application and the instant application both teach a method of preparing a SmFeN-based anisotropic magnetic powder with the same chemical elements and dispersing the magnetic powder using resin-coated metal media or resin-coated ceramic media. While the copending application adds a Zn-containing modifier powder, this powder is not excluded in the instant application given the claimed powder “contains” Sm, Fe, La, W, R, and N, and does not exclude additional unrecited elements. See Claim Interpretation in this Office action.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-4 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0334386 A1 of Maehara (as cited in IDS mailed 03/27/2024) in view of US 2008/0220291 A1 of Nakiri (as cited in IDS mailed 03/27/2024).
Regarding claims 1 and 2, Maehara teaches a method for producing anisotropic magnetic powder (Title, reads on claimed method of producing anisotropic magnetic powder).
Regarding the powder composition of claim 1, Maehara teaches wherein the anisotropic magnetic powder is represented by the following formula: Smv-xFe(100-v-w-t-z)NwTitLaxWz (claims 4-5 and 7-10, the magnetic powder of Maehara contains Sm, Fe, La, W, Ti which reads on claimed R, and N, and therefore reads on the claimed SmFeN-based anistropic magnetic powder and preparing a SmFeN-based anisotropic magnetic powder before dispersion containing Sm, Fe, La, W, R, and N, wherein R is at least one selected from the group consisting of Ti, Ba, and Sr). Maehara further teaches an inventive example with a magnetic powder of Sm8.99Fe77.3N13.24Ti0.22La0.14W0.11 (Example 5, [0080], [0082], Table 3, magnetic powder of Sm8.99Fe77.3N13.24Ti0.22La0.14W0.11 contains Sm, Fe, La, W, Ti, and N, and therefore further reads on the claimed SmFeN-based anistropic magnetic powder and containing Sm, Fe, La, W, R, and N, wherein R is at least one selected from the group consisting of Ti, Ba, and Sr).
Regarding the resin-coated media of claim 1, Maehara teaches the anisotropic magnetic powder described above may be used with a resin to prepare a composite material and may be prepared by mixing the powder with the resin ([0052]-[0056], mixing powder with resin reads on claimed dispersing the SmFeN-based anisotropic magnetic powder before dispersion using resin).
However, Maehara does not explicitly disclose dispersing the SmFeN-based anisotropic magnetic powder before dispersion using resin-coated metal media or resin-coated ceramic media (emphasis added) of claim 1 and wherein the resin-coated metal media or the resin-coated ceramic media have a specific gravity that is at least 4 of claim 2.
Nakiri teaches a method for preparing magnetic paint comprising magnetic powder (Abstract). Nakiri and Maehara are considered analogous art since they are similarly concerned with treating magnetic powders with resin. Nakiri teaches dispersing the composition with a media type dispenser including metal media coated with a resin ([0028]-[0030], composition refers to a magnetic powder; metal media coated with a resin reads on claimed resin-coated metal media). Nakiri teaches using a material with a density of 3 g/cm3 or more to obtain ultrafine magnetic particles ([0030], one of ordinary skill in the art understands a density of 3 g/cm3 or more has a specific gravity of 3 or more since specific gravity is obtained by dividing a material’s density by the density of water which is 1 g/cm3; the specific gravity range of Nakiri overlaps with the claimed range).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the mixing with resin step of Maehara with the dispersing with a resin-coated metal media of Nakiri, and adjusting and varying the specific gravity of the media, such as within claimed ranges, to obtain ultrafine magnetic particles, as taught by Nakiri. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Modified Maehara therefore reads on the limitation dispersing the SmFeN-based anisotropic magnetic powder before dispersion using resin-coated metal media or resin-coated ceramic media (emphasis added) of claim 1 and wherein the resin-coated metal media or the resin-coated ceramic media have a specific gravity that is at least 4 of claim 2.
Modified Maehara therefore reads on all the limitations of claims 1 and 2.
Regarding claims 3 and 10, modified Maehara teaches the method of claim 1 and claim 2 respectively as described above.
Maehara teaches mixing with resin ([0056]) and does not mention the use of a solvent in this mixing step. Similarly, Nakiri teaches dispersing the composition with a media type dispenser including metal media coated with a resin ([0028]-[0030]) and does not teach using a solvent in this step.
Modified Maehara therefore reads on the limitation wherein the dispersing is performed in the absence of a solvent of claims 3 and 10.
Regarding claims 4 and 11, modified Maehara teaches the method of claim 1 and claim 2 respectively as described above.
Maehara teaches the method of producing an anisotropic magnetic powder includes obtaining a first precipitate, obtaining a second precipitate, obtaining an oxide by calcining the second precipitate in an oxidation step, obtaining a partial oxide by heat treating the oxide in a reducing gas atmosphere in a pre-treatment step, obtaining alloy particles by reducing the partial oxide in a reduction step by mixing the partial oxide with metallic calcium and heat treating the mixture in an inert gas or vacuum, obtaining an anisotropic magnetic powder by nitriding the alloy particles in a nitridation step, and washing the magnetic particles to remove residual calcium hydroxide ([0018]-[0024], claim 1; precipitation step: [0026]-[0036]; oxidation step: [0037]-[0039]; pre-treatment step: [0040]-[0041], reads on claimed pretreatment comprising heat-treating an oxide in a reducing gas-containing atmosphere to obtain a partial oxide; reduction step: [0042]-[0045] reads on claimed heat-treating the partial oxide in the presence of a reducing agent to obtain alloy particles with the calcium reading on the claimed reducing agent; nitridation step: [0046]-[0051] reads on claimed nitriding the alloy particles to obtain a nitride; washing step of Maehara reads on claimed washing the nitride to obtain the SmFeN-based anisotropic magnetic powder before dispersion). Regarding the oxide content of claims 4 and 11, Maehara teaches the solution of precipitation step 1 containing R, iron, and titanium further contains tungsten and/or lanthanum and an insoluble precipitate containing R, iron, titanium, and tungsten and/or lanthanum is obtained ([0031]). Maehara teaches the oxidation step includes obtaining an oxide containing R, iron, and titanium by calcining the second precipitate formed in the precipitation step 2 ([0037], as implicitly taught by Maehara the oxide may further contain tungsten and/or lanthanum since those elements are included in the precipitation step). Maehara further teaches an inventive example with Fe—Sm—Ti—W—La, specifically Sm8.99Fe77.3N13.24Ti0.22La0.14W0.11 (Example 5, [0080], [0082]). Based on the broader disclosure and Example 5 of Maehara, one of ordinary skill in the art understands to obtain the Sm8.99Fe77.3N13.24Ti0.22La0.14W0.11 powder of Example 5 the method will start with a solution containing Sm, Fe, La, W, and Ti, as taught by Maehara, resulting in a precipitate containing Sm, Fe, La, W, and Ti. One of ordinary skill in the art further understands calcining the second precipitate will result in the oxide of Example 5 of Maehara including Sm, Fe, La, W, and Ti, which reads on the claimed an oxide containing Sm, Fe, La, W, and R, wherein R is at least one selected from the group consisting of Ti, Ba, and Sr of claims 4 and 11.
Modified Maehara therefore reads on the claimed wherein the preparing the SmFeN-based anisotropic magnetic powder before dispersion comprises: a pretreatment comprising heat-treating an oxide containing Sm, Fe, La, W, and R, wherein R is at least one selected from the group consisting of Ti, Ba, and Sr, in a reducing gas-containing atmosphere to obtain a partial oxide; heat-treating the partial oxide in the presence of a reducing agent to obtain alloy particles; nitriding the alloy particles to obtain a nitride; and washing the nitride to obtain the SmFeN-based anisotropic magnetic powder before dispersion of claims 4 and 11.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYELA ALDAZ whose telephone number is (571)270-0309. The examiner can normally be reached Monday -Thursday: 10 am - 7 pm and alternate Friday: 10 am - 6 pm.
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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