CTNF 18/702,173 CTNF 84172 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Priority 02-26 AIA Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Information Disclosure Statement Three (3) information disclosure statement(s) (IDS) were submitted on 04/17/2024, 06/17/2024, and 06/24/2024. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS are being considered by the examiner. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-12-aia AIA (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. 07-15 AIA Claim s 1-3, 5, and 6 are rejected under 35 U.S.C. 102( a)(1) and/or 35 U.S.C. 102(a)(2 ) as being anticipated by WO 2021/169897 (A1) to Fu et al. (“ Fu ”) (computer-generated translation is attached) . Regarding claims 1-3 and 5, Fu discloses a R-T-B-series permanent magnet. Page 1. Example magnets have the following composition: Element Claims 1-3 and 5 WO 2021/169897 A1 WO 2021/169897 A1 Table 2 - Example 8 (p. 20) Table 2 - Example 9 (p. 21) R 30.00 - 33.00 Nd = 29.979, Pr = 0.402 Nd = 30.302, Pr = 0.200 B 0.70 - 0.88 0.862 0.880 Al above 0 to 0.07 0.015 0.015 Ga 0.40 - 1.00 0.552 0.850 Zr 0.10 - 1.60 0.322 0.200 Co 0.50 - 3.00 1.202 1.600 Cu 0.15 - 1.00 0.601 0.650 Heavy rare earth 0 - 0.30 Dy = 0, Tb = 0 Dy = 0, Tb = 0 Specific examples in the prior art that fall within claimed ranges anticipates the claimed ranges. MPEP § 2131.03(I). Since Fu discloses specific examples that fall within the claimed ranges, Fu anticipates the claimed ranges. Regarding claim 6, Fu measures Br (remanence) and Hcj (coercivity) (p. 15; Table 3), but whether the temperature conditions match the claimed temperature conditions is unclear. Regardless, it is well established that when a material is produced by a process that is identical or substantially identical to that of the claims and/or possesses a structure or composition that is identical or substantially identical to that of the claims, any claimed properties or functions are presumed to be inherent. Such a finding establishes a prima facie case of anticipation or obviousness. See MPEP § 2112.01. In the present instance, Fu’s magnetic composition falls squarely within claimed composition ranges. Therefore, any claimed properties, such as the relationship claimed, would be expected to be satisfied due to the anticipatory compositional makeup . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 1-3, 5, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Fu . Regarding claim 1, Fu discloses a R-T-B-series permanent magnet. Page 1. The magnet contains the following elements in percent by mass (abstract; description at pp. 2-5): Element Claim 1 WO 2021/169897 A1 R 30.00 - 33.00 28.5 - 34 B 0.70 - 0.88 0.84 - 0.94 Al above 0 to 0.07 less than 0.08 Ga 0.40 - 1.00 > 0.5 Zr 0.10 - 1.60 0.2 - 0.35 The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness. MPEP § 2144.05(I). It would have been obvious for one of ordinary skill in the art to select from among the prior art ranges because there is utility over an entire range disclosed in the prior art. Regarding claim 2, Fu discloses that the magnet contains less than or equal to 2.5% by mass Co (not including zero) (abstract; description at pp. 2-3), which overlaps the claimed range. Regarding claim 3, Fu discloses that the magnet contains greater than or equal to 0.4% by mass Cu (abstract; description at pp. 2-3), which overlaps the claimed range. Regarding claim 5, Fu discloses that the magnet may not contain heavy rare earth elements (description at p. 3), i.e., zero or close to zero, which falls within the claimed range. Regarding claim 6, Fu measures Br (remanence) and Hcj (coercivity) (p. 15; Table 3), but whether the temperature conditions match the claimed temperature conditions is unclear. Regardless, it is well established that when a material is produced by a process that is identical or substantially identical to that of the claims and/or possesses a structure or composition that is identical or substantially identical to that of the claims, any claimed properties or functions are presumed to be inherent. Such a finding establishes a prima facie case of anticipation or obviousness. See MPEP § 2112.01. In the present instance, Fu’s magnetic composition meets the claimed composition. Therefore, any claimed properties, such as the relationship claimed, would be expected to be satisfied due to the matching compositional makeup . 07-22-aia AIA Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Fu as applied to claim 1 above, and further in view of US 2020/0303101 (A1) to Kudo (“ Kudo ”) . Regarding claim 4, Fu does not disclose the presence of carbon (C) in the magnet. Kudo is directed to a R-T-B-based permanent magnet. Para. [0001], [0021]. The magnet may contain 0.05-0.30% by mass C for enhancing coercivity. Para. [0054]. It would have been obvious to one of ordinary skill in the art to have added carbon to the permanent magnets of Fu because carbon would further enhance the high coercivity values of the magnet . 07-21-aia AIA Claim s 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kudo . Regarding claim 1, Kudo discloses a R-T-B-based permanent magnet. Para. [0001], [0021]. The magnet contains the following elements in percent by mass (para. [0012], [0047]-[0058]): Element Claim 1 US 2020/0303101 A1 R 30.00 - 33.00 29.50 - 33.00 B 0.70 - 0.88 0.70 - 0.95 Al above 0 to 0.07 0.03 - 0.60 Ga 0.40 - 1.00 0.10 - 1.00 Zr 0.10 - 1.60 0.00 - 1.50 The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness. MPEP § 2144.05(I). It would have been obvious for one of ordinary skill in the art to select from among the prior art ranges because there is utility over an entire range disclosed in the prior art. Regarding claim 2, Kudo discloses that the magnet may contain 0.00-3.00% by mass Co (para. [0052]), which overlaps the claimed range. Regarding claim 3, Kudo discloses that the magnet may contain 0.01-1.50% by mass Cu (para. [0051]), which overlaps the claimed range. Regarding claim 4, Kudo discloses that the magnet may contain 0.05-0.30% by mass C (para. [0054]), which overlaps the claimed range. Regarding claim 5, Kudo discloses that the magnet may include heavy rare earth elements in amounts of from 0.00% to 1.00% by mass (para. [0045]), which overlaps the claimed range. Regarding claim 6, Kudo measures the residual magnetic flux density (Br) at room temperature and the coercivity (HcJ) at 150°C. Para. [0098], [0099]. Various examples have a Br and HcJ that satisfy the claimed equation, e.g., Examples 1, 2, 3, and 9 in Table 3. Thus, Kudo suggests that their permanent magnets are capable of being made to meet the claimed characteristics. Double Patenting 08-33 AIA 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 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 (claim set filed 04/17/2024) of copending Application No. 18/702,083 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the compositional ranges and properties of the copending claims substantially overlap the compositional ranges and properties of the instant claims. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to VANESSA T. LUK whose telephone number is (571)270-3587. The examiner can normally be reached Monday-Friday 9:30 AM - 4:30 PM ET. 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 D. Hendricks, can be reached at 571-272-1401. 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. /VANESSA T. LUK/Primary Examiner, Art Unit 1733 May 30, 2026 Application/Control Number: 18/702,173 Page 2 Art Unit: 1733 Application/Control Number: 18/702,173 Page 3 Art Unit: 1733 Application/Control Number: 18/702,173 Page 4 Art Unit: 1733 Application/Control Number: 18/702,173 Page 5 Art Unit: 1733 Application/Control Number: 18/702,173 Page 6 Art Unit: 1733 Application/Control Number: 18/702,173 Page 8 Art Unit: 1733 Application/Control Number: 18/702,173 Page 9 Art Unit: 1733 Application/Control Number: 18/702,173 Page 10 Art Unit: 1733
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