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 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) 1-3, 6, 7 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Okada (JP H07-138772A) .
With respect to claim 1, Okada describes a method for removing Ni metals from a Neodymium-based magnet or a rare earth magnet (please see Master Magnetic reference below for description of Neodymium rare earth magnets) by immersing the magnet in a stripping solution comprising derivative of nitrobenzene such as o-, m-, p-nitrobenzenesulfonic acid, o-, m-, p-nitrobenzene acid, and their salts (Na, K, NH 4, Li , etc.), ethylenediamine and ammonia water (pages 2, 3).
With respect to claim 2, the Na salts of the o, m-, p-nitrobenzenesulfonic acid would be sodium o-, m-, or p- nitrobenzene sulfonate.
With respect to claim 3, the process treats the Neodymium magnet product that fails in the plating process (page 2).
With respect to claim 6, the pH is from 10-13 or 12 to 13 (page 3).
With respect to claim 7, the process above is expected to provide the results of changes in magnetic flux density and coercive force of the rate earth magnet before and after immersion in the stripping solution are 1.0% or less because Okada discloses the process where the same Neodymium magnets having same Ni are treated with the same composition and with the temperature including the claimed temperature and pH as described above and the magnet substrate would retain its properties after the treatment since Okada also discloses that the magnet substrate is not etched and the process doesn’t cause grain shedding and doesn’t corrode, erode nor etch the Neodymium magnet base, granulation does not occur, the appearance and adhesion of the plating film are good after the treatment (page 2; page 3: para 19).
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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okada as applied to claim 1 above.
With respect to claim 5, the temperature is from room temperature to 90 degrees C (page 3), which overlaps 20-70 degrees C. Overlapping ranges are held obvious. See MPEP 2144.05. 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). Therefore, one skill in the art would find it obvious before the effective filing date of the invention to use ranges including claimed ranges to provide a stripping composition with expected results.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okada as applied to claim 1 above, and further in view of Clarke et al. (US 2006/0065627).
With respect to claim 4, Okada doesn’t describe applying ultrasonic frequency of 20-100 kHz to the process. Clarke discloses a process of removing metal such as Ni by applying sonic energy of frequency (e.g. 10-100 kHz) to the etching fluid (para 36). It would have been obvious for one skill in the art to add ultrasonic energy to the etching fluid in light of Clarke because he discloses that it facilitates the etching to access ultra-small features that are not typically accessible using conventional solvent and the etching fluid can access and dissolve metal (para 37).
Master Magnetics reference is cited for description of Neodymium rare earth magnets.
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.
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,146,225. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims 1-7 of Patent No. 12,146.225 describes the same steps of recycling the rare earth magnet by immersing the magnet in a stripping solution comprising a derivative nitrobenzene, ethylenediamine, and ammonia at the same ultrasonic wave frequency, temperature and pH.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DUY VU NGUYEN DEO whose telephone number is (571)272-1462. The examiner can normally be reached 9-5 M-F.
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/DUY VU N DEO/Primary Examiner, Art Unit 1713
8/10/2026
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