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 III, claims 15-16 in the reply filed on 01/21/2026 is acknowledged.
Newly submitted claims 17-30 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: claims 17-30 are correlated to Groups I and II referenced in Restriction Requirement mailed 12/17/2025.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 17-30 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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) 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Varanasi (US 2007/0129255) in view of Debe (US 2010/0273093) and Ostapenko (US 2013/0213137) and either one of Oh (US 7838061), Shi (US 6569811), or Langbein (US 6136756).
Varanasi teaches a method of producing a superconductor tape comprising providing a substrate, buffer over the substrate, and a superconductor layer over the buffer layer (para. 0024, 0049), wherein the superconductor film comprises Y2O3 particles (para. 0048).
Varanasi fails to teach measuring the in-line X-ray diffraction peak of Y2O3 in real time subsequent the deposition of the superconductor film over the buffer layer.
Debe, however, teaches that the size of particles can be measured using x-ray diffraction (para. 0011).
Additionally, Oh (col. 2, lines 40-50), Shi (col. 10, lines 45-50), and Langbein (col. 4, lines 35-55) teach that the size of the pinning particle in superconductor films affect the properties of the superconductor film.
Therefore, it would have been obvious to one of ordinary skill in the art to provide measuring the X-ray diffraction of Y2O3 in Varanasi in order to determine the size of the Y2O3 present in the superconductor as taught by Debe. One would be motivated to monitor the size of the Y2O3 in order to provide the desired properties of the superconducting film as taught by Oh, Shi, and Langbein, respectively.
Regarding the limitation of the x-ray diffraction being “in-line”, Ostapenko teaches in-line quality control in electronics production for the purpose of mitigating down stream risks (para. 0007-0008).
Therefore, it would have been obvious to one of ordinary skill in the art to provide the x-ray diffraction measurement in-line in Varanasi in order to mitigate down stream risks as taught by Ostapenko.
Additionally, it appears that the limitation in real time is so broad that the prior art appears to meet this limitation. In the alternative, the teaching in Ostapenko meets the limitation as an in-line quality control measure would necessarily occur in real time.
Regarding claim 16, Varanasi teaches that the tapes are 200 meters long (para. 0049).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL A WARTALOWICZ whose telephone number is (571)272-5957. The examiner can normally be reached Monday-Friday 9 am - 5 pm.
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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.
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/PAUL A WARTALOWICZ/ Primary Examiner, Art Unit 1735
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