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 .
Response to Arguments
Applicant's arguments filed 06/23/2026 have been fully considered but they are not persuasive.
Applicant argues that no scientist would state that room temperature superconductivity cannot exist.
However, room temperature superconductors at normal pressure do not appear to be part of the state of the art. There is no evidence that these materials exist and there appears to be evidence against such materials existing (i.e. free energy at room temperature and pressure).
Applicant argues that to write the disclosed invention appears to be inoperable is to claim that the invention not only currently does not work, but that it can never work.
However, an assertion of specific utility is not credible for incredible inventions such as perpetual motion machines. See MPEP 2104 (IV). In the instant case, room temperature/pressure superconductors fall into this category and as such require evidence to prove the operability of the invention.
Applicant argues that one skilled in the art has sufficient knowledge of how to deposit films or layers needed to make the invention.
However, data indicating room temperature superconductivity has not been provided. There are no examples in which a room temperature product was experimentally produced and tested in the instant specification. Additionally, the materials for the phonon modifier layer are not described but for the properties of the layer. See specification at [0042]. In light of the highly unpredictable nature of the superconductor art, and in particular as yet unproven room temperature superconductivity, the bar for disclosure is extremely high such that this disclosure is insufficient to enable one of ordinary skill in the art to produce the invention.
Applicant argues that that the mere mention of bismuth and selenium in separate sentences would not lead one of ordinary skill in the art to formulate Bi2Se3 and use that as an adjacent layer.
However, Gilbert discloses that compounds of the modifying materials disclosed are included in the scope of the invention [0069]. Additionally, Bi2Se3 is the most common of the bismuth selenium compounds such that one of ordinary skill in the art would include Bi2Se3 as the compound of bismuth and selenium in Gilbert.
Applicant argues that Bi2Se3 is an insulator and therefore would not be obvious to one of orindary skill in the art reading Gilbert as Gilbert teaches that the modifying material is a conductive material and does not easily bond with oxygen.
However, Gilbert includes selenium explicitly which is not conductive nor does selenium easily bond with oxygen. Therefore, it does not appear that Bi2Se3 would be excluded by this description.
Applicant argues that the modifying materials in Gilbert could be not be assumed to necessarily support a plasmon mode.
However, it appears that the structure of Gilbert is substantially to that claimed such that it appears that supporting a plasmon mode would necessarily be present in the prior art absent a showing to the contrary.
Claim Interpretation
While the claims do not expressly require a “room temperature superconductor”, the claims require a high temperature superconductor. The accompanying disclosure only mentions superconductivity ranges that encompass room temperature; no other temperatures are discussed, contemplated, or disclosed for the claimed materials. See specification at page 5, [0020] “The SC superlattice structure 10 enhances a critical temperature of the superconductor layer 14 by about three to six times the unmodified transition temperature of the superconductor”. Therefore, the claimed invention is interpreted as encompassing room temperature superconductivity.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-15 are rejected under 35 U.S.C. 101 because the disclosed invention is inoperative and therefore lacks utility. The claims encompass room temperature superconductors, which are mere theoretical materials and currently under known principles of physics and chemistry cannot exist according to conventional scientific theory/No assertions of room temperature superconductivity have currently been recognized or verified by the scientific community. Given this combined with the issues discussed below and lack of enablement, the disclosed invention appears to be inoperable.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The factors relied upon to make a determination of enablement include, but are not limited to:
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(A) The breadth of the claims;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(B) The nature of the invention;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(C) The state of the prior art;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(D) The level of one of ordinary skill;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(E) The level of predictability in the art;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(F) The amount of direction provided by the inventor;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(G) The existence of working examples; and
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
PNG
media_image1.png
18
19
media_image1.png
Greyscale
See MPEP 2164.
In the instant case, the breadth of the claims includes room temperature superconductors. The nature of the invention is room temperature superconductivity. The state of the prior art does not include room temperature superconductivity; room temperature superconductivity exists as no more than a theoretical possibility. The superconductor art has a high level of unpredictability. The amount of direction provided by the inventor does not provide sufficient written description to convey that applicant was in possession of such material, nor does it sufficiently provide details to enable one skilled in the art to make or use the material as claimed.
Additionally, data indicating room temperature superconductivity has not been provided. There are no examples in which a room temperature product was experimentally produced and tested in the instant specification. Additionally, the materials for the phonon modifier layer are not described but for the properties of the layer. See specification at [0042]. In light of the highly unpredictable nature of the superconductor art, and in particular as yet unproven room temperature superconductivity, the bar for disclosure is extremely high such that this disclosure is insufficient to enable one of ordinary skill in the art to produce the invention.
One of ordinary skill in the art would not be enabled to produce the claimed invention given the limited guidance on claimed aspects of the invention (ex. No working examples and no data demonstrating room temperature superconductivity) and lack of experimental examples and data. Additionally, the quantity of experimentation needed to make or use the invention is prohibitive given the nature of the predictability in the art, level of ordinary skill in the art, and the nature of invention, and the breadth of the claims.
In summary, given that room temperature superconductivity exists as no more than a theoretical possibility, the disclosure provided does not provide sufficient written description to convey that applicant was in possession of such material, nor does it sufficiently provide details to enable one skilled in the art to make or use the material as claimed.
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) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gilbert (US 2016/0351303).
Regarding claims 1, 3, 11; Gilbert teaches a superconductor structure (abstract) comprising a superconductor (YBCO, abstract) and a material adjacent to the superconductor, the material including compounds of bismuth and selenium, inter alia (para. 0136; fig. 41). As the list of elements is small and one of ordinary skill in the art would be motivated to select the elements and compounds that raise the transition temperature (para. 0074) it would have been obvious to select Bi2Se3 through routine experimentation.
Additionally regarding the properties described in claims 1-2, 4-10, as the materials of the prior art are substantially similar to that of the invention (specification at pages 5-6, [0021, 0022]), it appears that the properties of the claimed invention including the material having a dielectric response that supports a plasmon or plasmon-polaron mode, etc. would necessarily be present in the prior art absent a showing to the contrary.
Regarding claims 12-15, Gilbert teaches an insulating material between the superconductor (ELR) and the modifying material (para. 0176; fig. 41). Regarding the properties of the insulating material (phonon modifier), the phonon modifier is an insulating material such that it appears that the properties of claims 12-15 are necessarily present absent a showing to the contrary.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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 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.
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.
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
Prosecution Insights