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 1-15 in the reply filed on 01/20/2026 is acknowledged.
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:
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(A) The breadth of the claims;
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(B) The nature of the invention;
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(C) The state of the prior art;
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(D) The level of one of ordinary skill;
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(E) The level of predictability in the art;
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(F) The amount of direction provided by the inventor;
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(G) The existence of working examples; and
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(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
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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
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