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 07/30/2026 have been fully considered but they are not persuasive.
Applicant argues that superconductivity at or near room temperature under high pressure has been verified and that the offices reasoning appears to conflate RT superconductivity at ambient pressure with room temperature under high pressure.
However, the claim requires retaining the…superconducting…phase…at ambient pressure. Therefore, it appears that the claim requires superconducting at RT and ambient pressure.
Applicant argues that the specification describes pressure quenching as a general technique based on energy barriers between metastable and stable states and demonstrates that the method works across multiple, chemically distinct material systems.
However, there does not appear to be data disputing room temperature superconductivity has been provided. Key indicia of superconductivity include zero electrical resistance, the Meissner effect, flux pinning, energy gap. It does not appear that this criteria was evaluated. It is unclear how the specification demonstrates that this method works across different systems without the above listed empirical data.
Applicant argues that the specification provides hydride specific examples with defined pressures, quench temperatures, and expected retained Tc values.
However, there does not appear to be data disputing room temperature superconductivity has been provided. Key indicia of superconductivity include zero electrical resistance, the Meissner effect, flux pinning, energy gap. It does not appear that this criteria was evaluated. It is unclear how the specification demonstrates that this method works across different systems without the above listed empirical data.
Applicant argues that the scientific community has extensively characterized H3S and LaH10 under pressure, a person skilled in the art would know how to synthesize those materials in a diamond anvil cell.
However, as the claims are drawn to superconducting at room temperature and ambient temperature, details for the production method should be explicit. As recited in the rejection, 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.
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 1-20 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 1-20 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, it is unclear whether data disputing room temperature superconductivity has been provided. Key indicia of superconductivity include zero electrical resistance, the Meissner effect, flux pinning, energy gap. It does not appear that this criteria was evaluated. Additionally, it does not appear the duration of superconducting phase is addressed in the claims and only generally addressed in the specification (see paragraph 0058). [0064] of the specification states that the superconducting state is stable “for up to at least 7 days depending on the quenching conditions”. However, no further explanation of these conditions is given. 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.
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.
Claims 7, 8, 9, 17-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while providing disclosure for Cu doped FeSe and FeSe, does not reasonably provide enablement for LaH10, hydride, H2S. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. No sample preparations of the afore mentioned compounds are described in the invention. Therefore, these claims are not enabled.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
