DETAILED ACTION
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 .
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
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.
Claims 29-31 are rejected under 35 U.S.C. 103 as being obvious over Mukai et al. (US 5,719,106) in view of JP 55-125601.
Regarding claims 29-30, Mukai discloses a magnet comprising a plurality of plates (1), each of the plates having a flat surface opposite a groove surface, each of the plates comprising a conductor that passes through grooves in the grooved surface (Fig. 2). Although Mukai discloses that the plurality of plates is stacked with each other, Mukai fails to explicitly disclose how the plurality of plates is stacked. One of ordinary skill in the art would be well aware that the stacking of the plates can be of three configurations (1: flat surface to flat surface, 2: flat surface to groove surface or 3: groove surface to groove surface). Mukai fails to explicitly disclose a specific arrangement of the stacking as claimed, specifically flat surface side of both the first and second plates are facing towards each other, and a flat surface side of the third plate is in contact with the grooved surface of one of the first and second plates.
JP 55-125601 disclose a plurality of plates, wherein the outer plates (12B and 12C) having a flat surface opposite a grooved surface, each of the outer plates comprising a conductor (10) that passes through grooves in the grooved surface, wherein the plurality of plates includes a first plate (12B) and a second plate arranged such that the flat surface of the first plate and the flat surface of the second plate both lie between the grooved surface of the first plate and the grooved surface of the second plate (Fig. 6). Additionally, JP 55-125601 further discloses subsequent plate(s), which corresponds to the claimed third plate, having a flat surface is in contact with the grooved surface of the first or second plates. Please see annotated Fig. 6 of JP 55-125601, which is similar arrangement to that of instant Fig. 1.
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Mukai’s plates to be in the plating arrangement and orientation as claimed, since JP 55-125601 discloses that this structure is capable of sufficiently withstanding the huge electromagnetic force and that this arrangement is known in the art.
Regarding claim 31, Mukai and JP 55-125601 disclose that the plates comprise of an insulation material, thereby Mukai view of JP 55-125601) discloses the flat surface of the first plate and second plate contact opposing sides of a layer of insulation.
Claims 32-34 are rejected under 35 U.S.C. 103 as being unpatentable over Mukai et al. (US 5,719,106) in view of JP 55-125601), in view of Takayashi et al. (US 8437819).
Mukai in view of JP 55-125601 discloses a conductor being superconductor, however, fails to disclose a stack of high temperature superconductor tapes being used to make the cable as well as being circular or square cross-section.
Takayashi discloses circular and square shaped cross-section HTS cables are known in the art (YBCO and BSCCO materials, All Figs).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Mukai in view of JP 55-125601’s superconductor to be of circular or square shaped cross-section HTS tapes, as suggested by Takayashi, in order to make the conductor of Mukai in view of JP 55-125601 to allow for higher temperature superconducting operation and thus reduce cooling requirements.
Claims 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Tsukamoto et al. (JP H11-3814A).
Regarding claims 29-30, Tsukamoto discloses a magnet comprising a plurality of plates (1), each of the plates having a flat surface opposite a groove surface, each of the plates comprising a conductor that passes through grooves in the grooved surface (Fig. 4-6). Tsukamoto discloses multiple embodiments of the plates’ arrangement, including the plurality of plates such that the flat surface of a plate overlies the groove surface of another plate as illustrated in Fig. 6. Further, Tsukamoto also discloses another embodiment wherein a plate (1) comprising an upper stratum comprising groove surface and flat surface and a lower stratum comprising of a groove surface and a flat surface (Fig. 7). However, Tsukamoto fails to explicitly disclose that plate (1) is defined as two (sub)-plates.
However, given that dependent claim 30 discloses that the flat surface of the first plate contacts the flat surface of the second plate and that the claim doesn’t recite specific material and structure that distinguish between two directly in contact flat surfaces of the plates, one of ordinary skill in the art before the effective filing date of the claimed invention would recognize that the first plated layer and the second plated layer would behave similarly to that of a single continuous structure, since the flat surfaces of each of the layer are in directly in contact with each and are of the same material. Please see the annotated figure below that the claimed invention (annotated dashed rectangle box) is similarly to that of Tsukamoto’s Fig. 7. Therefore, the examiner is taking the position that the upper stratum of plate 1 of Tsukamoto would correspond to the claimed first plate and the bottom stratum of Tsukamoto’s plate 1 would correspond to the claimed second plate.
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MPEP 2144.04 V.C. provides guidance for this issue:
C. Making Separable
In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) (The claimed structure, a lipstick holder with a removable cap, was fully met by the prior art except that in the prior art the cap is "press fitted" and therefore not manually removable. The court held that ‘if it were considered desirable for any reason to obtain access to the end of [the prior art’s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose.’).
Dividing Tsukamoto’s reference 1 in Fig. 7 matches the required first and second plate. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to divide Tsukamoto’s reference 1, by calling it first and second plates, and thus achieve the claimed first and second plates.
Alternatively, Tsukamoto discloses multiple embodiments of the plates’ arrangement, including the plurality of plates includes a first plate and a second plate arranged such that the flat surface of the first plate overlies the groove surface of a second plate as illustrated in Fig. 6. Tsukamoto also discloses another embodiment wherein a plate (1) comprising an upper stratum comprising groove surface and flat surface and a lower stratum comprising of a groove surface and a flat surface (Fig. 7).
Absent convincing evidence of unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine features of multiple plates (Fig. 4-5) to form the overall layout in Fig. 7, such that the plurality of plates includes a first plate and a second plate arranged such that the flat surface of the first plate and the flat surface of the second plate both lie, and in contact, between the grooved surface of the first plate and the grooved surface of the second plate, as a functionally equivalent design option with a reasonable expectation of success in obtaining a suitable magnet.
Although Tsukamoto discloses plurality of plates, Tsukamoto fails to explicitly disclose an embodiment comprising the arrangement of the third plate in combination with the first and second plates as claimed.
As set forth above, Tsukamoto discloses multiple embodiments of the plates’ arrangement, including the plurality of plates such that the flat surface of a plate overlies the groove surface of another plate as illustrated in Fig. 6, which corresponds to the arrangement of claimed third plate. However, Tsukamoto fails to explicitly disclose an embodiment incorporating both Fig. 6 and Fig. 7, thereby resulting in the claimed plates layout (placing Fig. 6 plates arrangement with the plates arrangement in Fig. 7 would produce a magnet with the claimed plates arrangement).
However, absent convincing evidence of unexpected results, it would have been obvious to one of ordinary skill in the art to combine features of Figs. 6 and 7 that form a magnet with the claimed plates arrangement as a functionally equivalent design option with a reasonable expectation of success in obtaining a suitable magnet. The combined teachings render the claimed invention obvious by teaching all of the claimed elements and provide motivation as to why one of ordinary skill in the art would arrive at the claimed invention. While Tsukamoto discloses separate embodiments, one of ordinary skill in the art would understand that the layout of Fig. 7 (first and second plates) is not restricted to additionally incorporate the layout of Fig. 6 (third plate), especially since Tsukamoto does not teach away from combining two embodiments together. Thus, Tsukamoto’s teachings as whole support the Examiner’s finding that Tsukamoto suggests claim 29’s magnet. In re Keller, 642 F.2d 413, 425 (CCPA 1981) (explaining that the test for obviousness is what the teachings of the references as a whole would have suggested to those of ordinary skill in the art); In re Preda, 401 F.2d 825, 826 (CCPA 1968) ("[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.").
Regarding claim 31, Tsukamoto disclose that the plates comprise of an insulation material, thereby Tsukamoto discloses the flat surface of the first plate and second plate contact opposing sides of a layer of insulation.
Claims 32-34 are rejected under 35 U.S.C. 103 as being unpatentable over Tsukamoto et al. (JP H113814A) in view of Takayashi et al. (US 8437819).
Tsukamoto discloses a square-shaped conductor being superconductor, however, fails to disclose a stack of high temperature superconductor tapes being used to make the cable as well as being circular cross-section.
Takayashi discloses circular and square shaped cross-section HTS cables are known in the art (YBCO and BSCCO materials, All Figs).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Tsukamoto’s superconductor to be of circular or square shaped cross-section HTS tapes, as suggested by Takayashi, in order to make the conductor of Tsukamoto to allow for higher temperature superconducting operation and thus reduce cooling requirements.
Response to Arguments
Applicant’s arguments with respect to claim(s) 29-34 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
Prosecution Insights