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 .
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 14, 17-27 and 29-34 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 14 recites the limitation "a heat switch configured to selectively establish and release a thermal link between the first cooling device and the sample stage” in line 12-13 introduces a new matter because the claimed recitation encompassed subject matter that is not supported in the original disclosure.
Nowhere in applicant’s disclosure is there a support for a thermal link between the first cooling device and the sample stage. Contrary to the claimed scope, applicant’s original disclosure only support for “The second cooling device is in connection with the sample stage on which a sample is to be arranged. The second cooling device is a solid state cooler which is configured to provide a second temperature to the sample stage, wherein the second temperature is different from the first temperature” (see ¶ 0013, 0063).
Claims 17-27 and 29-34 are also rejected under 35 U.S.C. 112(a) for being dependent upon a rejected claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 14, 17-26 and 29-34 are rejected under 35 U.S.C. 103 as being unpatentable over Batey et al. (US 2014/0202179 A1) in view of Lonzarich et al. (US 2015/0292782 A1).
In regard to claim 14, Batey teaches a cooling apparatus (1) for cooling a sample (see ¶ 0033), comprising
a vacuum chamber (5) (see ¶ 0034; fig. 1);
a sample stage (20) arranged in the vacuum chamber (5) and held in the vacuum chamber (5) (see fig. 1; ¶ 0037-0038: the sample stage 20 inside the vacuum chamber 5); the sample stage (20) being configured to directly couple to a sample (50) loaded onto the sample stage (20) (see ¶ 0038, 0041-0042, 0044, 0051, 0056-0059; fig. 2-5);
a first cooling device (pulse tube refrigerator 2) arranged in vacuum chamber (inside chamber of 5), the first cooling device (2) being configured to generate a first temperature (between 3.5 and 4 kelvin) in the vacuum chamber (5) (see fig. 1; ¶ 0034, 0046: the first cooling device (2) provides cooling to each of the stages 11, 12, 13, 16, 17);
a second cooling device (15) arranged in the vacuum chamber (inside chamber of 5), the second cooling device (15) being in connection with the sample stage (20), wherein the second cooling device (15) is configured to provide a second temperature (e.g., 0.6-0.8K, 70-150 mK and 7-10 mK respectively, see ¶ 0050) to the sample stage (20 via cooling stage 17), and wherein the second temperature (e.g., 0.6-0.8K) is different from the first temperature (between 3.5 and 4 kelvin) (see ¶ 0034, 0037-0038, 0046, 0050); and
Batey further teaches a connection mechanism (52 and 53) configured to selectively establish and release a thermal link between the main thermal bath (cooling stage 17) and the sample stage (20) (see ¶ 0041-0042, 0057-0058).
Batey does not explicitly teach a heat switch configured to selectively establish and release a thermal link between the first cooling device and the sample stage.
However, Lonzarich teaches refrigeration system comprising a heat switch configured to selectively establish and release a thermal link between a cooling device and a sample stage (see fig. 10; ¶ 0042, 0073).
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention to modify the cooling apparatus of Batey by implementing a heat switch to selectively establish and release a thermal link between the first cooling device and the sample stage, in view of the teachings of Lonzarich, for purpose of connecting the sample stage during cooldown, and disconnect it once the desired temperature is reached and prevent continuous energy waste, and in order to save cooling power and improve base temperature stability.
In regard to claim 17, Batey teaches the cooling apparatus of claim 14, wherein Batey teaches a sample stage in the vacuum chamber, but does not explicitly teach a first mechanical suspension holding the sample stage, wherein the first mechanical suspension is of low thermal conductivity.
However, Lonzarich a mechanical suspension (low thermal conductivity rods 903) holding a sample stage (e.g., plate 901) wherein the first mechanical suspension (903) is of low thermal conductivity (see fig. 9; para. 0071).
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention to modify the cooling apparatus of Batey by implementing mechanical suspension holding the sample stage, in view of the teachings of Lonzarich, for the purpose of providing a support to the sample stage without affecting the thermal relation between the sample stage and the main thermal bath.
In regard to claim 18, Batey teaches the cooling apparatus of claim 17, wherein Batey as modified above teaches a first low thermal conductivity mechanical suspension, but does not explicitly teach the first mechanical suspension has a thermal conductivity of less than 0.1 W/(Km). However, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention to modify the cooling apparatus of Batey by modifying the first mechanical suspension with a first mechanical suspension that has a thermal conductivity of less than 0.1 W/Km, as a routine skill of engineering expedient, in order to provide a mechanical suspension with a low thermal conductivity (e.g., a thermal conductivity less than less than 0.1 W/Km) so that to minimize the heat transfer from the thermal bath to the sample stage.
In regard to claim 19, Batey teaches the cooling apparatus of claim 17, wherein Batey as modified above teaches a first mechanical suspension with a low thermal conductivity, but does not explicitly teach the first mechanical suspension is provided by a plurality of first fibers or wires. However, it has been held that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (see MPEP 2144.07), and it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the modified first mechanical suspension with plurality of first fibers or wires in order to provide a mechanical suspension that provides a very low thermal conduction between the sample stage and the main thermal bath.
In regard to claim 20, the modified Batey teaches the cooling apparatus of claim 19, but does not teach the first fibers or wires have a thickness of less than 0.1 mm. However, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention to modify the first fibers or wires to have a thickness of less than 0.1 mm, since it has been held by the courts that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
In regard to claim 21, Batey, as modified by Lonzarich teaches the cooling apparatus of claim 19, wherein Lonzarich further including a spring washer (see the bolts and washers that holds the low thermal conductivity rods 903) configured to apply tension to the plurality of first fibers or wires (see Lonzarich fig. 9).
In regard to claim 22, Batey teaches the cooling apparatus of claim 14, further including a sample stage locking device (socket screws 52 and loading assembly 53) configured to mechanically lock the sample stage (20) in place (see ¶ 0041, 0057, 0058).
In regard to claim 23, Batey teaches the cooling apparatus of claim 22, wherein the sample stage locking device (52/53) is configured to mechanically lock the sample stage (20) in place during loading of the sample (see ¶ 0057, 0058).
In regard to claim 24, Batey teaches the cooling apparatus of claim 22, wherein the sample stage locking device includes one or more shafts (55) configured to be inserted in corresponding holes (21) of the sample stage (20) to mechanically lock the sample stage (20) in place (see ¶ 0057).
In regard to claim 25, Batey teaches the cooling apparatus of claim 22, wherein the sample stage locking device (52/53) does not touch the sample stage (20) in an unlocked state (see ¶ 0058). It would be obvious that once the sample stage locking device decoupled from the sample stage, the sample stage locking device won’t be touching the sample stage.
In regard to claim 26, Batey teaches the cooling apparatus of claim 22, wherein the sample stage locking device (52/53) is configured to provide the thermal link to the main thermal bath (17) in a locked state (see ¶ 0041, 0059). It is clear that once the sample stage locking device engaged with the sample stage, it indirectly create thermal link with the main thermal bath (17) since the sample stage engaged with the main thermal bath (17).
In regard to claim 29, Batey teaches the cooling apparatus of claim 14, wherein the second temperature (e.g., 0.6-0.8K, 70-150 mK and 7-10 mK respectively, see ¶ 0050) provided by the second cooling device is lower than the first temperature (between 3.5 and 4 kelvin) provided by the first cooling device (see ¶ 0013, 0034, 0036, 0037-0038, 0046, 0050).
In regard to claim 30, Batey teaches the cooling apparatus of claim 14, wherein the first temperature provided by the first cooling device (2) is in the range of 2K to 4K (e.g., 3/3.5 to 4 kelvin) (see ¶ 0013, 0046).
In regard to claim 31, Batey teaches the cooling apparatus of claim 14, wherein the second temperature provided by the second cooling device (15) is 300mK or less, or 50mK or less (e.g., 0.6-0.8K, 70-150 mK and 7-10 mK respectively, see ¶ 0050) (see ¶ 0037, 0050).
In regard to claim 32, Batey teaches the cooling apparatus of claim 14, wherein the first cooling device (pulse tube refrigerator 2) is a mechanical cooling device (¶ 0034: (pulse tube refrigerator is a mechanical cooling device), but does not explicitly teach the second cooling device is a solid state cooler.
However, solid state cooler is well-known in the art for cryogenic cooling of a sample, as taught by Lonzarich, wherein Lonzarich teaches an adiabatic solid-state refrigeration system, wherein a lower part of an inner vacuum chamber of a cryogenic insert used to refrigerate samples in vacuum down to milli-Kelvin temperatures with solid-state refrigeration pills. By employing two or more solid-state refrigeration pills containing the same or different solid-state refrigeration material, and arranged in a series configuration, a lower overall base temperature may be achieved than in the case of using a single refrigeration pill (see ¶ 0073; fig. 10).
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention to modify the second cooling device of Batey with a solid state cooler, in view of the teachings of Lonzarich, for the purpose of providing relatively low temperature cooler that is environmentally friendly, more compact and lightweight compared to mechanical cooling system.
In regard to claim 33, Batey teaches the cooling apparatus of claim 14, wherein the second cooling device (15) is a magnetic cooler, an adiabatic demagnetization refrigerator, a barocaloric refrigerator, a multi-stage cooling device or a thermoelectric cooler (see ¶ 0037: Batey teaches the second cooling device is a multi-stage cooling device).
In regard to claim 34, Batey teaches the cooling apparatus of claim 14, wherein the sample stage (20) includes: an electrical connector configured to establish an electrical connection to the sample; an optical connector configured to provide an optical access to the sample; at least one magnetic field sensor; at least one temperature sensor; or a heater (¶ 0022, 0038, 0041, 0044).
Claim(s) 27 is rejected under 35 U.S.C. 103 as being unpatentable over Batey and Lonzarich as applied to claim above, and further in view of Muller et al. (US 5,220,800).
In regard to claim 27, Batey teaches the cooling apparatus of claim 14, further including: a sample radiation shield which surrounds the sample stage, but does not explicitly teach a second mechanical suspension holding the sample radiation shield in the vacuum chamber, wherein the second mechanical suspension is of low thermal conductivity and is provided by a plurality of second fibers.
However, Muller teaches a system comprising a cryostat for generating a highly homogeneous magnetic field of high field strength, wherein the system comprises chambers (101 and 102) and radiation shields (120, 121, 122) are suspended in the cryostat (104) (see fig. 4). The connecting elements used are plurality of thin-walled tubes and bundles of three centering rods (126) each, preferably made of glass-reinforced plastic, which have extremely low thermal conductivity and high tensile strength (see col. 12, lines 52 to col, 13, line 2).
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention to modify the cooling apparatus of Batey by implementing a plurality of second low thermal conductivity mechanical suspension holding the sample radiation shield in the vacuum chamber, in view of the teachings of Muller, for the purpose of holding the sample radiation shield while providing a reduction in heat penetration from outside so that the cooling apparatus be operated with very low heat losses.
Response to Arguments
Applicant's arguments filed 12/31/2025 have been fully considered but they are not persuasive.
Applicant's arguments (Remark page 5) that the support for the 112(a) rejection is disclosed in the present application that: "The first ADR stage 106 is connected to the first cooling device by a high thermal conductivity connection 103 through the heat switch 107."See at least paragraphs [0062]-[0064] and FIG. 1A. Furthermore, the present application discloses with respect to the heat switches that: "connection ... can be established" and ... "[D] is connecting can be achieved by turning or releasing". See at least paragraph [0073]. Simply stated, the present application clearly and unambiguously discloses that the first cooling device 100 is connected via thermal conductivity connection 103 to heat switch 107 and sample stage 4 and that the heat switch establishes and releases this thermal connection.
In response, the examiner fully disagree regarding the support of the claim language. According to the specification (see figure 1a and ¶ 0062-0064), “Each ADR (adiabatic demagnetization refrigeration) stage 106 comprises a heat switch 107, a magnetic refrigerant 108 and a magnet 109, e.g. a superconducting magnet. The first ADR stage 106 is connected to the first cooling device by a high thermal conductivity connection 103 through the heat switch 107”, which clearly discloses the heat switch is used to connect ADR stage 106 with first cooling device 100, not the first cooling device and the sample stage. Therefore, the 112(a) rejection is maintained.
Applicant's arguments (Remark page 6) that Batey not only lacks a heat switch at all, Batey also provides no hint or suggestion of the need for such a heat switch. Rather, Batey requires the sample stage to be fixed and comprises a sample carrier that is fixed in place - namely mounted manually by a screw as shown in FIG. 3. Thus, Applicant submits that Batey teaches away from implementing a heat switch to the sample as proposed by the Office Action. Moreover, Applicant submits that the proposed modification to Batey to include a heat switch would impermissibly change its principle of operation of fixing the sample carrier in place such that the Office Action has failed to establish a prima facie case of obviousness.
Applicant’s arguments have been fully considered but are not persuasive. First, while Batey does not explicitly disclose a “heat switch,” the rejection does not rely on Batey alone for this teaching. As set forth in the Office Action, the heat switch is taught by the secondary reference (Lonzarich), and it would have been obvious to one of ordinary skill in the art to incorporate such a heat switch into Batey in order to provide controlled thermal coupling and decoupling, e.g., to improve temperature regulation, thermal efficiency, or system controllability. The test for obviousness is not whether the primary reference expressly suggests the modification, but whether the claimed subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time of the invention. A reference need not recognize the same problem addressed by Applicant. It is sufficient that the proposed combination yields predictable results.
Second, Applicant’s argument that the modification would change Batey’s principle of operation is not persuasive. Batey discloses fixing the sample carrier in position relative to a thermal structure. The addition of a heat switch would merely introduce a controllable thermal interface between components; it would not eliminate or negate Batey’s structural arrangement for supporting or positioning the sample carrier. Thus, the fundamental principle of operation—maintaining the sample carrier in a defined position for thermal processing—remains intact. Furthermore, modifying a reference to improve its functionality, even if it requires some redesign, does not render the modification improper where the result would have been predictable to one of ordinary skill in the art. The proposed combination represents the predictable use of prior art elements according to their established functions. Furthermore, Contrary to applicant’s belief, Batey’s disclosure does not criticize, discredit, or otherwise discourage the solution claimed. In re Fulton, 391 F.3d 1195, 1201,73 USPQ2d 1141, 1146 (Fed. Cir. 2004). See MPEP 2145. As Batey does not criticize, discredit, or otherwise discourage the solution claimed (of adding a heat switch), the reference does not teach away from the combination.
Applicant's arguments (Remark page 6) that the only thermal connection disclosed by Batey between sample stage 20 and PTR 2 (the first cooling device) is cooling line 31, which has heat exchangers 35 imposed along the length of same. Heat exchangers cannot reasonably be considered to be heat switches as claimed nor can heat exchangers be modified to be heat switches as claimed without impermissibly changing the heat exchanger structure and purpose. Lonzarich fails to provide any disclosure that cures the aforementioned defects and deficiencies present in the disclosure of Batey.
Applicant’s arguments have been fully considered but are not persuasive. Applicant’s argument that Batey’s only thermal connection is cooling line 31 with heat exchangers 35, and that heat exchangers cannot reasonably be considered heat switches, is not persuasive because the rejection does not equate Batey’s heat exchangers with the claimed heat switch. Rather, the heat switch of Lonzarich would be incorporated into the existing thermal path of Batey (e.g., along cooling line 31 or between cooling device 15 and stage 20). This does not require converting the heat exchangers into switches, nor does it change their structure or purpose. The heat exchangers would continue to perform their established function of facilitating heat transfer, while the added switch would provide selective control over that thermal link.
Applicant’s contention that the modification would impermissibly change Batey’s principle of operation is also not persuasive. Batey’s principle of operation is to cool a sample stage using a cryogenic cooling device. Adding a selectively operable heat switch does not negate or defeat that principle; rather, it refines the manner in which thermal coupling is controlled. The sample stage remains cooled by the first cooling device, and its positional and structural relationship remains intact. The modification merely introduces a known control feature to improve functionality. Accordingly, Lonzarich cures the deficiency of Batey by teaching the claimed heat switch and its selective operation. The combination of Batey and Lonzarich would have yielded predictable results and therefore renders the claimed subject matter obvious under 35 U.S.C. § 103. The rejection is maintained.
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 WEBESHET MENGESHA whose telephone number is (571)270-1793. The examiner can normally be reached Mon-Thurs 7-4, alternate Fridays, EST. 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, Frantz Jules can be reached at 571-272-6681. 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.
/W.M/Examiner, Art Unit 3763
/FRANTZ F JULES/Supervisory Patent Examiner, Art Unit 3763