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 of Group II, claims 8-20 in the reply filed on 11/14/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 13, 14, 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The recitation in claim 13, lines 5-6 of “at the temperature below both the second melting temperature…” renders the claim indefinite. It appears that this should recite below both the second and the first melting temperature.
The recitation in claim 14, lines 3-4 of “to increase a critical temperature of the film above 15 K” renders the claim indefinite. it is unclear if this is meant to raise the critical temperature by 15 K or raise the critical temperature to above 15 K.
The recitation in claim 18, line 3 of “and a higher critical temperature above 15 K” renders the claim indefinite. it is unclear if this is meant to raise the critical temperature by 15 K or raise the critical temperature to above 15 K.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 8, 9, 12, 15-17, 19 is/are rejected under 35 U.S.C. 102a1/a2 as being anticipated by Doi (US 2017/0301444).
Regarding claims 8 and 16; Doi teaches a method of making a film comprising MgB2 (abstract) comprising depositing Mg and B on a substrate to form an Mg-B composite (para. 0059), depositing a capping layer to form a capped film (para. 0072-0073) wherein the capping layer has a first melting temperature higher than a second melting temperature of Mg (Ta meets this limitation; para. 0072-0073), thermally annealing the capped film (para. 0075-0077), and cooling the capped film so that a MgB2 film is made (Doi teaches that the film heating has a specific duration such that the film would necessarily be cooled from the heat treatment; para. 0105).
Regarding claim 9, Doi teaches that the ratio of Mg to B is 1 to 2 (para. 0064). Additionally, applicant’s specification states that the ratio is 1 to 2. See specification at page 10, lines 15-30. As the ratio of Mg to B in Doi is substantially similar to that of the claimed invention, it appears that the resistivity of Doi would substantially overlap with the claimed resistivity. Doi teaches that the critical temperature is 33.5 K (para. 0086).
Regarding claim 12, Doi teaches that the depositing comprises electron beam VD (para. 0061).
Regarding claim 15, 17, Doi teaches that the thickness of 1-100 nm (para. 0072). Additionally, it appears that the thickness of the cap layer and any hold time contemplated by Doi meets the limitation of promoting growth of grains (columnar grains; abstract). Additionally, it appears that the thickness of the cap layer in Doi meets the limitation of avoiding escape of Mg through the capping layer.
Regarding claim 19, Doi teaches that the Mg and B are co-deposited (para. 0059).
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) 10-11, 13, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Doi in view of WO 03/082482.
Doi teaches a method as described above in claim 8, but fails to teach selecting one of a thickness of the MgB2 film, inter alia, so as to form the MgB2 film comprising a superconductor wherein the film has a greater than or equal to a circular area having a diameter of at least 4 inches, thickness varying by less than 10% over an entirety of the area, surface roughness of less than 1.5 nm over the area, and the claimed resistivity.
482, however, teaches a method of forming MgB2 films (abstract, page 5) wherein the source ratio (Mg and B) among other process parameters are modified to yield a thin film with a uniform thickness and influence surface morphology (pages 8-11).
Therefore, it would have been obvious to one of ordinary skill in the art to provide the source ratio (Mg and B) among other process parameters are modified in Doi in order to yield a thin film with a uniform thickness and influence surface morphology as taught by 482.
Additionally regarding claims 10 and 20, 482 teaches that the roughness is less than 4 nm (claim 15). This range overlaps with the claimed range.
Doi teaches that the ratio of Mg to B is 1 to 2 (para. 0064). Additionally, applicant’s specification states that the ratio is 1 to 2. See specification at page 10, lines 15-30. As the ratio of Mg to B in Doi is substantially similar to that of the claimed invention, it appears that the resistivity of Doi would substantially overlap with the claimed resistivity.
Additionally, it would have been obvious to produce a film having an area overlapping with the claimed range based on the desired end use of the product absent a showing of unexpected results. It is noted that the claim recites a set of conditions including thickness of the MgB2 film, inter alia, selected to produce a set of characteristics. As the characteristics are obvious as described above, it appears that the limitation is met.
Regarding claim 11, Doi teaches that the critical temperature is 33.5 K (para. 0086). It is noted that the claim recites a set of conditions including thickness of the MgB2 film, inter alia, selected to produce a set of characteristics. As the characteristics are obvious as described above, it appears that the limitation is met.
Regarding claim 13, Doi teaches heat treatment (annealing) at a temperature of 300-600 C (para. 0045) which is below the second melting temperature. 482 teaches a surface roughness as described above.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Doi (US 2017/0301444) in view of EP 1310584 and WO 2014/135893.
Doi teaches a method as described above in claim 8, but fails to teach depositing alternating layers of the B and Mg under magnesium rich conditions.
893, however, teaches a method of making MgB2 wires (abstract, page 4, lines 5-20) wherein MgB2 is formed in excessive Mg for the purpose of creating greater connectivity (page 18, lines 1-15).
Therefore, it would have been obvious to one of ordinary skill in the art to provide MgB2 is formed in excessive Mg in Doi in order to create greater connectivity as taught by 893.
Additionally, 584 teaches a method of making MgB2 wires (abstract) wherein Mg and B are alternately deposited on top of each other for the purpose of forming pronounced anisotropy (page 2, column 2, lines 33-50).
Therefore, it would have been obvious to one of ordinary skill in the art to provide Mg and B are alternately deposited on top of each other in Doi in order to form pronounced anisotropy as taught by 584.
Additionally, Doi teaches that the critical temperature is 33.5 K (para. 0086). Therefore, it appears that the limitation of the thickness of the MgB2 film selected to increase a critical temperature above 15 K is met.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Doi in view of WO 03/082482 and EP 1310584.
Regarding claim 18, 584 teaches a method of making MgB2 wires (abstract) wherein Mg and B are alternately deposited on top of each other for the purpose of forming pronounced anisotropy (page 2, column 2, lines 33-50).
Therefore, it would have been obvious to one of ordinary skill in the art to provide Mg and B are alternately deposited on top of each other in Doi in order to form pronounced anisotropy as taught by 584.
Additionally, Doi teaches that the critical temperature is 33.5 K (para. 0086). Therefore, it appears that the limitation of the thickness of the MgB2 film selected to increase a critical temperature above 15 K is met.
482, however, teaches a method of forming MgB2 films (abstract, page 5) wherein the source ratio (Mg and B) among other process parameters are modified to yield a thin film with a uniform thickness and influence surface morphology (pages 8-11) including that the roughness is less than 4 nm (claim 15).
Therefore, it would have been obvious to one of ordinary skill in the art to provide the source ratio (Mg and B) among other process parameters are modified in Doi in order to yield a thin film with a uniform thickness and influence surface morphology including that the roughness is less than 4 nm (claim 15) as taught by 482.
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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/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735