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 05/13/2026 have been fully considered but they are not persuasive.
Applicant argues that Doi does not describe thermally annealing the capped film at a temperature under conditions forming the Mg-B composite into a MgB2 film having an increased grain size.
However, the claim amendments do not describe a grain size value such that any grain size described or inferred by Doi meets this limitation.
Applicant argues that Doi does not describe controlling a hold time at the temperature for a time long enough to promote growth of grains fo the MgB2 as recited in claim 15.
However, as described below: 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.
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, 21-22 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).
Regarding claims 21-22, Doi teaches that the depositing the Mg and B is sputtering (para. 0059-0061).
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) 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.
Allowable Subject Matter
Claims 10, 11, 13, 18, 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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.
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/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
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