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 07/08/2026 have been fully considered but they are not persuasive.
Applicant argues that not all the ranges disclosed include room temperature superconductivity.
However, the specification provides no distinction between the superconductivity threshold for the materials (i.e. how to achieve superconductivity at any temperature). The claims do not limit the superconductivity temperature. Therefore, the limitation superconducting in the claim includes room temperature superconductivity as disclosed in the specification. It is reiterated that there does not appear to be any working examples or direction given with regard to how to make the superconductor as claimed. The only recitation with regard to data demonstrating superconductivity is the retracted article in Nature. It is noted that Drozdov teaches high temperature/high pressure superconductor and is distinguished from the instant specification encompassing low pressure/high temperature superconductivity.
Applicant argues that it is known that the pressure exerted on a material can affect the temperature at which superconductivity is exhibited at a higher temperature than outside of the diamond anvil cell and that the effects of pressure might be at least partially replicated through the use of a substrate having lattice parameters that impart a strain to the solid hydride material.
However, it does not appear that there is any data supporting this theory. There are no working examples in the specification and as noted in the rejection, there does not appear to be any specificity in the disclosure regarding what compounds should be deposited on the substrate. See specification at [0070]. It appears that the data purportedly demonstrating superconductivity is only present in the retracted Nature article referenced in the specification (with incorporation by reference) at [0072]. It is unclear that superconductivity at any temperature was achieved (i.e. no evidence of Meisner effect, etc.).
Claim Interpretation
While the claims do not expressly require a “room temperature superconductor”, the claims require a high temperature superconductor. The accompanying disclosure only mentions superconductivity ranges that encompass room temperature; no other temperatures are discussed, contemplated, or disclosed for the claimed materials. See Specification at [0037] for pressure at atmospheric pressure and temperature of 280 K [0039]. Therefore, high temperature superconductivity is interpreted as encompassing room temperature superconductivity.
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 1-11, 13-22, 41-44 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 1-11, 13-22, 41-44 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, data indicating room temperature superconductivity has not been provided. There are no examples in which a room temperature product was experimentally produced and tested in the instant specification. For example, there does not appear to be any working examples for method of manufacture or testing of products produced. Indeed, the Nature article referenced in the specification (with incorporation by reference) at [0072] has been retracted. See attachment. Additionally, there does not appear to be any specificity in the disclosure regarding what compounds should be deposited on the substrate. See specification at [0070].
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, and the breadth of the claims.
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.
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) 1, 3, 9-11, 13-18, 21, 22, 41-42 is/are rejected under 35 U.S.C. 102a1/a2 as being anticipated by Shimizu (“High Pressure Brillouin Studies and Elastic Properties of Single-crystal H2S grown in a diamond cell”).
Shimizu teaches a method comprising providing a crystalline substrate including a growth surface having a set of lattice parameters (lower anvil of the diamond anvil cell meets the substrate (page 515), growing directly on the surface a solid hydride material (H2S, page 515).
Regarding the limitation of the set of lattice parameters of the growth surface impart a strain to the solid hydride material that reduces an applied pressure at which the solid hydride material exhibits superconductivity, it appears that the prior art provides a substantially similar substrate as that of the invention (specification at [0037]), such that the lattice parameters (including lattice mismatch, inter alia) would necessarily impart substantially similar properties as the claimed invention such as impart a strain to the solid hydride material that reduces an applied pressure at which the solid hydride material exhibits superconductivity.
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) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimizu in view of Khan (US 2017/0009376).
Shimizu teaches a method as described above in claim 1, but fails to teach that the diamond is produced by CVD.
Khan, however, teaches a method of making diamond (abstract) wherein the diamond is produced by CVD (para. 0101).
Therefore, it would have been obvious to one of ordinary skill in the art to provide the diamond of Shimizu produced by CVD in order to carry out a process parameter known in the art as taught by Khan.
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
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