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 .
DETAILED ACTION
Response to Amendment
Applicant's amendments filed on 02/03/2026 have been entered. Claims 1-7 are currently under examination on the merits.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Mizuno et al (JP 2015-018855, of record, ‘855 hereafter) in view of Hayashi et al (JP 2020-047740, of record, ‘740 hereafter) and Endo et al (5,055,499, ‘499 hereafter).
Regarding claims 1-6, ‘855 discloses a resin-impregnated superconducting coil prepared by impregnating a superconducting coil with a norbornene-based resin prepared through polymerization of a polymerizable composition ([0006]-[0008]); wherein the polymerizable composition comprises a norbornene-based monomer, a metathesis polymerization catalyst and a filler ([0007], [0020]), which is in the form of two preparative liquid formulations each of which alone is not capable of polymerization, and then formed by combining the preparative liquid formulations [0021], [0053]-[0057). ‘855 also discloses that the polymerizable composition includes a filler, but does not specifically set forth the filler is a rare earth element-containing particles having a number-based modal size of 0.05 microns to 1.5 microns in a content range of 4 to 90% by mass, which contains at least one rare earth element selected from the group consisting of cerium, praseodymium, gadolinium, dysprosium, holmium, and erbium. However, in the same field of endeavor, ‘740 discloses a polymerizable composition for making a protection layer for superconducting coil ([0030]-[0042]), comprising a binder such as epoxy being a polymerizable component and a filler being rare earth element-containing particles containing rare earth element such as holmium, erbium, praseodymium or gadolinium ([0033]-[0034]); in a content of 20 to 80 wt%; with a particle size being in a range of 1.5 microns to 200 microns ([0038], [0042]); to render the protective layer having a specific heat at temperature of 4K to 40K being 0.2J/cm3K or more, to prevent the superconductive coil from reaching thermal runaway ([0006], [0034], [0048]-[0056]). In light of these teachings, one of ordinary skill in the art would have been motivated to use the rare earth element-containing particles as taught by ‘740, to modify the polymerizable composition of ‘855, in order to render a composition having a desired specific heat to prevent the superconductive coil from reaching thermal runaway. ‘855 does not disclose that the polymerizable composition further includes a silane containing a norbornene structure. However, in the same filed of endeavor, ‘499 discloses a polymerizable composition comprising a norbornene-based monomer, a metathesis polymerization catalyst, a norbornene-based silane and a filler (C2/L20-C9/L60), which is in the form of two preparative liquid formulations each of which alone is not capable of polymerization, and then formed by combining the preparative liquid formulations (Example 1); wherein the norbornene-based silane provide excellent bonding and reinforcing performance (C2/L20-C2/L34). In light of these teachings, one of ordinary skill in the art would have been motivated to use a norbornene-based silane as taught by ‘499, to modify the polymerizable composition of ‘855, in order to render a polymerizable composition having excellent bonding properties to another component such as superconducting coil. The cited prior art does not specifically set forth the particle size of the rare-earth element-containing particles is a number-based modal size as presently claimed, however, without showing the criticality of the number-based modal size as claimed, the particle size as recited is not considered to confer patentability to the claim. In addition, one of ordinary skill in the art would have optimized, by routine experimentation, the particle size including the particle size as presently claimed, to obtain desired specific heat of the resin formed from the polymerizable composition without undue experimentation. It has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 233) (See 2144.05 IIA).
Regarding claim 7, modified ‘855 teaches all the limitations of claim 5, ‘740 also discloses that the superconducting coil can be used for generating a magnetic field in a nuclear magnetic resonance (NMR) instrument, a magnetic resonance imaging (MRI) diagnostic apparatus, or a heavy ion radiotherapy apparatus ([0011]). It is also noted that the superconducting coil in this claim is in intended use format, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Since the applied prior art discloses the cited intended use, the instant claim stands properly rejected.
Claims 1-4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Endo et al (5,055,499, ‘499 hereafter) in view of Hayashi et al (JP 2020-047740, of record, ‘740 hereafter).
Regarding claims 1-4, ‘499 discloses a polymerizable composition comprising a norbornene-based monomer, a metathesis polymerization catalyst, a norbornene-based silane and a filler (C2/L20-C9/L60), which is in the form of two preparative liquid formulations each of which alone is not capable of polymerization, and then formed by combining the preparative liquid formulations (Example 1) ‘499 discloses that the polymerizable composition includes a filler (C7/L3-C8/L11), but does not specifically set forth the filler is a rare earth element-containing particles having a number-based modal size of 0.05 microns to 1.5 microns in a content range of 4 to 90% by mass, which contains at least one rare earth element selected from the group consisting of cerium, praseodymium, gadolinium, dysprosium, holmium, and erbium. However, in the same field of endeavor, ‘740 discloses a polymerizable composition for making a protection layer for superconducting coil ([0030]-[0042]), comprising a binder such as epoxy being a polymerizable component and a filler being rare earth element-containing particles containing rare earth element such as holmium, erbium, praseodymium or gadolinium ([0033]-[0034]); in a content of 20 to 80 wt%; with a particle size being in a range of 1.5 microns to 200 microns ([0038], [0042]); to prevent the superconductive coil from reaching thermal runaway ([0006], [0034], [0048]-[0056]). In light of these teachings, one of ordinary skill in the art would have been motivated to use the rare earth element-containing particles as taught by ‘740, to modify the polymerizable composition of ‘499, in order to render a polymerizable composition having a desired specific heat to prevent a superconductive coil from reaching thermal runaway. The cited prior art does not specifically set forth the particle size of the rare-earth element-containing particles is a number-based modal size as presently claimed, however, without showing the criticality of the number-based modal size as claimed, the particle size is not considered to confer patentability to the claim. In addition, one of ordinary skill in the art would have optimized, by routine experimentation, the particle size including the particle size as presently claimed, to obtain desired specific heat of the resin formed from the polymerizable composition without undue experimentation. It has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 233) (See 2144.05 IIA).
Regarding claim 7, modified ‘499 teaches all the limitations of claim 5, ‘740 also discloses that the superconducting coil can be used for generating a magnetic field in a nuclear magnetic resonance (NMR) instrument, a magnetic resonance imaging (MRI) diagnostic apparatus, or a heavy ion radiotherapy apparatus ([0011]).
Response to Arguments
Applicant's arguments filed on 02/03/2026 have been fully considered but they are moot in view of the new grounds of rejection in light of Applicant's amendment.
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 RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782