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 .
Status of Claims
A reply was filed on 01/26/2026. The amendments to the claims have been entered. Claims 19-37 are pending in the application and examined herein.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Inventorship
As noted in the prior Office action, there is a typographical error in the Application Data Sheet and Declaration filed 01/28/2023. Specifically, the Application Data Sheet and Declaration list the inventor name “Michael T. Kotschenruether” (see also Filing Receipt dated 02/28/2023). However, the inventor in other applications and references of similar subject matter as the present application is listed as “Michael T. Kotschenreuther” (see e.g., https://exofusion.co/team/dr-mike-kotschenreuther/, USAN 18/850,784, USAN 12/685,337; see also instant specification as filed, p. 1). Additionally, the signature in the Declaration uses the spelling “Kotschenreuther”. See MPEP 323 for procedures for correcting errors in a recorded assignment document and MPEP 602.01(c) for procedures for correcting inventor names.
Information Disclosure Statement
The information disclosure statement (IDS) filed 01/26/2026 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. Specifically, a copy of NPL document 16 was not provided with the IDS.
Drawings
The drawings were received on 01/26/2026. These drawings are not acceptable. The amendments to Figure 3 have not been entered because they contain new matter. The amendment filed 01/26/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the amendments to Figure 3 include newly added features “360”, “361”, “362”, and “363” which are not identified or present in the original disclosure. Applicant is required to cancel the new matter in the reply to this Office Action.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following features in claims 19, 23, 29, and 34-35 must be shown or the features canceled from the claims:
Claims 19, 29, and 34: “a plurality of magnetic-field coils”
Claims 19, 29, and 34: “the divertor target and the at least one cover each presenting a plasma-facing liquid backed surface layer disposed on a solid substrate”
Claim 19: “the liquid-backed surface layer of the divertor target is coupled to a first supply conduit and a first liquid reservoir configured to deliver liquid to replace material removed by sputtering or evaporation” and “the liquid-backed surface layer of the at least one cover is coupled to a second supply conduit and a second liquid reservoir configured to deliver liquid to replace material removed by sputtering or evaporation”
Claims 23 and 34: “a shield positioned to occlude direct lines of sight from the LCFS to the central strike region”
Claim 23: “the shield presents a plasma-facing liquid-backed surface layer disposed on a solid substrate, coupled to at least one supply conduit and at least one liquid reservoir configured to deliver liquid to replace material removed by sputtering or evaporation”
Claims 29 and 34: “each liquid-backed surface layer is coupled to at least one supply conduit and at least one liquid reservoir configured to deliver liquid to replace material removed by sputtering or evaporation”
Claim 35: “the shield presents a plasma-facing liquid-backed surface layer disposed on a solid substrate, coupled to at least one supply conduit and at least one liquid reservoir configured to deliver liquid to replace material removed by sputtering or evaporation”
No new matter should be entered.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters “101” (see [12100]1), “102” (see [12100]), and “130” (see [12100]) have been used to designate the “LCFS”.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “101” has been used to designate both the “LCFS” (see [12100]) and “MC plasma” ([12500]).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: “100” (all figures).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: “130” (see [12100]).
Examiner further suggests renumbering “Figure 2” as “Figure 2A” for consistency in both the drawings and the specification.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the Applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112(a)
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.
Claims 19-37 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention.
The following features in the claims are not sufficiently supported by the original disclosure and are, therefore, new matter:
Claims 19, 29, and 34: “the divertor target and the at least one cover each presenting a plasma-facing liquid-backed surface layer” – while the original disclosure states that these structures may have a liquid surface, there does not appear to be support for a “liquid-backed surface layer” as recited in the claims
Claim 19: “wherein the liquid-backed surface layer of the divertor target is coupled to a first supply conduit and a first liquid reservoir configured to deliver liquid to replace material removed by sputtering or evaporation, and the liquid-backed surface layer of the at least one cover is coupled to a second supply conduit and a second liquid reservoir configured to deliver liquid to replace material removed by sputtering or evaporation” – there is nothing in the original disclosure directed towards such a “conduit” or “reservoir”
Claims 19, 29, and 34: “during steady-state operation (herein defined as a continuous period of at least 1 second)” – the only disclosure directed towards a “steady-state” is in paragraph [6100] and there is nothing in the disclosure suggesting the claimed definition of “steady-state operation”
Claim 19: “wherein, during steady-state operation...: (1) a maximum steady-state temperature (Tmax,Target) of the divertor target is higher than a maximum steady-state temperature (Tmax,Cover) of the at least one cover” – the only disclosure directed towards a “steady-state” is in paragraph [6100] and there does not appear to be anything in the original disclosure discussing the “maximum steady-state temperature” of the diverter target relative to the “maximum steady-state temperature” of the cover
Claims 19 and 22: “wherein, during steady-state operation...: ... (2) the liquid-backed surface layer of the divertor target comprises a first material and the liquid-backed surface layer of the at least one cover comprises a second material, characterized in that an evaporation rate of the first material (ET) is lower than an evaporation rate of the second material (EC) when both are tested at a temperature (Ttest) of at least 300 degrees Celsius, wherein the evaporation rate is measured in atoms per centimeter squared per second” (claim 19) and “wherein Ttest is 450 Celsius” (claim 22) – the only disclosure directed towards a “steady-state” is in paragraph [6100] and there does not appear to be anything in the original disclosure discussing the evaporation rate of a material of the divertor target relative to the evaporation rate of a material of the cover or testing evaporations rates
Claims 19, 29, and 34: “an electron temperature Te ≥ 25 eV at the central strike region” – the original specification discloses and the original claims recite the temperature of electrons “immediately adjacent to the divertor target” ([9700], [11000], [11300], [19700], claims 8, 11), but do not provide support for the claimed electron temperature “at the central strike region [of the divertor target]” (see claim 19 which recites “a divertor target having a central strike region”)
Claims 20, 29, and 34: “wherein, along a magnetic field line that intersects the central strike region and in a poloidal plane, a product of a major radius R and a poloidal magnetic field Bpol (R∙Bpol) exhibits an upstream one-sided local maximum at the central strike region” – there does not appear to be anything in the original disclosure discussing an “upstream one-sided local maximum at the central strike region” as recited in the claims
Claims 21 and 31: “wherein, along a magnetic field line that intersects the central strike region, a magnitude of a total magnetic field |B| is greater at an upstream location between the central strike region and the at least one X-point than it is at the central strike region” – there does not appear to be anything in the original disclosure discussing a total magnetic field “at an upstream location” relative to the “central strike region” as recited in the claims
Claims 23 and 34: “a shield positioned to occlude direct lines of sight from the LCFS to the central strike region” – while the original specification discloses, the original claims recite, and the original figures show “block[ing] lines of sight from the divertor target to the MC plasma” ([9100], [10400]-[10500], [11800], [17800]-[17900], claims 2-3, 16, FIG. 3), the original disclosure does not provide support for “occlud[ing] direct lines of sight from the LCFS to the central strike region”
Claims 23 and 35: “wherein the shield presents a plasma-facing liquid-backed surface layer disposed on a solid substrate, coupled to at least one supply conduit and at least one liquid reservoir configured to deliver liquid to replace material removed by sputtering or evaporation” – while the original disclosure states that these structures may have a liquid surface, there does not appear to be support for a “liquid-backed surface layer” as recited in the claims and there is nothing in the original disclosure directed towards such a “conduit” or “reservoir”
Claims 25, 33, and 35: “wherein a chamber-geodesic distance from the central strike region to the vacuum pump is less than a chamber-geodesic distance from the at least one X-point to the vacuum pump” – there does not appear to be anything in the disclosure discussing a “chamber-geodesic distance”
Claim 26: “wherein the divertor target and the at least one cover are configured to maintain, during steady-state operation, a fuel ion charge fraction greater than 0.6 in the magnetically confined plasma” – the only disclosure directed towards a “steady-state” is in paragraph [6100] and there does not appear to be anything in the original disclosure does not appear to disclose the divertor target and the at least one cover specifically are configured to maintain the claimed fraction
Claim 27: “wherein, along a magnetic field line that intersects the central strike region and extends toward the at least one X-point, a poloidal magnetic field at the central strike region is at least one-third of a maximum value of the poloidal magnetic field on the LCFS” – while the original specification discloses “the strength of the magnetic field components in the poloidal plane (henceforth called the poloidal magnetic field) at the divertor target is larger than one third of the poloidal magnetic field along the Last Closed Flux Surface (LCFS) of the toroidally confined region” ([9300]) and “the component of the poloidal magnetic field, which is the component of the magnetic field in the plane perpendicular to the direction of rotation of the central axis, has a magnitude at the divertor target that is larger than one third of the maximum value of the poloidal magnetic field on the boundary of the magnetically confined plasma region” ([10600], [11700]), the original disclosure does not appear to support the field “at the central strike region” and “along a magnetic field line that intersects the central strike region and extends toward the at least one X-point” having the claimed value
Claims 28 and 33: ‘wherein the vessel is configured such that at least one of the following is satisfied: the electron temperature at the LCFS is above 1000 eV; the electron temperature at the central strike region is above 50 eV; or the density ratio satisfies neSOL / necore < 0.15” – the original specification discloses and the original claims recite the temperature of electrons “immediately adjacent to the divertor target” ([11900], claim 17), but do not provide support for the claimed electron temperature “at the central strike region [of the divertor target]” (see claim 19 which recites “a divertor target having a central strike region”)
Claims 29 and 34: “wherein each liquid-backed surface layer is coupled to at least one supply conduit and at least one liquid reservoir configured to deliver liquid to replace material removed by sputtering or evaporation” – there is nothing in the original disclosure directed towards such a “conduit” or “reservoir”
Claim 35: “the shield presents a plasma-facing liquid-backed surface layer disposed on a solid substrate, coupled to at least one supply conduit and at least one liquid reservoir configured to deliver liquid to replace material removed by sputtering or evaporation” – while the original disclosure states that these structures may have a liquid surface, there does not appear to be support for a “liquid-backed surface layer” as recited in the claim. Further, there is nothing in the original disclosure directed towards such a “conduit” or “reservoir”
Applicant asserts support for the claim amendments can be found in the specification as follows (Remarks, p. 38):
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However, it is unclear whether these citations are referring to paragraphs of the specification as filed (i.e., the specification dated 01/28/2023) or paragraphs of the pre-grant publication (PGPub) of the application, US Publication No. 2023/0245792. Nevertheless, the citations, in both the specification as filed and the PGPub, do not appear to be relevant to the noted subject matter. It is further not explicitly clear to which claim limitation(s) the citations are applicable. For example, Applicant asserts paragraphs [0114]-[0115] and [0127]-[0129] provide support for the “Hot/tenuous regime parameters”. There is no recitation in the claims directed towards a “[h]ot/tenuous regime” and it is unclear what “parameters” are being referenced. Further, while Applicant states paragraph [0114] provides support for “Steady-state operation”, there is nothing in either paragraph [11400] of the specification as filed or paragraph [0114] of the PGPub discussing “[s]teady-state operation”. Likewise, Applicant asserts paragraphs [0200]-[0201] provide support for “Temperature staging”, yet there is no recitation in the claims to “[t]emperature staging”. If referring to the “test[ing]” recited in claims 19 and 22, again, neither paragraphs [20000]-[20100] of the specification as filed (directed towards hypothetical flowing liquid surface means and applications of magnetically confined plasma) nor paragraphs [0200]-[0201] of the PGPub (directed towards using liquid lithium and the benefits of a liquid) discuss such “test[ing]”. Paragraphs [4600]-[4800] of the specification as filed are directed towards SOL issues in the conventional art and paragraphs [0046]-[0048] of the PGPub are directed towards helium removal. There is nothing in these portions of either the specification as filed or the PGPub directed towards “Evaporation rate relationship” as stated by Applicant.
Claim Rejections - 35 USC § 112(b)
Claims 19-37 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
There is insufficient antecedent basis for the following phrases in claims 19, 27-39, and 33-34:
“the magnetically confined plasma” (claims 19, 29, 34)
“the electron density” (claims 19, 29, 34)
“the line-averaged electron density” (claims 19, 29, 34)
“the center of the magnetically confined plasma” (claims 19, 29, 34)
“the poloidal magnetic field on the LCFS” (claim 27)
“the electron temperature at the LCFS” (claims 28, 33)
“the electron temperature at the central strike region” (claims 28, 33)
“the sum” (claims 29, 34)
“the electric charges” (claims 29, 34)
The following terms in claims 19, 29, and 34 are relative terms which render the claims indefinite. The terms are not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
“low” (claims 19, 29, 34)
“near” (claims 19, 29, 34)
Claims 19-22, 26-29, 31, and 33-34 recite the functional and/or desired result and/or method step limitations of the claimed “toroidally confined plasma vessel”. A claim limitation is functional when it recites a feature by what it does rather than by what it is. When claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. In this case, the functional limitations fail to define or even imply the structure that is required of the “toroidally confined plasma vessel” to achieve the recited functions. The claims do not provide a discernable boundary on what performs the recited functions and the recited functions do not follow the structures of the “toroidally confined plasma vessel” recited in the claims (i.e., the toroidal plasma chamber, plurality of magnetic-field coils, divertor target, and at least one cover). It is therefore unclear whether the function requires some other structure(s) or is simply a result of operating the “toroidally confined plasma vessel” in a certain manner. Accordingly, one of ordinary skill in the art would be unable to ascertain the metes and bounds of the claims.
The claims appear to be directed towards a specific design and/or arrangement of the “toroidally confined plasma vessel” (see Remarks, p. 13: “whether a particular vessel design would achieve the specified parameters”, “This is analogous to claiming an aircraft wing.... The lift is a calculable consequence of the recited structure, determinable from design specifications”; p. 18: “The present invention’s strategy is the opposite: minimize interaction with neutrals in the divertor through the design of the magnetic field geometry, baffles, divertor materials, and pump locations”). However, it is unclear from the claims the structure(s), design, and/or arrangement of structures of the “toroidally confined plasma vessel” that enable it to achieve the recited functions. For example, Applicant asserts the claims “recite specific structural and material configurations that physically produce the claimed operational regime” (Remarks, p. 14). Yet, claim 19 broadly recites “the structural and material configuration of elements (A)-(E) and (F)(i)-(ii) is such that the vessel is configured to maintain, during steady-state operation, a low recycling regime”. The claim does not provide any indication as to the actual or “specific” (as asserted by Applicant) “structural and material configuration” of the elements that allow for the “maintain[ing], during steady-state operation, a low recycling regime”. The boundaries of the claim scope are therefore unclear.
Further, Applicant admits “[t]he present invention’s strategy is the opposite: minimize interaction with neutrals in the divertor through the design of the magnetic field geometry, baffles, divertor materials, and pump locations” (Remarks, p. 18). However, there is no recitation of such “magnetic field geometry, baffles, ... and pump locations”. Thus, not only do the claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the claims would also appear to omit essential elements, such omission amounting to a gap between the elements. See MPEP 2172.01.
It is also unclear from the claims whether limitations are intending to recite method steps of using the apparatus. For example, it is unclear if the features in limitations (E) are intending to recite steps of operating the vessel (i.e., “steady-state operation”). Applicant’s Remarks would appear to suggest key aspects of the claimed invention are a result of a particular operation or use of the “toroidally confined plasma vessel”:
“the cover-facing getter surface ... is operated cooler” (Remarks, p. 16)
“the claimed invention does not optimize within the prior art’s design space, but rather rejects that design space entirely and operates in a fundamentally different physical regime” (Remarks, p. 17)
“The present claims require operation in a low recycling regime” (Remarks, p. 19)
“The amended claims now expressly recite ‘a low recycling regime’ as a convenient label for the objectively defined operating conditions” (Remarks, p. 20)
“The claimed parameters do not optimize within the detached divertor paradigm of the prior art, but instead define operation in a fundamentally different divertor regime” (Remarks, p. 20)
“the claimed requirement that the electron temperature at the central strike region satisfy Te ≥ 25 eV places the divertor well above the detachment boundary and affirmatively excludes operation in a high-interaction detached regime” (Remarks, pp. 20-21)
“the independent claims, ... each of which expressly requires operation in the defined low recycling regime” (Remarks, p. 21)
“the operational regime defined by Te ≥ 25 eV and neSOL/necore ≤ 0.20.... The claimed parameters define a specific physical regime—low recycling, attached operation” (Remarks, p. 22)
“The claims require operation with Te ≥ 25 eV at the strike region and neSOL/necore ≤ 0.20” (Remarks, p. 23)
“No reference teaches or suggests the combination of: ... hot/tenuous operation enabling ballistic neutral transport” (Remarks, p. 31)
“Claim 19, which requires the hot/tenuous regime (neSOL/necore ≤ 0.20; Te ≥ 25 eV” (Remarks, p. 33)
“No prior art teaches ... liquid-backed plasma-facing surfaces operating in the hot/tenuous regime” (Remarks, p. 37)
In the event the limitations are intending to recite method steps of using the apparatus, the claims are further indefinite as a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b). See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011).
Claims 19-21, 27, 29, 31, and 34 are further indefinite because it is unclear the relationship between the various recited “magnetic” features. For example, claim 19 recites “a magnetically confined plasma region bounded by a last closed flux surface (LCFS)”, “an exterior region of open magnetic field lines”, and “a plurality of magnetic field coils configured to generate magnetic fields that provide at least one X-point”. It is unclear which (if any) are referring to the same magnetic fields. Similarly, it is unclear the relationship between these magnetic fields and the “poloidal magnetic field Bpol” (claim 20), “magnetic field line that intersects the central strike region” (claim 21), “total magnetic field |B|” (claim 21), “magnetic field line that intersects the central strike region and extends toward the at least one X-point” (claim 27), “poloidal magnetic field at the central strike region” (claim 27), and “poloidal magnetic field on the LCFS”.
Claims 19, 23, 29-30, 34-35, and 37 are further indefinite because it is unclear the relationship between the various recited materials. For example, claim 19 recites “the divertor target and the at least one cover each presenting a plasma-facing liquid- backed surface layer disposed on a solid substrate, wherein the liquid-backed surface layer of the divertor target is coupled to a first supply conduit and a first liquid reservoir configured to deliver liquid to replace material removed by sputtering or evaporation, and the liquid-backed surface layer of the at least one cover is coupled to a second supply conduit and a second liquid reservoir configured to deliver liquid to replace material removed by sputtering or evaporation” and “the liquid-backed surface layer of the divertor target comprises a first material and the liquid-backed surface layer of the at least one cover comprises a second material”. It is unclear if the “liquid[s]” are referring to the same or different liquids and/or if the “liquid[s]” are referring to the same liquid of the “plasma-facing liquid-backed surface layer”. It is further unclear what “material” is being “replace[d]”, if the “material[s]” are referring to the same or different materials, and if the “first material” and “second material” are referring to the same material as the previously recited “replace[d] material”. It is also unclear if the “material” recited in claims 30 and 37 is referring to one of the “material[s]” previously recited in parent claim 29 and 34, respectively.
Claim 19 recites “an evaporation rate of the first material (ET) is lower than an evaporation rate of the second material (EC) when both are tested at a temperature (Ttest) of at least 300 degrees Celsius, wherein the evaporation rate is measured in atoms per centimeter squared per second”. The scope encompassed by the “test[]” is unclear. For example, it is unclear what kind of “test[ing]” is conducted and whether the claim requires a step of “test[ing]” (see above discussion of functional and method step limitations).
Claim 19 recites “thereby reducing ionization of hydrogenic species in the SOL”. The term “reduc[e]” is typically used to describe an amount, degree, or size of something relative to another amount, degree, or size. However, it is unclear compared to what else the “ionization” is “reduc[ed]”. Claims 29 and 34, which recite “wherein the structural and material configuration of elements (A) through (F) reduces ionization of impurities in the SOL..., thereby reducing plasma contamination”, are similarly indefinite.
Claims 20 and 29 recite “a product of a major radius R”. It is unclear what the radius is a radius of in the claims.
Claims 20, 29, and 34 recite “an upstream one-sided local maximum”. The term “upstream” typically describes a direction or position of something relative to a flow2. It is unclear relative to a flow of what feature the “upstream one-sided local maximum” is referring. It is also unclear the side of what feature the “upstream one-sided local maximum” is “one-sided”. Claims 21 and 31, which recite “an upstream location”, are similarly indefinite.
Claim 23 is further indefinite because it is unclear the relationship between the “plasma-facing liquid-backed surface layer”, “solid substrate”, “at least one supply conduit”, and “at least one liquid reservoir” and the same structures previously recited in parent claim 19.
Claim 24 recites “wherein the at least one cover and the shield are contiguous regions of a single unitary structure”. It is unclear the relationship between the “structure” and the other previously recited structures and the relationship between the “regions” and the previously recited “region[s]”.
Claims 25, 32, and 36 are further indefinite because it is unclear what is meant by the phrase “chamber-geodesic”.
Claim 29 recites “thereby producing a SOL width that permits impurities emitted from the divertor target”. It is unclear if the “SOL width” is intending to refer to a width of the previously recited “scrape-off layer (SOL)” or something else.
Claims 29 and 34 recite “the sum of the electric charges of fusion fuel ions in the magnetically confined plasma”. However, there is no prior recitation of any “fusion fuel ... in the magnetically confined plasma”.
Claim 35 is further indefinite because it is unclear the relationship between the “plasma-facing liquid-backed surface layer”, “solid substrate”, “at least one supply conduit”, and “at least one liquid reservoir” and the same structures previously recited in parent claim 34.
Any claim not explicitly addressed above is rejected because it is dependent on a rejected base claim.
Note on Prior Art Rejections
It should be noted, as stated in MPEP 2173.06, “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims”. Therefore, no prior art rejections have been made.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP 2159. See MPEP 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP 706.07(e), 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 19-37, as best understood, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/379,625. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim limitations are substantially similar to the limitations recited in the reference application. This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s amendments to the drawings overcome some, but not all, of the prior drawing objections and have created new issues as discussed above. Examiner notes, the reply filed on 01/26/2026 does not appear to include any amendments to the specification.
Applicant’s cancellation of all previously pending and examined claims renders the prior claim objections and 35 U.S.C. 112(b) and 112(d) rejections moot. Applicant’s new claims 19-37 are rejected under 35 U.S.C. 112(b) for the reasons discussed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. Prosecution on the merits is closed. 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 extension fee 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 date of this final action.
RCE Eligibility
Since prosecution is closed, this application is now eligible for a request for continued examination (RCE) under 37 CFR 1.114. Filing an RCE helps to ensure entry of an amendment to the claims, specification, and/or drawings.
Interview Information
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.
Contact Information
Examiner Jinney Kil can be reached at (571) 272-3191, on Monday-Thursday from 8:30AM-6:30PM ET. Supervisor Jack Keith (SPE) can be reached at (571) 272-6878.
/JINNEY KIL/Examiner, Art Unit 3646
1 Unless otherwise noted, citations to the specification refer to paragraph numbers of the instant specification as filed on 01/28/2023
2 https://www.merriam-webster.com/dictionary/upstream