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 and Prosecution
1. Claims 12-31 are pending in this application. Claims 13, 22 and 24are currently amended.
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/15/25 has been entered.
Response to Arguments
3. Applicant's arguments filed 12/15/25 have been fully considered but they are not persuasive.
4. Applicant argues (with added emphasis) “Neuboron discloses locating the target material "in the beam shaping body," and "arranged in [a] retarder and located at the end of the accelerating tube." Neuboron, [0011]. That is, Neuboron expressly places the target within the beam shaping body with the accelerator tube extending into that body and the target arranged in the retarder. Id. The structural attachments Neuboron discloses for the cooling plates (e.g., 122', which the Examiner relies on as a purported teaching of the claimed "cap"), are to the retarder or to the end of the accelerating tube. Id. at [0048-0052]. Neuboron fails to disclose a "target enclosed in a cap secured to the beamline."
5. Applicant admits that Neuboron discloses a structural attachment between the cap of the target and the end of the accelerating tube. This is stated clearly at [0053] of Neuboron (emphasis added):
The first plate 121 and the second plate 122 are fixed to the retarder 22 or the end of the accelerating tube 111 through connecting members such as bolts or screws or other fixing structures such as welding, or the first plate 121 and the second plate 122 are first connected and then one of them is fixed to the retarder 22 or the end of the accelerating tube 111.
6. The rejection clearly applies the accelerating tube (111) of Neuboron as the recited beamline (see paragraph 12 of the office action dated 06/13/25). Additionally, it is well-known in the art of particle accelerators that the terms accelerator tube and beamline are synonymous:
In particle accelerators the beamline is usually housed in a tunnel and/or underground, cased inside a concrete housing for shielding purposes. The beamline is usually a cylindrical metal pipe, typically called a beam pipe, and/or a drift tube, evacuated to a high vacuum so there are few gas molecules in the path for the beam of accelerated particles to hit, which otherwise could scatter them before they reach their destination.1
A linear particle accelerator (often shortened to linac) is a type of particle accelerator that accelerates charged subatomic particles or ions to a high speed by subjecting them to a series of oscillating electric potentials along a linear beamline.2
A linear accelerator, or “linac,” is basically a long hollow pipe, depleted of nearly all its air, through which electrons are accelerated on the crest of a traveling radio-frequency wave. By using a moving electromagnetic field to accelerate the electrons, the linac achieves a high-energy electron beam without the need for excessively high electrical voltages.3
How do these machines accelerate particles? They inject particles into a “beamline.” This is a pipe held at very low air pressure in order to keep the environment free of air and dust that might disturb the particles as they travel though the accelerator. The particles injected into an accelerator are referred to as a “beam.” A series of electromagnets steers and focuses the beam of particles. In a linear accelerator or LINAC (pronounced line-ack or lin-ack), the particles shoot straight toward a fixed target.4
7. Therefore, the prior art Neuboron clearly discloses a “target enclosed in a cap secured to the beamline” as recited in claims 12 and 22. The cap (122) of the target is “fixed to the retarder 22 or the end of the accelerating tube 111 through connecting members such as bolts or screws or other fixing structures such as welding” as stated explicitly in Neuboron at [0053].
8 The prior art rejections are maintained. Applicant presents no arguments with respect to the rejection of claim 24 under 35 U.S.C. 112(b). The rejection is maintained.
Claim Rejections - 35 USC § 112
9. 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.
10. Claim 24 is 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 pre-AIA the applicant regards as the invention.
11. Regarding claim 24, it is unclear how the structure of the support structure is delimited by the functional recitation. One of ordinary skill has no way of ascertaining when a given support structure meets the functional limitation and when it does not (“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.” MPEP 2173.05(g)).
Claim Rejections - 35 USC § 103
12. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
13. For applicant's benefit, the portions of the reference(s) relied upon in the below rejections have been cited to aid in the review of the rejections. While every attempt has been made to be thorough and consistent within the rejection, it is noted that prior art must be considered in its entirety, including disclosures that teach away from the claims. See MPEP 2141.02 VI.
14. 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.
15. Claims 12, 13, 14, 15, 16, 17, 18, 19, 20, 22, 23, 24, 25, 26, 27, 28, 29, 30, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Neuboron CN 207856090 (see attached Espacenet translation) in view of Kuznetsov, et al., “Beam Injector for Vacuum Insulated Tandem Accelerator.”
16. Regarding claim 12, Neuboron discloses a method (see Fig. 1), comprising: propagating a charged (C ) particle beam from an accelerator (11) along a beamline (111) toward a neutron generating layer (14) of a target (Figs. 2, 5, and 6) to form a neutron beam ([0031], wherein the target is enclosed in a cap (122’) secured to the beamline (see Fig. 1, [0053]) and the neutron generating layer is on a side of the target facing the beamline (see Fig. 2); and cooling the target using a nozzle (1213’) protruding from a center of a target support structure facing a cooling inlet of the cap (see Fig. 5), wherein the nozzle is configured to direct a flow of coolant from the cooling inlet outwardly through a plurality of cooling channels (P’) extending along the support structure to a plurality of cooling outlets (OUT’) at a periphery of the cap (see Figs. 5, 6, and [0054-7]).
Neuboron is silent as to the characteristics of its accelerator. Kuznetsov teaches an accelerator for a BNCT system (Abstract) that performs a neutron generation method (Fig. 3) comprising: propagating a charged particle beam from an ion source (3), through a pre-accelerator (4), through a tandem accelerator (8), and along a beamline (9) toward a neutron generating target assembly (10), wherein the pre-accelerator is outside of the tandem accelerator and positioned prior to the tandem accelerator along the beamline (see the section entitled “Injector Design”). One of ordinary skill in the art at the time of the invention/filing would have found it obvious to combine the beam injector methodology taught by Kuznetsov with the method of Neuboron because Kuznetsov teaches that its injector “ensure[s] beam parameters and reliability of the facility operation required for clinical applications” (Abstract).
19. Regarding claim 13, the modification of the method of Neuboron with the accelerator of Kuznetsov renders claim 12 obvious. Neuboron further discloses a method wherein the target is enclosed in the cap and the beamline such that a vacuum seal is present between the target and an interior volume of the beamline (see Fig. 1 and [0053]; the accelerator tube 111 of Neuboron is part is a linear accelerator {see [0031]} and is thus under vacuum) and a water seal is present between the target, the cooling inlet of the cap and the plurality of cooling outlets at the periphery of the cap ([0057])
20. Regarding claim 14, the modification of the method of Neuboron with the accelerator of Kuznetsov renders claim 12 obvious. Neuboron further discloses a method wherein the neutron generating layer comprises Lithium ([0036]).
21. Regarding claim 15, the modification of the method of Neuboron with the accelerator of Kuznetsov renders claim 12 obvious. Neuboron further discloses a method wherein the plurality of channels form a configuration of parallel spiral windings (see Fig. 6, [0054]).
22. Regarding claims 16 and 17, the modification of the method of Neuboron with the accelerator of Kuznetsov renders claim 12 obvious. Neuboron further discloses a method, further comprising: directing, using the cooling inlet, coolant in a downstream to upstream direction with respect to a beam axis and directing, using the plurality of cooling outlets, coolant in an upstream to downstream direction with respect to the beam axis (see Figs. 2, 5, and 6; [0057]).
23. Regarding claims 18 and 19, the modification of the method of Neuboron with the accelerator of Kuznetsov renders claim 12 obvious. Neuboron further discloses a method wherein the target further comprises an interlayer comprising vanadium interposing the neutron generating layer and the target support structure (Fig. 2, 13 and [0036]).
24. Regarding claim 20, the modification of the method of Neuboron with the accelerator of Kuznetsov renders claim 12 obvious. Neuboron further discloses a method further comprising: positioning a protective layer over a side of the neutron generating layer facing the beamline (Fig. 2, 15).
25. Regarding claim 22, Neuboron discloses a neutron beam system (Fig. 1), comprising: an accelerator (11) configured to accelerate a charged particle beam (C ) along a beamline (111) toward a target a target (T; Figs. 2, 5, and 6, ref. 14 ) enclosed in a cap (122’) secured to a vacuum part of the beamline (the accelerator tube 111 of Neuboron is part is a linear accelerator {see [0031]} and is thus under vacuum), the target configured to generate a neutron beam from the charged particle beam, the target comprising (Fig. 2): a heat-removal support structure (12) comprising (Figs. 5 and 6) a nozzle (1213’) protruding from a center of the heat-removal support structure, and a layer of neutron generating material (14) mounted on the heat-removal support structure, wherein the heat-removal support structure comprises a plurality of channels (P’) formed in a surface of the heat-removal support structure and configured to distribute a flow of coolant directed at the center of the heat-removal support structure toward a periphery of the heat- removal support structure (see Fig. 6 and [0057]). Neuboron is silent as to the structure of its accelerator.
Kuznetsov teaches an accelerator (Fig. 3 and the section entitled “Injector Design”) for a BNCT system (Abstract) comprising: an ion source (3) configured to generate a charged particle beam; a pre-accelerator (4) configured to accelerate the charged particle beam; a tandem accelerator (8) configured to further accelerate the charged particle beam, wherein the pre-accelerator is outside of the tandem accelerator and positioned prior to the tandem accelerator along the beamline (9). One of ordinary skill in the art at the time of the invention/filing would have found it obvious to combine the beam injector methodology taught by Kuznetsov with the method of Neuboron because Kuznetsov teaches that its injector “ensure[s] beam parameters and reliability of the facility operation required for clinical applications” (Abstract).
26. Regarding claim 23, the modification of the method of Neuboron with the accelerator of Kuznetsov renders claim 22 obvious. Neuboron further discloses a system wherein the neutron generating material comprises Lithium ([0036]).
27. Regarding claim 24, the modification of the method of Neuboron with the accelerator of Kuznetsov renders claim 22 obvious. Neuboron further discloses a system wherein the heat-removal support structure is configured to accommodate a heat flux of up to about 4 MW/m2 ([0007], [0057]).
28. Regarding claims 25 and 26, the modification of the method of Neuboron with the accelerator of Kuznetsov renders claim 22 obvious. Neuboron further discloses a system wherein the plurality of channels form a configuration of parallel spiral windings that evenly distribute cooling across a maximum area of the surface of the heat-removal support structure (Fig. 7; [0054], [0062]).
29. Regarding claim 27, the modification of the method of Neuboron with the accelerator of Kuznetsov renders claim 22 obvious. Neuboron further discloses a system wherein the heat-removal support structure is made of copper ([0036]).
30. Regarding claims 28 and 29, the modification of the method of Neuboron with the accelerator of Kuznetsov renders claim 22 obvious. Neuboron further discloses a system further comprising: an interlayer comprising vanadium interposing the layer of neutron generating material and the heat-removal support structure (Fig. 2, 13 and [0036]).
31. Regarding claim 30, the modification of the method of Neuboron with the accelerator of Kuznetsov renders claim 22 obvious. Neuboron further discloses a system further comprising: a protective layer positioned on top of the layer of neutron generating material (Fig. 2, 15).
32. Regarding claim 31, the modification of the method of Neuboron with the accelerator of Kuznetsov renders claim 22 obvious. Kuznetsov further teaches an accelerator, wherein the tandem accelerator is configured to strip electrons from the charged particle beam (Fig. 1, 9).
33. Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Neuboron CN 207856090 (see attached Espacenet translation) in view of Kuznetsov, et al., “Beam Injector for Vacuum Insulated Tandem Accelerator” in further view of Park et al., US 2017/0062086.
34. Regarding claim 21, the modification of the method of Neuboron with the accelerator of Kuznetsov renders claim 12 obvious. Neuboron further teaches each cooling channel of the plurality of cooling channels follows a curved path along the support structure (see Fig. 6 and [0054]) but does not teach the channels comprising a curved transition between a bottom and a side. Park teaches cooling channels in a target substrate wherein a channel surface of each cooling channel comprises a curved transition between a bottom of the channel surface and a side of the channel surface (see [0008], [0071]), noting that this shape is functionally equivalent to the stepped configuration of Neuboron. Accordingly, a skilled artisan would have found such a modification to be obvious. Additionally, forming curved cooling channel surfaces would provide the predictable advantage of improving laminar flow of the coolant therethrough.
Double Patenting
35. A non-statutory double patenting rejection was made in the office action dated 12/10/24. In response, Applicant argued that a terminal disclaimer was filed (Remarks 05/12/25, p. 6). No terminal disclaimer is present in the file. The rejection is therefore reinstated.
36. 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).
37. 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).
38. 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) and 714.13.
39. 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.
40. Claims 12-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,678,430. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-10 of the prior issued patent anticipate the claims of the instant application.
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARON M DAVIS whose telephone number is (571)272-6882. The examiner can normally be reached Monday - Thursday, 7:00 - 5:00 pm ET.
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/SHARON M DAVIS/Primary Examiner, Art Unit 3646
1 See “Beamline” at https://en.wikipedia.org/wiki/Beamline; accessed 01/08/25. Attached hereto.
2 See “Linear particle accelerator” at https://en.wikipedia.org/wiki/Linear_particle_accelerator; accessed 01/08/25. Attached hereto.
3 See “Linac” at https://www.nist.gov/history/radiation-physics-building/facilities/linac; accessed 01/08/25. Attached hereto.
4 See “DOE Explains…Particle Accelerators” at https://www.energy.gov/science/doe-explainsparticle-accelerators; accessed 01/08/25. Attached hereto.