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 .
Claim Interpretation
While the claims do not expressly require a “room temperature superconductor”, the claims require a 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 page 2, [0008]. Therefore, 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 1-18 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 1-18 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. Specifically, while the present application presents measurements of a voltage drop with current applied and magnetism, the sample geometry is incomplete. The passage describing Figs. 4a and 4b refers in page 26 line 12 to modifications in the plural thereby suggesting that figs 4a and 4b are different modifications i.e. different samples or devices. In contrast, page 27 line 26 refers to the superconducting device in the singular thus suggesting that figs 4a and 4b show the same device or sample while simultaneously raising the question on the origin of the different wrinkle structures shown in figs 4a and 4b in apparently the same sample or device. Therefore, it is unclear if the measurements represented in figs 5a-8 were taken on the same sample or on several samples. Nor are there detailed particular processing steps for the samples in which the measurements are taken.
It appears there is no information on the actual dimensions of the sample used in the measurements. Figs 4a and 4b are schematic representations it cannot be concluded that the width of the wrinkle regions is known that the other dimensions are represented to scale. Therefore, there is no information about the thickness of the sample.
Additionally, the resistance measurements show a peak of increasing resistance with decreasing temperature shortly before the sharp drop that is interpreted by the applicants as the onset of superconductivity. While the occurrence of such a peak is not necessarily counter indicative to the occurrence of superconductivity, another possible explanation for such an observation may be the onset of a high resistance state at the sample surface with current passing through the bulk such that the voltage drop is not detectable by the surface voltage contacts being isolated from the bulk by a high resistance state of the surface.
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. Additionally, Tinkham recites that persistent current is the first traditional hallmark of superconductivity. However, it does not appear that applicant has provided evidence of this for the disclosure.
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.
Conclusion
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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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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