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 .
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 19-22 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.
There are eight factors considered by the Federal Circuit in the determination of undue experimentation, In re Wands, 8 USPQ2d 1400 (1988). These factors are: the nature of the invention, the breadth of the claims, the state of the prior art, the predictability or unpredictability of the art, the amount of direction or guidance presented, the presence of absence of working examples, the relative skill of those in the art, and the quantity of experimentation necessary. The examiner will discuss these factors as they apply to the instant invention.
With respect to applicant’s arguments concerning the fact that since the factors set forth In re Wands for determining whether any experimentation may be undue have not been met there is no undue experimentation, the examiner offers the following analysis:
(1) Breadth of the claims: The claims are extremely broad in that they only recite the source material comprises chalcopyrite with a plurality of crystals with different orientations that collectively exhibit a scintillation behavior of a single crystal of a source material, which fails to recite a specific composition and crystal grain size that possesses the claimed properties. There are numerous types of chalcopyrite materials with scintillation behavior, and the instant claims do not recite a crystal grain size. The claims provide no applied pressure, and recite a broad elevated temperature of 100°C to 400°C, as well as a broad time of 6 to 24 hours.
(2) Nature of the invention: The claimed invention is directed to a radiation detector material.
(3) The State of the art: In the prior art, single crystal chalcopyrite radiation detector materials are known, however, chalcopyrite with a plurality of crystals with different orientations that collectively exhibit a scintillation behavior of a single crystal of a source material are not known in the art.
(4) The level of one or ordinary skill: Although a person of ordinary skill in the art would recognize the types of various chalcopyrites and crystal grain sizes that may be utilized as radiation detector materials, various applied pressures, various elevated temperatures, and various times. Absent more information on the grain sizes that are useable in the instant invention even a highly skilled artisan would not immediately be expected to recognize exactly what is meant by the broad recitation of “crystals with different orientations that collectively exhibit a scintillation behavior of a single crystal of a source material”.
(5) The level of predictability in the art: Although there is some inherent predictability in the types of materials that may be useable as radiation detector materials and the grain size of the materials useable, applied pressures, elevated temperatures, and times, it is completely dependent on the specific composition and grain size of the chalcopyrite material, the specific applied pressure, elevated temperature, and time. Absent an exact characterization of the nature of the materials utilized and the processing steps to be performed, the skilled artisan will not be directly led to what can and cannot be predictably utilized in the invention. That is, it is predictable if guidance is given in the specification, i.e. the types of compositions and grain sizes, what applied pressures to use, what elevated temperature to use, and for what time. Without this information one cannot adequately predict the exact compositions that are encompassed by the claim terminology and therefore the exact scope of the claim is unascertainable.
(6) The amount of direction provided by the inventors: The instant disclosure provides guidance as to the types of materials that may be utilized as the chalcopyrite (i.e. a lithium-containing chalcopyrite like lithium indium diselenide per [0010] of the instant specification). However, the instant specification recites a very broad range of crystal grain sizes (see the instant specification at [0020], disclosing the grain size diameter of the powder may range from about 1 μm to about 1 mm), instant claim 21 recites a broad elevated temperature of 100°C to 400°C, a broad time of 6 to 24 hours, and instant [0010] recites a broad applied pressure of 1500 psi to 4500 psi. No other information is presented that would provide the skilled artisan the additional information required about the composition and grain sizes that are encompassed by the claim.
(7) The existence of working examples: The instant disclosure provides no working examples which explain how to determine the correct grain sizes and composition as encompassed by the claims.
(8) The quantity of experimentation needed to make or use the claimed subject matter based on the content of the disclosure: Although a person of ordinary skill in the art would recognize the types of materials that may be utilized to chalcopyrite radiation detectors, absent more information on the nature of the composition or on the grain size, the elevated temperature, the applied pressure, and the time, even a highly skilled artisan would not immediately be expected to recognize what is meant by the broad recitation of “chalcopyrite with a plurality of crystals with different orientations that collectively exhibit a scintillation behavior of a single crystal of a source material”.
As a result, the quantity of experimentation required of a person having ordinary skill in the art would be undue in the absence of further guidance. The artisan would be presented with a myriad of substances composed of a myriad of grain sizes and a myriad of pressures, temperatures, and times and this would result in an excessive amount of experimentation to determine the scope of the instantly claimed invention.
Accordingly it is the position of the examiner that the claims fails to comply with the enablement requirement of 35 USC §112(a).
All claims not specifically addressed are rejected due to their dependence on a rejected claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Claim 19 is directed towards a ceramic radiation detector material, comprising: a pressed pellet formed from a powder comprising a plurality of crystals with different orientations that collectively exhibit a scintillation behavior of a single crystal of a source material, wherein the source material comprises a chalcopyrite.
The closest prior art is Stowe et al. (US20140144373, hereinafter referred to as Stowe). Stowe is directed towards semiconductor quality chalcopyrite crystals for nonlinear optical and radiation detection applications (see Stowe at the Title). However, Stowe is directed towards single chalcopyrite crystals (see Stowe at [0025]). As such, Stowe does not disclose or make obvious a pressed pellet formed from a powder comprising a plurality of crystals with different orientations that collectively exhibit a scintillation behavior of a single crystal of a source material per instant claim 19.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMERON K MILLER whose telephone number is (571)272-4616. The examiner can normally be reached M-F 8:00am - 5:00pm EST.
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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/ Examiner, Art Unit 1731