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 .
Applicant’s reply and amendment filed July 30, 2026 are acknowledged. Claims 1-3, 5-12 and 14-17 are pending.
Claims 1-3 and 5-8 are allowable. The restriction requirement between Groups I-III , as set forth in the Office action mailed on 3/18/2026, has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of 3/18/2026, is withdrawn. Claims 9-12 and 14-17, directed to a non-metallic temperature-sensitive composite for MRI and a method of use of the non-metallic temperature sensitive composite for MRI are no longer withdrawn from consideration because the claim(s) requires all the limitations of an allowable claim.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Response to Arguments
Applicant’s arguments with respect to the rejection of claims 1-3 and 5-8 as being obvious over Wang Linge et al. in view of Kagayaki et al. have been fully considered and are persuasive. The rejection of 6/24/2026, has been withdrawn.
Claim Rejections - 35 U.S.C. § 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.
Claim 10 is rejected pursuant to 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. As claimed (i.e., recited as a “use” only), the invention does not fall within at least one of the four categories of patent eligible subject matter recited in 35 U.S.C. § 101 (process, machine, manufacture, or composition of matter). The claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., it results in a claim which is not a proper process claim pursuant to this statutory section. See, for example, Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967), and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
Claim Rejections - 35 U.S.C. § 112
The following is a quotation of the second paragraph of 35 U.S.C. § 112, ¶ 2:
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.
Claim 10 is rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 10 is directed to a use of a composite (i) for the purpose of “provid[ing] a temperature-responsive MRI signal”, (ii) as a temperature calibration standard in [] MRI, and (iii) for the purpose of “determine[ing] a temperature distribution of an environment.”
To that end, the claims merely recite an intended use of the claimed composite without reciting any active steps for what may be perceived as a process for performance of the uses. See MPEP § 2173.05(q). Consequently, the metes and bound of the claims are unclear.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S CABRAL whose telephone number is (571)270-3769. The examiner can normally be reached M-F 8 am - 5 pm.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT S CABRAL/Primary Examiner, Art Unit 1614
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