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 .
Specification
The disclosure is objected to because of the following informalities: the specification is objected to as the phrases “first group element” and “second group element” are inconsistent with the common/conventional chemical lexicographic terms of “Group 1 element” and “Group 2 element”, respectively. It is not clear (though likely) that the terms arose from a literal translation into English from a foreign document and are thus a simple translation error or if Applicant is acting as their own lexicographer without clearly redefining the claim term and setting forth the uncommon definition.
Appropriate correction is required.
Claim Objections
Claims 1-2 and 9-10 are objected to because of the following informalities: "first group element" should instead be --Group 1 element--. Appropriate correction is required.
Claims 3-5 are objected to because of the following informalities: "second group element" should instead be --Group 2 element--. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
Claims 9-10 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 9, the claim is indefinite as the granulated particle recited contains alternative recitations of rare earth oxides not recited by claims 1 or 7, from which claim 9 depends, and therefore selection of a rare earth oxide as recited in claim 9 does not result in the material as recited in claims 1 or 7 which require a rare earth oxysulfide and are not in any way directed to a rare earth oxide. Further, there is a lack of antecedent basis for rare earth oxide (as noted) and for carbon. It is also not clear what the recitation of ‘to be a raw material’ is intended to mean. The metes and bounds of the instant claim are unclear and it is further unclear what exactly is being claimed.
Regarding claim 10, the claim is indefinite as the granulated particle recited contains alternative recitations of rare earth oxides not recited by claims 1 or 7, from which claim 10 depends, and therefore selection of a rare earth oxide as recited in claim 10 does not result in the material as recited in claims 1 or 7 which require a rare earth oxysulfide and are not in any way directed to a rare earth oxide. Further, there is a lack of antecedent basis for rare earth oxide (as noted) and for carbon. It is also not clear what the recitation of ‘to be a raw material’ is intended to mean. The metes and bounds of the instant claim are unclear and it is further unclear what exactly is being claimed.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The claim fails to further limit the subject matter from which it depends in two ways: 1) claim 9 recites rare earth oxide as an alternative to rare earth oxysulfide whereas claim 1, from which the claim ultimately depends, requires rare earth oxysulfide and does not recite either rare earth oxide or its selection as alternative; and 2) claim 9 recites a particle size of 70 µm or more and 5 mm or less, however claim 7 from which the claim depends recites a narrower particle size of 50 µm or more and 3 mm or less. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The claim fails to further limit the subject matter from which it depends in two ways: 1) claim 10 recites rare earth oxide as an alternative to rare earth oxysulfide whereas claim 1, from which the claim ultimately depends, requires rare earth oxysulfide and does not recite either rare earth oxide or its selection as alternative; and 2) claim 10 recites a particle size of 70 µm or more and 5 mm or less, however claim 7 from which the claim depends recites a narrower particle size of 50 µm or more and 3 mm or less. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
Nath (US 3,878,119).
Regarding claims 1-2, Nath teaches rare-earth oxysulfide materials which are recrystallized in a vitreous flux, where the fluxing agent is combined with the rare-earth oxysulfide and is not removed (abstract; col 1 ln 50-53; col 2 ln 50-24; col 2 ln 47-50). Nath teaches the rare-earth oxysulfide has the formula Ln(2-x)Ln’xO2S, where Ln is selected from Y, Gd, La and Lu, and Ln’ is selected from Dy, Er, Eu, Ho, Nd, Sm, Tb and Tm (col 2 ln 37-47)(instant rare earth oxysulfide; instant rare earth element selection group).
Nath teaches the fluxing agent includes alkali metal ions selected from lithium, sodium and potassium (instant ‘first group element’ (claims 1 and 2)), in combination with an oxide (abstract; col 1 ln 55-60; col 2 ln 49-52; col 3 ln 32-60). Nath further teaches the amount of fluxing medium is from 0.1 wt% up to 7 wt% with respect to the wt% of the rare earth oxysulfide (col 3 ln 1-12) at a ratio of alkali metal ion to oxide of from 0.5 to 1 (col 1 ln 66 to col 2 ln 2) (instant 0.001 atom% or more and 10 atom% or less).
Nath teaches rare-earth oxysulfide materials but does not specifically teach a maximum value of volume specific heat of 0.5 J/(cm3·K) or more, in a temperature range of 2K to 10 K. However, Nath teaches the claimed rare-earth oxysulfide comprising the claimed structure (none recited) having the claimed elements and in combination with a first group element in the claimed amounts. The instant specification demonstrates that a rare-earth oxysulfide plus a first group element as claimed will result in a material having the claimed maximum value of volume specific heat in the temperature range claimed (instant original specification: page 5 and pg11 [0049] to pg12 [0051]). It is held that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
Further as the preamble of ‘a cold storage material’ requires only the recited components to satisfy, it is noted that said preamble recitation, when read in the context of the entire claim, is not a limiting recitation (MPEP 2111.02). Such a recitation may be further construed as one of intended use, and it is noted that recitations of new intended uses for old products do not make the claims to that product patentable (see In re Schreiber, 44 USPQ 2d 1429, (Fed. Cir.1997)).
Regarding claim 3, Nath teaches the materials as set forth in claim 1 above. As the limitation of a second group element present from 0 atom% or more and 10 atom% or less includes the value of 0 atom%, the recitation is therefor optional and thus met by Nath.
Regarding claim 6, Nath teaches the materials as set forth in claim 1 above and as noted teaches the fluxing medium is a combination of an alkali metal ion with one or more oxides, where Nath further teaches the oxides include boron oxide (col 1 ln 57-60; col 2 ln 51-52; col 3 ln 35-55)(instant boron). As noted, Nath teaches the amount of fluxing medium is from 0.1 wt% up to 7 wt% with respect to the wt% of the rare earth oxysulfide (col 3 ln 1-12) at a ratio of alkali metal ion to oxide of from 0.5 to 1 (col 1 ln 66 to col 2 ln 2) (instant 0.01 atom% or more and 20 atom% or less).
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-8, 11-13, 15-17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Takagimi et al. (US PGPub 2004/0013593) in view of Nath (US 3,878,119).
Regarding claims 1-2, Takagimi teaches rare earth metal oxysulfide materials of general formula R2O2S, where R denotes one or more rare earth elements selected from La, Ce, Pr, Nd, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb, Lu and Y (abstract; [0008]). Takagimi teaches the rare earth metal oxysulfide materials are suitable for use as regenerative materials (instant cold storage materials) ([0001]) for refrigerators, superconducting magnets, sensors, MRI machines, etc. ([0002]-[0003]; [0020]). Takagimi further teaches the rare earth metal oxysulfide materials have a maximum volume specific heat occurring in the range of 2 to 7 K ([0011]) and demonstrates values greater than 0.5 J/cm3K (see Figures).
Takagimi teaches the rare earth metal oxysulfide materials may further contain 0.05-30 wt% of additives including oxides, carbides or nitrides of alkaline-earth metals, transition metals, and group 3b and 4b elements ([0012]). Takagimi teaches the inclusion of additive materials for toughening of the regenerative material but does not specifically teach inclusion of a first group element (alkali metals (claim 1)) of Li, Na or K (claim 2). However, Nath teaches similar rare earth oxysulfide materials of general formula Ln(2-x)Ln’xO2S, were Ln and Ln’ are rare earth elements, and teaches it is advantageous to include alkali metal ions in combination with oxides (abstract; col 1 ln 55-60; col 2 ln 49-52; col 3 ln 32-60) as a fluxing and recrystallization agent in the preparation of rare earth oxysulfide materials for the purpose of obtaining uniform crystal growth and particle size (col 1 ln 50-65; col 3-col 4). Nath further teaches the alkali metal ions are selected from lithium, sodium and potassium, and teaches the amount of fluxing medium is from 0.1 wt% up to 7 wt% with respect to the wt% of the rare earth oxysulfide (col 3 ln 1-12) at a ratio of alkali metal ion to oxide of from 0.5 to 1 (col 1 ln 66 to col 2 ln 2) (instant 0.001 atom% or more and 10 atom% or less). Nath and Takagimi are analogous art and are combinable because they are concerned with the same field of endeavor, namely rare-earth oxysulfide materials having additive components. At the time of filing a person having ordinary skill in the art would have found it obvious to include the alkali metal ions as taught by Nath in the materials of Takagimi and would have been motivated to do so as Takigimi invites the inclusion of toughening additives including oxides and further as Nath teaches alkali metal ions with oxides in the manufacture of rare-earth oxysulfide materials will advantageously result in uniform crystal growth and particle sizes.
Regarding claims 3-5, Takagimi in view of Nath renders obvious the regenerative materials as set forth above. As noted, Takagimi teaches the rare earth metal oxysulfide materials may further contain 0.05-30 wt% of additives (instant 0 atom% or more and 10 atom% or less (claim 3); instant 0.001 atom% or more and 10 atom% or less (claim 4)) including oxides, carbides or nitrides of alkaline-earth metals (instant second group elements), transition metals, and group 3b and 4b elements ([0012]; [0068]-[0072]). Takagimi teaches the alkaline-earth metals include Mg, Ca, Sr and Ba ([0014]; [0070]).
Regarding claim 6, Takagimi in view of Nath renders obvious the regenerative materials as set forth above. As noted, Takagimi teaches the rare earth metal oxysulfide materials may further contain 0.05-30 wt% of additives (instant 0.01 atom% or more and 20 atom% or less) including oxides, carbides or nitrides of alkaline-earth metals (instant second group elements), transition metals, and group 3b and 4b elements ([0012]; [0068]-[0072]). Takagimi teaches the transition metals, group 3b and group 4b tougheners preferably include compounds of aluminum, boron, zirconium, etc. ([0013]; [0015]; [0070]).
Regarding claims 7-8, Takagimi in view of Nath renders obvious the regenerative materials as set forth above. Takagimi further teaches the regenerative materials may be granulated ([0011]; [0023]) to obtain preferably spherical granules having an aspect ratio of 3 or less, preferably of 1 ([0011]; [0023]), and a mean particle size in the range of 0.05 to 1 mm ([0011]; [0024]).
Regarding claims 11-13, 15-17 and 19, Takagimi in view of Nath renders obvious the regenerative materials as set forth above. Takagimi further teaches use of the regenerative materials in superconducting magnets and sensors, refrigerators, MRI machines, cooling utilizing compression and liquifying of He gas, etc. ([0001]-[0003]) (instant cold storage device (claim 12); instant refrigerator (claim 13); instant superconducting magnet (claim 15); instant MRI apparatus (claims 16-17); instant helium re-condenser (claim 19)). Takagimi further teaches use of plural types ([0020]-[0021]).
Claims 14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Takagimi et al. (US PGPub 2004/0013593) in view of Nath (US 3,878,119) as set forth in claim 13 above and further in view of Yamada et al (US PGPub 2017/0275176).
Takagimi in view of Nath renders obvious the regenerative materials as set forth in claim 1 above and further render obvious the apparatuses utilizing such materials as set forth in claims 11 and 13 above. Takagimi does not specifically teach a cryopump (claim 14) or a single crystal pulling apparatus (claim 18). However, Yamada teaches that rare earth oxysulfide regenerative materials are known to be suitable for use in cryopumps and single crystal pulling up apparatuses in magnetic field applications ([0002]; [0013]) in addition to the apparatuses including NMRs, MRIs, small size refrigarators, superconductive magnets, etc. as similarly taught by Takagimi (see [0001]-[0003]). Yamada and Takagimi are analogous art and are combinable because they are concerned with the same field of endeavor, namely devise/apparatuses utilizing rare-earth oxysulfides as regenerative/cooling material. At the time of filing a person having ordinary skill in the art would have found it obvious to manufacture the devices of Yamada using the regenerative materials of Takagimi and would have been motivated to do so as Takagimi teaches common small refrigerator type apparatuses utilizing the materials and further as Yamada teaches cryopumps and single crystal pulling up apparatuses are also well-known small refrigeration apparatuses utilizing rare earth oxysulfide materials as regenerative refrigeration materials.
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) and 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 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 18/584152 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and copending application are directed to substantially similar rare earth oxysulfide cold storage materials further comprising substantially similar amounts of group 1 elements (instant ‘first group’), group 2 elements (instant ‘second group’) and transition metal elements, having substantially overlapping maximum volume specific heat values, as well as similar granulated particles thereof, and substantially similar devise/apparatuses/uses thereof.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of copending Application No. 19/320798 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and copending application are directed to substantially similar rare earth oxysulfide cold storage materials further comprising substantially similar amounts of group 1 elements (instant ‘first group’), group 2 elements (instant ‘second group’) and transition metal elements, having substantially overlapping maximum volume specific heat values, as well as similar granulated particles thereof, and substantially similar devise/apparatuses/uses thereof.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/Primary Examiner, Art Unit 1767