DETAILED ACTION
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot in view of new grounds of rejection.
With respect to claims 3 and 9, the applicant made it clear in the response that these claims are directed to a method/process of manufacturing. Thus, the method limitations in these claims are treated as product by process limitations.
Claim Rejections - 35 USC § 112
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.
Claim 16 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In re claim 16, the term “flown” is unclear because it implies that there is a flying structure, however, the term refers to electrical current, which is not a flying structure. Appropriate correction is required.
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.
Claim(s) 1-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshikawa (US 6646836) in view of Shen et al. (US 6960914).
In re claim 1, Yoshikawa, in figures 1-7, discloses a superconducting magnet comprising: at least one primary superconducting coil (2b) configured to generate a primary static magnetic field by a persistent current flowing during a persistent current mode; at least one secondary superconducting coil (2a) configured to generate a secondary static magnetic field different from the primary static magnetic field in response to external control; and a static-magnetic-field control switch (one of 4 or 5) configured to supply the secondary superconducting coil with part of the persistent current to generate the secondary static magnetic field by being closed (in the on state) in response to the external control during the persistent current mode and stop energization of the secondary superconducting coil and generation of the secondary static magnetic field by being opened in response to the external control during the persistent current mode (inherent functionality of the disclosed structure). Yoshikawa does not explicitly teach that the secondary coil cancels or reduces the primary static magnetic field. Shen however, in figures 1-8, teaches a similar device having (a secondary coil (106, 124, 156) used to shield the primary coil by creating an opposing field to the primary coil (shielding involves creating a reverse magnetic field to reduce the magnetic field created by the primary coil, see line 24 of column 1 for description). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have configured the secondary coil of Yoshikawa to provide a reverse magnetic field, and thus reduce the primary coil field, as taught by Shen, to provide shielding for the device.
In re claim 2, Yoshikawa, in figures 1-7, discloses that the static-magnetic-field control switch comprises a superconducting member (portion that conducts the superconducting current) and a heater (see lines 55-65 of column 4) configured to heat the superconducting member; the static-magnetic-field control switch is opened when stopping generation of the secondary static magnetic field by turning on the heater under the external control and bringing the superconducting member into a normal conducting state; and the static-magnetic-field control switch is closed when generating the secondary static magnetic field by turning off the heater under the external control and shifting the superconducting member from the normal conducting state to a superconducting state (inherent functionality of the shown structure).
In re claim 3, Yoshikawa/Shen discloses the superconducting member provided in the static magnetic field control switch (as discussed in claims 1-2 above). With respect to the winding process, in accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product, i.e superconducting member, does not depend on its method of production, i.e. winding a superconducting wire. In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985).
In re claim 4, Yoshikawa, in figures 1-7, discloses a persistent current switch (one of 4 or 5) configured to: be opened during an excitation mode to allow an electric current supplied from an external power supply to flow through the primary superconducting coil; and be closed during the persistent current mode to form a persistent current loop with the primary superconducting coil in such a manner that the persistent current flows through the primary superconducting coil (inherent function of the shown structure, see lines 30-54 of column 5).
In re claim 5, Yoshikawa, in figures 1-7, discloses that the persistent current switch comprises a superconducting member (portion that conducts the superconducting current) and a heater (see lines 55-65 of column 4) configured to heat the superconducting member; the persistent current switch is opened during the excitation mode by turning on the heater under the external control and bringing the superconducting member into a normal conducting state; and the persistent current switch is closed during the persistent current mode by turning off the heater under the external control and shifting the superconducting member from the normal conducting state to a superconducting state (inherent functionality of the shown structure).
In re claim 6, Yoshikawa in view of Shen, discloses that the secondary superconducting coil is configured to generate the secondary static magnetic field in such a manner that the primary static magnetic field is canceled or reduced (mutual inductance M provides this functionality; coils 123 in figure 2 are also configured to reduce primary static field; Also, Shen explicitly teaches this as discussed in claim 1 rejection).
In re claim 7, Yoshikawa, in view of Shen, discloses that the secondary superconducting coil is configured to generate the secondary static magnetic field due to an emergency magnetic-field shutdown function in such a manner that the primary static magnetic field is canceled by the secondary static magnetic field (the shown structure is configured to and is capable of performing this functionality due to the physical arrangement of the coils shown in the figures).
In re claim 8, Yoshikawa, in figures 1-7, discloses that the secondary superconducting coil is configured to generate the secondary static magnetic field in such a manner that a spatial distribution of a combined static magnetic field obtained by combining the primary static magnetic field and the secondary static magnetic field changes (change of distribution of field is an inherent function of the disclosed structure).
In re claim 9, Yoshikawa, in figures 1-7, discloses that the secondary superconducting coil is configured as a coil (as seen in the figures). With respect to the winding process, in accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product, i.e coil, does not depend on its method of production, i.e. winding. In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985).
In re claim 10, the claim limitations are directed to an external control of the device. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
In re claim 11, Yoshikawa, in figures 1-7, discloses that the static-magnetic-field control switch comprises a superconducting member (portion that conducts the superconducting current) and a heater (see lines 55-65 of column 4) configured to heat the superconducting member; the external control is performed in synchronization with a pulse sequence in magnetic resonance imaging (it is inherent to an MRI device that imaging pulse sequence is synchronized with magnet control in order for proper imaging functionality); and a timing of the external control is determined in consideration of a delay time from turning on or off the heater until the static-magnetic-field control switch closes or opens, with respect to a change timing of the primary static magnetic field in the pulse sequence, or a combined static magnetic field obtained by combining the primary static magnetic field and the secondary static magnetic field (lines 45-54 of column 5 discuss timing of external control in consideration of a combined static field (achieved in persistent current state)).
In re claim 13, Yoshikawa, in figures 1-7, discloses an MRI apparatus.
In re claim 14, Yoshikawa in view of Shen discloses that the static-magnetic-field control switch is configured to be controlled in response to the external control after reaching the persistent current mode (this is an inherent functionality of the shown device; control and monitoring is required to operate the device in all current modes).
In re claim 15, Yoshikawa in view of Shen discloses that the at least one primary superconducting coil is connected in parallel to the at least one secondary superconducting coil (this is true in Yoshikawa device in the persistent current mode condition when the current supply is turned off; both ends of the coils are connected together thereby forming a parallel connection; Shen shows the same connection).
In re claim 16, Yoshikawa in view of Shen discloses that the at least one primary superconducting coil and the at least one secondary superconducting coil are connected in series (this is true in Yoshikawa device when the current source is connected to the coils; Shen shows the same connection), and the at least one secondary superconducting coil is wound with a winding pattern that cancels the primary magnetic field generated (Shen teaches reducing the field, which is inherently canceled at some positions between the coils due to the secondary coil producing the opposing field), and the part of the persistent currents is flown when the static-magnetic-field control switch is opened (in the same way as disclosed by the applicant).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alexander Talpalatski whose telephone number is (571)270-3908. The examiner can normally be reached 10 AM - 6 PM PT.
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/Alexander Talpalatski/Primary Examiner, Art Unit 2837