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 .
Election/Restrictions and Claim Status
1. Applicant’s election without traverse of Invention I and Species A in the reply filed on 03/17/26 is acknowledged.
2. Claims 10-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/17/26.
3. Accordingly, claims 8-26 are pending with claims 10-12 and 17-26 withdrawn. Claims 8-9 and 13-16 are examined herein.
Drawings
4. The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Fig. 1D depicts the elected cylindrical fusion reactor embodiment of the invention. Fig. 1D lacks the following claimed features:
first, second, third, fourth and fifth “lengths” of superconductor (claims 8, 9, 14)
The “lengths” must be shown or the feature(s) canceled from the claim(s). It is noted that disclosure as filed does not explain how the claimed “lengths” are shown in the drawing because the specification does not employ the same terminology as the claims.
5. No new matter should be entered. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
6. The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). The specification does not describe the first, second, third, fourth and fifth “lengths” of superconductor recited in claims 8, 9, 14.
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 8-9 and 13-16 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 pre-AIA the applicant regards as the invention.
9. Regarding claim 8, the recited “four lengths” of superconductor and their “arrangement in parallel such that…” are indefinite because he recitation lacks correspondence with the specification (MPEP 2173.03). A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971); In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971); In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970). The term “length” has no defined particular structure and the structural arrangement of the “lengths” is recited purely in terms of the desired effect the arrangement provides (see MPEP 2173.05(g)). The specification does not define the term “lengths,” nor are the claimed lengths illustrated in Fig. 1D, which depicts the elected embodiment of the invention. Thus, one cannot decipher the metes and bounds of the claim.
10. Claims 9, 14, and 15 are indefinite for the same reason claim 8 is indefinite.
11. Further regarding claim 15, the term “racetrack” is indefinite because it does not clearly delineate a structural limitation of the “lengths” of superconductor. The term is not found in the specification at all, and its plain and ordinary meaning is “a usually oval course for racing.”1 Because the superconductor is not “for racing” nor does the definition require a particular shape, it is unclear how this term should be interpreted to delineate the metes and bounds of the claim.
12. Any claim not specifically addressed above is rejected under 35 U.S.C. §112 because it depends on a rejected claim.
Claim Interpretation
13. The claims recite limitations that are either method steps of using the claimed apparatus or statements of results desired or achieved by the claimed structure. These limitations, like statements of intended use, do not serve to patentably distinguish the claimed structure over that of the prior art reference(s) as long as the structure of the cited reference is capable of performing the recited function (MPEP 2111-2115). As stated in MPEP 2114(II): “[A]pparatus claims cover what a device is, not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
Claim Rejections - 35 USC § 103
14. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
15. For applicant's benefit, the portions of the reference(s) relied upon in the below rejections have been cited to aid in the review of the rejections. While every attempt has been made to be thorough and consistent within the rejection, it is noted that prior art must be considered in its entirety, including disclosures that teach away from the claims. See MPEP 2141.02 VI.
16. 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.
17. Claims 8-9, 13, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Rayburn et al., US 5,818,891 in view of Valfells et al., US 4,007,392.
18. Regarding claim 8, Rayburn discloses a fusion reactor (column 1, lines 8-11) comprising: a chamber (12) at a first potential (column 3, lines 17-20) ;at least four lengths (38) at a second potential (column 4, lines 3-4) and configured to carry current and generate respective magnetic fields (see Fig. 8), the at least four lengths of superconductor arranged in parallel (column 3, lines 30-31) such that magnetic fields of adjacent pairs of the at least four lengths form a magnetic confinement region, and an electric field between the chamber and the at least four lengths accelerates escaped ions back into the magnetic confinement region (column 4, lines 31-48).
Rayburn does not disclose lengths of superconductor forming magnetic cusps. Valfells teaches a plasma confinement device for nuclear fusion (column 1, lines 5-8) comprising (see Fig. 3) at least four lengths (each coil 30 and 31 is made up of two semi-circular “lengths”) of superconductor(column 4, lines 14-18) arranged in parallel (column 5, lines 1-12) such that magnetic fields of the at least four lengths of superconductor form at least 4 linear magnetic cusps (see Fig. 5) providing a magnetic confinement region (column 14, lines 15-30). One of ordinary skill in the art at the time of invention/filing would have found it obvious to employ the superconductor arrangement taught by Valfells in the fusion device of Rayburn for the predictable purpose of “providing a three-dimensional confining ability” (column 14, lines 15-20).
19. Regarding claim 9, Rayburn as modified by Valfells makes claim 1 obvious. Valfells further teaches a fusion reactor confinement system wherein a first and second of the at least four lengths of superconductor are coupled and configured to pass a first current while a third and fourth of the at least four lengths of superconductor are coupled and configured to pass a second current (Fig. 5: the two semi-circles of each coil are coupled; column 5, lines 14-30). One of ordinary skill in the art at the time of invention/filing would have found it obvious to employ the superconductor arrangement taught by Valfells in the fusion device of Rayburn for the reason stated above.
20. Regarding claim 13, Rayburn as modified by Valfells makes claim 1 obvious. Rayburn further discloses a device wherein a difference between the first and second potential is at least 10,000 volts (column 3, lines 17-20).
22. Regarding claim 15, Rayburn as modified by Valfells makes claim 1 obvious. Valfells further teaches a fusion reactor confinement system wherein the first and second of the at least four lengths of superconductor form a first racetrack (Fig. 5: the semi-circles of coils 31 and 32 form a closed loop) in a first plane and the third and fourth of the at least four lengths of superconductor form a second racetrack in a second plane, the first and second planes being parallel (Fig. 5). One of ordinary skill in the art at the time of invention/filing would have found it obvious to employ the superconductor arrangement taught by Valfells in the fusion device of Rayburn for the reason stated above.
23. Regarding claim 16, Rayburn as modified by Valfells makes claim 1 obvious. The fusion reactor formed by the obvious modification would provide the desired result of wherein an electrostatic force generated by a difference between the first and second potential as well as a magnetic force generated by the linear magnetic cusps, work in tandem to fuse ions in the magnetic confinement region (see Rayburn at column 5, line 47 and Valfells at column 14, lines 21-30).
Double Patenting
24. 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).
25. 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 §§ 706.02(l)(1) - 706.02(l)(3) 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).
26. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
27. Claims 8-9 and 12-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-18 of U.S. Patent No. . Although the claims at issue are not identical, they are not patentably distinct from each other because the prior issued patent claims anticipate the instant claims.
Interviews
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.
Additional References
The attached Notice of Reference Cited (PTO-892) cites additional prior art made of record and not relied upon that is considered pertinent to applicant's disclosure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARON M DAVIS whose telephone number is (571)272-6882. The examiner can normally be reached Monday - Thursday, 7:00 - 5:00 pm ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jack Keith can be reached at 571-272-6878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHARON M DAVIS/Primary Examiner, Art Unit 3646
1 Merriam-Webster: https://www.merriam-webster.com/dictionary/racetrack
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