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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 28th, 2026 has been entered.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-5, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Yagi et al. (JP 2004225920), hereinafter Yagi in view of Spinelli et al. (The use of a directional solidification technique to investigate the interrelationship of thermal parameters, microstructure and microhardness of Bi–Ag solder alloys), hereinafter Spinelli.
Regarding claim 1, Yagi discloses a regenerator material for a cryocooler (Pg. 1, paragraph 1, The present invention relates to a regenerator filled with a regenerator material having a low specific heat at a low temperature, and more particularly to a regenerator used for a Stirling type, a GM (Giffrod McMahon) type, a pulse tube type or the like; Fig. 5, GM refrigerator 10, second regenerator 30, cold storage material 34) comprising:
bismuth as a main component (Abstract, To provide a cool accumulator applying a Pb-free cold storage material…In this cool accumulator for a very low temperature refrigeration machine in which the cold storage material 34 is packed, the cold storage material 34 includes one or both of In and Bi as its main components); and
silver as an additive (Abstract, and at least one of Sn, Ag, Au, Pt, Nb, Zr, Sr, Al, Si, B, C, O, Ca, Ba, La and other materials of low environmental load as additives).
However, Yagi does not explicitly disclose the silver additive to be at most, 5% by weight.
Spinelli teaches the use of Bismuth-silver alloys as a replacement for led alloys with as low as 1.5% wt of silver (Abstract, Bi–Ag alloys have been stressed as possible alternatives to replace Pb-based solder alloys; Pg. 116, Bi–1.5 wt.%Ag, Bi–2.5 wt.%Ag and Bi–4.0 wt.%Ag alloys).
Yagi fails to teach the silver additive to be at most, 5% by weight, however Spinelli teaches that it is a known method in the art of Bismuth-silver alloys to include the silver additive to be at most, 5% by weight. This is strong evidence that modifying Yagi as claimed would produce predictable results (i.e. to provide non-toxic alloys with comparable characteristics to lead based alloys). Accordingly, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Yagi by Spinelli and arrive at the claimed invention since all claimed elements were known in the art and one having ordinary skill in the art could have combined the elements as claimed by known methods with no changes in their respective functions and the combination would have yielded the predictable result of to provide non-toxic alloys with comparable characteristics to lead based alloys. Further, the Examiner would like to note it has been held in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.) (MPEP § 2144.05-I).
Regarding claim 3, Yagi as modified discloses the regenerator material for the cryocooler according to claim 1 (see the combination of references used in the rejection of claim 1 above), wherein
at most, 2% by weight of silver is provided as the additive (Spinelli, Abstract, Bi–Ag alloys have been stressed as possible alternatives to replace Pb-based solder alloys; Pg. 116, Bi–1.5 wt.%Ag, Bi–2.5 wt.%Ag and Bi–4.0 wt.%Ag alloys). Further, the limitations of claim 3 are the result of the modification of references used in the rejection of claim 1 above.
Regarding claim 4, Yagi as modified discloses the regenerator material for the cryocooler according to claim 1 (see the combination of references used in the rejection of claim 1 above), wherein
at most, 1% by weight of silver is provided as the additive (Spinelli, Abstract, Bi–Ag alloys have been stressed as possible alternatives to replace Pb-based solder alloys; Pg. 116, Bi–1.5 wt.%Ag, Bi–2.5 wt.%Ag and Bi–4.0 wt.%Ag alloys). Further, the Examiner would like to not it has been held a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%). (MPEP § 2144.05-I.). Moreover, the limitations of claim 4 are the result of the modification of references used in the rejection of claim 1 above.
Regarding claim 5, Yagi as modified discloses the regenerator material for the cryocooler according to claim 1 (see the combination of references used in the rejection of claim 1 above), wherein
only silver is provided as the additive (Yagi, Abstract, and at least one of Sn, Ag, Au, Pt, Nb, Zr, Sr, Al, Si, B, C, O, Ca, Ba, La and other materials of low environmental load as additives; Further, the teachings of Yagi at least imply silver can be the only additive as it has been held in considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom (MPEP 2144.01)).
Regarding claim 11, Yagi as modified discloses the regenerator material for the cryocooler according to claim 1 (see the combination of references used in the rejection of claim 1 above), wherein at least 0.01 % by weight of silver is provided as the additive (Spinelli, Abstract, Bi–Ag alloys have been stressed as possible alternatives to replace Pb-based solder alloys; Pg. 116, Bi–1.5 wt.%Ag, Bi–2.5 wt.%Ag and Bi–4.0 wt.%Ag alloys; Further, the teachings of alloys as low as 1.5% by weight of silver as an additive at least implies at least 0.01 % by weight of silver is provided as the additive since it has been held in considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom (MPEP 2144.01)). Further, the limitations of claim 11 are the result of the modification of references used in the rejection of claim 1 above.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yagi as modified by Spinelli as applied to claim 1 above, and further in view of Zhou et al. (US Patent No. 11,906,228), hereinafter Zhou.
Regarding claim 6, Yagi as modified discloses the regenerator material for the cryocooler according to claim 1 (see the combination of references used in the rejection of claim 1 above).
However, Yagi as modified does not explicitly disclose the regenerator material is granular.
Zhou teaches the use of granular bismuth as a regenerator material (Col. 5, lines 61-63, It has been verified that granular bismuth is used as the cold storage material, and is used in the cryogenic refrigerator).
Yagi as modified fails to teach the regenerator material is granular, however Zhou teaches that it is a known method in the art of cryogenic regenerator materials to include the regenerator material is granular. This is strong evidence that modifying Yagi as modified as claimed would produce predictable results (i.e. enabling high packing density to increase effective volumetric heat capacity to improve overall system efficacies). Accordingly, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Yagi as modified by Zhou and arrive at the claimed invention since all claimed elements were known in the art and one having ordinary skill in the art could have combined the elements as claimed by known methods with no changes in their respective functions and the combination would have yielded the predictable result of enabling high packing density to increase effective volumetric heat capacity to improve overall system efficacies.
Claims 9 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (US Patent No. 10,281,175), hereinafter Xu in view of Yagi et al. (JP 2004225920), hereinafter Yagi and Spinelli et al. (The use of a directional solidification technique to investigate the interrelationship of thermal parameters, microstructure and microhardness of Bi–Ag solder alloys), hereinafter Spinelli.
Regarding claim 9, Xu discloses a cryocooler (Fig. 1, GM refrigerator 1) comprising:
a cryocooler regenerator (Fig. 1, second stage regenerator 60; Fig. 7, second stage regenerator 160; Col. 10, lines 34-45, FIG. 7 is a schematic diagram showing the structure of a second stage regenerator 160 according to an embodiment of the present invention… (e.g., the GM refrigerator 1)) comprising:
a bismuth-based regenerator material containing bismuth as a main component (Fig. 7, second block 170; Col. 10, lines 52-54, The second block 170 includes a non-magnetic regenerator material different from a zinc based regenerator material… The non-magnetic regenerator material is exemplified by bismuth); and
a magnetic regenerator material disposed at a location different from a location of the bismuth-based regenerator material in an axial direction of the regenerator (Fig. 7, low temperature regenerator part 164, third block 174, fourth block 176; Col. 10-11, lines 65-67 and 1-8, The low temperature regenerator part 164 is provided with a boundary 178 between the third block 174 and the fourth block 176. A magnetic regenerator material fills the third block 174 and the fourth block 176. A first magnetic regenerator material (e.g., HoC2) is used to fill the third block 174 and a second magnetic regenerator material (e.g., Gd2O2S(GOS)) different from the first magnetic regenerator material is used to fill the fourth block 176. In one embodiment, one type of magnetic regenerator material may be used to fill the low temperature regenerator part 164).
However, Xu does not explicitly disclose the bismuth-based regenerator material to include silver as an additive.
Yagi teaches the bismuth-based regenerator material to include silver as an additive (Abstract, To provide a cool accumulator applying a Pb-free cold storage material…In this cool accumulator for a very low temperature refrigeration machine in which the cold storage material 34 is packed, the cold storage material 34 includes one or both of In and Bi as its main components, and at least one of Sn, Ag, Au, Pt, Nb, Zr, Sr, Al, Si, B, C, O, Ca, Ba, La and other materials of low environmental load as additives).
Xu fails to teach the bismuth-based regenerator material to include silver as an additive feature, however Yagi teaches that it is a known method in the art of cryogenic regenerator materials to include the bismuth-based regenerator material to include silver as an additive. This is strong evidence that modifying Xu as claimed would produce predictable results (i.e. to provide non-toxic alloys with comparable characteristics to lead based alloys). Accordingly, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Xu by Yagi and arrive at the claimed invention since all claimed elements were known in the art and one having ordinary skill in the art could have combined the elements as claimed by known methods with no changes in their respective functions and the combination would have yielded the predictable result of to provide non-toxic alloys with comparable characteristics to lead based alloys.
However, Xu as modified does not explicitly disclose the silver additive to be at most, 5% by weight.
Spinelli teaches the use of Bismuth-silver alloys as a replacement for led alloys with as low as 1.5% wt of silver (Abstract, Bi–Ag alloys have been stressed as possible alternatives to replace Pb-based solder alloys; Pg. 116, Bi–1.5 wt.%Ag, Bi–2.5 wt.%Ag and Bi–4.0 wt.%Ag alloys).
Xu as modified fails to teach the silver additive to be at most, 5% by weight, however Spinelli teaches that it is a known method in the art of Bismuth-silver alloys to include the silver additive to be at most, 5% by weight. This is strong evidence that modifying Xu as modified as claimed would produce predictable results (i.e. to provide non-toxic alloys with comparable characteristics to lead based alloys). Accordingly, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Xu as modified by Spinelli and arrive at the claimed invention since all claimed elements were known in the art and one having ordinary skill in the art could have combined the elements as claimed by known methods with no changes in their respective functions and the combination would have yielded the predictable result of to provide non-toxic alloys with comparable characteristics to lead based alloys. Further, the Examiner would like to note it has been held in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.) (MPEP § 2144.05-I).
Regarding claim 14, Xu as modified discloses the regenerator for the cryocooler according to claim 9 (see the combination of references used in the rejection of claim 9 above), further comprising:
a zinc-based regenerator material disposed on a side opposite to the magnetic regenerator material with respect to the bismuth silver-based regenerator material in the axial direction of the regenerator (Xu, Fig. 7, first block 168; Col. 10, lines 50-52, The first block 168 includes a zinc based regenerator material (e.g., zinc based metal such as zinc)).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Yagi et al. (JP 2004225920), hereinafter Yagi in view of Spinelli et al. (The use of a directional solidification technique to investigate the interrelationship of thermal parameters, microstructure and microhardness of Bi–Ag solder alloys), hereinafter Spinelli and Zhou et al. (US Patent No. 11,906,228), hereinafter Zhou.
Regarding claim 10, Yagi discloses a regenerator material for a cryocooler (Pg. 1, paragraph 1, The present invention relates to a regenerator filled with a regenerator material having a low specific heat at a low temperature, and more particularly to a regenerator used for a Stirling type, a GM (Giffrod McMahon) type, a pulse tube type or the like; Fig. 5, GM refrigerator 10, second regenerator 30, cold storage material 34) comprising:
bismuth as a main component (Abstract, To provide a cool accumulator applying a Pb-free cold storage material…In this cool accumulator for a very low temperature refrigeration machine in which the cold storage material 34 is packed, the cold storage material 34 includes one or both of In and Bi as its main components); and
silver as an additive (Abstract, and at least one of Sn, Ag, Au, Pt, Nb, Zr, Sr, Al, Si, B, C, O, Ca, Ba, La and other materials of low environmental load as additives).
However, Yagi does not explicitly disclose the silver additive to be at most, 2% by weight.
Spinelli teaches the use of Bismuth-silver alloys as a replacement for led alloys with as low as 1.5% wt of silver (Abstract, Bi–Ag alloys have been stressed as possible alternatives to replace Pb-based solder alloys; Pg. 116, Bi–1.5 wt.%Ag, Bi–2.5 wt.%Ag and Bi–4.0 wt.%Ag alloys).
Yagi fails to teach the silver additive to be at most, 2% by weight, however Spinelli teaches that it is a known method in the art of Bismuth-silver alloys to include the silver additive to be at most, 2% by weight. This is strong evidence that modifying Yagi as claimed would produce predictable results (i.e. to provide non-toxic alloys with comparable characteristics to lead based alloys). Accordingly, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Yagi by Spinelli and arrive at the claimed invention since all claimed elements were known in the art and one having ordinary skill in the art could have combined the elements as claimed by known methods with no changes in their respective functions and the combination would have yielded the predictable result of to provide non-toxic alloys with comparable characteristics to lead based alloys. Further, the Examiner would like to note it has been held in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.) (MPEP § 2144.05-I).
Moreover, Yagi as modified does not explicitly disclose the regenerator material is granular.
Zhou teaches the use of granular bismuth as a regenerator material (Col. 5, lines 61-63, It has been verified that granular bismuth is used as the cold storage material, and is used in the cryogenic refrigerator).
Yagi as modified fails to teach the regenerator material is granular, however Zhou teaches that it is a known method in the art of cryogenic regenerator materials to include the regenerator material is granular. This is strong evidence that modifying Yagi as modified as claimed would produce predictable results (i.e. enabling high packing density to increase effective volumetric heat capacity to improve overall system efficacies). Accordingly, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Yagi as modified by Zhou and arrive at the claimed invention since all claimed elements were known in the art and one having ordinary skill in the art could have combined the elements as claimed by known methods with no changes in their respective functions and the combination would have yielded the predictable result of enabling high packing density to increase effective volumetric heat capacity to improve overall system efficacies.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Yagi as modified by Spinelli and Zhou as applied to claim 6 above, and further in view of Satoh (US 20080104967), hereinafter Satoh.
Regarding claim 12, Yagi as modified discloses the regenerator material for the cryocooler according to claim 6 (see the combination of references used in the rejection of claim 1 above).
However, Yagi as modified does not explicitly disclose wherein a particle size of granules of the regenerator material is 0.14 mm or more and 1.6 mm or less.
Satoh teaches wherein a particle size of granules of the regenerator material is 0.14 mm or more and 1.6 mm or less (Pg. 2-3, paragraph 50, The grain size thereof is 0.14 mm to 1.6 mm, preferably 0.15 mm to 1.4 mm, and more preferably 0.22 mm to 1.3 mm).
Therefore, it would have been obvious before the effective filing date of the claimed invention to modify the particle size of granules of the regenerator material of Yagi as modified to be 0.14 mm or more and 1.6 mm or less as taught by Satoh. One of ordinary skill in the art would have been motivated to make this modification because grain size of less than 0.14 mm causes excessively high density of bismuth when the regenerator is filled with bismuth to rapidly increase the flow resistance of helium gas as a cooling medium and when the grain size exceeds 1.6 mm, the heat exchange efficiency between the granular body and the cooling medium may be remarkably reduced (Satoh, Pg. 3, paragraph 52).
Regarding claim 13, Yagi as modified discloses the regenerator material for the cryocooler according to claim 6 (see the combination of references used in the rejection of claim 1 above).
However, Yagi as modified does not explicitly disclose wherein a ratio of a maximum diameter to a minimum diameter of granules of the regenerator material is 5 or less.
Satoh teaches wherein a ratio of a maximum diameter to a minimum diameter of granules of the regenerator material is 5 or less (Pg. 3, paragraph 53, The ratio (aspect ratio) of the largest diameter to the lowest diameter of the regenerator material made of bismuth of this embodiment is 5 or less in a three-dimensional optional direction, preferably 3 or less, more preferably 2 or less. Still more preferably, the shape of the regenerator material is preferably brought close to sphericity as much as possible. Since the aspect ratio exceeding 5 causes mechanical modification destruction easily and difficult high density filling, the cooling efficiency is reduced).
Therefore, it would have been obvious before the effective filing date of the claimed invention to modify the particle size of granules of the regenerator material of Yagi as modified wherein a ratio of a maximum diameter to a minimum diameter of granules of the regenerator material is 5 or less as taught by Satoh. One of ordinary skill in the art would have been motivated to make this modification because when the aspect ratio exceeds 5 it causes mechanical modification destruction easily and difficult high density filling causing the cooling efficiency to be reduced (Satoh, Pg. 3, paragraph 53).
Response to Arguments
Applicant's arguments filed August 28th, 2026 have been fully considered but they are not persuasive.
Applicant argues on Pg. 6-7 (as numbered by Applicant) of the Remarks, “First, applicant submits that Spinelli does not disclose bismuth-silver alloys as a replacement for lead alloys for cryogenic thermal performance. As explained in the previous response, Spinelli is silent on cryogenic thermal properties, such as specific heat at cryogenic temperatures or regenerative cooling performance. Therefore, even if a person having ordinary skill in the art were to combine Yagi and Spinelli, Spinelli provides no teaching or suggestion regarding how the addition of silver would affect the cooling capacity of a cryocooler. In response to the previous arguments, the Examiner contends that "Spinelli explicitly teaches the use of Bi-Ag alloy with silver amounts ranging between l.5%wt to 4.0¾wt as a replacement for lead based solder material as the silver amounts by weight used as an additive in the Bismuth alloy solder material of Spinelli are used to achieve thermal properties comparable to thermal properties of lead." Rejection at 12. Applicant submits that Spinelli strictly discusses "solidification thermal parameters" (e.g., growth rate and cooling rate during the manufacturing process). As cited by the Examiner, Spinelli 's abstract explicitly states: In order to better comprehend such aspects and their correlations with solidification thermal parameters (growth rate, v and cooling rate, T), directional solidification experiments were carried out under transient heat flow conditions. (emphasis added). Furthermore, in the "3. Results and Discussion" section, Spinelli clarifies exactly what these parameters mean: The solidification thermal parameters like growth rate and cooling rate were included inside each microstructure. (page 117, left column, lines 23-25 (emphasis added)). Accordingly, applicant submits that the Examiner is improperly equating metallurgical manufacturing parameters with cryogenic thermal properties. Therefore, the asserted motivation to combine is based on a mischaracterization of the cited reference and cannot be maintained.”
However, this argument is not persuasive as the base ref Yagi already explicitly discloses the addition of silver into bismuth to create an alloy comparable to lead for use in regeneration material that has improve refrigeration characteristics (Yagi, Paragraph 19, According to the present invention, it is possible to obtain a regenerator using a Pb-free regenerator material, which exhibits a refrigerating capacity that can be substituted for Pb as a conventional regenerator material). Therefore, the Examiner is not relying on Spinelli for teachings of using silver as an additive in a bismuth alloy for improving refrigeration characteristics of the bismuth. The reliance on Spinelli is only to show the known amount of silver to be added to a bismuth alloy to achieve thermal properties similar to lead. Further, the Examiner would like to note that solder is commonly used as regenerator material in cryocoolers as evidenced by Zhou et al. (US Patent No. 11,906,228) which recites, “The selected particle may be a solder ball made of a tin alloy, where the solder ball is widely used in tinplate, a fluxing agent, organic synthesis, chemical production and alloy manufacturing, and assembling of groups of integrated circuits in the electronics industry. The solder ball has a low cost and is extremely accessible (Col. 6, lines 19-25).” Therefore, it is already known and obvious to a PHOSITA that solder material can be used as regenerator material in a cryocooler. See the rejection of claim 1 above.
Applicant argues on Pg. 7-8 (as numbered by Applicant) of the Remarks and in the Declaration of August 28th, 2026, “Second, applicant respectfully submits that the invention recited in claim 1 would not have been obvious over the cited references because it produces unexpected results.”
However, this argument is not persuasive as Yagi explicitly discloses the addition of silver into a bismuth alloy to provide refrigeration characteristics comparable to lead which is a teaching that it is known in the art silver additive in bismuth to provide improved refrigeration characteristics and is therefore not an unexpected result (Yagi, Paragraph 19, According to the present invention, it is possible to obtain a regenerator using a Pb-free regenerator material, which exhibits a refrigerating capacity that can be substituted for Pb as a conventional regenerator material).
The Declaration under 37 CFR 1.132 filed August 28th, 2026 is insufficient to overcome the rejection of claim 1 based upon Yagi in view of Spinelli as set forth in the last Office action because:
Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof. Specifically, Yagi explicitly discloses the addition of silver into a bismuth alloy to provide refrigeration characteristics comparable to lead which is a teaching that it is known in the art silver additive in bismuth to provide improved refrigeration characteristics and is therefore not an unexpected result (Yagi, Paragraph 19, According to the present invention, it is possible to obtain a regenerator using a Pb-free regenerator material, which exhibits a refrigerating capacity that can be substituted for Pb as a conventional regenerator material). See MPEP 716.02(c).
Further, Fig. 5 of Spinelli depicts a similar Eutectic graph of Bi-Ag alloy which also shows a eutectic point at Bi-2.7 wt% Ag (261.8°C). Therefore, although the cracking benefits described by the Applicant are not explicitly discussed in Spinelli, the Bi-Ag alloys of Spinelli would have the same cracking resistance since it has been held 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Claims were directed to a titanium alloy containing 0.2-0.4% Mo and 0.6-0.9% Ni having corrosion resistance. A Russian article disclosed a titanium alloy containing 0.25% Mo and 0.75% Ni but was silent as to corrosion resistance. The Federal Circuit held that the claim was anticipated because the percentages of Mo and Ni were squarely within the claimed ranges. The court went on to say that it was immaterial what properties the alloys had or who discovered the properties because the composition is the same and thus must necessarily exhibit the properties.)." MPEP 2112.01-I.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Applicant argues on Pg. 8-9 (as numbered by Applicant) of the Remarks, “Third, applicant submits that the known cryogenic properties of silver would have discouraged a person of ordinary skill in the art from combining the references in the manner proposed by the Examiner. As explained above and in Dr. Xu's Declaration, silver (Ag) has a lower specific heat than pure bismuth (Bi) at cryogenic temperatures below about 32 K. Because regenerative cooling capacity depends heavily on the specific heat of the regenerator material, a person of ordinary skill in the art would have expected that adding silver to a pure bismuth regenerator material would decrease the overall specific heat and thereby degrade, rather than improve, the cooling performance of the cryocooler. See Dr. Xu Declaration at ,-i,i 4-7. Although the Examiner argues that Yagi broadly discloses silver as one of several possible additives for a bismuth-based regenerator material (Office Action at 12), Yagi provides no teaching that would overcome this thermodynamic expectation. Likewise, Spinelli 's disclosure of particular silver concentrations in connection with the manufacturing and metallurgical characteristics of Bi-Ag solder alloys provides no reason why a person of ordinary skill in the art would have accepted an expected reduction in cryogenic cooling performance when modifying Yagi's regenerator material. Accordingly, even assuming that the silver concentrations disclosed by Spinelli provide the alleged manufacturing benefits, a person of ordinary skill in the art seeking a material for Yagi's cryogenic regenerator would have had a technical reason against making the proposed modification: the modification would have been expected to adversely affect the cooling performance for which the regenerator material is employed. Applicant's objective evidence further demonstrates the significance of this contrary technical expectation. Rather than producing the expected degradation in cooling performance, the claimed invention achieves unexpectedly superior cooling capacity compared with pure bismuth (0% Ag), as demonstrated in FIGS. 5 and 6 and paragraphs [0059]-[0063] and [0065]-[0067] of the present specification. See also Dr. Xu Declaration at ,i,I 4-7.”
However, this argument is not persuasive as the base ref Yagi already explicitly discloses the addition of silver into bismuth to create an alloy comparable to lead for use in regeneration material that has improve refrigeration characteristics (Yagi, Paragraph 19, According to the present invention, it is possible to obtain a regenerator using a Pb-free regenerator material, which exhibits a refrigerating capacity that can be substituted for Pb as a conventional regenerator material). Therefore, the Examiner is not relying on Spinelli for teachings of using silver as an additive in a bismuth alloy for improving refrigeration characteristics of the bismuth. The reliance on Spinelli is only to show the known amount of silver to be added to a bismuth alloy to achieve thermal properties similar to lead. Further, the Examiner would like to note that solder is commonly used as regenerator material in cryocoolers as evidenced by Zhou et al. (US Patent No. 11,906,228) which recites, “The selected particle may be a solder ball made of a tin alloy, where the solder ball is widely used in tinplate, a fluxing agent, organic synthesis, chemical production and alloy manufacturing, and assembling of groups of integrated circuits in the electronics industry. The solder ball has a low cost and is extremely accessible (Col. 6, lines 19-25).” Therefore, it is already known and obvious to a PHOSITA that solder material can be used as regenerator material in a cryocooler. See the rejection of claim 1 above.
Applicant argues on Pg. 10-11 (as numbered by Applicant) of the Remarks, “Fourth, applicant submits that Ex parte Obiaya in MPEP 2145 is inapplicable. During the interview, the Examiner indicated that the alleged improvement may flow from the suggestion in the art and therefore not produce patentable unexpected results such as discussed in MPEP 2145. Applicant submits that, unlike Ex parte Obiaya, these unexpected results do not "naturally flow" from the suggestions of the cited references. In U.S. Patent No. 4,128,458 (which is the patent at issue in Ex parte Obiaya), the disclosure explains that the labyrinth heater is used to produce a uniform heat. See, e.g., 3 :61-4: 14. The specification further explains that: the sensor response is dependent upon the sample temperature, a reliable means of heating the sample fluid to a predetermined temperature within the system is a necessity. By including the labyrinth as a direct part of the combustible sample flow path, a reliable constant temperature of the sample can be assured by the ambient temperature of the labyrinth, which will facilitate calibrating the system. Id. Thus, the "unexpected improvement" of the improved response "naturally flowed" from the reliable constant temperature which was caused by the labyrinth heater. In other words, the prior art taught using a labyrinth heater because it produced a uniform temperature. Obiaya argued that using the labyrinth heater to maintain the temperature produced unexpected results. The BPAI determined that "[t]he fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 U.S.P.Q. 58, 60 (1985). No analogous relationship exists here. Unlike the addition of a labyrinth heater which may maintain samples at a uniform temperature where this temperature provided unexpected results, the unexpected results here do not "naturally flow" from the combination of references. Rather, as noted above, the cited references discuss alleged improvements concerning the manufacturing process. Conversely, the unexpected results of the claimed invention are directed to cooling during operation and are unrelated to the alleged improvement to the cited art. Thus, the unexpected results do not "naturally flow" from the improvements arising during the manufacturing process.”
However, this argument is not persuasive as the base ref Yagi already explicitly discloses the addition of silver into bismuth to create an alloy comparable to lead for use in regeneration material that has improve refrigeration characteristics (Yagi, Paragraph 19, According to the present invention, it is possible to obtain a regenerator using a Pb-free regenerator material, which exhibits a refrigerating capacity that can be substituted for Pb as a conventional regenerator material). Therefore, the Examiner is not relying on Spinelli for teachings of using silver as an additive in a bismuth alloy for improving refrigeration characteristics of the bismuth. The reliance on Spinelli is only to show the known amount of silver to be added to a bismuth alloy to achieve thermal properties similar to lead. Further, the Examiner would like to note that solder is commonly used as regenerator material in cryocoolers as evidenced by Zhou et al. (US Patent No. 11,906,228) which recites, “The selected particle may be a solder ball made of a tin alloy, where the solder ball is widely used in tinplate, a fluxing agent, organic synthesis, chemical production and alloy manufacturing, and assembling of groups of integrated circuits in the electronics industry. The solder ball has a low cost and is extremely accessible (Col. 6, lines 19-25).” Therefore, it is already known and obvious to a PHOSITA that solder material can be used as regenerator material in a cryocooler. The Examiner maintains that the results of improved cooling capabilities and cracking resistance are not unexpected result as Yagi explicitly discloses the improved refrigeration capacity and Spinelli teaches improved cooling rates of the solder material which vary with the silver content (Fig. 1 of Spinelli depicts the cooling rate of Bi-1.5 wt. % Ag to be faster than the cooling rate of Bi-4.0 wt. % Ag, this is further evidence that the benefits of adding silver to bismuth are limited to low amounts of silver as jumping from 1.5 wt.% Ag to 4.0 wt.% Ag did not increase the cooling rate but decreased it). Spinelli further depicts a similar Eutectic graph of Bi-Ag alloy which also shows a eutectic point at Bi-2.7 wt% Ag (261.8°C). Therefore, although the cracking benefits described by the Applicant are not explicitly discussed in Spinelli, the Bi-Ag alloys of Spinelli would have the same cracking resistance since it has been held 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Claims were directed to a titanium alloy containing 0.2-0.4% Mo and 0.6-0.9% Ni having corrosion resistance. A Russian article disclosed a titanium alloy containing 0.25% Mo and 0.75% Ni but was silent as to corrosion resistance. The Federal Circuit held that the claim was anticipated because the percentages of Mo and Ni were squarely within the claimed ranges. The court went on to say that it was immaterial what properties the alloys had or who discovered the properties because the composition is the same and thus must necessarily exhibit the properties.)." MPEP 2112.01-I.
The rejections of independent claims 1 and 9 are maintained. The rejections of dependent claims 3-6 are also maintained for at least the reasons described herein. See the rejection of new claims 10-14 above.
Conclusion
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/DEVON MOORE/Examiner, Art Unit 3763 September 08th, 2026
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