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 .
Response to Amendment
The amendment filed April 18th, 2026 has been entered. Claims 1 and 3-9 remain pending in the application. The amendments to the claims have overcome each and every claim objection previously cited in the Non-Final rejection mailed January 29th, 2026. However, the amendment has raised other issues detailed below.
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 and 3-5 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)).
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 7-9 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 7, Xu discloses a regenerator for a cryocooler (Fig. 1, second stage regenerator 60, GM refrigerator 1; 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 8, Xu as modified discloses the regenerator for the cryocooler according to claim 7 (see the combination of references used in the rejection of claim 7 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)).
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).
Response to Arguments
Applicant's arguments filed April 18th, 2026 have been fully considered but they are not persuasive.
Applicant argues on Pg. 5 (as numbered by the Applicant) of the Remarks, “However, Spinelli is directed to "solder alloys" and investigates the interrelationship between solidification "thermal parameters" (such as growth rate and cooling rate during solidification), microstructure, and microhardness. Spinelli is completely 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 absolutely no teaching or suggestion regarding how the addition of silver would affect the cooling capacity of a cryocooler.” However, this argument is not persuasive as Yagi explicitly discloses the use of Bi-Ag alloy as a replacement for lead based regenerator material (Yagi, 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) and Spinelli explicitly teaches the use of Bi-Ag alloy with silver amounts ranging between 1.5%wt. to 4.0%wt 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 (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). Per these teachings, it would be obvious to a PHOSITA that the Bi-Ag alloy with silver amounts ranging between 1.5%wt. to 4.0%wt as taught by Spinelli could be used in any application where lead based material are being replaced by a Bi-Ag alloy, including a regenerator material for a cryocooler for predictable result of providing non-toxic alloys with comparable characteristics to lead based alloy. See the rejection of claim 1 above.
Applicant argues on Pg. 5-6 (as numbered by the Applicant) of the Remarks, “Furthermore, as described in paragraph [0050] and shown in FIG. 3 of the specification, silver (Ag) has a lower specific heat than pure bismuth (Bi) at cryogenic temperatures below about 32K. Therefore, a skilled person would naturally expect that adding silver to a pure bismuth regenerator material would decrease the overall specific heat, thereby degrading the cooling capacity of the cryocooler. Thus, a person having ordinary skill in the art would not combine Yagi with Spinelli.” However, this argument is not persuasive as Yagi explicitly discloses the use of Bi-Ag alloys in regenerator materials for cryocoolers (Yagi, 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). See the rejection of claim 1 above.
Applicant argues on Pg. 6-7 (as numbered by the Applicant) of the Remarks, “Even if the Examiner maintains that a person having ordinary skill in the art would be motivated to combine Yagi and Spinelli, the claimed invention achieves unexpectedly superior cooling capacities. The specification (FIGS. 5 and 6, and related paragraphs [0059]-[0063], [0065]-[0067]) provides a direct comparative test between a comparative example (0 wt% Ag; pure bismuth) and the claimed invention (0.01 to 5.0 wt% Ag). Importantly, these data were obtained using the same cryocooler under common operating conditions. Because the test conditions were kept identical, the objective evidence establishes a clear nexus between the solely modified feature (the addition of at most 5% Ag to bismuth, as recited in claim 1) and the resulting improvements. Due to the addition of the claimed amount of silver, both the first-stage cooling temperature (Tl) and the second-stage cooling temperature (T2) were unexpectedly lowered (i.e., cooling capacities improved) as shown in FIGS. 5 and 6: First Stage (FIG. 5): The first-stage cooling temperature (Tl) is lowered to 38.9K - 40.0K, compared to 40.2K for pure bismuth (0 wt% Ag). Second Stage (FIG. 6): Similarly, the second-stage cooling temperature (T2) is lowered to 3.82K - 3.83K, compared to 3.86K for pure bismuth. The unexpected improvement in cooling capacity is demonstrated across the entire amended claimed range (from 0.01 wt% up to 5.0 wt% of silver). According to MPEP 2145, rebuttal evidence and arguments can be presented directly from the specification without needing a separate Declaration under 3 7 CFR 1.132. Thus, a person having ordinary skill in the art would not combine Yagi with Spinelli. Because the cited references fail to teach or suggest this unexpected improvement in cooling capacity, and the specification provides factually supported objective evidence of unexpected results commensurate in scope with the claims, the prima facie case of obviousness is successfully rebutted. Consequently, the rejection of dependent claim 6, which relies on the further combination with Zhou, also fails.” However, this argument is not persuasive as the result that Silver can be added to Bismuth to create an Alloy suitable as a replacement to lead is clearly not unexpected as Yagi already acknowledges this fact (Yagi, 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). Further, when pondering a specific amount of silver additive for use in a Bi-Ag alloy a PHOSITA can look to Spinelli which explicitly teaches the use of Bi-Ag alloy with silver amounts ranging between 1.5%wt. to 4.0%wt 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 (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). Therefore, the concept of adding silver to a Bismuth based alloy for a replacement to a lead-based regenerator material for use in a cryocooler is to achieve an alloy with thermal properties comparable to lead not unexpected as evidenced by Yagi. Further, the amounts of silver by weight that should be used in a Bi-Ag alloy to replace a lead-based material are also not unexpected as evidenced by the teachings of Spinelli. See the rejection of claim 1 above.
Applicant argues on Pg. 7-8 (as numbered by the Applicant) of the Remarks, “Xu discloses a regenerator having a pure bismuth material and a magnetic material. Even if a skilled person were to modify Xu's bismuth material with silver based on Yagi and Spinelli, the skilled person would expect a degradation in the cooling capacity due to the lower specific heat of silver, as argued above. However, as clearly demonstrated by the data in FIGS. 5 and 6, the specific axial arrangement of the claimed bismuth silver-based material (at most 5% Ag) and the magnetic regenerator material as recited in claim 7 unexpectedly improves both the first-stage and second stage cooling capacities compared to the pure bismuth arrangement. Neither Xu, Yagi, nor Spinelli teaches or suggests this unexpected synergistic improvement resulting from the claimed configuration. As claim 8 depends from claim 7 and claim 9 contains at least some similar feature as claim 7, please see applicant's discussion of claim 7 above.” However, this argument is not persuasive as the result that Silver can be added to Bismuth to create an Alloy suitable as a replacement to lead is clearly not unexpected as Yagi already acknowledges this fact (Yagi, 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). Further, when pondering a specific amount of silver additive for use in a Bi-Ag alloy a PHOSITA can look to Spinelli which explicitly teaches the use of Bi-Ag alloy with silver amounts ranging between 1.5%wt. to 4.0%wt 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 (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). Therefore, the concept of adding silver to a Bismuth based alloy for a replacement to a lead-based regenerator material for use in a cryocooler is to achieve an alloy with thermal properties comparable to lead not unexpected as evidenced by Yagi. Further, the amounts of silver by weight that should be used in a Bi-Ag alloy to replace a lead-based material are also not unexpected as evidenced by the teachings of Spinelli. See the rejection of claims 7 and 9 above.
The rejections of independent claims 1, 7, and 9 are maintained. The rejections of dependent claims 3-6 and 8 are also maintained for at least the reasons described herein.
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.
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/DEVON MOORE/Examiner, Art Unit 3763 May 15th, 2026
/FRANTZ F JULES/Supervisory Patent Examiner, Art Unit 3763
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