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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a transfer mechanism in claim 1, movable thermal shielding system in claim 9.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
To clarify, the transfer mechanism is considered “a sample holder and a transfer rod” (para. 000020 of specification) or equivalents and a movable thermal shielding system is considered “at least one movable thermal shield element” (para. 00027) or equivalents.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 9-11, 18-19, and 21-24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hess (US 5611207).
Per claim 1, Hess teaches a system, comprising:
a cooling chamber (29);
a pre-cooling chamber (39) operatively connected to the cooling chamber,
wherein the pre-cooling chamber (39) is configured to pre-cool a device (“an object”, col. 8, line15) to a first cryogenic temperature (col. 5, lines 51-58); and
a transfer mechanism (41) configured to transfer the device (“object to be cooled”, col. 8, line 18) from the pre-cooling chamber (39) into the cooling chamber (29) with the cooling chamber maintained at a second cryogenic temperature, which is the same or less than the first cryogenic temperature (see figure 13 showing 117 inside precooling chamber 39 and in thermal contact with shutter 24 and cooling stage S2 thereby providing cooling to the pre-cooling chamber 39 that is the same as the first cryogenic temperature).
Per claim 2, Hess meets the claim limitations as disclosed in the above rejection of claim 1. Further, Hess teaches a vacuum pump coupled to the pre-cooling chamber (“The air lock chamber 39, also shown in FIG. 1, is fabricated from a length of 3" O.D Type 304 stainless steel tube 45 and stainless steel ring flanges 38 and 40 which are welded to tube 45. The air lock chamber 39 is then vacuum checked in the same fashion as the vacuum chamber sections 30 and 31. Also shown in FIG. 1 are two pumpout ports 42 and 44 with ring flanges 47 and 48 conforming to the vacuum ISO-KF-40 (nominal 1.5 inch I.D.) standard. Pumpout port 42, located on the upper vacuum chamber section 31 is used during testing as a pumpout port or for mounting a hot filament ion gauge to measure the vacuum pressure. In ordinary use pumpout port 42 is blanked off with standard ISO-KF-40 vacuum components and only pumpout port 44 is used.”, col. 5, lines 37-50) (to clarify, pump out port is inherently coupled to a vacuum pump to evacuate pre-cooling chamber 39) and configured to generate a vacuum pressure level within the pre-cooling chamber which is the same or similar to a vacuum pressure level within the cooling chamber (“When closed, vacuum gate vane 37 provides an air tight partition between chamber 29 and an air lock chamber 39”, col. 5, lines 32-34).
Per claim 3, Hess meets the claim limitations as disclosed in the above rejection of claim 1. Further, Hess teaches wherein the sample transfer mechanism comprises: a sample holder (117) configured to fixedly mount the device (“object to be cooled”, col. 8, line 18) thereon; and a transfer rod (57) coupled to the sample holder (117), wherein the transfer rod (57) is configured to transfer the sample holder (117) with the device (“object to be cooled”, col. 8, line 18) fixedly mounted thereon from the pre-cooling chamber (39) into the cooling chamber (29).
Per claim 9, Hess meets the claim limitations as disclosed in the above rejection of claim 1. Further, Hess teaches wherein the cooling chamber (29) comprises a movable thermal shielding system (24) which is configured to thermally shield the pre-cooling chamber (39) from an inner region (lower region of 29) of the cooling chamber (29) as the sample transfer mechanism (41) transfers the device (“object to be cooled”, col. 8, line 18) from the pre-cooling chamber (39) into the inner region of the cooling chamber (lower region of 29).
Per claim 10, Hess meets the claim limitations as disclosed in the above rejection of claim 9. Further, Hess teaches wherein the movable thermal shielding system comprises at least one movable thermal shield element (24) which is configured to be disposed in (i) a first position in which the at least one movable thermal shield element covers an aperture of a chamber wall of the inner region of the cooling chamber (position of 24 when covering hole for 117), and (ii) a second position which opens the aperture to allow the device to pass through the aperture as the device is transferred into or out from the inner region of the cooling chamber (position of 24 when allowing 117 to pass through)
Per claim 11, Hess meets the claim limitations as disclosed in the above rejection of claim 10. Further, Hess teaches
wherein the at least one movable thermal shield element (24) comprises one of a passive actuator mechanism (25) to enable the at least one movable thermal shield element to move between at least the first position and the second position (“The enclosed radiation shield 22 is provided with a rotating shutter 24 which rotates about the cylindrical axis of shield 22 and can be positioned by turning knob”, col. 5, lines 15-18).
Claim 18 recites similar limitations as claim 1 and is rejected in a similar manner.
Further, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will perform the claimed process. Thus, the method, as claimed, would necessarily result from the normal operation of the apparatus. See MPEP 2112.02.
Claim 19 recites similar limitations as claim 2 and is rejected in a similar manner.
Further, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will perform the claimed process. Thus, the method, as claimed, would necessarily result from the normal operation of the apparatus. See MPEP 2112.02.
Per claim 21, Hess meets the claim limitations as disclosed in the above rejection of claim 18. Further, Hess teaches wherein pre-cooling the device (“an object”, col. 8, line 15) in the pre-cooling chamber (39) is performed using a cryogenic pump (21) that is operatively connected to the pre-cooling chamber.
Per claim 22, Hess meets the claim limitations as disclosed in the above rejection of claim 18. Further, Hess teaches wherein transferring the pre-cooled device (“object”, col. 8, lines 15) from the pre-cooling chamber (39) into the cooling chamber (29) comprises utilizing a movable thermal shielding system (24) to thermally shield the pre-cooling chamber from an inner region of the cooling chamber (inside 29) as the device is transferred from the pre-cooling chamber (inside 39) into the inner region of the cooling chamber (inside 29) (“a rotating shutter which rotates about the cylindrical axis of said radiation shield which when in closed position acts so as to thermally shield said cold stage of said cooling source from radiation sourced at temperatures higher than the temperature of said cold stage and and which also enables a thermal contact means between said radiation shield and said insert for the purpose of precooling said insert”, col. 12, lines 40-49).
Claim 23 recites similar limitations as claim 10 and is rejected in a similar manner.
Further, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will perform the claimed process. Thus, the method, as claimed, would necessarily result from the normal operation of the apparatus. See MPEP 2112.02.
Per claim 24, Hess meets the claim limitations as disclosed in the above rejection of claim 1. Further, Hess teaches a cryogenic pump (21) operatively connected to the pre-cooling chamber (39) and configured to control a flow of coolant to pre-cool the device (“object”, col. 8, lines 15) within the pre-cooling chamber to the first cryogenic temperature (pre-cooling temperature) (to clarify, cryogenic pump 21 provides cooling to the entire system including to the pre-cooling chamber 39).
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
Claim(s) 12 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hess (US 5611207) in view of Kelly et al. (US 20030126886).
Per claim 12, Hess meets the claim limitations as disclosed in the above rejection of claim 1. Further, Hess teaches the first cryogenic temperature and the second cryogenic temperature but fails to explicitly teach wherein: the first cryogenic temperature is in a range of about 1 Kelvin to about 4 Kelvin; and the second cryogenic temperature is about 20 millikelvin or less.
However, Kelly teaches a dilution refrigerator system wherein a first cryogenic temperature is in 4.2K (“Prior to reaching the base temperature, 3He is pre-cooled to 4.2K”, para. 0033) and a second cryogenic temperature is 20 millikelvin or less (“7 mK”, para. 0033) for allowing different types of experiments with different performance requirements to be performed in the system (para. 0012). Further, per MPEP 2144.05, recites “ a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close”. Therefore it would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide a first cryogenic temperature be in a range of 1 Kelvin to 4 Kelvin; and a second cryogenic temperature be 20 millikelvin or less, as taught by Kelly in the invention of Hess, in order to advantageously allow different types of experiments with different performance requirements to be performed in the system (para. 0012).
Claim 20 recites similar limitations as claim 12 and is rejected in a similar manner.
Further, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will perform the claimed process. Thus, the method, as claimed, would necessarily result from the normal operation of the apparatus. See MPEP 2112.02.
Response to Arguments
In regard to the 35 USC 112(f) interpretation, per MPEP 2181, section 1, sub-section A, “The following is a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f): "mechanism for," "module for," "device for," "unit for," "component for," "element for," "member for," "apparatus for," "machine for," or "system for."”; thus “transfer mechanism configured to transfer the device” is considered 112f language and will be interpreted under 35 USC 112(f).
In regard to the Applicant’s argument on page 7, that pre-cooling chamber 39 is not configured to pre-cool a device to a first cryogenic temperature as required by claim 1; the Examiner respectfully disagrees. Cooling chamber is configured to be maintained at 10K (col. 5, lines 56). When shutter 24 is opened via turning knob 25 the cooling energy provided by cooling pump 21 will precool the fluidly coupled chamber 39 (“a rotating shutter which rotates about the cylindrical axis of said radiation shield which when in closed position acts so as to thermally shield said cold stage of said cooling source from radiation sourced at temperatures higher than the temperature of said cold stage and and which also enables a thermal contact means between said radiation shield and said insert for the purpose of precooling said insert”, col. 12, lines 40-49). Therefore the applicant’s argument is not persuasive and the rejection remains.
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 DAVID J TEITELBAUM whose telephone number is (571)270-5142. The examiner can normally be reached on Monday-Friday 8:00 am-4:30 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FRANTZ JULES can be reached on (571) 272-66816681. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID J TEITELBAUM/Primary Examiner, Art Unit 3763
