DETAILED ACTION
This Office Action is in response to Application filed August 28, 2024.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claim 13 is objected to because of the following informalities: the limitation “in a range of from about 1*10-4 to about 1*10-12” should be replaced with “in a range of from about 1*10-12 to about 1*10-4”, because the value of 1*10-4 is greater than the value of 1*10-12. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 13 and 33-42 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventors, at the time the application was filed, had possession of the claimed invention. Regarding claim 13, the amended claim 13 was filed March 13, 2025 about eight months after the filing date of current application, and therefore, the amended claim 13 fails to comply with the written description requirement for the following reasons: (a) the value of the single phase magnetoelectric coupling coefficient of “about 92.8 mV/cmOe” recited on lines 14-15 was mentioned in paragraphs [0007] and [0123] of current application, (b) however, this value of “about 92.8 mV/cmOe” is a maximum value for a single phase magnetoelectric coupling coefficient, and Applicants did not originally disclose any material compositions that satisfy the limitations recited on lines 3-9 of the amended claim 13 would exhibit the maximum value of “about 92.8 mV/cmOe” for a single phase magnetoelectric coupling coefficient, and (c) therefore, the amended claim 13 may also fail to comply with the Enablement requirement, or at least the Scope of Enablement requirement, because not all the material compositions that satisfy the limitations recited on lines 3-9 of the amended claim 13 appear to exhibit the maximum value of “about 92.8 mV/cmOe” for a single phase magnetoelectric coupling coefficient. Claims 33-42 depend on claim 13, and therefore, claims 33-42 also fail to comply with the written description requirement.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 13 and 33-42 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
(1) Regarding claim 13, it is not clear what the claimed invention is, because (a) while Applicants claim “A thin film” in the preamble, Applicants further claim “in epitaxial contact with a single crystalline” on line 4, not to mention “the single crystalline substrate” in claims 38 and 39, (b) therefore, while Applicants claim “A thin film”, Applicants also appear to claim a composite structure comprising the thin film, which is an invention distinct from “A thin film”, and (c) in this case, it is not clear whether Applicants claim a single thin film or a composite structure.
(2) Also regarding claim 13, it is not clear what the term “a single crystalline” recited on line 4 refers to, because the term “a single crystalline” is not grammatical, and does not appear to be a tangible object.
(3) Further regarding claim 13, it is not clear whether “the annealing” recited on lines 10-11 suggests that “a vacuum annealing step” recited on line 10 includes only one annealing and is performed at only one temperature and only one pressure, because (a) otherwise the limitation “the annealing” would lack the antecedent basis, and (b) it is not clear whether the temperature ramp-up step and the cooling-down step are not included in “a vacuum annealing step” even though a certain degree of annealing is performed during the ramp-up step and cooling-down step.
(4) Still further regarding claim 13, it is not clear what “a magnetoelectric response” recited on line 13 refers to, and how it is measured, because (a) a nonuniform or anisotropic material would exhibit different magnetoelectric responses depending on how and where the magnetoelectric response is measured, (b) for example, for the claimed thin film, “a magnetoelectric response” measured along the thickness direction of the claimed thin film would be different from “a magnetoelectric response” measured along the width direction of the claimed thin film or along the length direction of the claimed thin film.
Claims 33-42 depend on claim 13, and therefore, claims 33-42 are also indefinite.
(5) Regarding claims 38 and 39, it is not clear whether the claimed single crystalline substrate is a part of the claimed “thin film” recited in the preamble of the amended claim 13, because (a) it does not appear that the claimed single crystalline substrate is a part of the claimed “thin film”, and (b) therefore, it is not clear whether the limitations of claims 38 and 39 should be given any patentable weight.
(6) Regarding claims 38, 39 and 41, Applicants do not claim “a single crystalline substrate” before claiming “the single crystalline substrate” in claims 38, 39 and 41, because (a) as discussed above with regard to the amended claim 13, Applicants claim “a single crystalline” in claim 13, and (b) therefore, the limitation “the single crystalline substrate” lacks the antecedent basis.
(7) Regarding claim 42, it is not clear what the “properties” of the thin film refer to, because (a) Applicants do not even claim a single property that can be tuned from a ferromagnetic to a ferroelectric property, and (b) therefore, it is not clear whether the “properties” of the thin film refer to a plurality of “properties” of a single thin film under a single condition or circumstance, a plurality of “properties” of a single thin film under a plurality of conditions or circumstances, or a plurality of “properties” of a plurality of thin films.
(8) Further regarding claim 42, it Is not clear what the limitation of claim 42 suggests, because (a) the word “can” does not necessarily suggest that the unspecified “properties of the thin film” are “tuned from ferromagnetic to ferroelectric properties”, and (b) therefore, “properties of the thin film” may not be “tuned from ferromagnetic to ferroelectric properties”.
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.
Claims 13, 33-36 and 38-42, as best understood, are rejected under 35 U.S.C. 102(a)(1) or (a)(2) as being anticipated by Ramesh (US 5,248,564)
In the below prior art rejection, the limitations “preparation of the thin film includes a vacuum cleaning step, where the annealing is performed at a pressure in a range of from about 1*10-4 to about 1*10-12 torr” recited on lines 10-12 of the amended claim 13, and the associated limitations recited in claims 40 and 41 are product-by-process limitations that do not structurally distinguish the claimed invention over the prior art. Note that a product by process claim is directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); and In re Marosi et al, 218 USPQ 289, all of which make it clear that it is the patentability of the final product per se which must be determined in a product by process claim, and not the patentability of the process, and that an old or obvious product by a new method is not patentable as a product, whether claimed in product by process claims or not. Note that applicant has the burden of proof in such cases, as the above case law makes clear.
Further in the below prior art rejection, the claim limitations “for use in constructing a multiferroic device” recited on line 1 of the amended claim 13, and “the thin film exhibits a magnetoelectric response at room temperature, the magnetoelectric response being characterized by a single phase magnetoelectric coupling coefficient of about 92.8 mV/cmOe” recited on lines 13-15 of the amended claim 13 specify intended uses or fields of use, and are treated as non-limiting since it has been held that in device claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In re Casey, 152 USPQ 235 (CCPA 1967); In re Otto, 136 USPQ 458, 459 (CCPA 1963). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex Parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding claims 13, 33-36 and 38-42, Ramesh discloses a thin film (LSCO 22 in Fig. 3) for use in constructing a multiferroic device, which is directed to an intended use of the LSCO film 22 as discussed above, wherein: the thin film comprises a single-crystalline LnBM2O5+* or LnBM2O5.5+* compound (La0.5Sr0.5CoO3 on lines 31-32 of column 4), because the material composition of La0.5Sr0.5CoO3 mentioned on lines 31-32 of column 4 corresponds to LaSrCo2O6, in epitaxial contact with a single crystalline, because this limitation is indefinite as discussed above at least due to its incompleteness, wherein Ln (La) is a lanthanide, B (Sr) is an alkali earth metal, M (Co) is a transition metal, O is oxygen, and 0≤*≤1; wherein preparation of the thin film includes a vacuum cleaning step, where the annealing is performed at a pressure in a range of from about 1*10-4 to about 1*10-12 torr, which is directed to a product by process limitation as well as being indefinite as discussed above; and the thin film exhibits a magnetoelectric response at room temperature, the magnetoelectric response being characterized by a single phase magnetoelectric coupling coefficient of about 92.8 mV/cmOe, which is directed to an intended use of the claimed thin film as well as being indefinite and noncompliant with the written description requirement as discussed above (claim 13), wherein Ln (La) is La, Pr, Nd, Sm, or Gd (claim 33), B (Sr) is Ba, Sr, or Ca (claim 34), M (Co) is Co, Mn, Fe, or Ni (claim 35), the compound (La0.5Sr0.5CoO3) has a double perovskite structure, which is inherent because the material composition of La0.5Sr0.5CoO3 disclosed by Ramesh is one of the material compositions Applicants originally disclosed and Applicants claim in claim 13 (claim 36), the single crystalline substrate is SrTiO3, which is directed to a product by process limitation as discussed above as well as being indefinite as discussed above under 35 USC 112(b) rejections (claim 38), the single crystalline substrate is Nb doped SrTiO3 (Nb:STO), which is directed to a product by process limitation as discussed above as well as being indefinite as discussed above under 35 USC 112(b) rejections (claim 39), the vacuum annealing step is performed at 800°C and in a vacuum of lower than 1 * 10-5 torr, which is directed to a product by process limitation as discussed above (claim 40), the vacuum annealing step comprises holding a deposited film of the compound in epitaxial contact with the single crystalline substrate at 800°C and in a vacuum of lower than 1 * 10-5 torr for about 15 minutes, then cooling the deposited film to room temperature at a rate of about 5°C/minute, which is directed to a product by process limitation as discussed above (claim 41), and properties of the thin film can be tuned from ferromagnetic to ferroelectric properties, which is at best directed to an intended use of the thin film as well as being indefinite as discussed above under 35 USC 112(b) rejections, while also being inherent since the material composition of La0.5Sr0.5CoO3 disclosed by Ramesh is one of the material compositions Applicants originally disclosed and Applicants claim in claim 13 (claim 42).
Claims 13 and 33-42, as best understood, are rejected under 35 U.S.C. 102(a)(1) or (a)(2) as being anticipated by Chen et al. (WO 2011/153441)
In the below prior art rejection, the limitations “preparation of the thin film includes a vacuum cleaning step, where the annealing is performed at a pressure in a range of from about 1*10-4 to about 1*10-12 torr” recited on lines 10-12 of the amended claim 13, and the associated limitations recited in claims 40 and 41 are product-by-process limitations that do not structurally distinguish the claimed invention over the prior art. Note that a product by process claim is directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); and In re Marosi et al, 218 USPQ 289, all of which make it clear that it is the patentability of the final product per se which must be determined in a product by process claim, and not the patentability of the process, and that an old or obvious product by a new method is not patentable as a product, whether claimed in product by process claims or not. Note that applicant has the burden of proof in such cases, as the above case law makes clear.
Further in the below prior art rejection, the claim limitations “for use in constructing a multiferroic device” recited on line 1 of the amended claim 13, “the thin film exhibits a magnetoelectric response at room temperature, the magnetoelectric response being characterized by a single phase magnetoelectric coupling coefficient of about 92.8 mV/cmOe” recited on lines 13-15 of the amended claim 13 specify intended uses or fields of use, and are treated as non-limiting since it has been held that in device claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In re Casey, 152 USPQ 235 (CCPA 1967); In re Otto, 136 USPQ 458, 459 (CCPA 1963). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex Parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding claims 13 and 33-42, Chen et al. discloses a thin film ((LaBa)Co2O5+g on lines 13 and 32 of page 5) for use in constructing a multiferroic device, which is directed to an intended use of the (LaBa)Co2O5+g film, wherein: the thin film comprises a single-crystalline LnBM2O5+* or LnBM2O5.5+* compound, in epitaxial contact with a single crystalline, because this limitation is indefinite as discussed above at least due to its incompleteness, wherein Ln (La) is a lanthanide, B (Ba) is an alkali earth metal, M (Co) is a transition metal, O is oxygen, and 0≤*≤1; wherein preparation of the thin film includes a vacuum cleaning step, where the annealing is performed at a pressure in a range of from about 1*10-4 to about 1*10-12 torr, which is directed to a product by process limitation as discussed above as well as being indefinite as discussed above under 35 USC 112(b) rejections; and the thin film exhibits a magnetoelectric response at room temperature, the magnetoelectric response being characterized by a single phase magnetoelectric coupling coefficient of about 92.8 mV/cmOe, which is directed to an intended use of the claimed thin film as well as being indefinite and noncompliant with the written description requirement (claim 13), wherein Ln (La) is La, Pr, Nd, Sm, or Gd (claim 33), B (Ba) is Ba, Sr, or Ca (claim 34), M (Co) is Co, Mn, Fe, or Ni (claim 35), the compound ((LaBa)Co2O5+g) has a double perovskite structure (line 4 of page 5 (claim 36), the compound ((LaBa)Co2O5+g) is LaBaCo2O5+* or LaBaCo2O5.5+* (claim 37), the single crystalline substrate is SrTiO3, which is directed to a product by process limitation as well as being indefinite as discussed above under 35 USC 112(b) rejections (claim 38), the single crystalline substrate is Nb doped SrTiO3 (Nb:STO) , which is directed to a product by process limitation as well as being indefinite as discussed above under 35 USC 112(b) rejections (claim 39), the vacuum annealing step is performed at 800°C and in a vacuum of lower than 1 * 10-5 torr, which is directed to a product by process limitation (claim 40), the vacuum annealing step comprises holding a deposited film of the compound in epitaxial contact with the single crystalline substrate at 800°C and in a vacuum of lower than 1 * 10-5 torr for about 15 minutes, then cooling the deposited film to room temperature at a rate of about 5°C/minute, which is directed to a product by process limitation (claim 41), and properties of the thin film can be tuned from ferromagnetic to ferroelectric properties, which is at best directed to an intended use of the thin film as well as being indefinite as discussed above under 35 USC 112(b) rejections, while also being inherent since the material composition of (LaBa)Co2O5+g disclosed by Chen et al. is one of the material compositions Applicants originally disclosed and Applicants claim in claim 13 (claim 42).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wu et al. (US 5,470,668)
Martin et al. (US 2014/0060643)
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/JAY C KIM/Primary Examiner, Art Unit 2815
/J. K./Primary Examiner, Art Unit 2815 August 27, 2026
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