NON-FINAL OFFICE ACTION
This non-final office action addresses U.S. Application No. 18/825,592, which is a broadening reissue application of U.S. Application No. 17/701,181 (hereinafter the “181 Application"), entitled WOUND HTS MAGNET COILS, which issued as U.S. Patent No. 11,978,587 (hereinafter the “587 Patent").
The status of the claims is as follows:
Claims 1-21 are pending and examined herein.
Claims 1-21 are rejected.
I. STATUS OF CLAIMS
Applicant filed a first preliminary amendment on September 5, 2024 (hereinafter the “2024 Preliminary Amendment”) along with the filing of the present application. In the 2024 Preliminary Amendment, patent claims 1-6 and 9 were unchanged, claims 7, 8, 10 and 11 were amended and new claims 12-21 were added. Furthermore, the specification was amended to change cross noting information.
Therefore, claims 1-21 are pending and will be examined.
II. PRIORITY
Examiners acknowledge the Applicant’s claim that present application is a reissue application of the 181 Application, now the 587 Patent. Examiners further acknowledge the claim that this application is a continuation application of U.S. Patent Application No. 16/965,801, filed as a nation stage under 35 U.S.C. 271 of PCT/GB2019/050245, filed on January 30, 2019, now U.S. Patent No. 11,289,253. Examiners further acknowledge the claim of foreign priority to Great Britain Application No. GB1081603, filed January 31, 2018 and Great Britain Application No. GB1817159, filed October 22, 2018. Examiners also recognize U.S. Application No. 18/809,686, filed August 20, 2024 (hereinafter the “686 Child Application”), filed as a continuation of the 181 Application.
III. OBJECTION TO CLAIM AMENDMENTS
37 C.F.R. 1.173 Reissue specification, drawings, and amendments.
(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.
(d) Changes shown by markings. Any changes relative to the patent being reissued that are made to the specification, including the claims but excluding "Large Tables" (§ 1.58(c) ), a "Computer Program Listing Appendix" (§ 1.96(c) ), a "Sequence Listing" (§ 1.821(c) ), and a "Sequence Listing XML" (§ 1.831(a) ) upon filing or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined.
(g) Amendments made relative to the patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing of the reissue application.
The amendments to the claims in the 2024 Preliminary Amendment are objected to because they are improper under the rules above because Applicant has not fully underlined the new claims. Since claims 12-21 are new with respect to the original patent, i.e., the 587 Patent, they should be fully underlined, all of claim numbers, status identifiers and text. See MPEP §1453(V)(C) and (D). Appropriate correction is required in response to this Office action.
IV. CLAIM REJECTIONS – 35 U.S.C. §112
The following is a quotation of the first and second paragraphs of 35 U.S.C. §112:
(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.
(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.
IV.A. New Matter Rejections of Claims 17 and 18
Claims 17 and 18 are rejected under 35 U.S.C. §112(a) as failing to comply with the written description requirement. The claim(s) contains 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 inventors, at the time the application was filed, had possession of the claimed invention.
Examiners find that the claims 17and 18 recite that the components are one or more of “heaters; temperature sensors; magnetic field sensors; spacing elements; metallic stabilizer, such as copper, brass or steel; and coolant channels.” However, Examiners are first unable to find support for the components to be either “temperature sensors” or magnetic field sensors,” rather the specification of the 587 Patent merely states the components are “sensors” with any specifics. Second, Examiners are unable to find support for the stabilizers to be “brass,” rather the specification of the 587 Patent merely states the stabilizers may be copper or “alternative higher strength materials, such as a steel or nickel/tungsten alloy.” Because Examiners are unable to find support for these particular components, Examiners find their inclusion in the claims lacks a written description and thus is new matter to disclosure of the 587 Patent.
IV.B. Indefiniteness Rejections of Claims 17 and 18
Claims 17 and 18 are rejected under 35 U.S.C. §112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Regarding claims 17 and 18, the phrase "such as" renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP §2173.05(d).
VI. REISSUE OATH/DECLARATION
37 C.F.R. §1.175 Reissue oath or declaration (in part).
(a) The inventor’s oath or declaration for a reissue application, in addition to complying with the requirements of § 1.63, § 1.64, or § 1.67, must also specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and state that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent.
(b) If the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent), the inventor's oath or declaration for a reissue application must identify a claim that the application seeks to broaden. A claim is a broadened claim if the claim is broadened in any respect.
The reissue declaration filed September 5, 2024 (hereinafter the "2024 Reissue Declaration”) along with this reissue application is acknowledged but is objected to herein. Examiners find the 2024 Reissue Declaration states the following error:
PNG
media_image1.png
80
658
media_image1.png
Greyscale
However, Examiners find this statement merely provides a general intent to broaden the claims, but does not identify a specific error on which to base this reissue. A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. See MPEP 1414(II). In specifically identifying the error as required by 37 C.F.R. §1.175(a), it is sufficient that the reissue oath/declaration identify the claim being broadened and a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. Accordingly, Examiners object to the 2024 Reissue Declaration because is merely states a general intent to broaden.
Accordingly, Applicant is required to provide a new reissue declaration on the record that “Applicant believes the original patent to be partly inoperative or invalid by reason of the patentee claiming less than patentee had a right to claim in the patent,” identifies a specific claim Applicant seeks to broaden, and specifically identify “a single word, phrase, or expression” in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid.
VII. REJECTIONS UNDER 35 U.S.C. §251
The following is a quotation of 35 U.S.C. §251:
Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
VII.A. Rejections Based on Defective Reissue Declaration
Claims 1-21 and this reissue application as a whole are rejected as being based upon a defective reissue declaration under 35 U.S.C. §251. See 37 C.F.R. §1.175. The nature of the defects in the 2024 Reissue Declaration is set forth in the discussion above.
VII.B. Rejections Based on New Matter
Claims 17 and 18 and this application as a whole are rejected under 35 U.S.C. §251 because these claims contain new matter. The nature of the new matter is discussed above the rejections under 35 U.S.C. §112(a) above.
VIII. CLAIM INTERPRETATION
After careful review of the original specification, the prosecution history, the Examiners find the 587 Patent at col. 2, line 41 to col. 3, line 2, provides the following lexicographic definitions (either express or implied) with the required clarity, deliberateness, and precision with regard to pending and examined claims:
When describing coils in this document, the following terms will be used:
“HTS cable”—a cable comprising one or more HTS tapes. In this definition, a single HTS tape is an HTS cable.
“turn”—a section of ITS cable within a coil which encloses the inside of the coil (i.e. which can be modelled as a complete loop)
“arc”—a continuous length of the coil turn which is less than the whole coil turn
“inner/outer radius”—the distance from the centre of the coil to the inside/outside of the HTS cables
“inner/outer perimeter”—the distance measured around the inside/outside of the coil
“thickness”—the radial width of all of the turns of the coil, i.e. the difference between the inner and outer radius
“critical current”—the current at which the HTS would become normal, at a given temperature and external magnetic field (where HTS is considered to have “become normal” at a characteristic point of the superconducting transition, where the tape generates E.sub.0 volts per metre. The choice of E.sub.0 is arbitrary, but is usually taken to be 10 or 100 microvolts per metre.)
“critical temperature”—the temperature at which the HTS would become normal, at a given the magnetic field and current
“peak critical temperature”—the temperature at which the HTS would become normal given no external magnetic field, and negligible current.
The Examiners further find that because the pending and examined claims herein recite neither “step for” nor “means for” nor any substitute therefore, the examined claims fail Prong (A) as set forth in MPEP §2181(I). Because all examined claims fail Prong (A) as set forth in MPEP §2181(I), the Examiners conclude that all examined claims do not invoke 35 U.S.C. §112(f). See also Ex parte Miyazaki, 89 USPQ2d 1207, 1215-16 (B.P.A.I. 2008)(precedential)(where the Board did not invoke 35 U.S.C. § 112(f) because “means for” was not recited and because applicant still possessed an opportunity to amend the claims).
Because of the Examiners’ findings above that Applicant is his own lexicographer for some terms and phrase and the pending and examined claims do not invoke 35 U.S.C. §112(f), the remaining terms and phrases of the pending and examined claims will be given the broadest reasonable interpretation consistent with the specification since patentee has an opportunity to amend claims. See MPEP §2111, MPEP §2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP §2111.01(I). It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP §2111.01(II).
Examiners further find that HTS tapes are known in the art. As stated in the 587 Patent at col. 2, lines 6-7, “ReBCO is typically manufactured as tapes, with a structure as shown in FIG. 1.” Thus, Examiners interpret these HTS tapes as recited in the pending claims to have the typical layered structure as shown in FIG. 1 of the 587 Patent.
IX. DOUBLE PATENTING REJECTIONS
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 C.F.R. §1.321(c) or §1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP §717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP §2159. See MPEP §2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 C.F.R. §1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
IX.A. Double Patenting Rejections Over 686 Child Application
Claims 7, 8, 9, 13 and 16-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4 and 7-9 of co-pending U.S. Application No. 18/809,686, i.e., the 686 Child Application. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the 686 Application reads on claim 7 in this reissue application, claim 2 of the 686 Application reads on claims 8 and 9 in this reissue application, claim 4 of the 686 Application reads on claim 13 in this reissue application, claim 7 of the 686 Application reads on claim 17 of this reissue application, claim 8 of the 686 Application reads on claim 18 of this reissue application and claim 9 of the 686 Application reads on claim 16 of this reissue application. This is a provisional double patenting rejection because the 686 Application has not issued.
X. ALLOWABLE SUBJECT MATTER
While all claims are rejected under 35 U.S.C. 251 and some claims are rejected under double patenting, Examiners find all claims are allowed over the prior art of record.
Regarding apparatus claims 1-6, Examiners find the prior art does not disclose or teach the combination of HTS shunt cable, including HTS tapes, arranged between HTS tapes, along an arc of the HTS coil cable in the manner as recited in the claims and in combination with the other features of the claims. Regarding method claims 7-21, Examiners find these claims are allowed for similar reasons regarding the placing of the HTS shunt tapes with respect to the HTS tapes of the HTS coil.
XI. PRIOR OR CONCURRENT PROCEEDINGS
Applicant is reminded of the obligation apprise the Office of any prior or concurrent proceedings in which the 587 Patent is or was involved, such as interferences or trials before the Patent Trial and Appeal Board, reissues, reexaminations, or litigations and the results of such proceedings.
XII. INFORMATION MATERIAL TO PATENTABILITY
Applicant is further reminded of the continuing obligation under 37 C.F.R. §1.56 to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
XIII. CONCLUSION
Claims 1-21 are pending.
Claims 1-21 are rejected.
The prior art made of record which is considered pertinent to Applicant’s disclosure is listed on the document titled ‘Notice of Reference Cited’ (“PTO-892”). Unless expressly noted otherwise by the Examiners, all documents listed on the PTO-892 are cited in their entirety.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to KENNETH WHITTINGTON whose telephone number is (571) 272-2264. The Examiner can normally be reached on 8:30am - 5:00pm, Monday - Friday.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, SPE Art Unit 3992, can be reached at (571) 272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9900.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992
Conferees:
/MY TRANG TON/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992