DETAILED ACTION
Reissue
The present reissue application is directed to US 11,575,078 B2 (“078 Patent”). 078 Patent issued on February 7, 2023 with claims 1-20 from application 17/167,641 filed on February 4, 2021, which is a division of parent application 15/757,099 (PCT/GB2016/052725) filed on September 5, 2016, and claims priority to GB 1515978 filed on September 9, 2015.
This application was filed on February 5, 2025. Since this date is after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions. Furthermore, the present application is being examined under the first inventor to file provisions of the AIA .
This application presents broadened claims, which are permitted because Applicant filed these claims and demonstrated an intent to broaden within two years of the issue date of 078 Patent.
The most recent amendment was filed on February 5, 2025. The status of the claims is:
Claims 1-20: Original
Claims 21-45: New
This is a first, non-final action.
References and Documents Cited in this Action
078 Patent (US 11,575,078 B2)
Thieme (US 2006/0739979 A1)
Sykes (GB 2510447 A)
US 10,930,837 B2
Summary of Rejections and Objections in this Action
Claims 21, 23-37, and 39-45 are rejected under 35 U.S.C. 251 as being an impermissible recapture.
Claims 1-45 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251.
Claims 21, 25, 26, 30, 31, 36, 40, and 41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thieme.
Claims 32-35 and 42-44 are rejected under 35 U.S.C. 103 as being unpatentable over Thieme in view of Sykes.
Claim 22 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. US 10,930,837 B2.
Claims 1-20 and 38 may contain allowable subject matter.
Summary of the Claims
078 Patent is directed to an assembly for carrying electrical current in a coil of a magnet and a method of making the assembly. Claim 21 is representative:
21. An assembly for carrying electrical current in a coil of a magnet, comprising:
a pre-formed housing comprising a channel configured to retain HTS tape, the channel including at least one pre-formed curved section; and
a plurality of layers of HTS tape fixed within the channel.
Claims 1, 12, 19, 21, 36, and 43 are the independent claims. Claims 1 and 12 are also directed to an assembly or coil. Claims 19, 36, and 43 are directed to a method of making the assembly or coil.
Claim Rejections - 35 USC § 251
Claims 21, 23-37, and 39-45 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
This rejection is based on the following three-step test for recapture. See MPEP 1412.02. In the discussion below, “reissue claims” refers to pending claims of this reissue application; “patent claims” refers to claims issued in 078 Patent; and “original claims” refers to claims that were presented in the original application prior to surrender, wherein the “original application” includes the prosecution record of the application that issued as 078 Patent as well as the patent family’s entire prosecution history. See In re Youman, 679 F.3d 1335, 1346 n.4, 102 USPQ2d 1862, 1870 n.4 (Fed. Cir. 2012) and MBO Laboratories, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 1316-17, 94 USPQ2d 1598 (Fed. Cir. 2010).
1) Was there broadening?
Yes, reissue claims 21, 23-37, and 39-45 are broader than the patent claims. Independent patent apparatus claim 1 recites limitations not recited in independent apparatus reissue claim 21, including:
“wherein the pre-formed curved section has a radius of curvature which is less than a total thickness of the layers of HTS tape in that section divided by twice a maximum permitted strain of the HTS tape.”
Similarly, independent patent method claim 19 recites limitations not recited in independent method reissue claims 36 and 43, including:
“wherein the pre-formed curved section has a radius of curvature in at least one section which is less than a total thickness of the layers of HTS tape in that section divided by twice a maximum permitted strain of the HTS tape.”
2) Does any broadening aspect of the reissue claim relate to surrendered subject matter?
Yes, a broadening aspect of reissue claims 21, 23-37, and 39-45 relates to surrendered subject matter. During the prosecution of parent application, 15/757,099, which was the national stage of application PCT/GB2016/052725, Applicant added the limitation “wherein the pre-formed curved section has a radius of curvature which is less than a total thickness of the layers of HTS tape in that section divided by twice a maximum permitted strain of the HTS tape” to the claims in response to the Written Opinion of the International Searching Authority (see claim amendment filed March 2, 2018 in 15/757,099). The Written Opinion asserted that both prior art documents “D1” (US 2006/0739979 A1) and “D2” (EP 1261112 A2) anticipated original claims 1 and 23. It must be presumed that the limitation was added to obviate the rejections. Therefore, this limitation is surrendered subject matter.
3) Were the reissue claims materially narrowed in other aspects such that recapture is avoided?
No, the reissue claims are not materially narrowed such that recapture is avoided. Reissue claims 21, 23-37, and 39-45 entirely lack the limitation in question.
Claims 1-45 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251.
The reissue oath/declaration filed with this application is defective because the error which is relied upon to support the reissue application is not an error upon which a reissue can be based. See 37 CFR 1.175 and MPEP § 1414. Specifically, the declaration states that the error is the inclusion of the limitation ““wherein the pre-formed curved section has a radius of curvature which is less than a total thickness of the layers of HTS tape in that section divided by twice a maximum permitted strain of the HTS tape” in the patent claims. However, this limitation is surrendered subject matter as discussed above. A reissue will not be granted to recapture claimed subject matter which was surrendered in an application to obtain the original patent.
Claim Rejections - 35 USC § 102
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 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.
Claims 21, 25, 26, 30, 31, 36, 40, and 41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thieme.
Regarding independent claim 21, Thieme discloses an assembly comprising:
a pre-formed housing 350 comprising a channel configured to retain HTS tape 310 and 320 (Figure 3A; paragraphs [0067]-[0068]); and
a plurality of layers of HTS tape fixed within the channel (e.g., Figure 3A shows layers of HTS tapes 310 and 320 fixed with filler 390 in the channel; paragraph [0067]).
Further regarding claim 21, Thieme discloses that the channel includes “at least one pre-formed curved section” at least in the sense that Thieme discloses that the channel of component 350 curves around at least three sides of the HTS tape (Figure 3A; see also housings curving around four sides in Figures 4A and 5A). The claim does not further define the adjective “curved” or further specify shapes or directions. Also, the phrase “for carrying electrical current in a coil of a magnet” in the preamble, absent further references to a coil of a magnet in the body of the claim, is merely a statement of intended use and is not considered limiting.
Regarding claim 25, Thieme discloses that the pre-formed housing is substantially rigid or semi-rigid at least in the sense that housing 350 in Figure 3A (or structure 450 in Figure 4A) provides “mechanical stability” (paragraphs [0068] and [0070]).
Regarding claim 26, Thieme discloses that the pre-formed housing is bendable to an extent which would not exceed a maximum permitted strain of the HTS tape (paragraph [0013]).
Regarding claim 30, Thieme discloses that the housing is formed from thermally and electrically conductive material (paragraph [0068]).
Regarding claim 31, Thieme discloses that the thermally and electrically conductive material comprises copper (paragraph [0068]).
Regarding independent claim 36, as similarly discussed above with regard to claim 21, Thieme discloses a method of manufacturing an assembly, the method comprising:
forming a housing 350 having a required shape of the assembly, the housing comprising at least one channel configured to retain HTS tape,
laying a plurality of layers of HTS tape 310 into the channel; and
fixing the HTS tape within the channel (e.g., Figure 3A shows layers of HTS tapes 310 and 320 fixed with filler 390 in the channel; paragraph [0067]).
Further regarding claim 36, Thieme discloses that the channel includes “at least one pre-formed curved section” at least in the sense that Thieme discloses that the channel of component 350 curves around at least three sides of the HTS tape (Figure 3A; see also housings curving around four sides in Figures 4A and 5A). The claim does not further define the adjective “curved” or further specify shapes or directions. Also, the phrase “for carrying electrical current in a coil of a magnet” in the preamble, absent further references to a coil of a magnet in the body of the claim, is merely a statement of intended use and is not considered limiting.
Regarding claim 40, Thieme discloses that the pre-formed housing is substantially rigid or semi-rigid at least in the sense that housing 350 in Figure 3A (or structure 450 in Figure 4A) provides “mechanical stability” (paragraphs [0068] and [0070]).
Regarding claim 41, Thieme discloses that fixing the HTS tape within the channel comprises soldering the HTS tape to the housing using low temperature solder (i.e., filler 390 is low temperature solder; paragraphs [0057], [0068]-[0070], and [0133]).
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, 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.
Claims 32-35 and 42-44 are rejected under 35 U.S.C. 103 as being unpatentable over Thieme in view of Sykes.
Regarding claims 32-35, Thieme discloses an assembly as discussed above with regard to claim 21 and regarding claim 42, Thieme discloses a method as discussed above with regard to claim 36, but Thieme does not specifically disclose a superconducting magnetic coil; or a toroidal magnetic field coil or a poloidal magnetic field coil for a tokamak; or a nuclear fusion reactor comprising a toroidal field coil. However, Sykes teaches an assembly that is related to the disclosed by Thieme including a plurality of layers of HTS tape (Sykes, page 2, lines 11-31). Sykes further teaches a superconducting magnetic field coil, a toroidal magnetic field coil or a poloidal magnetic field coil for a tokamak and a nuclear fusion reactor comprising a toroidal field coil (Figures 1A and 7A; page 2, lines 33-35; page 3, lines 1-7; page 7, lines 14-29; page 10, lines 5-11). Regarding claims 32-35 and 42, it would have been obvious to a person of ordinary skill in the art to apply the assembly disclosed by Thieme to the field coil applications taught by Sykes in order to advantageously implement the coils with HTS tape having enhanced “mechanical, thermal, and electrical stabilization” (Thieme, paragraphs [0016], [0034], and [0057]).
Regarding independent claim 43, as similarly discussed above with regard to claim 36, Thieme discloses a method comprising:
forming an electrically conductive housing 350, the housing comprising at least one channel configured to receive a plurality of layers of high temperature superconducting (HTS) tape, the channel having at least one curved section;
after forming the housing, laying a plurality of layers of HTS tape 310 into the channel; and
fixing the plurality of layers of HTS tape within the channel (e.g., Figure 3A shows layers of HTS tapes 310 and 320 fixed with filler 390 in the channel; paragraph [0067]).
Further regarding claim 43, Thieme discloses that the channel includes “at least one curved section” at least in the sense that Thieme discloses that the channel of component 350 curves around at least three sides of the HTS tape (Figure 3A; see also housings curving around four sides in Figures 4A and 5A). The claim does not further define the adjective “curved” or further specify shapes or directions.
Further regarding claim 43, Thieme does not specifically disclose manufacturing a superconducting magnetic field coil or that the housing has a required shape of the superconducting magnetic field coil. However, again, Sykes teaches an assembly that is related to the disclosed by Thieme including a plurality of layers of HTS tape (Sykes, page 2, lines 11-31). Sykes further teaches a superconducting magnetic field coil (Figures 1A and 7A; page 2, lines 33-35; page 3, lines 1-7; page 7, lines 14-29; page 10, lines 5-11). Regarding claim 43, it would have been obvious to a person of ordinary skill in the art to apply the assembly disclosed by Thieme to the superconducting magnetic field coil application taught by Sykes in order to advantageously implement the coil with HTS tape having enhanced “mechanical, thermal, and electrical stabilization” (Thieme, paragraphs [0016], [0034], and [0057]).
Regarding claim 44, in the method taught by Thieme in view of Sykes, Thieme further discloses fixing the plurality of layers of HTS tape within the channel comprises soldering the HTS tape to the housing (i.e., filler 390 is solder; paragraphs [0057], [0068]-[0070], and [0133]).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 22 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. US 10,930,837 B2. This is a statutory double patenting rejection. Reissue claim 22, including all of the limitations of its parent claim 21, recites the same limitations as claim 1 of US 10,930,837 B2:
Reissue claim 22 (including parent reissue claim 21)
Claim 1 of US 10,930,837 B2)
An assembly for carrying electrical current in a coil of a magnet, comprising:
a pre-formed housing comprising a channel configured to retain HTS tape, the channel including at least one pre-formed curved section; and
a plurality of layers of HTS tape fixed within the channel.
An assembly for carrying electrical current in a coil of a magnet, comprising:
a pre-formed housing comprising a channel configured to retain HTS tape, the channel including at least one pre-formed curved section; and
a plurality of layers of HTS tape fixed within the channel;
An assembly according to claim 21,
wherein the pre-formed curved section has a radius of curvature which is less than a total thickness of the layers of HTS tape in that section divided by twice a maximum permitted strain of the HTS tape.
wherein the pre-formed curved section has a radius of curvature which is less than a total thickness of the layers of HTS tape in that section divided by twice a maximum permitted strain of the HTS tape.
Allowable Subject Matter
Claims 1-20 may be allowable if Applicant overcomes the 35 U.S.C. 251 rejection set forth above in this Office action. Claim 38 is objected to as being dependent upon a rejected base claim, but may also be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims (and if Applicant overcomes the 35 U.S.C. 251 rejection set forth above in this Office action).
The prior art does not specifically disclose or fairly suggest a segment of a field coil, a toroidal field coil, or a method of manufacturing an assembly including the combination of all of the elements, steps, and limitations recited in claims 1-20 and 38 (including all of the limitations of any respective parent claims), particularly wherein:
the pre-formed curved section has a radius of curvature which is less than a total thickness of the layers of HTS tape in that section divided by twice a maximum permitted strain of the HTS tape.
Conclusion
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which this reissue application is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at https://www.uspto.gov/patents/laws/interview-practice.
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Any inquiry concerning this communication or earlier communications from the examiner, or as to the status of this proceeding, should be directed to Examiner Christina Leung at telephone number (571) 272-3023; the Examiner’s supervisor, SPE Patricia Engle at (571) 272-6660; or the Central Reexamination Unit at (571) 272-7705.
/CHRISTINA Y. LEUNG/Primary Examiner, Art Unit 3991
Conferees:
/DEANDRA M HUGHES/Reexamination Specialist, Art Unit 3992
/Patricia L Engle/ SPRS, Art Unit 3991