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 .
Status of Claims
Claims 1-3 are pending in the application and examined herein.
Information Disclosure Statement
The information disclosure statement filed 08/13/2026 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. Specifically, while a copy of NPL Cite No. 1 has been provided, this copy is not a legible copy of the non-patent literature publication. Additionally, the information disclosure statement filed 08/13/2026 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. Specifically, NPL Cite No. 2 is not in the English language. However, a translation or other concise explanation of relevance has not been provided.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-3 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.
Claim 1 recites “[a] control rod assembly with improved rod worth.” It is unclear compared to what standard the “control rod assembly” is “improved.”
Claim 2 recites “the neutron absorber.” However, parent claim 1 previously recited plural “shutdown group neutron absorbers.” It is therefore unclear if the “neutron absorber” in claim 2 is intending to refer to one of the “shutdown group neutron absorbers,” each of the “shutdown group neutron absorbers,” or another “neutron absorber.”
Claim 3 recites “wherein the control rod assembly is used under boric acid-free operating conditions.” The claim is directed towards a “control rod assembly,” i.e., an apparatus. However, the phrase “wherein the control rod assembly is used under boric acid-free operating conditions” is directed towards a method step of using the apparatus. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b). See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011). Further, the claim appears to merely recite a process of using the “control rod assembly” without reciting any active, positive steps delimiting how this use is actually practiced. It is therefore unclear how the claim is intended to further limit the structure of the claimed “control rod assembly.”
Any claim not explicitly addressed above is rejected because it is dependent on a rejected base claim.
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 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 1-3, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN Publication No. 113012826 (“Liu”).
Regarding claims 1-2, Liu (newly cited) discloses a control rod assembly (“safety rod assembly,” “O”) with improved rod worth, the control rod assembly comprising:
shutdown group neutron absorbers (“safety rod”) made of B4C comprising B-10 enriched to 95% ([0025], [0036], [0064]-[0065], [0079]-[0080]).
Regarding claim 3, Liu discloses the control rod assembly of claim 1. The limitation “wherein the control rod assembly is used under boric acid-free operating conditions” is essentially a method limitation and statement of intended or desired use. This clause does not serve to patentably distinguish the claimed structure over that of the reference as long as the structure of the cited reference is capable of performing the intended use. See MPEP 2111-2115. As discussed above, Liu discloses all the structural limitations of the claim. Additionally, there is nothing in Liu to suggest that the control rod assembly cannot be used under boric acid-free operating conditions. Thus, the recitation with respect to the manner in which the claimed apparatus is intended to be employed does not differentiate the claimed apparatus from Liu’s apparatus.
Double Patenting
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 CFR 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 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP 804(I)(B)(1). For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 19/068,238 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claim limitations are substantially similar to the limitations recited in the reference application (see claim 1 of the present application vs. claim 1 of the reference application; claim 2 of the present application vs. claim 4 of the reference application; claim 3 of the present application vs. claim 5 of the reference application). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Additional References
The following references would also appear to be relevant to Applicant’s invention and are therefore cited in the attached PTO-892:
US Publication No. 2018/0144834: discloses a control rod assembly (35) comprising: shutdown group neutron absorbers made of B4C comprising B-10 enriched to 80% (FIGS. 1, 5, [0056]-[0056], [0061]).
CN Publication No. 117344243: discloses a control rod assembly (“safety rod”) comprising: shutdown group neutron absorbers (5) made of B4C comprising B-10 enriched to at least 95% (FIG. 2, [0001]-[0002], [0007], [0025], [0038]).
The Applied References
For Applicant’s benefit, portions of the applied reference(s) have been cited (as examples) to aid in the review of the rejection(s). While every attempt has been made to be thorough and consistent within the rejection, it is noted that the prior art must be considered in its entirety by Applicant, including any disclosures that may teach away from the claims. See MPEP 2141.02(VI).
Application Status Information
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. For questions on access to the Private PAIR system, contact the Electronic Business Center at 866-217-9197 (toll-free). For 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.
Interview Information
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 http://www.uspto.gov/interviewpractice.
Contact Information
Examiner Jinney Kil can be reached at (571) 270-5217, on Monday-Thursday from 8:30AM-6:30PM ET. Supervisor Jack Keith (SPE) can be reached at (571) 272-6878.
/JINNEY KIL/Examiner, Art Unit 3646
