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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the recovery component (claim 24) must be shown and labeled or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the porous form of the source material having a pore wall width (claim 23) must be shown and labeled or the feature(s) canceled from the claim(s). No new matter should be entered. This objection is related to a below indefiniteness rejection.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
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 21–37 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 21 recites the limitation "at least some first radioisotopes" in line 7 but then recites “one or more of a first radioisotope” in lines 11-12. It is unclear if these are the same or different first radioisotopes.
Claim 21 recites “extraction material” in line 14. There is insufficient antecedent basis for this limitation in the claim. Specifically, it is unclear if this is the same feature as the extraction material introduced in line 9.
Claim 21 recites “the dissolved radioisotope” in lines 14-15. There is insufficient antecedent basis for this limitation in the claim. Specifically, it is unclear if this is the same feature as “a first radioisotope” in lines 11-12, “a second radioisotope” in line 12, or something else.
Claim 23 recites that the pore wall width is “based on a recoil distance of a direct radioisotope product.” It is unclear in what manner “based on” is intended to be interpreted. This claim is a system claim, and the apparent requirement to perform a calculation of a “recoil distance” would appear to be improper. For example, a method claim might recite “calculating a recoil distance … and then selecting a source material having a pore wall width that is equal to the recoil distance.” However, for a system claim, it is unclear how the pore wall width can be “based on” an un-recited “recoil distance.” The requirements for the width-distance relationship are not recited, and so the reader must speculate what is meant by “based on.” If the width = the distance, is the width “based on” the distance? If the width is 2x the distance, is the width “based on” the distance? What if the width is 5.684x the distance? What if the width = the distance, but this was not done intentionally? “Based on” implies an intentional step or action performed ahead of time. For the purpose of examination, the Specification at ¶ 102 states that “the pore walls … may be sized to be substantially similar to the recoil distance of the selected radioisotope product,” and ¶ 104 states that “Generally fission products have a recoil range of around 10 microns in UO2.” Therefore, Examiner assumes that claim 23 is intended to be interpreted as: the UO2 pore wall width is approximately 10 microns.
Claim 23 recites that the source material has a porous form with a pore wall width. Examiner is confused as to how to interpret “pore wall width.” None of the Drawings show a porous material or a pore wall. Examiner understands a “pore” to mean essentially a small opening forming a passage1. For example, the below image2 labels different types of pores in porous material.
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Claim 23 recites a “pore wall width.” As shown in the above image, it is not clear what would be considered a “wall.” Could this be any dimension of a solid portion of the above image? The pore itself is obviously the hole, so would its “wall” be any solid portion adjacent to the hole? Moreover, consider the following scenario: the above image has a relatively large solid portion beneath the label “Through Pore.” Let’s say a horizontal dimension, end-to-end, of this portion is 50 microns. Because claim 23 is interpreted as approximately 10 microns (see the immediate previous indefiniteness rejection), then if this dimension is 50 microns, does it read on the limitation of a pore wall width of 10 microns? A width of 50 microns, after all, includes a width of 10 microns.
Claim 24 recites “the at least one species of radioisotope”. There is insufficient antecedent basis for this limitation in the claim.
Claim 25 recites “a container”. There is insufficient antecedent basis for this limitation in the claim. Specifically, it is unclear if this is the same feature as the container(s) introduced in parent claim 21.
Claim 36 recites “the at least one species of radioisotope”. There is insufficient antecedent basis for this limitation in the claim.
Any claim not specifically addressed in this section that depends from a rejected claim is also rejected under 35 U.S.C. 112(b) for its dependency upon an above–rejected claim and for the same reasons.
A Note from the Examiner about Desired Result-type, Intended Use-type, and Capable-of type Limitations
The claims include statements that are either essentially method limitations or statements of intended or desired use. These include:
“wherein the system automatically performs a radioisotope generation cycle in which the system exposes the first container to radiation, transfers the extraction material into the first container, and removes extraction material with dissolved radioisotope from the first container,” claim 31
“wherein the system automatically repeats the radioisotope generation cycle on the first container,” claim 32
“wherein the system processes a plurality of containers, including the first container, such that each of the plurality of containers is exposed to radiation,” claim 33
These clauses do not serve to patentably distinguish the claimed structure over that of the applied references, as long as the structure of the cited references is capable of performing the alleged intended use. See MPEP § 2111–2115. MPEP § 2114(II) states:
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.
[A]pparatus claims cover what a device is, not what a device does.”
Additionally, case law dictates that “Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than functions.” In re Danly, 120 USPQ 528, 531.
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 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.
For Applicant’s benefit, portions of the cited reference(s) have been cited 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, including disclosures that teach away from the claims. See MPEP 2141.02 VI.
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, 24, 25, 27, 29, 31, 32, 33, 36, and 37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bennett (US 5,802,439).
Regarding claim 21, Bennett discloses a system for generating radioisotopes comprising: one or more containers (22), including a first container, the first container containing source material (molybdenum) that includes at least one target material (100Mo, col. 14, l. 24); a radiation generator (leftward-facing triangle within 12 that generates electrons 14); a radiation bombardment chamber (12) that receives radiation (photons 20) from the radiation generator, the radiation bombardment chamber adapted to hold and expose the one or more containers (22) to the received radiation (20), thereby creating at least some first radioisotopes (99Mo) that are a direct product of the exposure of the target material to the radiation (99Mo is generated from the 100Mo target, col. 14, ll. 22-24); an insertion component (structure around 26) adapted to transfer an extraction material (solvent HNO3, col. 14, l. 38) into the first container (same container now labeled as 24), thereby contacting the source material (molybdenum) within the first container (24) with the extraction material (HNO3), the extraction material selected to dissolve, without dissolving the target material, one or more of a first radioisotope (99Mo), a second radioisotope that is a daughter product of a first radioisotope, or both a first radioisotope and a second radioisotope (col. 14, ll. 34-36); and an extraction component (not labeled but necessarily present as described in col. 14, ll. 43-45 and shown as leftward arrow from 26 to 30, including a new container surrounding 30 that receives the extraction) adapted to remove extraction material with the dissolved radioisotope (extraction material + dissolved 99Mo = 30) from the first container (24) without removing the target material from the first container (99Mo is dissolved and removed, leaving the undissolved target material behind, to produce the product of a “dried 99Mo compound [that] consists of 99MoO3,” col. 14, l. 53).
Regarding claim 24, Bennett anticipates all the elements of the parent claim and further discloses a recovery component (container surrounding 30) adapted to receive the extraction material with the dissolved radioisotope (extraction material + dissolved 99Mo = 30) from the first container (24) and recover some of the at least one species of radioisotope from the extraction material (extraction material + dissolved 99Mo = 30).
Regarding claim 25, Bennett all the elements of the parent claim and further discloses a conveyance system (see arrows indicating mechanical movement) adapted to physically move a container (22) from the radiation bombardment chamber (12) to a second location (at 24) for interaction with one or both of the insertion component (for 26) or the extraction component (including 30).
Regarding claim 27, Bennett anticipates all the elements of the parent claim and further discloses wherein the conveyance system is further adapted to physically move a plurality of containers from the radiation bombardment chamber (12) to the second location (at 24) (Bennett’s apparatus is reusable, and thus after a first container 22 is irradiated in chamber 12 and moved leftwards, a second container 22 may be irradiated in chamber 12 to repeat the process).
Regarding claim 29, Bennett anticipates all the elements of the parent claim and further discloses wherein the extraction material (HNO3) is selected from a supercritical fluid and an aqueous fluid (HNO3 is aqueous) that preferentially dissolves the one or more of a first radioisotope, a second radioisotope that is a daughter product of a first radioisotope, or both a first radioisotope and a second radioisotope (99Mo is dissolved and removed, leaving the undissolved target material behind, to produce the product of a “dried 99Mo compound [that] consists of 99MoO3,” col. 14, l. 53).
Regarding claim 31, Bennett anticipates all the elements of the parent claim and further discloses wherein the system automatically performs a radioisotope generation cycle in which the system exposes the first container (22) to radiation (20), transfers the extraction material (30) into the first container (same container now labeled 24), and removes extraction material with dissolved radioisotope (99Mo is dissolved and removed, leaving the undissolved target material behind, to produce the product of a “dried 99Mo compound [that] consists of 99MoO3,” col. 14, l. 53) from the first container (Examiner interprets “automatically” to mean that the system functions without a human having to intervene and physically perform the cycle, which is the case in Bennett).
Regarding claim 32, Bennett anticipates all the elements of the parent claim and further discloses wherein the system automatically repeats the radioisotope generation cycle on the first container (Bennett’s apparatus is reusable, and thus after container 22 is irradiated in chamber 12 and moved leftwards, and its 99Mo extracted into 30, the unused material in 22 may be re-irradiated in 12 to repeat the process).
Regarding claim 33, Bennett anticipates all the elements of the parent claim and further discloses wherein the system processes a plurality of containers, including the first container (22), such that each of the plurality of containers is exposed to radiation (20) (Bennett’s apparatus is reusable, and thus after a first container 22 is irradiated in chamber 12 and moved leftwards, a second container 22 may be irradiated in chamber 12 to repeat the process).
Regarding claim 36, Bennett anticipates all the elements of the parent claim and further discloses wherein the at least one species of radioisotope is selected from one or more of 99Mo (99Mo is generated from the 100Mo target, col. 14, ll. 22-24).
Regarding claim 37, Bennett anticipates all the elements of the parent claim and further discloses wherein the radiation generator (leftward-facing triangle within 12 that generates electrons 14) is selected from one or more of Pu-Be sources, 252Cf sources, sealed tube radiation generators (Bennett’s electron accelerator necessarily comprises sealed tubes), dense plasma focus device, pinch devices, Inertial electrostatic confinement device, fission reactors, and accelerator spallation devices.
Claim Rejections - 35 USC § 103
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 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 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 35 U.S.C. 103 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Bennett in view of McIntyre (US 6,907,106).
Regarding claim 26, Bennett anticipates all the elements of the parent claim but does not explicitly disclose that the conveyance system is adapted to repeatedly move the container away and return it to the radiation chamber.
McIntyre does teach this. McIntyre is also in the art area of target irradiation and teaches a conveyance system (Fig. 7: 310) that is adapted to repeatedly move a container (315/50) from radiation bombardment (40) to a second location and from the second location to the radiation bombardment (“The target objects 50 are positionable within the path of the x-rays emitted from the x-ray conversion target 30 by the rotation of the carousel,” col. 9, ll. 35-38).
The skilled artisan would have been motivated to utilize the carousel taught by McIntyre because it “lends itself well to continuous processing of target objects. The orientation of the carousel 310 with respect to the incident x-ray beam 40 and the orientation of the target objects 50 placed upon the carousel 310 preferably are optimized to maximize the utilization efficiency of the x-rays,” col. 54-59.
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Bennett in view of Quach3 (Dissolution of Metal Oxides and Separation of Uranium From Lanthanides and Actinides in Supercritical Carbon Dioxide).
Regarding claim 30, Bennett anticipates all the elements of the parent claim but does not explicitly disclose that the extraction material may be supercritical carbon dioxide.
Quach does. Quach is in the same art area of separating desirable radioisotopes (abstract) and teaches (Fig. 2) using an extraction material that is supercritical carbon dioxide (Supercritical CO2, Fig. 2) containing a ligand in a container (cell in Fig. 2) that dissolves the desirable radioisotopes (e.g. uranium or Eu or other desired isotopes, § III results and discussion). The skilled artisan would have been motivated to utilize the sc-CO2 of Quach within the method of Adelson because this solvent has “a number of advantages compared with conventional … processes. Minimizing secondary liquid waste generation, rapid separation of solute from solvent, and containment of volatile fission products in a closed system are some unique features that this novel extraction technique can offer for the nuclear industry,” § introduction.
Claims 22, 23, 28, and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Bennett in view of Brown (US 2011/0305309).
Regarding claim 22, Bennett anticipates all the elements of the parent claim but does not explicitly suggest using a fissionable material as the target or a neutron generator as the radiation generator.
Brown does. Brown is also in the art area of creating and extracting desirable radioisotopes (abstract) and teaches wherein the target material is a fissionable material (“uranium targets,” ¶ 19) and the radiation generator is a neutron generator (“nuclear reactor,” ¶ 19). The skilled artisan would have been motivated to utilize the nuclear reactor with uranium targets suggested by Brown because, as is extremely well-known in the art, commercial nuclear reactors are widespread and already in operation, and so adding a radionuclide production feature not only does not interfere with the electricity production of the reactor, but it has the added benefit of irradiating targets for much needed medical applications, as explained by Brown in ¶¶ 2–8.
Regarding claim 23, the above-described combination of Bennett with Brown teaches all the elements of the parent claim, and Brown also teaches wherein the source material has a porous form (“porous annular pellets,” ¶ 43) with a pore wall width based on a recoil distance of a direct radioisotope product of the fissionable target material (as described in the above indefiniteness rejections, this limitation is assumed to mean a particle or a wall thereof has a dimension of approximately 10 microns: “granules … mean diameter less than 10 microns,” ¶ 43). The skilled artisan would have been motivated to utilize the porous pellets as suggested by Brown in order to enhance cooling of the fissioning fuel, as explained by Brown in ¶ 21: “a porous pellet … to facilitate heat transfer arising from the fission of U-235 … during irradiation.”
Regarding claim 28, the above-described combination of Bennett with Brown teaches all the elements of the parent claim, and Brown also teaches wherein the target material includes grains containing uranium oxide or uranium metal (“granules … uranyl oxide,” ¶ 43) having an average particle size of less than an average recoil distance of 99Mo as a fission product of uranium (the Specification at ¶ 104 states that “Generally fission products have a recoil range of around 10 microns in UO2, and so this limitation is assumed to mean a particle/grain having a dimension of less than approximately 10 microns: Brown teaches “granules … mean diameter less than 10 microns,” ¶ 43).
It would have been obvious to the ordinary skilled artisan before the effective filing date of the invention to have used a particle size < approximately 10 microns, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In this case, the skilled artisan is easily able to increase and decrease the size of particles and dimensions thereof and determine the effect on monitored parameters, e.g., coolant flow and burn-up.
Regarding claim 34, the above-described combination of Bennett with Brown teaches all the elements of the parent claim, and Brown also teaches wherein the target material comprises one or more of uranium oxide (“targets … granules … uranyl oxide,” ¶ 43) or uranium metal in the form of powder (“uranium powder,” ¶ 43), salt, cloth, foam or a colloidal suspension in liquid. The skilled artisan would have been motivated to utilize the uranium oxide powder for the reasons detailed above in response to claim 22.
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Bennett and Brown, as combined above, further in view of Adelman (US 2007/0092051).
Regarding claim 35, the above-described combination of Bennett with Brown teaches all the elements of the parent claim but does not explicitly suggest using radium as the source material.
Adelman does. Adelman is in the art area of creating and extracting desirable radioisotopes via neutron fission (abstract) and teaches using a source material that includes radium (“Radium-226 is irradiated in a fast-neutron reactor,” ¶ 39). The skilled artisan would have been motivated to utilize the radium as suggested by Adelman (see abstract) in order to obtain the well-known desirable medical radioisotopes 225Ra and 225Ac.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY C GARNER whose telephone number is (571)272-9587. The examiner can normally be reached 9-5 CT.
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Please be aware that, as of October 1, 2025, the PTO has implemented a policy of one interview per round of examination. Additional interviews require managerial approval.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jack Keith can be reached at (571) 272-6878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LILY CRABTREE GARNER
Primary Examiner
Art Unit 3646
/LILY C GARNER/Primary Examiner, Art Unit 3646
1 “Pore.” Merriam-Webster’s Collegiate Dictionary, 12th ed., Merriam-Webster, 2026, p. 1234.
2 https://wiki.anton-paar.com/ch-fr/mesure-de-la-taille-des-pores/
3 6-page NPL in the file 08/06/2025.