DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Examiner Request
The applicant is requested to provide line numbers to each claim in all future claim submissions to aide in examination and communication with the applicant about claim recitations. The applicant is thanked for aiding examination.
Drawings
The drawings dated 3/05/2026 are accepted.
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.
Claim(s) 1-4, 8-10, 18, 19 is/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 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 inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In regard to claim 1, the recitation, “when a temperature of the cryogenic cooling system is below a threshold temperature so that the first cooling stage (103) is only cooling the fluid cooling medium in the first conduit (104)” is new matter as there is no support that the coupling element controls cooling from the first cooling stage to the first conduit. Further, the recitation contains new matter as the scope of the recitation includes that there is no other cooling other than cooling of the fluid cooling medium and there is no support that the system “only” cools the fluid cooling medium and excludes cooling of other structures. Further, the drawings fail to support a total exclusion as encompassed by the recitation as the drawings merely show positive cooling features and fail to show any exclusion of other cooling.
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.
Claim(s) 1-4, 8-10, 18-19 is/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 pre-AIA the applicant regards as the invention.
In regard to claim 1, the recitation, “the coupling element will decrease cooling provided from the first cooling stage (103) to the first cold stage (108) by the first thermal coupling (111) when a temperature of the cryogenic cooling system (100) is below a threshold temperature so that the first cooling stage (103) is only cooling the fluid cooling medium in the first conduit (104)” is indefinite for several reasons: first, there is no way to discern what temperature or location is required of a temperature of cryogenic cooling system. For present examination, any location in the system is included; second, the disclosed coupling element has no control over the cooling between the first cooling stage and the first conduit as claimed. The recitation appears to ascribe functional capability to the coupling element that only belongs to the at least one thermal coupling (105). Third, the recitation is indefinite since there is no way to discern what cooling amount the coupling element must be compared with to be considered decreased as claimed. Fourth, there is no support that the first cooling stage is excluded from cooling anything other than the fluid cooling medium and therefore it is unclear what the scope of the “only” recitation encompasses.
The recitation, “thermal coupling” is indefinite in view of the indeterminate definition provided by the disclosure. The description states that “a thermal coupling between two objects may refer to any coupling that can be used to transfer heat sufficiently efficiently between the two objects (spec. para. 48). The definition depends on the indeterminate qualifier of “sufficiently efficiently” and there is no way to determine what may or may not be considered efficient enough to be within the scope of the recitation. For present examination, the term is interpreted as --any coupling that can be used to transfer heat between two objects--.
In regard to claim 8, the recitation, “wherein the controlled thermal coupling (109)” is indefinite for being inconsistent with the independent claim and it is unclear why the recitation does not reference the coupling element (109).
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim limitation “coupling element” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph and is interpreted as a controllable thermal connection (spec. para. 57).
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
Claim(s) 1-4, 18, 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu (US 2024/0102701). See the indefiniteness rejections and note that the prior art teaches the claimed features as far as can be interpreted. Further note an interpretation of the claim language as outlined in the rejection below.
In regard to claim 1, Liu teaches a cryogenic cooling system (see whole disclosure; para. 23 “refrigeration mechanism”), comprising:
a vacuum enclosure (1.16) and a working region (at least some volume in 1.13) within the vacuum enclosure (1.16),
a first cryocooler (pulse tube; para. 19, 28) having a first cooling stage (interpreted as a part that provides cooling, see at least part of 2.9 or 2.11; para. 19, 28, 29), the first cooling stage (at least part of 2.9 or 2.11) being located in the vacuum enclosure (1.16),
a first conduit (4.2) for passing a stream of fluid cooling medium (para. 19, 32 - see helium) towards the working region (in 1.13),
at least one thermal coupling (interpreted as any coupling that can be used to transfer heat between two objects; at least part of 1.5 between 4.2 and 2.9; or at least part of 1.7, between 4.2 and 2.11) of the first conduit (4.2) and the first cooling stage (at least part of 2.9 or 2.11) for cooling the fluid cooling medium (helium) on its way (the helium’s way) towards the working region (in 1.13),
a second cryocooler (throttling refrigeration unit, para. 25) having a second cooling stage (interpreted as part that provides cooling, 1.4, 1.6, or 1.12), the second cooling stage (1.4, 1.6, or 1.12) being located in the vacuum enclosure (1.16),
a first cold stage (interpreted as part that is cooled, 3.5, para. 19, 30, 31) located in the vacuum enclosure (1.16),
at least one thermal coupling (interpreted as any coupling that can be used to transfer heat between two objects; see thermal connecting structure between 3.5 and 1.12, or between 3.5 and 1.6, or between 3.5 and 1.4) of the second cooling stage (1.4, 1.6, or 1.12) and the first cold stage (3.5) for cooling the first cold stage (3.5), and
a first thermal coupling (interpreted as any coupling that can be used to transfer heat between two objects; thermal connections from 2.9 or 2.11 to 3.5 including 1.9) of the first cooling stage (at least part of 2.9 or 2.11) and the first cold stage (3.5), provided by a coupling element (interpreted as a controllable thermal connection; at least 1.9), for cooling the first cold stage (3.5),
wherein the coupling element (at least 1.9) will decrease cooling (relative to another time of operation) provided from the first cooling stage (part of 2.9 or 2.11) to the first cold stage (3.5) by the first thermal coupling (thermal connections from part of 2.9 or 2.11 to 3.5 including 1.9) when a temperature of the cryogenic cooling system (refrigeration mechanism) is below a threshold temperature (para. 39 “off” “when the temperature…is decreased to a predetermined degree”), note that the first cooling stage (part of 2.9 or 2.11) is capable of cooling the fluid cooling medium (helium) in the first conduit (4.2) and not cooling the first cold stage (3.5) when the coupling element (at least 1.9) has decreased cooling (is “off”, para. 39).
In regard to claim 2, Liu teaches the working region (1.13) is arranged to receive an object to be cooled (an object can be placed therein and cooled).
In regard to claim 3, Liu teaches that the first cold stage (3.5) is thermally coupled to a heat radiation shield (1.13; interpreted as any structure that can shield thermal radiation) surrounding the working region (inside 1.13).
In regard to claim 4, Liu teaches that the first cold stage (3.5) is a 4K stage (fully capable thereof; para. 24) of the cryogenic cooling system (refrigeration mechanism).
In regard to claim(s) 18-19, Liu teaches that the fluid cooling medium is helium-3 (para. 32) and is helium in a dilution refrigerator (para. 32).
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 (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 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.
The factual inquiries 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.
Claim(s) 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu (US 2024/0102701) in view of Paquette (US 11287171).
Liu teaches most of the claim limitations but does not explicitly teach that the coupling element (1.9) is a superconducting material having a thermal conductivity that is greater at a high reference temperature above the threshold temperature than at a low reference temperature below the threshold.
However, such heat switches are well known as taught by Paquette. Paquette teaches a coupling element (210) is a superconducting material (column 5, line 5-45), including niobium (column 5, line 15-20) having a thermal conductivity (high thermal conductivity in non-superconducting state) that is greater at a high reference temperature (see higher temperature of non-superconducting state) above a threshold temperature (column 5, line 20-25) than at a low reference temperature (see cryogenic temperature) below the threshold (column 5, line 20-25). Therefore it would have been obvious to those of ordinary skill in the art at the time the invention was made to modify the coupling element (1.9) of Liu with the superconducting heat switch of Paquette for the purpose of providing a heat switch that has no moving parts and provides a reliable heat switching operation at a desired cryogenic temperature near the temperature of the cold stage (3.5) and to provide the ability to reduce heat leak from the first cryocooler at lower temperatures while providing the ability to add refrigeration at higher temperatures in an easy to control manner.
Response to Arguments
Applicant's arguments filed 3/5/2026 have been fully considered and some of the indefiniteness rejections have been overcome but they are not fully persuasive in view of the grounds of rejection above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN F PETTITT whose telephone number is (571)272-0771. The examiner can normally be reached on M-F, 9-5p. 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): http://www.uspto.gov/interviewpractice. The examiner’s supervisor, Frantz Jules can be reached on 571-272-6681. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. 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. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like 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.
/JOHN F PETTITT, III/Primary Examiner, Art Unit 3763
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