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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/08/2025 has been entered.
This action is responsive to Applicant's amendments/remarks filed 12/08/2025.
Claims 35-41, 45, 46, and 48-56 are currently pending and under examination.
The rejection of claims 35-43, 45-49, 51, and 53-55 under 35 U.S.C. 103 as being unpatentable over Petrov in view of Fallahi and Sarbu is withdrawn in view of the above amendments.
The rejection of claims 35, 41-44, 46-48, and 51 under 35 U.S.C. 103 as being unpatentable over Gavrichev in view of Fallahi and Sarbu is withdrawn in view of the above amendments.
The rejection of claims 35, 37, 40, 41, 45, 47 and 52 under 35 U.S.C. 103 as being unpatentable over Mikuli in view of Fallahi and Sarbu, as evidenced by “Perkin Elmer Pyris 1 DSC” is withdrawn in view of the above amendments.
The rejection of claim 50 under 35 U.S.C. 103 as being unpatentable over Petrov in view of Fallahi and Sarbu, and further in view of Saldin is withdrawn in view of the above amendments.
The rejection of claim 56 under 35 U.S.C. 103 as being unpatentable over Petrov in view of Fallahi and Sarbu, and further in view of Amaral is withdrawn in view of the above amendments.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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.
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.
Claims 35-41, 45, 46, and 48-56 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 35 recites “without any significant degradation”. The term “significant” is a relative term which renders the claim indefinite. The term “significant” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 46 depends from claim 35 and recites “the phase change materials (PCM) comprise any one of or combination of the following salts: NaBF4, KBF4, RbBF4, CsBF4 and NH4BF4”. It is unclear whether the limitation of claim 46 further limits claim 35, or includes all the limitations of claim 35. For the purpose of the compact prosecution, this limitation of claim 46 is interpreted as including all the limitations of claim 35.
Claim 48 depends from claim 35 and recites “the phase change materials (PCM) comprise a cation selected from any one of or combination of the following: Li+, NH4+, Na+, K+, Mg2+, and Ca2+”. It is unclear whether the limitation of claim 48 further limits claim 35, or includes all the limitations of claim 35. For the purpose of the compact prosecution, this limitation of claim 48 is interpreted as including all the limitations of claim 35.
Claim 51 depends from claim 35 and recites “the phase change material (PCM) comprises at least one inorganic tetrafluoroborate salt selected from: KBF4; NaBF4; NH4BF4; Sr(BF4)2; Ca(BF4)2; NH4H(BF4)2; (NH4)3H(BF4)4; Ba(BF4)2; Cr(BF4)2; Pb(BF4)2; Mg(BF4)2; AgBF4; RbBF4; CsBF4; Fe(BF4)2; Fe(BF4)3; Ni(BF4)2; Ni(BF4)3; Mn(BF4)2; Co(BF4)2; and Zn(BF4)2”. It is unclear whether the limitation of claim 51 further limits claim 35, or includes all the limitations of claim 35. For the purpose of the compact prosecution, this limitation of claim 51 is interpreted as including all the limitations of claim 35.
Claims 36-41, 45, 46, and 48-56 depend from claim 35. Therefore, claims 36-41, 45, 46, and 48-56 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
1. Claims 35-41, 45, 46, 48, 51, and 53-55 are rejected under 35 U.S.C. 103 as being unpatentable over Petrov (“Determination of heat capacity and enthalpies of phase transitions of ammonium, sodium and potassium tetrafluoroborates”, Petrov et al., Thermochimica Acta 87:381-383 (1985), hereinafter Petrov) in view of Sarbu (“A Comprehensive Review of Thermal Energy Storage”, Sarbu et al., Sustainability, 10(1), 191, (2018), hereinafter Sarbu).
Regarding claim 35, the transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original) See MPEP 2111.03 III. Additional tetrafluoroborate salts are permissible because they would not change the characteristics of the phase change material from being a thermal storage material. Therefore, for the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355. See MPEP 2111.03 III.
Petrov teaches that potassium tetrafluoroborate (KBF4) has a polymorphous phase transition at 562±2 K and transition enthalpy of 14.2±0.4 kJ/mol (p. 381, 2nd paragraph; p. 382, 3rd paragraph, 4th paragraph), equaling to about 289 oC and about 113 J/g, sodium tetrafluoroborate (NaBF4) has a polymorphous phase transition at 520±2 K and transition enthalpy of 8.4±0.4 kJ/mol (p. 381, 2nd paragraph; p. 382, 3rd paragraph, 4th paragraph), equaling to about 247 oC and about 76 J/g, which both fall within the claimed range of “about 0°C to about 500°C”. Thus, KBF4 and NaBF4 of Petrov experienced phase transition and thermal energy storage, and read on the claimed thermal storage material in the form of a phase change material.
KBF4 and NaBF4 are metal salts. KBF4 and NaBF4 as phase change materials in Petrov comprise no nucleating agent (p. 382, 3rd paragraph). Petrov teaches that the samples of KBF4 and NaBF4 were pressed for measurement (p. 381, 8th paragraph, § METHODS). Petrov also teaches that measurements were carried out on pressed polycrystal samples of KBF4 and NaBF4 (p. 383, 2nd paragraph). Thus, KBF4 and NaBF4 in Petrov are in a pressed form. Therefore, increased bulk density will flow from the pressed form, because the process of pressing will make the solid in a tight form and reduce the volume.
Furthermore, the court has held that “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01 II. "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I. Therefore, the property of being repeatedly thermally cycled without any significant degradation to the PCM material, will be present in the identical compounds (KBF4 and NaBF4) as taught by Petrov.
Petrov teaches the polymorphous phase transition temperature and heat capacity of the tetrafluoroborates KBF4 and NaBF4 (p. 381, last paragraph). Thus, KBF4 and NaBF4 in Petrov work as phase change materials. The phase change material comprises about 100 wt% of the tetrafluoroborate (KBF4 or NaBF4) in Petrov, which falls within the claimed range of “50 to 100 wt%”.
Petrov does not teach that a heat battery comprises a device for extracting and adding thermal energy and includes a structural containment vessel for the PCM and optionally insulation.
The instant invention discloses that the heat battery may also comprise a device for extracting and adding thermal energy (such as one or more heat exchangers) (instant p. 13, ll. 1-2).
Sarbu teaches that containment of phase change materials helps to contain the material in solid phases to prevent its possible variation in chemical composition by interaction with its surroundings (p. 15, 1st para), and the containment can be a cylinder (p. 15, 2nd para), which reads on the claimed structural containment vessel for the PCM and optionally insulation.
Sarbu also teaches that a thermal energy storage system includes containment for phase change material and a heat exchanger (p. 15, 3rd para), which reads on the claimed device for extracting and adding thermal energy. The thermal energy storage system in Sarbu reads on the claimed heat battery.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make the tetrafluoroborate KBF4 or NaBF4 in a pressed form as a solid-solid phase change material as taught by Petrov being used as the phase change material in the thermal energy storage system which includes containment for the phase change material and a heat exchanger as taught by Sarbu, in order to store the thermal energy and prevent the possible variation in chemical composition by interaction with the surroundings with a reasonable expectation of success, because the tetrafluoroborates KBF4 and NaBF4 are in a pressed form and work as solid-solid phase change materials for thermal energy storage as recognized by Petrov, and the thermal energy storage system of Sarbu includes containment for phase change material and a heat exchanger, the containment helps to contain the phase change material in solid phases to prevent its possible variation in chemical composition by interaction with its surroundings as recognized by Sarbu. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 36, Petrov teaches that KBF4 has a polymorphous phase transition at 562±2 K (p. 381, 2nd paragraph; p. 382, 3rd paragraph), equaling to about 289 oC, NaBF4 has a polymorphous phase transition at 520±2 K (p. 381, 2nd paragraph; p. 382, 3rd paragraph), equaling to about 247 oC, which both fall within the claimed range of “about 0 °C to about 500 °C”, and read on the claimed plurality of tetrafluoroborate salts being capable of at least two solid to solid phase transitions which occur at different temperatures.
Regarding claim 37, Petrov teaches when measurements were carried out on pressed polycrystal samples of KBF4 and NaBF4, the phase transition temperatures of KBF4 and NaBF4 were changed (p. 383, 2nd paragraph). Petrov also teaches that the tetrafluoroborate salts can have different phase transition temperatures due to different experimental conditions (p. 383, 3rd paragraph).
Moreover, the court has held that “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01 II. "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I. Thus, the property of the solid to solid transition point temperature being changed under pressure will be present in the identical compounds (KBF4 and NaBF4) as taught by Petrov.
Regarding claim 38, Petrov teaches that the tetrafluoroborate salt is KBF4, and KBF4 has a polymorphous phase transition (p. 381, 2nd paragraph; p. 382, 3rd paragraph). Thus, KBF4 as a phase change material in Petrov is about 100 wt. %, which falls within the claimed range of “10 - 100 wt.%”.
Regarding claims 39 and 53, Petrov teaches that KBF4 has a polymorphous phase transition at 562±2 K and transition enthalpy of 14.2±0.4 kJ/mol (p. 381, 2nd paragraph; p. 382, 3rd paragraph, 4th paragraph), equaling to about 289 oC, NH4BF4 has a polymorphous phase transition at 480±2 K and transition enthalpy of 10±0.4 kJ/mol (p. 381, 2nd paragraph; p. 382, 3rd paragraph, 4th paragraph), equaling to about 207 oC, which both fall within the claimed range of “about 0 °C to about 500 °C”. Thus, NH4BF4 of Petrov experienced phase transition and thermal energy storage, and reads on the claimed thermal storage material in the form of a phase change material.
NH4BF4 is an inorganic salt. NH4BF4 as phase change material in Petrov comprises no nucleating agent (p. 382, 3rd paragraph). Petrov teaches that the sample of NH4BF4 was pressed for measurement (p. 381, 8th paragraph, § METHODS). Thus, NH4BF4 in Petrov is in a pressed form. Therefore, increased bulk density will flow from the pressed form, because the process of pressing will make the solid in a tight form and reduce the volume.
Furthermore, the court has held that “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01 II. "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I. Therefore, the property of being repeatedly thermally cycled without any significant degradation to the PCM material, will be present in the identical compound (NH4BF4) as taught by Petrov.
Petrov does not teach that the phase change material comprises a mixture of tetrafluoroborate salts.
However, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine KBF4 and NH4BF4 as taught by Petrov in order to make a phase change material with a reasonable expectation of success, because both KBF4 and NH4BF4 have polymorphous phase transitions as recognized by Petrov. Moreover, a person of ordinary skill in the art would use about 10-90 mol% of KBF4 and 10-90 mol% of NH4BF4 in order to form a phase change material with a reasonable expectation of success. Furthermore, the court has held that “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01 II. "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I. Therefore, the property of depressing the melting point of the phase change material will be present in the identical composition of a phase change material comprising KBF4 and NH4BF4. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 40, the court has held that “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01 II. "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I. Therefore, the property of being repeatedly thermally cycled up to 50 thermal cycles, 70 thermal cycles, 100 thermal cycles, 200 thermal cycles, 500 thermal cycles, 1,000 thermal cycles, 5,000 thermal cycles, and 10,000 thermal cycles, will be present in the identical compounds (KBF4 and NaBF4) as taught by Petrov.
Regarding claim 41, Petrov teaches that the samples of KBF4 and NaBF4 were pressed for measurement (p. 381, 8th paragraph, § METHODS). Petrov also teaches that measurements were carried out on pressed polycrystal samples of KBF4 and NaBF4 (p. 383, 2nd paragraph). Thus, KBF4 and NaBF4 in Petrov are in a pressed form.
Regarding claim 45, the court has held that “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01 II. "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I. Therefore, the property of being air and moisture stable in the atmosphere and being stable in a formed shape, will be present in the identical compounds (KBF4 and NaBF4) as taught by Petrov.
Regarding claims 46, 48 and 51, Petrov teaches the polymorphous phase transitions of KBF4 and NaBF4 (p. 381, 1st, 2nd, and 3rd paragraphs), which each meets the claimed phase change material. KBF4 in Petrov comprises a K+ metal cation. NaBF4 in Petrov comprises a Na+ metal cation.
Regarding claim 54, Sarbu teaches that containment of phase change materials helps to contain the material in solid phases to prevent its possible variation in chemical composition by interaction with its surroundings (p. 15, 1st para), and the containment can be a cylinder (p. 15, 2nd para), which reads on the claimed insulation.
Sarbu also teaches that a thermal energy storage system includes containment for phase change material and heat exchanger (p. 15, 3rd para), which reads on the claimed heat battery comprising the claimed heat exchanger and insulation.
Regarding claim 55, Sarbu teaches that a heat transfer fluid goes through a heat exchanger, and the heat transfer fluid can be air (p. 15, 3rd para, 4th para).
2. Claim 49 is rejected under 35 U.S.C. 103 as being unpatentable over Petrov in view of Sarbu as applied to claims 35-41, 45, 46, 48, 51, and 53-55 above, and further in view of Fallahi (“Review on solid-solid phase change materials for thermal energy storage: Molecular structure and thermal properties”, Fallahi et al., Applied Thermal Engineering 127:1427–1441 (2017), hereinafter Fallahi).
The disclosure of Petrov in view of Sarbu is relied upon as set forth above.
Regarding claim 49, Petrov teaches the polymorphous phase transitions of KBF4 and NaBF4 (p. 381, 1st, 2nd, and 3rd paragraphs).
Petrov does not teach that the phase change material contains a thermal conductivity enhancer, a shape stabilising aid, or a processing aid.
However, Fallahi teaches that enhancement of the thermal conductivity in solid-solid phase change materials has been attempted by adding the thermal conductivity enhancing materials (e.g. expanded graphite) (p. 1438, left column, 2nd para), which reads on the claimed thermal conductivity enhancer.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make the tetrafluoroborates KBF4 and NaBF4 which have the polymorphous phase transition as taught by Petrov further comprising a thermal conductivity enhancing material as taught by Fallahi, in order to increase the thermal conductivity of the solid-solid phase change material with a reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
3. Claim 50 is rejected under 35 U.S.C. 103 as being unpatentable over Petrov in view of Sarbu as applied to claims 35-41, 45, 46, 48, 51, and 53-55 above, and further in view of Saldin (“Thermal Studies of Potassium Tetrahydroborate−Sodium Tetrafluoroborate Mixtures”, Saldin et al., Russian Journal of Inorganic Chemistry, Vol. 62, No. 4, pp. 489–497, 2017, hereinafter Saldin).
The disclosure of Petrov in view of Sarbu is relied upon as set forth above.
Regarding claim 50, Petrov teaches that NaBF4 has a polymorphous phase transition at 520±2 K and transition enthalpy of 8.4±0.4 kJ/mol (p. 381, 2nd paragraph; p. 382, 3rd paragraph, 4th paragraph). NaBF4 in Petrov is a phase change material.
Petrov does not teach that the phase change material further comprises a non-tetrafluoroborate salt to alter the transition temperature of the tetrafluoroborate salt.
However, Saldin teaches that KBH4−NaBF4 mixtures were studied by thermal analysis (differential scanning calorimetry) (abstract), KBH4−NaBF4 mixtures have the molar ratios of KBH4 to NaBF4 in 1:3, 1:1, and 3:1 (referred to as M1, M2, and M3) (p. 490, left column, 1st para).
Saldin also teaches that the DSC curves of mixtures M1−M3 exhibit endothermic events, which are due to the polymorphic transition of NaBF4 (p. 490, right column, 1st para); with decreasing NaBF4 fraction in the KBH4−NaBF4 mixtures (mixtures M1−M3), there is a decrease in the temperature of endothermic events in the order M1-M3 from 520 to 517 K, as M1 having an endothermic event at 520 K, M2 having an endothermic event at 518 K, M3 having an endothermic event at 517 K (p. 490, right column, 1st para; p. 491, Fig. 1).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make the NaBF4 having a polymorphous phase transition as taught by Petrov, further comprising another salt such as KBH4 as taught by Saldin, in order to alter the transition temperature of NaBF4 with a reasonable expectation of success, because with decreasing NaBF4 amount in the KBH4−NaBF4 mixtures, there is a change in the phase transition temperature of NaBF4 as recognized by Saldin. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
4. Claim 56 is rejected under 35 U.S.C. 103 as being unpatentable over Petrov in view of Sarbu as applied to claims 35-41, 45, 46, 48, 51, and 53-55 above, and further in view of Amaral (“Phase change materials and carbon nanostructures for thermal energy storage: A literature review”, Amaral et al., Renewable and Sustainable Energy Reviews 79:1212–1228, (2017), hereinafter Amaral).
The disclosure of Petrov in view of Sarbu is relied upon as set forth above.
Regarding claim 56, Sarbu teaches that the containment for phase change materials can be macroencapsulation such as including phase change materials in a container (e.g. a tube, sphere, panel, cylinder, etc.), and the material for the containment can be steel (p. 15, 1st and 2nd para).
Sarbu does not teach stainless steel.
However, Amaral teaches that macroencapsulation for phase change material comprises the inclusion of the phase change material in a container (e.g. a tube, sphere, panel, etc.) (p. 1224, § 5.2. Macroencapsulation), and the material for the container (shell) can be steel or stainless steel (p. 1225, Table 8).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide the stainless steel as taught by Amaral as the material for the containment (container) of the phase change material in Sarbu, in order to encapsulate the phase change material with a reasonable expectation of success, because the material for the containment (container) of the phase change material is steel as recognized by Sarbu, and the both steel and stainless steel can be used as the material for the container of the phase change material as recognized by Amaral. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
5. Claims 35 and 52 are rejected under 35 U.S.C. 103 as being unpatentable over Nikolova (“Synthesis, thermal investigations and kinetic data of Zn(BF4)2·6H2O”, Nikolova et al., Journal of Thermal Analysis and Calorimetry, Vol. 95, 1:319–321 (2009), hereinafter Nikolova) in view of Sarbu (“A Comprehensive Review of Thermal Energy Storage”, Sarbu et al., Sustainability, 10(1), 191, (2018), hereinafter Sarbu).
Regarding claims 35 and 52, the transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original) See MPEP 2111.03 III. Additional tetrafluoroborate salts are permissible because they would not change the characteristics of the phase change material from being a thermal storage material. Therefore, for the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355. See MPEP 2111.03 III.
Nikolova teaches that zinc tetrafluoroborate hexahydrate (Zn(BF4)2·6H2O) has a solid to solid phase transition in the temperature range of 333–353 K (p. 319, right column, 4th paragraph, § Results and discussion), equaling to 60-80 oC, which falls within the claimed range of “about 0 °C to about 500 °C”. Thus, Zn(BF4)2·6H2O of Nikolova experienced phase transition and thermal energy storage, and reads on the claimed thermal storage material in the form of a phase change material. The Zn(BF4)2·6H2O of Nikolova also reads on the claimed zinc (Zn) tetrafluoroborate salts in claim 35.
Zn(BF4)2·6H2O is a metal salt. Zn(BF4)2·6H2O as a phase change material in Nikolova comprises no nucleating agent (p. 319, right column, 4th paragraph, § Results and discussion). Nikolova teaches that Zn(BF4)2·6H2O is a solid (p. 319, right column, 4th paragraph, § Results and discussion), and Zn(BF4)2·6H2O was prepared from concentrating the product by vacuum (p. 319, right column, 1st paragraph), which reads on the claimed pressed form. Thus, increased bulk density will flow from the vacuum/pressed form, because vacuum will make the solid in a tight/pressed form and reduce the volume.
Furthermore, the court has held that “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01 II. "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I. Therefore, the property of being repeatedly thermally cycled without any significant degradation to the PCM material, will be present in the identical compound (Zn(BF4)2·6H2O) as taught by Nikolova.
Nikolova teaches the solid to solid phase transition of Zn(BF4)2·6H2O (p. 319, right column, 4th paragraph, § Results and discussion). Thus, the Zn(BF4)2·6H2O in Nikolova works as phase change material. The phase change material comprises about 100 wt% of the tetrafluoroborate Zn(BF4)2·6H2O in Nikolova, which falls within the claimed range of “50 to 100 wt%”.
Nikolova does not teach that a heat battery comprises a device for extracting and adding thermal energy and includes a structural containment vessel for the PCM and optionally insulation.
The instant invention discloses that the heat battery may also comprise a device for extracting and adding thermal energy (such as one or more heat exchangers) (instant p. 13, ll. 1-2).
Sarbu teaches that containment of phase change materials helps to contain the material in solid phases to prevent its possible variation in chemical composition by interaction with its surroundings (p. 15, 1st para), and the containment can be a cylinder (p. 15, 2nd para), which reads on the claimed structural containment vessel for the PCM and optionally insulation.
Sarbu also teaches that a thermal energy storage system includes containment for phase change material and a heat exchanger (p. 15, 3rd para), which reads on the claimed device for extracting and adding thermal energy. The thermal energy storage system in Sarbu reads on the claimed heat battery.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make the tetrafluoroborate Zn(BF4)2·6H2O in a vacuum/pressed form as a solid-solid phase change material as taught by Nikolova being used as the phase change material in the thermal energy storage system which includes containment for the phase change material and a heat exchanger as taught by Sarbu, in order to store the thermal energy and prevent the possible variation in chemical composition by interaction with the surroundings with a reasonable expectation of success, because the tetrafluoroborate Zn(BF4)2·6H2O is in a vacuum/pressed form and works as solid-solid phase change material for thermal energy storage as recognized by Nikolova, and the thermal energy storage system of Sarbu includes containment for phase change material and a heat exchanger, the containment helps to contain the phase change material in solid phases to prevent its possible variation in chemical composition by interaction with its surroundings as recognized by Sarbu. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Response to Arguments
Applicant's arguments filed 12/08/2025 have been fully considered but they are not persuasive.
1. Regarding Applicant’s arguments to the prior rejection over Petrov in view of Fallahi and Sarbu, Applicant’s arguments have been considered but are moot, because the rejection of claim 35 under 35 U.S.C. 103 as being unpatentable over Petrov in view of Fallahi and Sarbu is withdrawn in view of the above amendments.
In the current rejection, claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Petrov in view of Sarbu.
As stated in claim 35 above, Petrov teaches that potassium tetrafluoroborate (KBF4) has a polymorphous phase transition at 562±2 K and transition enthalpy of 14.2±0.4 kJ/mol (p. 381, 2nd paragraph; p. 382, 3rd paragraph, 4th paragraph), equaling to about 289 oC and about 113 J/g, sodium tetrafluoroborate (NaBF4) has a polymorphous phase transition at 520±2 K and transition enthalpy of 8.4±0.4 kJ/mol (p. 381, 2nd paragraph; p. 382, 3rd paragraph, 4th paragraph), equaling to about 247 oC and about 76 J/g, which both fall within the claimed range of “about 0°C to about 500°C”. Thus, KBF4 and NaBF4 of Petrov experienced phase transition and thermal energy storage, and read on the claimed thermal storage material in the form of a phase change material.
Furthermore, Sarbu teaches that containment of phase change materials helps to contain the material in solid phases to prevent its possible variation in chemical composition by interaction with its surroundings (p. 15, 1st para), and the containment can be a cylinder (p. 15, 2nd para), which reads on the claimed structural containment vessel for the PCM and optionally insulation.
Sarbu also teaches that a thermal energy storage system includes containment for phase change material and a heat exchanger (p. 15, 3rd para), which reads on the claimed device for extracting and adding thermal energy. The thermal energy storage system in Sarbu reads on the claimed heat battery.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make the tetrafluoroborate KBF4 or NaBF4 in a pressed form as a solid-solid phase change material as taught by Petrov being used as the phase change material in the thermal energy storage system which includes containment for the phase change material and a heat exchanger as taught by Sarbu, in order to store the thermal energy and prevent the possible variation in chemical composition by interaction with the surroundings with a reasonable expectation of success, because the tetrafluoroborates KBF4 and NaBF4 are in a pressed form and work as solid-solid phase change materials for thermal energy storage as recognized by Petrov, and the thermal energy storage system of Sarbu includes containment for phase change material and a heat exchanger, the containment helps to contain the phase change material in solid phases to prevent its possible variation in chemical composition by interaction with its surroundings as recognized by Sarbu. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
2. Regarding Applicant’s arguments to the prior rejection over Gavrichev in view of Fallahi and Sarbu, and the prior rejection over Mikuli in view of Fallahi and Sarbu, Applicant’s arguments have been considered but are moot, because the current rejections do not utilize the prior art references Gavrichev and Mikuli.
As stated above, the rejection of claim 35 under 35 U.S.C. 103 as being unpatentable over Gavrichev in view of Fallahi and Sarbu is withdrawn in view of the above amendments.
The rejection of claim 35 under 35 U.S.C. 103 as being unpatentable over Mikuli in view of Fallahi and Sarbu is withdrawn in view of the above amendments.
Conclusion
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/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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