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 .
This action is responsive to Applicant's amendment/remarks filed 01/07/2026.
Claims 1, 4, and 6-10 are currently pending, of which claims 8-10 are withdrawn.
Claims 1, 4, 6, and 7 are currently under examination.
The rejection of claims 1, 4, 6, and 7 under 35 U.S.C. 103 as being unpatentable over Tsuzuki (JP 2015183973 A) in view of Malach (US 6,482,332 B1) and Tanaka (JP 2015124267 A) is withdrawn in view of the above amendments.
The rejection of claim 4 under 35 U.S.C. 103 as being unpatentable over Tsuzuki (JP 2015183973 A) in view of Malach (US 6,482,332 B1) and Tanaka (JP 2015124267 A), and further as evidenced by “1,2-butanediol from TGSC Information System” (“1,2-butanediol Physical Property Information from The Good Scents Company Information System”, 2024) is withdrawn in view of the above amendments.
The rejection of claims 1 and 4 under 35 U.S.C. 103 as being unpatentable over Yabe (JP 2001207163 A) is withdrawn in view of the above amendments.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 § 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.
Claims 1, 4, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Hidekazu (JP 2015124268 A, hereinafter Hidekazu) in view of Malach (US 6,482,332 B1, hereinafter Malach).
Regarding claims 1 and 7, Hidekazu teaches that a heat storage material composition can consist of sodium acetate trihydrate, a supercooling stabilizer, and water ([0010]-[0011], [0013], [0018]), wherein the supercooling stabilizer can be butylene glycol (i.e. butanediol) ([0013], claim 9), and the heat storage material composition is a uniform liquid ([0018]), which reads on the claimed sodium acetate with a chemical formula of CH3COONa.
Hidekazu also teaches that the number of water molecules contained in the heat storage material composition is within ±10% of the number of water molecules in the stoichiometric composition of the hydrated salt (i.e. sodium acetate trihydrate) contained in the heat storage material composition, i.e., within the range of 0.9 to 1.1 times ([0011]).
Hidekazu also teaches that the number of molecules of the supercooling stabilizer contained in the heat storage material composition is 5% or more and 33.3% or less relative to the number of water molecules contained in the heat storage material composition ([0015]).
Thus, in the heat storage material composition of Hidekazu, sodium acetate can be in an amount of from about 28 wt.% to about 42 wt.%, water can be in an amount of from about 39 wt.% to about 54 wt.%, and the supercooling stabilizer such as butanediol can be in an amount of from about 6 wt.% to about 34 wt.%, based on the total amount of sodium acetate, water and the supercooling stabilizer.
Hidekazu does not teach that the butanediol can be 1,2- butanediol.
However, Malach teaches that a phase change material (PCM) comprises 1-99.5% by weight butanediol, and 0.5-99% by weight water, wherein the butanediol is 1,2-butanediol (col. 8, ll. 65-67). Malach also teaches that the PCM can efficiently store and release heat (col. 15, ll. 32-34). Thus, the phase change material (PCM) in Malach is a heat storage material.
Malach also teaches that the PCM is supercooled by dropping below the freezing point while still a liquid; and a nucleating agent is added to the PCM to reduce the supercooling (col. 8, ll. 45-48). Thus, in Malach, the PCM comprising 1,2-butanediol and water without a nucleating agent is in a supercooled state.
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 1,2-butanediol as taught by Malach as the butanediol in Hidekazu, in order to form a heat storage material composition with a reasonable expectation of success, because 1,2-butanediol is one type of butanediol, and the phase change material comprising 1,2-butanediol and water without a nucleating agent is in a supercooled state as recognized by Malach.
Therefore, in the heat storage material composition as taught by the combination of Hidekazu and Malach, sodium acetate can be in an amount of from about 28 wt.% to about 42 wt.%, water can be in an amount of from about 39 wt.% to about 54 wt.%, and 1,2-butanediol can be in an amount of from about 6 wt.% to about 34 wt.%, based on the total amount of sodium acetate, water and 1,2-butanediol.
The Examiner has carefully plotted the heat storage material composition consisting of sodium acetate in an amount of from about 28 wt.% to about 42 wt.%, water in an amount of from about 39 wt.% to about 54 wt.%, and 1,2-butanediol in an amount of from about 6 wt.% to about 34 wt.%, against the scope of the claimed figure of /surrounding straight lines AB, BC, CD, DE, EF, and FA in a triangular diagram:
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In the triangular diagram, the figure with a solid black color represents the heat storage material composition consisting of sodium acetate in an amount of from about 28 wt.% to about 42 wt.%, water in an amount of from about 39 wt.% to about 54 wt.%, and 1,2-butanediol in an amount of from about 6 wt.% to about 34 wt.%, which falls within the claimed figure of/surrounding straight lines AB, BC, CD, DE, EF, and FA in the triangular diagram. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 4, 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 dissolving in water at 20°C at a rate of 1 kg or more per liter, would be present in the identical compound (1,2-butanediol) as taught by Malach. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 6, as discussed in claim 1 above, in the heat storage material composition as taught by the combination of Hidekazu and Malach, sodium acetate can be in an amount of from about 28 wt.% to about 42 wt.% based on the total amount of sodium acetate, water and 1,2-butanediol, which falls within the claimed range of “20 wt% or more”.
Response to Arguments
1. Applicant's arguments with respect to the prior rejections have been considered but are moot, because the arguments do not apply to all of the references being used in the current rejection. The current rejection utilizes a new reference, Hidekazu (JP 2015124268 A), in addition to the previous reference Malach (US 6,482,332 B1) under a new ground(s) of rejection which renders obvious the instant claims.
2. Applicant argues that the combination of sodium acetate, water, and the claimed alcohol (1,2-butanediol, 1,2-pentanediol, or 1,2-hexanediol) shows unexpected results; as shown in Table 1 of the present application, the heat storage material composition of Comparative Example 1, which contained no stabilizer, and the heat storage material compositions of Comparative Examples 2 to 4, which contained alcohols different from the claimed alcohol, were unable to sufficiently maintain a supercooled state and exhibited poor stability; Comparative Example 4 uses 1,3-butanediol, yet failed to maintain the supercooled state; in contrast, the heat storage material compositions of Examples 1 to 3, which contained the claimed alcohol (1,2-butanediol, 1,2-pentanediol, or 1,2-hexanediol), did not crystallize at -20° C and exhibited an excellent stability of the supercooled state (p. 7).
In response, Applicant’s arguments are not persuasive.
Firstly, Applicant's election of Group I (drawn to a heat storage material composition), and the 1,2-butanediol species without traverse in the reply filed on 06/06/2024 was acknowledged. Claims 1, 4, 6, and 7 read on the elected Group I and the 1,2-butanediol species, and are currently under examination.
Secondly, according to the present application, Comparative Examples 2-4 and Examples 1-3 were prepared by mixing 29.7 g of sodium acetate, 22.6 g of water, and 3.7 g of a supercooling stabilizer (present [0046], [0047]). Thus, in Comparative Examples 2-4 and Examples 1-3 of the present application, the supercooling stabilizer is 6.6 mass % based on the total mass of the sodium acetate, the water, and the supercooling stabilizer.
Especially, the supercooling stabilizer (1,2-butanediol) in Example 1 is 6.6 mass % based on the total mass of the sodium acetate, the water, and the supercooling stabilizer; and the supercooling stabilizer (1,3-butanediol) in Comparative Example 4 is 6.6 mass % based on the total mass of the sodium acetate, the water, and the supercooling stabilizer. However, according to instant claim 7, the claimed supercooling stabilizer (i.e. 1,2-butanediol) is in a range of from 0.1 mass % to 75 mass %.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02 (d). Therefore, Applicant should compare a sufficient number of tests both inside and outside the claimed range to show an unexpected result over a claimed range.
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.
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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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