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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/25/2026 has been entered.
This action is responsive to Applicant's amendments/remarks filed 02/25/2026.
Claims 1, 3, 5, 6, 9-18 are currently pending and under examination.
The rejections as stated in the Final Rejection filed 09/25/2025 are all withdrawn in view of the above amendments.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.
1. Claims 1, 3, 5, 6, 9-15, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Sakurada (JP 2008163286 A, hereinafter Sakurada) in view of Nakatsuji (WO 2009/128476 A1, hereinafter Nakatsuji) and Ikuno (JP 2008239860 A, hereinafter Ikuno).
Regarding claims 1 and 3, the term “thermal” in “a thermal polymerization initiator” is an intended use/result and does not add structural difference, thus the intended use/result is extended little patentable weight. See MPEP § 2112.02.
Sakurada teaches a heat storage composition comprising component (A) a heat storage capsule containing component (b) a latent heat storage material (abstract, claim 1), wherein a capsule wall of component (A) the heat storage capsule is formed by polymerizing monomers (claim 3), wherein the monomers comprise component (a-3) a crosslinkable monomer (claim 3), and component (a-3) the crosslinkable monomer is preferably a polyethylene glycol dimethacrylate with 4 or more ethylene oxide additions ([0022]), which reads on the claimed Formula (1) when R11 and R12 are a methyl group, and R13 is a divalent group having a polyoxyethylene chain, and also reads on the claimed Formula (1-2) when R11 and R12 are a methyl group, and R14 represents an ethylene group, and m represents an integer more than 2.
Sakurada teaches that the monomers are polymerized in the presence of a polymerization initiator, wherein the polymerization initiator comprises an organic peroxide ([0032]), which reads on the claimed thermal polymerization initiator comprising an organic peroxide.
Sakurada also teaches that the heat storage capsule can be manufactured by mixing the monomers, the latent heat storage material, and the polymerization initiator, then performing polymerization ([0031]). This mixture of Sakurada reads on the claimed curable composition.
Sakurada also teaches that the mixture can comprise 2-60% by weight of the monomer components, 10-40% by weight of component (b) the latent heat storage material, 0.1-5% by weight of component (c) the polymerization initiator ([0039]).
Sakurada further teaches that component (a-3) is in an amount of 0.1-30% by weight based on the total amount of monomers constituting the capsule wall ([0023]). Thus, the mixture of Sakurada can comprise 0.002-18% by weight of component (a-3).
Therefore, in the mixture of Sakurada, with respect to 100 parts by mass of component (a-3), component (b) the latent heat storage material can be in an amount of 222-1000 parts by mass, component (c) the polymerization initiator can be in an amount of 0.56-28 parts by mass, which overlaps with the claimed ranges of “300 parts by mass or more and 500 parts by mass or less” and “0.05 parts by mass or more and 1 part by mass or less”.
Sakurada teaches that component (a-3) the crosslinkable monomer is preferably a polyethylene glycol dimethacrylate with 4 or more ethylene oxide additions ([0022]), and component (a-3) is hydrophilic ([0022]).
Sakurada does not explicitly teach that the polyethylene glycol dimethacrylate with 4 or more ethylene oxide additions has a weight average molecular weight of 2,000 or more and 8,000 or less.
However, Nakatsuji teaches a heat storage capsule comprising a coating part formed from a composition containing a curable component (claim 1), wherein the curable component comprises a polyethylene glycol di (meth) acrylate having a molecular weight of 400 to 6000 ([0063]), which overlaps with the claimed range of “2,000 or more and 8,000 or less”. Nakatsuji also teaches that the polyethylene glycol di (meth) acrylate is hydrophilic ([0068]).
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 polyethylene glycol dimethacrylate having a molecular weight of 400 to 6000 as taught by Nakatsuji as the polyethylene glycol dimethacrylate having 4 or more ethylene oxide additions in Sakurada, in order to make component (a-3) the crosslinkable monomer being hydrophilic with a reasonable expectation of success.
Sakurada further teaches that component (b) the latent heat storage material is not particularly limited and is preferably an organic latent heat storage material ([0026]).
Sakurada does not teach that the organic latent heat storage material is a polyalkylene glycol.
However, Ikuno teaches a heat storage material which is used to store heat by utilizing the latent heat associated with phase transition ([0012]), and the heat storage material is an organic latent heat storage material which is a glycol (claim 4).
Ikuno also teaches that the glycol is preferably a polyethylene glycol with a molecular weight of about 200 to 20,000, such as a polyethylene glycol with a molecular weight of about 300 to 1600 ([0014]), which overlap with the claimed range of “1,000 or more and 1,800 or less”. Ikuno teaches that the molecular weight of a polyethylene glycol correlates with its freezing point ([0014]).
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 polyethylene glycol with a molecular weight of about 200 to 20,000, such as a molecular weight of about 300 to 1600 as taught by Ikuno as the organic latent heat storage material in Sakurada, in order to store heat by using the latent heat with a reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 5, Sakurada teaches that the mixture can comprise 2-60% by weight of the monomer components ([0039]). Sakurada also teaches that component (a-3) is in an amount of 0.1-30% by weight based on the total amount of monomers constituting the capsule wall ([0023]). Thus, the mixture of Sakurada can comprise 0.002-18% by weight of component (a-3), which overlaps with the claimed range of “10 mass% or more”.
Regarding claim 6, Sakurada teaches that component (a-3) can comprise one or more monomers, and component (a-3) can comprise polyethylene glycol di(meth)acrylate and polypropylene glycol di(meth)acrylate ([0022]). The polypropylene glycol di(meth)acrylate of Sakurada reads on the claimed Formula (2) when R21 is a methyl group, R22 represents a monovalent group having a polyoxypropylene chain.
Regarding claim 9, Sakurada teaches that the monomers comprise component (a-1) a (meth)acrylic acid ester monomer having an alkyl group having 12 or more carbon atoms (claim 1, [0014]), which reads on the claimed Formula (3) when R31 is a methyl group, and R32 is an alkyl group.
Regarding claim 10, Sakurada teaches that the monomers can further comprise other monomers, and the other monomer can be (meth)acrylic monomer containing epoxy groups, such as glycidyl (meth)acrylate ([0024]), which reads on the claimed Formula (4) when R41 is methyl group, R42 is a monovalent group having an epoxy group as a reactive group.
Regarding claim 11, the limitation “able to react with the reactive group” is an intended use and does not add structural difference, thus the intended use is extended little patentable weight. See MPEP § 2112.02.
Sakurada teaches that the heat storage composition can further comprise a crosslinking agent ([0053]), which reads on the claimed curing agent.
Regarding claim 12, the limitation “for forming a heat storage material” is an intended use and does not add structural difference, thus the intended use is extended little patentable weight. See MPEP § 2112.02.
Sakurada teaches that the mixture comprising the monomers, the latent heat storage material, and the polymerization initiator, is polymerized to form a heat storage capsule for a heat storage composition ([0031], claim 1).
Regarding claim 13, Sakurada teaches a heat storage composition comprising a heat storage capsule (abstract, claim 1), and the heat storage capsule is a cured product of a mixture comprising the monomers, the latent heat storage material, and the polymerization initiator ([0031]). The heat storage composition in Sakurada reads on the claimed heat storage material comprising a cured product.
Regarding claim 14, Sakurada teaches that the mixture comprising the monomers, the latent heat storage material, and the polymerization initiator, is placed in a polymerization tank, then is heated at 80°C to obtain a cured product (i.e. a heat storage capsule) ([0062]), which reads on the claimed being provided in thermal contact with the heat source. The polymerization tank in Sakurada reads on the claimed article. The heating at 80°C as taught by Sakurada reads on the claimed heat source.
Regarding claim 15, the term “thermal” in “a thermal polymerization initiator” is an intended use/result and does not add structural difference, thus the intended use/result is extended little patentable weight. See MPEP § 2112.02.
Sakurada teaches a wall material or heat insulating sheet comprising a heat storage film formed by a heat storage composition (claims 12-13, [0080]). The wall material or heat insulating sheet of Sakurada reads on the claimed heat storage material being in the form of sheet. The heat storage film of Sakurada reads on the claimed heat storage layer.
Sakurada teaches that the heat storage composition comprises a heat storage capsule containing a latent heat storage material (abstract, claim 1), wherein a capsule wall of the heat storage capsule is formed by polymerizing monomers in the presence of a polymerization initiator (claim 2).
Sakurada also teaches that the heat storage capsule is manufactured by polymerizing a mixture comprising the monomers, the latent heat storage material, and the polymerization initiator ([0031]). The mixture of Sakurada reads on the claimed curable composition.
Thus, the heat storage composition of Sakurada is a cured product. Thus, the heat storage film formed by the heat storage composition of Sakurada is also a cured product.
Sakurada teaches that the monomers comprise component (a-3) a crosslinkable monomer (claim 3), and component (a-3) the crosslinkable monomer is preferably a polyethylene glycol dimethacrylate with 4 or more ethylene oxide additions ([0022]), which reads on the claimed Formula (1) when R11 and R12 are a methyl group, and R13 is a divalent group having a polyoxyethylene chain.
Sakurada teaches that the polymerization initiator comprises an organic peroxide ([0032]), which reads on the claimed thermal polymerization initiator comprising an organic peroxide.
Sakurada also teaches that the mixture can comprise 2-60% by weight of the monomer components, 10-40% by weight of component (b) the latent heat storage material, 0.1-5% by weight of component (c) the polymerization initiator ([0039]).
Sakurada further teaches that component (a-3) is in an amount of 0.1-30% by weight based on the total amount of monomers constituting the capsule wall ([0023]). Thus, the mixture of Sakurada can comprise 0.002-18% by weight of component (a-3).
Therefore, in the mixture of Sakurada, with respect to 100 parts by mass of component (a-3), component (b) the latent heat storage material can be in an amount of 222-1000 parts by mass, component (c) the polymerization initiator can be in an amount of 0.56-28 parts by mass, which overlaps with the claimed ranges of “300 parts by mass or more and 500 parts by mass or less” and “0.05 parts by mass or more and 1 part by mass or less”.
Sakurada teaches that component (a-3) the crosslinkable monomer is preferably a polyethylene glycol dimethacrylate with 4 or more ethylene oxide additions ([0022]), and component (a-3) is hydrophilic ([0022]).
Sakurada does not explicitly teach that the polyethylene glycol dimethacrylate with 4 or more ethylene oxide additions has a weight average molecular weight of 2,000 or more and 8,000 or less.
However, Nakatsuji teaches a heat storage capsule comprising a coating part formed from a composition containing a curable component (claim 1), wherein the curable component comprises a polyethylene glycol di (meth) acrylate having a molecular weight of 400 to 6000 ([0063]), which overlaps with the claimed range of “2,000 or more and 8,000 or less”. Nakatsuji also teaches that the polyethylene glycol di (meth) acrylate is hydrophilic ([0068]).
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 polyethylene glycol dimethacrylate having a molecular weight of 400 to 6000 as taught by Nakatsuji as the polyethylene glycol dimethacrylate having 4 or more ethylene oxide additions in Sakurada, in order to make component (a-3) the crosslinkable monomer being hydrophilic with a reasonable expectation of success.
Sakurada further teaches that component (b) the latent heat storage material is not particularly limited and is preferably an organic latent heat storage material ([0026]).
Sakurada does not teach that the organic latent heat storage material is a polyalkylene glycol.
However, Ikuno teaches a heat storage material which is used to store heat by utilizing the latent heat associated with phase transition ([0012]), and the heat storage material is an organic latent heat storage material which is a glycol (claim 4).
Ikuno also teaches that the glycol is preferably a polyethylene glycol with a molecular weight of about 200 to 20,000, such as a polyethylene glycol with a molecular weight of about 300 to 1600 ([0014]), which overlap with the claimed range of “1,000 or more and 1,800 or less”. Ikuno teaches that the molecular weight of a polyethylene glycol correlates with its freezing point ([0014]).
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 polyethylene glycol with a molecular weight of about 200 to 20,000, such as a molecular weight of about 300 to 1600 as taught by Ikuno as the organic latent heat storage material in Sakurada, in order to store heat by using the latent heat with a reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 17, Sakurada does not teach that the mixture is converted into a B stage.
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 reasonably expect that the claimed property of the curable composition being converted into a B stage would flow naturally from the teaching of the combination of Sakurada, Nakatsuji, and Ikuno, because the teaching of the combination of Sakurada, Nakatsuji, and Ikuno provides substantially the same curable composition comprising the same amount of the same compound represented by the Formula (1) having a weight average molecular weight of 2,000 or more and 8,000 or less, the same amount of the same polyalkylene glycol having a weight average molecular weight of 1,000 or more and 1,800 or less, and the same amount of the same thermal polymerization initiator comprising an organic peroxide as claimed. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 18, Sakurada teaches that heat storage composition is applied to a PET (polyethylene terephthalate) film to obtain a heat storage film ([0073]), which reads on the claimed heat storage layer being provided on the support film. The PET film of Sakurada reads on the claimed support film.
2. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sakurada (JP 2008163286 A) in view of Nakatsuji (WO 2009/128476 A1) and Ikuno (JP 2008239860 A) as applied to claims 1, 3, 5, 6, 9-15, 17, and 18 above, and further in view of Goto (JP 2005042040 A, hereinafter Goto).
The disclosure of Sakurada in view of Nakatsuji and Ikuno is relied upon as set forth above.
Alternatively regarding claim 6, Sakurada teaches that a capsule wall of the heat storage capsule is formed by polymerizing monomers, wherein the monomers comprise component (a-3) a crosslinkable monomer (claim 3), and component (a-3) the crosslinkable monomer is preferably a polyethylene glycol dimethacrylate with 4 or more ethylene oxide additions ([0022]).
Sakurada also teaches that component (a-3) is hydrophilic and efficiently crosslinks on the surface of capsule particle, so the resulting capsule can exhibit excellent storage stability ([0022]). Sakurada also teaches that the monomers can further comprise other monomers ([0024]).
Sakurada does not explicitly teach that the other monomer is a compound represented by the Formula (2).
However, Goto teaches that a heat storage material comprises phase change substance and polymerizable monomers (para [0021]), wherein the polymerizable monomers can comprise a hydrophobic monomer and a hydrophilic monomer ([0023]), and the hydrophilic monomer can comprise polyethylene glycol methacrylate ([0023]). The polyethylene glycol methacrylate in Goto reads on the claimed Formula (2) when R21 is a methyl group, R22 represents a monovalent group having a polyoxyethylene chain.
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 monomers comprising component (a-3) a polyethylene glycol dimethacrylate with 4 or more ethylene oxide additions as taught by Sakurada, further comprising polyethylene glycol methacrylate as taught by Goto, in order to make the monomer components being more hydrophilic 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 16 is rejected under 35 U.S.C. 103 as being unpatentable over Sakurada (JP 2008163286 A) in view of Nakatsuji (WO 2009/128476 A1) and Ikuno (JP 2008239860 A) as applied to claims 1, 3, 5, 6, 9-15, 17, and 18 above, and further in view of Amano (JP 2008063547 A, hereinafter Amano).
The disclosure of Sakurada in view of Nakatsuji and Ikuno is relied upon as set forth above.
Regarding claim 16, Sakurada teaches that the heat storage composition can be used as a wall material, and a heat insulating sheet (claims 12-13, [0080]), which reads on the claimed heat storage material being in the form of sheet.
Sakurada teaches that a heat storage film is formed by a heat storage composition (claims 12-13, [0073]).
Sakurada does not teach an adhesive layer.
However, Amano teaches that heat storage material composition is mixed and cured to form a heat storage body in the form of a film/sheet (claims 7-8), the heat storage body is laminated on a laminate material with an adhesive (i.e. an adhesive tape) ([0063], [0133], claim 8), which reads on the claimed adhesive layer provided on one surface of the heat storage layer. The adhesive tape as taught by Amano reads on the claimed adhesive layer.
Amano teaches that the laminate material can be a structure base material of a building, or a heating element ([0063], claim 12). Amano also teaches that the heat storage body can be used as a wall material, and a heat insulation sheet ([0057]).
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 laminate the heat storage film which can be used as a wall material as taught by Sakurada on a laminate material (e.g. wall) with an adhesive tape as taught by Amano, in order to adhere the heat storage film to a wall with a reasonable expectation of success. 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 02/25/2026 have been fully considered but they are not persuasive.
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 new references, Sakurada (JP 2008163286 A) and Ikuno (JP 2008239860 A), in addition to the previous references, Nakatsuji (WO 2009/128476 A1), Goto (JP 2005042040 A), and Amano (JP 2008063547 A), under a new ground(s) of rejection which renders obvious the instant claims.
As stated above, claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Sakurada (JP 2008163286 A) in view of Nakatsuji (WO 2009/128476 A1) and Ikuno (JP 2008239860 A).
2. Applicant argues that as shown by the declaration under 37 CFR 1.132 submitted previously on 06/18/2025, when the weight average molecular weight of the compound represented by Formula (1) was 1,000, a heat storage capacity of 0 J/cm3 was obtained, indicating a poor heat storage capacity; contrastingly, when the weight average molecular weight of the compound represented by Formula (1) was between 2,000 or more and 8,000 or less, a better heat storage capacity could be obtained; the claimed range of weight average molecular weight has criticality in term of heat storage capacity (p. 9). Applicant considers it as an unexpected result (p. 10, 2nd para).
In response, Applicant’s argument is not persuasive.
Firstly, the claims are not commensurate in scope with the comparative showing in Table A of the declaration filed 06/18/2025, because the examples in Table A are limited to a composition consisting of a polyethylene glycol diacrylate having a weight average molecular weight of 2000 (4000, 6000, or 8000) in an amount of 100 parts by mass, a polyethylene glycol having a weight average molecular weight of 1300 in an amount of 400 parts by mass, and a lauroyl peroxide in an amount of 0.1 parts by mass, whereas claim 1 broadly includes a curable composition comprising any polyoxyalkylene diacrylate/dimethacrylate having a weight average molecular weight of 2,000-8,000 in an amount of 100 parts by mass, any polyalkylene glycol having a weight average molecular weight of 1,000-1,800 in an amount of 300-500 parts by mass, and any organic peroxide in an amount of 0.05-1 parts by mass. See In re Clemens, 206 USPQ 289 (CCPA 1980).
Secondly, 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 unexpected results of a claimed range.
In the declaration filed 06/18/2025, Applicant only uses compound (A-5) a polyethylene glycol diacrylate having a weight average molecular weight of 1,000 as a comparative example (p. 2, Table A of the declaration). However, claim 1 requires a polyoxyalkylene diacrylate/dimethacrylate having a weight average molecular weight of 2,000-8,000. There would be approximately 20 more oxyethylene units between a polyoxyalkylene diacrylate/dimethacrylate having a molecular weight of 1,000 and the one having a molecular weight of 2,000. Applicant should compare a sufficient number of tests in the molecular weight range between “1000-2000”, and the molecular weight range above 8000 to show unexpected result.
Thirdly, Applicant indicated that when the weight average molecular weight of the compound represented by Formula (1) was 1,000, a heat storage capacity of 0 J/cm3 was obtained (Table A of the declaration). The instant invention discloses that the heat storage capacity was tested by using a differential scanning calorimeter, and the heat storage capacity was the area of an obtained plot (instant US Pub. [0144]). Thus, Applicant is suggested to include the test plot/graph to show that the heat storage capacity is actually 0 J/cm3.
Conclusion
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/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
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