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 amendments/remarks filed 05/21/2026.
Claims 1-7, 10, 11, 13-15, 17, 20-22, and 24-27 are currently pending, of which claims 11, 13-15, 17, 20-22, and 24-25 are withdrawn.
Claims 1-7, 10, and 26-27 are currently under examination.
The rejection of claims 1-7 and 10 under 35 U.S.C. 103 as being unpatentable over Kompalik (US 2015/0001440 A1) in view of “Polyvinylpyrrolidone” (“Polymer Synthesis and Processing 1.4.11 Polyvinylpyrrolidone”, Kariduraganavar et al., Elsevier Inc., 2014), and Kelly (US 2016/0223269 A1), as evidenced by “Graphite Information” (“Graphite (C) - Classifications, Properties & Applications”, 2002) is withdrawn in view of the above amendments.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.
1. Claims 1-7, 26, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Lang (US 2008/0166555 A1, hereinafter Lang).
Regarding claims 1 and 6, the limitations “thermal management” and “for treating a fiber, textile, or foam” are intended use/result and do not add structural difference, thus the intended use/result is extended little patentable weight. See MPEP § 2112.02.
Lang teaches a coarse-particled microcapsule preparation comprising a microencapsulated latent heat accumulator material, a polymeric binder, and graphite (claims 21 and 33). Lang also teaches that the latent heat accumulator material has a phase transition ([0033]). Thus, the microencapsulated latent heat accumulator material of Lang reads on the claimed microencapsulated phase change material ("mPCM"). The polymeric binder of Lang reads on the claimed binder. The graphite of Lang reads on the claimed thermal conductivity additive ("TCA").
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 claimed property of having a thermal conductivity greater than 10 W/m·K will be present in the identical compound (i.e. graphite) as taught by Lang.
Lang teaches that the polymeric binder can be a film-forming polymer, and the film-forming polymer can be preferably a polymer of alkyl (meth)acrylates ([0091],[0103], [0106], claims 28 and 31), which reads on the claimed binder comprising acrylic.
Lang also teaches that the coarse-particled microcapsule preparation further comprises water to produce a coarse-particled form for granulation or extrusion ([0134], [0139], [0168], Example 1; claim 35), wherein the water is in an amount of 10-40% by weight based on the total mixture (i.e. the coarse-particled form) ([0139]), which overlaps with the claimed range of “at least 15 wt.% to about 89 wt.%”. The coarse-particled form of Lang reads on the claimed formulation, and reads on the claimed formulation being a dispersion of the mPCM and the TCA in the water.
Lang also teaches that the addition of the water into the coarse-particled microcapsule preparation can lead to complete mixing of the components, and make the material having good shapeability and good strength ([0139]).
Lang teaches that the coarse-particled microcapsule preparation comprises 2-20% by weight of graphite based on the total weight of the preparation (claim 33, [0027]).
Lang further teaches that the coarse-particled microcapsule preparation comprises at least 80% by weight of microcapsules (i.e. the microencapsulated latent heat accumulator materials) and polymeric binder, and 1-40% by weight of polymeric binder based on the total weight of the preparation ([0027], [0028], claim 23). Thus, the microencapsulated latent heat accumulator material of Lang can be in an amount of 40-97% by weight based on the total weight of the preparation.
Thus, a weight ratio of the microencapsulated latent heat accumulator material (the claimed mPCM) to the graphite (the claimed TCA) in Lang can be in a range of from 2:1 to 20:1, which overlaps with the claimed range of “from about 1.5:1 to about 14:1”.
Lang does not teach the claimed formulation at once under the meaning of anticipation.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claims 2 and 3, Lang teaches that the coarse-particled microcapsule preparation further comprises water to produce a coarse-particled form for granulation or extrusion ([0134], [0139], [0168], Example 1; claim 35), wherein the water is in an amount of 10-40% by weight based on the total mixture (i.e. the coarse-particled form) ([0139]). The coarse-particled form of Lang reads on the claimed formulation. Thus, the coarse-particled microcapsule preparation of Lang can be in an amount of 60-90% by weight in the coarse-particled form.
Lang also teaches that the coarse-particled microcapsule preparation comprises 2-20% by weight of graphite based on the total weight of the preparation (claim 33, [0027]). Thus, the graphite (the claimed TCA) in Lang can be in an amount of about 1.2-18% by weight in the coarse-particled form, which falls within the claimed range of “at least about 1 % w/w”.
Furthermore, as discussed in claim 1 above, the microencapsulated latent heat accumulator material of Lang can be in an amount of 40-97% by weight based on the total weight of the coarse-particled microcapsule preparation. Thus, the microencapsulated latent heat accumulator material (the claimed mPCM) in Lang can be in an amount of about 24-87% by weight in the coarse-particled form, which falls within the claimed range of “at least about 10 % w/w”.
Regarding claims 4 and 5, Lang teaches that the microencapsulated latent heat accumulator material comprises latent heat accumulator material, and the latent heat accumulator material is an aliphatic hydrocarbon compound such as octadecane (claim 25, [0035], [0166]).
Regarding claim 7, Lang teaches that the graphite can be expanded graphite ([0147]), and the expanded graphite can have a mean particle size in a range from 5 µm to 5 mm ([0153]), equaling to 0.005 mm to 5 mm, which overlaps with the claimed range of “from 0.001 mm to 0.010 mm”.
Regarding claims 26 and 27, Lang teaches that the polymeric binder can be a film-forming polymer (claim 28, [0091]), and the film-forming polymer can be preferably a polymer of alkyl (meth)acrylates ( [0103], [0106], claim 31), which reads on the claimed binder being acrylic, and the claimed binder being free of polyurethane.
2. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Lang (US 2008/0166555 A1, hereinafter Lang) as applied to claims 1-7, 26, and 27 above, and further in view of Kelly (US 2016/0223269 A1, hereinafter Kelly).
The disclosure of Lang is relied upon as set forth above.
Regarding claim 10, Lang teaches that the coarse-particled microcapsule preparation is used in building materials ([0001], claim 40), and the coarse-particled microcapsule preparation can comprise an additive ([0029]).
Lang does not teach a flame retardant.
However, Kelly teaches a thermal management film comprising a phase change material (PCM), and an additive ([0007], claim 13), wherein the PCM includes microencapsulated PCM (mPCM) ([0101]), and the additive includes a fire retardant ([0275], claim 18). Kelly teaches that the fire retardant is added to prevent combustion, and the fire retardant includes tri-o-cresyl phosphate ([0275]), which reads on the claimed organophosphate.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to make the coarse-particled microcapsule preparation as taught by Lang further comprising a flame retardant such as tri-o-cresyl phosphate as taught by Kelly, in order to improve the fire resistance property for the preparation for building materials 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 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 does not utilize Kompalik (US 2015/0001440 A1). Instead, the current rejection utilizes a new reference, Lang (US 2008/0166555 A1), in addition to the previous reference Kelly (US 2016/0223269 A1) 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 Lang (US 2008/0166555 A1).
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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