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 .
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-13 are rejected under 35 U.S.C. 103(a)(1) as being obvious in view of Yutaka et al. (JP2008-239860) as evidenced by E1 (“Poly(ethylene glycol) diacrylate”, Chemical Book, 2025, p.1) and E2(“Polyethylene glycol monomethyl ether, M.W. 4000”, Avantor, 2025, p.1).
Regarding claims 1-2, 4, 6 and 8-12, Yutaka teaches that it is known to combine propylene glycol diacrylate with triethylene glycol monomethyl ether (see Heat Storage section) to form a cured heat storage medium (see abstract). Yutaka is silent as to the molecular weight of the PPGDA used. However, Yutaka seemingly implies that the reasons for choosing a given molecular weight for his compound revolves around the freezing point of the material, wherein Yutaka generally teaches freezing points between -15C to approximately 66C (i.e., the melting point of PEG20K) as suitable for his intended use. Reasonably one reading the teachings of Yutaka would also infer that molecular weight ranges for PPGDA that are suitable would be those in the range provided. A melting point/freezing point of PPGDA could not be obtained. However, E1 shows that the melting point of PEGDA(1K) would be expected to be 35-37C. Further, PPGDA and PEGDA are chemically similar with both molecules being end capped with acrylate functional groups and the interior chains consisting of C-C and C-O linkages. The structural difference between the two it the addition of a methyl side group to the monomer chain in the interior body of PPGDA that is not present in PEGDA wherein this largely unreactive side group would not be expected to change the melting temperature of PPGDA substantially both and would be expected to have similar properties for a given molecular weight such that they would be expected to have similar melting points. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to choose a molecular weight of PPGDA that would yield a suitable freezing point as shown to be desirable by Yutaka wherein as shown above one of ordinary skill in the art would expect that a molecular weight of PPGDA being 1K or more as claimed to read on the range of Yutaka’s suitable freezing points. However, Yutaka generally teaches freezing points between -15C to approximately 66C (i.e., the melting point of PEG20K) as suitable for his intended use relating to the compounds cited in this same paragraph wherein Yutaka clearly shows that the molecular weights of these compounds provided may also be varied and still meet his requirements. Further Yutaka fails to teach the percentages of the current claims. However, it should be noted that the components of claim 1 (i.e., the components of formulas 1 and 2) are listed as compositions useable to for the same component in Yutaka and useable in combination. Claim 1 reads upon using half of one component and half of the other, likely the most obvious combination possible. However, because the components are listed as capable of being used as replacements for one another, reasonably any percentage combination of the components would be considered obvious in view of Yutaka except wherein a new and unexpected result is shown as arising from the particular percentage claimed by the applicant. MPEP 2144.05 clearly states, “The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Further as shown above, it is recognized that changes in the molecular weight of the components and components themselves would change the freezing point of the composition as a whole. Logically likewise, changes in the percentages of components would also reasonably have a similar effect of altering the freezing point of the composition. Therefore, in the absence of criticality of the specific component percentages of the current claims, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize both the components themselves as well as their relatives percentages in order to control the freezing point of the composition formed.
Regarding claim 3 the teachings of Yutaka are as shown above. Further as similarly shown in the rejection of claim 1 above, Yutaka teaches a list of glycols that may be used in his invention wherein one included is triethylene glycol monomethyl ether. TEGMME has a fixed molecular weight that does not read upon the claimed molecular weight range. It is noted that TEGMME is a low molecular weight polyethylene glycol monomethyl ether, wherein using the same guidance previously provided by Yutaka one of ordinary skill in the art would have considered it reasonable to choose higher molecular weight polyethylene glycol monomethyl ethers just as high molecular weight polyethylene glycols were chosen according to their freezing points. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the molecular weight of the polyethylene glycol monomethyl ether of Yutaka in order to control the freezing points of the compound chosen. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215. Further, as provided, E2 shows that for example PEG monomethyl ether (4K) has a melting point within the range described by Yutaka thereby further evidencing that those choosing higher molecular weight PEG monomethyl ethers as part of an optimization would have the ability to choose compounds that do read upon the claimed molecular weight range while also providing the desired melting point requirements of Yutaka.
Regarding claim 5, the PPGDA of Yutaka already reads upon the claimed composition wherein it is not claimed that the composition of formula 3 is necessarily different than the composition of any other formula.
Regarding claims 7 and 13, Yutaka teaches multiple products in which the medium may be used including air conditioners (see description).
Response to Arguments
Regarding the percentages of the components used to modify the current claims, the above provided rejection was further modified with case law and scientific reasoning as to why the claim language is obvious in view of the previously provided art.
Further, as relates to claim 5, the basis of the rejection of the claim was changed to exclude the previously provided secondary reference and as such the applicants’ arguments relating to that reference and its use are generally moot.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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/ANDREW J BOWMAN/Examiner, Art Unit 1717
Prosecution Insights