DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/02/2026 has been entered.
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 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 of this title, 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.
Claims 1, 11, 13-14 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (Translation of CN201908298U) in view of Kawano (US PG Pub. 2015/0007960A1), hereinafter referred to as Wang and Kawano, respectively.
Regarding Claim 1, Wang discloses a system for heating and cooling a building (9), comprising:
a caisson (1) extending into a borehole (shown in figure 2),
said caisson (1) forming part of a foundation of said building (shown in figure 2, wherein the concrete pile body (1) supports the foundation of the building (9));
a heat exchange loop (5, shown in figure 1) within said caisson and interconnected with air conditioner (8) for providing air conditioning to said building (9) by heat exchange with ground surrounding the caisson (shown in figures 1-2). Wang fails to explicitly disclose the building heat exchanger is a heat pump.
Kawano, also drawn to a buried thermal energy storage for a building, teaches a caisson (10) is interconnected with a heat pump (24) for providing heating or cooling to said building (“The sources of heat/cool supplied to the apparatus may include, but are not limited to thermal outputs from water to air heat pumps in greenhouses, water to air heat pumps in buildings”, ¶145).
The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
Per MPEP 2143-I, a simple substitution of one known element for another, with a reasonable expectation of success supports a conclusion of obviousness. In the instant case, the simple substitution is related to substituting a heat pump with a heat exchanger; further the prior art to Kawano teaches a heat pump is known for being thermally connected to a caisson for providing air conditioning to a building. Therefore, since modifying the prior art to Wang with having the caisson being thermally connected to a heat pump, can easily be made without any change in the operation of the caisson; and in view of the teachings of the prior art to Kawano there will be reasonable expectations of success, it would have been obvious to have modified the invention of Wang by having a heat pump being connected to the caisson for allowing energy efficient heating and cooling year round.
Regarding Claim 11, Wang further discloses said foundation member caisson comprises poured concrete (“a concrete pile body and a steel pipe poured in the pile body”, see abstract).
Regarding Claim 13, Wang further discloses a plurality of said caissons (1) forming part of said foundation of said building (shown in figure 2) each having a heat exchange loop (shown in figure 2), and a spacing between said caissons (shown in figure 2). Wang fails to disclose the spacing between said caissons is at least 2 metres. Wang does, however disclose a spacing between said caissons, wherein the caissons are supporting a building (shown in figure 2). Therefore, the spacing of the caissons is recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In this case, the recognized result is that a larger spacing leads to less structural support for the building and less heat exchange capacity and vice versa. Therefore, since the general conditions of the claim, i.e. that the caissons are spaced apart, was disclosed in the prior art by Wang, it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention for the spacing between said caissons being at least 2 metres, in order to supply the required support and heat exchange capacity. See MPEP 2144.05 II.
Regarding Claim 14, Wang discloses a method of installing a ground-source heat exchange loop in thermal communication with a heat exchanger of a building (9), the method comprising:
boring a hole in ground (“the heat exchange pipe is integrally combined with the tubular pile, piling construction, heat exchange pipe is buried into the ground”) for receiving a caisson (1) of a foundation of the building (9);
placing a ground-source heat exchange loop (5, shown in figure 1) within said caisson (shown in figure 1).
Wang fails to explicitly disclose the building heat exchanger is a heat pump.
Kawano, also drawn to a buried thermal energy storage for a building, teaches a caisson (10) is interconnected with a heat pump (24) for providing heating or cooling to said building (“The sources of heat/cool supplied to the apparatus may include, but are not limited to thermal outputs from water to air heat pumps in greenhouses, water to air heat pumps in buildings”, ¶145).
The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
Per MPEP 2143-I, a simple substitution of one known element for another, with a reasonable expectation of success supports a conclusion of obviousness. In the instant case, the simple substitution is related to substituting a heat pump with a heat exchanger; further the prior art to Kawano teaches a heat pump is known for being thermally connected to a caisson for providing air conditioning to a building. Therefore, since modifying the prior art to Wang with having the caisson being thermally connected to a heat pump, can easily be made without any change in the operation of the caisson; and in view of the teachings of the prior art to Kawano there will be reasonable expectations of success, it would have been obvious to have modified the invention of Wang by having a heat pump being connected to the caisson for allowing energy efficient heating and cooling year round.
Regarding Claim 21, Wang further discloses pouring concrete (“a concrete pile body“) into said caisson (shown in figure 1, wherein concrete is poured to form the pile body (1)).
Claims 2-7, 10, 15-17 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (Translation of CN201908298U) in view of Kawano (US PG Pub. 2015/0007960A1) as applied in Claims 1, 11, 13-14 and 21 above and in further view of Cui et al. (Translation of CN109163478A), hereinafter referred to as Cui.
Regarding Claim 2, Wang fails to disclose a phase change material within said caisson to absorb heat from or reject heat to fluid in said heat exchange loop.
Cui, also drawn to a buried thermal energy storage for a building (“the cooling or heat exchange through heat exchanger 15 conveying to the air conditioner circulation system of heating system 18 and/or coil 17, so as to adjust the effect of building indoor air temperature”), teaches a phase change material (10) within said caisson (6) to absorb heat from or reject heat to fluid in said heat exchange loop
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide Wang with a phase change material within said caisson to absorb heat from or reject heat to fluid in said heat exchange loop, as taught by Cui, the motivation being that the phase change material is “capable of absorbing more energy and stored therein, and ball 5 improves thermal conductivity of pile body, the phase change heat exchange energy pile is greatly improved”.
Regarding Claim 3, a modified Wang further teaches said phase change material (10, previously taught by Cui in the rejection of Claim 2) has a melting point corresponding to a simulated annual maximum ground temperature (see intended use analysis below).
Regarding limitations “a melting point corresponding to a simulated annual maximum ground temperature” recited in Claim 3, which are directed to an intended use of the system, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.” Further, a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim, as is the case here. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See MPEP 2114.
Regarding Claim 4, a modified Wang further teaches said phase change material (10, previously taught by Cui in the rejection of Claim 2) is contained in a space surrounding a pipe of said heat exchange loop (shown in figure 1 of Wang, wherein a modified Wang having the steel balls (5) of Cui, further teaches the steel balls being situated within the steel tube (2) of Wang that surrounds the heat exchange pipe (5)).
Regarding Claim 5, a modified Wang further teaches said phase change material (10, previously taught by Cui in the rejection of Claim 2) is contained in a pipe surrounding said pipe of said heat exchange loop (shown in figure 1 of Wang, wherein a modified Wang having the steel balls (5) of Cui, further teaches the steel balls being situated within the steel tube (2) of Wang that surrounds the heat exchange pipe (5)).
Regarding Claim 6, a modified Wang further teaches said phase change material (10, previously taught by Cui in the rejection of Claim 2) is contained in a pipe spaced apart from said heat exchange loop (shown in figure 1 of Wang, wherein a modified Wang having the steel balls (5) of Cui, further teaches the steel balls being situated within the steel pipe (2) of Wang that is spaced apart from the heat exchange pipe (5)).
Regarding Claim 7, a modified Wang further teaches phase change material (10, previously taught by Cui in the rejection of Claim 2) interposed between hot and cold legs of a heat exchange loop (shown in figure 2 of Cui, wherein the steel balls (5) of Cui are disposed between pipes (4) of the heat exchange cycle).
Regarding limitations “hot” and “cold” recited in Claim 7, which are directed to an intended use of the system, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.” Further, a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim, as is the case here. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See MPEP 2114.
Regarding Claim 10, although Wang discloses a caisson, Wang fails to disclose said caisson comprises a rebar cage, and wherein said heat exchange loop is positioned within said rebar cage.
Cui, also drawn to a buried thermal energy storage for a building (“the cooling or heat exchange through heat exchanger 15 conveying to the air conditioner circulation system of heating system 18 and/or coil 17, so as to adjust the effect of building indoor air temperature”), teaches said caisson (6) comprises a rebar cage (2, shown in figure 7, comprising a plurality of horizontal steel members being connected to a plurality of vertical members), and wherein said heat exchange loop is positioned within said rebar cage (shown in figure 7).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide the caisson of Wang with a rebar cage, and wherein said heat exchange loop is positioned within said rebar cage, as taught by Cui, the motivation being that steel reinforcement is old and well known for providing structural support of load bearing concrete, wherein the steel cage of Cui increases the load bearing capability and operational life of the support.
Regarding Claim 15, Wang fails to disclose placing a phase change material into said caisson.
Cui, also drawn to a buried thermal energy storage for a building (“the cooling or heat exchange through heat exchanger 15 conveying to the air conditioner circulation system of heating system 18 and/or coil 17, so as to adjust the effect of building indoor air temperature”), teaches a phase change material (10) within said caisson (6).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide the caisson of Wang with a phase change material within said caisson, as taught by Cui, the motivation being that the phase change material is “capable of absorbing more energy and stored therein, and ball 5 improves thermal conductivity of pile body, the phase change heat exchange energy pile is greatly improved”.
Regarding Claim 16, a modified Wang further teaches said phase change material (10, previously taught by Cui in the rejection of Claim 15) has a melting point corresponding to a temperature characteristic of said ground (“The formation temperature and upper building air conditioner circulation system energy demand, and to select by material thermal performance testing”, wherein the phase change material is selected based upon the requirements of the system and melts based upon the ground temperature).
Regarding Claim 17, a modified Wang further teaches selecting said melting point by simulating annual ground temperatures proximate said hole (“The shallow layer soil temperature condition and indoor air conditioning circulation system energy demand, by material thermal property test, selecting the proper phase-change material 10” and “phase change composite thermal material mechanics performance test, obtaining the phase change material 10 and the concrete 3 of the best matching ratio design, so as to improve the pile body 6 heat storage and pile soil heat exchange efficiency to the utmost extent, and ensure the mechanical property of the pile body 6 meets the design requirement”).
Regarding Claim 21, in addition to Wang, Cui teaches pouring concrete (“concrete is filled in the gap between the pile body and the reinforcing bar and the heat exchange pipe“, see abstract) into said caisson (shown in figure 1).
Claims 12 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (Translation of CN201908298U) in view of Kawano (US PG Pub. 2015/0007960A1) as applied in Claims 1, 11, 13-14 and 21 above and in further view of Grommes (Translation of DE202004014113U1), hereinafter referred to as Grommes.
Regarding Claim 12, although Wang discloses poured concrete, Wang fails to disclose said poured concrete comprises an additive to increase thermal conductivity.
Grommes, also drawn to a concrete energy pile, teaches poured concrete comprises an additive to increase thermal conductivity (“A concrete-sand mixture with additives can also be used to achieve volume stability and to increase thermal conductivity”).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide the concrete of Wang with an additive to increase thermal conductivity, as taught by Grommes, the motivation being that increasing thermal conductivity within the concrete allows for greater thermal extraction/delivery within the pile, thereby increasing the overall efficiency of the device.
Regarding Claim 22, although Wang discloses poured concrete, Wang fails to disclose said concrete comprises an additive to increase thermal conductivity.
Grommes, also drawn to a concrete energy pile, teaches poured concrete comprises an additive to increase thermal conductivity (“A concrete-sand mixture with additives can also be used to achieve volume stability and to increase thermal conductivity”).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide the concrete of Wang with an additive to increase thermal conductivity, as taught by Grommes, the motivation being that increasing thermal conductivity within the concrete allows for greater thermal extraction/delivery within the pile, thereby increasing the overall efficiency of the device.
Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (Translation of CN201908298U) in view of Kawano (US PG Pub. 2015/0007960A1) as applied in Claims 1, 11, 13-14 and 21 above in view of Cui et al. (Translation of CN109163478A) as applied in Claims 2-7, 10, 15-17 and 21 above and in further view of Lee (Translation of KR20180085650A), hereinafter referred to as Lee.
Regarding Claim 18, although a modified Wang teaches simulating annual ground temperatures (“The shallow layer soil temperature condition and indoor air conditioning circulation system energy demand, by material thermal property test, selecting the proper phase-change material 10” and “phase change composite thermal material mechanics performance test, obtaining the phase change material 10 and the concrete 3 of the best matching ratio design, so as to improve the pile body 6 heat storage and pile soil heat exchange efficiency to the utmost extent, and ensure the mechanical property of the pile body 6 meets the design requirement” of Cui), Wang fails to disclose defining a thermal numerical model of said ground source heat exchange loop.
Lee, also drawn to ground heat exchangers, teaches utilizing a thermal numerical model of said ground source heat exchange loop “the step of acquiring analysis data by calculating a performance value through numerical analysis of the set parameters comprises: Calculating the equation (1) in order to analyze the distribution of the ground temperature by the time according to the depth of the horizontal coil type geothermal heat exchanger, The average temperature of the ground, Z is the installation depth of the horizontal coil type underground heat exchanger, Is the thermal diffusivity of the soil, t is the time, Means the number of days of phase change at the surface of the earth”).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide Wang with defining a thermal numerical model of said ground source heat exchange loop, as taught by Lee, the motivation being that numerical models “may determine the performance of the horizontal coil-type geothermal heat exchanger” and numerical models are known to predict parameters that deliver “optimum performance”.
Regarding Claim 19, a modified Wang further teaches simulating annual ground temperatures comprises modelling annual ground temperatures proximate said hole in the absence of said phase change material (Lee states, “The setting unit 410 may set at least one of the ground temperature, the thermal conductivity, the density, and the specific heat including at least one of the building-heat pump, the installation depth, and the ambient temperature including at least one of the building load, the circulating water temperature”).
Regarding Claim 20, although a modified Wang teaches said phase change material is selected to have a melting point corresponding to a simulated ground temperature at the beginning of a heating season for said building, it would have been obvious to one of ordinary skill in the art to select a material that is compatible to the design parameters.
Inquiry
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/LEN TRAN/ Supervisory Patent Examiner, Art Unit 3763
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