DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Examiner Request
The applicant is requested to provide line numbers to each claim in all future claim submissions to aide in examination and communication with the applicant about claim recitations. The applicant is thanked for aiding examination.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 5 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In regard to claim 5, the recitation, “the lubricant has a thermal conductivity lower than a thermal conductivity of the thermally conductive vias” is new matter as there is no support for the lubricant to have a lower thermal conductivity than the vias.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2, 4-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
In regard to claim(s) 1, 13, the recitation, “the first and second electric fields are complimentary” is indefinite as the specification never states what structure this requires.
For the purposes of present examination, in context of the recitation (see “such that when the first and second electric fields are applied, heat is transferred”), so long as heat can be transferred in some sequence with the application of the first and the second fields, then the system is considered to have sufficient structure to perform the recited function.
In regard to claim 4, the recitation, “proximate” is indefinite since it is not clear how close the objects must be to one another to be considered “proximate” in view of the specification. The term is a relative term of degree and the specification does not provide an indication of what does and does not constitute such a sufficient distance.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim limitation “first support structure” and “second support structure” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The application never identifies what structure qualifies for the support structure and does nothing but use the term. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For present examination, the recitation is interpreted as a layer of material that is in at least indirect mechanical contact with the first layer and the second layer.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4-10, 12-14 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Cheng (US 2015/0033762).
In regard to independent claim 1, Cheng teaches a system (see whole disclosure, including Fig. 6, 8, 9, 10) comprising:
a first layer (at least top row) of first electrocaloric capacitors (710), the first capacitors separated from each other by a first set of insulation regions (720, 740; para. 61); and
a second layer (at least bottom row) of second electrocaloric capacitors (730), the second capacitors separated by a second set of insulation regions (720, 740; para. 61); and
a support layer (para. 72, Fig. 9a, 10; 910, 920, 930 as outlined below) disposed between the first layer (top row) and the second layer (bottom row), the support layer (910, 920, 930) comprising thermally conductive vias (920), wherein the support layer (910, 920, 930) is a structural support layer that provides mechanical support (interpreted as a layer that is capable of having loads put thereon) for the first electrocaloric capacitors (710) and the second electrocaloric capacitors (730), and
a voltage source (see source of “applied electric field” - para. 4; also see para. - 11, 12, 13, 44 - “an electrical power supply”) configured to apply a first voltage thereby applying a first electric field (para. 12) to the first electrocaloric capacitors (710) and a second voltage thereby applying a second electric field to the second electrocaloric capacitors (730) (para. 12, 13, 44, 46 - see clearly the first and second EC rings have first and second electric fields applied to them; note that the provision of these two fields is not exclusion of other fields), and
wherein the first and second electric fields are complementary (interpreted as able to be provided in a desired sequence; para. 15, 52, 53) such that when the first and second electric fields are applied, heat is transferred (see, e.g., para 53, 52, 57), through the thermally conductive vias (920) from the first electrocaloric capacitors (710) to the second electrocaloric capacitors (730) or from the second electrocaloric capacitors (730) to the first electrocaloric capacitors (710).
In regard to independent claim 13, Cheng teaches a system (see whole disclosure, including Fig. 6, 8, 9, 10) comprising: a first layer (at least top row) of electrocaloric capacitors (710), the first capacitors separated from each other by a first set of insulation regions (720, 740; para. 61); and a second layer (at least bottom row) of electrocaloric capacitors (730), the second capacitors separated by a second set of insulation regions (720, 740; para. 61); and a support layer (para. 72, Fig. 9a, 10; 910, 920, 930 as outlined above) disposed between the first layer (top row) and the second layer (bottom row), the support layer (910, 920, 930 ) comprising thermally conductive vias (920) between vertically aligned pairs of the first and second electrocaloric capacitors (710, 730), the support layer (910, 920, 930) comprising a thermally insulating material (para. 61, 62) between vertically aligned ones of the first and second insulating regions (720, 740), wherein the support layer (910, 920, 930) is a structural support layer that provides mechanical support (interpreted as a layer that is capable of having loads put thereon) for the first electrocaloric capacitors (710) and the second electrocaloric capacitors (730), and a voltage source (see source of “applied electric field” - para. 4; also see para. - 11, 12, 13, 44 - “an electrical power supply”) configured to apply a first voltage thereby applying a first electric field (para. 12) to the first electrocaloric capacitors (710) and a second voltage thereby applying a second electric field to the second electrocaloric capacitors (730) (para. 12, 13, 44, 46 - see clearly the first and second EC rings have first and second electric fields applied to them; note that the provision of these two fields is not exclusion of other fields), wherein the first and second electric fields are complementary (interpreted as able to be provided in a desired sequence; para. 15, 52, 53) such that when the first and second electric fields are applied, heat is transferred (see, e.g., para 53, 52, 57), through the thermally conductive vias (920) from the first electrocaloric capacitors (710) to the second electrocaloric capacitors (730) or from the second electrocaloric capacitors (730) to the first electrocaloric capacitors (710).
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In regard to claim 2, Cheng teaches that the support layer (910, 920, 930) comprises a thermally insulating material (para. 71), the thermal insulating material (para. 71) maintaining a thermal conductance in a lateral direction (left and right in the layer) between adjacent capacitors of the first layer (at least top row) and between adjacent capacitors of the second layer (bottom row), wherein the thermal conductance in the lateral direction (left and right in the layer)is lower than a thermal conductance through the thermal conductive vias (920)(due to the insulating material as compared with the “very high thermal conductivity of Al” of the vias - para. 70)
In regard to claim 4, Cheng teaches that the structural support layer (910, 920, 930) comprises:
a first support structure (see figure below, hereafter first support structure) proximate (see is near) the first layer (top row);
a second support (see figure below, hereafter second support structure) structure proximate (see is near) the second layer (bottom row); and
a lubricant (para. 72) disposed between the first support structure (first support structure) and the second support structure (second support structure), and wherein the thermally conductive vias (920) comprises first vias (920 upper) and second vias (920 lower) through the respective support structures (first support structure and second support structure).
In regard to claim 6, Cheng teaches that the support layer (910, 920, 930) has a relatively low thermal conductivity in a lateral direction (due to insulation portions), wherein the thermal vias (920) comprise a relatively high thermal conductivity in a vertical direction (due to the vias 920) resulting in thermal conductance between the first (710) and second (730) electrocaloric capacitors when the first and second electrocaloric capacitors are aligned (para. 68, 62).
In regard to claim 7, Cheng teaches that the support layer (910, 920, 930) comprises a polymer (polymer para. 62), and wherein the thermally conductive vias (920) are filled with metal (para. 70).
In regard to claim 8, Cheng teaches that the first and second electrocaloric capacitors (710, 730) comprise multilayer chip capacitors (para. 77).
In regard to claim 9, Cheng teaches an actuator (800/ 810) configured to cause a relative shift between the first layer (top row) and the second layer (bottom row) to cause a change in alignment between the first and second electrocaloric capacitors (para. 49).
In regard to claim 10, Cheng teaches that the actuator (800, 810) causes the relative shift intermittently or continuously (fully capable thereof) in correspondence with the heat transfer between the first and second electrocaloric capacitors (para. 39, 44).
In regard to claim 12, Cheng teaches that the relative shift comprises moving one or both of the first and second layers according to a rotational motion (para. 49).
In regard to claim 14, Cheng teaches that the support layer (910, 920, 930) comprises a polymer (polymer para. 62), and wherein the thermally conductive vias (920) are filled with metal (para. 70).
Claim Rejections - 35 USC § 103
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim(s) 5, 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cheng (US 20150033762) in view of Schwartz (US 2018/0114659).
In regard to claim 5, Cheng teaches the lubricating layer (para. 72) but does not appear to explicitly teach that the lubricant layer has lower thermal conductivity than a thermal conductivity of the thermally conductive vias (920). However, Schwartz explicitly teaches a lubricant layer (para. 28, “layers of lubricant”) having lower thermal conductivity (para. 28 “lower than”) than a thermal conductivity of the high thermal conductivity materials (para. 27). Therefore it would have been obvious to those of ordinary skill in the art at the time the invention was made to modify Cheng with a lubricant layer that had a lower thermal conductivity than a thermal conductivity of the thermally conductive vias (920) for the purpose of providing a lubricant layer with a sufficient reduction in friction.
In regard to claim 11, Cheng teaches most of the claim limitations but does not explicitly teach that the relative shift comprises moving one or both of the first and second layers according to a linear motion. However, employing linear motion is old and well known as taught by Schwartz (para. 38) and also teaches that such is an obvious alternative to rotational motion (para. 45). Therefore it would have been obvious to a person of ordinary skill in the art to modify Cheng to move the first and second layers in linear reciprocal motion to obtain the desired relative motion in situations and geometries not suited for rotation and to provide a repeating motion that permits repetition of the heat pump cycle and as Schwartz explicitly suggests that linear reciprocating motion is an obvious alternative to rotational motion (para. 45, 38).
Claim 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cheng (US 20150033762) in view of Schwartz (US 2015/0362225).
Cheng teaches most of the claim limitations but does not explicitly teach that the relative shift comprises moving one or both of the first and second layers according to a linear motion. However, employing linear motion is old and well known as taught by Schwartz (para. 6, 28 - “linear reciprocal motion”). Further, it is well known that refrigeration is provided in a wide variety of geometrical scenarios. Further, Schwartz explicitly suggests that providing motion to electrocaloric units in a linear reciprocating manner is an obvious alternative to rotational motion (para. 28). Therefore it would have been obvious to a person of ordinary skill in the art to modify Cheng to move the first and second layers in linear reciprocal motion to obtain the desired relative motion in situations and geometries not suited for rotation and to provide a repeating motion that permits repetition of the heat pump cycle and as Schwartz explicitly suggests that linear reciprocating motion is an obvious alternative to rotational motion (para. 28).
Response to Arguments
Applicant's arguments filed 1/30/2026 have been fully considered but they are not persuasive.
Applicant's arguments (page 8) are an allegation that the recitation that the fields are “complementary” is not indefinite because one of ordinary skill in the art “would understand with reasonable certainty that the claimed complementary fields refer to the disclosed electrocaloric driving relationship (opposed temperature response/phase-coordinated field variation) that produces the claimed heat transfer through the vias.”
In response, the allegation is unpersuasive for failing to identify the structure that makes the recited function possible and merely arguing that the specification mentions the function. The rejection is not a new matter rejection that the applicant never disclosed the function but that it is unclear what structure is required to perform the function. For examination, it is appears that any voltage source that can provide a first voltage to the first electrocaloric capacitors and a second voltage to the second electrocaloric capacitors while permitting a sequence of heat exchange, the structure is sufficient structure to perform the function.
Applicant's arguments (page 9) are an allegation that the relative term proximate would be understood by those of ordinary skill in the art as being “sufficiently close to enable the recited vertical heat transfer through the vias”.
In response, the allegation is unpersuasive since claim 1 already requires that the layers have a heat exchange relationship and therefore alleging that the term merely requires what was already recited in claim 1. This does nothing but make the term redundant and indeterminate.
Applicant's arguments (page 9) are an allegation that since the specification teaches that the lubricating layer may be 1 µm to 100 µm thick, that this reinforces that proximate corresponds to a close, stacked configuration to facilitate thermal interaction.
In response, the allegation is unpersuasive since the recitations concerning proximate are not related to the lubricating layer and therefore the size of the lubricating layer does not inform the scope of the term.
Applicant's arguments (page 9) are an allegation that because the specification “provides non-limiting example thicknesses for intervening structures” that therefore the distance included by the term proximate would be somehow inferred.
In response, the allegation is unpersuasive because there are no intervening structures between the disclosed first support structure and the first layer and therefore the allegation is not logically consistent.
Applicant's arguments (page 12) are an allegation that “the pending claims recite tangible components in a stacked architecture, including first and second support structures” and an allegation that the “support structures” are “physical layers/substrates, not an indeterminate functional recitation” and further points to paragraphs 47-49 of the application and alleges that the recitations do not require a degree of support.
In response, the allegation is unpersuasive for several reasons. First and foremost, the applicant fails to even allege that the recitation does not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. As the recitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, the specification must describe and define the structure sufficient to perform the recited function of support. The application merely reuses the terminology “first support structure” and fails entirely to define what the recitation requires physically. Therefore the recitation indefinite for invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph but failing to be defined.
There is no description of what would make the structure capable of performing the function of “support” claimed. Therefore the rejection remains.
Applicant's arguments (page 13) are an allegation that Cheng does not teach the amended limitations. In response, the allegation is unpersuasive as outlined in detail above in the detailed rejection.
Conclusion
Applicant's amendment necessitated any of 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN F PETTITT whose telephone number is (571)272-0771. The examiner can normally be reached on M-F, 9-5p. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR): http://www.uspto.gov/interviewpractice. The examiner’s supervisor, Frantz Jules can be reached on 571-272-6681. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN F PETTITT, III/Primary Examiner, Art Unit 3763
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