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 .
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed 12 March 2023. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see the attached USPTO Form.
Election/Restrictions
Applicant's election of Group I (claims 1-7) without traverse in the reply filed on 02 December 2025 is acknowledged.
Claims 8-10 are withdrawn from consideration from further consideration pursuant to 37 CFR 1.142(b), as being withdrawn to a non-elected invention, and non-elected species of the invention, there being no allowable generic or linking claims.
Claims 1-7 are under examination and the requirement for restriction is made final.
Claim Rejections - 35 USC § 102
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.
Claims 1-3, 5 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Choo et al (“Surface: Small Strain Stiffness and Contact Mode of Iron Oxide-Coated Sands”.
With regard to claim 1, Choo et al. teaches iron oxide particles coating, such as hematite, that are chemically sorbed onto uncemented silica sand (Abstract).
With regard to claim 2, Choo et al. teaches uncemented silica sand (Abstract).
With regard to claim 3, Choo et al. teaches iron oxide such as hematite (Abstract).
With regard to claim 5, Choo et al. teaches the desired size ranging from 0.11 to 0.72 mm (Abstract). 0.11 mm to 0.72 mm corresponds to 110μm to 720μm.
With regard to claim 7, it is noted that the claim body recites “used for heat transfer or storage media in concentrating solar power systems”. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP 2111.02
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 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over “Surface: Small Strain Stiffness and Contact Mode of Iron Oxide-Coated Sands” Choo et al, in view of "Review of solid particle materials for heat transfer fluid and thermal energy storage in solar thermal power plants" Calderon et al (already on record).
With regard to claim 4, The teachings of Choo et al are discussed above. Choo et al. fails to explicitly teach the claimed metal oxide parts by weight to the silica.
In the same field of endeavor, Calderon et al. teaches a thermal energy storage medium for concentrated solar power (Abstract) containing silica sand as a solid particle medium (3.2 TES Capacity). Calderon et al. further teaches silica sand as the first suggested for its natural abundance, inert material, fluidity, and good thermal energy storage capacity (3.2 TES Capacity). Calderon et al. further teaches the incorporation of sintered materials, such as aluminum oxide and magnesium oxide; that are easy to fluidize, have high specific heat capacity, and high density (3.3 HEX efficiency). Calderon et al. teaches an aluminum oxide at 6 parts by weight based on 100 parts by weight of the silica sand (Table 9). Calderon et al. further teaches the incorporation of hematite (Fe2O3) and ferrous oxide (FeO) as optional additives in alternative composition (Table 9).
With regard to the metal oxide weight ratio, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to utilize variations of metal oxide weight ratio in a thermal energy storage. The person having ordinary skill in the art would expect the ratio to improve density and heat capacity to the overall composition as taught by Calderon et al. to the base product of Choo.
With regard to claim 6, Choo et al. fails to teach the roundness and sphericity of the particles.
In the same field of endeavor, Calderon et al. teaches the desired roundness and sphericity of the particles to be a 0.9 (Table 1). Calderon et al. further teaches Table 1 suggests properties and functional parameters for solid particle material according to functional parts of the plant or to desirable behavior of the solids (3 Plant Components Interaction with Particle Media).
With regard to the roundness, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to measure the roundness and sphericity of the particles. The person having ordinary skill in the art would expect the accuracy of roundness and sphericity of the particles to improve properties for solid particle materials as taught by Calderon et al. to the base product of Choo.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-12 of copending Application No. 18/531541 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons listed below.
US Application No. 18/531541 claims a thermal transfer media for a concentrating solar system comprising: a core of silica sand and a coating containing iron oxide. The particle size of the thermal transfer media is 100μm to 1000μm. It is clear that all of the elements of the instant claims are to be found in US Application No. 18/531541. The difference between the instant claims and US Application No. 18/531541 lies in the fact the US Application No. 18/531541 has the inclusion of aluminum oxide to the thermal transfer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Aja A Walker whose telephone number is (571)272-0037. The examiner can normally be reached Monday - Friday 7-5.
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/A.A.W./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761