DETAILED ACTION
Applicant’s reply, filed 16 June 2026 in response to the requirement for restriction mailed 23 April 2026, has been fully considered. As per Applicant’s election of Group I, claims 1-18 are pending under examination in the forms originally presented and claims 19-30 are withdrawn (see below).
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-18, in the reply filed on 16 June 2026 is acknowledged.
Claims 19-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected invention(s), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 16 June 2026.
Claim Rejections - 35 USC § 112(b)
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 6-9 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 6, it is not clear what is meant by “being different” (i.e. different composition, shape, concentration, selection of element(s), crystal structure, size etc.). This includes claim 9 as it depends from claim 6.
Regarding claim 7, it is not clear what is meant by “being different” (i.e. different composition, shape, concentration, selection of element(s), crystal structure, size etc.). This includes claim 8 as it depends from claim 7.
Regarding claim 8, it is unclear what is meant by “among the second phase” and it cannot be determined what “the third phase among the second phase” or “the fourth phase among the second phase” is intended to mean.
Regarding claim 11, it is not clear what is meant by “per one of the second phases” as claim 11 depends from claim 5 which recites “a second phase” and does not recite multiple second phases. There does not appear to be antecedent basis for multiple second phases.
Regarding claim 12, it is not clear what is meant by “per one of the second phases” as claim 12 depends from claim 5 which recites “a second phase” and does not recite multiple second phases. There does not appear to be antecedent basis for multiple second phases.
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 1-5, 10-12 and 14-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yanagitani et al. (EP 3495445 A1).
Regarding claims 1-4, Yanagitani teaches cold storage material particles comprising the combination of a rare earth oxysulfide ceramic (instant first element (claim 1); instant oxygen (claim 3)) having general formula R2O2S, where R is one ore more kinds of rare earth, and an Al2O3 (abstract). Yanagitani teaches the Al2O3 is present in the cold storage material in an amount of 3 to 12% by weight in terms of aluminum, and has a specific surface area of 0.3 to 11 m2/g ([0007])(instant second element (claim 1); instant aluminum (claim 2); instant oxygen (claim 3); instant two or more different elements (claim 4) of Al and O). Yanagitani further teaches the resulting material has a heat capacity of 0.3 J/cc·K or higher at temperatures of 10 K or lower ([0006]; [0015]).
Regarding claim 5, Yanagitani teaches the cold storage material as set forth in claim 1 above and further teaches the rare earth oxysulfide forms a main/first phase (instant first phase containing first element) and the Al2O3 forms a second phase ([0015]) (instant second phase containing second element different from the first; instant concentration of second element in second phase is larger than in the first phase).
Regarding claims 10-12, Yanagitani teaches the cold storage material as set forth in claim 5 above and further teaches the cold storage material is formed into ball-shaped grains via granulation methods ([0013]) having an average grain size of 0.05 to 1 mm ([0014]). Yanagitani further teaches the Al2O3 which forms the second phase is present in the material from 3 to 12% by weight in terms of aluminum and has a specific surface area of the Al2O3 is from 0.3 to 11 m2/g (see above; [0007]).
Regarding claims 14-16, Yanagitani teaches the cold storage materials as set forth in claim 1 above and further teaches that R is selected from La, Ce, Pr, Nd, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb, Lu and Y, where Gd2O2S is the preferred rare earth oxysulfide ([0007]; examples and tables) (instant Gd (claim 14); instant sulfur (claim 14); instant oxysulfide (claim 15); instant gadolinium oxysulfide (claim 16)).
Regarding claims 17-18, Yanagitani teaches the cold storage material as set forth in claim 1 above and further teaches the cold storage material is formed into ball-shaped grains via granulation methods ([0013]) having an average grain size of 0.05 to 1 mm ([0014]) (claim 17). Yanagitani exemplifies forming grains having an average grain size of 0.4 mm and an average aspect ratio of 1.1 ([0028])(claims 17-18).
Claims 1-2, 5 and 8-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sahashi et al. (EP 0217347 A1).
Regarding claims 1-2, Sahashi teaches magnetic refrigeration materials comprising a polycrystalline magnetic substance comprising a plurality of magnetic alloy fine particles including at least one kind of rare earth element R, at least two of Al, Ni, Co and Fe, and a metallic binder which compacts together the particles (abstract; col 3 ln 15-25).
Sahashi teaches the rare earth alloy powders are preferably RAl2-, RNi-2, and RCo2, where R is selected from Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Dy, Ho, Er, Tm and Yb (col 6 ln 33-45) (instant first element), and teaches the metal binder is selected from Au, Ag and Cu present at an abundance ratio of from 1 to 80 vol% (col 7 ln 50 to col 8 ln 18)(instant second element (claim 1); instant Cu or Fe (claim 2)).
Sahashi further teaches the substances obtained have a high magnetocaloric effect over a wide temperature range in the low temperature region below 77K (col 20 ln 40-52). Sahashi does not specifically teach the maximum value of volume specific heat at 20 K or lower of 0.3 J/cm3·K or more. However, Sahashi teaches the claimed material particles comprising the claimed first and second elements, present in the claimed amounts and it is noted that a chemical composition and its properties are generally held inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “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.”; MPEP 2112.01)).
Regarding claim 5, Sahashi teaches the materials as set forth in claim 1 above and further teaches the alloy powders are obtained separately, mixed together and then coated with the metal binder (col 7; examples 1-6 col 9-12). Sahashi teaches that the as a result each powder of the mixed powders is independently separated from the other(s) (col 7 ln 40-49). Sahashi teaches that two or more alloy powders may be utilized (col 7 l 27-38; example 2 col 10) (instant first phase containing first element; instant second phase containing second different element; instant concentration of the second element in the second phase is larger than in the first element (none)).
Regardig claims 10-12, Sahashi teaches the materials as set forth in claim 5 above and further teaches the thickness of the metal film is 0.1 to 1 micron for particle diameters of 2 to 30 micron (col 8 ln 31-35) (Fig2; see also Fig.15 multilayer embodiment of col 15).
Regarding claim 13, Sahashi teaches the materials as set forth in claim 1 above. Sahashi further teaches an example (Ex 2; see also Ex 1) of separately produced particles of alloy (A) 75% Dy + rem Al, of alloy (B) 75.6 wt% Er + rem Al, of alloy (C) 37.6 wt% Dy + 38.2 wt% Ho+ rem Al, and of alloy (D) 75.4 wt% Ho+ rem Al, each having particle diameters of about 30 micron, which are then mixed together into a particle (instant first region) and metal plated (i.e. Cu) (instant outer region; instant concentration of second element higher than the first region (none)).
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.
A) Claim 1-4, 15 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 19/320,836 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and copending application are directed to substantially similar cold storage material particles comprising substantially similar first and second elements, present in the claimed amounts and of substantially similar identity, and wherein the particles have substantially similar physical dimensions (size, aspect ratio, etc.) and properties (see MPEP 2112.01).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
B) Claim 1-4 and 14-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 19/320,798 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and copending application are directed to substantially similar cold storage material particles comprising substantially similar first and second elements, present in the claimed amounts and of substantially similar identity, and wherein the particles have substantially similar physical dimensions (size, aspect ratio, etc.) and properties (see MPEP 2112.01).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
C) Claim 1-4 and 14-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/784,577 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and copending application are directed to substantially similar cold storage material particles comprising substantially similar first and second elements, present in the claimed amounts and of substantially similar identity, and wherein the particles have substantially similar physical dimensions (size, aspect ratio, etc.) and properties (see MPEP 2112.01).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
D) Claim 1-4 and 14-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/584,152 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and copending application are directed to substantially similar cold storage material particles comprising substantially similar first and second elements, present in the claimed amounts and of substantially similar identity, and wherein the particles have substantially similar physical dimensions (size, aspect ratio, etc.) and properties (see MPEP 2112.01).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767
Prosecution Insights