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 .
This action is responsive to Applicant’s response to election/restriction filed 12/29/2025.
Claims 1-9 are currently pending.
The Drawings filed 02/24/2023 are approved by the examiner.
The IDS statements filed 02/24/2023 and 08/09/2023 have been considered. Initialed copies accompany this action.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7, in the reply filed on 12/29/2025 is acknowledged. Claims 8 and 9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Germany on 02/24/2022. It is noted, however, that applicant has not filed a certified copy of the DE 102022104371.1 application as required by 37 CFR 1.55.
For purposes of applying prior art, the effective filing date of the claimed invention has been determined to be 02/24/2023 (the filing date of the present US nonprovisional application) due to the lack of the certified copy of the foreign priority application.
Claim Rejections - 35 USC § 112
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.
Claim 5-7 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 claims 5, 6, and 7, the phrases “in particular” render each claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Also and/or alternatively, claims 5, 6, and 7 recite the broad recitations of a melting temperature of -85°C to -60°C, a difference of melting temperature from crystallization temperature of -15 K to 0 K, and a nucleating agent concentration of 0.01-30 wt.%, respectively, but then also recite narrower statements of a melting temperature of -75°C to -60°C, a difference of melting temperature from crystallization temperature of -10 K to 0 K, and a nucleating agent concentration of 0.5-5 wt.%, respectively, which are narrower statements of the ranges/limitations. Each claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
For purposes of further examination, prior art meeting the broader range(s) will read on the claim(s).
Appropriate correction/clarification is required.
Claim Interpretation
For purposes of claim interpretation, note that the preamble recitations that the material is a “latent heat storage” material and the material is “for ultra-cold applications” are intended use/purpose that are extended little patentable weight. The body of the claim fully and intrinsically sets forth all of the limitations of the claimed invention a composition comprising a lithium salt, solvent, and one of the recited nucleating agent species). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation").
In any event, a prior art structure which is capable of performing the intended use/purpose as recited in the preamble (i.e., a composition comprising a lithium salt, solvent, and one of the recited nucleating agent species) meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (anticipation rejection affirmed based on Board’s factual finding that the reference dispenser (a spout disclosed as useful for purposes such as dispensing oil from an oil can) would be capable of dispensing popcorn in the manner set forth in appellant’s claim 1 (a dispensing top for dispensing popcorn in a specified manner)) and cases cited therein.
Claim Rejections - 35 USC § 102 & 103
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.
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 1-3 and 5-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Onoe et al. (“Measurements of crystallization temperature in the H2O-LiBr-Salt system”, IECEC-97 Proceedings of the Thirty-Second Intersociety Energy Conversion Engineering Conference (Cat. No.97CH6203), Honolulu, HI, USA, 1997, pp. 2302-2305, vol.4).
As claim 1, Onoe et al. teach three-component compositions comprising water, lithium bromide, and a salt (H2O/LiBr/salt, abstract). Per Fig. 6 on p.2305, the salt is expressly, among others, lithium hydroxide (LiOH) or sodium nitrate (NaNO3). Fig. 6 serves as a list of suitable exemplary salt species for the three-component composition. This means that each recitation of a salt species compound meets and corresponds to a composition comprising water, lithium bromide, and that particular salt species. The abstract and Fig. 6 of the reference teach and anticipate a composition comprising water (reading on a solvent), lithium bromide (reading on a lithium salt), and lithium hydroxide (reading on the claimed nucleating agent) as well as a distinct composition comprising water (reading on a solvent), lithium bromide (reading on a lithium salt), and sodium nitrate (reading on the claimed nucleating agent).
When a species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (The claimed compound was named in a reference which also disclosed 45 other compounds. The Board held that the comprehensiveness of the listing did not negate the fact that the compound claimed was specifically taught. The Board compared the facts to the situation in which the compound was found in the Merck Index, saying that "the tenth edition of the Merck Index lists ten thousand compounds. In our view, each and every one of those compounds is ‘described’ as that term is used in [pre-AIA ] 35 U.S.C. 102(a), in that publication."). Id. at 1718. See also In re Sivaramakrishnan, 673 F.2d 1383, 213 USPQ 441 (CCPA 1982) (The claims were directed to polycarbonate containing cadmium laurate as an additive. The court upheld the Board’s finding that a reference specifically naming cadmium laurate as an additive amongst a list of many suitable salts in polycarbonate resin anticipated the claims. The applicant had argued that cadmium laurate was only disclosed as representative of the salts and was expected to have the same properties as the other salts listed while, as shown in the application, cadmium laurate had unexpected properties. The court held that it did not matter that the salt was not disclosed as being preferred, the reference still anticipated the claims and because the claim was anticipated, the unexpected properties were immaterial.).
As to claims 2 and 3, as described or at least implied above, the LiBr reads on the salt comprising lithium bromide and the water reads on the claimed solvent.
As to claims 5-7, note that the compositions amount to 1) H2O/LiBr/LiOH having molar fractions of 0.722/0.208/0.070 and 2) H2O/LiBr/NaNO3 having molar fractions of 0.722/0.208/0.070 (abstract and Fig. 6, Id.). Converting the molar fractions to wt.% means the compositions are 1) H2O/LiBr/LiOH having relative wt.% of about 40/55/5 and 2) H2O/LiBr/NaNO3 having relative wt.% of 35/49/16. While the amount of LiBr is above that claimed in claim 4, the amount of LiOH and NaNO3 (each separately reading on claimed nucleating agent) are within those claimed in claim 7. The limitations of claim 5 pertaining to the concentrations and/or chemical identities of components are selected so that the melting temperature of the composition is between -85°C and -60°C are presumed inherent absent a showing to the contrary because the reference teaches compositions with the same components as that claimed. The limitations of claim 6 pertaining to the concentration and/or chemical identity of the nucleating agent is/are selected so that a difference of melting temperature from crystallization temperature is -15 K to 0 K presumed inherent absent a showing to the contrary because the reference teaches compositions with the same components, especially the same nucleating agent species within the concentration range, as that claimed. While it is noted the reference appears to refer to a crystallization temperature that might be higher than that required/implied by the instant claims, note that this is a crystallization of a precipitate/salt within the aqueous system (see the Apparatus section on p.2302-2303, especially the top of p.2303) completely distinct from the claimed crystallization that is an entire aggregate change between a liquid to solid state (e.g., [0007], [0011], etc. of spec.) that does not teach away from the that claimed. While the terminology is similar, they refer to entirely different properties that do not teach away from nor preclude one another.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over GB 2587070 A.
As to claim 1, the reference teaches a phase change material comprising an aqueous solution of lithium chloride (abstract), which reads on a latent heat storage material comprising a lithium salt (the lithium chloride) and a solvent (the water). The composition may further comprise a nucleating agent (abstract).
The reference fails to teach the nucleating agent is one of the species claimed under the meaning of anticipation.
However, the reference further teaches the nucleating agent is selected from an inorganic Group 1 salt, an inorganic Group 2 salt, and/or an inorganic ammonium salt (p.6 lines 12-28), further with, “The cationic species of the nucleating agent may be or comprise one or more of a lithium ion, a sodium ion, a potassium ion, a rubidium ion, a caesium ion, a beryllium ion, a magnesium ion, a calcium ion, a strontium ion, a barium ion, or ammonium ion. The nucleating agent may comprise an inorganic halide salt. For example, the anionic species of the nucleating agent may be one or more of a fluoride ion, a chloride ion, a bromide ion, or an iodide ion. In embodiments, the nucleating agent may be selected from one or more of an inorganic Group 1 halide salt, an inorganic Group 2 halide salt, and/or an ammonium halide.” (Id.). Clearly, the discussion of nucleating agent compositions encompass barium fluoride by selecting an inorganic Group 2 halide salt as the nucleating agent where the cation is a barium ion and the anion/halide is a fluoride ion. The reference further teaches the addition of the nucleating agent enables the composition of the invention to crystallize and melt cleanly at a temperature below -60°C, e.g. below -65°C, promote crystallization of aqueous solution and minimize supercooling, and ensure the composition freezes completely in a freezer at -85°C (p.5 line 33 to p.6 line 5).
Thus, at the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to provide/select barium fluoride as the nucleating agent in combination with the required lithium chloride and water components in order to for the composition to crystalize and melt cleanly, promote crystallization, and minimize supercooling with a reasonable expectation of success.
As to claims 2 and 3, the composition comprises lithium chloride and water (Id.).
As to claim 4, the composition comprises 30-40 wt.% lithium chloride (abstract).
As to claim 5, the reference teaches the addition of the nucleating agent enables the composition of the invention to crystallize and melt cleanly at a temperature below -60°C, e.g. below -65°C, promote crystallization of aqueous solution and minimize supercooling, and ensure the composition freezes completely in a freezer at -85°C (Id., e.g., p.5 line 33 to p.6 line 5), which appears to equate the a melting temperature being in the range of -60°C to -85°C as claimed and overlaps the limitation that the proportion and/or concentration of the lithium salt and/or solvent is selected such that the claimed melting point range is obtained. As the composition contains the lithium chloride, water, and the nucleating agent and the nucleating agent is adjusted as such, the remainder of the composition (the lithium chloride salt and solvent/water) is certainly adjusted as well.
As to claims 6 and 7, the reference further teaches the nucleating agent is present in an amount of less than 10 wt.% of the composition and teaches 0.01 wt.% as a suitable lower end point and 10.0 as a suitable upper end point (p.7 lines 12-18) which overlaps and/or falls within the claimed nucleating agent concentration range.
The remaining limitations that the proportion and/or the composition of the nucleating agent is selected such that the difference between the crystallization temperature of the composition and the melting point of the composition is between -15 K and 0 K would flow naturally from the cited teachings of the reference because the reference teaches selection/formulation of the same composition comprising the same species of nucleating agent in a concentration overlapping and/or within that claimed. Alternatively, again note the reference’s disclosure that the addition of the nucleating agent enables the composition of the invention to crystallize and melt cleanly at a temperature below -60°C, e.g. below -65°C, promote crystallization of aqueous solution and minimize supercooling, and ensure the composition freezes completely in a freezer at -85°C (Id., e.g., p.5 line 33 to p.6 line 5) as well as the additional teaching that the nucleating agent promotes and initiates crystallization when the composition is at or below the freezing temperature of the composition (p.6 lines 6-10), which has the implication there is little difference, if any, between the melting temperature (temperature at which the composition transitions from solid to liquid) and the crystallization temperature (temperature at which the composition transitions from liquid to solid), as claimed.
Claims 1-3, 6, and 7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over GB 2600445 A.
As to claim 1, the reference teaches a phase change material composition comprising aqueous solution of lithium bromide (abstract), which reads on a latent heat storage material comprising a lithium salt and a solvent. The composition may further comprise a nucleating agent (abstract), and the nucleating agent may be selected from, among other named species compounds, lithium hydroxide (page 8 lines 16-20); this selection of a nucleating agent means that each recitation of a nucleating agent species compound meets and corresponds to a composition comprising water, lithium bromide, and that particular salt species. The cited teachings of the reference teach and anticipate an aqueous composition comprising lithium bromide, water, and lithium hydroxide.
When a species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) and In re Sivaramakrishnan, 673 F.2d 1383, 213 USPQ 441 (CCPA 1982).
In the event the claim limitations are somehow not anticipated by the reference, the reference renders the claim obvious under a prima facie case of obviousness. The reference requires the composition comprise at least lithium bromide and water, which reads on the lithium salt and solvent components. Regarding the claimed nucleating agent species, at the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to provide/select lithium hydroxide in combination with the required lithium bromide and water components in order to for the composition to crystalize and melt cleanly, promote crystallization, and minimize supercooling (see, e.g., page 7 line 6+) with a reasonable expectation of success.
As to claims 2 and 3, the composition comprises lithium bromide and water (Id.). Note that the composition may further comprise lithium chloride (abstract).
As to claims 6 and 7, the reference further teaches the nucleating agent is present in an amount of less than 10 wt.% of the composition and teaches 0.01 wt.% as a suitable lower end point and 10.0 as a suitable upper end point (p.8 lines 22-29) which meets the claimed nucleating agent concentration range under an anticipation and/or obvious rationale. The nucleating agent is either intrinsically present at an amount within the claimed range (0.01-10 wt.% is within the claimed range) under an anticipation rationale or in an amount overlapping that claimed (less than 10 wt.% overlaps the claimed range) and/or requiring provision/selection (Id.) under an obvious rationale.
The remaining limitations that the proportion and/or the composition of the nucleating agent is selected such that the difference between the crystallization temperature of the composition and the melting point of the composition is between -15 K and 0 K is presumed inherent from the cited teachings of the reference because the reference teaches an anticipatory concentration of the same species of nucleating agent. Alternatively, the claimed limitations would flow naturally from the cited teachings of the reference because the reference teaches selection/formulation of the same composition comprising the same species of nucleating agent in a concentration overlapping and/or within that claimed.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over GB 2600445 A.
The disclosure of GB 2600445 A is relied upon as set forth above.
As to claim 4, the reference teaches the lithium bromide is present in an amount of less than 55 wt.% including less than 38 wt.% as a subset thereof (p.6 lines 21-25), which overlap (rather than fall within/anticipate) the claimed ranges.
As to claim 5, the reference teaches the composition freezes at more than -86°C and melts at less than -40°C (abstract) and advantageously, i.e., preferably, melts consistently and reproducibly at a temperature between -48°C and -75°C depending on the [content of the] composition (p.11 lines 9-13), which overlaps (rather than fall within/anticipate) the claimed melting point range and limitation that the proportion and/or concentration of the lithium salt and/or solvent is selected such that the claimed melting point range is obtained.
Prior Art Cited But Not Applied
The following prior art is made of record and not relied upon but is considered pertinent to Applicant's disclosure:
Yasue et al. (JP 2013-224343 A) teach two-component heat storage material for solar heat storage at a temperature range of 250-400 comprising a combination of, among others, LiNO3 & LiOH and LiBr & LiOH (abstract). While the disclosed compositions may expressly comprise a lithium salt (LiNO3 or LiBr) in combination with a compound equivalent to the claimed nucleating agent (LiOH), Yasue et al. fail to teach or suggest the additional presence of at least one solvent as claimed. Yasue et al.'s compositions are drawn to two component salt systems, i.e., two salt compounds with nothing else. Yasue et al. further teach and discuss these compositions are useful as molten salt compositions and have a high melting point. The LiBr-LiOH system is even disclosed as eutectic. Other systems appear eutectic, too. See the Figures. Molten salt compositions are free of solvents and a person of ordinary skill in the art would have no reason or motivation to add one with any reasonable expectation of success. Furthermore, a person of ordinary skill in the art would have no reason or motivation to add a solvent as it would more likely than not lower the melting point of the composition below the range required by the reference and/or possibly even destroy the beneficial eutectic properties of the composition.
The remaining references listed on Forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or discussed above.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
January 23, 2026