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 amendment/remarks filed 06/04/2026.
Claims 1-9 are currently pending, of which claims 8 and 9 are withdrawn.
Response to Amendment
The present claim amendment removes preferential/exemplary-type language of phrases beginning with “in particular” in claims 5-7, which overcome 112(b) issues of record. Claims 1-4 remain unchanged from their original scope.
The rejection of claims 5-7 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the above amendment.
The rejection of claims 1-3 and 5-7 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 previously set forth in the Non-Final Office action mailed 02/04/2026 is maintained for the reasons of record. For purposes of brevity, the rationale is not reiterated in this correspondence as it remains exactly the same. See the rationale at pages 6-8 of Non-Final Office action mailed 02/04/2026.
The rejection of claims 1-7 under 35 U.S.C. 103 as being unpatentable over GB 2587070 A as previously set forth in the Non-Final Office action mailed 02/04/2026 is maintained for the reasons of record. For purposes of brevity, the rationale is not reiterated in this correspondence as it remains exactly the same. See the rationale at pages 9-11 of Non-Final Office action mailed 02/04/2026.
The rejections of claims 1-3, 6, and 7 under 35 U.S.C. 102(a)(1) and 35 U.S.C 103 as being anticipated by or obvious over GB 2600445 A and claims 4 and 5 under 35 U.S.C. 35 U.S.C 103 as being unpatentable over the same GB 2600445 A as previously set forth in the Non-Final Office action mailed 02/04/2026 are maintained for the reasons of record. For purposes of brevity, the rationale is not reiterated in this correspondence as it all remains exactly the same. See the rationale at pages 11-14 of Non-Final Office action mailed 02/04/2026.
Claim Interpretation
The following is reiterated from pages 4 to 5 of the Non-Final Office action mailed 02/04/2026 and remain in effect:
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.
Response to Arguments
Applicant's arguments filed 06/04/2026 have been fully considered but they are not persuasive.
Regarding the 102 rejection over 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) Applicant argues the purpose of Onoe is fundamentally different than the claimed invention because the claimed invention is directed to a latent heat storage material intentionally formulated to freeze and melt reproducibility with limited supercooling with useful latent heat storage capability at ultra-cold temperatures whereas Onoe is directed to an absorbent system and measures crystallization behavior associated with absorbent solutions used in refrigeration systems. Applicant elaborates nothing in the reference describes a phase change material, a latent heat storage material, a thermal energy storage medium, or a material intended to absorb and release thermal energy through a melt/freeze cycle. Applicant further elaborates the reference does not identify the cited lithium hydroxide or sodium nitrate components as nucleating agents but rather merely as salts and there is no disclosure in the reference that they reduce supercooling, initiate crystallization, or provide functions attributed to nucleating agents.
In response, this argument is not persuasive because Applicant is arguing intended use/purpose limitations of the claimed composition and/or its components whereas the reference specifically teaches and meets compositions comprising, even consisting of, a lithium salt, a solvent, and an additional salt component meeting/within the component termed as a nucleating agent. As stated in the Claim Interpretation section(s) of record, intended use/purpose limitations have been 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.
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 (i.e., solvent), lithium bromide (i.e., lithium salt), and that particular salt species. The cited 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. Contrary to the arguments, there is no requirement Onoe must identify their lithium hydroxide or sodium nitrate as nucleating agents to anticipate the claims. The reference teaches anticipatory species and amounts of the claimed component termed and/or intended for use as a nucleating agent and thus meets that claimed.
While it is noted Applicant further argues Onoe does not disclose the melting temperatures required by claim 5 or the relationship between crystallization temperature and melting temperature required by claim 6, the reference teaches/anticipates compositions of 1) H2O/LiBr/LiOH having relative wt.% of about 40/55/5 and 2) H2O/LiBr/NaNO3 having relative wt.% of 35/49/16 (Id.), which are the same components as that claimed such that the limitations of claims 5 and 6 are 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. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding the 103 rejection over GB 2587070 A Applicant argues the reference broadly discloses numerous possible nucleating that do not render the instantly claimed selection obvious. Applicant elaborates instant claim 1 requires the nucleating agent be selected from one or more of sodium carbonate, lithium carbonate, potassium carbonate, barium fluoride, sodium nitrate, and lithium hydroxide and that the reference does not disclose these compounds as preferred nucleating agents, distinguish them from the other disclosed nucleating agents, and does not provide any teaching to direct one to select the presently claimed compounds from those disclosed in the reference.
In response, this argument is not persuasive because the cited teachings of the reference indeed encompass and render obvious barium fluoride as a nucleating agent. GB 2587070 A 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.
Applicant’s argument is akin to arguing the claims are nonobvious over the reference merely because the reference is not anticipatory. Also, there is no requirement the reference must teach the claimed nucleating agent species as preferred to meet the claimed invention under a prima facie case of obviousness. Rather, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
In response to Applicant's additional argument that the examiner's conclusion of obviousness over GB 2587070 A is based upon improper hindsight reasoning and using Applicant’s disclosure as a roadmap for selecting particular elements from numerous possibilities disclosed in the prior art, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
As cited in the rejection of record, GB 2587070 A discloses a phase change material comprising an aqueous solution of lithium chloride and a nucleating agent. The nucleating agent includes inorganic Group 1 salts and inorganic Group II salts that are also inorganic halide salts (i.e., alkali metal halide salts and alkali earth metal halide salts having alkali metals or alkaline earth metals as cations and halides as anions). The reference expressly and undisputably requires a solvent (water via the “aqueous” portion of the composition) and a lithium salt (lithium chloride), and, as-is shown for the reasons of record, the reference’s nucleating agent encompasses the barium fluoride species instantly claimed. The Office does not understand how citing teachings of the reference requiring a solvent and lithium salt identical to those claimed (water and lithium chloride) and further disclosing a nucleating agent encompassing the claimed nucleating agent species via the disclosed cation/anion pairs of the inorganic salts constitutes impermissible hindsight.
In response to applicant's argument that GB 2587070 A does not teach or suggest the claimed nucleating agents would possess the particular melting and crystallization characteristics recited in the dependent claims, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In any event and as cited in the rejection of record, GB 2587070 A 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.
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.
Regarding the 102/103 rejection over GB 2600445 A Applicant argues the reference does not expressly disclose a composition containing the specific combination of components required by claim 1 within the meaning of anticipation. Applicant’s position is the reference does not specifically describe the presently claimed compositions as a distinct embodiment and the rejection is based upon selecting particular compounds from among numerous disclosed alternatives.
In response, this argument is not persuasive because the reference teaches a phase change material composition comprising aqueous solution of lithium bromide (abstract), which reads on a latent heat storage material expressly and certainly 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. To clarify, a person of ordinary skill in the art would at once envisage a composition within the scope of the claim(s) from the cited teachings of the reference. Every embodiment of the reference expressly and undisputably requires a solvent (water via the “aqueous” portion of the composition) and a lithium salt (lithium bromide) per the abstract, and the short list of fifteen (15) nucleating agents cited at p.8 lines 15-20 includes one of the species claimed. Contrary to Applicant’s arguments, the cited genus of nucleating agent species is not as broad as alleged. All the claimed limitations are present in a single embodiment because 1) every embodiment of the reference requires a phase change material comprising lithium salt and a solvent and 2) the cited teachings encompass fifteen (15) nucleating agents. Thus, the cited teachings of the reference encompass fifteen (15) phase change material compositions comprising a lithium salt (lithium bromide), a solvent (water), and one of the fifteen (15) nucleating agent species.
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) (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.). A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)). One (1) claimed compound in a group/genus of twenty (20) has been held as anticipatory. In re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962).
Regarding Applicant’s further argument that the reference does not expressly disclose the compositions comprising lithium hydroxide necessarily exhibit the crystallization-temperature and melting-temperature relationship recited in claim 6 nor the concentration limitations recited in claim 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.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In any event, claims 1-3, 6, and 7 were also rejected as obvious over the teachings of GB 2600445 A. Applicant’s arguments to the rejection of claims 1-3, 6, and 7 only pertain to anticipation and did not dispute/challenge the obviousness portion of the rejection. Thus, the obviousness portion of the rejection of record over GB 2600445 A is maintained.
Regarding the 103 rejection of claims 4 and 5 over GB 2600445 A Applicant argues claims 4 and 5 depend on claim 1 and include all the limitations of claim 1 which are not met by the reference for the reasons of record in section IV of the remarks.
In response, this argument is not persuasive for the reason of record that the reference sufficiently anticipates and/or renders obvious claims 1-3, 6, and 7 (Id.).
Applicant also argues GB 2600445 A fails as a prior art reference in a 103 rejection of claims 4 and 5 for the same reasons as in section III of the remarks.
In response, this argument is not persuasive because section III does not pertain to the instant reference, GB 2600445 A, but rather a distinct reference, GB 2587070 A. The facts, teachings, and rationale in the references/rejections are distinct and it is unclear what from section III to arguing the separate 103 rejection over GB 2587070 A pertains to the instant 103 rejection over GB 2600445 A.
Applicant’s arguments to the 103 rejection of claims 4 and 5 over GB 2600445 A fail to provide evidence specifically pointing out how the language of the claims are patentably distinguished from the relied upon prior art reference. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of 37 C.F.R. 1.111. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. See also MPEP 714.02 and 37 C.F.R. 1.111.
Arguendo, in the event the limitations of claim 1 are somehow not anticipated by GB 2600445 A, the reference renders the claim obvious under a prima facie case of obviousness. GB 2600445 A 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 claim 4, GB 2600445 A 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, GB 2600445 A 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.
Accordingly, the rejections are maintained for the reasons of record.
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.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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./
July 28, 2026
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