DETAILED ACTION
Applicant’s reply, filed 24 February 2026 in response to the non-final Office action mailed 24 November 2025, has been fully considered. As per Applicant’s filed claim amendments claims 1-4 and 7-19 are pending, wherein: claims 1, 4 and 7-8 have been amended, claims 2-3 are as originally filed, claims 5-6 have been cancelled by this amendment and claims 9-19 are new, where claims 15-19 have been withdrawn via election by original presentation (see below).
Election/Restrictions
Newly submitted claims 15-19 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the newly submitted claims are directed to distinct products/inventions directed to electric powered vehicles while the originally claimed invention is directed to a mutually exclusive heat storage material composition that does not overlap in scope with an electric powered vehicle and is not an obvious variant thereof (MPEP 806.05, 806.05(j)).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 15-19 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 103
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.
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 1-4, 7 and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Xiao et al. (CN 106928906 A; using Clarivate Analytics machine translation for English language citations), as evidence by Katano (WO 2019221006 A1; using Clarivate Analytics machine translation for English language citations), in view of Katano (cited).
Regarding claim 1, Xiao teaches a phase changeable material comprising the combination of graphene oxide and a crystalline inorganic salt hydrate (abstract; pg1-2, bridging). Xiao further teaches the environmentally friendly product obtained from the combination of graphene oxide, CH3COONa 3H2O (sodium acetate trihydrate; instant salt hydrate), KCl, and sodium carboxymethyl cellulose (pg2; see also examples pg3-4). Xiao teaches the resultant product is uniform and stable, of low toxicity, and has reduced supercooling (pg2,bottom). Xiao also teaches both that the crystalline inorganic salt hydrate is present from 80-90 parts of the composition (instant “main component”) and that the crystalline inorganic salt hydrate is the primary inorganic phase change material (instant “main component”).
While Xiao does not specifically teach the KCl is present as a supercooling inhibitor that promotes solidification of the salt hydrate, one or ordinary skill in the relevant art would understand that KCl is such a supercooling inhibitor. Furthermore, the evidentiary reference of Katano states potassium chloride is a known supercooling preventative agent (also known as a nucleating agent i.e. a promoter of solidification) (pg7, bottom), for inorganic latent heat salt hydrates including sodium acetate trihydrate (pg5-6, bridging).
Xiao teaches the KCl component as noted above used in combination with the crystalline inorganic salt hydrate (i.e. sodium acetate trihydrate) but does not specifically teach sodium carbonate. However, Katano teaches similar inorganic latent heat storage material compositions (abstract; pg5) comprising a latent heat storage material based on hydrate salts including sodium acetate trihydrate (pg5-6, bridging). Katano teaches that it is known to include supercooling inhibitors in such compositions to prevent supercooling and further teaches that sodium carbonate and potassium chloride are equivalent and interchangeable supercooling inhibitors (pg7, bottom). Katano and Xiao are analogous art and are combinable because they are concerned with the same field of endeavor, namely inorganic latent heat storage materials based on salt hydrates, specifically sodium acetate trihydrate. In view of the recognition by Katano that sodium carbonate and potassium chloride are equivalent and interchangeable in supercooling inhibition of inorganic salt hydrates, it would have been obvious to one of ordinary skill in the art to substitute the potassium chloride of Xiao with the sodium carbonate of Katano and thereby arrive at the present invention. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable (See In re Ruff 118 USPQ 343 (CCPA 1958; MPEP 2144.06).
Regarding claim 2, Xiao in view of Katano renders obvious the phase change material as set forth in claim 1 above. As noted above, Xiao teaches the crystalline inorganic salt hydrate is CH3COONa 3H2O (sodium acetate trihydrate) (pg2).
Regarding claim 3, Xiao in view of Katano renders obvious the phase change material as set forth in claim 2 above. Xiao is silent as to the further inclusion of potassium nitrate as melting point adjuster for lowering the melting point. However, Katano teaches similar inorganic latent heat storage material compositions (abstract; pg5) comprising a latent heat storage material based on hydrate salts including sodium acetate trihydrate (pg5-6, bridging). Katano teaches it is known to include a melting point modifier for the purpose of adjusting the melting and solidification temperature of the composition (pg6), wherein potassium nitrate is a known and suitable melting point modifier (pg7, top). Katano and Xiao are analogous art and are combinable as set forth above. At the time of filing it would have been obvious to one of ordinary skill in the art to include the melting point modifier of Katano in the composition of Xiao and one would have been motivated to do so in order to adjust the melting and/or solidification temperatures of the inorganic latent heat storage material.
Regarding claims 4 and 10-11, Xiao in view of Katano render obvious the phase change material as set forth in claims 1-3 above. Xiao further teaches an amount of 0.1 to 0.5 parts of a concentrate comprising 0.006 to 0.02 g/mL graphene oxide in water (pg2; see also examples pg3-4), 80-90 parts CH3COONa 3H2O (sodium acetate trihydrate), 2-10 parts KCl, and 1-8 parts sodium carboxymethyl cellulose (pg2) (amount of graphene oxide substantially overlapping with and rendering taught 0.2 wt% or more (claim 4) and 0.4 wt% or less (claim 5)). Noting examples as follows: example 1 = 0.12 wt% graphene oxide; example 2 = 0.23 wt% graphene oxide; example 3 = 0.32 wt% graphene oxide; example 4 = 0.398 wt% graphene oxide; and example 5 = 0.478 wt% graphene oxide.
Regarding claims 7 and 12-14, Xiao in view of Katano renders obvious the phase change material as set forth in claims 1-3 and 11 above. Xiao teaches the combination of 80-90 parts of the crystalline salt hydrate and 2-10 parts of inorganic salt to obtain a main heat agent having a phase change temperature interval of about 40 to 50 ºC and an enthalpy of phase change of 180 to 190 J/g (pg2, step2). Xiao does not specifically teach 0.5 to 1.0 wt% but does teach the 2-10 parts inorganic salt of the composition (= lowest amount of 1.99 wt%)(the substitution of the KCl of Xiao with the interchangeably equivalent sodium carbonate of Katano rendered obvious above) which is substantially close to the claimed range. Katano further teaches it is known to use relatively small amounts of supercooling inhibitors to sufficiently inhibit supercooling (pg7, bottom).
It is the Examiner’s position that the values are close enough that one of ordinary skill in the art would have expected similar properties. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties (see Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05).
In the alternative, Xiao is silent to the claimed range of 0.5 to 1.0 wt%. However, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicant’s claims patentable in the absence of unexpected results (see: In re Aller, 105 USPQ 233; and MPEP 2144.05). At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of inorganic salt in order to adjust the main heat agent phase change temperature interval and resultant enthalpy of phase change. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good (see In re Boesch and Slaney, 205 USPQ 215).
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Xiao et al. (CN 106928906 A; using Clarivate Analytics machine translation for English language citations) in view of Saida et al. (JP 2000282017 A; using Clarivate Analytics machine translation for English language citations) and further in view of Katano (WO 2019221006 A1; using Clarivate Analytics machine translation for English language citations).
Xiao teaches the phase change material as set forth in claim 1 above incorporated here, in its entirety, by reference. Xiao further teaches the method of producing the phase change material comprising the steps of 1) dissolving the graphene oxide in water to form a concentrate, 2) combining the CH3COONa 3H2O (sodium acetate trihydrate) and KCl, 3) adding the sodium carboxymethyl cellulose to 2), uniformly stirring and 4) adding the concentrate of 1), stirring uniformly and obtaining the product (pg2; see also examples).
Xiao teaches using the crystalline salt hydrate as the hydrated form, specifically CH3COONa 3H2O (sodium acetate trihydrate). Xiao does not teach using the anhydride form of the crystalline salt hydrate. However, Saida teaches latent heat storage compositions based on sodium acetate trihydrate (abstract) and teaches that the sodium acetate trihydrate can be provided in either the hydrate form or the anhydride (pg2, bottom; pg3, top [0008]). Saida and Xiao are analogous art and are combinable because they are concerned with the same field of endeavor, namely phase changeable energy storage materials based on sodium acetate trihydrate.
In view of the recognition by Saida that sodium acetate anhydride and sodium acetate trihydrate are equivalent and interchangeable in forming heat storage materials, it would have been obvious to one of ordinary skill in the art to substitute the sodium acetate trihydrate of Xiao with the sodium acetate anhydride of Saida and thereby arrive at the present invention. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable (See In re Ruff 118 USPQ 343 (CCPA 1958; MPEP 2144.06).
Xiao teaches the KCl component as noted above used in combination with the crystalline inorganic salt hydrate (i.e. sodium acetate trihydrate) but does not specifically teach sodium carbonate. However, Katano teaches similar inorganic latent heat storage material compositions (abstract; pg5) comprising a latent heat storage material based on hydrate salts including sodium acetate trihydrate (pg5-6, bridging). Katano teaches that it is known to include supercooling inhibitors in such compositions to prevent supercooling and further teaches that sodium carbonate and potassium chloride are equivalent and interchangeable supercooling inhibitors (pg7, bottom). Katano and Xiao are analogous art and are combinable because they are concerned with the same field of endeavor, namely inorganic latent heat storage materials based on salt hydrates, specifically sodium acetate trihydrate. In view of the recognition by Katano that sodium carbonate and potassium chloride are equivalent and interchangeable in supercooling inhibition of inorganic salt hydrates, it would have been obvious to one of ordinary skill in the art to substitute the potassium chloride of Xiao with the sodium carbonate of Katano and thereby arrive at the present invention. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable (See In re Ruff 118 USPQ 343 (CCPA 1958; MPEP 2144.06).
Response to Arguments/Amendments
The 35 U.S.C. 112(b) rejections of claims 1-8 are withdrawn as a result of Applicant’s filed claim amendments.
The 35 U.S.C. 102(a)(1) rejection of claims 1-2 and 4-5 as anticipated by Xiao et al. (CN 106928906 A) as evidenced by Katano (WO 2019221006 A1) is withdrawn as a result of Applicant’s incorporation of now-cancelled claim 6 into independent claim 1.
The 35 U.S.C. 103 rejection of claims 3 and 6-7 as unpatentable over Xiao, as evidenced by Katano, and in view of Katano is maintained. Applicant’s arguments (Remarks, pages 9-11) have been fully considered but were not found persuasive.
Applicant argues that the KCl of Xiao does not function as a super cooling inhibitor. This is not found persuasive as Katano clearly states that KCl is a known supercooling preventative for latent heat salt hydrates including sodium acetate trihydrate (see above rejection; Katano pg 5-6). Further the supercooling inhibitor of sodium carbonate in as-amended claim 1 is met by the secondary reference of Katano who teaches sodium carbonate and KCl are equivalent and interchangeable supercooling inhibitors for inorganic salt hydrates (see above rejection; Katano pg7).
Applicant argues that Katano does not specifically state which supercooling inhibitor is effective for which latent heat storage material. This is not found persuasive as Katano teaches supercooling inhibitors that are effective for latent heat storage materials, specifically inorganic salt hydrates, as noted. As such, Katano does in fact teach that supercooling inhibitors, such as sodium carbonate, are effective for latent heat storage materials, such as sodium acetate trihydrate. Applicant has provided no evidence that the supercooling inhibitors of Katano would not be so effective, necessarily or otherwise, to provide their expressly stated property of supercooling inhibition of inorganic salt hydrates.
Applicant argues that one of ordinary skill in the art would not find it obvious to substitute the KCl of Xiao with the sodium carbonate of Katano. This is not found persuasive for the reasons set forth in the above maintained rejection: i.e. it would have been obvious to one of ordinary skill in the art to substitute the potassium chloride of Xiao with the sodium carbonate of Katano and thereby arrive at the present invention because case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable (See In re Ruff 118 USPQ 343 (CCPA 1958; MPEP 2144.06).
The 35 U.S.C. 103 rejection of claim 8 as unpatentable over Xiao, as evidenced by Katano, and in view of Saida et al. (JP 2000282017 A) is withdrawn as a result of Applicant’s incorporation of previously unclaimed limitations into independent claim 8. See the above 103 rejection as unpatentable over Xiao (CN 106928906 A) in view of Saida (JP 2000282017 A) and further in view of Katano (WO 2019221006 A1), as necessitated by Applicant’s filed claim amendments. Applicant provided no specific arguments with respect to claim 8 as met by the cited arts.
Conclusion
Applicant's amendment necessitated 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.
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
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