DETAILED ACTION
Applicant’s reply, filed 17 April 2026 in response to the requirement for restriction mailed 23 February 2026, has been fully considered. As per Applicant’s election of Group I, claims 1-11 were elected without traverse and are pending under examination (see below). Further, as per Applicant’s filed claim amendments claims 1-12, 14, 16 and 21-24 are pending, wherein: claims 1-2, 6-12, 14 and 16 have been amended, claims 3-5 are as originally filed, claims 21-24 are new, claims 25-26 are new and withdrawn, and claims 13, 15 and 17-20 have been cancelled by this amendment. It is noted that claims 12, 14 and 16 are, by dint of Applicant amendment, no longer considered part of Group II as was originally recited/claimed and have been further examined with claim 1 from which they now depend.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-11, in the reply filed on 17 April 2026 is acknowledged.
New claims 25-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention (corresponding to now-amended, previously independent method claim 12), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 17 April 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 7 and 21-24 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 7, the claim is indefinite as it is not made clear what the ‘ratio’ is based upon (i.e. a weight% ratio, mass% ratio, volume% ratio, other).
Regarding claim 21, the claim is indefinite as it is not made clear what the ‘ratio’ is based upon (i.e. a weight% ratio, mass% ratio, volume% ratio, other). This includes claims 22-24 as they depend from claim 21.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 23 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 21, upon which claim 23 depends, recites an oxygen content “between approximately 0.01 mol% and 25 mol%”. As such the recitation of claim 23 of an oxygen content of “at least approximately 6 mol%” or “equal to or less than approximately 5 mol%” constitute separate open-ended ranges that contain end points outside of the limits set by independent claim 23. Claim 23 is therefore improper for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-12, 14, 16 and 21-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yu et al. (Nanomaterials, 2021, 11, 2192; published 26 August 2021).
Regarding claims 1 and 3-5, Yu teaches form-stable phase change materials (instant ‘system’) comprising a composite of porous graphene aerogel and phase change material (abstract). Yu teaches the phase change material includes polyethylene glycol (instant ‘polymer’; instant PEG) and 1-tetradecanol (2.2 materials) and teaches vacuum impregnation (2.2 fabrication).
Regarding claim 2, Yu teaches the composite as set forth in claim 1 above and further demonstrates thermal conductivities of the composite greater than that of the pure PCM by amounts meeting the instant claimed range (Figure 5e and 5f).
Regarding claims 6-7, Yu teaches the composite as set forth in claim 1 above and further demonstrates wt% of the PCM in the composite rendering the graphene-remainder in amounts meeting the instant claimed ranges (Figure 5a).
Regarding claim 8, Yu teaches the composite as set forth in claim 1 above and further teaches combining composites of polyethylene glycol and 1-tetradecanol (Figure 12; Table 5; 5 conclusions).
Regarding claims 9-10 and claims 12, 14 and 16, Yu teaches the composite as set forth in claim 1 above and further teaches the composites are obtained by synthesizing GO, freeze-drying, dispersing in water and ultrasonicating, freeze-drying to form a 3D porous aerogel, reducing to graphene via hydrazine and vacuum impregnating liquefied PCM material (2.2 Fabrication).
Yu does not specifically teach the oxygen content. However, the instant specification demonstrates that a substantially similar method as that taught by Yu, wherein no further reduction of oxygen via heat-treatment to reduce the oxygen content below 5 mol% occurs, the resulting aerogel will have a hydrophilic character and an oxygen content greater than 5 mol% (instant original specification, pg7 [0046]-[0047]). A chemical composition and its properties are 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)).
While Yu teaches methods that meet and anticipate the instant claims, it is further noted with respect to claims 12, 14 and 16 that the claims are product-by-process claims, where patentability of said claim(s) is based on the recited product and does not depend on its method of production (see In re Marosi, 710 F2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983); see MPEP 2113).
Regarding claims 21-24, Yu teaches the composites as set forth in claims 1-3, 6-10 above and incorporated here by reference. Namely, Yu teaches the composite (instant system) comprising 3D porous graphene aerogel into the pores of which is embedded a PCM including 1-tetradecanol and/or PEG (instant polymer) and having amounts of graphene and ratio of graphene:PCM which meet the instantly claimed ranges (abstract; 2.2 materials; 2.2 fabrication; Figures 5a, 5e, 5f, and 12; Table 5; 5 conclusions). Further Yu is held to meet the claimed hydrophilic character and associated oxygen content recitation as outlined in the rejection of claims 9 and 12 above.
Claims 1-2, 6-7, 9, 11-12, 14 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang et al. (Journal of Materials Chemistry A, 2018, 6, 5880; published 28 February 2018).
Regarding claim 1, Yang teaches thermally conductive composites comprising porous graphene aerogels and phase change materials (abstract). Yang further teaches the phase change material is 1-octadecanol and teaches vacuum impregnation (2.2 preparation; 2.3 fabrication).
Regarding claim 2, Yang teaches the composite as set forth in claim 1 above and further demonstrates thermal conductivities of the composite greater than that of the pure PCM by amounts meeting the instant claimed range (Table 1).
Regarding claims 6-7, Yang teaches the composite as set forth in claim 1 above and further demonstrates wt% graphene meeting the instant claimed range (Figure 4) and content of graphene where PCM-remainder meets the instant claimed ratio (Table 1).
Regarding claims 9 and 11 and claims 12, 14 and 16, Yang teaches the composite as set forth in claim 1 above and further teaches the composites are obtained by methods of forming the graphene aerogel comprising forming graphene oxide, ultrasonicating in water, removing water, freeze drying to obtain GO aerogel, then heating at 150°C followed by annealing at 2800°C to obtain a high quality graphene aerogel, followed by vacuum assisted impregnation of melted 1-octadecanol (2.2 preparation; 2.3 fabrication). Yang teaches the high quality graphene aerogel after being subjected to the annealing step results in an aerogel with a very high C/O ratio of 150.5 with nearly complete removal of oxygen containing groups (3 discussion, pg 5883 col 1; Figure 3)(instant oxygen content equal to or less than 5 mol%).
Alternatively, Yang does not specifically teach the oxygen content in mol%. However, the instant specification demonstrates that a substantially similar method as that taught by Yang, wherein when further reduction of oxygen via heat-treatment to reduce the oxygen content occurs, the resulting aerogel will have a hydrophobic character and an oxygen content less than 5 mol% (instant original specification, pg7 [0046]-[0047]). A chemical composition and its properties are 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)).
While Yang teaches methods that meet and anticipate the instant claims, it is further noted with respect to claims 12, 14 and 16 that the claims are product-by-process claims, where patentability of said claim(s) is based on the recited product and does not depend on its method of production (see In re Marosi, 710 F2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983); see MPEP 2113).
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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