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 and amendment/remarks filed 04/27/2026.
Claims 59, 61-76, and 78-87 are currently pending.
It is noted that while Applicant’s remarks indicate claim 66 is canceled, the claim is still pending per the claim’s presence and “Previously Presented” status indicator in the claim set.
The Drawings filed 08/28/2023 are approved by the examiner.
The IDS statements filed 08/28/2023 and 01/28/2025 have been considered. Initialed copies accompany this action.
Election/Restrictions
Applicant’s election of magnesium nitrate as the salt species (i.e., magnesium as a salt cation and nitrate as a salt anion) in the reply filed on 04/27/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant identifies claims 59-65, 67-76, and 78-87 as reading on the elected species. However, the Office respectfully disagrees with this finding. The identified claims include a canceled claim (claim 60) and many of the identified claims clearly pertain to non-elected salt species. See, for example, but not limited to, claim 68 that limits the salt to particular salt species recited in a list without reciting magnesium nitrate and claim 78 that limits the salt to specifically sodium formate at a particular concentration. Upon careful review of the pending claims and for purposes of compact prosecution (else prosecution would be delayed), the Office finds claims 59, 61-67, 69, 73, 75, and 87 read on the elected species.
Claims 59, 61-67, 69, 73, 75, and 87 were searched and examined only to the extent that they read on the elected species, as the elected species was found not to be allowable. Claims 68, 70-72, 74, 76, and 78-86 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Priority
For purposes of determining the effective filing date of the elected invention, please note that the foreign priority application GB 2102248.8 filed on March 02, 2021, while disclosing silicon dioxide, aluminum oxide, iron oxide, titanium dioxide, silicon carbide, and silver iodide for as nucleation agents for nitrate salts such as magnesium nitrate, does not disclose or suggest either calcium carbonate or vermiculite as a nucleation agent for magnesium nitrate or any other salt. However, the foreign priority application GB 2111449.1 filed on August 09, 2021 does disclose all the recited nucleation agents for nitrate salts such as magnesium nitrate.
Accordingly, claims limited to silicon dioxide, aluminum oxide, iron oxide, titanium dioxide, silicon carbide, and silver iodide as a nucleation agent (i.e., without calcium carbonate or vermiculite) have effective filing dates of March 02, 2021 whereas claims limited to, including, or that might include calcium carbonate or vermiculite as a nucleation agent have later effective filing dates of August 09, 2021.
Claim Objections
The claims appear to be a literal translation into English from a foreign document and/or a foreign style claim format. Applicant is suggested to amend/correct the claims to correct their grammar and place them in conformance with U.S. practice. Doing so would likely overcome most of the below claim objections and 112 rejection issues.
Claims 61, 62, 67, 69, 73, and 75 are objected to because of the following informalities:
In claims 61 and 62, the terms “Between” and “About” on each line should not be capitalized because each claim is a single sentence and the terms are not proper nouns.
In claim 67, each salt species should not be capitalized because each claim is a single sentence and the salts are not proper nouns. Also, the salt species are set forth in a list but note that the list lacks proper punctuation (commas or semicolons) between each species. Applicant is required to place proper punctuation in the claim. Semicolons are suggested as the final two species are separated by a semicolon and it might be confusing if the claim alternated between commas and semicolons in a list of alternate salt species.
In claim 69, similar to claim 67, each salt species should not be capitalized because each claim is a single sentence and the salts are not proper nouns.
Claims 73 and 75 are objected for the same reasons as claim 67 (capitalized salts and improper/lacking punctuation).
Appropriate correction/clarification is required.
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.
Claims 61, 62, 64, 65, 67, 69, 73, and 75 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.
In claim 61, the term “and the nucleation agents” in the phrase “with the remainder of each composition being water and the nucleation agents” is unclear so as to render the claim indefinite. The problem here is the term is presented in plural format (nucleation agents) yet the parent claim recites two distinct nucleation agent components that are each optionally plural (“one or more nucleation agent(s) which act to reduce subcooling in a first crystallisation event, and/or one or more nucleation agent(s) which act to reduce subcooling in a second crystallisation event”). As the parent claim requires merely one nucleation agent, it is unclear if claim 61 requires: at least two of the first crystallisation event nucleation agents, at least two of the second crystallisation event nucleation agents, a combination of a first crystallisation event nucleation agent and a second crystallisation event nucleation agent, or merely one of either nucleation agent. How many nucleation agents and what nucleation agents is required by the claim? Claim 62 is also indefinite for the same reason as claim 61.
For purposes of further examination, these claims are construed as “… with the remainder of each composition being water and the nucleation agent(s) which act to reduce subcooling in a first crystallisation event and/or the nucleation agent(s) which act to reduce subcooling in a second crystallisation event”.
Similar to claim 61, in claim 64, the term “the second crystallisation events” in the limitation “wherein the nucleation agent which acts to reduce subcooling in the second crystallisation events acts to induce crystallization of the second crystallization event only” is also unclear so as to render the claim indefinite. The prior terminology is singular (i.e., the parent claim recites “a second crystallisation event”) whereas the instant terminology is plural (“the second crystallisation events”) indicating there is more than one second crystallisation event. Does the second crystallisation event encompass one event or multiple events therein? Please also note it is further confusing to alternate between British English and American English spelling of the same terms in the claim(s) (the claim recites both “crystallisation” and “crystallization”).
For purposes of further examination, the second crystallisation event only requires one, singular event (not plural events therein) and British English and American English spellings are construed as referring to the same thing.
In claim 65, the term “the nucleation agent” renders the claim indefinite because parent claim 59 has two distinct nucleation agents (“one or more nucleation agent(s) which act to reduce subcooling in a first crystallisation event, and/or one or more nucleation agent(s) which act to reduce subcooling in a second crystallisation event”). It is unclear whether claim 65 is referring to the nucleation agent for the first crystallisation event or the nucleation agent for the second crystallisation event.
For purposes of further examination, the term/limitation will be broadly construed to refer to either nucleation agent.
Claim 67 recites “the salt is selected from a group comprising any one of or a combination of the following: …” which renders the claim indefinite. The claim language designates the salt as selected from an open-ended list (group) of alternatives. Open-ended lists of alternatives is improper and indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. See MPEP 2173.05(g). Claim 69, 73, and 75 are also indefinite for the same reason as claim 67.
For purposes of further examination, the open ended list of alternative salt species are construed as closed ended lists; furthermore, the claims were searched and examined relative to prior art only to the extent that they read on the elected species, e.g., magnesium nitrate, (Id.).
Appropriate correction/clarification is required.
For purposes of additional claim interpretation, the terms “comprised of” in claims 61, 62 are construed as meaning “comprising” (synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements). If Applicant intended for the term “comprised of” to limit the claim(s) more than this interpretation, Applicant should amend the claim(s) utilizing a appropriate standard transitional phrase (see MPEP 2111.03).
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.
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 59 and 61-66 are rejected under 35 U.S.C. 103 as being unpatentable over Lane et al. (US 4,272,391 A) in view of Ewing et al. (“The temperature-composition relations of the binary system magnesium nitrate-water”, J. Am. Chem. Soc. 1933, 55, 12, 4822-4824).
As to claim 59, Lane et al. teach a phase change material comprising a salt and water (hydrated magnesium nitrate) and a nucleation agent (additive that suppresses supercooling of the magnesium nitrate liquid phase) (abstract). Lane et al. defines the hydrated magnesium nitrate mixture as meaning reversible liquid/solid phase change compositions, which, exclusive of any additives or impurities, contain admixture of magnesium nitrate and the balance water to 100% (col. 1 lines 28-32). Note that Lane et al. also refers to the supercooling suppressing additive and nucleating/nucleation/nucleator additive interchangeably. Calcium carbonate is one of six (6) nucleation agents lists (Id., abstract; see also bottom of col. 1 & the Table in col. 2).
Lane et al. fail to teach the phase change material has a melting point below 0°C as claimed.
However, Ewing et al. is drawn to melting/freezing points of magnesium nitrate-water systems and experimentally determined magnesium nitrate-water systems have melting/freezing points below 0°C when the magnesium nitrate wt.% is 0.50 to about 39 wt.% with the balance water (i.e., systems where the magnesium nitrate is 0.50 wt.% and water is 99.5 wt.% to where the magnesium nitrate is about 39 wt.% and the water is 61 wt.%). See Table I on p.4823. See also the plot of Ewing et al.’s data on p. 4824 which clearly shows the melting/freezing point of a magnesium nitrate-water system is a function of the magnesium nitrate concentration. Ewing et al. demonstrates the melting/freezing point of a magnesium nitrate-water system can be easily modified by adjusting the concentration of magnesium nitrate of the system.
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to adjust the magnesium nitrate concentration as taught by Ewing et al. to below 39 wt.% in the magnesium nitrate-water based-phase change material (with calcium carbonate nucleation agent/supercooling inhibitor) of Lane et al. in order to obtain a phase change material with a melting point below 0°C and advantageously suppressed/inhibiting supercooling with a reasonable expectation of success.
Regarding the additional limitation that the phase change material exhibits at least two crystallisation events on cooling, this feature would flow naturally from the combined teachings of the references as the references teach the same phase change material (magnesium nitrate and water) with the same melting point (below 0°C) and the same nucleation agent (calcium carbonate) as claimed.
"Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Id. The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). The claiming of a new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Where the claimed and prior art products are identical or substantially identical in structure or composition a prima facie case of either anticipation or obviousness has been established. Id., In re Best.
Any remaining claim limitations are optional as they are recited in the alternative.
As to claims 61 and 62, the combination of references meets/overlaps the claimed magnesium nitrate concentrations of 25-35 wt.% and about 30 wt.% (Id. via 0.5 to about 39 wt.% magnesium nitrate). Additionally note Ewing et al.’s phase data is so detailed that individual points therein are encompassed and/or envisaged via the Table and plot. For example, a person of ordinary skill in the art would at once envisage and/or obviously expect obtaining a melting/freezing point of about -24°C at a formulated magnesium nitrate concentration of about 30 wt.% in water. The remainder of the composition is the water and nucleation agent.
As to claims 63 and 64, Lane et al. teach the additive suppresses supercooling to no greater than about 2°C (sentence bridging cols. 1 & 2), which meets the claimed limitations. In any event, like as is set forth regarding the independent claim, the other features would flow naturally from the combined teachings of the references as the references teach the same phase change material (magnesium nitrate and water) with the same melting point (below 0°C) and the same nucleation agent (calcium carbonate) as claimed and/or any remaining claim limitations are optional as they are recited in the alternative. In any event, if the recited nucleation agents do not achieve or are incapable of achieving the recited properties with the elected magnesium nitrate salt, then the claim(s) are nonelected as being drawn to a distinct species.
As to claim 65, Lane et al. teach the nucleation agent is added in exemplary amounts of 0.1 wt.% but suggests typical amounts as up to about 2 wt.% of the composition (Table and bottom of col. 2), which fall within and overlaps some of the alternative ranges claimed.
As to claim 66, please note that the total PCM volume is essentially an intended use limitation describing how much volume of the PCM is present. However, the claims are to a composition of matter, and specifying how much the composition of matter is present does not patentably distinguish the chemical structure of the composition matter. Chemically, what is different from a few mL by volume (or grams by weight) of the PCM versus a liter or gallon by volume (or kilogram by weight) of the PCM? Thus, Lane et al.’s PCM (in view of Ewing et al.) fairly reads on the claimed absolute volume present. In any event, it would have also been obvious to a person of ordinary skill in the art to provide a certain volume, such as 1L or more, of the PCM in order to appropriately size a desired amount of latent heat absorbed/released during use of the PCM with a very reasonable expectation success. An ordinary-skilled person in the phase change material and latent heat storage art(s) would recognize and understand the more PCM is provided (i.e., larger volume) the more heat is stored/released during use. Additionally, the claimed volumes of PCM are known in the art as typical and routine for PCMs that the ordinary-skilled person in the art could certainly provide with a very reasonable expectation success.
Claims 59, 61-67, 69, 73, and 87 are rejected under 35 U.S.C. 103 as being unpatentable over Zheng et al. (US 10,495,388 B1) in view of Ewing et al. (“The temperature-composition relations of the binary system magnesium nitrate-water”, J. Am. Chem. Soc. 1933, 55, 12, 4822-4824) and Yanadori et al. (US 4,604,233 A).
As to claim 59, Zheng et al. teach a phase change composition including a phase change material (abstract). Salt hydrates are suitable for the phase change material and include a salt and water (col. 5 line 14+). Magnesium nitrate is a suitable hydratable salt for the salt hydrate phase change material (see line 60 of col. 5 lines 51-61). This means Zheng et al. teach and motivate a phase change material comprising magnesium nitrate and water. Zheng et al. teach the phase change composition may further include one or more nucleating agents to aid in solidification of the phase change composition to prevent the phase change composition from supercooling and remaining a liquid below its melting temperature (col. 12 lines 17-21).
Zheng et al. fail to teach the phase change material has a melting point below 0°C and the particular species of nucleation agent(s) as claimed.
However, Ewing et al. is drawn to melting/freezing points of magnesium nitrate-water systems and experimentally determined magnesium nitrate-water systems have melting/freezing points below 0°C when the magnesium nitrate wt.% is 0.50 to about 39 wt.% with the balance water (i.e., systems where the magnesium nitrate is 0.50 wt.% and water is 99.5 wt.% to where the magnesium nitrate is about 39 wt.% and the water is 61 wt.%). See Table I on p.4823. See also the plot of Ewing et al.’s data on p. 4824 which clearly shows the melting/freezing point of a magnesium nitrate-water system is a function of the magnesium nitrate concentration. Ewing et al. demonstrates the melting/freezing point of a magnesium nitrate-water system can be easily modified by adjusting the concentration of magnesium nitrate of the system.
Yanadori et al., like Zheng et al., is similarly drawn to heat storage materials, i.e., phase change materials, comprising salt hydrates that are provided with a nucleator to suppress supercooling of the salt hydrate (abstract and col. 1 lines 6-12). Yanadori et al. teach and list each of alumina (i.e., aluminum oxide), silicic anhydride (i.e., silicon dioxide), silicon carbide, and calcium carbonate as suitable nucleators (col. 1 lines 54-61). The nucleators are preferably added in an amount of 0.01 to 10 parts by weight relative to the composition (col. 2 lines 7-12).
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide a nucleation agent (nucleator) as taught by Yanadori et al. to the salt hydrate-based phase change material of Zheng et al. in order to inhibit supercooling of the salt hydrate-based phase change material with a reasonable expectation of success. Concurrently, at the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to adjust the magnesium nitrate concentration as taught by Ewing et al. to below 39 wt.% in the magnesium nitrate-water based-phase change material of Lane et al. (with Yanadori et al.’s particular nucleation agent(s)) in order to obtain a phase change material with a melting point below 0°C and advantageously suppressed/inhibiting supercooling with a reasonable expectation of success.
Regarding the additional limitation that the phase change material exhibits at least two crystallisation events on cooling, this feature would flow naturally from the combined teachings of the references as the references teach the same phase change material (magnesium nitrate and water) with the same melting point (below 0°C) and the same nucleation agent (calcium carbonate, silicon dioxide, aluminum oxide, and/or silicon carbide) as claimed.
"Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Id. The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). The claiming of a new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Where the claimed and prior art products are identical or substantially identical in structure or composition a prima facie case of either anticipation or obviousness has been established. Id., In re Best.
Any remaining claim limitations are optional as they are recited in the alternative.
As to claims 61 and 62, the combination of references meets/overlaps the claimed magnesium nitrate concentrations of 25-35 wt.% and about 30 wt.% (Id. via 0.5 to about 39 wt.% magnesium nitrate). Additionally note Ewing et al.’s phase data is so detailed that individual points therein are encompassed and/or envisaged via the Table and plot. For example, a person of ordinary skill in the art would at once envisage and/or obviously expect obtaining a melting/freezing point of about -24°C at a formulated magnesium nitrate concentration of about 30 wt.% in water. The remainder of the composition is the water and nucleation agent(s).
As to claims 63 and 64, Yanadori et al.’s examples, while drawn to a different salt hydrate than that claimed, teach and exemplify the nucleator reduces supercooling to just a few degrees centigrade, which, in combination with the salt species taught by the combined references, meets the claimed limitations. In any event, like as is set forth regarding the independent claim, the other features would flow naturally from the combined teachings of the references as the references teach the same phase change material (magnesium nitrate and water) with the same melting point (below 0°C) and the same nucleation agent (calcium carbonate, silicon dioxide, aluminum oxide, and/or silicon carbide) as claimed and/or any remaining claim limitations are optional as they are recited in the alternative. In any event, if the recited nucleation agents do not achieve or are incapable of achieving the recited properties with the elected magnesium nitrate salt, then the claim(s) are nonelected as being drawn to a distinct species.
As to claim 65, Yanadori et al. teach the nucleation agent is added in an amount of 0.01 to 10 parts by weight relative to the composition (Id.), which falls within and overlaps some of the alternative ranges claimed.
As to claim 66, please note that the total PCM volume is essentially an intended use limitation describing how much volume of the PCM is present. However, the claims are to a composition of matter, and specifying how much the composition of matter is present does not patentably distinguish the chemical structure of the composition matter. Chemically, what is different from a few mL by volume (or grams by weight) of the PCM versus a liter or gallon by volume (or kilogram by weight) of the PCM? Thus, Zheng al.’s PCM (in view of Ewing et al. and Yanadori et al.) fairly reads on the claimed absolute volume present. In any event, it would have also been obvious to a person of ordinary skill in the art to provide a certain volume, such as 1L or more, of the PCM in order to appropriately size a desired amount of latent heat absorbed/released during use of the PCM with a very reasonable expectation success. An ordinary-skilled person in the phase change material and latent heat storage art(s) would recognize and understand the more PCM is provided (i.e., larger volume) the more heat is stored/released during use. Additionally, the claimed volumes of PCM are known in the art as typical and routine for PCMs that the ordinary-skilled person in the art could certainly provide with a very reasonable expectation success.
As to claim 67, the combination of references meets the claimed limitations that aluminum oxide is used as a nucleation agent for the first crystallisation event (i.e., that the nucleation agent for the first crystallisation event is aluminum oxide) and the salt is magnesium nitrate (Id.). Furthermore, specifying which of the two naturally-present and/or -flowing crystallisation events the nucleation agent’s activity occurs with is either merely an intended use (or even just terminology) of that compound or would also flow naturally from the provision of that particular nucleation agent to the magnesium nitrate-based phase change material.
As to claim 69, the combination of references meets the claimed limitations that silicon dioxide is used as a nucleation agent for the first crystallisation event (i.e., that the nucleation agent for the first crystallisation event is silicon dioxide) and the salt is magnesium nitrate (Id.). Furthermore, specifying which of the two naturally-present and/or -flowing crystallisation events the nucleation agent’s activity occurs with is either merely an intended use (or even just terminology) of that compound or would also flow naturally from the provision of that particular nucleation agent to the magnesium nitrate-based phase change material.
As to claim 69, the combination of references meets the claimed limitations that silicon carbide is used as a nucleation agent for the second crystallisation event (i.e., that the nucleation agent for the second crystallisation event is silicon carbide) and the salt is magnesium nitrate (Id.). Furthermore, specifying which of the two naturally-present and/or -flowing crystallisation events the nucleation agent’s activity occurs with is either merely an intended use (or even just terminology) of that compound or would also flow naturally from the provision of that particular nucleation agent to the magnesium nitrate-based phase change material.
As to claim 87, the combination of references meets the claimed limitations that the PCM comprises about 25-35 wt.% magnesium nitrate in water, with the nucleation agent for the first crystallisation event comprising 0.1-1.0 wt.% silicon dioxide and/or aluminum oxide and the nucleation agent for the second crystallisation event comprising 0.1-1.0 wt.% silicon carbide. Regarding the magnesium nitrate in water concentration, see the above citations and details to the composition of Ewing et al. incorporated into Zheng et al. (Id., 25-35 wt.% magnesium nitrate in water is encompassed/overlapped via 0.5 to about 39 wt.% magnesium nitrate in water). Additionally note Ewing et al.’s phase data is so detailed that individual points therein are encompassed and/or envisaged via the Table and plot. For example, a person of ordinary skill in the art would at once envisage and/or obviously expect obtaining a melting/freezing point of about -24°C at a formulated magnesium nitrate concentration of about 30 wt.% in water. Regarding the nucleation agent composition and concentration(s) thereof, Yanadori et al. teach provision of any one, combination, or all of silicon dioxide, aluminum oxide, and silicon carbide as nucleation agents at a concentration of 0.01 to 10 parts by weight relative to the composition in order to suppress supercooling of the composition (Id.). Furthermore, specifying which of the two naturally-present and/or -flowing crystallisation events the nucleation agent’s activity occurs with is either merely an intended use (or even just terminology) of that compound or would also flow naturally from the provision of that particular nucleation agent to the magnesium nitrate-based phase change material.
Claims 59, 61-66, and 75 are rejected under 35 U.S.C. 103 as being unpatentable over Zheng et al. (US 10,495,388 B1) in view of Ewing et al. (“The temperature-composition relations of the binary system magnesium nitrate-water”, J. Am. Chem. Soc. 1933, 55, 12, 4822-4824) and Sato et al. (JP 2018-030924 A). An English language machine translation of Sato et al. is provided with the Office’s supplied copy of the reference, and citations to Sato et al. are with respect to the translation unless specified otherwise.
As to claim 59, Zheng et al. teach a phase change composition including a phase change material (abstract). Salt hydrates are suitable for the phase change material and include a salt and water (col. 5 line 14+). Magnesium nitrate is a suitable hydratable salt for the salt hydrate phase change material (see line 60 of col. 5 lines 51-61). This means Zheng et al. teach and motivate a phase change material comprising magnesium nitrate and water. Zheng et al. teach the phase change composition may further include one or more nucleating agents to aid in solidification of the phase change composition to prevent the phase change composition from supercooling and remaining a liquid below its melting temperature (col. 12 lines 17-21).
Zheng et al. fail to teach the phase change material has a melting point below 0°C and the particular species of nucleation agent(s) as claimed.
However, Ewing et al. is drawn to melting/freezing points of magnesium nitrate-water systems and experimentally determined magnesium nitrate-water systems have melting/freezing points below 0°C when the magnesium nitrate wt.% is 0.50 to about 39 wt.% with the balance water (i.e., systems where the magnesium nitrate is 0.50 wt.% and water is 99.5 wt.% to where the magnesium nitrate is about 39 wt.% and the water is 61 wt.%). See Table I on p.4823. See also the plot of Ewing et al.’s data on p. 4824 which clearly shows the melting/freezing point of a magnesium nitrate-water system is a function of the magnesium nitrate concentration. Ewing et al. demonstrates the melting/freezing point of a magnesium nitrate-water system can be easily modified by adjusting the concentration of magnesium nitrate of the system.
Sato et al., like Zheng et al., is similarly drawn to latent heat storage materials, i.e., phase change materials, comprising salt hydrates (abstract, middle of p.3, and top of p.4) where minerals such as vermiculite are further provided as a nucleating material therein (top of p.4).
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide a nucleation agent (nucleating material) such as vermiculite as taught by Sato et al. to the salt hydrate-based phase change material of Zheng et al. in order to promote nucleation of the salt hydrate-based phase change material with a reasonable expectation of success. Concurrently, at the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to adjust the magnesium nitrate concentration as taught by Ewing et al. to below 39 wt.% in the magnesium nitrate-water based-phase change material of Lane et al. (with Sato et al.’s particular nucleation agent) in order to obtain a phase change material with a melting point below 0°C and advantageously promoted nucleation with a reasonable expectation of success.
Regarding the additional limitation that the phase change material exhibits at least two crystallisation events on cooling, this feature would flow naturally from the combined teachings of the references as the references teach the same phase change material (magnesium nitrate and water) with the same melting point (below 0°C) and the same nucleation agent (vermiculite) as claimed.
"Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Id. The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). The claiming of a new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Where the claimed and prior art products are identical or substantially identical in structure or composition a prima facie case of either anticipation or obviousness has been established. Id., In re Best.
Any remaining claim limitations are optional as they are recited in the alternative.
As to claims 61 and 62, the combination of references meets/overlaps the claimed magnesium nitrate concentrations of 25-35 wt.% and about 30 wt.% (Id. via 0.5 to about 39 wt.% magnesium nitrate). Additionally note Ewing et al.’s phase data is so detailed that individual points therein are encompassed and/or envisaged via the Table and plot. For example, a person of ordinary skill in the art would at once envisage and/or obviously expect obtaining a melting/freezing point of about -24°C at a formulated magnesium nitrate concentration of about 30 wt.% in water. The remainder of the composition is the water and nucleation agent(s).
As to claims 63 and 64, like as is set forth regarding the independent claim, the other features would flow naturally from the combined teachings of the references as the references teach the same phase change material (magnesium nitrate and water) with the same melting point (below 0°C) and the same nucleation agent (vermiculite) as claimed and/or any remaining claim limitations are optional as they are recited in the alternative. In any event, if the recited nucleation agents do not achieve or are incapable of achieving the recited properties with the elected magnesium nitrate salt, then the claim(s) are nonelected as being drawn to a distinct species.
As to claim 65, while not expressly taught in the reference(s), the claimed nucleation agent concentration(s) are obvious from the combined references. Zheng et al. teach and motivate provision of a nucleation agent in order to prevent the composition from supercooling and Sato et al. teach and clarify vermiculite is a nucleation agent for such compositions. As the nucleation agent/vermiculite is provided for a certain purpose/effect (nucleation and supercooling prevention), its presence is effectively recognized as a result-effective variable (that is, that the concentration of the component exhibits certain nucleation and/or supercooling prevention properties). At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to vary and optimize the relative amount of the vermiculite/nucleation agent present in order to affect or optimize the nucleation and supercooling prevention of the composition with a reasonable expectation of success. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation, absent a showing of evidence to the contrary or that the broad claimed ranges are critical.
As to claim 66, please note that the total PCM volume is essentially an intended use limitation describing how much volume of the PCM is present. However, the claims are to a composition of matter, and specifying how much the composition of matter is present does not patentably distinguish the chemical structure of the composition matter. Chemically, what is different from a few mL by volume (or grams by weight) of the PCM versus a liter or gallon by volume (or kilogram by weight) of the PCM? Thus, Zheng al.’s PCM (in view of Ewing et al. and Sato et al.) fairly reads on the claimed absolute volume present. In any event, it would have also been obvious to a person of ordinary skill in the art to provide a certain volume, such as 1L or more, of the PCM in order to appropriately size a desired amount of latent heat absorbed/released during use of the PCM with a very reasonable expectation success. An ordinary-skilled person in the phase change material and latent heat storage art(s) would recognize and understand the more PCM is provided (i.e., larger volume) the more heat is stored/released during use. Additionally, the claimed volumes of PCM are known in the art as typical and routine for PCMs that the ordinary-skilled person in the art could certainly provide with a very reasonable expectation success.
As to claim 75, the combination of references meets the claimed limitations that vermiculite is used as a nucleation agent for the second crystallisation event (i.e., that the nucleation agent for the second crystallisation event is vermiculite) and the salt is magnesium nitrate (Id.). Furthermore, specifying which of the two naturally-present and/or -flowing crystallisation events the nucleation agent’s activity occurs with is either merely an intended use (or even just terminology) of that compound or would also flow naturally from the provision of that particular nucleation agent to the magnesium nitrate-based phase change material.
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 and/or to support the above ground(s) of rejection:
Harle et al. (US 2019/0177224 A1) is a cited reference of interest that teaches, depending on its intended use, utilizing a PCM in amounts of several liters as a typical and routine total volume for PCMs (para. 0014).
Kamura et al. (US 2021/0047549 A1) is a cited reference of interest that teaches utilizing a PCM in an exemplary amount of over 1L as a typical and routine total volume for PCMs (para. 0249).
The remaining references listed on Forms 892, 1449, and PCT 210 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
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
May 27, 2026
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