DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election of Species C1, subspecies 1A in the reply filed on 7/15/2026 without traverse is acknowledged. Claims 64, 80, 82, 83, 87, 90 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention or species, there being no allowable generic or linking claim.
Examiner Request
The applicant is requested to provide line numbers to each claim in all future claim submissions to aide in examination and communication with the applicant about claim recitations. The applicant is thanked for aiding examination.
Further, the formulae of claim 78 are difficult to discern and read and these are required to be enlarged and clarified to avoid a notice of non-compliant amendment in the future.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows: The provisional application 63/171938 does not appear to support the limitation that the organic component comprises an optionally substituted C>3 alkyl chain. The provisional states that the invention only includes optionally substituted C>4 alkyl chains.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 62, 63, 77-79, 81, 84-86, 88, 89, 91-93 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
In regard to claim 62, the recitation, “wherein the organic layer is between first and second inorganic layers or comprises a head group capable of hydrogen bonding, halogen bonding, and/or electrostatic interaction with a counterion;” is indefinite since it is not clear what is alternative - it is not clear if the entire recitation of the organic layer being between the first and the second inorganic layers is alternative to the recited head group or if merely some other aspect of the recitation is alternative.
In regard to claim 91, the recitation, “the pressure transmitting medium (PTM) is able to permeate a free volume of the organic layer” is indefinite since it is not clear what action or step must occur to provide this result. It appears that all that the only action or step that has to occur for this to be achieved is providing the PTM in direct contact with the composition.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
All of the claims have been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, and it is considered that none of the claim recitations should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim(s) 62, 63 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moya Raposo (US 2020/0123426). See the indefiniteness rejections and note that the prior art teaches the claimed features as far as can be interpreted.
Moya Raposo teaches a barocaloric system (para. 32), comprising: a) a composition (para. 32, 3) comprising an organic layer (para. 33) comprising substituted (para. 72) C>3 alkyl chains (para. 62, 82) and wherein the organic layer is between a first and second inorganic layer (para. 67, 70-72);
b) a source of compression (para. 33).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim(s) 62, 77-79, 81, 84-86, 91-93 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rohskopf (US 2022/0316809) in view of NPL (LI - Colossal Reversible Barocaloric Effects in Layered Hybrid Perovskite…) provided by the applicant on 11/26/2024 and having 8 pages hereafter Li. See the indefiniteness rejections and note that the prior art teaches the claimed features as far as can be interpreted.
In regard to claims 62, Rohskopf teaches a barocaloric system (see whole disclosure; para. 2) comprising:
a) a composition (material exhibiting a sufficiently large barocaloric effect, para. 22);
b) a source of compression (para. 38, 27).
Rohskopf does not explicitly teach that the composition comprises an organic layer comprising an substituted C>3 alkyl chains and wherein the organic layer is between a first and second inorganic layer; and that the composition comprising a compound of the table in claim 1 (see those listed under 2-D perovskite).
However, such barocaloric materials are known as taught by Li. Li teaches barocaloric composition that provides “colossal” barocaloric effects (page 1) comprising an organic layer (“organic” component) and a first and second inorganic layer (hybrid organic-inorganic perovskites; page 1-2), wherein the organic layer comprises a C>3 alkyl chain (page 1 see chemical formula). Therefore it would have been obvious to those of ordinary skill in the art at the time the invention was made to use the barocaloric materials of Li in the system of Rohskopf for the purpose of obtaining greater thermal performance and temperature changes with low hysteresis near room temperature where many cooling applications are applicable.
In regard to claim 77, Rohskopf teaches a pump (para. 27).
In regard to claim 78, Rohskopf, as modified, teach the limitations of claim 78, since Li teaches that the organic layer comprises one of the listed C>3 alkylammonium (see page 1-2; see teachings include C9 and C10).
In regard to claim 79, Rohskopf, as modified, teach the limitations of claim 79, since Li teaches that the organic layer is an organic bilayer (see page 1-2, CnHn+1NH3)2).
In regard to claim 81, Rohskopf, as modified, teach the limitations of claim 81, since Li teaches that the composition includes (NA)2MnCl4, (DA)2CuCl4, and (NA)2CuCl4 (see page 1-2) and it is rehearsed that such would be desirable since such “hybrid organic-inorganic perovskites have large reversible adiabatic temperature changes at moderate pressures along with giant isothermal entropy changes within large temperature spans” (page 1-Li).
In regard to claim 84-85, Rohskopf teaches the pressure transmitting medium comprises a liquid (para. 27, 29).
In regard to claim 91, Rohskopf, as modified, teach that the pressure transmitting medium (para. 27, 28) is able to permeate a free volume of the organic layer (see that the heat transfer fluid that is pressurized is in contact with the barocaloric material- para. 26, see that the barocaloric material is that of Li having the organic layer).
In regard to claim 92-93, Rohsckopf teach that the permeated pressure transmitting medium (heat transfer fluid contacting the barocaloric material of Li) is able to interact with the composition to induce a lower of a phase transition temperature (para. 20, 26 during decompression).
Claim(s) 63 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rohskopf (US 2022/0316809) in view of Li (See above) and Moya Raposo (US 2020/0123426). See the indefiniteness rejections and note that the prior art teaches the claimed features as far as can be interpreted.
Rohskopf, as modified, teaches most of the claim limitations but does not appear to explicitly teach that the organic layer is a substituted C>3 alkyl chain. However, Moya Raposo teaches a barocaloric system (para. 32), comprising: a composition (para. 32, 3) comprising an organic layer (para. 33) comprising substituted (para. 72) C>3 alkyl chains (para. 62, 82) and a source of compression (para. 33). Therefore it would have been obvious to those of ordinary skill in the art at the time the invention was made to modify the composition of Rohskopf with a substitution to provide greater flexibility and performance around ambient temperature (para. 72-Moya Raposo).
Claim(s) 88, 89 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rohskopf (US 2022/0316809) in view of Li (See above) and Fitger (US 2023/0137699). See the indefiniteness rejections and note that the prior art teaches the claimed features as far as can be interpreted.
Rohskopf teaches many aspects of the pressure transmitting medium (para. 28), but does not explicitly teaches that the pressure transmitting medium is a polarizable gas. However, Fitger teaches a pressure transmitting medium (para. 41, 59, 44) and teaches that such can be propane or butane (para. 56). Therefore it would have been obvious to those of ordinary skill in the art at the time the invention was made to provide Rohskopf with butane or propane as the pressure transmitting medium to provide the system with the efficient thermal properties of such well known coolant fluids.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN F PETTITT whose telephone number is (571)272-0771. The examiner can normally be reached on M-F, 9-5p. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR): http://www.uspto.gov/interviewpractice. The examiner’s supervisor, Frantz Jules can be reached on 571-272-6681. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN F PETTITT, III/Primary Examiner, Art Unit 3763
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