DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election of the paraffin wax, maleic anhydride-grafted ethylene vinyl-acetate copolymer and expanded graphite species in the reply filed on December 23, 2025 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)).
Claim Rejections - 35 USC § 112
Claims 1-20 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 1, the “phase change material (PCM)” is indefinite in that it is unclear what the phase change entails. Furthermore, it is unclear under which conditions, e.g., friction, temperature, pressure, heat, said phase change takes place. Notably, given that a maleic anhydride graft would undergo a phase change from solid to melted phase upon melting conditions, such would also define a phase change material.
In claim 1, it is unclear whether the recited parts by weight are based on a total of 100 parts by weight. That is, it is unclear whether the composite can comprise 70 pbw PCM, 20 pbw maleic anhydride graft, 5 pbw thermal conductivity enhancer and 30 pbw flame retardant, which total exceeds 100 pbw.
In claim 1, it is unclear whether a “maleic anhydride graft” refers to a maleic anhydride-grafted polymer or merely to the maleic anhydride grafted portion.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over CN 107163590 A (Zou) abstract and machine translation.
Zou discloses a phase change composite comprising:
20 to 70 wt.% of a phase change material (PCM) (meets Applicants’ PCM and overlaps content thereof) ;
17 to 55 wt.% of a supporting material;
3 to10 wt.% of a porous material;
5 to 25 wt.% of a flame retardant [0016] inclusive of nitrogen-based materials such as melamine (meets Applicants’ melamine and overlaps content thereof) and phosphorous-based flame retardants such as the substituted triphenyl phosphate tricresyl phosphate (meets Applicants’ triphenyl phosphate and overlaps Applicants’ content thereof);
2 to 5 wt.% of a compatibilizer [0017] such as a maleic anhydride-grafted polymer (meets Applicant’s maleic anhydride graft but not content thereof);
1 to 5 wt.% of a thermal conductive material (meets Applicants’ thermal conductive enhancer and content thereof);
3 to 8 wt.% of a light-absorbing material; and
1 to 5 wt.% of other additives (e.g., abstract, [0012-0019], examples, claims).
While not expressly set forth in a working example, it is within the purview of Zou’s inventive disclosure to formulate a phase change composite comprising, inter alia:
50 to 70 wt.% of a phase change material (PCM) (meets Applicants’ PCM and content thereof);
15 to 25 wt.% of a flame retardant mixture comprising melamine and tricresyl phosphate (meets Applicants’ triphenyl phosphate/melamine flame retardant and content thereof);
2 to 5 wt.% of a maleic anhydride-grafted polymer compatibilizer (meets Applicant’s maleic anhydride graft but not content thereof); and
1 to 5 wt.% of a thermal conductive material (meets Applicants’ thermal conductive enhancer and content thereof).
In essence, Zou’s disclosure differs from claim 1 in that the maleic-anhydride polymer content is lower than the presently claimed 10 to 20 pbw. While the claimed presently compatibilizer content range does not overlap with Zou’s, a prima facie case of obviousness exists because the presently claimed lower limit of 10 pbw and Zou’s upper limit of 5 wt.% are close enough that one skilled in the art would have expected them to have the same properties, Titanium Metals Corp. v. Banner, 227 USPQ 773 (MPEP 2144.05 l). Notably, Zou discloses that the compatibilizer is added “to improve the bonding between components, thereby increasing the tensile and impact strength of the product, improving processing rheology, and enhancing surface finish” [0031] and that “the amounts of materials can be increased… according to actual needs” [0036]. Thus, it would have been within the purview of one having ordinary skill in the art to use a higher content of Zou’s maleic-anhydride compatibilizer polymer in the interest of obtaining further property improvements. Differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating criticality for the claimed ranges. “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”, In re Aller, 105 USPQ 233. Accordingly, absent evidence of unusual or unexpected results for the presently claimed maleic anhydride graft contents, no patentability can be seen therein.
As to claims 2 and 12 , it is within the purview of one having ordinary skill in the art, in accordance with the desired properties, to formulate a phase change composite comprising, inter alia:
50 to 60 wt.% of a phase change material (PCM) (meets Applicants’ PCM and content thereof);
15 to 25 wt.% of a flame retardant mixture comprising melamine and tricresyl phosphate (meets Applicants’ triphenyl phosphate/melamine flame retardant and content thereof);
up to 11.5 wt.% of a maleic anhydride-grafted polymer compatibilizer (meets Applicant’s maleic anhydride graft and content thereof); and
1 to 3.5 wt.% of a thermal conductive material (meets Applicants’ thermal conductive enhancer and content thereof).
As to claims 3 and 13, Zou discloses maleic anhydride-grafted polyethylenes which implicitly include maleic anhydride-grafted ethylene-based copolymers such as those presently claimed. Accordingly, absent evidence of unusual or unexpected results for the presently claimed copolymers, no patentability can be seen therein.
As to claims 4, 5, 14 and 15, Zou expressly uses expanded graphite and paraffin
wax in Example 1 [0037].
As to claims 6-10, 16 and 17, given that Zou’s working examples use melamine and a phosphorous-based flame retardant in mass ratios falling within the scope of the present claim (e.g., in Example 1 the mass ratio of melamine to ammonium polyphosphate is 1:3), it would have been obvious to one having ordinary skill in the art to use a melamine to tricresyl phosphate mass ratio falling within the scope of the present claims with the reasonable expectation of success.
As to claim 11, Zou discloses preparing the composite by mixing the components (e.g., Example 1).
As to claim 18, Zou conducts the mixing at 160°C (e.g., [0037].
As to claims 19 and 20, case law holds that selection of any order of performing process steps or mixing ingredients is prima facie obvious, in the absence of new or unexpected results, Ex parte Rubin, 128 USPQ 440, In re Gibson, 5 USPQ 230. Thus, it would have been within the purview of one having ordinary skill in the art to sequentially mix the materials in more than one step so as to control the desired processing rheology [0031].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765