DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Objections
Claim 32 is objected to because of the following informalities: “the polymer surface” should instead be –the polymer comprising the outer surface--. Appropriate correction is required.
Claim 33 is objected to because of the following informalities: “the polymer surface” should instead be –the polymer comprising the outer surface--. Appropriate correction is required.
Claim Rejections - 35 USC § 112(2nd)
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 36 and 49 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 36, as-written the claim is indefinite as reciting selecting from alloys including of zinc and selecting from zinc-iron and zinc-nickel alloys. It appears the recitation of “an alloys of any of the foregoing” is misplaced within the recitation. At present however the claim recites a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) which is considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites the broad recitation of zinc alloys, and the claim also recites zinc-iron and zinc-nickel alloy which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 49, the claim is indefinite as it is not clear if by “the pellet” the claim is referring to the overall pellet (pellet + polymer + metal 1 + metal 2) or the pellet ‘core’ only (the phase change material pellet comprising the internal void).
Claim Rejections - 35 USC § 103(a)
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 30-49 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kaneko (JP H05295356 A; using Clarivate Analytics machine translation for English language citations) in view of Kiyomiya (WO 2011058620 A1; using Clarivate Analytics machine translation for English language citations) and Akiyama et al. (JP H1123172 A; using Clarivate Analytics machine translation for English language citations).
Regarding claims 30-33, 42 and 46, Kaneko teaches particulate heat storage materials comprising a core material having high heat of fusion, i.e. paraffins, etc. (phase change material), which is surface coated with a soft rubber or synthetic resin (abstract; [0008]; FIG 1) and further may be coated with a metal outer material having good thermal conductivity ([0012]; FIG 2)(instant phase change material pellet (claim 30); instant metal plated thermal storage object (claim 42)). Kaneko further teaches the core material is molded/shaped into granules or small blocks (abstract; [0008])(instant pellet (claim 30); instant core (claim 42)). Kaneko teaches in forming the materials the core material substance liquifies and contracts inside the resin/metal coating layers, which act to maintain the formed shape, and then cools which shrinks the volume ([0011]-[0012],pg3-4)(contracting of the core material inside the shape-maintained layers readable over the instant internal void, where no void volume or dimensions are required).
Kaneko further teaches the rubber material or synthetic resin or plastic material coated on the periphery is flexible and capable of expansion/contraction as needed ([0008]; [0012]) and does not specifically teach the coating to be reactive in anyway. Kaneko does not specifically teach a nonreactive, permeable polymer. However, Kiyomiya teaches similar heat storage materials comprising a phase-change core, a resin covering layer and an outer metal layer (abstract; FIG 1; pg3). Kiyomiya teaches selecting the resin layer materials from materials whose melting point is higher than that of the phase change material but lower than that of the outer metal coating (pg3; pg5), wherein preferred materials for paraffinic type phase change materials include polyvinylidene fluorides, polytetrafluoroethylenes, etc. (pg3, top)(instant nonreactive, permeable polymer (claims 30 and 42); instant hydrophobic (claim 32); instant PTFE, PVDF, etc. (claim 33)). Kiyomiya and Kaneko are analogous art and are combinable because they are concerned with the same field of endeavor, namely latent heat storage materials comprising paraffinic cores, a resin layer and an outer metal layer. At the time of invention a person having ordinary skill in the art would have found it obvious to select the resin materials of Kiyomiya as the resins of Kaneko and would have been motivated to do so as Kaneko teaches selection of any desired flexible material and further as Kiyomiya teaches selecting the noted resins is advantageous and prevents evaporation or loss of the phase change material during the metal coating step (pg4).
Kaneko teaches the particulate heat storage material has an outer metal coating in order to improve thermal conductivity but does not specifically teach a first and second metal layer as instantly recited. However, Akiyama teaches similar latent heat storage capsules comprising a latent heat storage material core and applying onto the surface thereof one, two or three layers of metal film in order to achieve better heat conductivity and excellent heat resistance (abstract; FIG 1). Akiyama teaches the first metal layer is not sintered and is selected from Ni, Co, Au, Ag, Sn, Cu, Cr, Pb and Zn (instant first metal layer, instant applied to outer surface, instant electrically conductive, and instant consisting essentially of metal (claim 30); instant first metal layer, instant directly on, instant selected from Ni, Cu, Zn, etc. (claims 31, 42 and 46)), teaches the second layer has a high melting point preferably selected from one of Ru, Rh, Pd and Pt (instant second metal layer, instant deposited on the first metal layer (claim 30); instant second metal layer, instant directly contacting the first metal layer (claim 42)), and teaches that if the third layer is present it is decorative and preferably selected from Cu, Ti, Au, Ag, Ni and alloys thereof (abstract; [0006]-[0007]). Akiyama and Kaneko are analogous art and are combinable because they are concerned with the same field of endeavor, namely heat storage materials having a phase change core and outer metal coatings which provide thermal conductivity. At the time of invention a person having ordinary skill in the art would have found it obvious to form the multi-layer metal coatings of Akiyama as the metal coating of Kaneko and would have been motivated to do so as Kaneko teaches metal coating to achieve thermal conductivity and further as Akiyama teaches the multi-layer metal coatings allow for more even application and easily controlled thickness thus resulting in better heat conductivity and excellent heat resistance (abstract; pg1).
Regarding claims 34-38, Kaneko in view of Kiyomiya and Akiyama render obvious the heat storage materials as set forth in claim 30 above. Akiyama teaches the multi-layer coatings as set forth above and teaches electroplating methods to controllably obtain the desired thickness (pg3-4) of the first layer. Akiyama further teaches the first layer thickness is readily selected to obtain a desired thickness of up to 10, 25, 50 or 100 µm (pg4,top) and as noted teaches the first metal layer selected from Ni, Co, Au, Ag, Sn, Cu, Cr, Pb and Zn (instant claim 36).
Regarding the recitations that the first metal layer is applied as small metal particles (claim 34) of 20 to 30 micron (claim 35), applied using powder coating technique (claim 37) selected from rubbing, jar milling or rolling (claim 38), it is noted that even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production (see In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985); and In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969).
Regarding claims 39, Kaneko in view of Kiyomiya and Akiyama render obvious the heat storage materials as set forth in claim 30 above. Akiyama teaches the multi-layer coatings as set forth above and teaches electroplating methods to controllably obtain the desired thickness (pg3-4).
Regarding the recitation that the second layer has been deposited using an electroless deposition technique followed by an electroplating technique, it is noted that even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production (see In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985); and In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969).
Regarding claims 40 and 48, Kaneko in view of Kiyomiya and Akiyama render obvious the heat storage materials as set forth in claims 30 and 42 above. As noted above Akiyama teaches the second layer has a high melting point than that selected for the first metal layer, preferably the second metal layer is selected from one of Ru, Rh, Pd and Pt (abstract; [0006]-[0007]).
Regarding claims 41 and 47, Kaneko in view of Kiyomiya and Akiyama render obvious the heat storage materials as set forth in claims 30 and 42 above. As noted above Akiyama teaches the multi-layer metal coatings and further teaches the thickness of the layers can be easily controlled (abstract; [0029]). Akiyama teaches the first layer thickness is readily selected to obtain a desired thickness of up to 10, 25, 50 or 100 µm (pg4,top)(instant claim 47). Akiyama teaches the second layer is also selectable and demonstrates 0.5 µm (pg4)(readable on ‘approximately 1 micron’ (instant claim 41)).
It is further noted that per the teachings of Akiyama the thickness is a result-effective variable that could be optimized. At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the thickness of the second layer and would have been motivated to do so in order to readily obtain an easily controlled thickness in order to achieve better heat conductivity and excellent heat resistance (see: In re Aller, 105 USPQ 233; In re Boesch and Slaney, 205 USPQ 215); and MPEP 2144.05).
Regarding claim 43, Kaneko in view of Kiyomiya and Akiyama render obvious the heat storage materials as set forth in claim 42 above. Kaneko further teaches the granular and block molded shapes of the core material include spherical and pellet shapes ([0012]; see also FIGs 1 and 2).
Regarding claim 44, Kaneko in view of Kiyomiya and Akiyama render obvious the heat storage materials as set forth in claim 42 above. As noted above Kaneko teaches a preferred core material to be paraffins, barium hydroxides and the like ([0010]; pg3,top)(instant organic or inorganic salts).
Regarding claims 45 and 49, Kaneko in view of Kiyomiya and Akiyama render obvious the heat storage materials as set forth in claims 30 and 42 above. Kaneko further teaches the size of the shaped core material may be appropriately selected as desired but is preferably in the range of several millimeters to several tens of millimeters ([0012])(several tens of mm readable over instant ‘approximately 1-2 in’).
It is further noted that per the teachings of Kaneko that the size of the core material is a result-effective variable that could be optimized. At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the core size and would have been motivated to do so in order to readily obtain a heat storage material of suitable size to fill the end use heat storage device (pg4) (see: In re Aller, 105 USPQ 233; In re Boesch and Slaney, 205 USPQ 215); and MPEP 2144.05).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 30-49 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,732,171. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant application and the granted patent are directed to substantially similar phase change material pellets (instant claims 30-41 and 49; to granted patent claims 1-12 and 21) and metal plated thermal storage objects (instant claims 42-48; to granted patents claims 13-20) comprising a phase change material core having an internal void, a polymer coating, and a first and a second metal layer, comprising substantially the same materials and having the substantially the same size recitations, and the metal layers obtained via substantially the same product-by-process methods.
The claims of the granted patent differ from the instant application only with respect to the instant polymer recitation of a flexible, nonreactive, permeable polymer which is dependently claimed as being selected from PTFE, FEP, PFA, polyimide or PVDF (granted patent recites only ‘polymer coating’). However, it is noted that case law holds that those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent (see In re Vogel, 422 F.2d 438, 164 USPQ 619,622 (CCPA 1970)). Therefore, it would have been obvious to one of ordinary skill in the art to select a flexible, non-reactive, permeable polymer of PTFE, FEP, PFA, polyimide or PVDF (as described by the granted patent: col 3 ln 59 to col 4 ln 30), as an obvious variant of the ‘polymer’ coating like presently claimed in the granted patent, as claimed by the instant application.
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.
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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JANE L STANLEY/ Primary Examiner, Art Unit 1767