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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submissions filed on 05/14/2025 (arguments) and 09/02/2025 (arguments and amendments) have been entered.
This action is responsive to Applicant’s request for continued examination and arguments filed 05/14/2025 and amendments/arguments filed 09/02/2025.
Claims 1-19 are currently pending.
Response to Amendment
The rejection on the grounds of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11,891,561 as previously set forth on pages 3 to 4 of the Final Office action mailed 03/05/2025 is maintained for the reasons and rationale previously specified.
The objection of claim 11 is withdrawn in view of the above amendment.
The rejection of claims 14-19 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the above amendment.
The 102 rejection of claim 1 over Gilbey et al. (GB 2,179,135 A) as previously set forth on pages 6 to 7 of the Final Office action mailed 03/05/2025 is maintained for the reasons and rationale previously specified.
The 103 rejections of: 1) claims 2-6 over Gilbey et al. (GB 2,179,135 A) and further in view of Sasvari et al. (“The crystal structure of magnesium chloride dodecahydrate, MgCl2-12H2O”, Acta Cryst., 1966, 20, 875) or N’Tsoukpoe et al. (“A review on the use of calcium chloride in applied thermal engineering”, Applied Thermal Engineering 75, 2015, 513-531), 2) claims 7-11 over Gilbey et al. (GB 2,179,135 A) in view of Moldovan et al. (US 4,008,309 A) or Erling (US 1,816,285 A), and 3) claim 12 over Gilbey et al. (GB 2,179,135 A) in view of Moldovan et al. (US 4,008,309 A) or Erling (US 1,816,285 A) and further in view of Sasvari et al. (“The crystal structure of magnesium chloride dodecahydrate, MgCl2-12H2O”, Acta Cryst., 1966, 20, 875) or N’Tsoukpoe et al. (“A review on the use of calcium chloride in applied thermal engineering”, Applied Thermal Engineering 75, 2015, 513-531) as previously set forth among pages 8 to 13 of the Final Office action mailed 03/05/2025 is maintained for the reasons and rationale previously specified.
The 103 rejections of: 1) claims 1 and 6 over Czarnecki et al. (US 6,083,418) in view of Glausch et al. (US 2005/0167633), 2) claims 2-5 over Czarnecki et al. (US 6,083,418) in view of Glausch et al. (US 2005/0167633) and further in view of Sasvari et al. (“The crystal structure of magnesium chloride dodecahydrate, MgCl2-12H2O”, Acta Cryst., 1966, 20, 875) or N’Tsoukpoe et al. (“A review on the use of calcium chloride in applied thermal engineering”, Applied Thermal Engineering 75, 2015, 513-531), and 3) claims 7-12 over Czarnecki et al. (US 6,083,418) in view of Glausch et al. (US 2005/0167633) and further in view of Moldovan et al. (US 4,008,309 A) or Erling (US 1,816,285 A) as previously set forth among pages 13 to 21 of the Final Office action mailed 03/05/2025 is maintained for the reasons and rationale previously specified.
For purposes of brevity (or else this Office action would span at least ten additional pages) the precise rationale of the maintained grounds of rejection will not be re-stated in this Office action. Please see the above-indicated pages of the Final Office action mailed 03/05/2025 for the reasons and rationale of the maintained rejections(s). The maintained rejections and their rationale are incorporated herein in their entirety.
Response to Arguments
Applicant's arguments filed 05/14/2025 and 09/02/2025 have been fully considered but they are not persuasive.
Regarding the double patenting rejection over the claim(s) of U.S. Patent No. 11,891,561 Applicant states they have filed a terminal disclaimer to obviate the rejection. However, contrary to this statement a terminal disclaimer has not been submitted. Thus, the rejection is maintained.
Regarding the 102 rejection over Gilbey et al. (GB 2,179,135 A) Applicant argues Gilbey et al.’s composition comprises a magnesium nitrate hexahydrate of 70-98% which is far higher than is disclosed in the present claims. Applicant further argues the present claims only requires heating until the calcium nitrate tetrahydrate is molten which occurs at a temperature of 43°C or lower while Gilbey et al. heats their material to at least 70°C to melt their material. Applicant further argues the purpose of Gilbey et al.’s magnesium nitrate hexahydrate dramatically affects the conditions required to produce a molten liquid form of the material as Gilbey et al. uses their magnesium nitrate as a bulk component while the present claims use magnesium nitrate as an additive specifically a nucleation promoter.
In response, these arguments are not persuasive firstly because the features upon which Applicant relies (i.e., concentration(s) or maximum heating temperature(s)) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Despite Applicant’s arguments, Gilbey et al. teach and anticipate each and every limitation actually recited in the rejected claim. Gilbey et al. teach a method of using the heat storage medium to store and release heat by heating the heat storage medium above its fusion temperature to release heat and then exposing the heat storage medium to and crystallize the heat storage medium (page 1 lines 63 to 78). See also page 1 lines 5-9, 31-39, and 79-83. This operation reads on a method of combining a 1) metal nitrate component comprising calcium nitrate tetrahydrate formed from anhydrous calcium nitrate or one or more hydrates of calcium nitrate with water in a sufficient amount such that all of the calcium nitrate present in the PCM composition consists essentially of calcium nitrate tetrahydrate (the disclosed calcium nitrate tetrahydrate compound reads on this component and formation limitations thereof as it is present as calcium nitrate tetrahydrate, Id.) with 2) a nucleation agent consisting essentially of a hydrate of magnesium nitrate (the disclosed magnesium nitrate hexahydrate compound reads on this component) wherein at least one of the metal nitrate component and nucleation agent are heated to a temperature above a melting transition temperature of the metal nitrate component and as a single pourable liquid (the composition is heated above its fusion temperature during operation, Id.), and wherein the PCM composition consists essentially of the metal nitrate component and the nucleation agent (the calcium nitrate tetrahydrate and magnesium nitrate hexahydrate, respectively, Id.).
Regarding the Applicant’s concern that Gilbey et al.’s magnesium nitrate hydrate is a bulk component while the claimed magnesium nitrate hydrate is an additive, this is merely an argument to the intent of the component(s) or even broadly to a difference in terminology of how the component(s) is/are named, neither of which patentably distinguishes the claimed component(s) over the reference’s component(s). The fact of the matter is that Gilbey et al. teach combining calcium nitrate tetrahydrate (reading on the claimed metal nitrate component) and magnesium nitrate hexahydrate (reading on the claimed nucleation agent consisting essentially of a hydrate of magnesium nitrate) under conditions heated to a temperature above a melting transition temperature of the calcium nitrate tetrahydrate/metal nitrate component as required by the claims. Any difference between the terminology or the intent of a claimed component versus the prior art component is immaterial as the reference teaches the same structure(s) and process step(s)/condition(s) recited in the claims.
Regarding the 103 rejection over Gilbey et al. (GB 2,179,135 A) and further in view of Sasvari et al. (“The crystal structure of magnesium chloride dodecahydrate, MgCl2-12H2O”, Acta Cryst., 1966, 20, 875) or N’Tsoukpoe et al. (“A review on the use of calcium chloride in applied thermal engineering”, Applied Thermal Engineering 75, 2015, 513-531) Applicant argues the Sasvari et al. and N’Tsoukpoe et al. references are allegedly limited to materials consisting of only one salt where the hydration states are controlled and there is no disclosure in either reference of systems comprising multiple salts as in the present claims where calcium nitrate is combined with magnesium and/or strontium nitrate and/or hydrate forms thereof.
In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant is also essentially arguing limitations that are not claimed. See In re Van Geuns (Id.).
In the rejection of record, Sasvari et al. and N’Tsoukpoe et al. are merely relied upon to meet limitations (specifically the limitations in 2 and 5 and some of the limitations in claim 6) describing how the calcium nitrate tetrahydrate/metal nitrate component is formed. The limitations met by the cited teachings of Sasvari et al. and N’Tsoukpoe et al. are drawn to how the calcium nitrate tetrahydrate/metal nitrate component is formed, synthesized, or sourced individually prior to the recited combining step where the metal nitrate component and nucleation agent are then combined/heated and do not require a multi-salt system as alleged. Gilbey et al. meets the limitations drawn to a multi-salt system and Sasvari et al. and N’Tsoukpoe et al. meet the limitations drawn to how the calcium nitrate tetrahydrate/metal nitrate component could obviously be formed, synthesized, or sourced individually prior to Gilbey et al.’s process/invention. At the time of the effective filing date it would have been obvious to a person of ordinary skill in general chemistry to provide, partially work-up, and/or obtain Gilbey et al.’s component(s) by any means known or implied to said person of ordinary skill in the art, such as making the calcium nitrate tetrahydrate component from other hydrated forms of calcium nitrate (anhydrous calcium nitrate, calcium nitrate hexahydrate, etc.), e.g., via the teachings of Sasvari et al. or N’Tsoukpoe et al., with a reasonable expectation of success.
Regarding the 103 rejection over Gilbey et al. (GB 2,179,135 A) in view of Moldovan et al. (US 4,008,309 A) or Erling (US 1,816,285 A) Applicant similarly argues the Moldovan et al. and Erling references allegedly disclose crystallization of calcium nitrate tetrahydrate from a mixed nitrate-phosphate solution to produce a pure calcium nitrate tetrahydrate and do not teach, suggest, or aim to include another salts (i.e., the claimed nucleation agents) in the crystallized mass.
Similar to Applicant’s regarding the Sasvari et al. and N’Tsoukpoe et al. references (Id.), in response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller and In re Merck & Co. (Id.).
In the rejection of record, Moldovan et al. and Erling, like Sasvari et al. and N’Tsoukpoe et al. (Id.), are merely relied upon to meet limitations describing how one or more of the metal nitrate(s) and/or hydrate(s) is/are formed. The limitations met by the cited teachings of Moldovan et al. and Erling are drawn to how the calcium nitrate tetrahydrate/metal nitrate component is formed, synthesized, or sourced individually prior to the recited combining step where the metal nitrate component and nucleation agent are then combined/heated. Gilbey et al. meets the limitations drawn to the combination/combining of certain metal nitrate(s) and hydrate(s) and Moldovan et al. and Erling meet the limitations drawn to how a single one of the metal nitrate(s) and/or hydrate(s) could obviously be formed, synthesized, or sourced individually prior to Gilbey et al.’s process/invention. At the time of the effective filing date it would have been obvious to a person of ordinary skill in general chemistry to provide, partially work-up, and/or obtain Gilbey et al.’s component(s) by any means known to said person of ordinary skill in general chemistry, such as making the calcium nitrate tetrahydrate component by reacting a precursor basic metal salt with nitric acid, e.g., via the teachings of Moldovan et al. or Erling, with a reasonable expectation of success.
Regarding the 103 rejection over Gilbey et al. (GB 2,179,135 A) in view of Moldovan et al. (US 4,008,309 A) or Erling (US 1,816,285 A) and further in view of Sasvari et al. (“The crystal structure of magnesium chloride dodecahydrate, MgCl2-12H2O”, Acta Cryst., 1966, 20, 875) or N’Tsoukpoe et al. (“A review on the use of calcium chloride in applied thermal engineering”, Applied Thermal Engineering 75, 2015, 513-531) Applicant argues claim 12 is patentable because claim 1 is patentable over the prior art and Moldovan et al., Erling, Sasvari et al., and/or N’Tsoukpoe et al. fail to cure the defects of Gilbey et al.
In response, these arguments are not persuasive because claim 1 is not patentable over the prior art for the reasons of record and/or set forth above and Moldovan et al., Erling, Sasvari et al., and/or N’Tsoukpoe et al. indeed cure any defects of Gilbey et al. for the reasons of record and/or set forth above.
Regarding the 103 rejections of claims 1-12 over or based on Czarnecki et al. (US 6,083,418) in view of Glausch et al. (US 2005/0167633) Applicant argues the teachings of Czarnecki et al. and Glausch et al. fail to teach or suggest all of the Applicant’s recited limitations because, as alleged noted in Applicant’s arguments in the present application’s parent application, nucleation agents for one salt hydrate cannot be expected to be effective nucleation agents for a different salt hydrate.
In response, this argument is confusing because the Office is unsure what exact arguments are being made from the parent application. No precise citation is given. Also, the present application contains different limitations than the parent application and any previously made arguments do not necessarily apply to the different instant set of claims. As required by 37 CFR 1.111, an applicant’s reply must specifically point out the supposed errors in the Examiner’s action by presenting arguments pointing out the specific distinctions believed to render the claims patentable over any applied references, which is not met by the Applicant’s statement broadly citing the parent application.
Arguendo, this argument is not persuasive because the rejection of record relies on and provides Glausch et al.’s straightforward teaching that a mixture of magnesium nitrate/strontium nitrate and hydrates thereof is/are suitable nucleating agents intended for preventing supercooling in hydrated salt-based, e.g., hydrated nitrate salt-based, phase change materials (PCMs) as the nucleating agent of Czarnecki et al.’s calcium nitrate tetrahydrate, i.e., hydrated nitrate salt-based, PCM and method of making thereof in order to obtain a PCM having a nucleating agent that prevents supercooling and aids solidification of the PCM with a reasonable expectation of success. Note that absolute predictability is not a necessary prerequisite to a case of obviousness; rather, a degree of predictability that one of ordinary skill would have found to be reasonable is sufficient. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.). See MPEP 2144.07.
Applicant further argues the claims are not restricted to an alleged requirement in Czarnecki et al. that additional water is present or can be added and that there is no possibility to tune the water content to arrive at hydrate forms of the nucleation agent to result in good nucleation according to the present claims. Applicant is also concerned that Czarnecki et al. could be rendered inoperative if a low hydration state or anhydrous nucleation agent is needed.
In response, these arguments are not persuasive firstly because some of the features upon which Applicant relies are not recited in the rejected claim(s). It is also unclear what Applicant specifically means by “good nucleation”; nevertheless, “good nucleation” or some alleged requirement of tuning the water content to obtain “good nucleation” are not recited in the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns (Id.). Additionally, please note the open-ended “comprising” language of the claims which do not limit the claims from containing additional components the reference(s) might require. Applicant appears to have a narrower interpretation of the claims than what is presently recited.
Regarding Applicant’s concern of an alleged inoperability, first note that the cited Czarnecki et al. reference is an issued patent. Every patent is presumed valid (35 U.S.C. 282), and that presumption includes the presumption of operability. Metropolitan Eng. Co. v. Coe, 78 F.2d 199, 25 USPQ 216 (D.C. Cir. 1935). Furthermore, when a reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable. Once such a reference is found, the burden is on applicant to rebut the presumption of operability. In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980). Applicant’s assumption with no evidence that some teachings of Czarnecki et al. could not be practiced and render the reference inoperable do not rise to any sort of a level sufficient to meet the high burden that reference is (or even could be) inoperable.
Applicant further argues Glausch et al. does not disclose a PCM comprising a combination of calcium nitrate tetrahydrate with a nucleation agent comprising magnesium nitrate, strontium nitrate, and/or any hydrates thereof, let alone a PCM comprising any calcium nitrate tetrahydrate as claimed. Applicant further argues that Glausch et al. discloses a PCM comprising lithium nitrate trihydrate which is allegedly specifically excluded from the present claims.
In response to Applicant's arguments against Glausch et al. individually rather than the combination of Czarnecki et al. in view of Glausch et al., one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller and In re Merck & Co. (Id.). Glausch et al. is a secondary reference relied upon for its teachings to certain nitrate nucleating agents applied as Czarnecki et al.’s nucleating agent in their calcium nitrate tetrahydrate-containing PCM. See the rejection of record. Additionally, the argument regarding lithium nitrate trihydrate being specifically excluded from the present claims is not persuasive because the rejected claims recite no such limitation. Please also note the open-ended “comprising” language of the claims which do not limit the claims from containing additional components.
Applicant further argues claims 1-12 are patentable for the reasons previously discussed with regard to Gilbey et al. that Sasvari et al., N’Tsoukpoe et al., Moldovan et al., and/or Erling fail to cure the defects of Czarnecki et al. combined with Glausch et al.
In response, this argument is not persuasive because Sasvari et al., N’Tsoukpoe et al., Moldovan et al., and/or Erling indeed cure any defects of Czarnecki et al. in view of Glausch et al. for the reasons of record.
Accordingly, the rejections have been maintained for the reasons of record.
Allowable Subject Matter
Claims 13-19 would be allowable if the nonstatutory double patenting over claim 7 of U.S. Patent No. 11,891,561 was properly addressed. A statement of reasons for the indication of allowable subject matter is already of record and set forth on pages 21 to 24 of the Final Office action mailed 03/05/2025.
The remaining references listed on Forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon above or described in the statement of reasons for the indication of allowable subject matter of record.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
September 22, 2025