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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5 August, 2026 is being considered by the examiner.
Response to Amendment
This Final Office Action is in response to Applicant’s Remarks/Amendments filed 23 July, 2026. The amendments have been entered.
Disposition of Claims
Claims 1-10 are pending.
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over KAWAGUCHI (US 2019/0204031 A1 – published 4 July, 2019), in view of MIYAIRI (US 2019/0339024 A1 – published 7 November, 2019).
As to claim 1, KAWAGUCHI discloses a heat exchanger (20; figure 14-15) comprising:
a first flow path through which a first fluid can flow (par. 70; figures 14-15); and
a second flow path through which a second fluid can flow (par. 60; figures 14-15), the second flow path having an annular flow path portion (24; par. 71) extending along an axial direction of the first flow path on an outer peripheral side of the first flow path (figure 15, in view of axial extension in figure 14);
wherein a honeycomb structure (1; par. 30-31 and 69; figures 14-15) having an outer peripheral wall (8; figures 1-2; par. 31) and partition wall (5a; par. 31 and 33) disposed on an inner side of the outer peripheral wall (figure 1 and 2), the partition walls defining a plurality of cells (4; par. 32) each extending from a first end face (2 or 3) to a second end face (2 or 3), is housed in the first flow path (par. 31 and figures 1-2).
However, KAWAGUCHI provides wherein the heat exchanger is used for heat storage (par. 43), but does not disclose wherein a heat storage material is retained in some of the cells of the honeycomb structure.
MIYAIRI is within the field of endeavor provided a heat exchanger (abstract) comprising a honeycomb structure (1(20); par. 50) having an outer periphery wall (figure 3) and partition walls (23), with heat storage material (i24i) retained in some of the cells (par. 73). Particularly, MIYAIRI teaches the purpose enables recovery and storage of waste heat that can be used at a later time (par. 132), in an effective manner (par. 5). Therefore, it would have been obvious to one having ordinary skill within the art, prior to the date the invention was effectively filed, to modify KAWAGUCHI, in view of MIYAIRI, to include the heat storage material, as claimed, for these reasons.
As to claim 2, KAWAGUCHI, as presently modified by MIYAIRI, provides the claimed invention, except the heat storage material is filled in the cells.
MIYAIRI further teaches wherein the heat storage material is filled in the cells (figures 3-4; par. 73). Again, MIYAIRI teaches the purpose enables recovery and storage of waste heat that can be used at a later time (par. 132), in an effective manner (par. 5). Therefore, it would have been obvious to one having ordinary skill within the art, prior to the date the invention was effectively filed, to modify KAWAGUCHI, in view of MIYAIRI, to include the heat storage material, as claimed, for these reasons.
As to claim 3, KAWAGUCHI, as presently modified by MIYAIRI, provides the claimed invention, except the cells filled with the heat storage material are plugged on the first end face side and the second end face side.
MIYAIRI further teaches wherein the cells filled with the heat storage material are plugged (via element, 27) on the first end face side (21a or 21b; par. 84; figures 3-4) and the second end face side (21a or 21b; par. 84; figures 3-4). Again, MIYAIRI teaches the purpose enables recovery and storage of waste heat that can be used at a later time (par. 132), in an effective manner (par. 5). Therefore, it would have been obvious to one having ordinary skill within the art, prior to the date the invention was effectively filed, to modify KAWAGUCHI, in view of MIYAIRI, to include the cells filled with the heat storage material, as claimed, for these reasons.
As to claim 4, KAWAGUCHI, as presently modified by MIYAIRI, provides the claimed invention, except wherein a ratio of the cells having the retained heat storage material to all the cells of the honeycomb structure is 10% or more.
MIYAIRI, however, further teaches wherein the ratio of the cells having the retained heat storage material (113 cells as shown in figure 3) to all the cells (144 cells total, wherein 31 cells are without heat storage material, in view of the cells not being plugged, via element 27) of the honeycomb structure is 10% or more (based on the ratio of
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, which provides the ratio at 78%). Again, MIYAIRI teaches the purpose enables recovery and storage of waste heat that can be used at a later time (par. 132), in an effective manner (par. 5). Therefore, it would have been obvious to one having ordinary skill within the art, prior to the date the invention was effectively filed, to modify KAWAGUCHI, in view of MIYAIRI, to include the cells with heat storage material and cells without heat storage material in the ratio, as claimed, for these reasons.
As to claim 5, KAWAGUCHI, as presently modified by MIYAIRI, provides the claimed invention, except wherein the heat storage material is a latent heat storage material and/or a sensible heat storage material.
MIYAIRI, however, further teaches wherein the heat storage material is a latent heat storage material and/or a sensible heat storage material (par. 97-98). Again, MIYAIRI teaches the purpose enables recovery and storage of waste heat that can be used at a later time (par. 132), in an effective manner (par. 5). Therefore, it would have been obvious to one having ordinary skill within the art, prior to the date the invention was effectively filed, to modify KAWAGUCHI, in view of MIYAIRI, to include the heat storage material, as claimed, for these reasons.
As to claim 6, KAWAGUCHI, as presently modified by MIYAIRI, further discloses wherein the honeycomb structure further comprises an inner peripheral wall (5a), and the honeycomb structure is a hollow honeycomb structure having the partition walls between the inner peripheral wall and the outer peripheral wall (see annotated figures 2-3).
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Annotated Figures 2-3 of KAWAGUCHI
Claim(s) 7-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over KAWAGUCHI (US 2019/0204031 A1 – published 4 July, 2019), in view of MIYAIRI (US 2019/0339024 A1 – published 7 November, 2019) and MOSER (US 2014/0041361 A1)
As to claim 7, KAWAGUCHI, as presently modified by MIYAIRI, further discloses:
wherein the first flow path is branched into two portion (flow into different cells would cause branched flow of the first fluid in the first flow path),
wherein the structure is housed in one branched first flow path, and the second flow path is provided on an outer peripheral side of the one branched flow path (figures 14-15).
However, KAWAGUCHI does not further disclose wherein the heat exchanger further comprises a valve capable of switching the flow of the first fluid into the one branched first flow path or other branched first flow path.
MOSER is within the field of endeavor provided a heat exchanger (22; 22b; par. 84 and 97). MOSER teaches the heat exchanger including a branched flow path (figure 13A-13B) and a valve (716) capable of switching(MPEP § 2114 – II, wherein the limitation is merely a manner of operation of the valve, which MOSER provides full capability thereof, in view of par. 97-98) the flow of the first fluid to the one branched first flow path(figure 13A flow path through at least tubes, 644) or other branched flow first flow path (figure 13B flow path through at least tube, 710). MOSER provides the valve is included to route the fluid based on temperature of the fluid to provide intended heat transfer among different fluids or prevent any further increase in temperature of fluid (par. 92 and 98). Therefore, it would have been obvious to one having ordinary skill within the art, prior to the date the invention was effectively filed, to modify KAWAGUCHI, in view of MOSER, to include the valve, as claimed, for these reasons.
As to claim 8, KAWAGUCHI, as presently modified by MAYAIRI and MOSER, does not further disclose the requirements of the claim.
MOSER, however, further teaches a control unit (par. 75) capable (MPEP § 2114 – II, wherein the BRI of the claim only requires capability of the control unit to perform the claimed function, as it is not specifically “configured” to carry out the control scheme claimed) controlling the valve to a heat recovery mode where heat recovery is performed by switching the flow of the first fluid to the one branched first flow path (figure 13a; par. 97-98), and a non-heat recovery mode where heat recovery is not performed by switching the flow of the first fluid to the other branched first flow path (figures 13b; par. 97-98). MOSER provides the valve, controllable to actuate in a particular manner to shift the flow of the fluid within the heat exchanger (par. 75), is included to route the fluid based on temperature of the fluid to provide intended heat transfer among different fluids or prevent any further increase in temperature of fluid (par. 92 and 98). Therefore, it would have been obvious to one having ordinary skill within the art, prior to the date the invention was effectively filed, to modify KAWAGUCHI, in view of MOSER, to include the valve, as claimed, for these reasons.
As to claim 9, KAWAGUCHI, as presently modified by MAYAIRI and MOSER, further discloses wherein the first flow path is configured to have a first circulation route in which the first fluid can flow through the cells of the honeycomb structure (figure 1 and annotated figures 2-3, in view of par. 31), and a second circulation route in which the first fluid can flow through the interior of the inner peripheral wall of the honeycomb structure (figure 1 and annotated figures 2-3, in view of par. 31).
However, KAWAGUCHI does not further disclose wherein the heat exchanger further comprises a valve capable of switching the flow of the first fluid to the first circulation route or the second circulation rout by controlling the flow of the first fluid in the second circulation route.
MOSER is within the field of endeavor provided a heat exchanger (22; 22b; par. 84 and 97). MOSER teaches the heat exchanger including a first circulation route (figure 13A flow path through at least tubes, 644) and a second circulation route (figure 13B flow path through at least tube, 710). More so, MOSER teaches a valve (716) capable of switching(MPEP § 2114 – II, wherein the limitation is merely a manner of operation of the valve, which MOSER provides full capability thereof, in view of par. 97-98) the flow of the first fluid to the first circulation route(figure 13A flow path through at least tubes, 644) or the second circulation route (figure 13B flow path through at least tube, 710) by controlling the flow of the first fluid in the second circulation route (closing off the flow directly into the second circulation route). MOSER provides the valve is included to route the fluid based on temperature of the fluid to provide intended heat transfer among different fluids or prevent any further increase in temperature of fluid (par. 92 and 98). Therefore, it would have been obvious to one having ordinary skill within the art, prior to the date the invention was effectively filed, to modify KAWAGUCHI, in view of MOSER, to include the valve, as claimed, for these reasons.
As to claim 10, KAWAGUCHI, as presently modified by MAYAIRI and MOSER, does not further disclose the requirements of the claim.
MOSER, however, further teaches a control unit (par. 75) capable (MPEP § 2114 – II, wherein the BRI of the claim only requires capability of the control unit to perform the claimed function, as it is not specifically “configured” to carry out the control scheme claimed) controlling the valve to a heat recovery mode where heat recovery is performed by switching the flow of the first fluid to the one branched first flow path (figure 13a; par. 97-98), and a non-heat recovery mode where heat recovery is not performed by switching the flow of the first fluid to the other branched first flow path (figures 13b; par. 97-98). MOSER provides the valve, controllable to actuate in a particular manner to shift the flow of the fluid within the heat exchanger (par. 75), is included to route the fluid based on temperature of the fluid to provide intended heat transfer among different fluids or prevent any further increase in temperature of fluid (par. 92 and 98). Therefore, it would have been obvious to one having ordinary skill within the art, prior to the date the invention was effectively filed, to modify KAWAGUCHI, in view of MOSER, to include the valve, as claimed, for these reasons.
Response to Arguments
Applicant's arguments filed 23 July, 2026 have been fully considered but they are not persuasive.
At pages 3-4, Applicant argues, “there would have been no reason for a person of ordinary skill in the art to have considered modifying Kawaguchi based on the teachings of Miyairi, because that person would have recognized that the heat exchanger disclosed in Kawaguchi is completely different from the heat storage system disclosed in Miyairi, both in structure and function” and “In view of the above, a person of ordinary skill in the art would have had no reason to consider modifying Kawaguchi based on the teachings of Miyairi, as asserted by the Examiner, because there is nothing in the record to teach or suggest that (i) the heat storage material disclosed in Miyairi is intended to be used only as a heat storage material through one-way direct transfer of heat; and (ii) the heat exchanger disclosed in Kawaguchi could have been modified in a way that would have been modified in a way that would have allowed the heat transfer material to function by reversible two-way indirect heat transfer of heat as explicitly intended by Miyairi.
First, "It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements." In re Mouttet, 686 F.3d 1322, 1332, 103 USPQ2d 1219, 1226 (Fed. Cir. 2012) (citing In re Etter, 756 F.2d 852, 859, 225 USPQ 1, 6 (Fed. Cir. 1985) (en banc)). See also In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981) ("The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art."); In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review."); and In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973) ("Combining the teachings of references does not involve an ability to combine their specific structures."). See MPEP § 2145 – III. As such, differences in structures between the references relied upon, KAWAGUCHI and MIYAIRI, do not prevent a determination of obviousness being made, as the requirement of making a prima facie case of obviousness does not hinge on physical combinability of the prior art references, but rather what would have been suggested to a person having ordinary skill in the art.
Second, to make a determination of obviousness, there is no requirement that a determination of whether or not a secondary reference(i.e., modifying reference) operates as the primary reference(i.e., reference being modified), allegedly, operates. See MPEP §2143. See MPEP §2143.01 – V and §2143.01 – VI, where proposed modifications cannot render a primary reference unsatisfactory for its intended purpose or change the principle of operation of a primary reference. Further, looking at the evidence of record, consistent with the teachings of KAWAGUCHI, the first fluid can be various liquids or gases that may be at a high temperature, but is exemplified as exhaust gas (see par. 3, 31, and 77 of KAWAGUCHI) and the second fluid is not limited, but is exemplified as water or antifreezing solution (see par. 3 and 77). Such that heat is dissipated from the first fluid flowing within the cells, 4, towards the second fluid flowing within pathway, 24. However, such is not direct heat transfer, specifically, as exemplified by a catalyst being supported on the partitions walls (par. 53), such that the heat transfer occurs through the catalyst prior to transferring through the partition walls, 5a, and the outer wall, 8. For this, the argument of “direct transfer of heat” by KAWAGUCHI is inaccurate. In arguendo, if KAWAGUCHI were to teach the partitions without supporting the catalyst thereon, providing teachings of heat transfer, via methods as taught by MIYAIRI to include a heat storage material along some of the cells, would not change the manner of operation of KAWAGUCHI nor would it render KAWAGUCHI unsatisfactory for its intended purpose. KAWAGUCHI would remain operating by transferring heat from one fluid of higher temperature to another fluid of lower temperature, but would include the feature of heat storage, acknowledged by KAWAGUCHI (see par. 43 of KAWAGUCHI), to occur by housing a heat storage material within some of the cells.
Lastly, Applicant alleges the rejections do not provide KAWAGUCHI could have been modified in a way that would have allowed the heat transfer material to function by reversible two-way indirect heat as explicitly intended by MIYAIRI. However, based on the record, KAWAGUCHI teaches indirect heat transfer. More so, KAWAGUCHI is not being modified to include two-way reversible heat transfer, but rather the inclusion of a heat storage material retained in some of the cells of the honeycomb structure. Applicant does not present evidence or other reasons to suggest why such teachings(i.e., cells, 4, being suggested to include a heat storage material within some of the cells) would not have been obvious to one having ordinary skill within the art to modify KAWAGUCHI. Modifying KAWAGUCHI to include the heat storage material along some of the cells of the honeycomb structure does not require KAWAGUCHI to include this function or be modified to include this function. See Non-Final Rejection mailed 24 April, 2026 at page 3. Even if a prima facie obviousness rejection were to require features not relied upon to modify a primary prior art reference, heat exchangers in general are capable of being driven with heat transferring in different ways based on which fluid is higher in temperature and which fluid is lower in temperature. Nothing on the record prevents KAWAGUCHI from providing the lower temperature fluid flowing within the cells,4, and the higher temperature fluid flowing within the channel, 24, as KAWAGUCHI expressly states the first and second fluids are not particularly limited (par. 77).
For these reasons, the arguments are not persuasive, and the claims remain rejected as presented within the Non-Final Office Action mailed 24 April, 2026 and maintained herein.
Inquiry
THIS ACTION IS MADE FINAL. 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.
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/LEN TRAN/Supervisory Patent Examiner, Art Unit 3763
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