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 with traverse of Group I, Species 1 (claims 1-13) in the reply filed on 11/17/25 is acknowledged.
The traversal is on the grounds that there is not a serious burden on the examiner if restriction is not required to examiner Group II (claims 14-17) and Species 2 (claims 18-20) because Species 1 and Species 2 both relate to determining a thermal conductivity of a sample and it is necessary to measure both time and temperature for any thermal conductivity measurement, and the Examiner will already be needing to perform a search for phase change material-based thermal conductivity measurements.
However, applicant’s traversal is not found persuasive because the species are independent or distinct because the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries) since Species 1 is drawn to determining thermal conductivity based on a temperature measurement, whereas Species 2 is drawn to determining thermal conductivity based on steps for shaping a first and a second phase change material based on their different melting points and time.
Therefore, the characteristics of determining thermal conductivity based on a temperature measurement and determining a thermal conductivity based on shaping a first and a second phase change material based on their different melting points and time are mutually exclusive characteristics between Species 1 and 2.
Applicant’s arguments with respect to Group II (claims 14-17) are persuasive. Therefore, claims 18-20 are withdrawn as being non-elected, and the restriction requirement with respect to Group II is withdrawn and claims 14-17 are being examined for patentability.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 13 is objected to because of the following informalities:
In claim 13, “first” should be changed to --second-- in line 5.
Appropriate correction is required.
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.
Claims 1, 2, and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SU1557502 to Ki (see the translation in the IDS filed 3/18/25).
Referring to claim 1, Ki discloses a method (paragraphs 1, 2, 7, 12, 16, 17, 25, 29) of determining a thermal conductivity of a sample (4), comprising:
controlling a thermal source (3) to increase a temperature of the thermal source (3) to an elevated temperature above a phase change temperature (melting point) of a phase change material (7) (above a melting point of the phase change material);
placing the sample (4) between and in thermal contact with the phase change material (7) at an initial temperature below (below the melting point of the phase change material (7) so it is a solid) the phase change temperature (melting point) and the thermal source (3) at the elevated temperature to allow a thermal conduction from the thermal source (3) to the phase change material (7) through the sample (4) to increase the initial temperature of the phase change material (7) to the phase change temperature (melting point) to cause the phase change material (7) to transition from a first phase (solid) to a second phase (liquid) at the phase change temperature (melting point);
performing a measurement (using heat flux sensor (1)) on at least one of the sample or the phase change material; and
determining the thermal conductivity of the sample based on the measurement (paragraph 16).
Referring to claim 2, Ki discloses a method having all of the limitations of claim 2, as stated above with respect to claim 1, wherein in Ki, the phase change material (7) maintains the phase change temperature (melting point) for a first phase transition period (the time it takes it to melt from a solid to a liquid) to transition from the first phase (solid) to the second phase (liquid) (there must be a period of time for the solid to turn into a liquid).
Referring to claim 4, Ki discloses a method having all of the limitations of claim 4, as stated above with respect to claim 1, wherein Ki discloses the shape of the phase change material (7) being shaped to conform to a shape of the sample (4) (figure) (which ensures good thermal contact with the sample and accuracy in determining the thermal conductivity of the sample because they have similar thermal contact surface area).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ki (see the translation in the IDS filed 3/18/25).
Referring to claim 5, Ki discloses a method having all of the limitations of claim 5, as stated above with respect to claim 1, except for the phase change material having a curved shape to conform to a curved shape of the sample to ensure good thermal contact with the sample and accuracy in determining the thermal conductivity of the sample.
However, Ki discloses the shape of the phase change material (7) being shaped to conform to a shape of the sample (4) (figure) (which ensures good thermal contact with the sample and accuracy in determining the thermal conductivity of the sample because they have similar thermal contact surface area).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ki by having the phase change material have a curved shape in order to conform to a curved shape of a curved sample to ensure good thermal contact with a curved sample and accuracy in determining the thermal conductivity of the curved sample (which Ki suggests is desirable); and since the shape of the phase change material and the sample claimed by the applicant are only considered to be obvious modifications of the shape or configuration of the phase change material and the sample disclosed by Ki as the courts have held that a change in shapes or configurations without any criticality is within the level of skill in the art since the particular shapes claimed are nothing more than one of numerous shapes that a person having ordinary skill in the art would have been able to provide using routine experimentation based on its suitability for the intended use of the invention. See In re Dailey, 149 USPQ 47 (CCPA 1976).
Claims 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Ki in view of U.S. Patent Application Publication 2025/0224354 to Ros et al [hereinafter Ros].
Referring to claim 14, Ki discloses a system (paragraphs 1, 2, 7, 12, 16, 17, 25, 29) of determining a thermal conductivity of a sample (4), comprising:
a first phase change material (7) configured to transition from a first phase (solid) to a second phase (liquid) at a phase change temperature (melting point);
a thermal source (3) configured to maintain a constant temperature (can if so desired by a user) higher than the phase change temperature (melting point), wherein the phase change material (7) and the thermal source (3) are placed on different sides of the sample (4) to allow a thermal conduction from the thermal source (3) to the phase change material (7) and cause the phase change material (7) to transition from the first phase (solid) to the second phase (liquid); and
one or more sensors (1) coupled to the phase change material (7) and configured to perform a measurement on at least one of the sample or the phase change material (figure);
wherein the system is configured to determine the thermal conductivity of the sample based on at least the measurement on the at least one of the sample or the phase change material (paragraph 16).
Ki does not explicitly disclose a processor coupled to the one or more sensors and configured to determine the thermal conductivity of the sample based on at least the measurement on the at least one of the sample or the phase change material.
However, Ros discloses a system (paragraphs 1, 2, 7, 12, 16, 17, 25, 29) with a phase conductive material, the system determining a thermal conductivity of a sample by using a processor to calculate the thermal conductivity.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ki by coupling a processor to the one or more sensors and configuring it to determine the thermal conductivity of the sample based on at least the measurement on the at least one of the sample or the phase change material, as suggested by Ros, in order to provide a faster and more accurate measurement of the thermal conductivity.
Referring to claim 15, Ki in view of Ros disclose a system having all of the limitations of claim 15, as stated above with respect to claim 14, wherein Ki discloses the shape of the phase change material (7) being shaped to conform to a shape of the sample (4) (figure) (which ensures good thermal contact with the sample and accuracy in determining the thermal conductivity of the sample because they have similar thermal contact surface area).
Referring to claim 16, Ki in view of Ros disclose a system having all of the limitations of claim 16, as stated above with respect to claim 14, except for Ki disclosing one of the thermal sources or the phase change material having a cylinder shape.
However, Ki discloses the shape of the phase change material (7) being shaped to conform to a shape of the sample (4) (figure) (which ensures good thermal contact with the sample and accuracy in determining the thermal conductivity of the sample because they have similar thermal contact surface area).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ki in view of Ros by having the phase change material of Ki be a cylinder shape in order to conform to a cylindrical shape of a curved sample to ensure good thermal contact with a curved sample and accuracy in determining the thermal conductivity of the curved sample (which Ki suggests is desirable); and since the shape of the phase change material and the sample claimed by the applicant are only considered to be obvious modifications of the shape or configuration of the phase change material and the sample disclosed by Ki as the courts have held that a change in shapes or configurations without any criticality is within the level of skill in the art since the particular shapes claimed are nothing more than one of numerous shapes that a person having ordinary skill in the art would have been able to provide using routine experimentation based on its suitability for the intended use of the invention. See In re Dailey, 149 USPQ 47 (CCPA 1976).
Allowable Subject Matter
Claims 3, 6-13, and 17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and amended to overcome the objection set forth in this office action.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record does not disclose or suggest the following in combination with the remaining limitations of the claims:
A method of determining a thermal conductivity of a sample, wherein the thermal source is at a constant temperature that is equal to or below the elevated temperature during the first phase transition period and for at least a second phase transition period longer than the first phase transition period (claim 3); wherein the thermal conductivity of the sample is determined by the claimed equation (claim 6); wherein the sample is a liquid or gas and is directed to flow in a fluid conduit between and in thermal contact with the thermal source and the phase change material (claim 8); wherein the step of performing the measurement on the at least one of the sample or the phase change material comprises measuring the first phase transition period for the phase change material between a first time when at least a portion of the phase change material transitions from the first phase to the second phase, and a second time when substantially all the phase change material transitions to the second phase, and wherein the thermal conductivity of the sample is determined by the claimed equation (claim 9); and comprising measuring a first reference temperature of the first reference structure and a second reference temperature of the second reference structure to determine a thermal conductivity of the sample between the first reference temperature of the first reference structure and the second reference temperature of the second reference structure (claim 12).
A system of determining a thermal conductivity of a sample, wherein the thermal source is a second phase change material having a second phase change temperature equal to the constant temperature (claim 17).
Conclusion
The references made of record and not relied upon by the examiner are considered pertinent to applicant's disclosure by disclosing determining a thermal conductivity of a sample, but do not disclose the allowable subject matter stated above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MIRELLYS JAGAN whose telephone number is (571)272-2247. The examiner can normally be reached Tuesday-Friday 8-6.
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, Kristina DeHerrera can be reached at 303-297-4237. 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.
/MIRELLYS JAGAN/
Primary Examiner
Art Unit 2855
4/27/26
Prosecution Insights