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 .
Claim Interpretation
The phrase “adapted to” recited herein is given a narrower interpretation (“made to” or “designed to”) than merely “capable of” (see MPEP2111.04).
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) 1-8, 10-11, 13-17, 19-20 and is/are rejected under 35 U.S.C. 103 as being unpatentable over Shiratani (JP2004317044) in view of Sato (US20190111894) and Van Houten (US20130173205).
Regarding claim 1, Shiratani teaches a sensible heat storage apparatus (see Fig. 1) comprising an inner vessel (inner tank 2) comprising an internal volume adapted to comprise a fluid; an outer container (outer tank 5) enclosing said inner vessel; a thermal insulation layer (insulating material 4) between said inner vessel and said outer container; at least a first integrated connection (inlet port 7) and a second integrated connection (outlet port 8) to connect the internal volume of said inner vessel to an outer environment through the thermal insulation layer; such that every integrated connection forms a single thermal bridge between the inner vessel and outer container and wherein all thermal bridges are located in the bottom 75% of the total height of said outer container (see at least bottom half thereof); wherein said first integrated connection is adapted to integrate and accommodate a liquid port and is capable of integrating and accommodating at least one further sub-connection; and wherein said second integrated connection is adapted to integrate and accommodate a liquid port and is capable of integrating and accommodating at least one further sub-connection.
Shiratani does not teach wherein said integrated connections are adapted to each integrate and accommodate at least two individual sub-connections, wherein said first integrated connection is adapted to integrate and accommodate a liquid port and at least one further sub-connection; and wherein said second integrated connection is adapted to integrate and accommodate a liquid port and at least one further sub-connection.
Sato (see Fig. 1) teaches wherein said integrated connection (inflow pipe 14) is adapted to integrate and accommodate at least two individual sub-connections, wherein said first integrated connection is adapted to integrate and accommodate a liquid port (W) and at least one further sub-connection (air release pipe 13).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Shiratani to include the integrated connection of Sato, in order to allow air to escape from the tank (¶[0026]).
Van Houten teaches (see Fig. 1) said integrated connection (5) is adapted to integrate and accommodate at least two individual sub-connections, wherein said second integrated connection is adapted to integrate and accommodate a liquid port (hot outlet) and at least one further sub-connection (sensor 2).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Shiratani to include the integrated connection of Van Houten, in order to provide means to measure temperature of the fluid to calculate changes in thermal energy (¶[0029]).
Shiratani as modified does not teach said internal volume is at least 10 L liters, however, Van Houten further teaches said internal volume is 300 L (300 L tank - ¶[0017] of Van Houten).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Shiratani to include wherein the tank is 300 L, as it has been held obvious to try when choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (See MPEP 2143). In this case, 300 L is an appropriate size for a hot water tank, as evidenced by Van Houten, suitable for residential heat storage (¶[0002]).
Regarding claim 2, Shiratani teaches the limitations of claim 1, and Shiratani further teaches wherein said internal volume comprises a fluid (hot water - ¶[0004]).
Regarding claim 3, Shiratani teaches the limitations of claim 1, and Shiratani further teaches all thermal bridges are located in the bottom 50% (see at least bottom half thereof) of the total height of said outer container.
Regarding claim 4, Shiratani teaches the limitations of claim 1, and Shiratani further teaches said inner vessel comprises a one or more perforated plates (6), and said perforated plates are placed within said internal volume of said inner vessel.
Regarding claim 5, Shiratani teaches the limitations of claim 1, and Shiratani as modified further teaches said further sub-connections are independently selected from the group consisting of liquid ports, gas ports, entry points for an anti-scaling device, entry points for a sensor (see air release pipe 13 of Sato & sensor 2 of Van Houten).
Regarding claim 6, Shiratani teaches the limitations of claim 5, and Shiratani as modified further teaches said temperature sensor is a multi-point temperature sensor (sensor 2 of Van Houten).
Regarding claim 7, Shiratani teaches the limitations of claim 6, and Shiratani as modified further teaches said multi-point temperature sensor has at least two measuring points (sensor 2 of Van Houten & ¶[0036 & 0041]).
Regarding claim 8, Shiratani teaches the limitations of claim 1, and Shiratani further teaches wherein said thermal insulation layer comprises a vacuum insulation element (¶[0013]).
Regarding claim 10, Shiratani teaches the limitations of claim 1, and Shiratani as modified further teaches wherein said liquid port and at least one further sub-connection are integrated and accommodated in said first integrated connection via a pipe-in-pipe configuration (see air release pipe 13 in pipe 14 of Sato).
Regarding claim 11, Shiratani teaches the limitations of claim 1, and Shiratani as modified further teaches wherein said internal volume is between 10 to 15000 liters (300 L tank - ¶[0017] of Van Houten).
Regarding claim 13, Shiratani teaches the limitations of claim 1, and Shiratani as modified further teaches said first integrated connection is adapted to integrate and accommodate a liquid port and a gas port, and/or wherein said second integrated connection is adapted to integrate and accommodate a liquid port and an entry point for a temperature sensor (see air release pipe 13 of Sato & sensor 2 of Van Houten).
Regarding claim 14, Shiratani teaches the limitations of claim 13, and Shiratani as modified further teaches the length of said gas port integrated and accommodated in said first integrated connection is longer than said liquid port integrated and accommodated in said first integrated connection in said internal volume (see air release pipe 13 of Sato relative to 14).
Regarding claim 15, Shiratani teaches a hot water system comprising the sensible heat storage apparatus according to claim 1, and does not teach wherein the hot water system is selected from the group consisting of a domestic hot water system and an industrial hot water system. Van Houten further teaches wherein the hot water system is a domestic hot water system (residential - ¶[0002] of Van Houten). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Shiratani to provide sensible heat storage to a domestic hot water system, for the purpose of storing solar heat or the like for residential use (¶[0002]).
Regarding claim 16, Shiratani further teaches a method for operating the sensible heat storage apparatus according to claim 1 for storing heat, said method comprising a storage stage wherein the fluid maintains a storage temperature set by an optional charging stage comprising providing heat to the fluid and/or providing hot fluid, said method further comprising an optional discharging stage wherein hot fluid is obtained from said internal volume (¶[0017]).
Regarding claim 17, Shiratani teaches the limitations of claim 16, and Shiratani as modified does not teahch the storage temperature is between 0 and 200° C, however, Van Houten teaches wherein the storage temperature is between 0 and 200 C (5-85 ¶[0017]) of Van Houten). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Shiratani to include the temperature range of Van Houten, as it has been held obvious to try when choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (See MPEP 2143). In this case, the temperature range of the hot water tank, as evidenced by Van Houten, is suitable for residential heat storage (¶[0002]).
Regarding claim 19, Shiratani teaches the limitations of claim 1, and Shiratani as modified further teaches said liquid port and at least one further sub-connection are integrated and accommodated in said second integrated connection via a pipe-in-pipe configuration (see air release pipe 13 of Sato & sensor 2 of Van Houten. Examiner further notes the nomenclature first/second is reversed to that mapped above, however, the rejection applies in the same manner, albeit with reversed nomenclature).
Regarding claim 20, Shiratani teaches the limitations of claim 1, and Shiratani as modified does not teach the length of said first integrated connection is longer in said internal volume than said second integrated connection, however, as the length of the air intake pipe of Sato is required to be located at a higher position than the liquid outlet, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Shiratani to provide the first integrated connection longer than the second integrated connection, in order to remove gas from the tank via the air intake pipe and liquid from the liquid pipe.
Claim(s) 9, 12, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shiratani (JP2004317044) in view of Sato (US20190111894) and Van Houten (US20130173205) and Meng (DE102013016705A1).
Regarding claim 9/18, Shiratani teaches the limitation of claim 1, and Shiratani does not teach wherein said thermal insulation layer is locally thicker around one or more thermal bridges.
Meng teaches wherein said thermal insulation layer is locally thicker around one or more thermal bridges/ wherein the thermal insulation layer is sectionally thickened in essentially the bottom 75% (see thickness of 30 at 11, Fig. 2a-2b).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Shiratani to include the thickened insulation of Meng, in order to reduce heat losses (Page 2).
Regarding claim 12, Shiratani teaches the limitation of claim 1, and Shiratani does not teach said inner vessel and/or outer container comprise stainless steel.
Meng said inner vessel and/or outer container comprise stainless steel (stainless steel – Page 2).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Shiratani to include the material of Meng, in order to provide a material known for its corrosion resistance, strength, and which is readily available.
Response to Arguments
Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive.
Applicant argues that Shiratani does not disclose a volume of at last 10 L, and as Shiratani is directed to vehicles, it makes the size unlikely.
Examiner contends that Shiratani does not appear to mention vehicles, nor has Applicant provided any evidence to substantiate this assertion. Rather, as an example application, Shiratani teaches that the heat storage tank may be used for a cooling system of an internal combustion engine. Internal combustion engine does not imply a vehicle, as engines can be used for a variety of applications, including but not limited to stationary generators. Regardless, Examiner takes the position that one having ordinary skill in the art would look to analogous art for sizing of such a heat storage tank.
Applicant argues, with respect to Sato, a skilled artisan would not be incentivized to include this in Shiratani’s heat storage apparatus, because the purpose for integrating the air release pipe in the inflow pipe is to simplify its attachment, citing ¶[0044].
Examiner notes that Applicant’s argument is not responsive to the rejection, which does not rely on this motivation for combination. Rather, the rejection states the ability to vent air is the motivation. Examiner does note that a simplified manner in which to provide such a vent tube would only bolster the motivation or one having skilled in the art to modify Shiratani with the vent tube of Sato.
Applicant argues, with respect to van Houten, that the reason to integrate the sensor is its easy installment, citing ¶[0024].
Examiner notes that Applicant’s argument is not responsive to the rejection, which does not rely on this motivation for combination. Rather, the rejection states the ability to measure and calculate changes in thermal energy is the motivation. Examiner does note that the easy installment of van Houten would only bolster the motivation or one having skilled in the art to modify Shiratani with the connection of van Houten.
In response to applicant's argument that the modifications Shiratani, Sato and van Houten, do not include the same motivation as the instant application (to reduce the amount of thermal bridges), the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant's argument that the connections of Sato and van Houten could be integrated into the apparatus of Shiratani, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to Applicant’s arguments directed to there being no reasonable expectation of success, Applicant has failed to provide any evidence to substantiate this position, and Examiner notes the mechanical arts, in this case plumbing for heat storage tanks, are not particularly unpredictable in nature.
For at least the reasons stated above, Applicant’s arguments are found unpersuasive and the rejection is maintained.
Response to Affidavit or Declaration
The declaration under 37 CFR 1.132 filed 12/23/2025 is insufficient to overcome the rejection of the claims based upon 35 USC 103 as set forth above because:
The facts presented in declarations 1-7 and 11 are not germane to the rejections at issue.
Regarding declarations 8-10, Applicant presents evidence of a long-felt need, unexpected results, and skepticism of experts.
It states that the claimed subject matter solved a problem that was long standing in the art. However, there is no showing that others of ordinary skill in the art were working on the problem and if so, for how long. In addition, there is no evidence that if persons skilled in the art who were presumably working on the problem knew of the teachings of the above cited references, they would still be unable to solve the problem. See MPEP § 716.04.
Regarding unexpected results, Applicant is reminded persuasive evidence for unexpected results requires supporting evidence demonstrating (i) the result is, in fact, unexpected; (ii) that the result is commensurate in scope with the claim; (iii) that the result has been compared to the closest prior art (see MPEP 716.02). Here, the evidence provided is at least not commensurate in scope with the claim, makes assumptions not supported in fact (see Page 8), fails to account for other contributions (thermal conductivity of the insulation used, for example), and fails to test other representative species to demonstrate that the results apply to the full breadth of the claim.
Regarding the skepticism of experts, the evidence provided is insufficient to establish nonobvioussness, as the evidence proffered is not of a disinterested expert before the invention, and is therefore given little weight. Additionally, the opinion of one industry expert does not provide overwhelming evidence of widespread skepticism.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC S RUPPERT whose telephone number is (571)272-9911. The examiner can normally be reached Monday - Friday 8 am - 4 pm.
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/ERIC S RUPPERT/
Primary Examiner, Art Unit 3763