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 .
Election/Restrictions
Applicant’s election without traverse of Invention I (claims 1-13) in the reply filed on 20 July 2026 is acknowledged.
Claims 14-18 are withdrawn from consideration from further consideration pursuant to 37 CFR 1.142(b), as being withdrawn to a non-elected invention, and non-elected species of the invention, there being no allowable generic or linking claims.
Claims 1-13 and 20 are under examination and the requirement for restriction is made final.
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed 15 December 2023 and 04 May 2026. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see the attached USPTO Form.
Claim Rejections - 35 USC § 112
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.
Claim 7 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.
The claim is directed to Markush claim language. Under MPEP § 2117, a proper Markush group constitutes a closed, restricted selection of members, often defined by the phrase ‘consisting of’. Applicant is advised to amend the claims to recite “selected from the group consisting of…”.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-3, 5-10, 13, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Auerbach (US-20180244971-A1, located in the Information Disclosure Statement).
With regard to claim 1, Auerbach teaches a phase change material (PCM hereinafter) composition comprising a fatty alcohol, specifically cetyl alcohol (para [0028], Example 2). This disclosure reads on the claimed phase change material composition.
Auerbach does not explicitly teach that the phase change material comprising a fatty alcohol of 10 to 30 carbon atoms, has the ability to store and release thermal energy in one embodiment to be anticipatory. However, Auerbach does teach that a PCM composition comprising a linear alcohol ester with at least 4 carbon atoms (preferably 13 to 31 carbon atoms) exhibits the ability to store and release thermal energy through transfer with the surrounding environment (para [0008]), which a cetyl alcohol can satisfy.
With regard to the release and storage of energy, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, to utilize a cetyl alcohol within Auerbach’s PCM composition to achieve the desired thermal energy storage and release properties. Auerbach would guide one having ordinary skill in the art to employ linear alcohols, and specifically fatty alcohol such as cetyl alcohol, to achieve thermal energy storage and release (para [0008]). Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
With regard to claims 2-3, Auerbach teaches that the linear alcohol may be a fatty alcohol selected from decyl alcohol, lauryl alcohol, tridecyl alcohol, myristyl alcohol, pentadecyl alcohol, cetyl alcohol, stearyl alcohol, and behenyl alcohol (para [00028]). This disclosure reads on the claimed saturated linear fatty alcohol with 10 to 26 carbon atoms, as well as compounds 1-decanol, 1-dodecanol, 1- tridecanol, 1-tetradecanol, 1-pentadecanol, 1-hexadecanol, 1-octadecanol and 1-docosanol.
Furthermore, Auerbach explicitly exemplifies the use of decyl alcohol, lauryl alcohol, and cetyl alcohol (para [0079]).
With regard to claim 5, Auerbach teaches that the PCM composition preferably exhibits a melting point of −10° C. to 50° C (para [0041]), which reads on the claimed limitation due to overlapping ranges.
With regard to claim 6, Auerbach teaches that the PCM composition preferably exhibits a latent heat of fusion of 100 to 250 J/g (para [0042]), which reads on the claimed range due to overlap.
With regard to claim 7, Auerbach teaches that the PCM composition further comprises a further component such as a nucleating agent, a thermal stabilizer, an anti-oxidant, a fire retardant, a structuring agent, a fatty acid (para [0033]), which reads on claimed additives.
With regard to claim 8, Auerbach teaches that the further component is preferably selected as a structuring agent (para [0033]).
With regard to claim 9, Auerbach teaches that the PCM may comprise 0.01 to 10 wt. % of further components (e.g. nucleating agent) (para [0040]), which reads on the claimed range.
With regard to claim 10, Auerbach teaches a PCM product comprising a container— preferably sealed—with a PCM composition enclosed therein (para [0058]), which reads on the limitation of the claimed product.
With regard to claims 13 and 20, while Auerbach does not explicitly teach a product comprising a heat exchanger, the reference teaches the incorporation of the PCM product into a variety of applications—such as textile, foam, medical, electronic, refrigeration system, heating, HVAC, packaging, and construction material (para [0061]), which reads upon the claimed limitation.
Claim 4 are rejected under 35 U.S.C. 103 as being unpatentable over Auerbach (US-20180244971-A1, located in the Information Disclosure Statement) as applied to claims 1-3, 5-10, 13, and 20 above, and further in view of Ataman Chemical et al. “Behenyl Alcohol”.
With regard to claim 4, Auerbach teaches the linear alcohol may comprise behenyl alcohol (para [0028]), which reads on the claimed 1-docosanol. However, Auerbach does not explicitly teach the selection is obvious.
In the same field of endeavor, Ataman Chemical et al. teaches that behenyl alcohol (i.e., 1-docosanol) is a 22-carbon chain fatty alcohol utilized to increase formulation viscosity, thereby stabilizing emulsion by preventing phase separation of oil and watery components. Ataman Chemical et al. further teaches that this fatty alcohol optimally functions as an opacifying, thickener, emollient, emulsifier, foam-boosting surfactant, and an aqueous or nonaqueous viscosity increasing agent. Additionally, Ataman Chemical et al. teaches that this alcohol forms a barrier layer over water to minimize evaporation, demonstrating efficacy in high-temperature environments (Use & Benefits). Disclosed applications include synthetic resin, emulsion polymerization, surfactants, plasticizers, disinfectants, and raw materials such as creams, ointment, and more (Applications).
With regard to the selection of 1-docosanol, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, to modify Auerbach’s composition to comprise 1-Docosanol. For doing so, the inclusion would exhibit the versatile properties as established in Ataman Chemical et al., namely its utility as an opacifying ingredient, thickener, emollient, emulsifier, etc. A person of ordinary skill in the art would have a reasonable expectation of success in achieving the claimed invention, as Auerbach’s composition can be provided with behenyl alcohol to successfully yield the recognized properties (e.g. emulsion stability).
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Auerbach (US-20180244971-A1, located in the Information Disclosure Statement) in further in view of Sharar (US-20200407615-A1).
With regard to claim 11, while Auerbach does not explicitly teach the product comprising a “heat exchanger”, the reference teaches a condenser containing the PCM composition (Example 1, para [0088]). A condenser is a well-known type of heat exchanger.
In the same field of endeavor, Sharar teaches a heat exchange component for phase change material configured to exchange thermal energy with a temporally-evolving external temperature source, thereby altering the temperature and state of the phase change material (Abstract). Sharar further teaches the solid-to-liquid (SL) PCMs are preferred over sensible heat absorption due to their isothermal phase transition, which yields a high thermal capacitance. This property enables efficient thermal energy storage at a target temperature while minimizing material weight and volume. Specifically, Sharar teaches that the heat exchanger component may be a flat plate, cold plate, condenser, or evaporator, and expressly teaches the use of Organic SL such as 1-octadecanol (i.e., stearyl alcohol) for application (para [0110 and 0066]).
Furthermore, Sharar teaches an exemplified solar heat exchanger that has desirable properties beyond transformation temperature, the former drives the total energy storage and the latter dictates the ability to charge and discharge thermal energy (para [0106]).
With regard to the heat exchanger, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, to modify Auerbach’s product to incorporate the heat exchanger configuration taught by Sharar. One of ordinary skill in the art would be motivated to do so to achieve enhanced thermal energy exchange. The references collectively teach functionally analogous components (e.g. PCM, stearyl alcohol) for identical applications. A person of ordinary skill in the art would have a reasonable expectation of success in achieving the claimed invention, as Auerbach’s composition can be provided within a condenser to achieve the claimed properties.
With regard to claim 12, Auerbach does not explicitly teach a product comprising a plate or spiral heat exchanger.
In the same field of endeavor, Sharar teaches that the heat exchanger may be configured as a flat plate, cold plate, condenser, evaporator, or any component generally regarded as a thermal energy storage or heat transfer structure (Abstract). Sharar further teaches that the heat exchange component may be configured according to these various embodiments depending on the specific thermal energy storage and transient heat transfer system/structure desired (para [0014]).
With regard to the selection of these configurations, Sharar offers the motivation to optimize the heat exchanger configuration to regulate thermal energy storage and improve system longevity (paras. [0014]). As such, the type of heat exchanger impacts the thermal energy storage performance and longevity, the configuration represents a result-effective variable that can be selected and optimized through routine experimentation. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art before the effective filling date, to incorporate the plate heat exchanger disclosed by Sharar into the phase change material product of Auerbach to arrive at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Aja A Walker whose telephone number is (571)272-0037. The examiner can normally be reached Monday - Friday 7-5.
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/A.A.W./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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