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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-9, Species A in the reply filed on 10/23/2025 is acknowledged. The traversal is on the ground(s) that Groups I-III share the common subject matter of a ceramic heat storage body and thus have a priori unity of invention. Examiner notes Applicant’s arguments of common subject matter are directed towards the preamble of the independent claims in the three restriction groups. This is not found persuasive because a preamble is not a limiting element of a claim when it merely recites the purpose or intended use of an invention per MPEP 2111.02(II). Additionally, the groups lack unity of invention a posteriori because claim 1 is rejected over the prior art as detailed below. Applicant further argues that examining groups I-III would not constitute a search burden. Examiner notes that the search burden argument is moot, as a search burden is not an element of the unity of invention analysis. However, Examiner respectfully disagrees with the conclusion that examining groups I-III would not constitute a search burden. Applicant further argues claims 1, 10, and 13 are generic to the elected species. Examiner respectfully disagrees, and notes claims 1, 10, and 13 are not directed towards the same statutory category of invention, and thus cannot be generic to the elected species. As such, this argument is not convincing. Applicant further argues that Species B through O are related to species A and should be examined together. Examiner notes that all species in a genus are related by definition of being a species within a genus, and this argument is not convincing. Applicant argues that the generic claims are not so broad as to place an undue burden on the patent office to search and examine the full scope of all claims together; Examiner respectfully finds this argument unconvincing for the reasons detailed above.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/23/2025.
Claim Objections
Claim 9 is 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.
Claim 9 is directed towards the ceramic heat storage body according to claim 3, wherein the compound contains Co3O4, Fe3O4, and MnO2, the Co3O4 is contained in an amount of 2 weight% or more and 6 weight% or less, the Fe3O4 is contained in an amount of 2 weight% or more and 6 weight% or less, and the MnO2 is contained in an amount of 2 weight%.
The closest prior art is Matsubayashi et al. (JP2012229159A with reference to machine translation, hereinafter referred to as Matsubayashi). Matsubayashi discloses the ceramic heat storage body of claim 1 as detailed in the rejection of claim 1 below. However, per instant claim 9, Matsubayashi does not disclose or make obvious the compound contains Co3O4, Fe3O4, and MnO2, the Co3O4 is contained in an amount of 2 weight% or more and 6 weight% or less, the Fe3O4 is contained in an amount of 2 weight% or more and 6 weight% or less, and the MnO2 is contained in an amount of 2 weight% (See Matsubayashi at Table 1, Example 5, disclosing an example of a ceramic heat storage body comprising 90 mass% Al2O3, 8 mass% SiO2, and 2 mass% Fe3O4. As such, Matsubayashi does not disclose or make obvious the subject matter of instant claim 9.
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.
Claim(s) 1-5 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsubayashi et al. (P2012229159A with reference to machine translation, hereinafter referred to as Matsubayashi).
Regarding claim 1, Matsubayashi discloses a ceramic heat storage body (see Matsubayashi at the Abstract, disclosing a heat storage member made of a dense ceramic) comprising alumina as a main component (See Matsubayashi at the Abstract, disclosing the dense ceramic contains alumina ceramics … and a purity of 85% by mass or more.).
While Matsubayashi does not explicitly disclose an average absorbance larger than 0.3 at 1.7 µm to 2.7 µm as a center wavelength of radiant heat at 800°C to 1400°C, this is a function of the composition of the ceramic heat storage body as detailed by the instant specification at the Table of Fig. 10. At Embodiment 2-2 from the Table at Fig. 10, a ceramic heat storage body which comprises 2 wt% Fe3O4 is shown to have an average absorbance of 0.75. Examiner notes Example 5 from Table 1 of Matsubayashi comprises 90 wt.% Al2O3 and 2 wt.% Fe3O4 and therefore has a composition substantially identical to Embodiment 2-2 from the Table at Fig. 10. Therefore, Example 5 from Table 1 of Matsubayashi would inherently possess the claimed property. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
Regarding claim 2, Matsubayashi discloses a compound other than alumina in an amount of 1 weight% or more in compound equivalent (see Example 5 from Table 1 of Matsubayashi comprises 90 wt.% Al2O3 and 2 wt.% Fe3O4).
Regarding claim 3, Matsubayashi discloses the compound contains at least one of Cr, Fe, Mn, Co, Ti, Ca, Zr, Hf, and Ta (see Example 5 from Table 1 of Matsubayashi comprises 90 wt.% Al2O3 and 2 wt.% Fe3O4).
Regarding claim 4, Matsubayashi discloses the compound is any one of a carbide, an oxide, and a nitride, or a mixture thereof (see Example 5 from Table 1 of Matsubayashi comprises 90 wt.% Al2O3 and 2 wt.% Fe3O4, which Examiner notes is an oxide).
Regarding claim 5, Matsubayashi discloses the ceramic heat storage body has a shell, and the shell has an outer surface in a shape of a spheroid including a sphere and internally has a hollow portion (see Matsubayashi at the second to last paragraph of page 4 from the machine translation, disclosing a hollow structure. Examiner notes a hollow structure inherently possesses a shell. Examiner further notes the 6th paragraph of page 4 discloses spherical particles.).
Regarding claim 8, while Matsubayashi does not explicitly disclose a center temperature of the hollow portion is higher than an inner surface temperature of the shell during heat storage, Examiner notes this limitation is directed towards a manner of operating the ceramic heat storage body, and therefore does not differentiate the ceramic heat storage body from the prior art. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim (See MPEP 2114(II)). In the instant case, Matsubayashi discloses all of the claimed structural limitations of instant claims 8, 5, and 1, and therefore claim 8 does not differentiate the claimed ceramic heat storage body over Matsubayashi.
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.
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsubayashi.
Regarding claim 6, while Matsubayashi does not explicitly disclose when an average outer diameter of the shell is denoted by D and an average diameter of the hollow portion is denoted by d, d is smaller than (D - 8) mm, this limitation is merely directed towards the size and shape of the hollow sphere, and it would be per se obvious to vary the size and shape of the hollow sphere as desired. See MPEP 2144.04, disclosing where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.
Regarding claim 7, Matsubayashi discloses the ceramic heat storage body has a solid body, and the solid body has an outer surface in a shape of a spheroid including a sphere and an average outer diameter of 13 mm or less (see Matsubayashi at the second to last paragraph of page 4, disclosing a spherical solid body having a diameter of 5 mm to 30 mm, which Examiner notes overlaps with the claimed range). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMERON K MILLER whose telephone number is (571)272-4616. The examiner can normally be reached M-F 8:00am - 5:00pm EST.
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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731