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 .
Application Status
This office action is in response to amendments/arguments filed on October 15, 2025. Applicant has amended Claim 30. Claims 30 – 49 are currently pending.
Response to Arguments
Applicant’s arguments have been fully considered.
Previous double patenting rejections are withdrawn due to submission and approval of terminal disclaimers.
Previous 112f interpretations stand but are no longer shown below for conciseness. Applicant argues that a person having ordinary skill in the art would under the terms “heating element” and “heat receiving unit” as having definite meaning as the name for a structure that performs the described function at least in view of the specification. Examiner respectfully disagrees. As per Williamson, which applicant cited, the standard is whether “the words of the claim are understood by person of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” In this case, neither heating element nor heat receiving unit infer any type of structure to one of ordinary skill in the art. Applicant’s argument that one of ordinary skill would understand the terms at least in view of the specification gives further credence that a 112f interpretation is appropriate and one of ordinary skill would have to look at the specification to gain any insight as to structure.
With regards to previous art rejections, applicant’s amendment overcome the 102 over Ponec. Applicant argues that the throttles Ponec are fully open or fully closed, and Ponec teaches a second configuration with is more closed but not fully closed. While examiner concedes that neither reference teaches such a configuration, examiner posits that one of ordinary skill in the art would have found it obvious to only partially open/close a throttle.
One intended outcome of Ponec is to “dynamically discharge different regions of the thermal storage medium” (Paragraph 11) and “a control system is configured to activate different subsets of insulated doors at different times to vary a region of discharge of the thermal storage medium over time” (Paragraph 10). In one embodiment “the actuation system 450, stored in an auxiliary chamber 400 located above the ancillary chamber 300, is configured to open or close insulated doors 812 disposed in the openings 810 in order to activate (i.e., door open) or deactivate (i.e., door closed) each corresponding heat engine 312 located behind the door 812” (Paragraph 92) such that “the heat engine 312 is fixed in the same position within the ancillary chamber 300 in both the open and closed configuration of the door 812. For example, the heat engines 312 can be attached to a ceiling of the ancillary chamber 300 such that the heat engines 312 do not move with the mechanism of the door 812” (Paragraph 93). All this to say that, structurally and intended-use-wise, the system of Ponec would be able to have an intermediate position between open and closed, i.e. partially open/not fully closed.
To account for the intermediate position, examiner directs applicant to the newly cited reference of Ortega (Figures 3 – 8), who teaches a thermal mass (60) along with a heating element (sun, solar radiation) and a heat receiving unit (room 510). Ortega goes on to teach throttles (louvers 20, 530), which have a first configuration (wide open as seen in Figure 8), and a second configuration (partially open as seen in Figure 6), and “can be adjustably opened in various degrees to provide variable amounts of thermal energy release into the rooms 90 and/or 510” (Col. 6, Lines 40 – 42). MPEP 2143A teaches it is obvious to combine prior art elements according to known methods in order to yield predictable results. In this case, Ponec is structurally capable of intermediate positions and both deal with attempting to achieve a target temperature where intermediate positions would be desirable. Ortega, in a similar heat storage charging/discharging system, teaches louvers which are able to take on a multitude of positions based on the degree of heat transfer required. One of ordinary skill in the art would have found it obvious to modify Ponec to employ this same approach of a varied degree of opening in order to better reach their target temperatures.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 of this title, 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.
Claims 30 – 37, 39, and 45 – 49 are rejected under 35 U.S.C. 103 as being unpatentable over Ponec et al. (hereafter “Ponec” – US 2021/0143446) in view of Ortega (US 4424800).
With regards to Claim 30:
Ponec discloses a system for storing energy (Figures 1 – 3, 9B) comprising:
an insulated container (steel shell 112 with insulating layer 114, see Paragraph 36) comprising a thermal storage medium (thermal storage medium 210);
a heating element (see Paragraph 35, which describes numerous forms of heat which may be used to heat the thermal storage medium 210) configured to heat the thermal storage medium, the thermal storage medium and the heating element configured such that the heating element can heat the thermal storage medium to a temperature of at least 1100 °C (Paragraph 35: “temperatures in the range of, e.g., 1000 degrees Celsius (0% state of charge, SoC) to 2500 degrees Celsius (100% SoC)”);
a heat receiving unit (heat engines 312) configured to receive power emitted from the thermal storage medium (Paragraphs 34, 37); and
a throttle (actuation system 450 in separate auxiliary chamber 400 including doors 812 as discussed in Paragraph 92 and shown in Figure 9B) configured to dynamically (Paragraph 11: “dynamically discharge different regions of the thermal storage medium”) control the power received by the heat receiving unit from the thermal storage medium (Paragraphs 92, 93) by adjusting a view factor between the thermal storage medium and the heat receiving unit (by opening and closing doors 812, see Figure 9B and Paragraphs 92, 93).
Ponec does not explicitly disclose the throttle is adjustable between a fully closed position, a fully open position, and one or more intermediate positions between the fully closed position and the fully open position. However, one intended outcome of Ponec is to “dynamically discharge different regions of the thermal storage medium” (Paragraph 11) and “a control system is configured to activate different subsets of insulated doors at different times to vary a region of discharge of the thermal storage medium over time” (Paragraph 10). In one embodiment “the actuation system 450, stored in an auxiliary chamber 400 located above the ancillary chamber 300, is configured to open or close insulated doors 812 disposed in the openings 810 in order to activate (i.e., door open) or deactivate (i.e., door closed) each corresponding heat engine 312 located behind the door 812” (Paragraph 92) such that “the heat engine 312 is fixed in the same position within the ancillary chamber 300 in both the open and closed configuration of the door 812. For example, the heat engines 312 can be attached to a ceiling of the ancillary chamber 300 such that the heat engines 312 do not move with the mechanism of the door 812” (Paragraph 93). All this to say that, structurally and intended-use-wise, the system of Ponec would be able to have an intermediate position between open and closed, i.e. partially open/not fully closed. Ortega (Figures 3 – 8) teaches a thermal mass (60) along with a heating element (sun, solar radiation) and a heat receiving unit (room 510). Ortega goes on to teach throttles (louvers 20, 530), which have a first configuration (wide open as seen in Figure 8), and a second configuration (partially open as seen in Figure 6), and “can be adjustably opened in various degrees to provide variable amounts of thermal energy release into the rooms 90 and/or 510” (Col. 6, Lines 40 – 42). MPEP 2143A teaches it is obvious to combine prior art elements according to known methods in order to yield predictable results. In this case, Ponec is structurally capable of intermediate positions and deals with attempting to achieve a target temperature where intermediate positions would be desirable. Ortega, in a similar heat storage charging/discharging system, teaches louvers which are able to take on a multitude of positions based on the degree of heat transfer required. One of ordinary skill in the art would have found it obvious to modify Ponec to employ this same approach of a varied degree of opening in order to better reach their target temperatures and better achieve a dynamic discharge of the thermal storage medium as desired.
With regards to Claim 31:
The Ponec modification of Claim 30 teaches the heating element is configured to heat the thermal storage medium using thermal radiation (Paragraph 35 of Ponec: “Examples of non-electrical sources include high temperature waste heat from industrial facilities, combustion heat, or solar radiation”).
With regards to Claim 32:
The Ponec modification of Claim 30 teaches the thermal storage medium and the heating element are configured such that the heating element can heat the thermal storage medium to a temperature of at least 1500 °C (Paragraph 35 of Ponec: “temperatures in the range of, e.g., 1000 degrees Celsius (0% state of charge, SoC) to 2500 degrees Celsius (100% SoC)”).
With regards to Claim 33:
The Ponec modification of Claim 30 teaches the thermal storage medium and the heating element are configured such that the heating element can heat the thermal storage medium to a temperature of at least 2000 °C (Paragraph 35 of Ponec: “temperatures in the range of, e.g., 1000 degrees Celsius (0% state of charge, SoC) to 2500 degrees Celsius (100% SoC)”).
With regards to Claims 34 and 49:
The Ponec modification of Claim 30 does not explicitly teach a shutter configured to shield the heating element from the thermal storage medium to prevent heat from the thermal storage medium from leaking out of the system through the heating element when the heating element is in an idle state or a binary shutter configured to be inserted between the heat receiving unit and the throttle and/or the thermal storage medium in order to stop the heat receiving unit from receiving additional heat. Ortega (Figures 5, 6) teaches a thermal mass (60) along with a heating element (sun, solar radiation) and a heat receiving unit (room 510). Ortega goes on to teach shutters (louvers 20, 530) on both sides of the thermal mass, such that they control the power received by the heat receiving unit from the thermal storage medium by adjusting a view factor between the thermal storage medium and the heat receiving unit (see Figures 5, 6, and Col. 6, Lines 40 – 42) in order to stop the heat receiving unit from receiving addition heat, and also shield the heating element from the thermal storage medium to prevent heat from the thermal storage medium from leaking out of the system through the heating element when the heating element is in an idle state (see Figures 5, 6, and Col. 6, Lines 12 – 52). Keeping the shutters closed on the heating element side shields the thermal mass such that “heat builds up in the dead air space and in the thermal mass 60” (ld). Keeping the shutters closed on the heat receiving unit side is necessary “if radiated heat 70 is not immediately required in the back room 510, thereby permitting even greater thermal storage in the wall 60 for subsequent use in the rooms 90 and 510” (ld). MPEP 2143A teaches it is obvious to combine prior art elements according to known methods in order to yield predictable results. In this case, the addition of shutters to Ponec on both the heating element side and heat receiving unit would have been obvious to one of ordinary skill in the art in order to yield the predictable benefits described above.
With regards to Claim 35:
The Ponec modification of Claim 30 teaches the heat receiving unit is configured to transfer heat energy from the thermal storage medium to water, steam, oil and/or air to transport heat energy from the thermal storage medium into usable heat energy (Paragraph 39 of Ponec: “In some embodiments, the heated fluid used to cool the heat engines 312 can be used to generate steam and directed to a steam turbine so that at least a portion of the heat drawn off the heat engines 312 can be converted back into electricity by a generator coupled to the steam turbine. The electricity generated by the generator can be combined with the electricity produced by the heat engines 312 in the electrical output or fed back into the thermal storage medium to re-heat the blocks”).
With regards to Claim 36:
The Ponec modification of Claim 30 teaches the heat receiving unit comprises a pipe system configured to transport a fluid medium, the pipe system comprising a length of pipe within radiative range of a surface of the thermal storage medium, the fluid medium configured to transport heat energy from the thermal storage medium to be converted into usable heat energy (Paragraph 39 of Ponec: “In an embodiment, the heat engines 312 are cooled to a temperature of less than 150 degrees Celsius to maintain efficient operation (e.g., air-cooled, liquid-cooled, or other suitable cooling solutions). It will be appreciated that the limit of 150 degrees Celsius is one exemplary temperature limit; however, in other embodiments, the temperature limit can be higher (e.g., 400 degrees Celsius) based on the structure and materials (or other design characteristics) of the heat engines 312. In a liquid-cooled embodiment, the coolant can be pumped to the TPV heat engines through the gantry structure, and the heated coolant can be fed out to a radiator or other heat exchanger. In some embodiments, the heated fluid used to cool the heat engines 312 can be used to generate steam and directed to a steam turbine so that at least a portion of the heat drawn off the heat engines 312 can be converted back into electricity by a generator coupled to the steam turbine. The electricity generated by the generator can be combined with the electricity produced by the heat engines 312 in the electrical output or fed back into the thermal storage medium to re-heat the blocks. Additionally, the heat from the coolant could be used in other ways, e.g., to supply heat to an industrial process or to provide heating (e.g., radiant heat) for a facility or district” – the cooling mentioned in this citation would inherently require some form of “pipe system” within a radiative range of the thermal mass).
With regards to Claim 37:
The Ponec modification of Claim 30 teaches an electrode coupled to the heating element (electrodes 314, Figure 3 of Ponec).
With regards to Claim 39:
The Ponec modification of Claim 30 teaches the electrode is permanently coupled to the heating element (see Figure 3 of Ponec, where electrode 314 is attached within the storage medium blocks 310).
With regards to Claim 45:
The Ponec modification of Claim 30 teaches the heat receiving unit comprises a thermophotovoltaic (TPV) heat engine (Paragraph 32 of Ponec: “the heat engine is preferably a thermophotovoltaic (TPV) heat engine”).
With regards to Claim 46:
The Ponec modification of Claim 30 teaches the heat receiving unit comprises a thermal receiver configured to use a heat transfer fluid (“coolant”, Paragraph 39 of Ponec) to move heat from the heat receiving unit to another, external process (Paragraph 39 of Ponec: cooling the TPV heat engine, wherein “the heat from the coolant could be used in other ways, e.g., to supply heat to an industrial process or to provide heating (e.g., radiant heat) for a facility or district”).
With regards to Claim 47:
The Ponec modification of Claim 30 teaches the heat receiving unit resides on an inner side wall of the insulated container (see Figure 9B of Ponec, showing heat engines 312 fixed to an inner side wall of the shell, see also Paragraph 93 of Ponec: “the heat engine 312 is fixed in the same position within the ancillary chamber 300 in both the open and closed configuration of the door 812. For example, the heat engines 312 can be attached to a ceiling of the ancillary chamber 300 such that the heat engines 312 do not move with the mechanism of the door 812”, and also Paragraph 96: “heat engines 312 can be located behind openings in the floor or walls of the main chamber 200 in addition to or in lieu of the heat engines 312 located behind openings in the ceiling of the main chamber 200”).
With regards to Claim 48:
The Ponec modification of Claim 30 teaches the throttle is configured to dynamically control the power transferred from the thermal storage medium to the heat receiving unit to control a power output of the system (Paragraph 86 of Ponec: “the control system 410 providing different sets of heat engine configurations and selectively actuating one of the heat engine configurations in accordance with different operating conditions or output properties/characteristics (e.g., load, current, etc.).”).
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over Ponec et al. (hereafter “Ponec” – US 2021/0143446) in view of Ortega (US 4424800), further in view of Amy et al. (hereafter “Amy” - Amy, C., et al., "Thermal energy grid storage using multi-junction photovoltaics," Energy Environ. Sci., pp 334 – 343, 12, 2019).
With regards to Claim 36:
Alternatively, The Ponec modification of Claim 30 does not explicitly teach the heat receiving unit comprises a pipe system configured to transport a fluid medium, the pipe system comprising a length of pipe within radiative range of a surface of the thermal storage medium, the fluid medium configured to transport heat energy from the thermal storage medium to be converted into usable heat energy. However, Ponec teaches that the heat engines may be TVP heat engines. Amy (Figure 2, Page 337) teaches a TPV engine in a thermal storage system using liquid silicon, wherein the thermal storage medium is “pumped through an array of tubes which emit light. The light/heat is then converted back into electricity using multi-junction photovoltaic cells that convert the visible and near infrared light” (ld). Given that Ponec I silent as to any specific structure of the TPV heat engine, it would have been obvious to one of ordinary skill in the art to modify Ponec by using a TPV engine similar to that shown in Amy, which includes a plurality of pipes to transport the thermal storage medium, in order to yield the predictable result of converting the heat into light and then electricity.
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Ponec et al. (hereafter “Ponec” – US 2021/0143446) in view of Ortega (US 4424800), further in view of Smith (US 2142383).
With regards to Claim 38:
The Ponec modification of Claim 30 does not explicitly teach the electrode is removable coupled to the heating element. Smith teaches an electrode which is removable in order to facilitate repair/replacement (Col. 1, Lines 4 – 7). It is noted that MPEP 2144 also teaches that the courts have ruled that making something separable is obvious if it were desirable for any reason to facilitate access. Given the teachings of Smith and MPEP 2144, it would have been obvious to one of ordinary skill in the art to modify the system of Ponec by making the electrode removable from the heating element in order to repair and/or replace the electrode in the event it should become inoperative.
Claims 39 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Ponec et al. (hereafter “Ponec” – US 2021/0143446) in view of Ortega (US 4424800), further in view of Chen et al. (hereafter “Chen” – CN 101303207).
With regards to Claims 39 and 40:
The Ponec modification of Claim 30 does not explicitly teach a thermal insulating cap removably coupled to the electrode, wherein the electrode is permanently coupled to the heating element. Chen (Figures 1 – 3) teaches a thermal energy storage system including an electrode (2, 3) permanently coupled to a heating unit (spiral heat coils 8, as shown in Figure 3), wherein a thermal insulating cap is removably coupled to the electrode (see English translation: “the thermal pole and the cold pole are respectively provided with a heat insulating cap at both ends of the outdoor”). MPEP 2143A teaches it is obvious to combine prior art elements according to known methods in order to yield predictable results. In this case, it would have been obvious to one of ordinary skill in the art to modify the system of Ponec by adding removable caps to portions of the electrodes which are sticking out beyond the heat storage material in order to insulate the electrodes. It is further noted that MPEP 2144 also teaches that the courts have ruled that making something separable is obvious if it were desirable for any reason to facilitate access, for example, to facilitate repair/replacement.
Claims 41 and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Ponec et al. (hereafter “Ponec” – US 2021/0143446) in view of Ortega (US 4424800), further in view of Kim et al. (hereafter “Kim” – KR 100709857).
With regards to Claim 41:
The Ponec modification of Claim 30 does not explicitly teach a charging coupler removably coupled to the electrode. Kim teaches an energy storage system including an electrode (225) and a charging coupler (terminal 320) removably coupled to the electrode (see Figure 1 and see English translation: “The electrode terminal 320 is connected to the negative electrode tab 225 of the negative electrode plate 220 or the positive electrode tab 215 of the positive electrode plate 210 to serve as a negative terminal or a positive terminal”). MPEP 2143A teaches it is obvious to combine prior art elements according to known methods in order to yield predictable results. In this case, it would have been obvious to modify the system of Ponec by adding a charging coupler removably coupled to the electrode in order to facilitate charging of the thermal storage material. It is further noted that MPEP 2144 also teaches that the courts have ruled that making something separable is obvious if it were desirable for any reason to facilitate access, for example, to facilitate repair/replacement.
With regards to Claim 42:
Under BRI when read in light of the specification, the Ponec modification of Claim 41 teaches a shield configured to thermally shield the electrode from other system components (see Figure 3, electrodes 314 are located in carbon blocks 310, the carbon acting as a de facto shield). For the sake of compact prosecution, Kim teaches electrodes (210) that are shielded from other components via separators (230). It would have been obvious to one of ordinary skill to modify Ponec by adding shields of some form, such as separators, to shield the electrodes from other components to prevent damage to the electrodes and electric current spread to undesired components.
Claims 43 and 44 are rejected under 35 U.S.C. 103 as being unpatentable over Ponec et al. (hereafter “Ponec” – US 2021/0143446) in view of Ortega (US 4424800), further in view of Hamer et al. (hereafter “Hamer” – US 2007/0209365).
With regards to Claims 43 and 44:
The Ponec modification of Claim 30 does not explicitly teach the electrode is configured to be actively cooled and the electrode is configured for water cooling. Hamer (Figure 1) teaches a thermal storage system including an electrode (16) heating a thermal storage medium (12). Hamer goes on to teach that “[i]n order to ensure that the electrical connections to the electrodes are maintained at a relatively low temperature, the electrical connections may be cooled by means of water circulating through jackets provided around them” (Paragraph 87). MPEP 2143A teaches it is obvious to combine prior art elements according to known methods in order to yield predictable results. In this case, it would have been obvious to one of ordinary skill to modify the system of Ponec by adding active water cooling to the electrodes in order to ensure they stay at a temperature conducive to efficient operation.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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/Laert Dounis/
Primary Examiner, Art Unit 3746
Friday, October 17, 2025