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 .
This application is a national stage entry under 35 U.S.C. §371 of International Application No. PCT/KR2022/015189 filed 10/7/2022.
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. §119(a)-(d) by Application No. 10-2021-0134138 and 10-2022-0128215 filed 10/8/2021 and 10/6/2022 respectively, which papers have been placed of record in the file.
Claims 1-2, 5-20 are pending.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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.
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.
Claims 1-2, 5-6, 9-11, 14-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Furukawa et al. (US 2021/0246349).
Regarding claim 1: Furukawa is directed to a composition comprising
an acrylic curable resin component and
a phase change material,
wherein the curable composition has a heat storage capacity of 130 J/g or more, and
a weight loss rate of less than 1% at a temperature of 80 ˚C before and after heating at 80 ˚C for 1000 hours (equivalent to ΔW is 10% or below of equation 1.
Furukawa doesn't specifically recite an on-set temperature of the latent heat is from 10-60 ˚C. However, the curable composition produced in Furukawa is substantially identical to the curable composition produced in the instant invention. Further, a chain like saturated hydrocarbon compound including n-docosane is used as the heat storage component.
Case law holds that 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Furukawa anticipates or suggests a curable composition having a heat storage capacity within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
A rejection under 102/103 is proper when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
Regarding claim 2: Furukawa doesn't specifically recite an on-set temperature of the latent heat is from 15-40 ˚C. However, the curable composition produced in Furukawa is substantially identical to the curable composition produced in the instant invention. Further, a chain like saturated hydrocarbon compound including n-docosane is used as the heat storage component.
Case law holds that 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Furukawa anticipates or suggests a curable composition having a heat storage capacity within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
A rejection under 102/103 is proper when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
Regarding claims 5-6: The weight average molecular weight is 150,000 or more ([0048]) and is an acrylic resin.
Regarding claim 9: The phase change material includes a paraffin ([0081]).
Regarding claim 10: Paraffins include a melting point of 30-60 C and a carbon number of 10-30 ([0082]).
Regarding claim 11: Phase change materials include n-nonadecane (C19, 32° C.), n-eicosane (C20, 37° C.), n-heneicosane (C21, 41 ° C.), n-docosane (C22, 46° C.), n-tricosane (C23, 47° C.), n-tetracosane (C24, 50° C.), n-pentacosane (C25, 54° C.), n-hexacosane (C26, 56° C.), n-heptacosane (C27, 60° C.) ([0082]).
Regarding claim 14: A method of preparing the composition comprising mixing the melted phase change material and curable resin component is disclosed.
Regarding claim 15: A cured body is disclosed.
Regarding claims 16-17: An article including a heat producing component and the curable composition disposed adjacent to the heat producing component is disclosed in Fig 1a-b, wherein the curable composition is located adjacent to the heat producing component semiconductor chip 3 ([0118]-[0119]).
Regarding claim 18: The composition can be heated to a liquid e.g. between 25 ˚C temperature and 90 ˚C ([0119]-[0120]).
Regarding claims 19-20: Furukawa doesn't specifically recite an cured body density and Shore OO hardness. However, the curable composition produced in Furukawa is substantially identical to the curable composition produced in the instant invention. Further, a chain like saturated hydrocarbon compound including n-docosane is used as the heat storage component.
Case law holds that 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Furukawa anticipates or suggests a cured body with a density and Shore OO hardness within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
A rejection under 102/103 is proper when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
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.
Claims 1-2, 6-14, 16, 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2014/0187676).
Regarding claim 1: Lee is directed to a curable composition comprising:
an acrylic curable resin component and
a phase change material,
wherein the curable composition has a latent heat of 20-200 J/g (Table 1).
Lee doesn’t mention a latent heat of the composition, a weight loss rate or an on-set temperature of the latent heat. However, the curable composition produced in Lee is substantially identical to the curable composition produced in the instant invention. Specifically, a paraffin is used as the heat storage component and the latent heat of the phase change materials are 20-1000 J/g ([0020]).
.
Case law holds that 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Lee suggests a curable composition having properties within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Regarding claim 2: Lee doesn’t mention a weight loss rate or an on-set temperature of the latent heat. However, the curable composition produced in Lee is substantially identical to the curable composition produced in the instant invention. Specifically, a paraffin is used as the heat storage component.
Case law holds that 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Lee suggests a curable composition having properties within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Regarding claim 6: An epoxy component is disclosed.
Regarding claim 7: The phase change material is not encapsulated.
Regarding claim 8: The phase change material consists of a phase change material having a melting point in a range of 30-60 ˚C (Table 1).
Regarding claim 9: The phase change material includes paraffin (Table 1).
Regarding claims 10-11: The phase change material include fatty acids and paraffin, wherein fatty acids include n-octanoic acid, n-octadecane ([0050]) (equivalent to a fatty acid having a melting point in a range of 30-60 C and a carbon number of 10-30).
Regarding claim 12: The composition comprises 30-90 wt% of the composition ([0021]).
Regarding claim 13: The composition can further comprise boron nitride, alumina, magnesium hydroxide ([0022]).
Regarding claim 14: A method of mixing the melted phase change material and curable resin component is disclosed.
Regarding claim 16: An article comprising a heat producing component and a curable composition disposed adjacent to the heat producing component is disclosed. Fig. 1.
Regarding claims 19-20: Lee doesn’t mention a density nor a Shore OO hardness. However, the curable composition produced in Lee is substantially identical to the curable composition produced in the instant invention. Specifically, a paraffin is used as the heat storage component and the latent heat of the phase change materials are 20-1000 J/g ([0020]).
Case law holds that 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Lee suggests an article having properties within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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