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 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.
Claims 16 and 24 are 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 term “predominantly” in claims 16 and 24 is a relative term which renders the claim indefinite. The term “predominantly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) s 11-12, 14-20, 22-28, and 30 is/are rejected under 35 U.S.C. 102()a)(2) as being anticipated by Slaughter-Zrostlik et al. (US 12158291 B1).
As per claim 11, Slaughter-Zrostlik et al. disclose an elastocaloric element for a temperature control system (Fig. 6D; etc.), wherein the elastocaloric element 10C comprises an elastic carrier 20 and a coating 30 applied to the carrier (elastocaloric materials 30 coat top and bottom sides of carrier 20), wherein the carrier consists at least partly of a plastic (col. 15, line 53; etc.) and the coating consists at least partly of an elastocaloric material (col. 15, lines 64-65; etc.).
As per claim 12, Slaughter-Zrostlik et al. disclose wherein the coating has a layer thickness of up to 200 µm (col. 13, line 9 re. .2mm thickness (i.e., 200 µm)).
As per claim 14, Slaughter-Zrostlik et al. disclose wherein the carrier is reversibly stretchable up to an elastic limit of at least 2% (col. 15, lines 41-42; etc.).
As per claim 15, Slaughter-Zrostlik et al. disclose wherein the elastocaloric material is a shape memory alloy (col. 10, lines 15-17; etc.).
As per claim 16, Slaughter-Zrostlik et al. disclose wherein the carrier is formed as a carrier body with an at least predominantly constant cross-section (Fig. 6D, etc., show constant cross-section).
As per claim 17, Slaughter-Zrostlik et al. disclose wherein the carrier is formed with a ring-shaped, star-shaped, or cross-shaped cross- section (Fig. 39 shows a ring-shaped example).
As per claim 18, Slaughter-Zrostlik et al. disclose wherein the carrier is formed as a spring (Fig. 6D shows a cantilever spring arrangement).
As per claim 19, Slaughter-Zrostlik et al. disclose a temperature control system (Fig. 6D; etc.) having an elastocaloric element 10C, comprising: an elastic carrier 20 and a coating 30 applied to the carrier, wherein the carrier consists at least partly of a plastic (col. 15, line 53; etc.) and the coating consists at least partly of an elastocaloric material (col. 15, lines 64-65; etc.).
As per claims 20 and 22-26, see corresponding claims 12 and 14-18 above, respectively.
As per claim 27, Slaughter-Zrostlik et al. disclose a temperature control system, comprising an elastocaloric element, the elastocaloric element comprising: an elastic carrier and a coating applied to the carrier, wherein the carrier consists at least partly of a plastic and the coating consists at least partly of an elastocaloric material. While Slaughter-Zrostlik et al. do not teach the temperature control system being on a motor vehicle, such is considered intended use recited within preamble not reading particular life or meaning to the body of the claim, and thus is not accorded patentable weight. (Nevertheless, for the record, it is noted that Sharar et al. (US 2020/0088449 A1) teach that electrocaloric heating/cooling can be used generally to replace vapor compression systems in various contexts, including vehicles – see for example para. 0067.)
As per claims 28 and 30, see corresponding claims 12 and 14 above, respectively.
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) 13, 20, and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Slaughter-Zrostlik et al.
As per claims 13, 20, and 29, Slaughter-Zrostlik et al. do not teach wherein the coating has a layer thickness in the range from 5 µm to 100 µm, although do teach a thickness of 200 µm (col. 13, line 9). The exact thickness of the coating is considered a result effective variable that would have been obvious to one of ordinary skill in the art at the effective filing date of the application to arrive at through routine experimentation for the purpose of achieving optimal elastocaloric temperature control effect.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC E NORMAN whose telephone number is (571)272-4812. The examiner can normally be reached 8:00-4:30 M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frantz Jules can be reached at 571-272-6681. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARC E NORMAN/ Primary Examiner, Art Unit 3763
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