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 .
This action is responsive to Applicant’s response to election/restriction filed 05/04/2026.
Claims 1-14 are currently pending.
The Drawings filed 08/14/2024 are approved by the examiner.
Applicant’s election without traverse of Group II, claims 10-14, in the reply filed on 05/04/2026 is acknowledged. Claims 1-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Interpretation
Independent claim 10 recites a “low temperature phase change transition material having a phase change transition temperature of about 22°C to about 36°C”. While this component recites a term of degree or relative terminology (that the phase change transition material is a “low temperature” phase change transition material), the claim recites a clear and definite standard of the metes and bounds of what constitutes a “low temperature” phase change transition material, e.g., a phase change transition temperature of about 22°C to about 36°C.
While there is an indefiniteness issue raised by the terminology “a high low temperature phase change transition material” in the “hydrogenating” step (see below), the claim otherwise appears to hydrogenate the “low temperature phase change transition material” (having a phase change transition temperature of about 22°C to about 36°C) to increase its melting/freezing temperature (i.e., increase its phase transition temperature) and obtain a high temperature phase change transition material. A high temperature phase change transition material that is a hydrogenated, increased melting/freezing temperature product of the low temperature phase change transition material (that had a phase change transition temperature of about 22°C to about 36°C) is construed as clearly meaning the “high temperature” is simply and broadly a melting/freezing/phase transition temperature higher than the initial, low temperature phase change transition material (that had a phase change transition temperature of about 22°C to about 36°C). For example, if the low temperature phase change transition material (PCM) had a transition temperature of 23°C, the high temperature PCM made by hydrogenating the low temperature PCM would/must have a melting/freezing/transition temperature of greater than 23°C; similarly, if the low temperature phase change transition material (PCM) had a transition temperature of 32°C, the high temperature PCM made by hydrogenating the low temperature PCM would/must have a melting/freezing/transition temperature of greater than 32°C.
Terms of degree are not necessarily indefinite; claim language employing terms of degree has long been found definite where it provides enough certainty to one of skill in the art when read in the context of the invention. See MPEP 2173.05(b).
Additionally in claim 10, the preamble recitation that the formed microencapsulated blend of phase change materials is “for mattress assemblies” is merely an intended use limitation. The later recitation in that “wherein the melting/freezing temperature of the high temperature phase change transition material is configured to remain crystalline during use in the mattress assemblies” is merely a functional limitation that, while not necessarily requiring a mattress be present, requires the melting/freezing temperature of the high temperature PCM be capable of performing the recited function (remain crystalline at temperatures normally encountered during use of a mattress); this likely further limits the scope of the melting/freezing/phase transition temperature of the high temperature PCM as mattresses would be exposed to temperatures above room temperature (above 22°C) such as about a normal human body temperature (about 37°C) during use.
Claim Objections
Claims 12 and 14 are objected to because of the following informalities:
In claim 12, there is a period between the palm oil and palm kernel oil species in the list of low temperature phase change materials. Applicant is suggested to change the period (“palm oil. palm kernel oil,”) to a comma (“palm oil, palm kernel oil,”). The claim is objected to because periods may not be used in the claims except for besides the end of a claim and abbreviations. See also MPEP 608.01(m).
Claim 14 recites a limitation regarding “the preformed capsulated”. This appears to be a clear mistake/typo for the term “a preformed capsulate” (i.e., “capsulated” without the letter “d”) recited in the independent claim (which recites presence and arrangement of “a performed capsulate”). Applicant is suggested to amend “capsulated” to read as “capsulate” in order to improve clarity in the claim. If this assumption that the term “capsulated” is a typo is incorrect, then the claim is otherwise indefinite under an antecedent basis rationale and further action from Applicant is required.
Appropriate correction is required.
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 10-14 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.
In claim 10, note the recitation that the “hydrogenating” step provides “a high low temperature phase change transition material”. While the Examiner assumes Applicant meant to recite the step provides “a high temperature phase change transition material” instead, the claim is unfortunately indefinite in view of what is actually recited. While a “low temperature phase change transition material” and a “high temperature phase change transition material” are individually clear and definite in view of the meanings/standards recited in the claim (see the above discussion of claim interpretation, Id.), it is unclear what a “high low temperature” means. The term 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.
This issue also technically causes the term “the high temperature phase change material” in the “encapsulating” step to lack sufficient antecedent basis in the claim further rendering the claim indefinite.
Applicant is suggested to amend “high low temperature” to merely “high temperature” in order to overcome this issue. For purposes of comparing prior art, the claim is interpreted as if this amendment were made.
Also in claim 10, there are two limitations that appear to be at-odds with each other that also render the claim indefinite with how the low temperature phase change transition material is selected. At the beginning of the claim, the claim recites the process comprises a “selecting” step of “selecting a low temperature phase change transition material having a phase change transition temperature of about 22°C to about 36°C, wherein the low temperature phase change transition material is at least partly unsaturated”. This is very comprehensive and has a clear scope (Id.). However, the end of the claim recites the limitation “the low temperature phase change transition material is selected to transition between a solid phase and a liquid phase during use and non-use of the mattress assemblies”.
While the two limitations describing how the low temperature phase change transition material is selected are synonymous in some aspects (at the transition temperatures of about 22°C to about 36°C), the second selecting limitation is certainly more broad than the first selecting limitation (e.g., transition temperatures below 22°C are additionally encompassed). This raises confusion as to what the second limitation imparts to the claim. The claim effectively recites a specific narrow limitation but then later recites a more broad limitation beyond that of the specific narrow limitation. Is the second selecting limitation redundant or does it (improperly) impart a different, more broad scope than the first selecting limitation?
For purposes of comparing prior art, the second selecting limitation is extended little patentable weight (the low temperature phase change material is selected to have a phase change transition temperature of about 22-36°C and is partially unsaturated per the first “selecting” step, which would be expected to be capable of transitioning between a solid and a liquid phase during use and non-use of a mattress but not extend the scope of the functional limitation below 22°C as permitted by the later, more broad limitation).
Claims 11-14 are also indefinite for their dependency on claim 10.
Despite the claim objection set forth above, claim 14 appears to indicate the performed capsulate that encapsulates the PCM blend comprises a 2-ply construction of liquid impermeable and flexible sheets. However, note that the parent claim 10 indicates the process (including the encapsulation) forms a “microencapsulated blend of phase change materials”. However, it is unclear (under an indefiniteness rationale rather than a clear-cut 112(d) rationale) how encapsulating the blend of phase change materials in a sheet article constitutes any form of a microencapsulation. Rather, isn’t this a macroencapsulation? See, for example, [0012], [0025], and the Figures of the original specification.
There is a great deal of confusion and uncertainty as to the proper interpretation of claim 14 due to the contradictory scope between its macroencapsulation scope compared to the parent claim’s microencapsulation scope, and a person of ordinary skill in the art would not be apprised as to the scope of the invention. Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. See MPEP 2173.06.
Appropriate correction/clarification is required.
Allowable Subject Matter
Despite the claim objections and 112 rejection(s) set forth above, claims 10-13 are allowable over the closest prior art of record.
The closest prior art of record fail to teach or suggest a process of forming an encapsulated blend of phase change materials (PCM) comprising, inter alia, selecting a partially unsaturated material with the recited narrow phase transition temperature range as a low temperature PCM, hydrogenating the low temperature PCM to obtain a high(er) phase transition/melting/freezing temperature PCM, and encapsulating a blend of the two PCMs (i.e., additional stock of the low temperature PCM with the obtained high temperature PCM).
Suppes (US 6,574,971 B2) teaches a method for producing phase change material chemicals containing fatty acids or fatty acid derivatives, including triglyceride feed stocks such as animal fat, soybean oil, and palm oil (abstract, col. 4 line 49+, and col. 6 lines 30-36). The production method may comprise, inter alia, hydrogenation in the workup (col. 6 lines 25-30), which is disclosed as being known to increase the freezing point of the hydrogenated component (col. 3 lines 5-10). However, Suppes fails to teach or suggest selection of the particular narrow phase change transition temperature range of the initial PCM to be hydrogenated or blending the hydrogenated PCM with the initial PCM as claimed.
Farid (WO 2011/099871 A1) teaches a method of preparing saturated fatty acid esters suitable for use as phase change materials comprising hydrogenating fatty acid esters obtained by processing a triglyceride-containing starting material (abstract). The triglyceride-containing starting material preferably comprises a fat or oil or mixture thereof such as tallow, palm oil, coconut oil, rapeseed oil, sunflower oil, canola oil or soybean oil (p.3 lines 1-3). The hydrogenation both increases the melting point and narrows the melting point range of the fatty acid esters (p. 8 lines 10-17). A narrow melting point range is a desired characteristic of a phase change material (Id.). The obtained phase change materials may be encapsuled (p.11 lines 24-28). However, Farid fails to teach or suggest blending the obtained, hydrogenated phase change material with the initial starting material as claimed. Farid arguably also teach away from performing such a step due the disclosing the hydrogenation step desirably narrows the melting point range of the fatty acid esters when forming the phase change material. A person of ordinary skill in the art would be dissuaded from blending the hydrogenated material (with the desirably narrowed melting point range) with the initial, precursor material as this would certainly negatively impact, i.e., undo and/or broaden, the obtained desirable narrowed melting point range.
MacKay (US 2012/0193572 A1) teaches a bedding product comprising a microencapsulated phase change material having a melting point in the range of -30 to 55°C (abstract). The phase change material comprises a paraffin, crystalline ester, acid, or fatty alcohol, or mixture thereof (para. 0027). While the encapsulating material may comprise a hydrogenated polymer (para. 0033), MacKay fails to teach or hydrogenating the/a phase change material to obtain a second phase change material with a higher melting temperature and/or blending stocks of the initial phase change material with the hydrogenated phase change material as claimed.
Sambu et al. (WO 2016/090129 A1) teach a liquid cleaning composition comprising a first PCM with a higher melting temperature and a second PCM with a lower melting temperature (abstract & p.1-2). The first PCM is selected from various esters and fatty acids and the second PCM is selected from alkanes, alkenes and alkynes (p.2). Sambu et al. fail to teach or suggest a step of hydrogenating the second PCM with a lower melting temperature to obtain the first PCM with a higher melting temperature. Furthermore, even if a hydrogenation step was taught, hydrogenation of alkanes, alkenes and alkynes (Sambu et al.’s second PCM) would not obtain an ester or a fatty acid (Sambu et al.’s first PCM). Sambu et al. additionally fail to teach or suggest encapsulating their blend of PCMs.
Barbot et al. (WO 2017/182336 A1) teach a composition comprising microcapsules of phase-change material (abstract). The phase-change material has a phase change temperature of between -5° C and 80° C, preferably between 18° C and 26° C for materials intended for use in living quarters, and preferably is a vegetable wax. An exemplary/preferred phase change material is composed of fatty esters originating from palm oil which changes phase at 23° C. See p.3-4. However, Barbot et al. fail to teach or suggest hydrogenating the palm oil fatty esters or more broad vegetable wax phase-change material(s) to obtain a second phase change material with a higher melting temperature and/or blending stocks of the initial phase change material with the hydrogenated phase change material as claimed.
Narine et al. (US 10,316,235 A1) teach containers for cooling food and beverages utilizing a phase change material (abstract). The phase change material comprises a diol diester (abstract and col. 3+) that may be made from fatty acids isolated from a hydrolyzed fatty acid ester material such as a hydrogenated vegetable oil made from soybean oil, palm oil, etc. (col. 4 lines 6-45). While Narine et al. effectively teach forming a diol diester by hydrogenating and hydrolyzing a vegetable oil and then providing the diol diester as a phase change material, Narine et al. fail to teach or suggest blending hydrogenated/processed PCM with the initial vegetable oil as claimed.
The remaining references listed on Form 892 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or described above.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
June 23, 2026
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