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 of Invention I in the reply filed on 5/13/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 24 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/13/2026.
Status of Claims
The status of the claims as filed in the submission dated 5/13/2026 are as follows:
Claims 1-24 are pending;
Claim 24 is withdrawn from consideration;
Claims 1-23 are being examined.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore:
Phase change material with anisotropic thermal conductive fibers (claims 1 and 11);
Container (claim 11);
Cylindrical container (claim 21);
A module and a plurality of modules (claim 22);
must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked. As explained in MPEP § 2181, subsection I, claim limitations that meet the three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Currently, no claim limitations invoke 112(f).
Claim Rejections - 35 USC § 112(b)
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 1-23 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 “long” in claims 1 and 11 is a relative term which renders the claim indefinite. The term “long” 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. It is unclear as to what specific measurement of length is required in order to be considered “long”.
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.
Claims 1-20, 22, and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang (US10454147B2).
Re Claim 1. Yang teaches a thermal energy storage composition (10a, 10b, 10c) comprising: a phase change material; and a plurality of long, anisotropic thermal conductive carbon fibers mixed with the phase change material; wherein the anisotropic thermal conductive carbon fibers increase the thermal storage efficiency of the composition (Figure 1A; Yang teaches in Column 3 lines 23-67 a thermal energy storage device comprises a microfibrous media (MFM) and a phase change material (PCM). Yang teaches in Column 5 lines 4-13 that the MFM contains “the MFM further contains carbon fibers, graphite fibers, and/or carbon nanotubes, such as single-walled and/or multiwalled nanotubes”, wherein said materials are naturally anisotropic. Yang teaches the various materials of the PCM in Column 6 lines 4-10. Yang also teaches Column 6 lines 60-Column 7 line 32 that the PCM can also contain carbon nano-materials to increase the thermal conductivity of the thermal energy storage composition).
Re Claim 11. Yang teaches a thermal energy storage system comprising: a container (100); a phase change material (within 10a-10c) disposed within the container; and a plurality of long, anisotropic thermal conductive carbon fibers mixed with the phase change material in the container; wherein the anisotropic thermal conductive carbon fibers increase the effective thermal conductivity of the system, thereby accelerating phase change of the phase change material to reduce charge and discharge times of the thermal storage system (Figure 1A; Yang teaches in Column 3 lines 23-67 a thermal energy storage device comprises a microfibrous media (MFM) and a phase change material (PCM). Yang teaches in Column 5 lines 4-13 that the MFM contains “the MFM further contains carbon fibers, graphite fibers, and/or carbon nanotubes, such as single-walled and/or multiwalled nanotubes”, wherein said materials are naturally anisotropic. Yang teaches the various materials of the PCM in Column 6 lines 4-10. Yang also teaches Column 6 lines 60-Column 7 line 32 that the PCM can also contain carbon nano-materials to increase the thermal conductivity of the thermal energy storage composition).
Re Claim 2 & 12. Yang teaches the phase change material is present in an amount of at least 95% by weight (Column 3 lines 53-63).
Re Claim 3 & 13. Yang teaches the anisotropic thermal conductive carbon fibers are present in an amount of up to 5% by weight (Column 3 lines 53-63).
Re Claim 4 & 14. Yang teaches the anisotropic thermal conductive carbon fibers have a length in the range of 1 to 10 cm (Column 4 lines 36-44).
Re Claim 5 & 15. Yang teaches the phase change material has a thermal conductivity in the range of 0.1 to 0.6 W/(m*K) (Column 6 lines 4-10; Table 1 teaches various PCM that are within the recited range).
Re Claim 6 & 16. Yang teaches the thermal conductivity of the composition is greater than the thermal conductivity of the phase change material (Column 3 lines 64 to Column 4 line 13, Column 6 line 60 to Column 7 line 32).
Re Claim 7 & 17. Yang teaches the anisotropic thermal conductive carbon fibers have a greater thermal conductivity in an axial direction relative to a thermal conductivity in a radial direction (Column 5 lines 4-13; Column 6 lines 60-Column 7 line 32; carbon fibers naturally have a greater thermal conductivity in an axial direction relative to a thermal conductivity in a radial direction).
Re Claim 8 & 18. Yang teaches the thermal conductivity in the axial direction is in a range of 2-200 W/(m*K), and the thermal conductivity in the radial direction is in a range of 0.5-50 W/(m*K) (Column 5 lines 4-13; Column 6 lines 60-Column 7 line 32; Yang teaches the same carbon fibers as the applicant, and thus the carbon fiber of Yang would have the same material specifications. Thus, the carbon fiber of Yang would also have the thermal conductivity in the axial direction is in a range of 2-200 W/(m* K), and the thermal conductivity in the radial direction is in a range of 0.5-50 W/(m*K)
Re Claim 9 & 19. Yang teaches the thermal conductivity in the axial direction is approximately 2-10 times greater than the thermal conductivity in the radial direction (Column 5 lines 4-13; Column 6 lines 60-Column 7 line 32; Yang teaches the same carbon fibers as the applicant, and thus the carbon fiber of Yang would have the same material specifications. Thus, the carbon fiber of Yang would also have the thermal conductivity in the axial direction is approximately 2-10 times greater than the thermal conductivity in the radial direction).
Re Claim 10 & 20. Yang teaches the phase change material is an organic phase change material or an inorganic phase change material (Column 6 lines 4-10).
Re Claim 22. Yang teaches the container storing the phase change material and anisotropic thermal conductive carbon fibers defines a module (10a), and the thermal energy storage system comprises a plurality of said modules (10a, 10b, 10c) (Figure 1A; Column 3 lines 23-53).
Re Claim 23. Yang teaches a working temperature of the system is in a range of from −50° C. to 700° C (Column 5 lines 45-Column 6 line 3, Table 1).
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 (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 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 21 is rejected under 35 U.S.C. 103 as being unpatentable over Yang (US10454147B2) in view of Colvin (US4807696).
Re Claim 21. Yang teaches the container is rectangular in shape (Figure 1A) but fails to specifically teach the container is cylindrical in shape.
However, Colvin teaches it is known to form thermal energy storage containers as cylinders (Figures 1-3).
Therefore, in view of Colvin’s teaching, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select a cylindrical shape for the container of Yang in order to provide uniform thickness of the phase change material around an individual cell.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892 for other relevant prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRAVIS RUBY whose telephone number is (571)270-5760. The examiner can normally be reached M-F: 9AM-5PM.
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, Jianying Atkisson can be reached at 571-270-7740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TRAVIS RUBY/Primary Examiner, Art Unit 3763
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