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 .
Response to Amendment
This action is responsive to the amendment and remarks filed by Applicant. Claims 7, 8 and 16-20 are cancelled. Claims 1, 12, 23 and 25 are amended. Claims 1-6, 9-15 and 21-25 are pending and are examined on the merits herein. The amendment has been entered.
In view of Applicant's amendments and arguments, the following rejections set forth in the previous Office Action are WITHDRAWN:
(a) The rejection of claim 1 under 35 U.S.C. 112(a) directed to a solid-state heat pump "configured to generate heat for absorption into the thermal storage system and the heat distribution surface," in view of the amendment reciting directional heat transfer between a recited first side and second side.
(b) The rejection of claim 1 under 35 U.S.C. 112(a) directed to a heat distribution surface that is both substantially L-shaped and has cavities passing entirely through the surface, both limitations having been removed by amendment.
(c) The rejection of claim 21 under 35 U.S.C. 112(a). Paragraph [0033] and FIG. 7 of the publication reasonably convey possession of a first signal that increases current and heat transfer across the solid-state heat pump of a unit proximate an individual and a second signal that modulates current and heat transfer across the solid-state heat pump of a unit remote from the individual.
(d) The rejection of claim 23 under 35 U.S.C. 112(a) to the extent it was premised on the proposition that the original disclosure must "expressly describe the thermal storage component as independently claimable, separate from the system of claim 1." Applicant's argument at Remarks pp. 8 is persuasive. MPEP § 2163.03 identifies circumstances in which a written description issue arises; it does not impose a requirement that a component of a disclosed combination be described as a separately claimable invention. A new written description rejection of claim 23 on a different ground is set forth below.
(e) The rejections of claims 7 and 8 under 35 U.S.C. 112(b) are moot in view of the cancellation of those claims.
(f) The rejections under 35 U.S.C. 112(b) of claim 1 directed to "substantially L-shaped" and to "high thermal storage capacity," of claim 12 directed to "high thermal storage capacity" and to the recited combination of shell thickness and variable-thickness structural support profile, of claim 23 directed to "the first surface being greater than the second thickness," and of claim 25 directed to the "about" endpoints, are withdrawn in view of the corresponding amendments.
(g) The rejections under 35 U.S.C. 112(b) of claim 1 directed to "localized around," of claim 15 directed to "proximate," and of claim 21 directed to "proximate" and "remote," are withdrawn. Upon further consideration, and read in light of paragraphs [0017] and [0027]-[0029] of the publication, these terms inform a person of ordinary skill in the art of the scope of the invention with reasonable certainty. See MPEP § 2173.02(II).
New grounds of rejection necessitated by Applicant's amendment are set forth below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6, 9-15 and 21-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the claim as amended recites a solid-state heat pump "configured to transfer heat from the first side to the second side to heat the thermal storage system when operated in a heating mode, and to transfer heat from the second side to the first side to heat the distribution surface when operated in a cooling mode," where the first side faces the heat distribution surface and the second side faces the thermal storage system.
The specification as originally filed does not use the terms "heating mode" or "cooling mode," nor does it describe the temperature control unit as being operable in named modes so designated. Paragraph [0024] describes only that heat is moved from one side of the heat pump to the other, such that the heat pump is "generating heat at surface 106 (and providing cooling to storage system 104) or providing heat to storage system 104 (and providing cooling at surface 106)." The specification does not assign the labels "heating mode" and "cooling mode" to either of these two conditions.
Moreover, the modes as claimed are inverted relative to the frame of reference established by the disclosure. Paragraph [0021] of the publication states that the heat distribution surface "distributes heat from temperature control unit 102 over its surface area, thus increasing the heat transfer between unit 102 and the environment localized around unit 102." The heat distribution surface is therefore the surface through which the unit conditions the localized environment. As claimed, the recited "heating mode" transfers heat away from the heat distribution surface and into the thermal storage system, which cools the localized environment, while the recited "cooling mode" heats the heat distribution surface, which heats the localized environment. The original disclosure does not reasonably convey possession of a temperature control unit so configured or so designated, and the added mode terminology constitutes new matter. See MPEP §§ 2163.06, 2163.07.
Regarding claim 23, the claim is directed to a thermal storage component reciting, in combination, (i) one or more substances configured to store heat in the form of latent heat selected from a closed Markush group, (ii) one or more hollow regions including the substance, and (iii) an outer shell having a first thickness at a surface adjacent a solid-state heat pump greater than a second thickness at an opposite surface.
The only thermal storage component disclosed in the specification is the scaffolding structure 300 of FIG. 3, which is described at paragraph [0018] of the publication as being "composed of a high thermal conductivity material, i.e., greater than 100 W/mK, with a polymeric coating for chemical protection," as directing and distributing "heat substantially uniformly throughout the storage system," and as including the hollow regions 302 and outer shell 306 within that structure. Claim 23 omits the scaffolding structure entirely and claims the hollow regions and differentially-thick outer shell as free-standing features of any thermal storage component.
The disclosure of a single species does not, without more, provide written description support for the genus now claimed, and the omission from the claim of a feature disclosed as essential to the described embodiment raises a written description issue. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 94 USPQ2d 1161 (Fed. Cir. 2010) (en banc); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989); MPEP §§ 2163.03(V), 2163.05(III). Applicant is invited to identify where the originally filed disclosure conveys possession of a thermal storage component having the recited hollow regions and differential shell thickness independent of the disclosed scaffolding structure.
Claims 2-6, 9-15, 21, 22, 24 and 25 are also rejected under 35 U.S.C. 112(a) for being dependent upon a rejected claim.
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 1-6, 9-15 and 21-25 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.
Claim 1 recites a heat pump configured "to heat the thermal storage system when operated in a heating mode" and "to heat the distribution surface when operated in a cooling mode." The terms "heating mode" and "cooling mode" are not defined in the specification, and as recited they are internally inconsistent with the disclosed frame of reference: the mode designated "heating" removes heat from the heat distribution surface through which the unit conditions the environment (see para. [0021]), while the mode designated "cooling" adds heat to that surface. A person of ordinary skill in the art cannot determine whether the mode designations refer to the thermal effect on the localized environment or to the thermal effect on the recited internal components, and therefore cannot ascertain the metes and bounds of the claim. Clarification and/or correction is required.
Claim 1 further recites "to heat the distribution surface." There is insufficient antecedent basis for "the distribution surface" in line 19 of the claim; the claim earlier recites "a heat distribution surface." For purposes of examination, "the distribution surface" is treated as "the heat distribution surface."
Claims 2, 9, 10 and 11 recite "one or more substances of high latent heat capacity." The term "high" is a relative term of degree. The specification does not provide a threshold, unit of measurement, or comparative baseline that would permit a skilled artisan to determine what latent heat capacity is sufficiently "high" to satisfy the limitation. The recitation of exemplary values at paragraph [0017] does not supply an objective standard, because those values are introduced as non-limiting embodiments spanning a broad range. This is the same defect identified in the previous Office Action with respect to claim 1, which Applicant addressed by amendment to claim 1 but not to claims 2, 9, 10 and 11. See MPEP § 2173.05(b).
Claim 23 recites "one or more hollow regions including the one or more substance of high latent heat capacity." This limitation is indefinite for three independent reasons. First, there is insufficient antecedent basis for "the one or more substance of high latent heat capacity," because amended claim 23 earlier recites "one or more substances configured to store heat in the form of latent heat" and no longer recites any substance "of high latent heat capacity." Second, the singular "substance" is inconsistent with the plural "substances" recited earlier in the claim, rendering it unclear whether the hollow regions must include all of the recited substances or only one. Third, "high latent heat capacity" is a relative term of degree lacking an objective standard, for the reasons given above with respect to claim 2.
Claim 23 further recites "a surface configured to be situated adjacent to the solid-state heat pump" and "a surface configured to be situated opposite the solid-state heat pump." The solid-state heat pump appears only in the preamble, as an element of a system of which the claimed thermal storage component forms a part, and is not positively recited as a component of the claimed article. Because the two surfaces of the outer shell are defined solely by their spatial relationship to an element that is not part of the claimed subject matter, and because the claim imposes no structural feature by which either surface may be identified in the component as claimed, a skilled artisan cannot determine which surface must have the first thickness and which must have the second thickness. The metes and bounds of the limitation therefore cannot be determined with reasonable certainty.
Claim 24 recites "the one or more substances of high latent heat capacity." There is insufficient antecedent basis for this limitation in amended claim 23, for the reasons given above. The claim is further indefinite for the recitation of the relative term "high."
Claims 3-6, 12-15, 21, 22 and 25 are also rejected under 35 U.S.C. 112(b) for being dependent upon a rejected claim.
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.
Claim(s) 23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Leimkuehler et al. (US 8,342,454 B1).
In regard to claim 23: Leimkuehler teaches a thermal storage component of a system for providing distributed heating and cooling, the system comprising a solid-state heat pump, the thermal storage component including: (Leimkuehler discloses a self-contained thermal storage component in the form of a demountable Thermal Control Unit (TCU 102; see FIGS. 3-7 and col. 8, and TCU 202; see FIGS. 10-13)). Note that the recitation of "a system for providing distributed heating and cooling, the system comprising a solid-state heat pump" appears in the preamble and recites the intended environment of use of the claimed component; the solid-state heat pump is not positively recited as an element of the claimed thermal storage component and imposes no structural limitation on the component itself. Accordingly, this recitation is not accorded patentable weight beyond requiring that the component be capable of such use. See MPEP §§ 2111.02(II) and 2114(II).
one or more substances configured to store heat in the form of latent heat (Col. 11, line 16-40: Leimkuehler discloses a Phase-Change Material (PCM 160) contained within the cooling component 150, and expressly teaches that heat energy is absorbed during the phase transition, through a latent energy process. Leimkuehler further teaches that an ideal PCM comprises high heat capacity and high heat of fusion);
the one or more substances being selected from the group consisting of organic phase change materials, inorganic phase change materials, microencapsulated phase change materials, and combinations thereof; (Col. 11, line 16 to col. 12, line 22: Leimkuehler selects water as the preferred PCM 160, and further teaches that PCM 160 may comprise water together with added substances such as nucleating agents and freezing-point depressants. Water is an inorganic phase change material, and therefore falls within the recited closed Markush group);
one or more hollow regions (146) including the one or more substance of high latent heat capacity (col. 10, line 39-63: Leimkuehler discloses housing 138 defining a fully enclosed internal chamber 146 in which the cooling component 150 and PCM 160 are contained (see FIGS. 6B and 7)). In the alternative embodiment of FIGS. 11-13, PCM 160 is retained within a flexible bag 214 located internally within container 212. Either arrangement constitutes one or more hollow regions including the recited substance.
an outer shell (138) having a first thickness at a surface configured to be situated adjacent to the solid-state heat pump and a second thickness at a surface configured to be situated opposite the solid-state heat pump (see FIGS. 6B and 7: Leimkuehler discloses an outer shell in the form of housing 138, having a closed aft end 142, a continuous peripheral sidewall 144, and a forward open end 140 covered by removable cover plate 152. The closed aft end 142 constitutes heat-exchanging wall 158, which is the surface through which thermal exchange with the adjacent thermal environment occurs and which is therefore the surface configured to be situated adjacent an external heat source or sink; the cover plate 152 closing the forward open end 140 constitutes the opposing surface. In the alternative embodiment (fig. 11), container 212 forms a protective outer shell having a fixed external volume, closed by thermally-conductive cover plate 218 which forms the heat-transfer interface 216).
Leimkuehler does not explicitly teach that the first thickness is greater than the second thickness.
However, Leimkuehler teaches that the closed aft end 142 further comprises, engaged within the phase-change material, a symmetrical array of transfer fins 178 projecting from heat-exchanging wall 158 into internal chamber 146 to provide a supplementary pathway of heat transfer between PCM 160 and heat-exchanging wall 158 (see FIG. 7 and claim 7 of Leimkuehler). The aft end of the shell, comprising the heat-exchanging wall together with its integral projecting fin array, is thereby of greater material thickness than the planar removable cover plate 152 opposite it. Leimkuehler further teaches that the opposite end of the chamber is deliberately made thermally resistive by compressible insert 162, which "provides a degree of thermal insulation, thus preferably functioning to reduce the rate of thermal migration of atmospheric-entry heat across TCU 102," and Leimkuehler repeatedly emphasizes mass efficiency as a design objective.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the outer shell of Leimkuehler with a greater wall thickness at the heat-exchanging surface than at the opposing surface, in order to provide adequate material for the integral heat-transfer structures, to spread heat laterally across the heat-exchanging wall, and to withstand the mechanical loads imparted by expansion of the phase-change material during freezing, while minimizing thickness and therefore mass and parasitic heat leak at the opposing surface, consistent with Leimkuehler's stated objectives of maximizing heat transfer at the heat-exchanging wall while thermally isolating and lightening the remainder of the unit.
Further, and in the alternative, the recited thickness relationship is a matter of relative dimensions. Where the only difference between the prior art and the claims is a recitation of relative dimensions, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830 (1984); see also In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); MPEP § 2144.04(IV)(A). The present specification recites the thickness relationship at paragraph [0018] without ascribing any criticality, stated purpose, or unexpected result to it.
In regard to claim 24: Leimkuehler teaches the thermal storage component of claim 23, wherein the one or more substances of high latent heat capacity have a latent heat of at least about 150 J/g at a phase transition temperature (see Col. 17, line 6-18: Leimkuehler expressly teaches that "the heat of fusion for ice is 333 kJ/kg," i.e., 333 J/g, for the water-based PCM 160. A latent heat of 333 J/g is at least about 150 J/g).
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Leimkuehler as applied to claim 23 above, and further in view of Cauchy (US 2017/0354190 A1).
In regard to claim 25: Leimkuehler teaches the thermal storage component of claim 23, wherein Leimkuehler discloses PCM 160 in the form of water, having a solid-to-liquid phase change at 0 °C, but does not explicitly teach the one or more substances configured to store heat in the form of latent heat have a solid to liquid phase change between 10 °C and 34 °C.
However, Cauchy teaches a thermal storage arrangement in which a phase change material is placed in thermal communication with a solid-state thermoelectric heating and cooling device and a thermally conductive heat distribution member for conditioning the localized environment of a human occupant (paras. [0071]-[0075]; FIGS. 5 and 9, showing phase change material 76/163 in thermal communication with thermally conductive material 72/162 and thermoelectric module 82/168). Cauchy expressly teaches that the phase change material is to be selected according to the operating temperature of the application, stating that "other phase change materials could be used that are applicable to the phase change temperature that is desired for the application," (¶ 0059) and identifying suitable candidates including hydrated potassium bicarbonate, sodium acetate, paraffin, fatty acids, inorganic salt hydrates, eutectics, and combinations thereof. Cauchy further teaches that the solid-liquid phase change is the most practical for use as thermal storage in such occupant-comfort applications.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute, for the water-based phase-change material of Leimkuehler, a phase change material having a solid-to-liquid transition between 10 °C and 34 °C as taught by Cauchy, in order to match the transition temperature of the storage medium to the temperature range over which the thermal storage component is to absorb and release heat, thereby obtaining the benefit of latent-heat storage at the operating temperature of the application rather than at 0 °C. Such a selection is the substitution of one known phase change material for another to obtain predictable results, and the transition temperature is a result-effective variable whose optimization within a workable range is within the level of ordinary skill. See MPEP §§ 2143(I)(B) and 2144.05(II).
Remark
It is noted that due to the scope of the 112 issues as discussed above, a prior art rejection has not been set forth at this time (For claims 1-6, 9-15 and 21-22). However, the lack of a prior art rejection is not to be construed as an indication of allowable subject matter, and any amendments to the claims are subject to further search and/or consideration of the prior art.
Pertinent Art
Carr et al. (US 6,481,213 B2): Carr teaches substances configured to store heat in the form of latent heat, sensible heat, or both, wherein Carr discloses a personal thermal comfort system 1 including a device 2 for conditioning a localized zone, the device being capable of both heating and cooling the localized zone occupied by a user (FIGS. 1, 5 and 6). Carr teaches that the device is "entirely contained within the localized zone occupied by the user," that the effect it provides "is essentially felt only by the user and does not affect neighbors," and further discloses a multi-station embodiment in which a plurality of air handler units are distributed among multiple workstations, each having its own temperature sensor and individual control connections "to meet the individual preferences of the user." Carr discloses a thermal storage reservoir containing a thermal storage mass 22, and expressly teaches that the storage mass "may be as simple as a volume of water for sensible heat storage energy or involve ice formation for improved storage density," and that "other phase change materials, such as clathrate hydrates, may also be used for improved storage density."
Response to Arguments
Applicant’s arguments with respect to the amended claims have been considered but are moot in view of the new ground(s) of rejection.
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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/W.M/Examiner, Art Unit 3763
/FRANTZ F JULES/Supervisory Patent Examiner, Art Unit 3763
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