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 .
35 USC 102 rejections
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.
Claim(s) 1-4, 7-10 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by GB 2528757 (Howes).
Regarding independent claims 1, 7, Howes discloses a system comprising: a thermodynamic cycle system (70) operable in an energy storage mode (fig. 3) to convert electricity into stored thermal energy in a thermal storage medium (143, 163) by transferring heat from a working fluid to a warm thermal storage medium (143, 163), resulting in a hot thermal storage medium (143, 163), wherein the energy storage mode comprises the working fluid circulating through at least a compressor (113) and a first heat exchanger (145, 146) wherein the working fluid is in thermal contact with the thermal storage medium (143, 163), and wherein the thermodynamic cycle system is further operable in a power generation mode (fig. 4c) to convert at least a portion of the stored thermal energy into electricity, wherein the power generation mode comprises the working fluid circulating through at least the first heat exchanger (145, 146), wherein the working fluid is in thermal contact with the thermal storage medium (143, 163), and through a turbine (115); and an electric heater (see description, p. 7, |. 6-15) in thermal contact with the hot thermal storage medium (143, 163), wherein the electric heater is operable to heat the hot thermal storage medium (143, 163) above a temperature
achievable by transferring heat from the working fluid to the warm thermal storage medium (see description, page 7, lines 8-10).
Regarding independent claim 7 only, similarly, a method of operating such a system according to claim 7 is also disclosed in Howes (fig. 3-4c, description p. 2-10).
Regarding dependent claims 2-4, 8-10, arrangements according to claims 2-4 as well as associated method steps according to claims 8-10 are disclosed in Howes (fig. 3-4c, description p. 2-10).
35 USC 103 rejections
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 5-6, 11-12, are rejected under 35 U.S.C. § 103(a) as being unpatentable over GB 2528757 (Howes). discloses all the claimed subject matter as set forth above in the rejection of claim 1, but does not disclose that the electricity from a power generation source electrically connected with the electric heater, apart from any intervening electrical grid (claims 5, 11), and the specific thermal salt or solar salt being used as thermal storage medium . However, according to MPEP 2144.05, II. ROUTINE OPTIMIZATION, A) Optimization Within Prior Art Conditions or Through Routine Experimentation, note In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). The concept of changing the energy sources and thermal storage medium in these claims involves only change of proportions of the materials, substitute of equivalence or the result of “routine optimization”. It would have been a “routine optimization” for a person having ordinary skill in the art to elect the specific electricity source and specific thermal/solar salts as claimed in Howes for the purpose of achieving equivalent power output based on the specifically elected energy sources and thermal storage medium.
Obviousness Double Patenting rejections
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent 11,982,228, or US 11,578,650, or US 11,396,826, or US, 11,454,167. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Regarding independent claim 1, claim 3 of US 11,982,228, claim 10 of US 11,578,650, claim 2 of US 11,396,826, or claim 1 of US 11,454,167 anticipates claim 1 of this application.
Regarding independent claim 7, claim 15 of US 11,982,228, or claim 4 of US 11,396,826, anticipates claim 7 of this application.
The claims of the patents recite more elements than in this application and therefore the claims of this application should be rejected under obviousness double patenting rejection. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993).
Regarding dependent claims 2-6, 8-12, the dependent claims in each of the patents listed above recite equivalent subject matter. It would have been obvious for a person having ordinary skill in the art to rearrange the claimed elements of US 11,454,167 to come up with the same method/apparatus of this application for the purpose of performing the same functions as routine optimization, see MPEP 2144.05.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Conclusions
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/HOANG M NGUYEN/Primary Examiner, Art Unit 3746
HOANG NGUYEN
PRIMARY EXAMINER
ART UNIT 3746
Hoang Minh Nguyen
9/9/2025