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 Non-Final Office Action is in response to Applicant’s Application filed 31 December, 2024, in addition to Applicant’s Preliminary Amendments filed on 1 January, 2025 and 12 March, 2025. The amendments have been entered.
Disposition of Claims
Claims 39-58 are pending.
Claims 1-38 have been cancelled.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 17/438, 576, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
As to claim 39, the recitations of (1) “the plurality of the plates being spaced apart from one another by an average plate-to-plate distance that is no less than 1.43 inches and no greater than 1.57 inches” and (2) “wherein the numeric value of the average plate-to-plate distance when expressed in units of inches is equal to the sum of 1.34 and 23% of the numeric value of the thermal conductivity of the phase change material when expressed in units of W/(m*K). These recitations are considered to be new matter not described within the specification of the prior-filed application, Application No. 17/438, 576, so as to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. Particularly, the prior-filed application, Application No. 17/438, 576 fails to provide evidence that the “average plate-to-plate distance that is no less than 1.43 inches and no greater than 1.57 inches”. Looking at the originally-filed specification of the prior-filed application, Application No. 17/438, 576, the prior-filed application, Application No. 17/438, 576 fails to provide this range expressly. More so, the originally-filed specification of the prior-filed application, Application No. 17/438, 576 only provided evidence of the equation “d = 0.23k+1.34, for 0.41<k<1.00W/m.K” in equation (2). See paragraph [0072] of prior-filed application, Application No. 17/438,576 and/or corresponding paragraph [0073] of the associated pre-grant publication, Pub. No. 2022/0146210, of prior-filed application, Application No. 17/438,576. These equations do not provide support for the claimed range of the instant application, in view of the equation failing to provide a distance within units of distance, i.e., inches. Particularly, dimensional analysis of equation (2) is as follows:
d
=
0.23
W
m
*
K
+
1.34
d
=
[
w
m
*
K
]
, which provides distance in the units of Watts/meters*Kelvin. As such, inputting the upper and lower limits of the thermal conductivity associated with equation (2) yields an average plate-to-plate distance of 1.43 W/m*K to 1.57 W/m*K, not 1.43 inches to 1.57 inches, as claimed. Second, the recitations of claim 39 appears to include a written recitation of equation (2), which is further, new matter. Particularly, the amendment (2), recited above, includes wherein “the average plate-to-plate distance when expressed in units of inches is equal to the sum of 1.34 and 23% of the numeric value of the thermal conductivity of the phase change material”. The specification fails to provide “0.23” is a percentage. In fact, based on known principles of linear equations, “0.23” is merely a coefficient not a percentage, and expressing it as such is considered to be new matter. For these reasons, claim 39 are considered to include new matter not supported by the prior-filed application, Application No. 17/438, 576.
Claims 40-54 are dependent from rejected claim 39, and thereby, further are considered to include new matter not supported by the prior-filed application, Application No. 17/438, 576.
As to claim 55, the recitations of (1) “the plurality of the plates being spaced apart from one another by an average plate-to-plate distance that is no less than 1.33 inches and no greater than 1.44 inches” and (2) “wherein the numeric value of the average plate-to-plate distance when expressed in units of inches is equal to the sum of 1.33 and 28% of the numeric value of the thermal conductivity of the phase change material when expressed in units of W/(m*K). These recitations are considered to be new matter not described within the specification of the prior-filed application, Application No. 17/438, 576, so as to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. Particularly, the prior-filed application, Application No. 17/438, 576 fails to provide evidence that the “average plate-to-plate distance that is no less than 1.33 inches and no greater than 1.44 inches”. Looking at the prior-filed application, Application No. 17/438, 576, the prior-filed application, Application No. 17/438, 576 fails to provide this range expressly. More so, the originally-filed specification of the prior-filed application, Application No. 17/438, 576 only provided evidence of the equation “d = 0.28k+1.33, for 0.01<k<0.40W/m.K” in equation (1). See paragraph [0072] of prior-filed application, Application No. 17/438,576 and/or corresponding paragraph [0073] of the associated pre-grant publication, Pub. No. 2022/0146210, of prior-filed application, Application No. 17/438,576. These equations do not provide support for this range, in view of the equation failing to provide a distance within units of distance, i.e., inches. Particularly, dimensional analysis of equation (1) is as follows:
d
=
0.23
W
m
*
K
+
1.34
d
=
[
w
m
*
K
]
, which provides distance in the units of Watts/meters*Kelvin. As such, inputting the upper and lower limits of the thermal conductivity associated with equation (1) yields an average plate-to-plate distance of 1.33 W/m*K to 1.44 W/m*K, not 1.33 inches to 1.44 inches, as claimed. Second, the recitations of claim 55 appears to include a written recitation of equation (1), which is further, new matter. Particularly, the recitation includes wherein “the average plate-to-plate distance when expressed in units of inches is equal to the sum of 1.33 and 28% of the numeric value of the thermal conductivity of the phase change material”. The specification fails to provide “0.28” is a percentage. In fact, based on known principles of linear equations, “0.28” is merely a coefficient not a percentage, and expressing it as such is considered to be new matter. For these reasons, claim 55 are considered to include new matter not supported by the prior-filed application, Application No. 17/438, 576.
Claim 56 are dependent from rejected claim 55, and thereby, further are considered to include new matter not supported by the prior-filed application, Application No. 17/438, 576.
As to claim 57, the recitations of (1) “the plurality of the plates being spaced apart from one another by an average plate-to-plate distance that is no less than 1.56 inches” and (2) “wherein the numeric value of the average plate-to-plate distance when expressed in units of inches is equal to the sum of 1.44 and 12% of the numeric value of the thermal conductivity of the phase change material when expressed in units of W/(m*K). These recitations are considered to be new matter not described within the specification of the prior-filed application, Application No. 17/438, 576, so as to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. Particularly, the prior-filed application, Application No. 17/438, 576 fails to provide evidence that the “average plate-to-plate distance that is no less than 1.56 inches”. Looking at the prior-filed application, Application No. 17/438, 576, the prior-filed application, Application No. 17/438, 576 fails to provide this range expressly. More so, the prior-filed application, Application No. 17/438, 576 only provided evidence of the equation “d = 0.12k+1.44, for k<1.01W/m.K” in equation (3). See paragraph [0072] of prior-filed application, Application No. 17/438,576 and/or corresponding paragraph [0073] of the associated pre-grant publication, Pub. No. 2022/0146210, of prior-filed application, Application No. 17/438,576. These equations do not provide support for this range, in view of the equation failing to provide a distance within units of distance, i.e., inches. Particularly, dimensional analysis of equation (1) is as follows:
d
=
0.23
W
m
*
K
+
1.34
d
=
[
w
m
*
K
]
, which provides distance in the units of Watts/meters*Kelvin. As such, inputting the upper and lower limits of the thermal conductivity associated with equation (3) yields an average plate-to-plate distance of greater than 1.56 W/m*K, not 1.56 inches, as now claimed. Second, the recitations of claim 39 appears to include a written recitation of equation (3), which is further, new matter. Particularly, the recitation includes wherein “the average plate-to-plate distance when expressed in units of inches is equal to the sum of 1.44 and 12% of the numeric value of the thermal conductivity of the phase change material”. The specification fails to provide “0.12” is a percentage. In fact, based on known principles of linear equations, “0.12” is merely a coefficient not a percentage, and expressing it as such is considered to be new matter. For these reasons, claim 57 are considered to include new matter not supported by the prior-filed application, Application No. 17/438, 576.
Claim 58 are dependent from rejected claim 57, and thereby, further are considered to include new matter not supported by the prior-filed application, Application No. 17/438, 576.
Specification
Applicant states that this application is a continuation or divisional application of the prior-filed application. A continuation or divisional application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:
“[0072] In addition, in preferred embodiments of a thermal energy storage system described herein, the plates of the heat exchanger are substantially parallel to one another (here, "parallel" refers to spatial alignment, as opposed to the use of "in parallel" hereinabove, which referred to flow path). As described above, it is to be understood that two or more plates that are "substantially" parallel to one another are offset or off-axis by less than about 10 degrees, less than about 5 degrees, less than about 3 degrees, or less than about 1 degree. Such parallel plates are readily observed in FIGS. 1, 2, and 4, for instance. Moreover, in some cases, the plates are spaced apart from one another by an average distance (d) defined by one of Equations (1)-(3):
d=0.28k + 1.33, for 0.01 < k < 0.40 Equation (1);
d=0.23k + 1.34, for 0.41 < k < 1.00 Equation (2); and
d=0.12k + 1.44, for k > 1.01 Equation (3),
where d is the numeric value of the average plate-to-plate distance when expressed in units of inches and k is the numeric value of the thermal conductivity when expressed in units of W/(m*K) of the phase change material in contact with the plates. Applicant has discovered that such an average spacing of parallel plates described herein can improve system performance. Not intending to be bound by theory, it is believed that an average spacing described herein can improve the efficiency and homogeneity of thermal energy transfer and phase change events/activity through the total mass or body of PCM disposed in the system. It is further to be understood that the plates of a heat exchanger described herein can be formed from any material not inconsistent with the objectives of the present disclosure. In some cases, for instance, the plates are formed from metal.”
The disclosure of a continuation application must be the same as the disclosure of the prior-filed application; i.e., the continuation must not include anything which would constitute new matter if inserted in the original application. The disclosure of a continuation or divisional application cannot include anything which would constitute new matter if inserted in the prior-filed application. See MPEP § 211.05 – (I)(B). The above recitation was found to be new matter within the prior-filed parent application, Application No. 17/438,576, and is therefore, found to be new matter within this continuation application.
Claim Objections
Claim 40 is objected to because of the following informalities:
Claim 40 recites, “a first end of the outlet pipe of the heat exchanger passes
through the first exterior wall of the container; and a second end of the outlet pipe of the
heat exchanger passes through the second exterior wall of the container, thereby
providing fluid communication between the plates and an exterior of the container”,
wherein it is evident that the exterior of the container recited by claim 2 is the same
exterior of the container described by claim 2. Thereby, the claim should be corrected to
recite - -a first end of the outlet pipe of the heat exchanger passes through the first
exterior wall of the container; and a second end of the outlet pipe of the heat exchanger
passes through the second exterior wall of the container, thereby providing fluid
communication between the plates and [[an]] the exterior of the container - -.
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 39-58 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.
As to claim 39, preliminary amendments filed 12 March, 2025, recite (1) “the plurality of the plates being spaced apart from one another by an average plate-to-plate distance that is no less than 1.43 inches and no greater than 1.57 inches” and (2) “wherein the numeric value of the average plate-to-plate distance when expressed in units of inches is equal to the sum of 1.34 and 23% of the numeric value of the thermal conductivity of the phase change material when expressed in units of W/(m*K). These amended recitations are considered to be new matter not described within the specification, as originally-filed, to reasonably convey to one having ordinary skill within the art that the inventor or joint inventor had possession of the claimed invention at the time the application was effectively filed. Specifically, as provided in the ‘Priority’ and ‘Specification’ sections above, the subject matter is not supported by the priority documents. More so, the originally-filed specification and claims of the instant application sets for a different recitation of the subject matter presented within the preliminary amendments filed 12 March, 2025. Particularly, the originally-filed specification and claims recite the equation “d = 0.23k+1.34, for 0.41<k<1.00W/m.K” and “d=0.23* + 1.34, for 0.41<*<1.00W/m.K”. See paragraph [0191] and claim 1 of the originally-filed specification and claims within the instant application. Note, it is identified that the units provided included a typographical error, and that the thermal conductivity units were intended to be W/m*K, not W/m.K. However, this equation does not provide support for the claimed subject matter within the preliminary amendment filed 12 March, 2025, in view of the equation failing to provide a distance within units of distance, i.e., inches. Particularly, dimensional analysis of equation (2) is as follows:
d
=
0.23
W
m
*
K
+
1.34
d
=
[
w
m
*
K
]
, which provides distance in the units of Watts/meters*Kelvin. As such, inputting the upper and lower limits of the thermal conductivity associated with equation (2) yields an average plate-to-plate distance of 1.43 W/m*K to 1.57 W/m*K, not 1.43 inches to 1.57 inches, as now claimed. Second, the amendments of claim 39 appear to include a written recitation of equation (2), which is further, new matter. Particularly, the amendment (2), recited above, includes wherein “the average plate-to-plate distance when expressed in units of inches is equal to the sum of 1.34 and 23% of the numeric value of the thermal conductivity of the phase change material”. The specification fails to provide “0.23” is a percentage. In fact, based on known principles of linear equations, “0.23” is merely a coefficient not a percentage, and expressing it as such is considered to be new matter. For these reasons, the amendments to independent claim 39 are considered to be new matter, and thereby, claim 39 is rejected under 35 U.S.C. 112(a) for lack of written description support.
Claims 40-54 are dependent from rejected claim 39, and thereby, further rejected under 35 U.S.C. 112(a).
As to claim 55 , preliminary amendments filed 12 March, 2025, recite (1) “the plurality of the plates being spaced apart from one another by an average plate-to-plate distance that is no less than 1.33 inches and no greater than 1.44 inches” and (2) “wherein the numeric value of the average plate-to-plate distance when expressed in units of inches is equal to the sum of 1.33 and 28% of the numeric value of the thermal conductivity of the phase change material when expressed in units of W/(m*K). These amended recitations are considered to be new matter not described within the specification, as originally-filed, to reasonably convey to one having ordinary skill within the art that the inventor or joint inventor had possession of the claimed invention at the time the application was effectively filed. Specifically, as provided in the ‘Priority’ and ‘Specification’ sections above, the subject matter is not supported by the priority documents. More so, the originally-filed specification and claims of the instant application sets for a different recitation of the subject matter presented within the preliminary amendments filed 12 March, 2025. Particularly, the originally-filed specification and claims recite the equation “0.28*+1.33, for 0.01<*<0.40W/m.K”. See paragraph [0191] and claim 1 of the originally-filed specification and claims within the instant application. Note, it is identified that the units provided included a typographical error, and that the thermal conductivity units were intended to be W/m*K, not W/m.K. However, this equation does not provide support for this range, in view of the equation failing to provide a distance within units of distance, i.e., inches. Particularly, dimensional analysis of equation (1) is as follows:
d
=
0.23
W
m
*
K
+
1.34
d
=
[
w
m
*
K
]
, which provides distance in the units of Watts/meters*Kelvin. As such, inputting the upper and lower limits of the thermal conductivity associated with equation (1) yields an average plate-to-plate distance of 1.33 W/m*K to 1.44 W/m*K, not 1.33 inches to 1.44 inches, as now claimed. Second, the amendments of claim 1 appear to include a written recitation of equation (1), which is further, new matter. Particularly, the amendment (2), recited above, includes wherein “the average plate-to-plate distance when expressed in units of inches is equal to the sum of 1.33 and 28% of the numeric value of the thermal conductivity of the phase change material”. The specification fails to provide “0.28” is a percentage. In fact, based on known principles of linear equations, “0.28” is merely a coefficient not a percentage, and expressing it as such is considered to be new matter. For these reasons, the amendments to independent claim 55 are considered to be new matter, and thereby, claim 55 is rejected under 35 U.S.C. 112(a) for lack of written description support.
Claim 56 is dependent from rejected claim 55, and thereby, further rejected under 35 U.S.C. 112(a).
As to claim 57 , preliminary amendments filed 12 March, 2025, recite (1) “the plurality of the plates being spaced apart from one another by an average plate-to-plate distance that is no less than 1.56 inches” and (2) “wherein the numeric value of the average plate-to-plate distance when expressed in units of inches is equal to the sum of 1.44 and 12% of the numeric value of the thermal conductivity of the phase change material when expressed in units of W/(m*K). These amended recitations are considered to be new matter not described within the specification, as originally-filed, to reasonably convey to one having ordinary skill within the art that the inventor or joint inventor had possession of the claimed invention at the time the application was effectively filed. Specifically, as provided in the ‘Priority’ and ‘Specification’ sections above, the subject matter is not supported by the priority documents. More so, the originally-filed specification and claims of the instant application sets for a different recitation of the subject matter presented within the preliminary amendments filed 12 March, 2025. Particularly, the originally-filed specification and claims recite the equation “d = 0.12£+1.44, for >1.01W/m.K” and “d = 0.12*+1.44, for *>1.01W/m.K”. See paragraph [0191] and claim 1 of the originally-filed specification and claims within the instant application. Note, it is identified that the units provided included a typographical error, and that the thermal conductivity units were intended to be W/m*K, not W/m.K. However, this equation does not provide support for this range, in view of the equation failing to provide a distance within units of distance, i.e., inches. Particularly, dimensional analysis of equation (3) is as follows:
d
=
0.23
W
m
*
K
+
1.34
d
=
[
w
m
*
K
]
, which provides distance in the units of Watts/meters*Kelvin. As such, inputting the upper and lower limits of the thermal conductivity associated with equation (3) yields an average plate-to-plate distance of greater than 1.56 W/m*K, not 1.56 inches, as now claimed. Second, the amendments of claim 57 appear to include a written recitation of equation (3), which is further, new matter. Particularly, the amendment (2), recited above, includes wherein “the average plate-to-plate distance when expressed in units of inches is equal to the sum of 1.44 and 12% of the numeric value of the thermal conductivity of the phase change material”. The specification fails to provide “0.12” is a percentage. In fact, based on known principles of linear equations, “0.12” is merely a coefficient not a percentage, and expressing it as such is considered to be new matter. For these reasons, the amendments to independent claim 57 are considered to be new matter, and thereby, claim 57 is rejected under 35 U.S.C. 112(a) for lack of written description support.
Claim 58 is dependent from rejected claim 57, and thereby, further rejected under 35 U.S.C. 112(a).
Conclusion
When evaluating claims for obviousness under 35 U.S.C. 103, all the limitations of the claims must be considered and given weight, including limitations which do not find support in the specification as originally filed (i.e., new matter). Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983) aff’d mem. 738 F.2d 453 (Fed. Cir. 1984). See MPEP 2143.03 – II. The closest prior art of record is MUREN (US 2014251310 A1 – published 11 September, 2014). However, MUREN does not disclose, teach and/or otherwise suggest the combination of limitations required by independent claims 39, 55, and 57, and the dependents thereof, as presented within the claims set forth within the preliminary amendment filed 12 March, 2025. Without a teaching, suggestion, and/or motivation to modify the prior art to achieve the claimed invention, obviousness of the invention cannot be established. While no prior art rejection is made, in view of the limitations being considered and given weight when they do not have support in the originally-filed specification, determination of patentability cannot be determined. Corrections of the claims is necessary to overcome the rejection(s) under 35 U.S.C. 112(a), and such corrections do not necessarily preclude the application from receiving further rejections made under 35 U.S.C. 102 and/or 35 U.S.C. 103.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNA M MARONEY whose telephone number is (571)272-8588. The examiner can normally be reached Monday - Friday 7AM to 4PM, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Len Tran can be reached at (571) 272-1184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNA M MARONEY/Primary Examiner, Art Unit 3763 7/16/2026
JENNA M. MARONEY
Primary Examiner
Art Unit 3763
Prosecution Insights