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 .
Double Patenting
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.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,228,344 (‘344). Although the claims at issue are not identical, they are not patentably distinct from each other because they claim the same invention, namely a process for thermal storage comprising (a) providing a thermal storage reservoir with a first liquid having a first temperature and a second liquid having a lower temperature than the first liquid; wherein said first liquid and said second liquid are layered within the thermal storage reservoir due to a difference in density between said first and second liquid and wherein said density difference is due to a difference in composition, concentration, or both; (b) charging the thermal storage reservoir by removing at least a portion of said second liquid and adding at least a portion of said first liquid wherein the added first liquid's temperature is higher than the second liquid; and (c) discharging the thermal reservoir by removing at least a portion of said first liquid and adding at least a portion of said second liquid wherein the added second liquid's temperature is lower than the first liquid; wherein the first liquid, the second liquid, or both comprise a dissolved reagent (all claim 1).
In reference to claim 2, ‘344 claims the process as explained in the rejection of claim 1 above, and ‘344 additionally claims wherein the added second liquid's temperature is different than the second liquid and the added first liquid's temperature is different than the first liquid (all claim 2).
In reference to claim 3, ‘344 claims the process as explained in the rejection of claim 2 above, and ‘344 additionally claims wherein the first liquid and the second liquid each comprise a dissolved reagent and wherein the concentration of the dissolved reagent in the first liquid is different from the concentration of the dissolved reagent in the second liquid (all claim 3).
In reference to claim 4, ‘344 claims the process as explained in the rejection of claim 1 above, and ‘344 additionally claims wherein the composition of the second liquid is different from the composition of the first liquid (all claim 4).
In reference to claim 5, ‘344 claims the process as explained in the rejection of claim 1 above, and ‘344 additionally claims employing one or more additional liquids with
a lower temperature than the first liquid (all claim 5).
In reference to claim 6, ‘344 claims the process as explained in the rejection of claim 1 above, and ‘344 additionally claims employing one or more additional liquids with
a higher temperature than the first liquid (all claim 6).
In reference to claim 7, ‘344 claims the process as explained in the rejection of claim 5 above, and ‘344 additionally claims wherein each additional liquid has a different density than both the first liquid and the second liquid (all claim 7).
In reference to claim 8, ‘344 claims the process as explained in the rejection of claim 6 above, and ‘344 additionally claims wherein each additional liquid has a different density than both the first liquid and the second liquid (all claim 8).
In reference to claim 9, ‘344 claims the process as explained in the rejection of claim 1 above, and ‘344 additionally claims wherein each of the first liquid and the second liquid comprise a liquid phase of a liquid-liquid phase transition system (all claim 9).
In reference to claim 10, ‘344 claims the process as explained in the rejection of claim 1 above, and ‘344 additionally claims adjusting the density of said first liquid, of said second liquid, or both by adjusting the concentration of a dissolved reagent (all claim 10).
In reference to claim 11, ‘344 claims the process as explained in the rejection of claim 1 above, and ‘344 additionally claims wherein said first liquid and said second liquid are layered within the thermal storage reservoir such that the second liquid is layered above the first liquid (all claim 11).
In reference to claim 12, ‘344 claims the process as explained in the rejection of claim 1 above, and ‘344 additionally claims wherein said first liquid and said second liquid are layered within the thermal storage reservoir such that the first liquid is layered above the second liquid (all claim 12).
In reference to claim 13, ‘344 claims the process as explained in the rejection of claim 1 above, and ‘344 additionally claims employing at least one additional liquid wherein said first liquid and said second liquid are layered within the thermal storage reservoir such that the second liquid is layered between the first liquid and the at least one additional layer (all claim 13).
In reference to claim 14, ‘344 claims the process as explained in the rejection of claim 1 above, and ‘344 additionally claims employing at least one additional liquid wherein said first liquid and said second liquid are layered within the thermal storage reservoir such that the first liquid is layered between the second liquid and the at least one additional layer (all claim 14).
In reference to claim 15, ‘344 claims the process as explained in the rejection of claim 1 above, and ‘344 additionally claims wherein said removing is conducted at a different time than said adding (all claim 15).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See attached PTO-892 for relevant prior art.
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/FILIP ZEC/ Primary Examiner, Art Unit 3763
9/30/2026
