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 .
Status of Claims
Claim(s) 1-12 are currently pending.
Claim(s) 1-12 have been amended.
Information Disclosure Statement
The information disclosure statement filed 05/12/2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. In the instant case, a copy of Non-Patent Literature titled “Nanomaterials: Solar Energy Storage System-Based” has not been provided. It has been placed in the application file, but the information referred to therein has not been considered.
Claim Rejections - 35 USC § 103
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) 1, 4, 6 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 106931679 A, Yu et al. (hereinafter “Yu”) in view of CN 117928034 A, Lu et al. (hereinafter “Lu”).
Regarding claim 1
Yu teaches a system for collecting and storing solar energy (corresponding to solar heating and cooling system as shown in Figure 1) [see para. 0037], the system comprising:
a. one or more solar collectors (corresponding to a solar photovoltaic-thermal integrated module 1 comprising solar collector 11) [Figs. 1-2 and paras. 0037-0038],
b. a storage medium (corresponding to phase change material 1116) [Figs. 1-3, paras. 0037, 0039 and 0047],
c. a storage space (corresponding to PCM storage tank 3) [Fig. 1, paras. 0037 and 0047],
d. a water source (corresponding to hot water tank 4) [Fig. 1 and para. 0037],
e. one or more water pumps (corresponding to circulating water pump 2) [Fig. 1 and para. 0037],
wherein the storage medium (1116) comprises a phase change material (PCM) and carbon nanofibers (CNFs) [paras. 0039 and 0047].
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Regarding the limitation (f), Yu teaches that the module (1) is a solar photovoltaic-thermal integrated module [para. 0037], accordingly the system necessarily includes one or more solar photovoltaics.
Nevertheless, as further clarification, Lu is cited below.
Lu, similar to Yu, teaches a system for collecting and storing solar energy (corresponding to a PVT collector assembly utilizing phase change materials to store excess energy through phase change) [Fig. 1, paras. 0033-0034], wherein one or more photovoltaics (corresponding to solar cells) are provided to provide power to electrical devices within the system (e.g., to the water pump) thereby reducing fossil fuel consumption, saving energy and lowering the operating costs [para. 0032].
Yu and Lu are analogous inventions in the field of systems for collecting and storing solar energy utilizing phase change materials. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the system of Yu to comprise one or more photovoltaics as disclosed in Lu, for the purpose of providing power to electronic devices within the system, thereby reducing fossil fuel consumption, saving energy and lowering the operating costs [Lu, para. 0032].
Examiner notes that, although disclosed in the art, the limitation “for collecting and storing solar energy” is considered intended use and is given weight to the extent that the prior art is capable of performing said use. Since the structure of the prior art is the same as the one claimed, the same is considered capable of “collecting and storing solar energy”.
A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See in re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478 (CCPA 1951).
Regarding claim 4
Modified Yu teaches the system as set forth above, wherein the one or more water pumps (2) are powered by one or more of the solar photovoltaics [Lu, para. 0032].
Regarding claim 6
Modified Yu teaches the system as set forth above, wherein the PCM is paraffin wax [Yu, para. 0039].
Regarding claim 12
Modified Yu teaches the system as set forth above, wherein the storage medium consists essentially of a phase change material (PCM) and carbon nanofibers (CNFs) (the storage mixture comprises the PCM and 5-10% of graphene and carbon fibers) [Yu, para. 0047].
It is noted that the claims do not exclude the presence of graphene and there is no evidence that graphene, which is also a form of carbon, materially affects the basic characteristics of the claimed storage medium.
It has been held that, [f]or the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355.
If an applicant contends that additional steps or materials in the prior art are excluded by the recitation of "consisting essentially of," applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of the claimed invention. In re De Lajarte, 337 F.2d 870, 143 USPQ 256 (CCPA 1964). See also Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (Bd. Pat. App. & Inter. 1989) [MPEP 2111.03, subsection III].
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yu in view of Lu as applied to claims 1, 4, 6 and 12 above, and further in view of US 2015/0040888 A1, Zakhidov et al. (hereinafter “Zakhidov”).
Regarding claim 2
Modified Yu teaches that the solar collector (11) comprises an evacuated tube collector [paras. 0038-0039]. Modified Yu does not teach that the solar collectors are solar flat plate collectors.
Zakhidov teaches that the two types of solar collectors most frequently used are flat plate collectors and evacuated tube collectors [paras. 0006, 0012 and 0029].
Modified Yu and Zakhidov are analogous inventions in the field of solar collectors. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the evacuated tube collector of modified Yu with a solar flat plate collector, as disclosed in Zakhidov, as such would involve the mere substitution of one known solar heat collector for another to obtain the predictable result of collecting heat. Zakhidov shows that these types of solar collector were known alternatives before the effective filing that of the invention. Accordingly, the substitution would have been obvious to one having ordinary skill in the art. [see MPEP 2143, subsection B].
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yu in view of Lu as applied to claims 1, 4, 6 and 12 above, and further in view of CN 116839080 A, Rao et al.
Regarding claim 3
Modified Yu teaches the phase change material comprising paraffin [Yu, para. 0039].
Modified Yu is silent to the storage space being greater than 100 m3.
Rao, similar to modified Yu, teaches a system for collecting and storing solar energy comprising a storage medium such as paraffin wax (corresponding to a PVT collector assembly utilizing phase change materials to store excess energy through phase change) [Fig. 1, paras. 0001, 0003 and 0065].
Rao teaches that considering the volume change that occurs during the phase transition of paraffin, the required volume of the storage tank should be 187.2 m3 [para. 0084].
Modified Yu and Rao are analogous inventions in the field systems for collecting and storing solar energy comprising paraffin wax as a phase change material. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the storage space of Modified Yu to be greater than 100 m3, as in Rao, in order to account for the volume change that occurs during the phase transition of the paraffin/phase change material.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [MPEP 2144.05].
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yu in view of Lu as applied to claims 1, 4, 6 and 12 above, and further in view of US 2017/0005615 A1, Fairbanks et al.
Regarding claim 5
Modified Yu teaches the PCM comprising paraffin with a phase change temperature of 100°C, wherein the ability of the PCM to provide usable thermal energy depends on the temperature of the PCM tank (greater than 60°C) [paras. 0020 and 0047]. Modified Yu does not teach the PCM having a melting point from 45-75°C.
Fairbanks teaches a system for collecting and storing solar energy [Abstract and para. 0016], wherein phase change materials should be selected to have an appropriate melting point based on the operating temperature, wherein if the melting point of the phase change material is above the operating temperature, then the phase change material will not change phase during normal operation [para. 0039].
Fairbanks further teaches suitable phase change materials such as paraffin wax blends comprising melting points in the range of 50.6-54.8 [Table 1 and para. 0040].
Modified Yu and Fairbanks are analogous inventions in the field of systems for collecting and storing solar energy. In the absence of criticality or unexpected results with respect to the melting point of the phase change material (a result-effective variable), it would have been obvious to a person of ordinary skill in the art at the time of the invention to optimize said parameter through routine experimentation in order to achieve the desired thermal performance characteristics [Fairbanks, para. 0039]. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art [MPEP 2144.05].
The claimed melting point range represents a predictable optimization of a known material property, yielding predictable results.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yu in view of Lu as applied to claims 1, 4, 6 and 12 above, and further in view of CN 118328753 A, Xie.
Regarding claim 7
Modified Yu teaches the system as set forth above, wherein the storage medium comprises a ratio of the mass of CNFs to the mass of PCM from 1 to 10% (5%-10% of a mixture of graphene and carbon fibers in a 1:1 ratio i.e., carbon fiber amounts for half of that mixture) [Yu, paras. 0039 and 0047].
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [MPEP 2144.05].
If the above is found insufficient, Xie is cited below.
Xie teaches a thermally composite phase change material comprising a phase change material (e.g., paraffin) and a carbon-based matrix material (e.g., carbon fibers), wherein a mass percentage of the carbon fibers in a range of 0.1%-10% improves the heat-conducting performance of the phase change material [end of Page 7 to beginning of Page 8]. Xie further teaches that excessive addition of carbon-based matrix material exceeds said range, will cause low phase-change latent heat, at the same time, the cost of the composite phase-change material is increased [Page 8].
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have provided a mass ration of CNFs to PCM of 1 to 10%, as disclosed in Xie, as such is disclosed to improve the heat-conducting performance of the phase change material while avoiding low phase-change latent heat and an increase in the cost of the material.
Claim(s) 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yu in view of Lu as applied to claims 1, 4, 6 and 12 above, and further in view of “Effect of carbon nanofiber additives on thermal behavior of phase change materials”, Elgafy et al.* (hereinafter “Elgafy”).
*Cited in the IDS.
Regarding claim 8
Modified Yu does not disclose CNFs having an average diameter from 70-200 nm.
Elgafy teaches a carbon nanofiber (CNFs) filled paraffin wax composite material [Abstract], wherein CNFs having a diameter of 100 nm enhance the thermal properties of the paraffin wax (PCM) significantly [Page 3068, Col. 2, section 2.1 and Page 3073, Col. 2, Section 5].
Modified Lu and Elgafy are analogous inventions in the field of thermal composite materials comprising paraffin as a phase change material and carbon nanofibers for improvements in the thermal conductivity. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the carbon nanofibers of modified Lu to have a diameter of 100nm, as in Elgafy, as such is disclosed in the art to be a known, available size of carbon nanofibers for improving the thermal conductivity of a phase change material such as paraffin wax.
Regarding claim 9
Modified Yu does not disclose CNFs having an average length from 50-100 nm.
Elgafy teaches a carbon nanofiber (CNFs) filled paraffin wax composite material [Abstract]. Elgafy discloses that the fiber length had little effect on the thermal performance [Page, 3068, Col. 1].
Absent a showing of criticality or unexpected results with respect to the length of the CNFs (a result-effective variable), it would have been obvious to a person of ordinary skill in the art at the time of the invention to optimize through routine experimentation in order to achieve the desired thermal conductivity within the energy storage medium. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art [MPEP 2144.05].
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [MPEP 2144.05, subsection IIB].
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yu in view of Lu as applied to claims 1, 4, 6 and 12 above, and further in view of KR 20130116992 A, Kwak et al. (hereinafter “Kwak”).
Regarding claim 11
Modified Lu is silent to the CNFs have a hollow cylinder structure with a double-wall outer structure.
Kwak teaches a heat transfer material comprising paraffin as a phase change material and a carbon nanofiber filler for improving the thermal conductivity, wherein the carbon nanofiber filler can be selected from the group consisting of single wall carbon nanotubes (SWNTs), double wall carbon nanotubes (DWNTs), and multiwall carbon nanotubes (MWNTs) [Abstract, Bottom of Page 2 to Page 3 and Page 4].
Modified Lu and Kwak are analogous inventions in the field of thermal composite materials comprising paraffin as a phase change material and carbon nanofiber fillers for improvements in the thermal conductivity. Because Kwak teaches choosing from a finite number of identified, predictable carbon nanofiber materials, before the effective filing date of the invention, one of ordinary skill in the art would have found obvious to pursue the known options with reasonable expectation of success [see MPEP 2143]. Since Kwak teaches that CNFs having a hollow cylinder structure with a double-wall outer structure (i.e., double-wall carbon nanotubes) leads to the anticipated success, said carbon nanofibers are not of innovation but of ordinary skill and common sense [see MPEP 2143].
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) [MPEP 2144.07].
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yu in view of Lu as applied to claims 1, 4, 6 and 12 above, and further in view of US 20150143806 A1, Friesth.
Regarding claim 10
Modified Yu teaches the system as set forth above.
Modified Yu does not teach the CNFs being high heat treated.
Friesth teaches high heat treating carbon fibers to enhance properties such as tensile strength and modulus of elasticity [paras. 0061, 0063-0064, 0195-0196].
Modified Yu and Friesth are analogous inventions in the field of solar collector systems comprising carbon fibers [see Friesth, para. 0089]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the carbon fibers of modified Yu to be high heat treated, as in Friesth, thereby enhancing their mechanical properties (tensile strength and Young’s modulus).
Response to Arguments
The amendments to claims 1-12 overcome the previous objection(s) of the claims as set forth in Pages 2-3 of the Non-Final Rejection mailed 01/16/2026.
The amendments to claims 7 and 12 overcome the previous rejection of the claims under 35 U.S.C. 112(b) as set forth in Pages 3-5 of the Non-Final Rejection mailed 01/16/2026.
Applicant's arguments filed 07/16/2026, directed to the rejection(s) of claims 1-12 under 35 U.S.C. 103 have been fully considered but they are not persuasive.
Applicant argues that Yu’s reference to an integrated module would seem to be a reference to a combined system or unit. Applicant further argues that it does not necessarily disclose the presence of a photovoltaic device on its own.
Examiner respectfully disagrees. Applicant’s arguments are not commensurate in scope with the claims. The claim does not require the recited “one or more solar photovoltaics” to constitute a separate or stand-alone device. Rather, claim 1 is directed to a system comprising one or more solar photovoltaics. Yu identified module (1) as a solar photovoltaic-thermal integrated module [para. 0037]. Thus, the fact that the photovoltaic functionality is integrated with a thermal portion does not distinguish Yu from the claimed system.
Regarding Lu, Applicant’s assertion that the proposed modification would require removal of Yu’s photovoltaic-thermal integrated module is not persuasive because such removal is not proposed in the rejection. The rejection proposes incorporating Lu’s teaching of one or more photovoltaics for providing devices within Yu’s system. Nothing in the proposed combination suggests the elimination or replacement of Yu’s integrated module, and Applicant has not explained why incorporation of Yu’s one or more photovoltaics would necessitate such removal.
Regarding Zakhidov, Examiner notes that Zakhidov was relied upon only for its teaching regarding solar flat plate collectors. Zakhidov was not relied upon to teach the recited one or more solar photovoltaics, already disclosed in Yu and further supported by Lu.
Regarding Rao, Examiner notes that Rao was cited merely for its teaching regarding the volume of the storage space. Rao was not relied upon for any teaching directed to the claimed one or more photovoltaics.
Regarding Fairbanks, Examiner notes that Fairbanks was relied upon only for its teaching regarding the melting point of the PCM. Fairbanks was not relied upon for any teaching directed to the claimed one or more photovoltaics.
Regarding Xie, Examiner notes that Xie was relied upon only for its teaching regarding the mass ratio of carbon fibers to PCM. Xie was not relied upon for any teaching directed to the claimed one or more photovoltaics.
Regarding Elgafy, Examiner notes that Elgafy was relied upon only for its teaching regarding the average diameter and length of the CNFs. Elgafy was not relied upon for any teaching directed to the claimed one or more photovoltaics.
Regarding Kwak, Examiner notes that Kwak was relied upon only for its teaching regarding the hollow cylinder structure with double-outer wall of the CNFs. Kwak was not relied upon for any teaching directed to the claimed one or more photovoltaics.
Regarding Friesth, Examiner notes that Friesth was relied upon only for its teaching regarding the CNFs being high heat treated. Friesth was not relied upon for any teaching directed to the claimed one or more photovoltaics.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYLA GONZALEZ RAMOS whose telephone number is (571)272-5054. The examiner can normally be reached Monday - Thursday, 9:00-5:00 - EST.
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/MAYLA GONZALEZ RAMOS/Primary Examiner, Art Unit 1721
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