DETAILED ACTION
Applicant’s request for continued examination (RCE) with suspension request, filed 2 July 2025 in response to the non-final Office action mailed 6 June 2024, has been entered. As Applicant’s RCE filing contains an IDS only and contains neither claim amendments nor rebuttals/responses to either of the claim objections or the various grounds of rejections set forth in the non-final Office action of 6 June 2024, all objections, rejections and positions as set forth in said non-final by the Examiner are below maintained and this Office action is made FINAL.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after appeal to the Patent Trial and Appeal Board, but prior to a decision on the appeal. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 2 July 2025 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2 July 2025 was filed after the mailing date of the non-final Office action on 6 June 2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 28-31 are objected to because of the following informalities: the preamble recitation is objected to as not being consistent to the preamble of the claim from which the cited claims depend, meaning “The non-aqueous engine coolant of claim” recitations should instead be –The internal combustion engine coolant system of claim…wherein the glycol-based non-aqueous engine coolant--. Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
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 27-31 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 27, the claimed recitation of a “system including therein” is a recitation not supported by the instant specification and thus constitutes new matter. Notably the instant specification contains no recitation whatsoever of the phrase “system” and the specification does not describe a ‘system’ in such a way as to reasonably convey that the inventor(s) had possession of a “system” as claimed. This includes claims 28-31 as they depend from claim 27.
Claim Rejections - 35 USC § 112(b)
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 27-31 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.
Regarding claim 27, the recitation of a “system” renders the instant claim indefinite as the metes and bounds of what is meant by a ‘system’ is not clear, the specification provides no standard for ascertaining what is meant and one of ordinary skill in the art would not be reasonably apprised of the scope of what is or is not included in a ‘system’. This includes claims 28-31 as they depend from claim 27.
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.
Claims 1, 3-4 and 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over Wenderoth et al. (US PGPub 2007/0034825).
Regarding claims 1 and 3, Wenderoth teaches antifreeze concentrates, suitable for use in combustion engines, based on alkylene glycols, glycerol and/or 1,3-propanediol and comprising a) from 0.05 to 10 wt% of one or more polyethylene glycol and/or polypropylene glycol, including diethylene glycol ([0021]) and b) from 0.01 to 10 wt% of one or more carboxamides and/or sulfonamides (abstract; [0017]-[0020]), and may further optionally include: c) 0 to 10 wt% amines ([0078]), d) 0 to 10 wt% mono- or di-nuclear saturated or unsaturated heterocycles ([0079]), e) 0 to 10 wt% silane or orthosilicate ([0080]), f) 0 to 10 wt% monocarboxylic acid ([0086]), g) 0 to 10 wt% dicarboxylic acid ([0087]), h) 0 to 1 wt% each of alkali metal borate, nitrate, nitrite, phosphate, silicate and/or molybdate ([0088]), and/or i) 0 to 1 wt% hard water stabilizer ([0089]) (note Wenderoth only requires components a) and b), all other components being optionally present). Wenderoth teaches the alkylene glycol, glycerol and/or 1,3-propanediol base is present in amounts of ≥75 wt% of the concentrate and is at least one of the three aforementioned, preferably ethylene glycol, or is a mixture thereof ([0099]); wherein a base material mixture of 95 wt% ethylene glycol and remainder glycerol or 1,3-propanediol is preferred ([100]).
The teachings by Wenderoth of ≥75 wt% base, preferably selecting a mixture of 95 wt% ethylene glycol and remainder 1,3-propanediol, and from 0.05 to 10 wt% a) including diethylene glycol, substantially overlaps with and renders obvious instant ratios of: PDO/(EG+PDO+DEG) from about 0.025 to about 0.20; DEG/(EG+PDO+DEG) from about 0.025 to about 0.20; (PDO+DEG)/(EG+PDO+DEG) from about 0.05 to about 0.30; and EG/(EG+PDO+DEG) from about 0.7 to 0.95.
Wenderoth does not teach or require the antifreeze concentrates comprise water and ‘water’ is not recited among either the required base material (i.e. alkylene glycol, glycerol or 1,3-propanediol) or the components a) or b), or as a component c)-h) (readable over instant less than 1.0wt% water) of the concentrates.
Wenderoth does not require the antifreeze concentrates comprise silanes or silicate,s and neither silanes nor silicates are recited among either of the two required components a) or b). Silanes/silicates are taught by Wenderoth to be optional and thus not required. As such the instant claim recitation of “free of silanes and silicates” is met by Wenderoth.
Wenderoth does not specifically teach a viscosity of the concentrate as lower than about 2.0 Pa·s at minus 40°C. However, it is noted that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
It is noted that while Wenderoth does specifically teach the coolant as suitable for use in engines, the recitation that the basic formulation is to be used in internal combustion engines does not confer patentability to the claims since the recitation of an intended use does not impart patentability to otherwise old compounds or compositions. This includes all cited dependent claims as they incorporate all of the limitations of claim 1, from which they depend (see In re Tuominen, 671 F.2d 1359, 213 USPQ 89 (CCPA 1982)). Furthermore, the recitation of a new intended use for an old product does not make a claim(s) to that product patentable (see In re Schreiber, 44 USPQ 2d 1429, (Fed. Cir. 1997)).
Regarding claim 4, Wenderoth teaches the concentrates as set forth in claim 3 above. Wenderoth teaches the base materials, components a) and b) and optional components c)-i) as set forth above and teaches the aforementioned amounts thereof (readable over the instantly claimed amounts) and further teaches: h) includes sodium nitrate and sodium molybdate ([0095]), d) includes tolyltriazole, hydrogentated tolytriazole, benzotriazoles, etc. ([0083]), f) includes 2-ethylhexanoic acid ([0091]), and pH of 4 to 11 can be obtained by inclusion of suitable amounts of potassium hydroxide ([0098]).
Regarding claims 25 and 26, Wenderoth renders obvious the antifreeze concentrates as set forth in claim 1 above and teaches that amounts of the respective components are chosen to obtain an antifreeze formulation which has good thermal conductivity, is nontoxic, and ensures good corrosion prevention ([0016]). As set forth, Wenderoth teaches the compositions comprising ≥75 wt% base, preferably selecting a mixture of 95 wt% ethylene glycol and remainder 1,3-propanediol, and from 0.05 to 10 wt% a) including diethylene glycol (see above).
Wenderoth does not specifically teach a ratio of PDO/(EG+PDO+DEG) of about 0.06 (instant claim 25) or about 0.12 (instant claim 26), a ratio of DEG/(EG+PDO+DEG) of about 0.10 (instant claim 25) or about 0.155 (instant claim 26), or a ratio of EG/(EG+PDO+DEG) of about 0.84 (instant claim 25) or about 0.725 (instant claim 26). However, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicant’s claims patentable in the absence of unexpected results (see: In re Aller, 105 USPQ 233; and MPEP 2144.05). At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the relative amounts of PDO, EG and DEG, as claimed, and would have been motivated to do in order to obtain a diol based heat transfer composition having the desired thermal conductivity, non-toxicity, end-use low freezing point, and corrosion prevention. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good (see In re Boesch and Slaney, 205 USPQ 215).
Regarding the LTOL values claimed, it is further noted that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
Claims 11, 13-14 and 27-31 are rejected under 35 U.S.C. 103 as being unpatentable over Wenderoth et al. (US PGPub 2007/0034825) in view of Mohr et al. (US 4,772,408).
Regarding claims 11, 13, 27 and 28, Wenderoth teaches antifreeze concentrates, suitable for use in combustion engines, based on alkylene glycols, glycerol and/or 1,3-propanediol and comprising a) from 0.05 to 10 wt% of one or more polyethylene glycol and/or polypropylene glycol, including diethylene glycol ([0021]) and b) from 0.01 to 10 wt% of one or more carboxamides and/or sulfonamides (abstract; [0017]-[0020]), and may further optionally include: c) 0 to 10 wt% amines ([0078]), d) 0 to 10 wt% mono- or di-nuclear saturated or unsaturated heterocycles ([0079]), e) 0 to 10 wt% silane or orthosilicate ([0080]), f) 0 to 10 wt% monocarboxylic acid ([0086]), g) 0 to 10 wt% dicarboxylic acid ([0087]), h) 0 to 1 wt% each of alkali metal borate, nitrate, nitrite, phosphate, silicate and/or molybdate ([0088]), and/or i) 0 to 1 wt% hard water stabilizer ([0089]) (note Wenderoth only requires components a) and b), all other components being optionally present). Wenderoth teaches the alkylene glycol, glycerol and/or 1,3-propanediol base is present in amounts of ≥75 wt% of the concentrate and is at least one of the three aforementioned, preferably ethylene glycol, or is a mixture thereof ([0099]); wherein a base material mixture of 95 wt% ethylene glycol and remainder glycerol or 1,3-propanediol is preferred ([100]).
The teaching by Wenderoth of ≥75 wt% base, preferably selecting a mixture of 95 wt% ethylene glycol and remainder 1,3-propanediol, and from 0.05 to 10 wt% a) including diethylene glycol, substantially overlaps with and renders obvious instant ratios of: PDO/(EG+PDO+DEG) from about 0.025 to about 0.20; DEG/(EG+PDO+DEG) from about 0.025 to about 0.20; (PDO+DEG)/(EG+PDO+DEG) from about 0.05 to about 0.30; and EG/(EG+PDO+DEG) from about 0.7 to 0.95.
Wenderoth does not teach or require the antifreeze concentrates comprise water and ‘water’ is not recited among either the required base material (i.e. alkylene glycol, glycerol or 1,3-propanediol) or the components a) or b), or as a component c)-h) (readable over instant less than 1.0wt% water) of the concentrates.
Wenderoth does not require the antifreeze concentrates comprise silanes or silicate,s and neither silanes nor silicates are recited among either of the two required components a) or b). Silanes/silicates are taught by Wenderoth to be optional and thus not required. As such the instant claim recitation of “free of silanes and silicates” is met by Wenderoth.
Wenderoth does not specifically teach a viscosity of the concentrate as lower than about 2.0 Pa·s at minus 40°C. However, it is noted that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
Wenderoth teaches the aforementioned antifreeze concentrates for the cooling circulations of internal combustion engines, including automobiles ([0002];[0016])(instant ‘for use’ (claim 11); instant ‘system’ (claim 27)). Wenderoth teaches that ready to use coolants preferably comprise the aforementioned concentrate diluted with water, which are then contacted with internal combustion engines (claims; [0102]). Wenderoth specifically teaches the antifreeze concentrates are intended for, and thus capable of use, in the cooling circulations of internal combustion engines. Mohr teaches that antifreeze concentrates, which may be anhydrous or contain low/limited amounts of water, and which are usually diluted with water prior to introduction into internal combustion engine cooling systems may alternatively be themselves utilized as the working antifreeze. Mohr teaches that while it may be common practice to dilute an antifreeze concentrate with water to form the working antifreeze, such is not essential (col 14 ln 15-37). Mohr and Wenderoth are analogous art and are combinable because they are concerned with the same field of endeavor, namely glycol based antifreeze concentrates and methods of cooling internal combustion engines. At the time of filing a person having ordinary skill in the art would have found it obvious to use the antifreeze concentrate of Wenderoth as the working antifreeze in the cooling of an internal combustion engine and would have been motivated to do so as Mohr teaches that while common practice, dilution of an antifreeze concentration with water is not essential and antifreeze concentrates are capable of themselves functioning as the working antifreeze in an internal combustion engine.
Regarding claims 14 and 29, Wenderoth in view of Mohr renders obvious the method of claim 11 as set forth above and the system of claims 27-28 as set forth above. Further, Wenderoth teaches the base materials, components a) and b) and optional components c)-i) as set forth above and teaches the aforementioned amounts thereof (readable over the instantly claimed amounts) and further teaches: h) includes sodium nitrate and sodium molybdate ([0095]), d) includes tolyltriazole, hydrogentated tolytriazole, benzotriazoles, etc. ([0083]), f) includes 2-ethylhexanoic acid ([0091]), and pH of 4 to 11 can be obtained by inclusion of suitable amounts of potassium hydroxide ([0098]).
Regarding claims 30-31, Wenderoth in view of Mohr renders obvious the system of claims 27-28 as set forth above and teaches that amounts of the respective components are chosen to obtain an antifreeze formulation which has good thermal conductivity, is nontoxic, and ensures good corrosion prevention ([0016]). As set forth, Wenderoth teaches the compositions comprising ≥75 wt% base, preferably selecting a mixture of 95 wt% ethylene glycol and remainder 1,3-propanediol, and from 0.05 to 10 wt% a) including diethylene glycol (see above).
Wenderoth does not specifically teach a ratio of PDO/(EG+PDO+DEG) of about 0.06 (instant claim 25) or about 0.12 (instant claim 26), a ratio of DEG/(EG+PDO+DEG) of about 0.10 (instant claim 25) or about 0.155 (instant claim 26), or a ratio of EG/(EG+PDO+DEG) of about 0.84 (instant claim 25) or about 0.725 (instant claim 26). However, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicant’s claims patentable in the absence of unexpected results (see: In re Aller, 105 USPQ 233; and MPEP 2144.05). At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the relative amounts of PDO, EG and DEG, as claimed, and would have been motivated to do in order to obtain a diol based heat transfer composition having the desired thermal conductivity, non-toxicity, end-use low freezing point, and corrosion prevention. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good (see In re Boesch and Slaney, 205 USPQ 215).
Regarding the LTOL values claimed, it is further noted that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
Correspondence
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767