DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/20/26 has been entered.
Response to Amendment
Claims 20-23 and 34-37 are currently pending. Claims 1-19, 24-33, 38, and 39 are cancelled. The amended claims do overcome the previously stated 103 rejections. However, upon further consideration, claims 20-23 and 34-37 are rejected under the following new 103 rejection.
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 20-23 and 34-37 are rejected under 35 U.S.C. 103 as being unpatentable over Claeys et al (US 2012/0164506) in view of Tsubouchi (US 2012/0283162), Memita et al (US 2003/0187292), and further in view of Takahashi et al (US 2017/0327765).
Regarding claims 20, 21, 23, and 34-37, Claeys et al discloses a method of cooling an electric drive systems (propulsion system), the method comprising cooling a battery and electric motor cooling loop of an electric vehicle using a composition comprising: an ester-based heat transfer fluid and conventional additives such as corrosion inhibitors (anticorrosion agents) and oxidative stability additive (antioxidants); wherein the heat transfer fluid has low flammability which would correspond to high auto-ignition temperature; wherein the ester based coolant has all the physical characteristics suitable for use in an electric vehicle, including viscosity (kinematic viscosity, measured according to standard ASTM D445) and pour point; wherein the composition is free of a hydrofluorocarbon refrigerant ([0009]-[0012],[0016],[0061]-[0063]).
However, Claeys et al does not expressly teach an ester having a kinematic viscosity, measured at -25°C according to the standard ASTM D445, of less than or equal to 200 mm2/s; wherein the ester is a monoester formed from: a saturated branched monocarboxylic acid; and a saturated branched monoalcohol (claims 20 and 35); wherein the composition comprises at least 30% by mass of the ester, relative to the total weight of the composition (claim 21); wherein the ester has a kinematic viscosity, measured at -25°C according to the standard ASTM D445, of less than or equal to 150 mm2/s (claims 23 and 36); wherein the composition comprises more than 95% by mass of the ester, relative to the total mass of the composition (claim 35).
Tsubouchi discloses a base oil (composition) for cooling a device that includes 30 mass% or more, or further preferably 70 mass% or more, of a monoester, and the base oil has a kinematic viscosity at 40°C in a range of 4 mm2/s to 30 mm2/s; wherein the device is usable for an electric vehicle or a hybrid vehicle; wherein the device is at least one of a motor and a battery ([0009]); wherein the ester is obtainable by a dehydro-condensation reaction between a carboxylic acid and an alcohol, the alcohol (the starting material) having a long linear alkyl chain and a carboxylic acid (the starting material) having a long linear alkyl chain that are preferably used for synthetic reaction such that the total number of the terminal methyl group, the methylene group and the ether group in the main chain (i.e., the longest chain in a molecule) is 18 or more and the total number of a short alkyl side chain in the molecule (i.e., the methyl branch and the ethyl branch) is 2 or less; wherein examples of the carboxylic acid include
monocarboxylic acids such as ethylhexanoate (saturated branched monocarboxylic
acid); wherein examples of the alcohol include monoalcohol such as ethylhexanol (saturated branched monoalcohol), .... ([0016],[0065]-[0076]). Examiner’s note: although Tsubouchi does not explicitly teach a kinematic viscosity measured at -25°C, based upon the relationship between the kinematic viscosity at -25°C (less than or equal to 200 mm2/s) and the kinematic viscosity at 25°C (less than equal to 20 mm2/s), one of ordinary skill in the art would expect a kinematic viscosity at 40°C of 4 mm2/s to 30 mm2/s to inherently correspond to a kinematic viscosity at -25°C of less than or equal to 200 mm2/s, or less than or equal to 150 mm2/s.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the Claeys ester-based heat transfer fluid to include ester that has a kinematic viscosity, measured at -25°C according to the standard ASTM D445, of less than or equal to 150 mm2/s; wherein the monoester is formed from: a monocarboxylic acid and a monoalcohol; wherein the composition comprises at least 70% by mass of the ester, based on the total weight of the composition in order to provide a base oil having excellent electrical insulation properties and thermal conductivity for cooling a device ([0010]). In addition, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the Claeys/Tsubouchi composition to include more than 95% by mass of the ester, relative to the total mass of the composition because it has been held that the discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Boesch, 205 USPQ 215 (CCPA 1980). Where 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)). There is no evidence of criticality of the claimed mass percentage of the ester.
However, Claeys et al as modified by Tsubouchi does not expressly teach an ester that is a monoester formed from: a saturated branched C9 monocarboxylic acid; and a saturated branched C9 monoalcohol (claims 20 and 35).
Memita et al discloses an ester that is produced by reacting an alcohol with a carboxylic acid, wherein examples of the carboxylic acid include monocarboxylic acid such as 3,5,5-trimethylhexanoic acid (saturated branched C9 monocarboxylic acid) and isononanoic acid (saturated branched C9 monocarboxylic acid), wherein examples of the alcohol include monovalent alcohols such as 3,5,5-trimethylhexanol (saturated branched C9 monoalcohol) and isononanol (saturated branched C9 monoalcohol) ([0012]-[0016]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the Claeys/Tsubouchi ester-based heat transfer fluid to include a monoester is formed from: (3,5,5-trimethylhexanoic acid or isononanoic acid) and (3,5,5-trimethylhexanol or isononanol) in order to utilize an ester that has high levels of heat stability and electric insulation properties as well as high quality and high yield ([0006],[0032]).
However, Claeys et al as modified by Tsubouchi and Memita et al does not expressly teach an ester having an auto-ignition temperature, measured according to the standard ASTM E659, of greater than or equal to 350°C (claims 20 and 35); wherein the ester has an auto-ignition temperature, measured according to the standard ASTM E659, of greater than or equal to 360°C (claim 23 and 36).
Takahashi et al discloses the spontaneous ignition point (auto-ignition temperature) of an ester based oil that is in light of improving flame retardancy (low flammability), preferably 350°C or more, more preferably 360°C, measured by the method in accordance with ASTM E659 ([0025]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the Claeys/Tsubouchi/Memita ester-based heat transfer fluid to include an ester having an auto-ignition temperature, measured according to the standard ASTM E659, of greater than or equal to 360°C in order to improve the flame retardancy of the heat transfer fluid ([0025]).
Regarding claim 22, the Office takes the position that a lithium-ion battery of an electric or hybrid vehicle is well known in the art.
Response to Arguments
Applicant’s arguments with respect to claim(s) 20-23 and 34-37 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/T.S.C/Examiner, Art Unit 1751
/Haroon S. Sheikh/Primary Examiner, Art Unit 1751
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