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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 15 April 2026 has been entered.
Response to Amendment
Applicant amended claim 27 and added new claims 41-48. Newly submitted claim 41-48 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claims 41-48 are directed to a method of thermal management comprising circulating a diluted heat transfer fluid concentrate, and a fluid leaking event; conversely, claims 27-29, 31, 33, and 38-40 utilize a heat transfer fluid concentrate.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 41-48 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
In view of the foregoing, claims 27-29, 31, 33, and 38-40 are addressed in this Office action.
Response to Arguments
Applicant amended claim 27 such that the conductivity (an inherent physical property of the heat transfer fluid) is in a range of 1000-5000 µS/cm and argues Maes does not teach or suggest said conductivity; applicant relies on Table 2, formulation 7 of Maes to conclude the reference does not teach each and every element of the claimed invention. Applicant’s arguments are not persuasive because one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, the rejection was based on a combination of references, not Maes alone. Further, the conductivities of the formulations in Table 2 of Maes are not relied upon in the rejection, nor do they represent the heat transfer fluid conductivity resulting from the combination of references detailed in the rejection.
Applicant’s argument that Maes teaches away from the claimed conductivity (i.e., 1000-3500 µS/cm) because Maes views higher conductivities as “undesirable” is not persuasive. As detailed in the last response (Office action dated 19 February 2026, pages 4-5), the broader disclosure of Maes appreciates both low conductivities (<100 µS/cm) and higher conductivities (e.g., ~200-100 µS/cm, and ~500-3500 µS/cm, represented by formulations in Tables 1-2 and Fig. 1-2), where the higher conductivities overlap with that claimed. The higher conductivities represent non-preferred embodiments, but the lower conductivity preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments, MPEP 2123. Rather, Maes appreciates the use of coolant having conductivities ~500-3500 µS/cm to remove heat generated in a fuel cell stack, albeit they are inferior in view of the shunt current (page 5); the use of coolants with higher conductivities is no less obvious simply because it’s a nonpreferred embodiment.
Applicant’s argument related to conductivity and “optimization of a result-effective variable” is moot because this rational was not used teach/suggest the claimed conductivity. Rather, as set forth on pages 10-11 of the last Office action, the prior art suggests a product identical to, or substantially identical, in structure or composition to the claimed heat transfer fluid, such that the claimed property (conductivity) would be expected provided products of identical chemical composition cannot have mutually exclusive properties, see MPEP 2112.01.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 27, 29, 31, 33, and 38-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maes (US 2005/0051754), Schwarz (EP 1010740), De Kimpe (US 2012/0286196), and Meszaros et al. (CA 2208731), hereinafter Maes, Schwarz, De Kimpe and Meszaros (all of record).
Regarding Claim 27, 29, 33, and 38-39, Maes suggests a heat transfer fluid concentrate for electrical applications (i.e., for use in a cooling system of an energy storage system (fuel cell), see e.g., [0024, 0030, 0033] and claim 42) comprising:
a water soluble glycol in an amount of 70 % by weight (wt.%) to 90 wt.%, or about 88 wt% (see e.g., Example 7, MEG, Table 2; and see concentrate and dilution with water in Table 4 of Maes); and
a monocarboxylic acid, see e.g., Example 7 includes octanoic acid (OA) in an amount of 500 ppm, but may be selected from acids and isomers thereof including: hexanoic, heptanoic, isoheptanoic, nonanoic acid, 2-ethylhexanoic acid (2-EHA), etc., in an amount of 0.001 to 10 wt% with the expectation of corrosion inhibition, see e.g., [0024] and claim 35. Thus, Maes suggests about 3 wt% of liquid organic comprising 2-ethylhexanoic acid with the expectation of corrosion inhibition. Maes does not suggest isononanoic acid in an amount of 3 wt.%. However, Meszaros suggests isononanoic acid, like 2-ethylhexanoic acid, is understood to provide corrosion inhibition in coolant compositions, and is provided from 0.05 to 10 wt %, see e.g., pages 2, 5-6/12. It would be obvious to one having ordinary skill in the art to utilize isononanoic acid as the monocarboxylic acid with the expectation of corrosion inhibition in the coolant composition. The amount of liquid organic acid (i.e., 2-ethylhexanoic acid, isononanoic acid) disclosed in the prior art overlaps with that claimed or is close (i.e., 0.001 to 10 wt% 2-ethylhexanoic acid and 0.05-10 wt.% isononanoic acid overlaps with, or is close to, 3 wt. %); a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP 2144.05, I.
Further, as with the instant invention, Maes suggests an alkalinity of the heat transfer fluid is provided by triethanolamine (TEA); TEA is useful in removing metal ions and ionic contaminates that interfere with low electrical conductivity, [0029]. That is, TEA is used to neutralize the monocarboxylic acid as this helps remove metal ions and ionic contaminates that interfere with low electrical conductivity, e.g., 1 wt.% TEA is used to neutralize 500 ppm OA in Example 7, see also col. 3-4 in Meszaros where isononanoic acid is also neutralized with trialkanolamines. Considering the amount of acid suggested by the prior art is the same as, or close to, that claimed, (i.e., combination of Maes and Meszaros suggests the amount of 2-ethylhexanoic acid or isononanoic acid is 3 wt%), the same amount of TEA is expected to neutralize the same amount of acid, thereby leading to the useful removal metal ions and ionic contaminates that interfere with low electrical conductivity. In other words, one of ordinary skill in the art would expect to use 2-7 wt.% TEA to neutralize 3 wt.% isononanoic acid or 3 wt% 2-ethyhexanoic acid and would be motivated to do so to removing metal ions and ionic contaminates that interfere with low electrical conductivity. Further, the presence of a known result-effective variable would be motivation for a person of ordinary skill in the art to experiment to reach another workable product or process through routine experimentation. Meszaros suggests amines are used to adjust to a desired pH, see e.g., col. 4; that is, the prior art has recognized the amount of TEA as a result effective variable (i.e., a variable that achieves a recognized result (pH)). It would be obvious to one having ordinary skill in the art to adjust the amount of TEA with respect to the amount of acid to neutralize the acid (i.e., 2-EHA, isononanoic acid) and to obtain the desire pH and the amount of TEA would be characterized through routine experimentation.
Maes suggests a total dissolved solid content consists of about 0.30 wt.% of azole compound (i.e., Example 7 uses 0.1 wt.% TTZ, but TTZ may be selected between 0.1-0.3 wt.% for corrosion protection properties, [0032-0033]). Maes does not disclose Example 7 includes silicate, but silicate is optionally included as one or more conventional corrosion inhibitor from 0.001-5.0 weight percent, [0034]; it would be obvious to one having ordinary skill in the art to include silicate as the only conventional corrosion inhibitors from 0.35 wt.% to 0.7 wt.% in Example 7 with the expectation of additional corrosion resistance. In view of the foregoing, Maes suggests a total dissolved solid content consisting of 0.3 wt% azole (TTZ) and about 0.35 wt% - 0.7 wt% silicate.
The values disclosed by the prior art, as detailed above, overlap with that claimed or are close. 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). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). MPEP 2144.05, I.
Maes does not explicitly disclose the silicate is stabilized silicate. However, the use of stabilized silicate as silicates is known in the art of coolant additives for fuel cells, see abstract, [0032] and claim 16 of De Kimpe. It would be obvious to one having ordinary skill in the art to use stabilized silicate because the selection of a known material (stabilized silicate) based on its suitability for its intended use (i.e., coolant additive) supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07. Further, the art has recognized equivalence between silicate and stabilized silicate for the same purpose; De Kimpe presents strong evidence of obviousness in substituting one for the other in the coolant art, see e.g., MPEP 2144.06, II.
Maes suggests a balance of water (see e.g., Table 4, claim 4). Maes does not teach the water is demineralized. However, Schwarz teaches the use of demineralized water as a coolant dilution medium, abstract, [0006]. It would be obvious to one having ordinary skill in the art for Maes to use demineralized water because the selection of a known material (demineralized water) based on its suitability for its intended use (i.e., to dilute coolant/antifreeze) supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07. Further, the art has recognized equivalence between water and demineralized water for the same purpose; Schwarz presents strong evidence of obviousness in substituting one for the other in the coolant/antifreeze art, see e.g., MPEP 2144.06, II.
With respect to the claimed property (i.e., electrical conductivity of 1000 µS/cm to 5000 µS/cm), 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In this case, the claimed and prior art heat transfer fluid concentrates are identical or substantially identical in structure or composition, as detailed in the above rejection, hence a prima facie case of either anticipation or obviousness has been established. Further, "[p]roducts of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure (as set forth in the rejection), the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01, I. and II.
Regarding Claims 31 and 40, Maes discloses a heat transfer fluid concentrate further comprising water soluble alcohols (e.g., ethylene glycol, propylene glycol (MPG) etc.), and glycol ethers, see e.g., [0030]. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted), MPEP 2114.06, I.
Regarding Claims 27, 33 and 39, “for electrical applications”, “formulated for use in a cooling system of an electric vehicle”, and “formulated for use in a cooling system of an energy storage system” are considered intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation"). To satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). Considering the prior art structure is the same as that claimed, as detailed in the rejection, it is capable of performing the intended use. See MPEP 2111.02.
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maes, Schwarz, De Kimpe, and Meszaros in view of Hirozawa et al. (US 4210549, of record), hereinafter Hirozawa.
Regarding Claim 28, Maes does not explicitly state the ethylene glycol is antifreeze grade. However, 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). Hirozawa teaches the use of antifreeze grade ethylene glycol for antifreeze (coolant) compositions (see e.g., col. 6) and the invention of Maes is related to antifreeze coolant concentrate compositions ([0041]); thus, it would be obvious to one having ordinary skill in the art to select a known material (antifreeze grade ethylene glycol) based on its suitability for its intended use (antifreeze).
Conclusion
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/ANNA KOROVINA/Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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