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 .
Response to Amendment
Applicant amended claim 27; claims 41, 43-45, 47-48 remain withdrawn. Claims 27, 29, 31, 33, 39-41,43-45, and 47-48 are pending with claims 27, 29, 31, 33, and 39-40 being considered in the present Office action.
The rejections to the claims are withdrawn in view of the amendments. However, upon further consideration a new ground of rejection is necessitated by amendment.
Response to Arguments
In arguing that the prior art does not suggest 7 wt% TEA, applicant relies on specific examples of Maes (e.g., Ex. 7 uses 1% TEA and 500 ppm octanoic acid). Applicant also argues Maes fails to suggest the claimed amount of 2-EHA (3 wt%) by relying on the preferred embodiment range (i.e., e.g., 0.001-1wt%, 0.01-0.05wt%). Applicant’s arguments are not found persuasive because disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). MPEP 2123. In this case, the broader disclosure of Maes suggests 3 wt% 2-EHA (i.e., 3wt% falls between 0.001 to 10 wt%, see e.g., claim 35) with the expectation of obtaining corrosion inhibition (see e.g., [0024]). The claimed amount of triethanolamine (7 wt%) would also be expected. Maes suggests using TEA to neutralize 2-EHA (see Table 1, Invention 4c) because there is an expectation of reducing electrical conductivity, see e.g., [0029]. The instant disclosure and prior art both suggest using TEA to neutralize the acid (3 wt% 2-EHA); since the acid (2-EHA) and amount thereof (3 wt%) in the prior art is the same as that claimed, it would take the same amount of TEA to neutralize the same acid content. Further, Maes suggests TEA is a result effective variable; that is, in neutralizing 2-EHA (an acid) with TEA (a base), Maes suggests adjusting the pH of the acid containing composition to neutral by increasing alkalinity with the base (TEA). Moreover, Maes provides further evidence that one of ordinary skill in the art easily controls pH of the formulation to the desired level by the amount of the neutralizing amine, see e.g., [0035]. It would be obvious to one having ordinary skill in the art to adjust the amount of TEA in the formulation to neutralize the acid and to reach the desired pH through routine experimentation. One of ordinary skill would reach 7 wt % TEA in neutralizing 3 wt% 2-EHA and/or in adjusting the pH of the formulation to the desired level.
Applicant’s arguments with respect to Meszaros are moot as this reference is no longer used in the rejection.
In response to applicant's argument that the “result-effective variable” rational is insufficient because the prior art identifies pH adjustment generally and not for the claimed TEA amount in the claimed “low-solids” formulation, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, the pH adjustment of the formulation would be appreciated because neutral compositions are beneficial to various applications (e.g., fuel cells, see e.g., [0035]). One of ordinary skill in the art would appreciate adjustment of the pH of the formulation, regardless of the solids content, because neutral compositions are beneficial in various applications.
Applicant also argues that the 7 wt% TEA was not simply pH adjustment but allowed for the elimination of KOH, yielding minimal deposits, good current dissipation results, broad corrosion protection for several metals and superior buffering. These comments are also not persuasive because the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), MPEP 2144, IV.
Applicant arguments with respect to De Kimpe, Schwarz, and Hirozawa are not persuasive because they were not used to suggest the TEA or amount thereof.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, nothing from the applicant’s disclosure was used to teach the claims. The elements of the claims are suggested in the prior art with proper supporting motivations when modification are necessary to meet the claim language.
Claim Interpretation
Claim 27 recites to “0.35 wt.% to about 0.7 wt.% of a 50% stabilized silicate solution”. Thus, applicant attempts to differentiate the claimed product by the process in which it was made, i.e., dilution of the stabilized silicate into a solution. Applicant is reminded that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” (see In re Thorpe, 111 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); MPEP 2113. In this case, the product by process recitation suggests the amount of stabilized silicate in the heat transfer fluid concentrate; that is, a 0.35 wt.% to 0.7 wt.% of a 50% stabilized silicate solution suggests 0.175 wt.% to 0.35 wt.% stabilized silicate. The claim is interpreted with the understanding that heat transfer fluid concentrate includes 0.175 wt.% to 0.35 wt.% stabilized silicate.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 39-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maes (US 2005/0051754), Hirozawa et al. (US 4210549), Schwarz (EP 1010740), and De Kimpe (US 2012/0286196), and hereinafter Maes, Hirozawa, Schwarz, and De Kimpe (all of record).
Regarding Claim 27, 29, 33, and 39, Maes suggests a heat transfer fluid concentrate for electrical applications, for a cooling system of an electric vehicle, and for use in a cooling system of an energy storage system (i.e., for use in a cooling system of an energy storage system (fuel cell), electrical or electronic tools requiring cooling, electric motors, battery packs, etc., see e.g., [0011, 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 explicitly state the ethylene glycol (MEG) 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).
As with the instant invention, Maes suggests an alkalinity of the heat transfer fluid is provided by triethanolamine (TEA); neutralization of the acid with TEA is preferred because there is a 50-60% reduction in electrical conductivity, [0029]. It would be obvious to one having ordinary skill in the art the acid (e.g., 2-EHA, detailed above) is neutralized with TEA with the expectation of reducing the electrical conductivity of the formulation. Considering the amount of acid suggested by the prior art is the same as, or close to, that claimed, (i.e., 3 wt% 2-ethylhexanoic acid), the same amount of TEA is expected to neutralize the same amount of acid, thereby leading to heat transfer fluids with lower electrical conductivity. In other words, one of ordinary skill in the art would expect to use ~7 wt.% TEA to neutralize 3 wt% 2-ethyhexanoic acid and would be motivated to do so to achieve lower electrical conductivity, as suggested by Maes.
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. By suggesting the neutralization of an acid (e.g., 2-EHA) with a base (TEA), Maes suggests adjusting the pH of the acid containing composition to neutral (or near neutral) by increasing alkalinity with the base (TEA); thus, Maes suggests TEA is a result effective variable (i.e., TEA is a variable that achieves a recognized result (pH)). Maes also provides further evidence that one of ordinary skill in the art easily controls the pH of the formulation to the desired level by the amount of the neutralizing amine, see e.g., [0035]. It would be obvious to one having ordinary skill in the art to adjust the amount of TEA in the formulation to neutralize the acid and to reach the desired pH through routine experimentation. One of ordinary skill would reach 7 wt % TEA in neutralizing 3 wt% 2-EHA and/or in adjusting the pH of the formulation to the desired level.
Maes suggests a total dissolved solid content comprising 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]; thus, Maes suggests 0.3 wt% from the standpoint of corrosion protection). 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 0.175 wt.% to 0.35 wt.% silicate in Example 7 with the expectation of additional corrosion resistance. In view of the foregoing, Maes suggests a total dissolved solid content of about 0.65 wt.% or less comprising about 0.3 wt% azole (TTZ) and solids contributed by silicate in an amount of 0.175 wt% to 0.35 wt% (see claim interpretation section), thereby satisfying that the total dissolved solids comprise about 0.3 wt.% ttz solid and solids contributed by about 0.35 wt% - 0.7 wt% of a 50% silicate solution.
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.
The values disclosed by the prior art (i.e., glycol, total dissolved content (TTZ, silicate), neutralizing agent TEA, acid, water), 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.
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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/ANNA KOROVINA/Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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