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 (changing “comprising” to “is”); claims 27-29, 31, 33, and 38-40 are pending and considered in the present Office action.
The 112 rejection is withdrawn.
The 103 rejections are maintained because Applicant’s arguments are not persuasive for the reasons set forth below.
Response to Arguments
Applicant’s argument that an inherency argument cannot be used to supply a property of a hypothetical combination is not persuasive.
MPEP 2112, IV. highlights In PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186, 112 USPQ2d 1945 (Fed. Cir. 2014); the Federal Circuit stated “inherency may support a missing claim limitation in an obviousness analysis”, Id. at 1194-95, 112 USPQ2d at 1952. Further, “in order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis – the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.” Id. at 1195-96, 112 USPQ2d at 1952. See also, Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is “the natural result of the combination of prior art elements.” (emphasis in original). The court found that pharmacokinetic limitations of the asserted claims were inherently met by combining prior art references because the limitations were necessarily present in the prior art combination. Id. See also Hospira, Inc. v. Fresenius Kabi USA, LLC, 946 F.3d 1322, 1329-32, 2020 USPQ2d 6227 (Fed. Cir. 2020).
Further, MPEP 2112.02 II., in quoting In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), “Products of identical chemical composition cannot have mutually exclusive properties”, adds that a “chemical composition and its properties are inseparable”; concluding, “if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”. The claims of the current application recite a physical property (i.e., “electrical conductivity”) possessed by the instant heat transfer fluid concentrate; electrical conductivity, understood as a measure of a material’s ability to allow the flow of electric charge, is considered an intrinsic/innate physical property of a material similar to boiling point, density, etc. In this case, since the claimed and prior art concentrates are identical or substantially identical in structure or composition, the electrical conductivity is necessarily present and/or expected.
The case law relied upon on pages 5/8 of the Response is not persuasive.
The case law mentioned by Applicant in the Remarks does not appear to be relevant to the current rejection because the inherency arguments (including optimization factors) used in these cases were not based on innate physical properties of a material (e.g., In re Rijckaert: the claimed “property” was actually directed to a relationship between a ratio (time expansion/compression) and three variables; In re Oelrich: the “property” was a ratio (a carrier frequency which is "less than the minimum system resonant frequency”)). In mentioning the Honeywell case, Applicant uses the quote “Inherency cannot be based on what might result after optimization”; however, this quote appears to be related to the In re Rijckaert case, see MPEP 2112, IV., which as noted already was not based on innate properties of the material, hence not relevant to the current rejection.
Applicant appears to argue the formulations presented in the examples of Maes, which suggest very low electrical conductivities, are outside the claimed electrical conductivity range, hence teach away from the claimed invention and as such an inherence argument cannot apply. Applicant also argues the modification of claim 7 would alter the principle of operation which depends on minimizing ionizing species, maintaining ultra low conductivity, and avoiding additive that increase the ionic content; applicant concludes the modification results in a redesign of the elements contrary to design constraints of Maes, hence the rejection must be based on hindsight. Applicant’s arguments are not persuasive.
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments, MPEP 2123, II. While Maes stresses the importance of electrical conductivity in various electrical/electronic systems (e.g., fuel cell, battery, electric motors,, electronic tools, etc., [0024]) and may prefer to minimize electrical conductivity, a broad range of electrical conductivity is considered throughout the disclosure. The broader disclosure of Maes confirms the use of ionically conductive cooling fluids (e.g., OAT type coolant), where electronic conductivities range between~ 500-3500 µS/cm, e.g., in fuel cells stacks to remove heat generated by the fuel cell stack, albeit they are described as somewhat inferior in view of the shunt current which reduces voltage, see e.g., Figs. 1-2, [0007-0009], and Table 2. Maes also presents various coolant formulations with lower electrical conductivities, e.g., between ~200-1000 µS/cm (see e.g., Table 1), which one of ordinary skill in the art would appreciate from the standpoint of preventing shunt current from reducing the fuel cell potential in view of their lower electrical conductivity values compared to OAT coolant. Considering Maes appreciates a wide range of electrical conductivities suitable for electrical applications (e.g., lower conductivities (<100 µS/cm, Table 2), and higher conductivities (~500-3500 µS/cm (Tables 1-2, Figs. 1-2)), the modification of Maes, resulting in the claimed conductivity values would not fundamentally alter the principle of operation.
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).
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 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 100 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
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.
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/ANNA KOROVINA/Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729