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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/21/2026 has been entered.
This action is responsive to Applicant’s request for continued examination and amendment/remarks filed 08/21/2026.
Claims 1, 6, 8-15, and 17 are currently pending.
Response to Amendment
Upon careful consideration of the present amendment and remarks, the 103 rejection over Woyciesjes et al. (US 2006/0054564 A1) in view of Vonwiller et al. (US 2006/0027138 A1) is withdrawn. The Office agrees with Applicant’s arguments that there is no motivation to combine Woyciesjes et al. and Vonwiller et al. due the differences in fields of endeavor (Woyciesjes et al. drawn to a heat transfer fluid versus Vonwiller et al. drawn to dyes for inkjet inks). See, e.g., p.6 & 8-10 of the response filed 08/21/2026.
However, the current rejection utilizes new secondary references combined with Vonwiller et al. as a primary reference under a new ground(s) of rejection which renders obvious most but not all of the instant claims. See the new 103 rejection below.
Claim Interpretation
Claim 1 has been amended to recite the preamble “An antifreeze composition for use in fuel cells”. A composition of matter is certainly required. However, the term “antifreeze” and “for use in fuel cells” are intended use limitations that do not impart any additional structural limitations to the composition of matter in addition to the components listed in the body of the claim (the colorant, glycol, and water). As the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention and the preamble merely states the purpose or intended use of the invention rather than any distinct definition of any of the claimed invention’s limitations, the preamble is not considered a limitation and is of no significance to claim construction.
In the event the term “antifreeze” is found/argued to impart a structural limitation that is part of the claimed invention, it is intrinsically met via the body of the claim requiring 30-70 wt.% of a glycol compound because glycols are notoriously well known as freezing point depressing compounds and/or as solvents having freezing points below water. However, a literal fuel cell or disclosure/suggestion that the composition of matter is for use/provision in a fuel is not required by the claim. See MPEP 2111.02.
Chemical Formula 2-4 has four pendent “TEG” substituent groups. TEG is a clear and definite abbreviation for triethylene glycol (see, for example [0054] of the original specification, that sets forth a clear definition and standard for the abbreviation), e.g., “-OCH2CH2OCH2CH2OCH2CH2OH”.
Also, as set forth in Applicant’s remarks on p.5-6 of the remarks filed 11/17/2025, that the claimed PEG0.4k group is well-known in the art as meaning a polyethylene glycol (PEG) having an average molecular weight of about 400, that such a product is widely commercially available, and a person having ordinary skill in the art would immediately recognize and understand the claimed -O-PEG0.4k group means a PEG substituent having an average molecular weight of about 400.
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.
Claims 1, 6, 8, 10-14, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Vonwiller et al. (US 2006/0027138 A1) in view of Dominiku et al. (JP H06-220381 A) or Adamic (JP H10-219160 A). English language machine translations of the foreign references are attached to the supplied copies of the references.
As to claim 1, Vonwiller et al. teach metal-cyanine dyes for inkjet inks and inkjet inks thereof (abstract & para. 0004), i.e., compositions of matter. Vonwiller et al. teach the inkjet ink compositions comprise the metal-cyanine dye (para. 0041 & 0042) and are preferably a water-based inkjet ink (para. 0187). Vonwiller et al. further teach the water-based inkjet ink may comprise a water-soluble organic solvent including a glycol (para. 0191). Many glycol species are listed, e.g., ethylene glycol, propylene glycol, diethylene glycol, dipropylene glycol, tetraethylene glycol, triethylene glycol, tripropylene glycol, polyethylene glycol (i.e., a polyalkylene glycol), and 1,4-butanediol (i.e., butylene glycol) (Id. at para. 0191), and the water-soluble organic solvent is preferably about 5-50 wt.% of the inkjet ink (para. 0192). As the disclosed inkjet inks are water-based and may further comprise a glycol (Id.), the inkjet inks clearly comprise a dye, a glycol compound, and water as claimed.
Regarding the dye, Vonwiller et al. teach metal cyanine complexes of the following formula for use as dyes:
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(para. 0121) where M is selected from a small number of metals and metalloids including gallium (“Ga(A1)”, para. 0123) and the Qs are preferably an arylene of formula (i):
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(para. 0153) where R1 and R2 may each be hydrogen atoms (para. 0154), T is a polymeric chain or a hydrocarbyl group where n is 0, 1, or 2, i.e., optional, (para. 0155 & 0159), and W is a hydrophilic group where m is 0, 1, or 2, i.e., optional, (para. 0156 & 0158). The totality of hydrogens as the R groups and the T and W being optional amounts to a gallium phthalocyanine dye corresponding the general structure of Chemical Formula 2-5 without the -TEG substituents. Note the gallium is present as “Ga(A1)” (Id. in para. 0123).
Regarding the claimed -O-PEG0.4k axial substituent, Vonwiller et al.’s A1 is an axial ligand comprising a hydrophilic group (para. 0124). The hydrophilic group is preferably a hydrophilic polymer chain (para. 0098 & 0138), and an example of a hydrophilic polymer chain is a PEG, i.e., polyethylene glycol, chain comprising 2-5,000 repeating units, preferably 2 to 100 repeating units, of ethylene glycol (para. 0099 & 0139). This reads on the claimed “-O-PEG0.4k”. PEG with 9 repeating units, as encompassed by the cited teachings of the reference, has a molecular weight of 397 which is about/approximately 400.
Regarding the claimed -TEG (triethylene glycol) substituents, Vonwiller et al.’s arylene Q groups (Id., see formula (i) in para. 0153 and the definitions of variables thereof among para. 0154-0160) may have a “W” hydrophilic substituent with 0, 1, or 2 “m” repeating units. The W is preferably a PEG chain (para. 0166). As already cited above, the PEG chains are hydrophilic polyethylene glycol chains comprising 2-5,000 repeating units, preferably 2 to 100 repeating units, of ethylene glycol (para. 0099 & 0139). PEG with 3 repeating units, as encompassed by the cited teachings of the reference, is a triethylene substituent just as that claimed. Any remaining substituents in the arylene Q groups (e.g., a Tn- polymeric chain or C1-30 hydrocarbyl) are optional because the variable (n) includes zero. The reference also meets the claimed para substitution of the -TEG substituents as there are only two possible positions for the -W hydrophilic substituent to be placed at (circled below); both are -para because it is impossible for the ortho positions to have substituents and the meta positions already have the R groups present:
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Vonwiller et al. teach the disclosed dyes have an improved water solubility (para. 0004) and the axial “A” ligands (e.g., PEG) and arylene-bound “W” hydrophilic group(s) (e.g., PEG encompassing TEG, a PEG with 3 repeating units) all impart this solubility via their hydrophilicity (para. 0105, 0119, & 0120).
While Vonwiller et al. fail to exemplify or teach the claimed colorant of Chemical Formula 2-4 under the meaning of anticipation, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to formulate/provide Vonwiller et al.’s axially- and arylene--substituted PEG gallium phthalocyanine dye in order to obtain a water-based and glycol-containing inkjet ink where the dye is sufficiently soluble water-based inkjet ink with a reasonable expectation of success.
Although Vonwiller et al. has a very comprehensive disclosure to the structure of their dye/colorant, the reference fails to teach a concentration at which the dye is provided in the water-based inkjet ink.
However, Dominiku et al. is drawn to an aqueous inkjet ink composition (abstract/etc.) and teaches it is typical for dyes to be present in a concentration of 0.01-20 wt.%, preferably 0.05-8 wt.%, of such inks (top p.5). Alternatively, Adamic is similarly drawn to an aqueous inkjet ink composition (abstract/etc.) and teaches it is typical for dyes to be present in a concentration of 0.01-20 wt.%, preferably 0.05-8 wt.%, of such inks (near top p.4). In other words, these references teach and serve as evidence 0.01-20 wt.% and subsets thereof, overlapping the claimed concentration of 0.001-2.000 wt.%, are typical concentrations to provide dyes in aqueous inkjet ink compositions.
Thus, at the time of the effective filing date it would have been very obvious to a person of ordinary skill in the art to provide Vonwiller et al.’s dye at a typical concentration well-known in the art, e.g., 0.01-20 wt.% and subsets thereof, such as that taught by Dominiku et al. or Adamic, in order to obtain a water-based inkjet ink with a sufficient/typical amount of dye with a very reasonable expectation of success.
The combination of references (Vonwiller et al.’s water-based inkjet ink composition comprising water, glycol, and a dye with a typical/well-known amount of dye via Dominiku et al. and/or Adamic) meets the claimed concentrations of colorant/dye, glycol compound and water. The secondary references teach concentrations overlapping the claimed concentration of 0.001-2.000 wt.% are typical concentrations to provide dyes in aqueous inkjet ink compositions (Id.), thus meeting the colorant concentration. Vonwiller et al.’s disclosed concentration of the water-soluble organic solvent, e.g., glycol, being preferably about 5-50 wt.% of the inkjet ink (Id.) meets and overlaps the claimed 30-70 wt.% glycol compound. And finally, as Vonwiller et al.’s inkjet ink composition is “water-based”, a person of ordinary skill in the art would understand and interpret any remaining balance of concentration(s) in the inkjet ink composition as being/encompassing water. Accordingly, Vonwiller et al. (in view of the typical dye concentrations disclosed by the secondary references) encompasses a water-based comprising 5-50 wt.% of a glycol compound, 0.01-20 wt.% of the dye, and 30-94.9 wt.% water (the difference of the previous two concentrations from 100%).
The claimed limitation that the (gallium phthalocyanine) colorant has a weight loss of 10% or less at a temperature of 250°C is met by the reference(s). The recited stability would flow naturally from the cited teachings of the reference as Vonwiller et al. teach a specific gallium phthalocyanine colorant encompassing the scope of the claimed formula. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Any remaining claim limitations are optional and/or intended use (the term “antifreeze” and the phrase “for use in a fuel cell”; see the interpretation of record). Arguendo, Vonwiller et al.’s glycol species disclosed for provision as the water-soluble organic solvent are certainly capable of serving as an antifreeze and/or lowering the freezing point of water. Glycols are intrinsically antifreeze.
As to claims 6 and 17, the claimed limitations that the colorant has a solubility of 1 g/L or higher in the antifreeze composition and the composition has an electric conductivity of 50 uS/cm or less are met by the combination of references. Regarding the solubility of the colorant, Vonwiller et al.’s gallium phthalocyanine colorant has an improved water solubility by the inclusion of hydrophilic groups (Id.). The recited solubility would flow naturally from the reference(s) if the solubility of Vonwiller et al.’s colorant/dye was quantified. Regarding the conductivity of the composition, Vonwiller et al.’s composition is substantially the same as that claimed, having the same components as claimed except in overlapping amounts rather than as amounts specifically within the ranges claimed. In any event, any potential functional groups disclosed in Vonwiller et al.’s dye that might detract from a low electrical conductivity are entirely optional in the Vonwiller et al. and need not be provided. Accordingly, the recited electric conductivity would flow naturally from the combination of references if the conductivity of Vonwiller et al.’s dye and inkjet ink composition thereof was quantified. See also In re Wiseman and Ex parte Obiaya (Id.).
As to claim 8, Vonwiller et al. teach the glycol compound comprises ethylene glycol, propylene glycol, diethylene glycol, dipropylene glycol, tetraethylene glycol, triethylene glycol, tripropylene glycol, polyethylene glycol (i.e., a polyalkylene glycol), or 1,4-butanediol (i.e., butylene glycol) (Id.).
As to claims 10-14, Vonwiller et al. teach the water-based inkjet ink composition may further comprise a pH adjuster (para. 0198). Alkanol amines such as triethanolamine, diethanolamine, diethylethanolamine, triisopropanolamine, butyldiethanolamine, morpholine, and propanolamine are specific examples of the pH adjuster as are alkyl amines such as methylamine, ethylamine, diethylamine, trimethylamine, triethylamine (Id. at para 0198). While a concentration is not disclosed, Vonwiller et al. teach the pH adjuster is provided for adjusting the ink’s pH from 7 to 9 (Id.) and determination of a pH adjusting amount of an amine- or alkanolamine-based pH adjuster in the water-based inkjet ink composition amounts to routine experimentation motivated by the reference’s express suggestion to provide a pH adjuster as an additive in the water-based inkjet ink composition. Additionally, the disclosed alkanol amines, especially the triethanolamine species, reads on the claimed metal corrosion inhibitor of claim 14. Triethanolamine is known as a metal corrosion inhibitor. In any event, in the present art(s), certain additives may be used for a variety of purposes; one skilled person’s pH adjuster might be another skilled person’s corrosion inhibitor.
Response to Arguments
Applicant’s present arguments with respect to the prior 103 rejection over the combination of Woyciesjes et al. (US 2006/0054564 A1) in view of Vonwiller et al. (US 2006/0027138 A1) have been considered but are largely moot because the rejection has been withdrawn. However, it is additionally noted the present arguments do set forth remarks specifically to the Vonwiller et al. reference that have been fully considered but are not persuasive to obviate the new rejection based on Vonwiller et al. utilized as a primary reference; these arguments will be addressed below.
Applicant argues Vonwiller et al. does not teach an antifreeze composition for use in fuel cells and is instead drawn to printing dyes. Applicant is additionally concerned Vonwiller et al.’s discussion of stability concerns of photodegradation and lightfastness of printing dyes rather than thermal stability at elevated temperatures and therefore does not teach or suggest the recited thermal stability feature. Applicant’s position is Vonwiller et al. does not teach the specific combination of a fuel-cell application, colorant concentration, and thermal stability characteristics of claim 1. See section A on p.6 of the response filed 08/21/2026.
In response, this argument is not persuasive because Applicant’s arguments regarding the alleged lack of a fuel cell application are to the intended use of the composition that is expended little patentable weight in assessing patentability of the claimed composition. The fuel cell application is a preamble recitation (claim 1 recites the preamble “An antifreeze composition for use in fuel cells”.) A composition of matter is certainly required. However, the term “antifreeze” and “for use in fuel cells” are intended use limitations that do not impart any additional structural limitations to the composition of matter in addition to the components listed in the body of the claim (the colorant, glycol, and water). As the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention and the preamble merely states the purpose or intended use of the invention rather than any distinct definition of any of the claimed invention’s limitations, the preamble is not considered a limitation and is of no significance to claim construction. A literal fuel cell or disclosure/suggestion that the composition of matter is for use/provision in a fuel is not required by the claim. See MPEP 2111.02.
Applicant’s arguments in section B(4) on p.9-10 and C(3) on p.11-12 of the response filed 08/21/2026 regarding nothing in Vonwiller et al. suggests their dyes should be selected for use in a fuel-cell heat transfer fluid and/or are allegedly insufficient for the operational requirements of a fuel cell antifreeze composition are also not persuasive for the same reason(s). The ladder arguments (with a portion therein arguing that Vonwiller et al.’s dye is not suitable for a composition containing 30-70 wt.% glycol and 30-70 wt.%, bottom of p.11 of the present response) are additionally not persuasive because Vonwiller et al.’s disclosure encompasses concentrations of glycol and water overlapping the claimed 30-70 wt.% glycol and 30-70 wt.% (see the new rationale of record in the new 103 rejection, above).
If Applicant would like for a fuel cell to be required, claim 1 could be amended to recite “A fuel cell comprising an antifreeze composition” instead of “An antifreeze composition for use in fuel cells”.
Regarding Applicant's argument that Vonwiller et al. is concerned with stability of photodegradation and lightfastness of printing dyes rather than thermal stability at elevated temperatures, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). The recited thermal stability of the colorant compound would flow naturally from the cited teachings of the reference as Vonwiller et al. teach a specific gallium phthalocyanine colorant encompassing the scope of the claimed formula. The rejection of the thermal stability-related limitation is grounded in the chemical structure taught by Vonwiller et al. not the photostability teachings cited by Applicant.
Applicant’s arguments in sections C(1) and C(2) on p.10-11 of the response filed 08/21/2026 regarding Vonwiller et al. not teaching/satisfying the thermal-stability requirement and Vonwiller et al.’s photostability teachings would predict the recited thermal performance are also not persuasive for the same reason(s). It is noted these arguments also present a concern that Vonwiller et al. does not teach or present data concerning thermal decomposition, thermogravimetric behavior, or weight loss at an elevated temperature. Again, the rejection of the thermal stability-related limitation is grounded in the chemical structure taught by Vonwiller et al. not the photostability teachings cited by Applicant, and there is a reasonable expectation the recited thermal stability of the colorant compound would flow naturally from the cited teachings of the reference as Vonwiller et al. teach a specific gallium phthalocyanine colorant encompassing the scope of the claimed formula. The Office notes that the rejections of record have been made under obviousness not anticipation. If Vonwiller et al. explicitly taught an exemplary dye within the scope of the recited formula and measured/presented its thermal decomposition, thermogravimetric behavior, or weight loss at an elevated temperature, the rejection would be made under an anticipatory analysis rather than an obviousness analysis. Applicant’s implied argument that the claims are nonobvious because they are not anticipated by the reference is not persuasive.
Regarding the arguments to the colorant concentration (e.g., section A on p.6), these arguments do not apply to all of the rejections of record. New secondary references are relied upon to meet the colorant concentration range. See the new 103 rejection, above.
Applicant further argues there is no reason or articulated reason why a person having ordinary skill in the art would have made selections to arrive at the recited Chemical Formula 2-4 from the teachings of Vonwiller et al. Applicant elaborates the reference does not inform specific selection decisions and a person of ordinary skill in the would have been guided by Vonwiller et al.’s preferred and explicitly discussed substitutions. See p.7 of the response filed 08/21/2026.
In response, these arguments are not persuasive first because, as similarly set forth in previous Office actions, Applicant’s position that a person of ordinary skill in the would have been guided by Vonwiller et al.’s preferred and explicitly discussed substitutions, i.e., follow/provide only the preferred embodiments and exemplary dyes of the reference, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments, and a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. See In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971) & Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
In response to Applicant’s argument that there is no reason or motivation for a person having ordinary skill in the art would have made selections to arrive at the recited Chemical Formula 2-4, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, following the teachings of the reference results in a colorant/dye encompassing the recited Chemical Formula 2-4. The precise teachings have been cited in the rejection of record and are not repeated here for purposes of brevity. See pages 5 to 8 of this correspondence, above. Following the disclosed teachings of a reference has a reasonable expectation of success and each selection is made and motivated in order to obtain a water-based and glycol-containing inkjet ink where the dye is sufficiently soluble water-based inkjet ink with a reasonable expectation of success.
Allowable Subject Matter
Claims 9 and 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Applicant could incorporate the limitation(s) of either claim into claim 1 to overcome the rejection of record.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record fail to teach a composition comprising 0.001-2 wt.% of the recited PEG axially substituted gallium phthalocyanine colorant, glycol, water, and either one of an antifoaming agent and an azole-based corrosion inhibitor.
Vonwiller et al. teach metal-cyanine dyes for inkjet inks and inkjet inks thereof comprising water, glycol/organic solvent, a metal cyanine complex dye overlapping the scope of the recited PEG axially substituted gallium phthalocyanine colorant, and a variety of additives for the reasons of record (Id.), but does not fairly teach or suggest an antifoaming agent additive or an azole-based corrosion inhibitor additive.
Woyciesjes et al. teach a heat transfer fluid composition comprising glycol and water (abstract, para. 0031-0032 & 0067-0069), which overlaps the claimed presence and amounts of a glycol compound and water. The heat transfer fluid may comprise a variety of additives such as a colorant, including colorants with various chromophores such as phthalocyanine or conjugated heterocyclic groups may be provided, (para. 0031 & 0053+), an antifoam agent and/or a defoamer (para. 0031 & 0072), and various corrosion inhibitors including azole compounds (abstract, para. 0033 & 0071). However, as persuasively argued by Applicant, there is no motivation to combine Woyciesjes et al. and Vonwiller et al. due the differences in fields of endeavor (Woyciesjes et al. drawn to a heat transfer fluid versus Vonwiller et al. drawn to dyes for inkjet inks). See, e.g., Applicant’s arguments on p.6 & 8-10 of the response filed 08/21/2026.
The remaining references listed on Forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or described above.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
September 11, 2026
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