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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/09/2026 has been entered.
Response to Amendment
In response to the amendment received on 01/09/2026:
claims 9-14 and 16-18 are currently pending; and
all prior art grounds of rejection are withdrawn in light of the amendments that narrowed the ranges and incorporated a metal corrosion inhibitor in independent claim 9; however, new grounds of rejection are presented based on the same references as set forth herein.
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 9-14 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US 2006/0051639 A1) (“Yang” hereinafter) in view of McKeown et al. (US 5,792,860) (“McKeown” hereinafter).
Regarding claim 9, Yang teaches a cooling liquid composition (see Yang at [0034] teaching in another exemplary embodiment, the disclosed colored heat transfer fluids, see Yang at [0028] teaching in one embodiment, the disclosed heat transfer fluids may be referred to as coolants). The colored heat transfer fluid is taken to meet the claimed cooling liquid composition, based on the structure as outlined above, comprising:
0.001 to 1.000 wt% of a colorant (see Yang at [0034] teaching a nonconductive colorant, see Yang at [0047] teaching in one embodiment, the non-conductive colorant will be present in the colored heat transfer fluid in an amount of from 0.0001 to 0.2 % by weight, based on the total amount of the colored heat transfer fluid (see MPEP 2144.05(I)));
30 to 65 wt% of a glycol compound (see Yang at [0034] teaching at least one alcohol, see Yang at [0048] teaching illustrative examples of suitable alcohols for use in the disclosed heat transfer fluids are… ethylene glycol, see Yang at [0049] teaching in one embodiment, the alcohol will be present in the heat transfer fluid in an amount of from 10-99.9% by weight, based on the total amount of the colored heat transfer fluid (see MPEP 2144.05(I)));
30 to 65 wt% of water (see Yang at [0034] teaching water, see Yang at [0050] teaching in one embodiment, water will be present in the colored heat transfer fluid in an amount of from 0-90% by weight, based on the total amount of the heat transfer fluid (see MPEP 2144.05(I))); and
0.0001 to 2.0 wt% of a metal corrosion inhibitor (see Yang at [0074] teaching in one embodiment, one or more corrosion inhibitors will be present in the heat transfer fluid in an amount of from 0.0 to 10% by weight, based on the total amount of the colored heat transfer fluid, see Yang at [0052] teaching suitable corrosion inhibitors include aluminum and aluminum based alloy corrosion inhibitors, copper and copper based corrosion inhibitors, ferrous metal corrosion inhibitors).
Yang does not explicitly teach that the colorant i) has a structure of chemical formula 2 or 3, ii) wherein the colorant has a solubility of 1.5 g/L or more with respect to the cooling liquid composition, and has a weight loss rate of 10% or less at a temperature of 250oC.
However, Yang teaches conventional heat transfer fluids are unsuitable for use with alternative power sources, especially electricity based alternative power sources (see Yang at [0007])… examples of alternative power sources that have been developed include, but are not limited to, batteries, fuel cells, solar photovoltaic cell… and/or the like (see Yang at [0004])… the disclosure relates to heat transfer fluids, especially color heat transfer fluids for use in fuel cell assemblies (see Yang at [0002])… a ‘colored heat transfer fluid’ as used herein refers to a heat transfer fluid having a sufficient amount of one or more colorants such that the color of the heat transfer fluid may be measured by either the naked eye or by analytical techniques using selective absorption or scattering of visible light, i.e., light with wavelengths of approximately between 350 nm and 750 nm (see Yang at [0033]). Yang further teaches that there remains a need for heat transfer fluids that are colored but still possess very low conductivity and which are suitable for use with alternative power sources (see Yang at [0021]).
Yang also teaches in another embodiment, the chromophore contained in the colorants will be selected from the group consisting of… two or more conjugated heterocyclic groups, and combinations thereof (see Yang at [0040]).
Like Yang, McKeown teaches a colorant consisting of two or more conjugated heterocyclic groups that may be measured by either the naked eye or by analytical techniques using selective absorption or scattering of visible light, i.e., light with wavelengths of approximately between 350 nm and 750 nm, which may have applications in battery technology (see McKeown at C1 L7-8 teaching a novel substituted phthalocyanines, see McKeown at C2 L18-21 teaching some phthalocyanines also absorb radiation in the far-red to near infra-red regions of the electromagnetic spectrum… can in principle be exploited as… dyes, see McKeown at C5 L40-41 teaching the compounds described by the current disclosure are useful for a broad range of applications, see McKeown at C6 L5-8 teaching the compounds of the disclosure may also be useful as polyelectrolytes, they are able to stabilise charge, therefore there exist a number of applications within battery technology).
Furthermore, McKeown teaches according to this disclosure there is provided phthalocyanine (Pc) compounds (see McKeown at C3 L58-59)… formula I, shown below… wherein M is a… metal atom… R1–R25 may be the same or different provided that at least one of R1–R25 has the following Formula II, shown below (see McKeown at C4 L1-36)… the metal atom may be present for example as the metal with an oxidation state of +2… examples of suitable metals include… Zn (see McKeown at C5 L29-35).
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476
546
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232
566
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McKeown also teaches series 3: octa-substituted phthalocyanines, shown below (see McKeown at C14 L16-50). One of ordinary skill in the art would appreciate that all the positions of the benzo group in Formula I are substituted. However, McKeown also teaches that the benzo group can also be synthesized with octa substitution.
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568
408
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Additionally, MPEP states that “examples of rationales that may support a conclusion of obviousness include… (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success… (2) a finding that there had been a finite number of identified, predictable potential solutions to the recognized need or problem” (see MPEP § 2141.III, 2143.I.E). In this instance, McKeown teaches a finite number of suitable metal atoms with an oxidation state of +2, with a reasonable expectation of success of being present in the octa-substituted phthalocyanines.
The claimed Chemical Formula 3, wherein in Chemical Formula 3, M is zinc (Zn) is obvious based on the octa substitution of the benzo group and formula 1 wherein M is Zn, as illustrated above, thus meeting the claimed the colorant i) has a structure of chemical formula… 3, wherein M is zinc (Zn).
Since the phthalocyanine as taught by Yang in view of McKeown and the claimed colorant as recited in claim 9 employ substantially similar materials, it is reasonable to believe that the claimed properties (i.e., wherein the colorant has a solubility of 1.5 g/L or more with respect to a cooling liquid composition, and has a weight loss rate of 10% or less at a temperature of 250oC) would have naturally flowed following the teaching of Yang in view of McKeown (see MPEP 2112.01)), thus meeting the claimed ii) wherein the colorant has a solubility of 1.5 g/L or more with respect to the cooling liquid composition, and has a weight loss rate of 10% or less at a temperature of 250oC.
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that octa-substituted phthalocyanines and formula 1 wherein M is Zn are suitable dyes for a broad range of applications, such as alternative power sources (e.g., batteries, fuel cells).
As such, one of ordinary skill in the art would appreciate that McKeown teaches octa-substituted phthalocyanines and formula 1 wherein M is Zn are suitable dyes for a broad range of applications, such as a number of applications within battery technology (e.g., batteries, fuel cells), and seek those advantages by using octa-substituted phthalocyanines as a colorant in the colored heat transfer fluid as taught by Yang.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to use octa-substituted phthalocyanines and formula 1 wherein M is Zn as taught by McKeown as a colorant in the colored heat transfer fluid as taught by Yang because they are suitable dyes for a broad range of applications, such as a number of applications within battery technology (e.g., batteries, fuel cells).
Regarding claim 10, Yang in view of McKeown teach the limitations as applied to claim 9 above, and Yang further teaches comprising 0.001 to 0.100 wt% of a defoamer relative to the total weight thereof (see Yang at [0075] teaching the disclosed colored heat transfer fluids may also comprise one or more additional additives such as… defoamers… in amounts of up to 10% by weight, based on the total amount of the colored heat transfer fluid (see MPEP 2144.05(I))).
Regarding claims 11-14, Yang in view of McKeown teach the limitations as applied to claim 9 above, and Yang teaches further comprising 0.0005 to 0.1 wt% of a pH adjuster relative to the total weight thereof (claim 11), wherein the pH adjuster is an amine-based compound (claim 12), wherein the amine-based compound is at least one selected from the group consisting of… alkanol amines (claim 13), and wherein the amine-based compound is triethanolamine (claim 14) (see Yang at [0074] teaching in one embodiment, one or more corrosion inhibitors will be present in the heat transfer fluid in an amount of from 0.0 to 10.0% by weight, based on the total amount of the colored heat transfer fluid (see MPEP 2144.05(I)), see Yang at [0052] teaching suitable corrosion inhibitors… such as… amines such as… triethanolamine). Triethanolamine is taken to meet the claimed pH adjuster.
Regarding claim 16, Yang in view of McKeown teach the limitations as applied to claim 9 above, and Yang teaches further wherein the metal corrosion inhibitor is an azole (see Yang at [0052] teaching suitable corrosion inhibitors include aluminum and aluminum based alloy corrosion inhibitors, copper and copper based corrosion inhibitors, ferrous metal corrosion inhibitors, such as… azole derivatives).
Regarding claim 17, Yang in view of McKeown teach the limitations as applied to claim 9 above, and Yang further teaches wherein the cooling liquid composition… a cooling liquid composition for a fuel cell (see Yang at [0027] teaching the disclosed colored heat transfer fluids for use in assemblies comprising alternative power sources, especially fuel cells).
Regarding claim 18, Yang in view of McKeown teach the limitations as applied to claim 9 above, and Yang further teaches wherein the cooling liquid composition has an electrical conductivity of 50.0 µS/cm or less (see Yang at [0029] teaching while in another embodiment, the disclosed colored heat transfer fluids will have conductivity of less than 50 µS/cm).
Response to Arguments
Applicant’s amendments that narrows the ranges and incorporated a metal corrosion inhibitor in independent claim 9 have obviated the previous rejection. However, upon further consideration, a new ground of rejection is set forth using the same references Yang and McKeown. Thus, relevant arguments are addressed below.
Applicant discusses that the cited references fail to disclose all of the claimed features because there is no motivation to select copper or zinc for McKeown’s Formula II… McKeown merely describes a broad genus of metals in McKeown, Col. 5, l. 35 (see Applicant’s arguments at page 5 paragraph 8 to page 7 paragraph 1).
Examiner acknowledges the arguments and respectfully notes that the octa substitution of the benzo group and formula 1 wherein M is Zn as taught by McKeown meets the claimed chemical formula 3, wherein M is zinc (Zn) (see claim 1 rejection).
As mentioned in the rejection above, MPEP states that “examples of rationales that may support a conclusion of obviousness include… (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success… (2) a finding that there had been a finite number of identified, predictable potential solutions to the recognized need or problem” (see MPEP § 2141.III, 2143.I.E). In this instance, McKeown teaches a finite number of suitable metal atoms with an oxidation state of +2, with a reasonable expectation of success of being present in the octa-substituted phthalocyanines. Thus, the claimed Chemical Formula 3, wherein in Chemical Formula 3, M is zinc (Zn) is obvious based on the octa substitution of the benzo group and formula 1 wherein M is Zn (see claim 1 rejection).
As such, the rejection based on Yang in view of McKeown is maintained.
Applicant discusses that there is no motivation to select any specific ranges in Yang… Yang describes a cooling liquid composition, but the ranges described in Yang are extremely broad for alcohol and water… Yang’s broad disclosure provide no teaching or suggestion that would motivate a person having ordinary skill to select any sub-ranges, let alone the narrower ranges as recited in claim 9… Yang also describes a colorant concentration “at a maximum concentration of no more than 0.2 wt%, wherein the amended claim 9 recites a colorant concentration of up to 1.0 wt%... the suggested combination requires specific selection of not just one component or range, but rather five independent component or ranges… Neither Yang nor McKeown provide any motivation to make any of the suggested selection (see Yang at page 7 paragraphs 2-3).
Examiner acknowledges the arguments and respectfully notes that MPEP states that ‘where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness has been established (see MPEP § 2144.05 I). In this instance, Yang still overlaps with the claimed ranges, thus meeting the claimed limitations.
Furthermore, “if a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case… rebuttal evidence and arguments can be presented in the specification… or by way of an affidavit or declaration… however, arguments of counsel cannot take the place of factually supported objective evidence” (see MPEP § 2145.I). In this instance, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (see MPEP § 716.02(d).II.). In this instance, the applicant should provide proof or evidence that claimed ranges are critical.
As such, the rejection based on Yang in view of McKeown is maintained.
Applicant discusses that McKeown does not describe phthalocyanine derivatives engineered for high solubility in glycol-based cooling liquids… there is no solubility data in any coolant medium and no indication that its compounds could achieve solubility as high as the required 1.5 g/L or have a weight-loss stability of 10% or less than 250oC… the structural and physical characteristics of the colorants of claim 9 result from specific synthetic choices designed to impart high solubility and excellent thermal and chemical stability… these properties are not inherent in the generic octa-substituted phthalocyanine of McKeown… with respect to the physical properties of the colorant, the phthalocyanines described in McKeown are not directed to, nor intended for use as, colorants for highly soluble cooling liquid compositions (see Applicant’s arguments at page 8 paragraph 2-4).
Examiner acknowledges the arguments and respectfully notes that "when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not… therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product” (see MPEP 2112.01.I). In this instance, Applicant did not provide an evidence that the octa substitution of the benzo group and formula 1 wherein M is Zn as taught by McKeown does not necessarily possess the characteristics of the claimed colorant.
As such, the rejection based on Yang in view of McKeown is maintained.
Applicant discusses that the results of the liquid cooling composition of claim 9 are unexpected… experimental example 2… shows that the colorant of claim 9 exhibits solubilities of 1.5 to 3.0 g/L… thermal gravimetric analyses demonstrate stability up to approximately 300oC, with weight loss rates below 10% at 250oC… low conductivity, 1.0 µS/cm or less… the cooling liquid compositions comprising the colorant of claim 9 do not cause discoloration (see Applicant’s arguments at pages 8-9, bridging paragraph).
Examiner respectfully reiterates that Applicant did not provide an evidence that the octa substitution of the benzo group and formula 1 wherein M is Zn as taught by McKeown does not necessarily possess the characteristics of the claimed colorant.
Furthermore, MPEP states that “[i]t is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant” (see MPEP 2144.IV). And, 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).
As such, the combination of Yang and McKeown has reasonably met independent claim 9 limitations, and the rejection based on Yang in view of McKeown is maintained.
Applicant discusses that claim 9 is not obvious over the cited references because the cited references fail to disclose all elements, there is no motivation to select, and there is no reasonable expectation of success… claims 10-14 and 16-18 depend upon claim 9 and are patentable for the same reasons (see Applicant’s arguments at page 9 paragraph 2).
Examiner acknowledges the arguments and respectfully notes that the rejection based on Yang in view of McKeown for independent claim 9 is maintained, as outlined above. Accordingly, the rejection to dependent claims 10-14 and 16-18 are also maintained.
Conclusion
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731