DETAILED ACTION
Applicant’s reply, filed 12 September 2025 in response to the non-final Office action mailed 17 June 2025, has been fully considered. As per Applicant’s filed claim amendments claims 1-17 and 19-20 are pending, wherein: claims 1-2 and 4-17 have been amended, claim 3 is as previously presented, claims 19-20 are new, and claim 18 has been cancelled by this amendment.
Claim Objections
Claim 1 is objected to because of the following informalities: in line 11 “base fluid, wherein” should instead be –base fluid, and wherein--. Appropriate correction is required.
Claim 16 is objected to because of the following informalities: i) “and mixtures thereof wherein” should instead be –and mixtures thereof; wherein-- (i.e. thereof is missing a semicolon); and ii) “dicarboxylate; or a tricarboxylates” should instead be –dicarboxylate, or a tricarboxylate-- (i.e. a comma not a semicolon and tricarboxylates should not be plural). Appropriate correction is required.
Claim 17 is objected to because of the following informalities: in line 2 “which is a which is a” constitutes an improper amendment/new typographical error that must be corrected. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: i) in ‘a.’, “an aliphatic monocarboxylic acid selected from the group consisting of C4-C12 aliphatic monocarboxylic acids” should instead be –an aliphatic monocarboxylic selected from C4-C12 aliphatic monocarboxylic acids;-- (no Markush is recited so ‘the group consisting of’ should be removed; and a semicolon is missing after the recitation); ii) in ‘b.’, “an aliphatic dicarboxylic acid selected from the group consisting of C6-C16 aliphatic dicarboxylic acids” should instead be –an aliphatic dicarboxylic selected from C6-C16 aliphatic dicarboxylic acids;-- (no Markush is recited so ‘the group consisting of’ should be removed; and a semicolon is missing after the recitation); and iii) in ‘c.’, “an aliphatic tricarboxylic acid selected from the group consisting of C7-C18 aliphatic tricarboxylic acids” should instead be –an aliphatic tricarboxylic selected from C7-C18 aliphatic tricarboxylic acids;-- (no Markush is recited so ‘the group consisting of’ should be removed; and a semicolon is missing after the recitation);Appropriate correction is required.
Claim 20 is objected to because of the following informalities: i) in the compounds of formula (I) the claim lacks the multiple recitations of “unsubstituted” found in claim 6, from which claim 20 depends, and this must be corrected or a 112(d) rejection for improper broadening will be applied. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6-10, 13-17 and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 6 and 20, the claims depend from independent claim 1 which has been amended to exclude N-methyl-2-pyrrolidone and adipamide from the aliphatic carboxamide compounds. As such, the formula (II) and formula (III) recitations are indefinite given that formula (II) cannot have R4 = C1 straight chain when a = 4, and formula (III) cannot have X = C4 straight chain alkanediyl. As such, the claim renders indefinite what compounds can/cannot be present in the overall composition. This includes claims 7-10 as they depend from claim 6.
Regarding claim 13, the as-amended claim recitation appears to be incomplete as the second recitation states “the composition comprises more than 90 wt% by total weight of the composition.” It is not clear what is 90 wt% of the composition (‘base fluid’ is assumed). This includes claims 14-16 as they depend from claim 13.
Regarding claim 16, the as-amended inclusion of the three tables renders the claim indefinite as said tables contain multiple structures not recited in the second limitation (the aliphatic carboxamide selected from) including (I)a, (II)b, (II)d, (III)a, (III)c, and (III)e. This renders unclear the metes and bounds of the claim.
Regarding claim 17, the as-amended claim is an incomplete sentence and makes little sense.
Regarding claim 20, the claim depends from independent claim 1 which has been amended to exclude N-methyl-2-pyrrolidone and adipamide from the aliphatic carboxamide compounds. As such, the formula (II) and formula (III) recitations are indefinite given that formula (II) cannot have R4 = C1 straight chain when a = 4, and formula (III) cannot have X = C4 straight chain alkanediyl. As such, the claim renders indefinite what compounds can/cannot be present in the overall composition.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1, from which claim 7 ultimately depends, states that the aliphatic carboxamide cannot be adipamide. As such, the claim 7 recitation stating that the aliphatic carboxamide can include formula (III)e, i.e. adipamide (see line 2 of the claim and see the fifth structure of the third table (III)e), renders the claim improper as it fails to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1, from which claim 10 ultimately depends, states that the aliphatic carboxamide cannot be adipamide. As such, the claim 10 recitation stating that the aliphatic carboxamide can include formula (III)e, i.e. adipamide, renders the claim improper as it fails to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1, from which claim 16 ultimately depends, states that the aliphatic carboxamide cannot be adipamide. As such, the claim 16 recitation stating that the aliphatic carboxamide can include formula (III)e, i.e. adipamide (see line 7 of the claim and see the fifth structure of the third table (III)e), renders the claim improper as it fails to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 5-7, 12-14 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Egawa et al. (US PGPub 2005/0109979).
Egawa teaches coolant compositions having low conductivity (abstract) comprising a base agent and an anti-corrosive additive ([0011]) wherein the base agent is selected from one or more of water, glycols, alcohols and glycol ethers ([0011]-[0014]) present in the remainder (see Table 1 ratios: 30/70, 0/100, 50/50 of water to glycols). Egawa further teaches the conductivity is sustained at 10 µS/cm or less ([0015]; see also Table 2).
Egawa teaches the anti-corrosive additive is present from 0.001 to 10 wt% of the composition ([0023]) and is selected from substances that block ions to prevent conductivity of the coolant from increasing, including amide compounds ([0018]) selected from succinic acid amide (instant (III)c), oxalic acid diamide (instant (III)a), acetamide (instant (I)a), 2-pyrrolidone (instant (II)b) and caprolactam (instant (II)d) ([0020]).
Claims 1-17 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wenderoth et al. (US PGPub 2003/0164470).
Regarding claims 1-2, 5-14, 17 and 20, Wenderoth teaches antifreeze concentrates, and ready-to-use aqueous coolants thereof ([0001]), comprising a base fluid ([0019]) and contains a) 0.05 to 10 wt% of a one or more carboxamides ([0020]-[0022]). Wenderoth teaches specific examples of the carboxamides are aliphatic carboxamides ([0051]-[0055]), including succinimide (instant (III)c), propionamide (instant (I)b), and hexanamide (instant (I)e), and cycloaliphatic carboxamides ([0056]-[0060]), including 2-pyrrolidone (instant (II)b), 2-piperidone (instant (II)c), and ε-caprolactam (instant (II)d). Note the aforementioned carboxamides all meet the clamed molecular weight of less than 500 g/mol.
Wenderoth further teaches the base fluid of the concentrate comprises a liquid alcoholic freezing point depressant, in an amount of at least 85 wt% of the concentrate, selected from alkylene glycols, glycerol, and higher glycols and glycol ethers ([0095]-[0096]). Wenderoth teaches that water is used to form ready-to-use aqueous coolant compositions which comprise from 10 to 90 wt% of the concentrate and water in the remainder ([0098]; see also Table 1). Wenderoth teaches preparation by dilution of the concentrates with water ([0101]).
Wenderoth does not specifically teach the conductivity at 25°C of less than 25 µS/cm (claim 1) or the conductivity at 25°C after aging at 14 days at 90°C of less than 25 µS/cm (claim 12) . However, Wenderoth teaches the claimed composition comprising the claimed components, present in the claimed amounts. The instant specification states (instant original specification [0017], [0072]-[0075]) that such a composition will have the claimed conductivity. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “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.”; MPEP 2112.01)).
Regarding claim 3, Wenderoth teaches the composition as set forth above and further teaches the optional further inclusion of nonionic antifreeze additive compounds ([0073]; [0072]-[0091]) including c) heterocycles selected from triazoles and thiazoles ([0075]; [0078]-[0079]), e) aliphatic or aromatic monocarboxylic acids ([0082]), f) aliphatic or aromatic dicarboxylic acids ([0083]), g) phosphates, silicates, nitrites, nitrates, molybdates, etc. ([0084]), h) stabilizers ([0085]), etc.
Regarding claims 4, 15-16 and 19, Wenderoth teaches the composition as set forth in claims 1, 7 and 13 above and further teaches the optional further inclusion of nonionic antifreeze additive compounds ([0073]) including e) aliphatic or aromatic monocarboxylic acids ([0082]; see [0087]-[0088]), and f) aliphatic or aromatic dicarboxylic acids ([0083]; see [0089]), wherein carboxylic acids are present as salts ([0090]). Wenderoth further teaches the pH of the composition is from 4 to 11 ([0094]).
Response to Arguments/Amendments
The objection to claim 1 is withdrawn as a result of Applicant’s filed claim amendments, however the objection to claim 16 is maintained as set forth above as Applicant’s filed claim amendments did not overcome/address the objections.
The 35 U.S.C. 112(b) rejections of claims 1-17 are withdrawn/maintained as noted above as a result of Applicant’s filed claim amendments; note the new rejections as necessitated by said amendments.
The 35 U.S.C. 102(a)(1) rejection of claims 1-2, 5-7 and 12-14 as anticipated by Egawa (US PGPub 2005/0109979) is maintained. Applicant’s arguments (Remarks, pages 16-17) have been fully considered but were not found persuasive.
Applicant argues that Egawa teaches anthranilamide, an aromatic carboxamide (not relied upon in the above-maintained rejection), and therefore cannot anticipate. This argument is not persuasive. Applicant has picked out one alternative, optional member of the Markush groups of amide compounds of Egawa ([0020]) and concludes a lack of anticipation. Applicant ignores the remainder of the Markush group wherein Egawa clearly also teaches succinic acid amide (instant (III)c), oxalic acid diamide (instant (III)a), acetamide (instant (I)a), 2-pyrrolidone (instant (II)b) and caprolactam (instant (II)d) ([0020]), all of which are aliphatic carboxamide compounds which were relied upon in the rejection (a teaching not addressed/rebutted by Applicant).
The 35 U.S.C. 102(a)(1) rejection of claims 1-17 as anticipated by Wenderoth (US PGPub 2003/0164470) is maintained. Applicant’s arguments (Remarks, page 17) have been fully considered but were not found persuasive.
Applicant argues that Wenderoth teaches two examples which utilize adipamide or N-methyl-2-pyrrolidone and therefore cannot anticipate. This argument is not persuasive.
Firstly, it is noted that examples do not serve to limit or otherwise negate the broader teachings of a disclosure. It is long held that 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 MPEP 2123; see Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); see Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005)). Furthermore, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971)).
Secondly, Applicant has picked out one alternative, optional member of the aliphatic and cycloaliphatic carboxamide compounds taught by Wenderoth ([0051]-[0060]) and concludes a lack of anticipation. Applicant ignores the remainder of the suitable and preferred compounds where Wenderoth clearly also teaches succinimide (instant (III)c), propionamide (instant (I)b), and hexanamide (instant (I)e), and cycloaliphatic carboxamides ([0056]-[0060]), including 2-pyrrolidone (instant (II)b), 2-piperidone (instant (II)c), and ε-caprolactam (instant (II)d), all of which are aliphatic carboxamide compounds which were relied upon in the rejection (a teaching not addressed/rebutted by Applicant).
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JANE L STANLEY/ Primary Examiner, Art Unit 1767