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 .
This action is responsive to Applicant’s amendment/remarks filed 02/24/2026.
Claims 1-20 are currently pending.
Response to Amendment
The objections of claims 1, 3, and 11-15 are withdrawn in view of the above amendment.
The rejection of claims 1-15 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the above amendment.
However, claims 12 and 18 are objected to for new reasons, below.
Additionally, the claims are rejected under a new grounds of nonstatutory double patenting in view of their clarified scope. See the double patenting rejection, below.
Claim Objections
Claims 12 and 18 are objected to because of the following informalities (slight grammar issues). While these objections were raised in an Examiner-initiated interview held on 03/12/2026 and agreed to by Applicant’s representative to enter by Examiner’s Amendment, the Examiner’s Amendment cannot be made because the claims were not made fully allowable due to a double patenting issue remaining. Unfortunately, despite the Examiner and Applicant’s representative agreeing to correct these issues, these objections need to be formally made.
In claim 12, Applicant is suggested to remove the term “being” on the fourth line of the claim in order to improve clarity in the claim.
In claim 18, Applicant is suggested to remove the term “these” in order to improve clarity in the claim.
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-18 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,325,819. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims:
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Note that the instantly claimed method steps and apparatus structure and claimed method steps and apparatus structure are broadly equivalent. The GWPs overlap, too. The vinyl portions of the claimed compound and patented formula overlap in structure (instant claim requires a -CX=CYZ where X, Y, and Z are halogens [i.e., F, Cl, Br, I] where at least one of X, Y, or Z is a halogen whereas the patent requires a -CX=CYZ as well where X, Y, and Z are, slightly more narrowly, F, Cl, Br, or hydrogen where at least one of Y, Y, or Z is Cl or Br).
The main difference between the patented claims and in the instant claims is the instantly claimed compound expressly contains a Rf-O-CF2-O- (diether) moiety bound to the vinyl group in the formula whereas the patented compound contains a more simpler Rf-O- (ether) moiety bound to vinyl group in the formula. However, the patented claims recite Rf is any C1-C10 fluorinated linear or branched carbon chain that can comprise O atoms, which broadly encompasses additional ether functional groups within the claimed Rf group that encompasses, reads on, and meets the instantly claimed Rf-O-CF2-O- moiety bound to the vinyl group in the formula. While the instant claims also recite some intended use limitations pertaining removing excess heat, the structure between the two sets of claims ultimately overlap and the patented claim are nevertheless drawn to heat transfer fluids exchanging heat that are certainly capable of performing these intended use recitations/functions.
Note that claim 19 is not rejected under this rejection. Claim 19 recites “wherein the halogens are F” which limits X, Y, and Z in the formula of claim 1 to be independently selected from F or hydrogen with the proviso that at least one of X, Y, or Z is F. As the patented claims require “the proviso that at least one of X, Y, or Z is Cl or Br”, they are not limited to X, Y, or Z being F or hydrogen as instantly claimed.
Response to Arguments
Applicant's arguments filed 02/24/2026 have been fully considered but they are not persuasive to obviate the new double patenting rejection of record.
Applicant pre-emptively argues against a double patenting rejection over the claims of US 12,325,819 on pages 8-9 of the present response. Applicant argues they have demonstrated that not all of the patent’s compounds possess the required properties to successfully exchange heat, particularly remove excess heat generating by the functioning of electrical or electronic equipment as claimed. Applicant further argues they have rather claimed a specific selection of suitable chemical compounds that are suitable for the claimed heat transfer fluid whose combined properties of heat transfer capability, non-flammability, low GWP and very low dielectric constant would not have been expected from the prior art.
In response, these arguments are not persuasive because, despite some differences, the patented claims overlap in scope with those instantly claimed. The claims of the patent have been copied above (see the ODP rejection, above). The instantly claimed method steps and apparatus structure and claimed method steps and apparatus structure are broadly equivalent. The GWPs overlap, too. The vinyl portions of the claimed compound and patented formula overlap in structure (instant claim requires a -CX=CYZ where X, Y, and Z are halogens [i.e., F, Cl, Br, I] where at least one of X, Y, or Z is a halogen whereas the patent requires a -CX=CYZ as well where X, Y, and Z are, slightly more narrowly, F, Cl, Br, or hydrogen where at least one of Y, Y, or Z is Cl or Br).
The main difference between the patented claims and in the instant claims is the instantly claimed compound expressly contains a Rf-O-CF2-O- (diether) moiety bound to the vinyl group in the formula whereas the patented compound contains a more simpler Rf-O- (ether) moiety bound to vinyl group in the formula. However, the patented claims recite Rf is any C1-C10 fluorinated linear or branched carbon chain that can comprise O atoms, which broadly encompasses additional ether functional groups within the claimed Rf group that encompasses, reads on, and meets the instantly claimed Rf-O-CF2-O- moiety bound to the vinyl group in the formula. While the instant claims also recite some intended use limitations pertaining removing excess heat, the structure between the two sets of claims ultimately overlap and the patented claim are nevertheless drawn to heat transfer fluids exchanging heat that are certainly capable of performing these intended use recitations/functions.
Regarding the concerns of the claimed heat transfer fluids possessing unexpected results, the examples in the present application’s specification are of little probative value in distinguishing over the patented claims by unexpected results. The specification has the following results comparing properties of two inventive compounds (Comp A and Comp B) versus a compound within the scope of the patented claims (DCTFME):
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While Applicant cites the claimed heat transfer fluid(s) have an unexpected combination of heat transfer capability, non-flammability, low GWP and very low dielectric constant, the obtained results of heat transfer capability, GWP and dielectric constant are nevertheless very similar and close to those obtained by the DCTFME comparative example.
The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992).
To establish the existence of unexpected results, Applicant must establish through the introduction of evidence both that (1) there is actually a difference between the results obtained through the claimed invention and those of closest prior art and (2) the observed difference would have been unexpected by a person having ordinary skill in the art. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973). In this case, Applicant has not provided evidence that, as of the application's effective filing date, a person having ordinary skill in the art would have considered the results presented in the data to have been unexpected or surprising. The arguments do not cite evidence regarding the unexpected nature of the observed differences.
Also, because superiority alone is not sufficient to show that the result is unexpected, Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[A]ny superior property must be unexpected to be considered as evidence of non-obviousness.”), Applicant has not provided evidence of the unexpected nature of the observed results.
Allowable Subject Matter
Claims 1-18 and 20 would be allowable if/when Applicant overcomes the non-statutory double patenting rejection of record.
Claim 19 is 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.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record fail to teach or suggest a method for exchanging heat or apparatus thereof comprising a heat transfer fluid comprising the claimed fluorinated vinyl ether compound of formula (I) containing, at least, a diether -O-CF2-O- moiety bound to the vinyl group and at least one halogen bound to the vinyl group.
Navarrini (US 6,963,013 B2) teaches preparing low viscosity (per)fluoroelastomers from polymerizing, inter alia, at least one (per)fluoromethoxyalkylvinyl ether of the formula CFX’=CX”OCF2ORf wherein X’ and X” are independently H or F and Rf is selected from the group consisting of C1-C6 linear or branched (per)fluoroalkyls and C5-C6 cyclic (per)fluoroalkyls (abstract). Examples synthesize monomers such as CF3OCF2CF2OCF2OCF=CF2 and CF3OCF(CF3)OCF2OCF=CF2 and then (co)polymerize them (see, generally, col. 14 to 19). While Navarrini broadly teaches a method of using their (per)fluoromethoxyalkylvinyl ether(s), Navarrini fails to teach or suggest contacting their (per)fluoromethoxyalkylvinyl ether with electronic computing equipment, a battery, or semiconductor devices nor an electronic computing equipment or battery apparatus comprising their (per)fluoromethoxyalkylvinyl ether.
Colaianna et al. (US 2015/00610104 A1) teaches preparing a cable for use in downhole wells comprising a fluoropolymer protective layer made of a tetrafluoroethylene copolymer comprising 0.8-2.5 wt.% of recurring units derived from at least one perfluorinated alkyl vinyl ether of the formula CF2=CF-O-Rf where Rf is a linear or branched C3-C5 perfluorinated alkyl group or a linear or branched C3-C12 perfluorinated alkyl group comprising one or more ether oxygen atoms (abstract, para. 0002 & 0016-0017). The fluoropolymer is coated on the cable by first polymerizing the vinyl monomers and then by extruding the fluoropolymer onto the cables (e.g., para. 0132-0140). While Colaianna et al. broadly teach a method of using their perfluorinated alkyl vinyl ether(s), Colaianna et al. fail to teach or suggest contacting their perfluorinated alkyl vinyl ether with electronic computing equipment, a battery, or semiconductor devices nor an electronic computing equipment or battery apparatus comprising their perfluorinated alkyl vinyl ether.
The remaining references listed on Forms 892, 1449, and PCT 210 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or discussed above.
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.
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./
March 12, 2026