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 .
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 10, 2026 has been entered.
Claim Rejections - 35 USC § 103
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.
Claim(s) 5 and 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishiguchi et al. (English machine translation of JP 2014005419 A) in view of Kurachi et al. (English machine translation of JP H06333764 A).
Nishiguchi et al. teaches a heat pipe comprising a sealed pipe (hermetic container) connected to an evaporation section and a condensation section, wherein a working medium (refrigerant) is sealed/enclosed in the heat pipe ([0016]-[0017]). Nishiguchi et al. teaches the working medium is 1,1,2,3,3,3-hexafluoropropyl methyl ether ([0029]-[0030], [0075]-[0076], and [0101]). As Nishiguchi et al. does not require any other fluorine-based insulation refrigerant to be present, Nishiguchi et al. is deemed to read on the transitional phrase “consisting of.”
Nishiguchi et al. does not teach the heat pipe made of copper of comprising a wick. However, Kurachi et al. teaches that heat pipes are well known to be made of copper and comprise a wick ([0015]). Nishiguchi et al. and Kurachi et al. are analogous art because they are concerned with the same field of endeavor, namely heat pipes. At the time of the invention a person of ordinary skill in the art would have found it obvious to include the copper and the wick of Kurachi et al. in the heat pipe of Nishiguchi et al. and would have been motivated to do so with a reasonable expectation of success because Kurachi et al. teaches that the copper provides excellent heat conductivity and the wick helps to transport working fluid from one end of the pipe to the other by capillary action ([0015]).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) render obvious all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. the working fluid heat resistance, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products 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 renders obvious the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Response to Arguments
Applicant's arguments filed June 10, 2026 have been fully considered but they are not persuasive.
Applicant’s arguments regarding the newly added limitations in the amendment filed June 10, 2026 have been sufficiently addressed in the new grounds of rejection as set forth above.
Applicant argues that Nishiguchi et al. does not disclose or suggest the excellent properties identified by the specification could be achieved by using HFE-356 mec. However, the data presented in the specification does not compare the claimed invention to that of the closet prior art, Nishiguchi et al. (MPEP 716.02(e)). It is noted that Nishiguchi et al. already discloses a heat pipe comprising 1,1,2,3,3,3-hexafluoropropyl methyl ether as set forth above. Therefore, it is not clear what difference between the claimed subject matter and the closest prior art is responsible for the properties cited by Applicant.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER F GODENSCHWAGER whose telephone number is (571)270-3302. The examiner can normally be reached 8:30-5:00, M-F EST.
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.
/PETER F GODENSCHWAGER/Primary Examiner, Art Unit 1767 July 21, 2026
Prosecution Insights