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 .
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 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Imai (EP 0261546 A2).
Regarding claims 1 and 6, Imai teaches transparent electrical discharge machining fluids (instant coolant; see MPEP 2111.02) comprising 95-60 wt% of a mineral oil and/or a synthetic oil, 5-40 wt% of water (instant claim 6), and 5-40 wt% of a surface active agent (abstract). Imai teaches the surface active agents is preferably a combination of nonionic and anionic surface active agents (pg3 ln 54-58), and teaches preferred nonionic surface active agents include polyoxyethylene sorbitan esters, polyoxyethylene fatty acid esters, sorbitan esters, and sucrose esters (pg3 ln 41-48), where polyoxyethylene sorbitan monooleate is a preferred nonionic surface active agent (instant surfactant that is nonionic, is a fatty acid ester, has a freezing point lower than -15 ºC, and has a cyclic structure).
Imai further teaches the composition has its reduced electrical resistance imparted to it by the surface active agent (pg4, ln 22-25) and demonstrates (see examples) specific electrical resistance values of ≥ 20 kΩ·cm (= 0.02 µS/cm).
Regarding claim 2, Imai teaches the compositions as set forth in claim 1 above, and as noted teaches polyoxyethylene sorbitan monooleate is a preferred nonionic surface active agent (instant fatty acid ester is sorbitan monooleate, instant alkyl group is linear or branched), and also as noted teaches other sorbitan esters and sucrose esters may be selected (pg3, ln 41-48).
Regarding claim 3, Imai teaches the composition as set forth in claim 1 above and, as noted, teaches that the electrical resistance of the composition is a direct result of the surface active agent (pg4, ln 22-25) and Imai teaches surface active agents that are fatty acid esters of sorbitan and/or sucrose (pg3, ln 41-48).
Imai teaches the claimed composition, comprising the claimed components present in the claimed amounts, and teaches a substantially similar method. The instant original specification ([0017]-[0018]; examples) demonstrates that a composition comprising the claimed components will have the claimed conductivity. It is noted that 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 4, Imai teaches the composition as set forth in claim 1 above and further teaches the optional inclusion of antioxidants and rust proofing agents (pg4 ln 11-13).
Regarding claim 5, Imai teaches the composition as set forth in claim 1 above and further teaches the kinematic viscosity of the composition at 40 ºC is 20 cSt or less (abstract; pg4 ln 3-4; see also pg3 ln 1-23; pg2 ln 45-47 18cSt or less at 40 ºC; examples)(= 20 mm2/s or less).
Claims 1 and 3-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kitamura (JP 2008105172 A; using Clarivate Analytics machine translation for English language citations).
Regarding claims 1 and 6, Kitamura teaches transparent flame retardant electric discharge machining liquids (instant coolant; see MPEP 2111.02) having low electrical conductivity and superior workability, comprising a mineral oil or synthetic oil as base oil and having a kinematic viscosity of 1-5 mm2/s at 40 ºC, and A) an ionic surface active agent, B) a nonionic surface active agent having an HLB of 8.5 or more, C) a nonionic surface active agent having an HLB of less than 8.5, and D) water (abstract, pg1; pg2)(instant claim 6). Kitamura further teaches the nonionic surface active agent B) includes POE fatty acid esters of sorbitan, including of sorbitan monoisostearate (pg4,top), and also teaches the nonionic surface active agent C) includes POE fatty acid esters including of sorbitan, including polyoxyethylene (n=40) sorbitan tetraoleate (pg5)(instant surfactant that is nonionic, is a fatty acid ester, has a freezing point lower than -15 ºC, and has a cyclic structure).
Kitamura further teaches the electrical conductivity of the composition at 20 ºC is 100 nS/cm (=0.1 µS/cm) or less (pg2, bottom(2); pg5).
Regarding claim 3, Kitamura teaches the composition of claim 1 above and, as noted teaches an electrical conductivity of 100 nS/cm (=0.1 µS/cm) or less (pg2, bottom(2); pg5) at 20 ºC. Kitamura teaches less than 0.1 µS/cm which substantially overlaps with a recitation of lower than 0.0009 µS/cm, absent evidence to the contrary. Alternatively, or in addition, it is noted that a chemical composition and its properties are inseparable. Kitamura teaches the claimed composition, comprising the claimed components, present in the claimed amounts, and a substantially similar process. The instant specification ([0017]-[0018]) states that a composition comprising the claimed components will have the claimed conductivity. 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 4, Kitamura teaches the composition of claim 1 above and further teaches the optional inclusion of E) a metal deactivator (pg2, bottom(2); pg5), a rust inhibitor, an antifoaming agent, and/or an antioxidant (pg5).
Regarding claim 5, Kitamura teaches the composition of claim 1 above and further teaches the kinematic viscosity of the composition at 40 ºC is 1-15 mm2/s, preferably 3-10 mm2/s (pg5).
Claims 1-2, 4 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Marinho et al. (US PGPub 2012/0270129).
Regarding claim 1, Marinho teaches heat transfer fluids comprising a liquid coolant, a siloxane corrosion inhibitor, and an antifoam agent (abstract). Marinho teaches the compositions suitable for use in fuel cells and electrical systems ([0003]; [0012]; [0098]-[0100]) (instant coolant; see MPEP 2111.02). Marinho further teaches the electrical conductivity of the heat transfer fluid is less than about 25 µS/cm ([0060]), preferably from about 0.05 to about 5 µS/cm ([0061]).
Marinho teaches the siloxane corrosion inhibitor is selected from commercially available polysiloxanes ([0020]) and /or organosilanes ([0022]). Marinho teaches the antifoam agent is a polydiorganosiloxane component that includes up to 20 wt% of hydrophobic oil, specifically mineral oil ([0032])(instant mineral oil).
Marinho further teaches the inclusion of nonionic corrosion inhibitor surfactants, selected from fatty acid esters, specifically sorbitan fatty acid esters including sorbitan monooleate esters, sorbitan monosesquioleate esters, etc. ([0039]) (instant surfactant that is nonionic, is a fatty acid ester, has a freezing point lower than -15 ºC, and has a cyclic structure).
Regarding claim 2, Marinho teaches the heat transfer fluid set forth in claim 1 above, and as noted teaches the nonionic corrosion inhibitors are fatty acid esters of sorbitan including sorbitan monooleate and sorbitan monosesquioleate (instant alkyl group is linear or branched).
Regarding claim 4, Marinho teaches the heat transfer fluid set forth in claim 1 above and further teaches the as noted siloxane corrosion inhibitor, and also teaches the optional inclusion of azoles ([0036]) as well as further additives including antifoam agents, dispersants, etc. ([0059]).
Regarding claim 6, Marinho teaches the heat transfer fluid as set forth in claim 1 above and further teaches the liquid coolant component can be selected from alcohol and/or water ([0014]) and teaches water may be present in various amounts ([0015]).
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