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 08/03/2026.
Claims 1-20 are currently pending, of which claims 15-20 are withdrawn.
Response to Amendment
The rejection of claim 4 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the above amendment.
The 102 rejection over Milbrath et al. (US 6,294,508 B1) as set forth in the previous Non-Final Office action is maintained and has been revised to reflect the slight change in scope to claim 4 made by Applicant’s present claim amendment. See below.
The 103 rejection over Prentice et al. (WO 2020/007954 A1) as set forth in the previous Non-Final Office action is maintained and is reiterated below.
The 103 rejection Prentice et al. (WO 2020/007954 A1) in view of Ramo et al. (WO 2021/013860 A1) as set forth in the previous Non-Final Office action is maintained and has been revised to reflect the slight change in scope to claim 4 made by Applicant’s present claim amendment. See below.
The 103 rejection over Prentice et al. (WO 2020/007954 A1) or Prentice et al. (WO 2020/007954 A1) in view of Ramo et al. (WO 2021/013860 A1) and further in view of Christensen et al. (US 10,712,105 B1) as set forth in the previous Non-Final Office action is maintained and is reiterated below.
The 102 rejection over Abbas et al. (WO 2022/084600 A1, utilizing US 2023/0369680 A1) as set forth in the previous Non-Final Office action is maintained and is reiterated below.
The 103 rejection over Abbas et al. (WO 2022/084600 A1, utilizing US 2023/0369680 A1) as set forth in the previous Non-Final Office action is maintained and has been revised to reflect the slight change in scope to claim 4 made by Applicant’s present claim amendment. See below.
The 103 rejection over Abbas et al. (WO 2022/084600 A1, utilizing US 2023/0369680 A1) further in view of Christensen et al. (US 10,712,105 B1) as set forth in the previous Non-Final Office action is maintained and is reiterated below.
The nonstatutory double patenting rejection over the claims of copending Application No. 18/857,219 as set forth in the previous Non-Final Office action is maintained and is reiterated below.
Claim Rejections - 35 USC § 102 & 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-5 and 10-14 are rejected under 35 U.S.C. 102(a)(1,2) as being anticipated by Milbrath et al. (US 6,294,508 B1).
As to claim 1, Milbrath et al. teach a fluid comprising a hydrofluoroether and a lubricous additive (abstract). The hydrofluoroether reads on the claimed halogenated hydrocarbon oil. See also the embodiments for the composition of the hydrofluoroether among col. 3 to 6. The lubricous additives may contain saturated and unsaturated aliphatic hydrocarbons (col. 6 line 46+), which generally reads on the claimed hydrocarbon oil. An exemplary fluid comprises 2 percent “Isopar G in HFE-7100” as the coolant/lubricant fluid (col. 4 lines 17-18). This exemplary fluid anticipates the claimed heat transfer fluid comprising a mixture of hydrocarbon oil and halogenated hydrocarbon oil because Isopar G is a mixture of synthetic isoparaffinic hydrocarbons (col. 30 lines 45-46) and HFE-7100 is C4F9OCH3 and a halogenated hydrocarbon oil (Id. & col. 8 line 30).
As to claim 2, a mixture of only synthetic isoparaffinic hydrocarbons and C4F9OCH3 (Id.) is substantially free or free of cyclic structures.
As to claims 3-5, in addition to being a mixture of synthetic isoparaffinic hydrocarbons, Isopar G is well known in the art to specifically be primarily a mixture of C10-C11 isoparaffins, which reads on the claimed limitations that the saturated hydrocarbon oil comprises isoparaffinic oil containing at least one saturated hydrocarbon having 8 to 50 carbon atoms (i.e., 10 and/or 11 carbon atoms), a saturated hydrocarbon having 10 to 50 carbon atoms where the longest continuous carbon chain in the compound has no more than 24 carbon atoms (C10 and C11 isoparaffins are branched compounds having 10 to 50 carbon atoms, e.g., 10 or 11 carbon atoms, where the longest continuous carbon chain in the compound has no more than 24 carbon atoms), and a branched acyclic compound with a molecular weight of 140 g/mol to 550 g/mol (C10 and C11 isoparaffins are branched acyclic compounds with molecular weights of about 142 g/mol to 156 g/mol).
As to claim 11, the mixture having the claimed flash point of at least 50°C is presumed inherent from the example in the reference. Isopar G is known in the art to have a flash point of 41°C, HFE-7100 is known to be a nonflammable liquid with no flash point, i.e., an infinite flash point meaning no matter how high the temperature it never flashes. Accordingly, a mixture of 98% HFE-7100 and 2% Isopar G would be expected to inherently have a very high flash point in excess of the at least 50°C minimum flash point as claimed absent a showing to the contrary.
Similarly regarding claims 10, 12, and 13, the kinematic viscosity, pour point, and dielectric constant limitations are presumed inherent from the disclosed mixture of 98% HFE-7100 (halogenated hydrocarbon oil) and 2% Isopar G (hydrocarbon oil) absent a showing to the contrary.
As to claim 14, the HFE-7100 component broadly reads on the claimed heat transfer additive by double inclusion.
Claims 1, 2, and 6-14 are rejected under 35 U.S.C. 103 as being unpatentable over Prentice et al. (WO 2020/007954 A1).
As to claim 1, Prentice et al. teach dielectric thermal management fluids comprising one or more dielectric fluids and one or more halocarbons (abstract). The dielectric fluids are present in an amount of 65-99.9 wt.% and the halocarbons are present in an amount of 0.1-35 wt.% (para. 0006). The dielectric fluid is an oil, e.g., a mineral oil, synthetic oil, or silicone oil (para. 0033). The halocarbon is an organic compound including one or more halogen and may be partially halogenated (with C-halogen bonds and C-H bonds) or fully halogenated (with C-halogen bonds and no C-H bonds) (para. 0037), which reads on the claimed halogenated hydrocarbon oil.
While close, the teachings of Prentice et al. fail to meet the claimed mixture of a hydrocarbon oil and halogenated hydrocarbon oil under the meaning of anticipation (while Prentice et al.’s halocarbon surely meets the claimed halogenated hydrocarbon oil without selection or modification, Prentice et al.’s dielectric fluid does not necessarily contain a hydrocarbon oil since it may contain a silicone oil).
However, at the time of the effective filing date it would have been very obvious to a person of ordinary skill in the art to select/provide a hydrocarbon oil from the teachings of Prentice et al. as their dielectric fluid and arrive at the claimed composition comprising a hydrocarbon oil and halogenated hydrocarbon oil with a reasonable expectation of success. As described above, Prentice et al. requires a halogenated hydrocarbon oil by their halocarbon component and the dielectric fluid is selected from a short list of genera/species. Para. 0031 of Prentice et al. teach the dielectric fluids may be selected from aliphatic dielectric fluids (e.g., C14-C50 alkyls, C14-C50 alkenyls, C14-C50 alkynyls, polyolefins such as poly-a-olefin), aliphatic dielectric fluid oxygenates (e.g., ketones, ethers, esters, or amides), aromatic dielectric fluids (e.g., dialkylbenzene such as diethylbenzene, cyclohexylbenzene, 1-alkylnaphthalene, 2- alkylnaphthalene, dibenzyltoluene, and alkylated biphenyl), aromatic dielectric fluid oxygenates (e.g., ketones, ethers, esters, or amides), silicones (e.g., silicone oil and silicate ester). Provision of any of the aliphatic dielectric fluids or aromatic dielectric fluids genera or species, especially the aliphatic dielectric fluid(s), arrives at the claimed limitations.
As to claim 2, the cited teachings of the reference meets the claimed limitations that the hydrocarbon oil is substantially free or is free of cyclic structures. Providing/selecting the aliphatic dielectric fluid(s) as the dielectric fluid of the reference means the dielectric fluid is substantially free or is free of cyclic structures.
As to claims 6 and 7, the disclosed concentration of 0.1-35 wt.% halocarbon (Id.) falls within the concentration of claim 6 and overlaps the concentration of claim 7. See also the narrower concentrations thereof in para. 0048 which further fall within and/or overlap those claimed.
As to claim 8, the claimed limitation that at least 10 wt.% of the halogenated hydrocarbon oil boiling or vaporizing at a temperature below the flashpoint of the hydrocarbon oil would flow naturally from the composition of the reference because Prentice et al. teach their composition is designed such that the halocarbon (halogenated hydrocarbon oil component) has a boiling point in the range of 30-150°C and the composition’s flash point is above the boiling point of the halocarbon(s) (para. 0006). As there are as little as two components in the composition (the dielectric fluid and halocarbon), this means that the hydrocarbon oil (e.g., aliphatic dielectric fluid) has a flash point higher than the boiling point of the halogenated hydrocarbon oil (e.g., halocarbon).
As to claim 9, the halogenated hydrocarbon oil may be partially fluorinated/halogenated or fully fluorinated/halogenated (Id.). Prentice et al. further teach some suitable commercially available halocarbons include those sold under the trade name NOVEC™, e.g., Novec (aka HFE-) 7000, 71 DA, 71 DE, 72DA, 72DE, 72FL, 73DE, 649, 711 PA, 7100, 7100DL, 774, 7200, 8200, 7300, 7300DL, 7500, and 7700 (para. 0046) which meet the claimed fluorinated hydrocarbon or perfluorinated hydrocarbon structures of the halogenated hydrocarbon oil. Other suitable halocarbons include perfluoropentane, perfluorohexane, perfluoroheptane, and ethyl nonafluorobutyl ether (para. 0044), which meet the claimed fluorinated hydrocarbon or perfluorinated hydrocarbon structures of the halogenated hydrocarbon oil.
As to claim 10, Prentice et al. teach the compositions have a kinematic viscosity at 40°C of 1.5 to 60 cSt (para. 0053 & 105). While the reference’s viscosity is measured at 40°C whereas the claimed viscosity is measured at 100°C, a person of ordinary skill in the art would understand and expect the reference’s kinematic viscosity to overlap, encompass, or even fall within the claimed viscosity because viscosity is well known and understood to have an inverse relation with temperature for liquids (as temperature increases, viscosity decreases) and Prentice et al.’s composition is ultimately made of substantially the same components as that claimed (a hydrocarbon component, such as an aliphatic hydrocarbon component, and a halogenated component, such as a fluorinated component, Id.).
As to claim 11, Prentice et al. teach the composition has a flash point of at least 90°C (para. 0052 & 0105).
As to claim 12, while Prentice et al. fail to articulate the pour point of the composition, the claimed pour point would nevertheless flow naturally from the cited teachings of the reference as Prentice et al.’s composition is ultimately made of substantially the same components as that claimed (a hydrocarbon component, such as an aliphatic hydrocarbon component, and a halogenated component, such as a fluorinated component, Id.). Additionally, Prentice et al. teach the further addition of pour point depressant into their composition (para. 0050), which invites the inclusion of components to reduce the pour point of their composition encompassing the low pour point as claimed.
As to claim 13, Prentice et al. teach the composition has a dielectric constant overlapping and/or within that claimed (at least 1.5 and subsets thereof such as 1.5 to 10, or 1.8 to 10, or 1.5 to 2.8, or 1.8 to 2.8, para. 0056).
As to claim 14, the disclosed halocarbon component reads on the claimed heat transfer additive by double inclusion. Note Prentice et al. teach the halocarbon provides a desired cooling behavior (para. 0036).
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Prentice et al. (WO 2020/007954 A1) in view of Ramo et al. (WO 2021/013860 A1).
The disclosure of Prentice et al. is relied upon as set forth above.
Note that Prentice et al. meets all the claims alone except for claims 3-5. Prentice et al. teach thermal management fluids comprising an aliphatic dielectric fluid (e.g., C14-C50 alkyls per para. 0031) and a halogenated hydrocarbon (Novec/HFE fluids per para. 0046) and various properties thereof but fail to teach the aliphatic dielectric fluid/hydrocarbon oil comprises isoparaffinic/isoparaffins as claimed.
However, Ramo et al. teach a paraffinic electrotechnical fluid composition (abstract) useful as an insulating oil, i.e., a dielectric fluid, (p.13 lines 28-29). The composition predominantly comprises C17-C18 paraffins with more than 90 wt.% of the composition be isoparaffins and more than 90 wt.% of C17-C18 paraffins (abstract, p.11 lines 1-4, and p.12 lines 1-11). There are at least 40 times more C18 isoparaffins to C18 n-paraffins and at least 20 times more C17 isoparaffins to C17 n-paraffins (Id.). The total isoparaffinic content is 90-98 wt.% (p.12 lines 20-23). Other paraffins may exist (e.g., C16 i-paraffins, C19 i-paraffins, C16 n-paraffins, C19 n-paraffins, C15 and lighter paraffins, and C20 and heaver paraffins) but they are present in very low impurity-type amounts (p.11 & 12; see also Table 2). An example has 97.19 wt.% of all paraffins being in the C16-C20 range and over 95 wt.% of the composition being C10-C36 isoparaffins (Table 2). Another example has 100% of the paraffins in the C14-C22 range 96.75 wt.% of the composition is C14-C22 isoparaffins (Table 4). The examples also have low kinematic viscosities of 1 mm2/s at 100°C (Tables 1 & 3). Such compositions obtain good performance such as a pour point below -50°C, a flash point above 135°C, improved cold performance, and a reduced viscosity or enhanced fluidity over a broad temperature range (p.11-12). The reference is silent to naphthenic components, meaning it is free of cyclic structures; alternatively, one embodiment may have 0.01-1 wt.% aromatics (p.12 lines 12-14), which is still substantially free of cyclic structures.
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide Ramo et al.’s paraffinic electrotechnical fluid composition predominantly containing C17-C18 isoparaffins as the aliphatic dielectric fluid of Prentice et al. in order to obtain an insulating, dielectric thermal management fluid having improved pour point performance, flash point performance, cold performance, and/or viscosity or fluidity performance with a reasonable expectation of success.
Ramo et al.’s C17 and C18 isoparaffins read on the claimed limitations that the saturated hydrocarbon oil comprises isoparaffinic oil containing at least one saturated hydrocarbon having 8 to 50 carbon atoms (i.e., 17 and/or 18 carbon atoms), a saturated hydrocarbon having 10 to 50 carbon atoms where the longest continuous carbon chain in the compound has no more than 24 carbon atoms (C17 and C18 isoparaffins are branched compounds having 10 to 50 carbon atoms where the longest continuous carbon chain in the compound has no more than 24 carbon atoms), and a branched acyclic compound with a molecular weight of 140 g/mol to 550 g/mol (C17 and C18 isoparaffins are branched acyclic compounds with molecular weights of about 240 g/mol to 255 g/mol).
While Ramo et al. is primarily combined with Prentice et al. to meet the limitations of claims 3-5 that are missing from Prentice et al., please note the combination of references nevertheless reads on claims 1, 2 and 6-14 as well when utilizing Ramo et al.’s C17-C18 isoparaffinic fluid as Prentice et al.’s aliphatic dielectric fluid. The rationale is mostly the same except that Ramo et al.’s C17-C18 isoparaffinic fluid (instead of Prentice et al.’s broad aliphatic dielectric fluid) reads on the hydrocarbon oil. Ramo et al.’s C17-C18 isoparaffinic fluid is also substantially free of or free of cyclic structures (Id.). The rationale to Prentice et al.’s halocarbon meeting the claimed halogenated hydrocarbon oil is the same (e.g., identity and concentration, Id.). Additionally the claimed properties among claims 10-13 and relative vaporization/evaporation of the halogenated hydrocarbon oil relative to the hydrocarbon oil’s flash point would be expected to flow naturally from the teachings of the references (note the properties/teachings of both Prentice et al. and Ramo et al. cited above).
Claim 14 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Prentice et al. (WO 2020/007954 A1) as applied to claims 1, 2, and 6-14 above or Prentice et al. (WO 2020/007954 A1) in view of Ramo et al. (WO 2021/013860 A1) as applied to claims 1-14 above, and further in view of Christensen et al. (US 10,712,105 B1).
The disclosures of Prentice et al. and Prentice et al. in view of Ramo et al. are relied upon as set forth above. The rationale of record rejects claim 14’s heat transfer additive as being met by Prentice et al.’s disclosed halocarbon component by double inclusion. Note Prentice et al. teach the halocarbon provides a desired cooling behavior (para. 0036). It is also noted Prentice et al. teach the compositions may further comprise conventional additives (para. 0050).
In the event that claim 14 is intended or amended to require a discrete heat transfer additive, Christensen et al. similarly teach heat transfer fluid comprising a non-aqueous dielectric heat transfer fluid (abstract). The base fluid for the heat transfer fluids may comprise isoparaffins (col. 21 lines 54-57). Christensen et al. further teach the composition may comprise commonly used heat transfer fluid performance additives such as antioxidants, corrosion inhibitors, antifoam agents, nanomaterials, and nanoparticles (col. 22 line 5+). These all read on a heat transfer additive but especially the nanomaterials and nanoparticles additives as Christensen et al. teach the nanomaterials and nanoparticles advantageously alter the heat transfer properties of the composition (col. 48 line 48+). Suitable nanomaterials and nanoparticles are detailed in col. 49.
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide nanomaterials and/or nanoparticles as taught by Christensen et al. as an additive in the composition of Prentice et al. or the composition of Prentice et al. in view of Ramo et al. in order to advantageously alter the heat transfer properties of the composition with a reasonable expectation of success.
Claims 1, 2, and 14 are rejected under 35 U.S.C. 102(a)(1,2) as being anticipated by Abbas et al. (WO 2022/084600 A1, utilizing US 2023/0369680 A1 as an English language equivalent).
As to claim 1, Abbas et al. teach a heat transfer composition comprising 0-40 wt.% (exclusive of 0) of a refrigerant compound selected from halogenated hydrocarbons, perhalogenated compounds, fluorinated ketones, and fluorinated ethers and 60-100 wt.% (exclusive of 100) of a dielectric fluid (abstract). The refrigerant compound genera/species read on the claimed halogenated hydrocarbon oil. The dielectric fluid is chosen from mineral dielectric oils, synthetic dielectric oils, and vegetable dielectric oils (para. 0021). The dielectric fluid preferably comprises a mineral dielectric oil (para. 0142), and the mineral dielectric oil can be preferably paraffinic oils defined as saturated linear or branched hydrocarbons (para. 0143). Another preferred dielectric fluid is a poly(α-)olefin comprising predominantly defined as more than 50% by weight isoparaffins comprising from 4 to 32 carbon atoms (para. 0158). The two express embodiments of the preferred paraffinic oils and isoparaffin-containing poly(α-)olefin combined with the refrigerant always containing a halogenated hydrocarbon oil (Id.) meet and anticipate the claimed limitations of a heat transfer fluid comprising a mixture of hydrocarbon oil and halogenated hydrocarbon oil, as claimed; a person of ordinary skill in the art would at once envisage such a combination because the two paraffinic oils and isoparaffin-containing poly(α-)olefin are preferred as the dielectric fluid component and the refrigerant compound always contains a compound reading on the claimed halogenated hydrocarbon oil.
As to claim 2, the mixtures of 1) only saturated linear or branched hydrocarbons and the halogenated refrigerant and 2) only isoparaffin-containing poly(α-)olefin and the halogenated refrigerant as envisaged by the preferred teachings of the reference is substantially free or free of cyclic structures.
As to claim 14, the refrigerant component broadly reads on the claimed heat transfer additive by double inclusion.
Claims 3-13 are rejected under 35 U.S.C. 103 as being unpatentable over Abbas et al. (WO 2022/084600 A1, utilizing US 2023/0369680 A1 as an English language equivalent).
The disclosure of Abbas et al. is relied upon as set forth above.
As to claims 3-5, while not anticipatory, the teachings of Abbas et al.’s isoparaffinic dielectric fluids overlaps and encompasses the claimed limitations. Abbas et al. teach their preferred poly(α-)olefin dielectric fluid comprises predominantly isoparaffins (saturated branched hydrocarbons) comprising from 4 to 32 carbon atoms (Id.), which overlaps the limitations of a saturated hydrocarbon compound having 8 to 50 carbon atoms, a saturated hydrocarbon having 10 to 50 carbon atoms where the longest continuous carbon chain in the compound has no more than 24 carbon atoms, and a branched acyclic compound with a molecular weight of 140 g/mol to 550 g/mol (a C4 isoparaffin, the minimum of the reference, has a molecular weight of about 58 g/mol, and a C32 isoparaffin, the maximum of the reference, has a molecular weight of about 451 g/mol).
As to claims 6 and 7, while not anticipatory, the teaching of Abbas et al.’s refrigerant concentration strongly overlaps the claimed limitations. Abbas et al. teach the composition comprises 0-40 wt.% (exclusive of 0) of a refrigerant compound (Id.), which strongly overlaps the claimed 0.01-50 wt.% and 0.1-25 wt.% concentrations. See also the preferred subsets of this broad range in para. 0164-0165 which also meet the claims.
As to claim 8, the claimed limitation that at least 10 wt.% of the halogenated hydrocarbon oil boiling or vaporizing at a temperature below the flashpoint of the hydrocarbon oil would flow naturally from the teachings of the reference. Abbas et al. teach the selection and variety of different genera/species of dielectric fluids (i.e., isoparaffin chain lengths, Id.) and refrigerants (hydrofluorocarbons and species, hydrofluoroolefins and species, and hydrofluoroethers and species, e.g., para. 0053-0125), that the refrigerant has a boiling point of less than 50°C and lower maximums thereof (para. 0034), and the total composition has a high flash point of greater than 150°C (para. 0188). This results in substantially the same composition with the same components as that claimed with the feature of a low refrigerant (halogenated hydrocarbon) with a low boiling/evaporation point and a isoparaffinic fluid having a flash point (that a person of ordinary skill in the art would understand depends on the chain length of its contents).
As to claim 9, Abbas et al. teach the halogenated hydrocarbon oil (refrigerant) comprises a fluorinated hydrocarbon (para. 0053-0125).
As to claim 11, Abbas et al. teach the composition has a high flash point of greater than 150°C (para. 0188).
As to claims 10, 12, and 13, while Abbas et al. fail to articulate the kinematic viscosity, pour point, or dielectric constant of the composition, these claimed properties would nevertheless flow naturally from the cited teachings of the reference as, similar to as explained regarding claim 8, Abbas et al.’s composition is ultimately made of substantially the same components as that claimed (an isoparaffinic dielectric fluid and a halogenated, preferably fluorinated, refrigerant, Id.). Additionally, Prentice et al. teach the further addition of pour point depressant into their composition (para. 0170+), which invites the inclusion of components to reduce the pour point of their composition encompassing the low pour point as claimed. See also the breakdown voltages of the composition (para. 0184-0185) that indicate the composition has dielectric properties and that a dielectric constant would certainly flow naturally therefrom. See also the dynamic viscosity of 0.1-20 cP at 20°C (para. 0187) that indicate the composition is a viscous liquid (liquid with a viscosity) and that a kinematic viscosity measured at 100°C would flow naturally therefrom.
Claim 14 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Abbas et al. (WO 2022/084600 A1, utilizing US 2023/0369680 A1 as an English language equivalent) as applied to claims 1-14 above, and further in view of Christensen et al. (US 10,712,105 B1).
The disclosure of Abbas et al. is relied upon as set forth above. The rationale of record rejects claim 14’s heat transfer additive as being met by Abbas et al.’s (fluorinated/halogenated) refrigerant component by double inclusion. Also note Abbas et al. teach the heat transfer composition may further comprise additives (para. 0170).
In the event that claim 14 is intended or amended to require a discrete heat transfer additive, Christensen et al. similarly teach heat transfer fluid comprising a non-aqueous dielectric heat transfer fluid (abstract). The base fluid for the heat transfer fluids may comprise isoparaffins (col. 21 lines 54-57). Christensen et al. further teach the composition may comprise commonly used heat transfer fluid performance additives such as antioxidants, corrosion inhibitors, antifoam agents, nanomaterials, and nanoparticles (col. 22 line 5+). These all read on a heat transfer additive but especially the nanomaterials and nanoparticles additives as Christensen et al. teach the nanomaterials and nanoparticles advantageously alter the heat transfer properties of the composition (col. 48 line 48+). Suitable nanomaterials and nanoparticles are detailed in col. 49.
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide nanomaterials and/or nanoparticles as taught by Christensen et al. as an additive in the composition of Abbas et al. in order to advantageously alter the heat transfer properties of the composition with a reasonable expectation of success.
Double Patenting
Claims 1, 6-9, and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/857,219 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite heat transfer fluids comprising hydrocarbon oil, halogenated hydrocarbon oil including a fluorocarbon or fluorinated hydrocarbon, and a heat transfer additive (claims 1, 9, & 12). The reference application claims also recite the boiling point of the halogenated hydrocarbon is as much as 5% lower than the flash point of the hydrocarbon oil (claim 11) which means a portion of the halogenated hydrocarbon oils or vaporizes at a temperature below the flashpoint of the hydrocarbon oil as claimed. The reference application claims also recite the halogenated hydrocarbon is present at 0.1-25 wt.% of the composition (claim 13).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 08/03/2026 have been fully considered but they are not persuasive.
Regarding the 102 rejection over Milbrath et al. (US 6,294,508 B1) Applicant argues the reference does not teach a mixture of a hydrocarbon oil and a halogenated hydrocarbon oil. Applicant’s position is the Office’s construction of “halogenated hydrocarbon oil” to encompass HFE-7100 (methoxy-nonafluorobutane) is technically and chemically unreasonably because HFE-7100 is a highly volatile, low-boiling fluorinated solvent/refrigerant possessing a low molecular weight and ultra-low viscosity that completely lacks the physical, lubricating, and rheological properties that define an “oil” to a person having ordinary skill in the art. Applicant believes the Office has effectively read the “oil” term out of the claim.
In response, this argument is not persuasive because Applicant is focusing too much on terminology rather than the structure disclosed and defined. In response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., certain physical, lubricating, and rheological properties) are not recited in the rejected claims (nor in the specification). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The Office's interpretation of the pending claims have been given their broadest reasonable interpretation consistent with the specification. The main discussion of “halogenated hydrocarbon” compounds, oil or not, occurs at [0040]-[0051] of the specification. The original specification discusses and discloses many species of fluorinated hydrocarbon and/or a perfluorinated hydrocarbon (see the Halogenated Hydrocarbons section at [0040]-[0051], especially the specific genera/species of fluorinated hydrocarbons at [0044]-[0048]). The compound cited in Milbrath et al. as reading on the component, HFE-7100 (aka nonafluorobutyl methyl ether, methoxynonafluorobutane, and C4F9OCH3) is actually in the lists of halogenated hydrocarbons in the specification, specifically in the fluoroether fluids listed in [0047] as “C4F9OCH3”. In fact, the specification’s working examples employ HFE-7100 as an exemplary halogenated hydrocarbon in the inventive thermal fluid compositions, too. See HFC1 in Tables 2 & 3. Additionally note that instant claim 9 recites the halogenated hydrocarbon oil nevertheless comprises a “fluorinated hydrocarbon” and/or a “perfluorinated hydrocarbon” that, for purposes of establishing the broadest reasonably interpretation of the claims, point one of ordinary skill in the art back to the same Halogenated Hydrocarbons section at [0040]-[0051], especially the specific genera/species of fluorinated hydrocarbons at [0044]-[0048]. In view of the foregoing, the Office's holding Milbrath et al.’s HFE-7100 reads on the claimed halogenated hydrocarbon oil component is eminently fair and consistent with the broadest reasonable interpretation of the present invention's specification.
Arguendo, if the halogenated hydrocarbon genera/species thoroughly disclosed at [0040]-[0051] of the specification and recited in claim 9 of the claims do not read on the claimed halogenated hydrocarbon oil component, then the claims (and invention as a whole) are seriously unclear as to what compounds are encompassed by the claims.
Regarding the 103 rejections over Prentice et al. (WO 2020/007954 A1) alone or in combination with Ramo et al. (WO 2021/013860 A1) and Christensen et al. (US 10,712,105 B1) Applicant argues the references, notably the Prentice et al. primary reference, do not teach or suggest a halogenated hydrocarbon oil as instantly claimed. Like to the Milbrath et al. rejection, Applicant’s position is Prentice et al.’s halocarbons are volatile solvents and refrigerants (such as 3M NovecTM fluids) that do not possess the physical or chemical properties of an “oil”.
In response, this argument is not persuasive for substantially the same reasons as discussed regarding Milbrath et al., e.g., 1) Applicant is focusing too much on terminology rather than the structure disclosed and defined, 2) the features upon which Applicant relies (i.e., certain physical or chemical properties) are not recited in the rejected claims, and 3) the claims and the claimed components have been given their broadest reasonable interpretation in light of the specification and the cited compounds in Prentice et al. read on the claimed halogenated hydrocarbon oil component under said broadest reasonable interpretation.
As cited in the rejection of record, Prentice et al. further teach some suitable commercially available halocarbons include those sold under the trade name NOVEC™, e.g., Novec (aka HFE-) 7000, 71 DA, 71 DE, 72DA, 72DE, 72FL, 73DE, 649, 711 PA, 7100, 7100DL, 774, 7200, 8200, 7300, 7300DL, 7500, and 7700 (para. 0046) which meet the claimed fluorinated hydrocarbon or perfluorinated hydrocarbon structures of the halogenated hydrocarbon oil. Other suitable halocarbons in Prentice et al. include perfluoropentane, perfluorohexane, perfluoroheptane, and ethyl nonafluorobutyl ether (para. 0044), which meet the claimed fluorinated hydrocarbon or perfluorinated hydrocarbon structures of the halogenated hydrocarbon oil.
The following is a sample selection of some of the cited halocarbons in Prentice et al. explaining how they meet the claimed component (there are many species listed and additional rationale to other remaining species certainly exists):
Novec 7000 aka HFE-7000 is/comprises heptafluoropropyl methyl ether. The specification indicates Novec fluids as suitable fluorinated compounds [0048].
Novec 71 DA is a blend comprising nonafluorobutyl methyl ether, trans-1,2-dichloroethylene, and ethanol. Nonafluorobutyl methyl ether is in the lists of halogenated hydrocarbons in the specification, specifically in the fluoroether fluids listed in [0047] as “C4F9OCH3”, and is an exemplary halogenated hydrocarbon in the inventive thermal fluid compositions, too (Id.). The specification also indicates Novec fluids as suitable fluorinated compounds [0048].
Novec 71 DE is a blend comprising methyl nonafluorobutyl ether and trans-1,2-dichloroethylene. Again, nonafluorobutyl methyl ether is in the lists of halogenated hydrocarbons in the specification, specifically in the fluoroether fluids listed in [0047] as “C4F9OCH3”, and is an exemplary halogenated hydrocarbon in the inventive thermal fluid compositions, too (Id.). The specification also indicates Novec fluids as suitable fluorinated compounds [0048].
Novec-7100 aka HFE-7100 is/comprising nonafluorobutyl methyl ether. Nonafluorobutyl methyl ether is in the lists of halogenated hydrocarbons in the specification, specifically in the fluoroether fluids listed in [0047] as “C4F9OCH3”, and is an exemplary halogenated hydrocarbon in the inventive thermal fluid compositions, too (Id.). The specification also indicates Novec fluids as suitable fluorinated compounds [0048].
Novec-7200 aka HFE-7200 is/comprising nonafluorobutyl ethyl ether or ethoxy-nonafluorobutane (also mentioned as ethyl nonafluorobutyl ether in para. 0044 of Prentice et al.). Nonafluorobutyl ethyl ether is in the lists of halogenated hydrocarbons in the specification, specifically in the fluoroether fluids listed in [0047] as “C4F9OC2H5” and as “” , and is an exemplary halogenated hydrocarbon in the inventive thermal fluid compositions, too (HFC2 in Tables 2 & 3). The specification also indicates Novec fluids as suitable fluorinated compounds [0048].
Perfluoropentane, perfluorohexane, and perfluoroheptane are each perfluoroalkanes. The specification indicates perfluoroalkanes as suitable fluorinated hydrocarbon compounds [0042].
Arguendo, if the halogenated hydrocarbon genera/species thoroughly disclosed at [0040]-[0051] of the specification and recited in claim 9 of the claims do not read on the claimed halogenated hydrocarbon oil component, then the claims (and invention as a whole) are seriously unclear as to what compounds are encompassed by the claims.
Regarding the 102 rejection over Abbas et al. (WO 2022/084600 A1, utilizing US 2023/0369680 A1 as an English language equivalent) Applicant argues Abbas et al. does not teach or suggest a halogenated hydrocarbon oil as instantly claimed. Like to the Milbrath et al. and Prentice et al. rejections, Applicant’s position is Abbas et al.’s refrigerant compounds are highly volatile, low-boiling, low-viscosity compounds such as gaseous hydrofluorocarbons (HFC-32, HFO-1234yf) or low-boiling fluorinated solvents (HFE-7100) that do not that do not possess the physical or chemical properties of an “oil”. Applicant believes the claims are only limited to true fluorinated oils such as perfluoropolyether (PFPE) lubricating oils, allegedly the “Fomblin®” trade name mentioned in passing at [0048] of the specification. Applicant also argues the specification establishes a physical relationship between the boiling point of the halogenated component and flash point of the base hydrocarbon oil not met by Abbas et al.
In response, this argument is not persuasive for substantially the same reasons as discussed regarding Milbrath et al. and Prentice et al., e.g., 1) Applicant is focusing too much on terminology rather than the structure disclosed and defined, 2) the features upon which Applicant relies (i.e., certain physical or chemical properties, a requirement that the claims are only limited to perfluoropolyether oils, and a physical relationship between the boiling point of the halogenated component and flash point of the base hydrocarbon oil) are not recited in the rejected claims, and 3) the claims and the claimed components have been given their broadest reasonable interpretation in light of the specification and the cited compounds in Abbas et al. read on the claimed halogenated hydrocarbon oil component under said broadest reasonable interpretation.
As cited in the rejection of record, Abbas et al. teach a heat transfer composition comprising 0-40 wt.% (exclusive of 0) of a refrigerant compound selected from halogenated hydrocarbons, perhalogenated compounds, fluorinated ketones, and fluorinated ethers and 60-100 wt.% (exclusive of 100) of a dielectric fluid (abstract). The disclosed refrigerants (halogenated hydrocarbons, perhalogenated compounds, fluorinated ketones, and fluorinated ethers) read on the claimed halogenated hydrocarbon oil per the specification’s discussion of the component via at least [0042] & [0044] of the specification. For example, [0042] and the preceding paragraphs of the specification disclose “halogenated hydrocarbons”, which is exactly the same term as the reference’s halogenated hydrocarbons. [0044] of the specification disclose “fluorinated ketones”, which is exactly the same term as the reference’s fluorinated ketones. [0042] of the specification disclose “fluoroethers”, which is equivalent to the reference’s fluorinated ethers. Abbas et al. also define their; the specification indicates perfluoroalkanes as suitable fluorinated hydrocarbon compounds [0042] of the specification disclose “perfluoroalkanes”, which is equivalent to Abbas et al.’s definition of their perhalogenated compounds composed of carbon atoms and halogens only that are preferably perfluorinated compounds with perfluoroalkane examples thereof (dodecafluoropentane, tetradecafluorohexane, and hexadecafluoroheptane) (para. 0057).
While not germane to the present anticipation rationale (the following refrigerant species were not relied upon in the anticipation rationale of record), regarding Applicant’s concern of some of Abbas et al.’s refrigerant compounds being gaseous hydrocarbons such as HFC-32 (i.e., difluoromethane) or HFO-1234yf (i.e., 2,3,3,3-tetrafluoro-1-propene) or a fluorinated solvent HFE-7100 (i.e., nonafluorobutyl methyl ether):
HFC-32 is in the list of halogenated hydrocarbons in the specification, specifically in the saturated fluorocarbon fluids listed in [0045] as “difluoromethane”;
HFO-1234yf is in the list of halogenated hydrocarbons in the specification, specifically in the unsaturated fluorocarbon fluids listed in [0046] as “2,3,3,3-tetrafluoro-1-propene”; and
HFE-7100 / nonafluorobutyl methyl ether is in the lists of halogenated hydrocarbons in the specification, specifically in the fluoroether fluids listed in [0047] as “C4F9OCH3”, and is an exemplary halogenated hydrocarbon in the inventive thermal fluid compositions, too (Id.). The specification also indicates Novec fluids as suitable fluorinated compounds [0048].
Arguendo, if the halogenated hydrocarbon genera/species thoroughly disclosed at [0040]-[0051] of the specification and recited in claim 9 of the claims do not read on the claimed halogenated hydrocarbon oil component, then the claims (and invention as a whole) are seriously unclear as to what compounds are encompassed by the claims.
Regarding the 103 rejection over Abbas et al. (WO 2022/084600 A1, utilizing US 2023/0369680 A1 as an English language equivalent) alone or in combination with Christensen et al. (US 10,712,105 B1) Applicant argues the components of Abbas et al. are not substantially the same as those claimed because Abbas et al. mixes a dielectric oil with a highly volatile, low-boiling phase change refrigerant and a person of ordinary skill in the art would immediately recognize that introducing a highly volatile refrigerant gas or low boiling solvent into a dielectric oil will drastically alter and degrade the rheological properties oft eh fluid. Applicant believes Abbas et al.’s viscosity is far too low and volatile to meet the stable, high performance kinematic viscosity measured at 100°C of claim 10. Applicant also incorporates the 102 rejection arguments as and the Office’s allegations of inherency and naturally flow lack factual support.
In response, this argument is not persuasive because the 102 rejection arguments are not persuasive for the reasons of record (Id.). This argument is not persuasive because the cited components are indeed the same as those claimed. See, for example, the above-addressed concerns in the 102 rejection arguments that Abbas et al.’s compounds may be HFC-32, HFO-1234yf, and HFE-7100 that are actually listed in the present application specification as suitable species of the claimed compound (Id.). Abbas et al. teach bevies of suitable fluorinated hydrocarbons for provision as their refrigerant composition at para. 0053-0125 that are listed in the present application’s specification’s thorough discussion of possible halogenated hydrocarbons at [0040]-[0051].
Arguendo, if the halogenated hydrocarbon genera/species thoroughly disclosed at [0040]-[0051] of the specification and recited in claim 9 of the claims do not read on the claimed halogenated hydrocarbon oil component, then the claims (and invention as a whole) are seriously unclear as to what compounds are encompassed by the claims.
Regarding Applicant’s concern that Abbas et al.’s teachings/suggestions would be recognized by a person having ordinary skill in the art to alter and degrade the rheological properties of the fluid, this is regarded as an argument the proposed modification renders the reference unsatisfactory for its intended purpose and/or the reference is inoperable. This argument is not persuasive because there is no objective evidence of record that Abbas et al.’s refrigerant component would unsatisfactorily degrade the dielectric oil. Also, the Office has considered Abbas et al. and cannot locate where the reference discourages or teaches away from combining the refrigerant with the dielectric oil. Also, the burden of establishing invalidity/inoperability of the reference rests on Applicant to provide and has not been met. Nevertheless, Abbas et al. directly teach combining the refrigerant component and the dielectric oil component (it is the entire subject of their disclosure, abstract/etc.) which wholly rebuts Applicant’s allegation the reference is inoperable or the proposed modification renders the reference unsatisfactory for its intended purpose. Following the teachings of a reference (such as blending Abbas et al.’s refrigerant(s) with their dielectric fluid(s) to obtain a heat-transfer composition) has a reasonable expectation of success.
Regarding Applicant’s concern about Abbas et al. disclosing an ultra-low viscosity liquid viscosity of 0.1-2 cP at 20°C, if this is meant regarding the para. 0135 of the PGPub, note that the viscosity is disclosed for the refrigerant (one of the components in Abbas et al.) not the entire composition. The instant claim requires the entire composition, not just the halogenated hydrocarbon component, to have the recited viscosity. The Office’s position is/remains the claimed kinematic viscosity would flow naturally from the cited teachings of the reference as Abbas et al.’s composition is ultimately made of substantially the same components as that claimed (an isoparaffinic dielectric fluid and a halogenated, preferably fluorinated, refrigerant, Id.). Nevertheless, the rejection of record also cited para. 0187 as meeting the claimed limitation for the composition: “See also the dynamic viscosity of 0.1-20 cP at 20°C (para. 0187) that indicate the composition is a viscous liquid (liquid with a viscosity) and that a kinematic viscosity measured at 100°C would flow naturally therefrom.”
Regarding Applicant’s concern of the naturally flow positions lack factual support, while such rationale was only used for a few of the dependent claims, the Office maintains their positions the claimed limitation that at least 10 wt.% of the halogenated hydrocarbon oil boiling or vaporizing at a temperature below the flashpoint of the hydrocarbon oil, kinematic viscosity, pour point, or dielectric constant of the composition would all flow naturally from the teachings of the reference. Abbas et al. teach the selection and variety of different genera/species of dielectric fluids (i.e., isoparaffin chain lengths, Id.) and refrigerants (hydrofluorocarbons and species, hydrofluoroolefins and species, and hydrofluoroethers and species, e.g., para. 0053-0125), that the refrigerant has a boiling point of less than 50°C and lower maximums thereof (para. 0034), and the total composition has a high flash point of greater than 150°C (para. 0188). This results in substantially the same composition with the same components as that claimed with the feature of a low refrigerant (halogenated hydrocarbon) with a low boiling/evaporation point and a isoparaffinic fluid having a flash point (that a person of ordinary skill in the art would understand depends on the chain length of its contents). Abbas et al.’s composition is ultimately made of substantially the same components as that claimed (an isoparaffinic dielectric fluid and a halogenated, preferably fluorinated, refrigerant, Id.). Additionally, the reference teach the further addition of pour point depressant into their composition (para. 0170+), which invites the inclusion of components to reduce the pour point of their composition encompassing the low pour point as claimed. See also the breakdown voltages of the composition (para. 0184-0185) that indicate the composition has dielectric properties and that a dielectric constant would certainly flow naturally therefrom. See also the dynamic viscosity of 0.1-20 cP at 20°C (para. 0187) that indicate the composition is a viscous liquid (liquid with a viscosity) and that a kinematic viscosity measured at 100°C would flow naturally therefrom.
Regarding the nonstatutory double patenting rejection of claims 1, 6-9, and 14 over claims 1-13 of copending Application No. 18/857,219 (reference application) Applicant argues the reference application requires a phase change material whereas the instant claims do not require a phase change material.
In response, this argument is not persuasive because both sets of claims encompass blends of a hydrocarbon oil and a halogenated hydrocarbon component. The rejection is not made regarding the reference application’s phase change material but rather its halogenated hydrocarbon component. While Applicant’s position is there is fundamental divergence in both chemical compositions and their physical heat-transfer mechanisms, the reference application nevertheless meets some (but not all) of the instant claims under a one-way test for distinctness. The reference application’s independent claim requires a hydrocarbon oil component just as instantly claimed and the reference application’s dependent claims 10 to 13 all require and mention a “halogenated hydrocarbon” component just as that instantly claimed. The reference application claims also recite the boiling point of the halogenated hydrocarbon is as much as 5% lower than the flash point of the hydrocarbon oil (claim 11) which means a portion of the halogenated hydrocarbon oils or vaporizes at a temperature below the flashpoint of the hydrocarbon oil as claimed. The reference application claims also recite the halogenated hydrocarbon is present at 0.1-25 wt.% of the composition (claim 13).
Accordingly, the rejections are maintained for the reasons of record.
Prior Art Cited But Not Applied
The following prior art is made of record and not relied upon but is considered pertinent to Applicant's disclosure and/or evidentiary reference supporting the above ground(s) of rejection:
Teroka et al. (US 6,897,002 B2) is a cited evidentiary reference teaching Isopar G has a flash point of 41°C (col. 31 lines 48-49).
Burt et al. (US 8,719,971 B2) is a cited evidentiary reference teaching Isopar G is primarily a mixture of C10-C11 isoparaffins (col. 24 lines 42-43).
Tikhonov et al. (US 9,012,094 B2) is a cited evidentiary reference teaching HFE-7100 is a nonflammable liquid with no flash point, i.e., an infinite flash point as, no matter how high the temperature, the component never flashes, (col. 15 lines 22-25).
The remaining references listed on Forms 892 and 1449 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
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
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
October 5, 2026
