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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-9, in the reply filed on December 1, 2025 is acknowledged.
Claims 10-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 1, 2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on March 24, 2023, and February 13, 2026 have been considered by the examiner.
Claim Objections
Claims 1 and 6-7 are objected to because of the following informalities:
Regarding claims 1 and 7, the Markush groups of claims 1 and 7 are introduced with the phrase “chosen from” in line 2 of claim 1 and line 2 of claim 7. Claim language defined by a Markush grouping requires selection from a closed group "consisting of" the alternative members (MPEP 2117(I)). In order to clarify that the list of refrigerants in claim 1 and dielectric fluids in claim 7 are closed groups, it is recommended to change the phrase to a transitional phrase excluding any element not specified in the claim. It is recommended to change the wording of claim 1, such that the limitation in lines 2-4 recites “a refrigerant selected from the group consisting of halogenated hydrocarbons, perhalogenated compounds, fluorinated ketones, fluorinated ethers, and their combinations,” and to change the wording of claim 7, such that the limitation in lines 2-3 recites “the dielectric fluid is selected from the group consisting of mineral dielectric oils, synthetic dielectric oils, and vegetable dielectric oils.”
Regarding claim 6, due to the amendments to claim 6 in the claim set filed March 24, 2023, the wording of the list of possible refrigerant components is unclear. The claim states that “the refrigerant comprises 1-chloro-3,3,3-trifluoropropene or is a binary mixture or of 1,1,1,4,4,4-hexafluorobut-2-ene in the Z form and of 1,2-dichloroethylene in the E form.” Due to the amendments, it is unclear if the refrigerant may be “1-chloro-3,3,3-trifluoropropene or is a binary mixture,” including binary mixtures of 1-chloro-3,3,3-trifluoropropene, or if the refrigerant may be 1-chloro-3,3,3-trifluoropropene, or “a binary mixture of 1,1,1,4,4,4-hexafluorobut-2-ene in the Z form and of 1,2-dichloroethylene in the E form.” Based on the disclosure on page 3 of specification, which includes the original options for the refrigerant, it is clear that the refrigerant comprises “1-chloro-3,3,3-trifluoropropene or is a binary mixture of 1,1,1,4,4,4-hexafluorobut-2-ene in the Z form and of 1,2-dichloroethylene in the E form.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 1, and by dependency claims 2-9 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 claim 1, the claim is indefinite as it recites the use of a heat-transfer composition without any active steps on how the use is practiced. Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph (MPEP 2173.05(q)). It is not clear if the Applicant intends to claim a composition of a heat-transfer composition, a method of cooling a battery, or something else. For the purposes of examination, the claim is interpreted as claiming a method of cooling a battery using a heat-transfer composition. It is further noted that the battery in claim 1 is not positively recited.
Regarding claims 2-9, these claims are rejected based on their dependency on claim 1.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9-10 of copending Application No. 18/246,546 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Regarding claim 1 of the instant invention, claim 1 of copending Application No. 18/246,546 recites the use of a heat-transfer composition comprising from more than 0% to 40% by weight of a refrigerant comprising a compound chosen from halogenated hydrocarbons, perhalogenated compounds, fluorinated ketones, fluorinated ethers and the combinations thereof, and from 60% to less than 100% by weight of a dielectric fluid for regulating the temperature of a battery. In this case, the copending applications are obvious variants of each other because of the overlapping claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 (I)). While it is acknowledged that claim 1 of copending Application No. 18/246,546 recites that a battery is “immersed in the heat-transfer composition in the liquid state, and the heat transfer composition undergoing essentially no change of state,” and instant claim 1 recites that a battery is “immersed in the heat-transfer composition, and the heat-transfer composition undergoing evaporation,” in light of the indefiniteness of instant claim 1, the limitation is not considered a method step, and as the copending claims both teach a method of cooling a battery using the heat-transfer composition, they are not patentably distinct from each other.
Regarding claim 2 of the instant invention, claim 2 of copending Application No. 18/246,546 includes the limitations of claim 1 and further recites that the heat-transfer composition circulates in a heat-transfer circuit.
Regarding claim 3 of the instant invention, claim 3 of copending Application No. 18/246,546 includes the limitations of claim 2 and further recites that the battery comprises one or more modules each comprising an enclosure in which energy storage cells are arranged, the enclosure(s) forming part of the heat-transfer circuit.
Regarding claim 4 of the instant invention, claim 4 of copending Application No. 18/246,546 includes the limitations of claim 2 and further recites that the heat- transfer circuit is thermally coupled to a secondary circuit containing an additional transfer composition.
Regarding claim 5 of the instant invention, claim 5 of copending Application No. 18/246,546 includes the limitations of claim 4 and further recites that the secondary circuit is the air conditioning circuit of a vehicle; and/or is a reversible heat pump circuit.
Regarding claim 6 of the instant invention, claim 6 of copending Application No. 18/246,546 includes the limitations of claim 1 and further recites that the refrigerant comprises or is 1-chloro-3,3,3-trifluoropropene or is a binary mixture of 1-chloro-3,3,3-trifluoropropene in the Z form and of 1,1,1,2,3-pentafluoropropane, or of 1,1,1,4,4,4-hexafluorobut-2-ene in the Z form and of 1,2-dichloroethylene in the E form. In the case that 1-chloro-3,3,3-trifluoropropene or a binary mixture of 1,1,1,4,4,4-hexafluorobut-2-ene in the Z form and of 1,2-dichloroethylene in the E form is selected, the limitations of instant claim 6 are met.
Regarding claim 7 of the instant invention, claim 7 of copending Application No. 18/246,546 includes the limitations of claim 1 and further recites that the dielectric fluid is chosen from mineral dielectric oils, synthetic dielectric oils and vegetable dielectric oils.
Regarding claim 8 of the instant invention, claim 9 of copending Application No. 18/246,546 includes the limitations of claim 1 and further recites that the battery is the battery of an electric or hybrid vehicle.
Regarding claim 9 of the instant invention, claim 10 of copending Application No. 18/246,546 includes the limitations of claim 1 and further recites that the use is implemented during the charging of the battery of the vehicle.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5 and 7-9 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Hulse, et al. (US 2020/0205318 A1).
Regarding claims 1 and 7, Hulse teaches a method of removing heat from an article, device, or fluid using a heat transfer fluid comprising at least about 50% by weight of 1-trifluoromethyl-1,2,2-trifluorocyclobutane (TFMCB) (refrigerant comprising a halogenated hydrocarbon) (¶ [0014], Ln. 1-6, ¶ [0017], Ln. 1-3). Hulse teaches that the heat transfer fluid may additionally include at least one co-heat transfer component selected from the group consisting of HFE-7000, HFE-7200, HFE-7100, HFE-7300, HFE-7500, HFE-7600, trans-1,2-dichloroethylene, n-pentane, cyclopentane, methanol, ethanol, perfluoro(2-methyl-3-pentanone), cis-HFO-1336mzz, HFO-1233zd(E), HFO-1233zd(Z) (¶ [0067], Ln. 1-9). The heat transfer composition further includes a lubricant present in an amount from about 5% to 30% by weight and is selected from a group consisting of polyol esters, poly alkylene glycols, polyalkylene glycol oils, polyvinyl ethers, and poly(alpha-olefin)s (¶ [0071], Ln. 1-9). Specifically, Hulse teaches a heat transfer composition including at least 50% TFMCB (halogenated hydrocarbon) by weight, within the claimed range of 20% to less than 100%, and 5% to 30% polyol ester lubricant (synthetic dielectric oil) by weight, within the claimed range of more than 0% to 80% (¶ [0295], Ln. 1-2). Hulse teaches a method of thermally regulating the temperature of a battery that includes providing the battery in thermal contact with the heat transfer fluid (¶ [0052]-[0053]), teaching that it is preferable for the heat generating component to be immersed in the thermal management fluid (¶ [0153], Ln. 1-7). Hulse further teaches that heat is removed from the high temperature heat source by evaporating the heat transfer fluid (¶ [0017], Ln. 1-3).
Regarding claim 2, Hulse teaches all of the limitations of claim 1 above and further teaches that the thermal management fluid circulates to a heat exchanger and is recycled back into the system to cool the heat-generating component (heat transfer circuit) (¶ [0153], Ln. 7-12).
Regarding claim 3, Hulse teaches all of the limitations of claim 2 above and further teaches an example wherein the thermal management fluid enters a battery pack enclosure containing a number of cells and exits the enclosure having taken up heat from the battery pack (¶ [0154], Ln. 9-13).
Regarding claims 4-5, Hulse teaches all of the limitations of claim 2 above and further teaches that the heat transfer fluid may be used in a secondary loop as a refrigerant (¶ [0196], Ln. 1-3). The secondary loop uses a primary refrigerant and secondary refrigerant (¶ [00198], Ln. 1-5). Hulse teaches that the secondary loop may be a secondary loop air conditioning system (¶ [0202], Ln. 1-3), specifically teaching the use for the air conditioning system of a vehicle with a battery or electric power source (¶ [0211], Ln. 1-8).
Regarding claim 8, Hulse teaches all of the limitations of claim 1 above and further teaches that preferable embodiments include thermal management of the batteries used in electric vehicles (¶ [0150], Ln. 1-7).
Regarding claim 9, Hulse teaches all of the limitations of claim 1 above and further teaches that the batteries of electric vehicles develop heat during charging and discharging (¶ [0276], Ln. 1-2). Additionally, as Hulse teaches that the method of thermally regulating the temperature of a battery includes providing the battery in thermal contact with the heat transfer fluid (¶ [0052]-[0053]), teaching that it is preferable for the heat generating component to be immersed in the thermal management fluid (¶ [0153], Ln. 1-7), Hulse teaches the use of the heat transfer fluid during charging of the battery of the vehicle.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hulse, et al. (US 2020/0205318 A1), as applied to claim 1 above.
Regarding claim 6, Hulse teaches all of the limitations of claim 1 above and further teaches a heat transfer composition consisting essentially of TFMCB and at least about 10% by weight of one or more co-fluids selected from the group consisting of HFE-7000, HFE-7200, HFE-7100, HFE-7300, HFE-7500, HFE-7600, trans-1,2-dichloroethylene, n-pentane, cyclopentane, methanol, ethanol, perfluoro(2-methyl-3-pentanone), cis-HFO-1336mzz, HFO-1233zd(E), HFO-1233zd(Z) (¶ [0300]-[0302]). Hulse teaches that the co-heat transfer fluid component included must not significantly lower the boiling point of the fluid, result in a dielectric constant of the fluid below 30, make the heat transfer composition flammable, or make the heat transfer composition toxic (¶ [0066], Ln. 1-15). Hulse teaches the above components as co-heat transfer components that meet these limitations. Hulse does not teach a specific embodiment wherein the heat transfer composition includes TFMCB and one of HFO-1233zd(E), HFO-1233zd(Z) (1-chloro-3,3,3-trifluoropropene), or a binary mixture of cis-HFO-1336mzz (1,1,1,4,4,4-hexafluorobut-2-ene Z form) and trans-1,2-dichloroethylene (1,2-dichloroethylene E form).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the heat transfer composition of TFMCB to include at least about 10% by weight HFO-1233zd(E), HFO-1233zd(Z), or a mixture of cis-HFO-1336mzz and trans-1,2-dichloroethylene, based on the teachings of Hulse. As Hulse teaches that the heat transfer fluid may contain a co-heat transfer component, and specifically teaches trans-1,2-dichloroethylene, cis-HFO-1336mzz, HFO-1233zd(E), or HFO-1233zd(Z) in the possible co-heat transfer components, one of ordinary skill in the art would find it obvious to include one of HFO-1233zd(E), or HFO-1233zd(Z), or a mixture including trans-1,2-dichloroethylene and cis-HFO-1336mzz in the heat transfer fluid. Provided the list of co-heat transfer components that meet the limitations taught by Hulse, one of ordinary skill in the art would find it obvious to use HFO-1233zd(E), or HFO-1233zd(Z), or a mixture including trans-1,2-dichloroethylene and cis-HFO-1336mzz with reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH J JACOBSON whose telephone number is (703)756-1647. The examiner can normally be reached Monday - Friday 8:00am - 5:00pm.
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/SARAH J JACOBSON/Examiner, Art Unit 1785
/MARK RUTHKOSKY/Supervisory Patent Examiner, Art Unit 1785