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 .
Summary
The Applicant’s arguments and claim amendments received May 20, 2026 have been entered into the file. Currently, claims 1-6 and 8-9 have been amended; claim 7 has been cancelled; and claims 10-15 have been withdrawn; resulting in claims 1-6 and 8-9 pending for examination.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on April 1, 2026 and May 11, 2026 have been considered by the examiner.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-6 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Hulse, et al. (US 2020/0205318 A1) in view of Rached, et al. (WO 2019/053355 A1) (hereinafter citing US equivalent, US 2020/0216734 A1).
Regarding claim 1, Hulse teaches a method of thermally regulating the temperature of a battery that includes providing the battery in thermal contact with a 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). The heat transfer fluid comprises at least about 50% by weight of 1-trifluoromethyl-1,2,2-trifluorocyclobutane (TFMCB) (refrigerant comprising a halogenated hydrocarbon) (¶ [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 does not expressly teach the viscosity of the lubricant and thus does not expressly teach that the viscosity of the dielectric fluid is within 1 and 60 cP at 20 °C.
Rached teaches a refrigerant/lubrication oil composition which is stable at high temperatures (¶ [0013], Ln. 1-4). Rached teaches that the composition includes at least one hydrochlorofluoroolefin, which is preferably 1-chloro-3,3,3-trifluoropropene (¶ [0021], Ln. 1-2) and mineral oil (¶ [0016], Ln. 1-3). Rached teaches the use of mineral oils as the lubricant, teaching that they are less expensive than oxygenated oils such as polyol esters (¶ [0008], Ln. 1-3). The refrigerant reduces the viscosity of the mineral oil, and therefore the viscosity of the oil is selected to ensure adequate lubrication of the system. Rached teaches that the kinematic viscosity of the mineral oil at 40 °C is preferably 10 to 300 cSt (¶ [0055], Ln. 1-5). Given the densities of mineral oils and the viscosity change with temperature, the dynamic viscosity at 20 °C would be higher than the kinematic viscosity at 40 °C, however, the dynamic viscosity would still overlap the claimed range of 1 to 60 cP. 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)).
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 lubricant of Hulse to include a mineral oil based on the teachings of Rached. As Rached teaches a refrigerant/lubrication oil composition using halogenated hydrocarbons, one of ordinary skill in the art would find it obvious to apply the teachings of Rached to the heat transfer fluid of Hulse. One of ordinary skill in the art would be motivated to use a mineral oil as the lubricant as Rached teaches that they are less expensive than oxygenated oils such as polyol esters. Further, in applying the teachings of Rached, one of ordinary skill in the art would find it obvious to use a mineral oil within the viscosity range taught by the reference, overlapping the claimed range of 1 to 60 cP.
Regarding claim 2, Hulse in view of Rached teaches all of the limitations of claim 1 above, and Hulse 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 in view of Rached teaches all of the limitations of claim 2 above, and Hulse 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 in view of Rached teaches all of the limitations of claim 2 above, and Hulse 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 6, Hulse in view of Rached teaches all of the limitations of claim 1 above, and Hulse 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 binary 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 binary mixture including trans-1,2-dichloroethylene and cis-HFO-1336mzz with reasonable expectation of success.
Regarding claim 8, Hulse in view of Rached teaches all of the limitations of claim 1 above, and Hulse further teaches that preferable embodiments include thermal management of the batteries used in electric vehicles (¶ [0150], Ln. 1-7).
Regarding claim 9, Hulse in view of Rached teaches all of the limitations of claim 1 above, and Hulse 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.
Response to Arguments
Response-Claim Objections
The previous objections to claims 1 and 6-7 are overcome in light of the Applicant’s amendments to claims 1 and 6 and cancellation of claim 7 in the claim set filed May 20, 2026.
Response-Claim Rejections – 35 U.S.C. 112
The previous rejections of claim 1 and by dependency claims 2-9 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 are overcome in light of the Applicant’s amendments to claim 1 in the claim set filed May 20, 2026.
Response-Claim Rejections – Double Patenting
The previous rejections of claims 1-9 on the ground of provisional nonstatutory double patenting as being unpatentable over claims 1-7 and 9-10 of copending Application No. 18/246,546 (reference application) are overcome in light of the terminal disclaimer filed May 20, 2026.
Response-Claim Rejections – 35 U.S.C. 102 and 103
In light of the Applicant’s amendments to claim 1, the previous rejections of claims 1-5 and 7-9 under 35 U.S.C. 102(a)(1) and 102(a)(2) over Hulse, et al. (US 2020/0205318 A1) have been withdrawn, however, upon further consideration, the reference is applicable under 35 U.S.C. 103 and used in combination with Rached, et al. (WO 2019/053355 A1) in the rejections above. Any arguments with respect to the reference that are still deemed valid will be addressed herein.
Applicant's arguments filed May 20, 2026 have been fully considered but they are not persuasive. The Applicant argues on page 8 of the remarks that Hulse does not explain that combining the refrigerant with dielectric fluid makes it possible to reduce the viscosity of the dielectric fluid or that the heat transfer composition prevents thermal runaway.
In response to the 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., reduced viscosity and prevention of thermal runaway) are not recited in the rejected claim(s). 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). Further, it is noted that the addition of the refrigerant reducing the viscosity of the lubricant is common to the art and one of ordinary skill in the art would recognize that the addition of refrigerant lowers the viscosity of the dielectric fluid.
Applicant’s arguments with respect to amended claim 1, that the POE lubricant of Hulse does not meet the limitations of a dielectric fluid selected from mineral dielectric oils, synthetic dielectric oils, and vegetable dielectric oils having a viscosity of 1 to 60 cP at 20 °C, have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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
/REBECCA L GRUSBY/Primary Examiner, Art Unit 1785
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