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
Claims 17-24, 30-37, and 43 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 16 February 2026.
Applicant's election with traverse of Group I, claims 1, 5-10 and 15 in the reply filed on 16 February 2026 is acknowledged. The traversal is on the ground(s) that Gao does not teach or suggest the present composition which is the unifying feature for invention. This is not found persuasive because applicant directs arguments to a specific example of table 1 without consideration for the general teachings of Gao which teach the viscosity modifier in the overlapping range of the instant claim.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12 June 2023 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Office.
The information disclosure statement (IDS) submitted on 18 September 2025 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Office.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 15 states that the amount of the of the polymer additive is “no more than 800 ppm”. However, the independent claim states that the amount of the polymer additive is 0.001 to 0.05% where 0.05% corresponds to 500 ppm Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 2, 5-10, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Christensen et al. (US Patent #10,712,105, hereinafter referred to as “Christensen”).
As to Claims 1 and 15: Christensen teaches heat transfer fluids and methods of using them (Abstract) such as batteries (Col. 1, Lines 12-25). Wherein the method comprises contacting the fluid with the heat source in operation and circulating it through a heat transfer circuit (Col. 2, Lines 28-59, Fig. 4). Christensen further teaches that the heat transfer fluid comprises a hydrocarbon oil (i.e., a non-conductive, non-aqueous and non-water miscible oil component (Col. 17, Lines 25-35).
Christensen does not specifically teach an example using 0.001 to 0.05% by weight of polyisobutylene polymer having a number average molecular weight of 900,000 to 2,000,000.
However, Christensen teaches that the composition can include viscosity modifiers to impart shear stability at elevated temperature and the viscosity modifier can have a molecular weight between 50,000 and 1,500,000 with polyisobutylene being a commonly used viscosity modifier (Col. 42, Lines 41-60). Christensen further teaches that the viscosity modifier is preferably used in an amount of less than 0.5% and can be in any amount between 0.01 and 0.5% (Col. 43, Lines 33-47). At the time of filing, it would have been obvious to a person having ordinary skill in the art to use polyisobutylene with a molecular weight of 900,000 to 1,500,000 in an amount of 0.01 to 0.05 weight because Christensen teaches that these are preferable polymers in known molecular weights and known amounts in order to impart shear stability at elevated temperatures and acceptable viscosity at low temperatures (Col. 42, Lines 46-50).
As to Claim 2: Christensen teaches the method of cooling electrical componentry of Claim 1 (supra). Christensen further teaches that the electrical componentry can be a battery (Col. 1, Lines 12-25).
As to Claim 5: Christensen teaches the method of cooling electrical componentry of Claim 1 (supra). Christensen teaches that the oil can be a hydrocarbon oil which has a dielectric constant between 2.1 and 2.4 (Col. 17, Lines 25-35).
As to Claim 6: Christensen teaches the method of cooling electrical componentry of Claim 1 (supra). Christensen teaches that the oil can be a hydrocarbon oil (Col. 17, Lines 25-35).
As to Claims 7 and 8: Christensen teaches the method of cooling electrical componentry of Claim 6 (supra). Christensen teaches that the preferred base fluids include isoparaffin oils which contain a mixture of saturated hydrocarbon having from 8 to 50 carbon atoms and hydrocarbyl branches and single continuous carbon chains of no more than 24 carbon atoms (Col. 21, Lines 40-65).
As to Claim 9: Christensen teaches the method of cooling electrical componentry of Claim 7 (supra). Christensen further teaches that the that the saturated hydrocarbon can be 1-dodecene with a molecular weight of 168 g/mol (Col. 17, Lines 25-60).
As to Claim 10: Christensen teaches the method of cooling electrical componentry of Claim 1 (supra). Christensen further teaches that preferred base fluids include ethers of diethylene glycol (i.e., alkylene oxides where the terminal hydroxyl groups have been modified) (Col. 21, Lines 50-60, Col. 32, Lines 15-20)
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J OYER whose telephone number is (571)270-0347. The examiner can normally be reached 9AM-6PM EST M-F.
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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.
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/Andrew J. Oyer/Primary Examiner, Art Unit 1767
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