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 with traverse of Group I in the reply filed on July 30, 2026 is acknowledged. The traversal is on the ground(s) that EP1510692 is directed to a refrigeration oil for use in refrigeration compressors. This is not found persuasive because a mixture of isoparaffinic oil containing at least one hydrocarbon having from 8-50 carbon atoms and an organic oxygenate selected from alcohols, ester oils, polyether oils and ether oils, this is not special technical feature. The applicant argues synergistic results, this does not apply to the restriction. Additionally, it has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results, In re Greenfield, 197 USPQ 227.
The requirement is still deemed proper and is therefore made FINAL.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-12 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-2, 4-7, 10-15 of copending Application No. 18/291,754 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Doucet et al (EP3315586) in view of Yang et al (US Patent Application 2019/0225855).
Regarding claims 1-12, Doucet et al teaches a liquid heat transfer fluid comprising more than 95% isoparaffins and less than 3% naphthens and less than 100ppm aromatics by weight (Abstract). Doucet et al further teaches the fluid comprises more than 95wt% of isoparaffins by weight including C15-C18 isoparafins (which satisfies a molecular weight of about 212.41-254.49g/mol) (Paragraphs 37-39). Doucet et al further teaches a kinematic viscosity of from 3-6mm2/s (Paragraph 126). Doucet et al further teaches pour points from -45 to -81C and flash points from 115-149.5C (Table, Pg. 11). Doucet et al further teaches the improved fluids as heat transfer fluids can also comprise any additive known in the art (Paragraphs 23-24). However, Doucet et al fails to specifically disclose a freezing point depressant and silica particles.
In the same field of endeavor, Yang et al teaches heat transfer fluids comprising freezing point depressant (Abstract) such as methanol and ethanol in the amount of 5-40wt% (which overlaps the instantly claimed range) (Paragraph 32) and colloidal silica with 1-200nm particle size for corrosion inhibiting properties (Paragraph 81).
With regard to methanol and ethanol, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided 5-40wt% of methanol or ethanol in Doucet et al in view of Yang et al in order to lower the compositions freezing point temperature as taught in Yang et al.
With regard to silica particles, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided silica particles in Doucet et al in view of Yang et al in order to provide corrosion inhibiting properties to the composition as taught in Yang et al.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Doucet et al (EP3315586) in view of Dance et al (US Patent Application 2020/0199430).
Regarding claims 1-12, Doucet et al teaches a liquid heat transfer fluid comprising more than 95% isoparaffins and less than 3% naphthens and less than 100ppm aromatics by weight (Abstract). Doucet et al further teaches the fluid comprises more than 95wt% of isoparaffins by weight including C15-C18 isoparafins (which satisfies a molecular weight of about 212.41-254.49g/mol) (Paragraphs 37-39). Doucet et al further teaches a kinematic viscosity of from 3-6mm2/s (Paragraph 126). Doucet et al further teaches pour points from -45 to -81C and flash points from 115-149.5C (Table, Pg. 11). Doucet et al further teaches the improved fluids as heat transfer fluids can also comprise any additive known in the art (Paragraphs 23-24). However, Doucet et al fails to specifically disclose a thermal stabilizer.
In the same field of endeavor, Dance et al teaches heat transfer fluids comprising a base fluid (Abstract, Paragraphs 75-100) and additives including 0.1-1wt% of thermal stabilizers including polyethylene glycol and pentaerythritol (Paragraphs 59, 61) and borax corrosion inhibitors (Paragraph 60).
With regard to propylene glycol or pentaerythritol, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided 0.1-1wt% of polyethylene glycol and pentaerythritol in Doucet et al in view of Dance et al in order to provide thermal stabilizing properties to the composition.
With regard to borax particles, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided borax in Doucet et al in view of Dance et al in order to provide corrosion inhibiting properties to the composition as taught in Dance et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TANISHA DIGGS whose telephone number is (571)270-7730. The examiner can normally be reached Monday, Tuesday and Friday, 9:00AM-5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TANISHA DIGGS/Primary Examiner, Art Unit 1761 August 14, 2026
