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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/10/2026 has been entered.
This action is responsive to Applicant’s request for continued examination filed 03/18/2026 and amendment/remarks filed 03/10/2026.
Claims 21, 22, and 24-40 are currently pending.
The IDS statements filed 07/01/2026, 07/22/2026, and 07/23/2026 have been considered. Initialed copies accompany this action.
Response to Amendment & Arguments
The rejection of claims 21, 22, and 24-40 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, is withdrawn in view of the above amendment.
The rejection of claims 21, 22, 24-30, and 24-39 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the above amendment. However, claims 31 and 40 remain indefinite. See below.
New grounds of 103 rejections are also set forth below.
Applicant’s arguments with respect to the prior 112 rejections have been considered but are moot because the arguments do not apply to any of the references or rationale being used in the current rejection.
Claim Interpretation
Independent claims 21, 34, and 40 recite “the nanopowder comprises nanoparticles that are clusters in a range between 100 nm and 600 nm, wherein a size distribution curve of the [nanopowder/nanoparticles] clusters is at least 50% of Vpw" or a similar form thereof to other clusters (uncrushed clusters of nanoparticles and rather than merely clusters of nanoparticles) which as written appears to mean the clusters comprise (i.e., are present in an amount of) at least 50% of the volume of the nanopowder because the claims also define Vpw as "Vpw is a volume of a nanopowder".
Additionally regarding the terminology of "uncrushed" in "uncrushed clusters" in claims 34-40, note that this describes a product-by-process limitation describing how the clusters are prepared. Product-by-process limitations are not limited to the recited steps except to the extent they suggest structure of the product. Here, the claims require clusters of aluminum oxide with the recited size regardless of how such clusters were made.
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing a nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983). "[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Claim Rejections - 35 USC § 112
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 31 and 40 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 pre-AIA the applicant regards as the invention.
Claim 31 recites the nanofluid of claim 21 further comprises “Vg/Vnf + Vw/Vnf, wherein Vg is a volume of glycol, wherein Vw is a volume of water, wherein Vg/Vnf is 25%, and wherein Vw/Vnf is 70%”, i.e., Vg/Vnf + Vw/Vnf = 25% + 70% = 95%. However, parent claim 21 requires, inter alia, a nanofluid comprising Vpw/Vnf + Vsf/Vnf + Vbs/Vnf wherein Vnf is a volume of the nanofluid, Vpw is a volume of a nanopowder, and wherein 10% < Vpw/Vnf < 20%. Since claim 31 requires, inter alia, Vpw/Vnf + Vg/Vnf + Vw/Vnf, Vpw/Vnf is at least 10%, and Vg/Vnf + Vw/Vnf is 95%, these three components already sum to greater than 100% (10% + 95% = 105%). In other words, claim 31 recites the nanofluid further comprises glycol and water where the recited relative amounts of the glycol and water taken together with the broad amount of clusters sum to over 100 volume percent. Note that there are also additional components (Vsf and Vbs), meaning all the required components sum to greater than 100%. It is seriously unclear how the nanofluid composition’s relative volume of components may sum to and/or require greater than 100% by volume as claimed.
There is a great deal of confusion and uncertainty as to the proper interpretation of claim 31 due to the nanofluid composition’s components summing and/or requiring greater than 100% by volume, and a person of ordinary skill in the art would not be apprised as to the scope of the invention. Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. See MPEP 2173.06.
Claim 40 recites, inter alia, a nanopowder component comprising nanoparticles where “nanoparticles that are uncrushed clusters in a range between 100 nm and 600 nm” and “wherein the nanoparticles have a particle size between 200 nanometers and 500 nanometers”. The former limitation is a broad recitation of a range/limitation and the ladder limitation is a narrower statement of the broad range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
For purposes of further examination, either size range will read on the claim.
Appropriate correction/clarification is required.
Claim Rejections - 35 USC § 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 21, 23-30, 32, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Bonsignore et al. (US 2004/0069454 A1).
Bonsignore et al. teach a composition for enhancing thermal conductivity in heat transfer systems comprising a powder having an average particle size in the nanometer size range, i.e., a nanopowder, where suitable powders include a metal oxide in a heat transfer medium including a liquid fluid (abstract). Such composition is equivalent to a nanofluid. Bonsignore et al. teach aluminum as an exemplary metal of the metal compound, i.e., the metal oxide, (para. 0032), and a preferred heat transfer media includes ethylene glycol and water in a volume ratio of about 5:1 to about 1:5 (para. 0060); however, note that both a glycol component and a water component are entirely optional in the instant claims except for claim 32 that actually requires a certain concentration of both. A person of ordinary skill in the art reading the abstract and para. 0032 of Bonsignore et al. would at once envisage the disclosed powder solely contain aluminum oxide since they are drawn to the selection of the content of the powder in the alternative from other elements for forming the metal oxide/compound powder and recites metal oxide/compound powder in the alternative from the other powder genera (powdered metal, powdered alloy, or powdered carbon) and read on the claimed limitation that the nanopowder comprise (or even consists of) aluminum oxide and the nanofluid is free of carbon nanoparticles. Bonsignore et al. further teach the powders have a preferred particle size of from about 25 nanometers to about 1000 nm in view of their ability to maintain a dispersion for a sufficient amount of time and within the preferred range the particles may form aggregates or clusters having an average width of from about 50 nm to 1000 nm (para. 0031), which substantially overlaps the claimed cluster particle size range of between 200 nanometers and 500 nanometers recited in claim 24. Additionally, the formation, presence, and/or provision of clusters of aluminum oxide nanoparticles with the particular sizes as the reference’s powder per the cited teachings above reads on and meets the claimed limitation a size distribution curve of the clusters is at least 50% of Vpw (i.e., the volume of the nanopowder) as the reference disclosure encompasses the clusters of aluminum oxide nanoparticles with the particular sizes comprising at least a majority of (50%+) if not all of (100%) the reference’s powder. Bonsignore et al. further teach the inclusion of surfactants by way of disclosing the presence of a compound that acts as a dispersant and/or stabilizes the powder (abstract and para. 0033, 0037, and 0040) and/or additional surfactants and/or dispersants (para. 0056 and 0057). A blend of anionic surfactants and nonionic surfactants is even specifically mentioned (para. 0037 and claim 22), which reads on the claimed limitation that the nanofluid comprises a blend of a nonionic surfactant and an anionic surfactant. Bonsignore et al. further teach the inclusion of corrosive inhibitors by way of disclosing the presence of a corrosion inhibiting compound that acts as a dispersant, stabilizes and/or passivates the powder (para. 0033, 0035, 0036, and 0040) and/or additional corrosion inhibitors (para. 0056); however, note that a corrosive inhibitor component is entirely optional in claims 21, 23-30, and 32. With respect to additional components, Bonsignore et al. teaches the inclusion of various additives containing components that read on base additives and acid additives, e.g., stearic acids, stearates, fatty acids, ammonia, and alkali metal salts such as sodium hydroxide, etc. (para. 0051, 0060, and 0065); however, note that an acid additive is entirely optional in claims 21, 23-30, and 32. With respect to the proportions, Bonsignore et al. teach a preferred heat transfer media includes ethylene glycol and water in a volume ratio of about 5:1 to about 1:5 (para. 0060), a concentration of the powder is present in a preferably amount from about 3-90% by weight of the composition but that the optimal amount depends on the particular application, the composition of the heat transfer medium, and the host heat transfer medium’s ability to maintain the thermal conductivity enhancement composition as a dispersion in the heat transfer composition (para. 0077), and that additives are present at a concentration of from about 1-99% by weight and more preferably about 3-20% by weight (para. 0074). It would be understood to a person of ordinary skill in the art the composition of Bonsignore et al. contains the nanosized powder and the heat transfer medium with the additional additives constituting the remainder of the composition.
As to the claimed components of instant claims 21, 23, 32, and 33, Bonsignore et al. teach each of the disclosed components of the claimed invention for the purpose of producing an enhanced heat transfer medium composition. Bonsignore et al. further suggest some components used for different purposes but nonetheless would have been obvious to the skilled artisan given the broad terminology claimed, the components may read on several types of ingredients. It might be argued that some “picking and choosing” is required to arrive at the presently claimed invention of claims 21, 23, 32, and 33 (the presence of all the nanopowder, surfactant, and base additives at once per independent claim 21 and further comprising glycol and water and/or acid and corrosive inhibitor additives per dependent claims 31 and 33). Nevertheless, Bonsignore et al. teach heat transfer medium compositions, and at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art for a composition, as taught by Bonsignore et al., to contain each of clustered aluminum oxide nanoparticles, surfactant, and base at once and further comprise glycol, water, acid, and corrosive inhibitors with a reasonable expectation of success because the reference is directed to heat transfer medium compositions containing such ingredients.
As to the claimed proportions of instant claims 21, 25-28, 32, and 33, Bonsignore et al. teach in overlapping ranges, the amounts of each of the components claimed. Bonsignore et al. do not particularly point out the ratios and addition of ratios as claimed.
However, at the time of the effective filing date it would have been obvious to the skilled artisan to arrange the components within the proportions and ratios as claimed given that Bonsignore et al. teach a range of proportion of each of the claimed ingredients that encompasses the amounts and ratios as claimed, as described above. In the event Bonsignore et al.’s proportions are slightly outside or below those instantly claimed, note Bonsignore et al.’s disclosed ranges are merely general examples and the teachings of Bonsignore do not otherwise contain any indication of a teaching away from exploring other alternate or sufficient proportions outside the general ranges/examples disclosed. Moreover, Applicant has not proffered any criticality to the contrary, that would suggest unexpected results for the nanofluid composition claimed. Therefore, one skilled in the art would have been within their purview to determine the appropriate range and ratio of ingredients to suggest the claimed invention, in the absence of a showing to the contrary. “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
As to the recited pH ranges/values of instant claims 29 and 30, even though Bonsignore et al. fail to teach the composition has a pH of about 8.5-12.0 or 10.0, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to arrive within the claimed limitation and within the purview of a person of ordinary skill in the art for a composition, as taught by Bonsignore et al., to contain such a pH value because Bonsignore et al. further teach the inclusion of basic pH-inducing components such as ammonia and sodium hydroxide as additives (para. 0060 and 0065).
Claims 22 and 34-40 are rejected under 35 U.S.C. 103 as being unpatentable over Bonsignore et al. (US 2004/0069454 A1) as applied to claims 21, 23-30, 32, and 33 above, and further in view of Yang et al. (US 7,744,775 B2) or Chen et al. (US 5,338,477 A).
The disclosure of Bonsignore et al. is relied upon as set forth above.
Bonsignore et al. teach a heat transfer medium composition comprising components meeting the claimed nanofluid comprising a nanopowder consisting of nanoparticles that are clusters of aluminum oxide, a surfactant comprising a blend of an anionic surfactant and a nonionic surfactant, and a base additive, as well as further including a glycol, water, and other additives, as described above. This prior rationale also meets the general component content/presence, concentration ranges/values, nanopowder/aluminum oxide cluster particle size ranges, and pH ranges/values of claims 34-40 for the same reasons, described above.
Bonsignore et al. fail to teach the anionic surfactant is the specific sodium salt solution of polyamino-polyether-methylene-phosphonic acid as recited in claims 22, 34, and 40.
However, Yang et al. teach a heat transfer fluid comprising 5-99% of a freezing point depressant such as glycols, water in an amount from 0.1 to 90% and in addition, additives, surfactants, scale inhibitors, dispersants and mixtures thereof (abstract, col. 3 lines 11-22). Yang et al. further teach the presence of an inorganic phosphate, 0.001 to 20% of dicarboxylic acids (col. 12 lines 5-16), a polyelectrolyte polymer, corrosion inhibitors, a silicate and a silicone (col. 3 lines 35-42). Yang et al. further teach said polyelectrolyte polymer dispersant includes water soluble products such as polyether polyamino phosphonates (col. 9 lines 44-57) and may be present in amounts from 0.001 to 50% by weight (col. 11 lines 17-21). Note, Yang et al. actually cite and refer to the following reference, Chen (US 5,338,477 A), as to the chemical identity/structure of the polyether polyamino phosphonate suitable as the reference’s water soluble polymer or water soluble polyelectrolyte polymer dispersant (see col. 7 lines 4-6 and col. 9 lines 44-47 of Yang).
Chen et al. teach providing a polyether polyamino methylene phosphonate compound in an aqueous system (abstract and col. 6 lines 64-68). The polyether
polyamino methylene phosphonate has the formula:
PNG
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85
395
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Greyscale
where M is hydrogen or a suitable cation, e.g., sodium by the indication of alkali metals as the M, and R is independently hydrogen or methyl, preferably methyl (col. 5 lines 40-56 and col. 7 lines 1-35), which directly meets the claimed surfactant. Chen et al. teach the compound is useful as a deposit control agent to control the formation, deposition, and adherency of scale imparting compounds in an aqueous system, especially useful in water-based cooling and heat exchange systems prone to alkali earth metal-based scale (col. 1 line 13 to col. 2 line 65). In other words, Chen et al. directly teach the polyether polyamino methylene phosphonate compound as useful for providing to heat transfer/coolant fluids.
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to include the (anionic) dispersant polymer taught by Yang et al. to the compositions of Bonsignore et al. because both are concerned with thermal heat transfer fluids which utilize large amounts of polyhydric alcohols and water and further include surfactants/dispersants and corrosion inhibitors for their intended well known use. Alternatively, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to include the (anionic) polyether polyamino methylene phosphonate compound taught by Chen et al. to the compositions of Bonsignore et al. because both are concerned with water-based thermal heat transfer fluids comprising surfactants/dispersants/scale inhibitors for their intended well known use. Moreover, one skilled in the art would be motivated to include the (anionic) dispersant/surfactant of Yang et al. or the (anionic) scale inhibitor/dispersant of Chen et al. to the compositions of Bonsignore et al. because Bonsignore et al. invite the inclusion of dispersants/surfactants/general additives (para. 0056, 0057, 0060, 0074, and 0075) in their heat transfer medium composition and each of Yang et al. and Chen et al. specifically teach the anionic phosphonate as claimed as a conventional surfactant or scale inhibitor well known in the heat transfer technology for its intended purpose. Accordingly, in the absence of a showing to the contrary, one skilled in the art would have been motivated to include the specific phosphonate surfactant to further enhance stabilization, dispersion, or scale inhibition of such dispersions.
The remaining claim limitation(s) regarding the clusters of aluminum oxide nanoparticles being uncrushed is a product-by-process limitation describing how the clusters are prepared. Product-by-process limitations are not limited to the recited steps except to the extent they suggest structure of the product. Here, the claims require clusters of aluminum oxide with the recited size regardless of how such clusters were made. Accordingly, the rationale of record to the clusters of aluminum oxide meet the uncrushed clusters of aluminum oxide. In any event, please also note Bonsignore et al. does not require any crushing of their powder, further meeting the uncrushed clusters of aluminum oxide.
Claims 21, 24-30, 32, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Hong et al. (US 2008/0302998 A1).
Hong et al. teach a nanofluid composition comprising carbon nanoparticles, metal oxide nanoparticles and a surfactant in a thermal transfer fluid (abstract). Hong teaches the nanoparticles contain carbon nanotubes and metal oxides nanoparticles such as aluminum oxide (para. 0033 and 0044) within a thermal transfer fluid such as water, ethylene glycol, and propylene glycol (para. 0046); however, note that both a glycol component and a water component are entirely optional in the instant claims except for claim 32 that actually requires a certain concentration of both. Aluminum oxide is an exemplary metal oxide of Hong et al. (para. 0045 and the Examples, e.g., Example 6 at para. 0099 and Table 5). The direct disclosure of examples that solely contain aluminum oxide as the only metal oxide nanoparticle read on the claimed limitation that the nanopowder comprises nanoparticles comprising aluminum oxide. Hong further teaches the nanoparticles have a dimension, i.e., diameter, of up to 500 nm (para. 0029-0030; note, see also the disclosed morphologies of the nanoparticles at para. 0029 which equivalate the dimension to a diameter and morphology, e.g., nanocluster), which substantially overlaps the claimed particle size ranges of between 100 nm and 600 nm recited in claim 21 and between 200 nanometers and 500 nanometers recited in claim 24. Additionally, the formation, presence, and/or provision of nanoclusters as the nanoparticles of the reference (carbon nanoparticles and aluminum oxide nanoparticles) with the particular size as the reference’s nanoparticles per the cited teachings above reads on and meets the claimed limitation a size distribution curve of the clusters is at least 50% of Vpw (i.e., the volume of the nanopowder) as the reference disclosure encompasses the carbon nanoparticles and metal oxide/aluminum oxide nanoparticles both present as nanoclusters with the particular size(s) comprising at least a majority of (50%+) if not all of (100%) the reference’s nanoparticles. Hong et al. further teach the inclusion of surfactants having polar functional groups such as amides, amines, phosphates, phosphonates, sulfates, or sulfonates (para. 0047-0048). The surfactant may include a combination of anionic and nonionic surfactants (para. 0047 & 0065), which reads on the claimed limitation that the nanofluid comprises a blend of a polar nonionic surfactant and an anionic surfactant. See also the genera/species of nonionic surfactants listed at para. 0058 and the genera/species of anionic surfactants listed at para. 0048-0053. With respect to additional additives, Hong et al. teach the inclusion of buffering agents, corrosion inhibitors, defoamers and scale inhibitors (para. 0067). Specifically, buffers may include bases to establish a pH between 7.5 and 11 and comprise bases such as potassium hydroxide, sodium hydroxide, potassium carbonate, and sodium carbonate (para. 0068), corrosion inhibitor such as dicarboxylic acids, nitrates, phosphates, and azoles (para. 0069), defoamers such as silicones (para. 0070), and scale inhibitors such as phosphate esters and polyacrylates (para. 0071); the corrosion inhibitors also read on an acid by double inclusion; however, note that both a corrosive inhibitor component and an acid component are entirely optional in instant claims 21, 24-30, and 32. With respect to the proportions, Hong et al. teach that said thermal nanofluid comprises metal oxide particles in an amount from 0.1 to 30% by weight; thermal fluid such as propylene glycol in an amount up to 90%; surfactants in an amount from 0.1 to 30% (0078-0079), and additional additives in amounts up to 10% (0080). With further respect to the water, Hong et al. teach that water is present in amount from 0.1 to 90% (0085-0086). See also Example 6.
As to the claimed components of instant claims 21, 32, and 33, Hong et al. teach each of the disclosed components of the claimed invention for the purpose of producing a nanofluid thermal/heat transfer fluid composition. Hong et al. further suggest some components used for different purposes, but nonetheless would have been obvious to the skilled artisan given the broad terminology claimed, the components may read on several types of ingredients. It might be argued that some “picking and choosing” is required to arrive at the presently claimed invention of claims 21 and 31-33 (the presence of all the nanopowder, surfactant, and base additives at once per independent claim 31 and further comprising glycol and water and/or acid and corrosive inhibitor additives per dependent claims 31-33). Nevertheless, Hong et al. teach nanofluid thermal/heat transfer fluid compositions, and at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art for a composition, as taught by Hong et al., to contain each of aluminum oxide nanoparticle, surfactant, and base at once and further comprise glycol, water, acid, and corrosive inhibitors with a reasonable expectation of success because the reference is directed to nanofluid compositions containing such ingredients.
As to the claimed proportions of instant claims 21, 25-28, 32, and 33, Hong et al. teach in overlapping ranges, the amounts of each of the components claimed. Hong et al. do not particularly point out the ratios and addition of ratios as claimed.
However, at the time of the effective filing date it would have been obvious to the skilled artisan to arrange the components within the proportions and ratios as claimed given that Hong et al. teach a range of proportion of each of the claimed ingredients that encompasses the amounts and ratios as claimed. In the event Hong et al.’s proportions are slightly outside or below those instantly claimed, note Hong et al.’s disclosed ranges are merely general examples and the teachings of Hong et al. do not otherwise contain any indication of a teaching away from exploring other alternate or sufficient proportions outside the general ranges/examples disclosed. Moreover, Applicant has not proffered any criticality to the contrary, that would suggest unexpected results for the nanofluid composition claimed. Therefore, one skilled in the art would have been within their purview to determine the appropriate range and ratio of ingredients to suggest the claimed invention, in the absence of a showing to the contrary. “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
As to the recited pH ranges/values of instant claims 29 and 30, Hong et al. teach the inclusion of bases to establish a pH between 7.5 and 11 (Id. at para. 0068), which overlap and encompass the claimed pH range of about 8.5-12.0 and pH value of 10.0. Furthermore, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to arrive within the claimed limitation that the nanofluid has a pH of 10.0 and is within the purview of a person of ordinary skill in the art for a nanofluid composition, as taught by Hong et al., to contain such a pH value because Hong et al. teach suitable adjusting the pH of the composition within the range of 7.5 to 11 with strong base pH adjusting agents such as potassium hydroxide, sodium hydroxide, potassium carbonate, and/or sodium carbonate (Id.).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Hong et al. (US 2008/0302998 A1) as applied to claims 21, 24-30, 32, and 33 above, and further in view of Yang et al. (US 7,744,775 B2) or Chen et al. (US 5,338,477 A).
The disclosure of Hong et al. is relied upon as set forth above.
Hong et al. teach a heat transfer medium composition comprising components meeting the claimed nanofluid comprising a nanopowder comprising nanoparticles that are (nano)clusters comprising aluminum oxide, a surfactant comprising a blend of an anionic surfactant and a nonionic surfactant, and a base additive, as well as further including a glycol, water, and other additives, as described above.
Hong et al. teach the anionic surfactant may include a phosphonate (Id. at para. 0048), but Hong et al. fail to teach the surfactant is the specific sodium salt solution of polyamino-polyether-methylene-phosphonic acid as recited in claim 22.
However, Yang et al. teach a heat transfer fluid comprising 5-99% of a freezing point depressant such as glycols, water in an amount from 0.1 to 90% and in addition, additives, surfactants, scale inhibitors, dispersants and mixtures thereof (abstract, col. 3 lines 11-22). Yang et al. further teach the presence of an inorganic phosphate, 0.001 to 20% of dicarboxylic acids (col. 12 lines 5-16), a polyelectrolyte polymer, corrosion inhibitors, a silicate and a silicone (col. 3 lines 35-42). Yang et al. further teach said polyelectrolyte polymer dispersant includes water soluble products such as polyether polyamino phosphonates (col. 9 lines 44-57) and may be present in amounts from 0.001 to 50% by weight (col. 11 lines 17-21). Note, Yang et al. actually cite and refer to the following reference, Chen et al. (US 5,338,477 A), as to the chemical identity/structure of the polyether polyamino phosphonate suitable as the reference’s water soluble polymer or water soluble polyelectrolyte polymer dispersant (see col. 7 lines 4-6 and col. 9 lines 44-47 of Yang).
Chen et al. teach providing a polyether polyamino methylene phosphonate compound in an aqueous system (abstract and col. 6 lines 64-68). The polyether
polyamino methylene phosphonate has the formula:
PNG
media_image1.png
85
395
media_image1.png
Greyscale
where M is hydrogen or a suitable cation, e.g., sodium by the indication of alkali metals as the M, and R is independently hydrogen or methyl, preferably methyl (col. 5 lines 40-56 and col. 7 lines 1-35), which directly meets the claimed surfactant. Chen et al. teach the compound is useful as a deposit control agent to control the formation, deposition, and adherency of scale imparting compounds in an aqueous system, especially useful in water-based cooling and heat exchange systems prone to alkali earth metal-based scale (col. 1 line 13 to col. 2 line 65). In other words, Chen et al. directly teach the polyether polyamino methylene phosphonate compound as useful for providing to heat transfer/coolant fluids.
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to include the (anionic) dispersant polymer taught by Yang et al. to the compositions of Hong et al. because both are concerned with thermal heat transfer fluids which utilize large amounts of polyhydric alcohols and water and further include surfactants/dispersants and corrosion inhibitors for their intended well known use. Alternatively, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to include the (anionic) polyether polyamino methylene phosphonate compound taught by Chen et al. to the compositions of Hong et al. because both are concerned with water-based thermal heat transfer fluids comprising surfactants/dispersants/scale inhibitors for their intended well known use. Moreover, one skilled in the art would be motivated to include the (anionic) dispersant/surfactant of Yang et al. or the scale inhibitor/dispersant of Chen et al. to the compositions of Hong et al. because Hong et al. invite the inclusion of dispersants/surfactants/scale inhibitor (para. 0047 and 0067) in their thermal heat transfer fluid and each of Yang et al. and Chen et al. specifically teach the anionic phosphonate as claimed as a conventional surfactant or scale inhibitor well known in the heat transfer technology for its intended purpose. Accordingly, in the absence of a showing to the contrary, one skilled in the art would have been motivated to include the specific phosphonate surfactant to further enhance stabilization or scale inhibition of such dispersions (Hong et al., para. 0047 and 0067).
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:
It is noted the nanopowder-related limitations of claims 34 and 40 are more limited than those of claim 21. Claim 21 recites open-ended “comprising” language (the nanopowder comprises nanoparticles that comprise aluminum oxide that are clusters in a range between 100 nm and 600 nm) whereas claims 34 and 40 recite a mix of open-ended “comprising” language and close-ended “consisting of” language (the nanopowder comprises nanoparticles each consisting of aluminum oxide that are clusters in a range between 100 nm and 600 nm). The claims are also further limited by the recitation of a size distribution curve of the clusters is at least 50% of Vpw (the volume of the nanopowder). While Hong et al. meets the broad scope of claim 21 (Id.), Hong et al. fail to teach, suggest, or meet the limitations of claims 34 and 40 because their composition comprises both carbon nanoparticles and metal oxide, e.g., aluminum oxide, nanoparticles. While each or all nanoparticles may be nanoclusters, Hong et al. fail to articulate or suggest with sufficient specificity that nanoparticle clusters, each consisting of aluminum oxide, are at least 50% of the volume of nanopowder present alongside their required carbon nanoparticle component. Even if one of ordinary skill in the art were to formulate Hong et al.’s carbon nanoparticles in a different morphology than nanoclusters (e.g., nanotubes, nanocrystals, etc.) and formulate the metal oxide/aluminum oxide nanoparticles as nanoclusters, there is no teaching or suggestion in the reference that the metal oxide/aluminum oxide nanoclusters would fairly or obviously constitute at least 50% of the volume of all nanopowder(s) as claimed.
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.
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
August 26, 2026
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