DETAILED ACTION
Drawings
The Drawings filed 07 February 2024 are approved by the examiner.
Information Disclosure Statement
The information disclosure statement(s) (IDS) is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are being considered by the examiner and an initialed copy is attached.
Priority
Receipt is acknowledged of the certified copies of papers required by 37 CFR 1.55.
Citation Notation
The following citations are made for the convenience of the reader:
Citations to PG publications are made to paragraph number under the ¶ format. Citations to other publications made under the format “ col 1/2” or pp 1 are directed to column and line number or to a page - whichever is appropriate. It is noted that any reference to a figure or a table is also directed to any accompanying text in the specification or the document. Notwithstanding those citations, the reference(s) is (are) relied upon for the teachings as a whole.
Claim Rejections - 35 USC § 102
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.
Examiner’s remark: it is noted that the density, specific heat, thermal conductivity and kinematic viscosity values have been converted to the same units as applicant’s to include in the formula of claim 1 where possible.
Claim(s) 1 and 7-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsubouchi (US-20120283162-A1).
Claim 1: Tsubouchi discloses a coolant composition having a base oil having various properties such as a density of 0.82, a Cp of 2.02, thermal conductivity of 0.144 and kinematic viscosity of 30 which results in a C value of 0.0333 based on the claimed formula. (abs, ¶13-16, 30-33, examples and Tables 1-4 with accompanying text).
Claims 7-9: Tsubouchi discloses the claimed additives such as antioxidant, viscosity index improver and detergent (¶37-45 and Tables 1-4 with accompanying text).
Claim 10: Tsubouchi discloses the excellent electrical insulation and “a volume resistivity at 25 degrees C. of 1010 Ω·cm or more, more preferably 1011 Ω·cm or more, further preferably 1012 Ω·cm or more“ – thus meeting the claimed range (¶1, 5, 10-16, 96, 113).
Claims 11 and 12: Tsubouchi discloses the coolant composition being used to cool various material such as coils and transmission (¶1-7, 113-115 and examples).
Claim(s) 1 and 7-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kojima (WO2022/045050A1, cited in the IDS – the US equivalent US-20230272297-A1 is cited for translation purposes).
Claim 1: Kojima discloses a coolant composition having a base oil having various properties such as a density of 0.857, a Cp of 1.67, thermal conductivity of 0.141 and kinematic viscosity of 706 which results in a C value of 0.044497 based on the claimed formula. (abs, ¶27-58, 101-135, examples and Tables 1-3 with accompanying text).
Claims 7-9: Kojima discloses the claimed additives such as antioxidant, viscosity index improver and detergent (¶150-163 and Tables 1-3 with accompanying text).
Claim 10: Kojima discloses the excellent electrical insulation and “the volume resistivity at 25° C. defined by the requirement (6) is preferably 1.00×109 Ω·m or more, more preferably 5.00×109 Ω·m or more, even more preferably 8.00×109 Ω·m or more, and is generally 1.00×1013 Ω·m or less“ thus meeting the claimed range (¶138-142 and Tables 1-3 with accompanying text).
Claims 11 and 12: Kojima discloses the coolant being used to cool various devices such as coils, motors, converters and transmission (¶164-177 and examples).
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.
Claim(s) 2-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsubouchi or Kojima.
The Tsubouchi or Kojima reference discloses the claimed invention but does not explicitly disclose the claimed parameters such as loading ranges of the mineral oil, number of carbon, distillation temperature and paraffin volume. It is noted that the claimed ranges and number of carbons are construed as result-effective variables, i.e., a variable which achieves a recognized result. Here, Tsubouchi or Kojima discloses employing mineral oils with the number of carbons being greater than 23 or between 1-18 and various ranges such as greater than 10 % to gain the benefit of achieving enhanced cooling and electrical resistivity (Tsubouchi: ¶22-23, 34 & Kojima: ¶91-07 and examples). Given that the Tsubouchi or Kojima reference discloses a similar coolant to achieve a similar cooling effect in similar end-products, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization such as varying the amount and types of the mineral oils, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize known variables since the references also discloses a similar end-product. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components and steps would be repugnant to a skilled artisan.
Regarding the claimed properties such as the weight distillation and paraffin volume measurements, it is noted that the claimed variables are merely measurements of the composition according to the known ASTM standard – thus, if a prior art reference teaches the substantially identical material/composition, it would be reasonable that the same function and/or property would be imparted or exhibited. See MPEP 2112.01. Applicant is welcomed to provide any evidence that the disclosed material is exceedingly different from the claimed material - thus the claimed properties would inevitably not be present.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRI V NGUYEN whose telephone number is (571)272-6965. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuthers can be reached at 571.272.7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TRI V NGUYEN/Primary Examiner, Art Unit 1764
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