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 .
Response to Amendment
Upon entry of the amendment filed on 19 May 2026, Claim(s) 1-6 and 8-12 is/are amended and Claims 13-19 are added. The currently pending claims are Claims 1-19.
Based on applicants’ remarks and amendments (e.g. the specific temperature of the C value), the rejections are withdrawn. However, new grounds of rejections are provided necessitated by the amendments.
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.
Claim(s) 1-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kojima in view of Smith (US-20130012421-A1).
Claims 1 and 10: 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). Thus, Kojima discloses that it is well known to optimize the known variables.
The Kojima reference discloses the claimed invention but does not explicitly disclose the feature of optimizing the cooling conditions at 40 0C. It is noted that the Kojima reference discloses optimizing the cooling conditions at temperatures (see Tables 1-3 with accompanying text) and the claim(s) call(s) for a measurement at 40 0C. In an analogous art, the Smith reference discloses measuring the cooling conditions at various temperatures such as 40 0C is well known in the art to gain the benefit of optimizing the cooling and/or insulating behavior of a coolant (abs, Tables 1-4 with accompanying text). One of ordinary skill in the art would have recognized that applying the known technique of Smith to the teachings of Kojima would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions for the benefit gain of optimizing the cooling and/or electrical insulating features of a coolant. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the substitution and/or optimization would be repugnant to a skilled artisan.
Claims 2-6 and 13-19: Kojima and Smith disclose the claimed invention but does not explicitly disclose the claimed parameters such as loading ranges of the mineral oil, the specific ester base oil and poly alpha olefin oil, the number of carbons, the distillation temperature and the 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, Kojima and Smith disclose 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 (Kojima: ¶91-07 and examples). Further, Kojima and Smith disclose each of the claimed components of the base oil, i.e. mineral oil, PAO and ester oils with similar loading amounts (Kojima: ¶99-110, 206 and Tables 1-3 with accompanying text & Smith: ¶10-28 and Tables 1-3 with accompanying text). Given that Kojima and Smith disclose a similar coolant to achieve a similar cooling and electrical resistivities effects 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 components and ranges through process optimization such as selecting and varying the amount and types of the mineral oils, PAO oil and ester 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 welcome to provide any evidence that the disclosed material is exceedingly different from the claimed material - thus the claimed properties would inevitably not be present.
Claims 7-9: Kojima and Smith disclose the claimed additives such as antioxidant, viscosity index improver and detergent (Kojima: ¶150-163 and Tables 1-3 with accompanying text &: Smith: ¶35-38).
Claims 11 and 12: Kojima and Smith disclose the coolant being used to cool various devices such as coils, motors, converters and transmission (Kojima: ¶164-177 and examples & Smith: ¶2-8 and examples).
Response to Arguments
Applicant’s arguments, filed 19 May 2026, with respect to the Tsubouchi and Kojima have been fully considered and are persuasive. The rejections have been withdrawn.
Applicant’s arguments with respect to claims 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. In particular, it is noted that the Smith reference is relied upon to teach the optimization and measurement at 40 0C (see above).
Applicant argues the unexpected results based on Preparation example 6.
The examiner respectfully disagrees. In order to overcome the prima facie case, the applicant may show (1) criticality or unexpected result of the range, (2) the prior art teaches away from the claim or (3) pertinent secondary factors to rebut the rejection under 35 USC 103. MPEP 2144.05. Here, the applicant intends to show criticality or unexpected result of C value based on example 6. However, it is noted that the showing of example 6 is not commensurate with the instant claim 1 (see the specific values, components and loading amounts in contrast to the broader claim 1). In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness. Thus, the showing has been found insufficient to overcome the rejections and the rejections are maintained.
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.
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/TRI V NGUYEN/ Primary Examiner, Art Unit 1764
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