Prosecution Insights
Last updated: April 19, 2026
Application No. 18/547,819

Dielectric Thermal Management Fluids and Methods for Using Them

Non-Final OA §102§103§112
Filed
Aug 24, 2023
Examiner
MERKLING, MATTHEW J
Art Unit
1725
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Castrol Limited
OA Round
1 (Non-Final)
68%
Grant Probability
Favorable
1-2
OA Rounds
3y 0m
To Grant
81%
With Interview

Examiner Intelligence

Grants 68% — above average
68%
Career Allow Rate
851 granted / 1253 resolved
+2.9% vs TC avg
Moderate +13% lift
Without
With
+13.3%
Interview Lift
resolved cases with interview
Typical timeline
3y 0m
Avg Prosecution
53 currently pending
Career history
1306
Total Applications
across all art units

Statute-Specific Performance

§101
0.5%
-39.5% vs TC avg
§103
49.1%
+9.1% vs TC avg
§102
26.3%
-13.7% vs TC avg
§112
18.2%
-21.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1253 resolved cases

Office Action

§102 §103 §112
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. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis ( i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. Specification The specification and drawings have been reviewed and no clear informalities or objections have been noted. Claim Rejections - 35 USC § 112 The following is a quotation of 35 U.S.C. 112(b): (b ) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the appl icant regards as his invention. Claims 7, 9 and 20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Regarding claim 7, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). C laim 9 is unclear as Applicant has not defined R e or R f . Clarification is required. Claim 20 is unclear as Applicant has recited R e two times when defining the composition of each R constituent. Clarification is required. Claim 14 recites the limitation "the heat exchanger", “the pump” and “the connecting duct” in lines 5-6. There is insufficient antecedent basis for this limitation in the claim. 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Claim (s) 1 and 9 is/are rejected under 35 U.S.C. 10 2(a)(2) as being anticipated by Saitou (US 2021/0261801). Regarding claims 1 and 9 , Saitou discloses a thermal management fluid comprising: one or more dielectric compounds of formula (I): wherein n is an integer 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, or 12; m is an integer 1, 2, or 3; R 1 is C 1 -C 5 alkyl; R 2 is C 1 -C 5 alkyl; each R 3 , R 4 , R 5 , and R 6 are independently selected from H, C 1 -C 8 alkyl, and R 7 O—(CH 2 ) 0-1 —, wherein R 7 is C 1 -C 5 alkyl, provided no more than two of R 3 , R 4 , R 5 , and R 6 are R 7 O—(CH 2 ) 0-1 —; (see paragraph 67 which discloses a liquid of ethylene glycol di-tert-butyl ether which also matches the composition of claim 9 ). the one or more dielectric compounds being present in a total amount in the range of 1 wt % to 100 wt %, based on the total weight of the thermal management fluid (see paragraph 6 7 which states that that a solvent can this compound which indicates that 100% of the fluid is ethylene glycol di-tert-butyl ether) ; and wherein the thermal management fluid has a flash point of at least 100° C., measured in accordance with ASTM D93, and the thermal management fluid has a dielectric constant of at least 1.5 at 25° C (while Saitou does not explicitly state the flash point and the dielectric constant, the composition disclosed by Saitou is identical to that claimed and therefore, these physical and electric properties are assumed to be present . Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Furthermore, t he italicized portion in the preamble does not further define the claimed composition as it is merely directed toward an intended use of the claimed composition. See MPEP §2111.02. Claim (s) 1 , 9 and 11-18 is/are rejected under 35 U.S.C. 10 2(a)(2) as being anticipated by Short (US 202 2 / 0259476 ). Regarding claims 1 and 9 , S hort discloses a thermal management fluid comprising: one or more dielectric compounds of formula (I): wherein n is an integer 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, or 12; m is an integer 1, 2, or 3; R 1 is C 1 -C 5 alkyl; R 2 is C 1 -C 5 alkyl; each R 3 , R 4 , R 5 , and R 6 are independently selected from H, C 1 -C 8 alkyl, and R 7 O—(CH 2 ) 0-1 —, wherein R 7 is C 1 -C 5 alkyl, provided no more than two of R 3 , R 4 , R 5 , and R 6 are R 7 O—(CH 2 ) 0-1 —; (see Table 1 which discloses diethylene glycol dibutyl ether as a heat transfer fluid ). the one or more dielectric compounds being present in a total amount in the range of 1 wt % to 100 wt %, based on the total weight of the thermal management fluid (see Table 1 which states that that the solvent is 100% of the fluid is diethylene glycol dibutyl ether ) ; and wherein the thermal management fluid has a flash point of at least 100° C., measured in accordance with ASTM D93, and the thermal management fluid has a dielectric constant of at least 1.5 at 25° C ( diethylene glycol dibutyl ether exhibits these properties) . Regarding claim 11 , Short further discloses that the heat transfer fluid, such as the diethylene glycol dibutylether further comprise an additive that is in the amount of 0.1-1 wt% which would indicate that the diethylene glycol dibutyl ether is in the range of 99-99.9%). Regarding claim 12 , while Short does not explicitly state the viscosity , the composition disclosed by Short is identical to that claimed and therefore, these physical and electric properties are assumed to be present . Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) Regarding claims 13 -18 , Short further discloses a method comprising: contacting the thermal management fluid with a surface having a temperature of at least 25° C (batteries in vehicles that are in ambient temperature above 50 C, have a surface that is above 50 C) ., the surface being in substantial thermal communication with a heat source; and absorbing thermal energy in the thermal management fluid from the heat source through the surface (see paragraph 25 which discloses that the heat transfer fluid is pumped through an exchanger and brought into contact with a battery system of an electric vehicle) , 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) 1 -4, 7, 8 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iwamoto (JP 2005084074) . Regarding claim s 1 , 7 and 8 , Iwamoto discloses a thermal management fluid comprising: one or more dielectric compounds of formula (I): wherein n is an integer 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, or 12; m is an integer 1, 2, or 3; R 1 is C 1 -C 5 alkyl; R 2 is C 1 -C 5 alkyl; each R 3 , R 4 , R 5 , and R 6 are independently selected from H, C 1 -C 8 alkyl, and R 7 O—(CH 2 ) 0-1 —, wherein R 7 is C 1 -C 5 alkyl, provided no more than two of R 3 , R 4 , R 5 , and R 6 are R 7 O—(CH 2 ) 0-1 —; (see the table on pages 94-97 which give several examples of compositions that fall within the claimed range of polyethers, including compound ST-IV- 2 8 which disclo ses a composition as described above where R 1 is C 4 alkyl and m is 1 ). the one or more dielectric compounds being present in a total amount in the range of 1 wt % to 100 wt %, based on the total weight of the thermal management fluid (such a range encompasses essentially all cases of an amount of Formula (I) in a composition) ; and wherein the thermal management fluid has a flash point of at least 100° C., measured in accordance with ASTM D93, and the thermal management fluid has a dielectric constant of at least 1.5 at 25° C (while Iwamoto does not explicitly state the flash point and the dielectric constant, the composition disclosed by Iwamoto is identical to that claimed and therefore, these physical and electric properties are assumed to be present . Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Furthermore, t he italicized portion in the preamble does not further define the claimed composition as it is merely directed toward an intended use of the claimed composition. See MPEP §2111.02. Finally, while Iwamoto does not explicitly disclose the claimed weight percentage of Formula I in a fluid, considering Applicant has claimed essentially all possible weight percentages, arriving at the claimed range would have been obvious to one of ordinary skill in the art at the time of the invention. Regarding claim 2 , Iwamoto further discloses each of the one or more compounds contains a total number of carbon atoms from 10 to 50 (see composition of ST-IV-28 which contains 10 carbon atoms) Regarding claim 3 , Iwamoto further discloses n is an integer in the range of 1-4 (it is 1, as illustrated by compound ST-IV-28) , and R 3 is H or C 1 -C 8 alkyl (R 3 is H in ST-IV-28) . Regarding claim 4 , Iwamoto further discloses each of R 4 , R 5 , and R 6 is H, i.e., the compounds have the formula : (such is the case with composition ST-IV-28). Regarding claim 20 , Iwamoto further discloses the one or more compounds of formula (I) have the formula wherein the one or more compounds of formula (I) have the formula in which each of R a , R b , R d , R e , R g , R h , R e , R j , and R k is independently methyl, and each of R c , R f , R i , and R l is independently methyl or ethyl (see ST-IV-59 which discloses the claimed compound) . Claim (s) 1 , 5, 10 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jia ( “ Comparative Study on Catalytic Dehydration of Glycerol with Alcohols ” , J. Braz. Chem. Soc ., Vol. 30, No. 4, 851-858, 2019 ). Regarding claim s 1 , 5 , 10 and 19 , Jia discloses a thermal management fluid comprising: one or more dielectric compounds of formula (I): wherein n is an integer 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, or 12; m is an integer 1, 2, or 3; R 1 is C 1 -C 5 alkyl; R 2 is C 1 -C 5 alkyl; each R 3 , R 4 , R 5 , and R 6 are independently selected from H, C 1 -C 8 alkyl, and R 7 O—(CH 2 ) 0-1 —, wherein R 7 is C 1 -C 5 alkyl, provided no more than two of R 3 , R 4 , R 5 , and R 6 are R 7 O—(CH 2 ) 0-1 —; (see the table 2 which give several examples of compositions that fall within the claimed range of polyethers, including tri-tert-butyl glycerol ether which discloses a composition as described above where n is 1 and R 3 is R 7 O—(CH 2 )— ). the one or more dielectric compounds being present in a total amount in the range of 1 wt % to 100 wt %, based on the total weight of the thermal management fluid (such a range encompasses essentially all cases of an amount of Formula (I) in a composition) ; and wherein the thermal management fluid has a flash point of at least 100° C., measured in accordance with ASTM D93, and the thermal management fluid has a dielectric constant of at least 1.5 at 25° C (while Jia does not explicitly state the flash point and the dielectric constant, the composition disclosed by Jia is identical to that claimed and therefore, these physical and electric properties are assumed to be present . Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Furthermore, t he italicized portion in the preamble does not further define the claimed composition as it is merely directed toward an intended use of the claimed composition. See MPEP §2111.02. Finally, while Jia does not explicitly disclose the claimed weight percentage of Formula I in a fluid, considering Applicant has claimed essentially all possible weight percentages, arriving at the claimed range would have been obvious to one of ordinary skill in the art at the time of the invention. Allowable Subject Matter Claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter: The closest prior art, Iwamoto, does not teach or suggest a composition where n is 3 and R5 and R6 are the claimed composition . Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT MATTHEW J MERKLING whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-9813 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Monday - Thursday 8am-6pm . Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FILLIN "SPE Name?" \* MERGEFORMAT Basia Ridley can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-272-1453 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MATTHEW J MERKLING/ Primary Examiner, Art Unit 1725
Read full office action

Prosecution Timeline

Aug 24, 2023
Application Filed
Mar 06, 2026
Non-Final Rejection — §102, §103, §112 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12599885
METHODS OF PNEUMATIC CARBON REMOVAL
2y 5m to grant Granted Apr 14, 2026
Patent 12603294
LITHIUM-ION SUPPLY ELECTRODE FOR REAL-TIME MICROSCOPIC ANALYSIS AND METHOD OF MANUFACTURING SAME
2y 5m to grant Granted Apr 14, 2026
Patent 12595177
CARBONACEOUS MATERIAL FOR ELECTROCHEMICAL DEVICE, PRODUCTION METHOD THEREFOR, NEGATIVE ELECTRODE FOR ELECTROCHEMICAL DEVICE, AND ELECTROCHEMICAL DEVICE
2y 5m to grant Granted Apr 07, 2026
Patent 12597638
SOLID ELECTROLYTE MEMBRANE, ALL-SOLID-STATE BATTERY USING THE SAME AND METHODS OF MANUFACTURING THEREOF
2y 5m to grant Granted Apr 07, 2026
Patent 12586808
Apparatus and Method for Manufacturing Unit Cells
2y 5m to grant Granted Mar 24, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

AI Strategy Recommendation

Get an AI-powered prosecution strategy using examiner precedents, rejection analysis, and claim mapping.
Powered by AI — typically takes 5-10 seconds

Prosecution Projections

1-2
Expected OA Rounds
68%
Grant Probability
81%
With Interview (+13.3%)
3y 0m
Median Time to Grant
Low
PTA Risk
Based on 1253 resolved cases by this examiner. Grant probability derived from career allow rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month