DETAILED ACTION
(1)
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 . Applicant’s amendment, filed June 15, 2026, is entered. Applicant amended claims 1-11 and 13-20, cancelled claim 12, and added claim 21. No new matter is entered. Claims 1-11 and 13-21 are pending before the Office for review.
(2)
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 applicant regards as his invention.
Claims 1-11 and 13-21 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.
Claim 1 depends from itself, rendering its claim scope ambiguous. Specifically, it’s unclear if claim 1 should be an independent or dependent claim. Applicant should delete “of claim 1” from line 2 to clarify the claimed invention.
Claim 14 recites the limitation "the total weight" in line 18. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites the limitation "the total weight" in line 18. There is insufficient antecedent basis for this limitation in the claim.
Claim 21 recites the limitation "the total weight" in line 9. There is insufficient antecedent basis for this limitation in the claim.
Therefore, the claims are indefinite because their scope is unascertainable to one ordinarily skilled in the art. Claims 2-11, 13 and 16-20 are rejected due to their dependency on claim 1.
(3)
Claim Rejections - 35 USC § 102
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 21 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Riemschneider (U.S. Patent No. 2,973,388).
With respect to claim 21, Examiner notes the statement “thermal management” is an intended use recitation that does not further limit the claimed invention. Any fluid meeting the requirements of the claimed invention is capable of the same use absent evidence to the contrary.
Riemschneider teaches a lubricating composition (fluid) comprising an ether represented by the following formula:
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Col. 2, Line 4.
Riemschneider’s ether meets the requirements of the claimed invention when R3 is a C1-C5 alkyl, R4 is a divalent aliphatic hydrocarbon radical containing 2 carbon atoms and R5 is a C6 to C12 alkyl, which is branched. Col. 1, Lines 65-68 and Col. 2, Lines 5-10. This corresponds to the claimed compound when m is 1, R1 is a C1 to C5 alkyl and R2 is a C2H3(CH3)C3H7 substituent, which is within the scope of Riemschneider’s disclosure.
Riemschneider teaches the ether itself, meaning it is 100 wt% based on the total weight of the ether. Col. 2, Line 4.
Regarding the flash point of the ether, its dielectric constant and its kinematic viscosity, Examiner notes that the courts have held that "a compound and all its properties are mutually inseparable," In re Papesch, 315 F.2d 381 (CCPA 1963). Additionally, as per the MPEP, the "products of identical chemical compositions cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present." MPEP 2112.01 (internal citation omitted). In this case, Riemschneider’s ether is within the scope of the claimed invention, meaning the properties are present.
(4)
Claim 21 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ohashi et al. (U.S. Patent No. 4,385,190).
With respect to claim 21, Examiner notes the statement “thermal management” is an intended use recitation that does not further limit the claimed invention. Any fluid meeting the requirements of the claimed invention is capable of the same use absent evidence to the contrary.
Ohashi teaches an ether represented by the following formula:
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. Col. 3, Lines 25.
Ohashi’s ether meets the requirements of the claimed invention when R1 is a methyl or ethyl, R2 is a C1 to C12 carbon further substituted with a lower alkyl group, such as methyl, and m and n are 1. Col. 3, Lines 26-36. This corresponds to the claimed compound when m is 1, R1 is a C1 to C2 alkyl and R2 is a C2H3(CH3)C3H7 substituent, which is within the scope of Ohashi’s disclosure.
Ohashi teaches the ether itself, meaning it is 100 wt% based on the total weight of the ether. Col. 3, Line 25.
Regarding the flash point of the ether, its dielectric constant and its kinematic viscosity, Examiner notes that the courts have held that "a compound and all its properties are mutually inseparable," In re Papesch, 315 F.2d 381 (CCPA 1963). Additionally, as per the MPEP, the "products of identical chemical compositions cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present." MPEP 2112.01 (internal citation omitted). In this case, Ohashi’s ether is within the scope of the claimed invention, meaning the properties are present.
(5)
Allowable Subject Matter
Claims 1, 14 and 15 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 2-11, 13 and 16-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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 prior art of record, individually or in combination, fails to teach or fairly suggest the use of the compound of claims 1, 14 or 15 in the method recited therein, wherein the compound is used in a thermal management function for heat removal. The prior art of record further fails to teach or fairly suggest a battery system comprising the fluid of claim 14 in a fluid path extending in the housing and in thermal communication with the one or more electrochemical cells of the battery, as required by claim 14. The prior art of record also fails to teach or fairly suggest a thermal management circuit comprising the fluid of claim 15 in a fluid path extending around a heat source, as required by claim 15.
(6)
Response to Arguments
Applicant’s arguments are moot in view of the new grounds of rejection. Applicant’s amendment necessitated the rejection. The following remarks are responsive to the portion of Applicant’s arguments that are relevant to the new grounds of rejection.
Applicant argues the art of record does not teach the claimed compound. Examiner disagrees. The claimed compound is disclosed in the art of record, as explained above.
(7)
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI S MEKHLIN whose telephone number is (571)270-7597. The examiner can normally be reached Monday-Friday 7:00 am to 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELI S MEKHLIN/Primary Examiner, Art Unit 1759
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