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 preliminary amendment, filed August 24, 2023, is entered. Applicant amended claims 9 and 12-15 and added claims 16-20. No new matter is entered. Claims 1-20 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 appl icant regards as his invention. Claims 1-20 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. Claim 1 recites the limitation "the total weight" in line 12. There is insufficient antecedent basis for this limitation in the claim. Regarding claim 4, 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). Regarding claim 5 , 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). Therefore, the claims are indefinite because their scope is unascertainable to one ordinarily skilled in the art. Claims 2-20 are rejected due to their dependency on claim 1. (3) 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. Claim s 1, 3-8, 10 and 11 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Riemschneider (U.S. Patent No. 2,973,388) . With respect to claims 1, 3, 4, 5, 6, 7 , 8, 10 and 11 , 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: Col. 2, Line 4. Riemschneider ’s ether meets the requirements of the claimed invention when R 3 is a C 1 -C 5 alkyl, R 4 is a divalent aliphatic hydrocarbon radical containing 2 carbon atoms and R 5 is a C 6 to C 12 alkyl. Col. 2, Lines 5-10. This corresponds to the claimed compound when m and n are 1, R 1 is a C 1 to C 5 alkyl, R 2 is a C 6 -C 12 alkyl and each of R 3 , R 4 , R 5 and R 6 are hydrogen. 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, Riemschneide r’s ether is within the scope of the claimed invention, meaning the properties are present. (4) Claim s 1-8, 10 and 11 are 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 claims 1, 3, 4, 5, 6, 7, 8, 10 and 11 , 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: . Col. 3, Lines 25. Ohashi’s ether meets the requirements of the claimed invention when R 1 is a methyl or ethyl , R 2 is a C 6 to C 12 carbon and m and n are 1 . Col. 3, Lines 26-36 . This corresponds to the claimed compound when m and n are 1, R 1 is a C 1 to C 2 alkyl, R 2 is a C 6 -C 12 alkyl and each of R 3 , R 4 , R 5 and R 6 are hydrogen. 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. With respect to claim 2 , Ohashi teaches the straight chain alkyl group of R 2 is substituted with lower alkyl groups, meaning it is branched within the scope of the claimed invention. Col. 2, Lines 26-36. (5) Claim s 1 , 3 -8, 10 and 11 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Shuichi et al. (JP 2005-84074 A), which is cited in Applicant’s information disclosure statement. The citations to Shuichi refer to the included English language machine translation. With respect to claims 1, 3, 4, 5, 6, 7, 8, 10 and 11 , 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. Shuichi teaches an compound represented by the following formula: . Paragraph 13 . Shuichi’s compound meets the requirements of the claimed invention when R 111 is a n aliphatic hydrocarbon, such as methyl or ethyl, R 11 2 is a n aliphatic hydrocarbon, such as a C 6 to C 12 carbon , J 11 is a direct bond and n 10 is 1. Paragraph bridging pages 7-8 . This corresponds to the claimed compound when m and n are 1, R 1 is a C 1 to C 2 alkyl, R 2 is a C 6 -C 12 alkyl and each of R 3 , R 4 , R 5 and R 6 are hydrogen. Shuichi teaches the compound itself, meaning it is 100 wt% based on the total weight of the ether. Paragraph bridging pages 7-8. 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, Shuichi ’s compound is within the scope of the claimed invention, meaning the properties are present. (6) 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. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. Claim s 2 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Riemschneider (U.S. Patent No. 2,973,388). With respect to claims 2 and 9 , Riemschneider further teaches embodiments of the ether compound wherein the alkyl group is branched. Col. 1, Line 66 to Col. 2, Line 2. Riemschneider teaches ether compounds containing this substituent group are also useful as synthetic lubricants. Col. 1, Lines 60-61. Therefore, it would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to modify Riemschneider ’s ether to contain a branched alkyl group because Riemschneider teaches such a modification also obtains a useful lubricant, meaning the modification has a reasonable expectation of success. Furthermore, modified Riemschneider teaches the branched alkyl is a C 2 to C 18 alkyl, which covers compound such as the first one recited in claim 9, when the corresponding R groups are hydrogen, R 1 is methyl and R 2 is a C 8 branched alkyl. (7) Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Ohashi et al. (U.S. Patent No. 4,385,190). With respect to claim 9 , Ohashi , as explained above, teaches the straight chain alkyl group of R 2 is substituted with lower alkyl groups, meaning it is branched within the scope of the claimed invention. Col. 2, Lines 26-36. Furthermore, the branched substituent group is a C 1 to C 12 carbon that is further branched, meaning compounds such as the first recited in claim 9 are within the scope of Ohashi’s disclosure. It would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to modify Ohashi’s substituent group with a branched alkyl because Ohashi teaches doing so obtains an effective ether compound, meaning the modification has a reasonable expectation of success. (8) Allowable Subject Matter Claims 12-20 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 claim 1 in the method recited by claim 12, 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 1 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 1 in a fluid path extending around a heat source, as required by claim 15. (9) Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT ELI S MEKHLIN whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-7597 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Monday-Friday 7:00 am to 5:00 pm EST . 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. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ELI S MEKHLIN/ Primary Examiner, Art Unit 1759