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 .
This action is responsive to Applicant’s amendment/remarks filed 07/31/2026.
Claims 1-16 and 18-21 are currently pending, of which claims 14 and 15 are withdrawn.
The IDS statement filed 08/28/2026 has been considered. An initialed copy accompanies this action.
The rejection of claims 1-4, 6-8, 10, 11, 13, 16, and 18-21 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the above amendment. However, the 112(b) rejections of claims 5 and 9 are maintained and has been revised below to reflect the changes in claim scope made by Applicant’s present claim amendments.
The 102 rejection over Pfitzner et al. (US 5,454,967 A) is withdrawn in view of the above amendment.
However, the 103 rejections over or based on Pfitzner et al. (US 5,454,967 A) are maintained and has been revised below to reflect the changes in claim scope made by Applicant’s present claim amendments. The current rejection also utilizes new optional secondary references. Hann et al. (US 4,530,766 A) and Turcotte et al. (US 5,290,468 A), combined with Pfitzner et al. under new ground(s) of rejection which render obvious the instant claims. See below.
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 5 and 9 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 5 recites “wherein component (C) is selected from the group consisting of monophosphates, diphosphates, triphosphates, oligophosphates, carbonates, hydrogencarbonates, sulfates, and hydrogensulfates as the free acid, and an alkali metal salt.” This limitation recites the component (C) may be selected to be merely “an alkali metal salt”. However, parent claim 1 requires component (C) is “at least one phosphate, carbonate, and/or sulfate in the form of its free acids or its salts”, requiring at least a phosphate acid or salt, a carbonate acid or salt, or a sulfate acid or salt. It is unclear under an indefiniteness rationale (rather than a clear-cut 112(d) rationale) whether the limitations of claim 5 further limit and/or include all the limitations of parent claim 1 because it is unclear if the “alkali metal salt” requires a phosphate, carbonate, or sulfate in an alkali metal salt form or an alkali metal salt with any anion.
Applicant is suggested to amend the claim to read as “… sulfates, and hydrogensulfates in the form of a free acid or an alkali metal salt thereof”.
For purposes of further examination and claim interpretation, claim 5 is construed only to the extent it further limits and includes all the limitations of claim 1 (additional non-phosphate/carbonate/sulfate alkali metal salts are not considered)
In claim 9, the recitation of (G) potentially being selected as “alkyl-succinic acid alkenylsuccinic acid” or “alkyl-glutaric acid alkenylglutaric acid” (note, no commas between the two species in each pair) is unclear so as to render the claim indefinite. It is unclear what is required for this species/genera of organic carboxylic acid (G). Does the first recitation require 1) one of alkyl-succinic acid or alkenylsuccinic acid, or both of alkyl-succinic acid and alkenylsuccinic acid? Similarly, does the second recitation require 1) one of alkyl-glutaric acid or alkenylglutaric acid, or both of alkyl-glutaric acid and alkenylglutaric acid? These issue arise from there not being a comma between the species of each identified pair. For further examination, while optional due to its recitation in the alternative from the dozens of other acid species, merely one of alkyl-succinic acid or alkenylsuccinic acid will read on the first species/genera and merely one of alkyl-glutaric acid or alkenylglutaric acid will read on the second species/genera.
Appropriate correction/clarification is required.
Claim Interpretation
In addition to the foregoing, the following is noted for purposes of claim interpretation.
Claim 12 recites, “A coolant concentrate for producing the aqueous coolant according to the claim 1, comprising: …”. Please note the unusual syntax of this claim nesting dependency to claim 1 as an intended use limitation (that the concentrate of claim 12 is “for producing the aqueous coolant according to claim 1”) affords the claim a more broad scope than might be appreciated. The dependency to the composition of claim 1 within an intended use limitation has the implication that claim 12 includes any sort of precursor or intermediate product that is capable of being used to obtain the composition of claim 1 so long as the recited concentrations of claim 12 are met. In other words, the coolant concentrate composition (a precursor or intermediate product) does not necessarily the presence of any water due to the open-ended “not more than 15% by weight of water (A)” that includes zero as its lower boundary. It does also not necessarily require the presence of the unclear “typical coolant constituents” as those could be added later (along with water) to obtain the aqueous coolant. However, the composition indeed requires the (B), (C), and (D) components of claim 1 in the recited non-zero concentrations. To satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
In claim 10, the recitation of a pH of 4 to 11.5 “established with lithium hydroxide, sodium hydroxide, or potassium hydroxide” is a product by process limitation. Product by process limitations are not limited to the recited steps except to the extent they suggest structure of the composition. Here, the claim requires the recited pH (H+ or OH- ions) and the presence of lithium, sodium, or potassium ions and does not necessarily require a pH adjustment by literal addition/presence of the recited alkali metal hydroxides. The recited alkali metal hydroxides are strong bases that dissolve in water to give OH- ions and Li/Na/K+ ions. Compositions with OH- ions and one of K+, Na+, or Li+ ions (regardless of whether actually added by LiOH, NaOH, or KOH) and the recited pH read on the claimed limitations.
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.
Claims 1-7, 10-13, 16, and 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over Pfitzner et al. (US 5,454,967 A) optionally in view of Hann et al. (US 4,530,766 A) or Turcotte et al. (US 5,290,468 A).
As to claim 1, Pfitzner et al. teach a phosphate-containing, glycol-based coolant mixture with hard water stability comprising an ammonium and/or alkali metal phosphate, an oligomeric or polymeric carboxylic acid with a molecular weight of 1,000-100,000, water, and glycol (abstract). The glycol is preferably monoethylene glycol (col. 3 lines 3-4). Accordingly, the reference meets the (A) water, (B) alkylene glycol (glycol/ethylene glycol), and (C) phosphate salt components. In the event it is disputed the inventive composition comprises a concentration of water to be an aqueous coolant, note that the reference’s example prepares an aqueous solution containing 33% by volume of a first-prepared coolant mixture/concentrate (col. 3 lines 45-46) and the reference envisages mixing the glycol-based formulation with a larger amount of water to render the coolant ready for use (col. 2 lines 31-33). Regarding the claimed (D) component, Pfitzner et al. teach the oligomeric/polymeric carboxylic acid are polyacrylic, oligomaleic, and maleic acid/acrylic acid copolymers with a molecular weight of 1,000-100,000, preferably 2,000-10,000 (col. 2 lines 40-46). This overlaps the scope of the hard water stabilizer (D) as being a homo- or copolymer comprising polymerized acrylic acid and/or maleic acid having a molecular weight of at least 4,500 g/mol; the both the broad molecular weight range of 1k-100k and preferred molecular weight range of 2k-10k certainly overlap and encompass the claimed 4.5k+ range.
While Pfitzner et al. fail to meet the claimed limitations under the meaning of anticipation, the cited teachings of the reference nevertheless meet the claimed limitations under a prima facie case of obviousness due the acrylic acid and maleic acid homo- and co-polymers having a molecular weight strongly overlapping and encompassing the claimed range. At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to arrive within the scope of the claim by providing an acrylic acid and/or maleic acid homo- and co-polymer with a molecular weight within the claimed range in order to obtain a coolant composition with improved or merely sufficient hard water stability with a reasonable expectation of success.
While not explicitly disclosed by the reference, the additional limitation(s) of the claimed hard water stabilizer (D) component having a loss of mass of 10% or less in the temperature range of 200-300°C would flow naturally from the cited teachings of the reference due to the identity of the oligomeric/polymeric carboxylic acids (polyacrylic and/or polymaleic acid homo- and co-polymers) and molecular weight thereof (up to 100,000 and preferably 2,000-10,000) being substantially the same as, and overlapping, that instantly claimed, absent a showing to the contrary.
Alternatively regarding the claimed hard water stabilizer (D), Hann et al. is similarly drawn to inhibiting in scale formation in aqueous systems in need of scale inhibition (abstract). Hann et al. teach a water soluble copolymer comprising 30-70 wt.% of acrylic acid units and 70-30 wt.% of methacrylic acid units and having a weight average molecular weight of 2,000 to 5,000 for inhibiting the formation of scale in hard water systems (abstract and col. 4 lines 33-46). The disclosed weight average molecular weight (2000 to 5000) overlaps that claimed (at least 4,500). See also Table 1 in col. 7 that also exemplifies some other copolymers outside Hann et al.’s preferred monomer ratio and molecular weight ranges (e.g., Ex. 3 with a Mw of 5000 inside the inventive 2000-5000 range but monomer ratio of 20/80 outside the 30-70/70-30 range, Ex. 5 with a Mw of 5860 above the inventive 2000-5000 range and monomer ratio of 25/75 outside the 30-70/70-30 range, Ex. 15 with a Mw of 6080 above the inventive 2000-5000 range but monomer ratio of 69/31 inside the 30-70/70-30 range) that still attain considerable and effective precipitation inhibition percentages (calcium carbonate 30 ppm precipitation inhibition of 88%, 92%, and 97%, respectively); see also the discussion at col. 7 line 48 to col. 8 line 43. The copolymer is useful to combat the formation of particulate matter in an aqueous solution, such as inorganic salt scale, by inhibiting its precipitation and/or by dispersing particulate matter which is precipitated in the system (abstract). Hann et al. additionally perform a thermal stability test (tested at 400°F, i.e., about 205°C) of their acrylic acid and methacrylic acid (AA/MAA) copolymer against conventional acrylic acid-hydroxylated copolymers (AA/HEMA & AA/HPA) (see the Thermal Stability section in col. 14 & 15). The test demonstrates the conventional copolymers are unstable at high temperatures but their copolymer is stable at high temperatures hypothesized as due to their copolymer containing no hydrolyzable groups rendering it effective in severe operation conditions (Id.).
Turcotte et al. is similarly drawn to a polycarboxylate-containing antifreeze/coolant additive for use in hard water applications, too (abstract). Turcotte et al. teach the polymeric polycarboxylates prevent hard water precipitants and scale formation in alcohol/water mixtures and are preferably based on polyacrylic acid (PAA) and/or polymaleic acid (PMA) (Id. & col. 2 lines 55-68). The polycarboxylates have a molecular weight range of from 500 to about 250,000, preferably from 500 to 12,000, such as about 300 to about 4,600 (col. 3 lines 1-7). These disclosed molecular weights (500 to 250,000, 500 to 12,000, and 300 to 4,600) each overlap that claimed (at least 4,500). Turcotte et al. further teach homo- and copolymers are encompassed by the polycarboxylates and, while acrylic acid and methacrylic acid are preferred polycarboxylates, the polycarboxylate may further comprise other acids such as maleic acid and itaconic acid (col. 3 lines 8-21). In other words, the reference teaches a hard water stabilizer comprising a homo- or copolymer comprising acrylic acid and/or methacrylic acid and/or maleic acid and/or itaconic acid in polymerized form. Turcotte et al. also evaluate commercially available polycarboxylates as the scale/precipitation inhibitor and disclose, inter alia, SOKALAN® CP 13 S (a modified polyacrylic acid with an average molecular weight of 20,000), SOKALAN® PA 80 S (a polyacrylic acid with an average molecular weight of 100,000), SOKALAN® PA 110 S (a modified polyacrylic acid with an average molecular weight of 250,000) as each being soluble, effective, and beneficial for eliminating hard water precipitate formation in an ethylene glycol based antifreeze/coolant (col. 4 lines 8-12 and Tables 1 & 2 and the Tables’ accompanying discussions among col. 5 to 7).
Thus, at the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to provide the water soluble acrylic acid and methacrylic acid copolymer scale inhibitor with improved thermal stability taught by Hann et al. as the polymeric carboxylic acid (component h)) of Pfitzner et al. in order to obtain a coolant composition with improved or merely sufficient hard water stability with a reasonable expectation of success.
Alternatively, at the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to provide the scale/precipitation inhibiting polymeric polycarboxylates taught by Turcotte et al. as the polymeric carboxylic acid (component h)) of Pfitzner et al. in order to obtain a coolant composition with improved or merely sufficient hard water stability with a reasonable expectation of success.
While not explicitly disclosed by the reference(s), the additional limitation(s) of the claimed hard water stabilizer (D) component having a loss of mass of 10% or less in the temperature range of 200-300°C would flow naturally from the cited and combined teachings of the references due to the identity of the polymeric carboxylic acids and molecular weight thereof (copolymers of acrylic acid and methacrylic acid with molecular weights of up to about 5,000 and even some slightly above 5,000 and up to about 9,000, with improved thermal stability, as taught in Hann et al. and homo- or copolymers comprising acrylic acid and/or methacrylic acid and/or maleic acid and/or itaconic acid in polymerized form with molecular weights of 500 to 250,000 and subsets thereof as taught by Turcotte et al.) being substantially the same as, and overlapping, that instantly claimed, absent a showing to the contrary.
Any remaining claim limitations are optional and/or process limitations describing how a property is measured.
As to claim 2, the example(s) in Pfitzner et al. teach the composition comprises magnesium nitrate hexahydrate (col. 3 lines 26-41), which meets the claimed limitations. Additionally note the examples go on to mix the exemplary mixture with water (col. 3 lines 44-50), meaning there is water comprising alkaline earth metal (magnesium) ions from the above water soluble magnesium salt. Alternatively, Pfitzner et al. disclosing the composition has hard water stability implies the composition may indeed comprise alkaline earth metal ions as claimed. Hard waters contain alkaline earth metal ions, e.g., calcium and magnesium, and soft waters lack or have a lower concentration of these ions. Nevertheless, Pfitzner et al. further teach the presence of a water-soluble magnesium compound (abstract), which reads on the presence of alkaline earth metal ions in the water.
As to claims 3 and 4, Pfitzner et al. teach monoethylene glycol (i.e., monomeric 1,2-ethylene glycol) is preferred and exemplified as the glycol of the composition (Id.).
As to claims 5 and 20, the example(s) in Pfitzner et al. comprises dipotassium hydrogen phosphate (col. 3 lines 26-41), which is a monophosphate alkali metal/potassium salt. Alternatively, Pfitzner et al. teach the phosphate may be an alkali metal salt of ortho-, meta- or pyrophosphates (col. 2 lines 47-54), which reads on the claimed diphosphate, triphosphate, and/or oligophosphate alkali metal salt.
As to claims 6 and 21, Pfitzner et al. teach the composition (both broadly and as exemplified) further comprises at least one azole derivative (benzotriazole and tolyltriazole, abstract, col. 2, and col. 3).
As to claim 7, Pfitzner et al. teach the composition (both broadly and as exemplified) further comprises an alkali metal molybdate (abstract and col. 3), which reads on the inorganic inhibitor (F).
As to claim 10, Pfitzner et al.’s example has a pH of 8.5 (meaning OH- anions are present) and has sodium and potassium ions present via their presence in the exemplified components (col. 3) and/or the coolant mixtures preferably have a pH of 7.5-9.5 (col. 3 lines 14-16), which read on the product-by-process limitations of a pH of 4 to 11.5 established with sodium hydroxide and/or potassium hydroxide.
As to claim 12, the disclosed concentrations of components in Pfitzner et al.’s mixture (that is a concentrate that is later diluted with water to obtain a ready to use coolant, Id.) read on the claimed concentrate because they overlap the concentrations claimed. See the abstract and top of col. 2 teaching the (initial) mixture comprises 0.05-5 wt.% water, 0.5-3 wt.% of phosphate, 0.02-0.5 wt.% of the polymeric carboxylic acid reading on the claimed hard water stabilizer, and remainder glycol necessary to make 100 wt.% (exemplified as ~92 wt.%). Any remaining other components are optional and/or are additionally within the additional components claimed.
As to claim 11, with the above overlapping concentrations of components in the mixture reading on the concentrate of instant claim 12 in mind, the disclosed dilution of the mixture to obtain the ready to use aqueous coolant reads on the claimed aqueous coolant concentrations because they overlap the concentrations claimed. Pfitzner et al.’s example takes the mixture and obtains a coolant comprising 33 vol. % of the mixture in water (Id.). Pfitzner et al. further teach the mixture may be mixed with water in an amount of 10-80 vol% of the mixture in water (col. 3 lines 9-12). Diluting the (initial) mixture comprises 0.05-5 wt.% water, 0.5-3 wt.% of phosphate, 0.02-0.5 wt.% of the polymeric carboxylic acid reading on the claimed hard water stabilizer, and remainder glycol necessary to make 100 wt.% (exemplified as ~92 wt.%) in water in an amount of 10-80 vol.% in water reads on and overlaps the claimed concentrations. Any remaining other components are optional and/or are additionally within the additional components claimed.
As to claims 16 and 18, the background section of the Pfitzner et al. reference presents the purpose of the inventive coolant is to solve certain problems and/or suitably be a coolant in cooling systems in automobiles (i.e., vehicles) having internal combustion engines (col. 1). A person of ordinary skill in the art would at once envisage or obviously provide the inventive coolant of the reference (and/or the inventive coolant in view of Hann et al. or Turcotte et al.) to a cooling system for cooling an internal combustion engine of a vehicle in order to adequately protect the cooling system from corrosion and/or impart improved hard water stability thereto with a reasonable expectation of success.
As to claim 13, note the above rejections and rationale to provision of the reference’s coolants to automobile/internal combustion engine cooling system (Id.). The claimed apparatus structure and limitations thereof of the method for cooling internal combustion engines are notoriously conventional and routine, and operation of these systems reads on the conventional/routine limitations. The purpose and structure of cooling systems is to, via the coolant, transfer heat from an object at a higher temperature to another object at a lower temperature to cool the object at a higher temperature. The objects read on heat exchangers as heat is exchanged between the coolant and the objects. Internal combustion engines routinely and normally operate at temperatures around 100°C (~200°F) (i.e., certainly between or encompassing 60-300°C) and cooling system thereof are very conventionally and routinely configured to pump liquid coolant therein to a manifold in thermal contact with the engine to absorb heat from the engine (operating a first heat exchanger) and transfer the coolant to a radiator that is in thermal contact with ambient air (i.e., certainly between or encompassing -50°C to 100°C and at least 50°C lower than the engine operating temperature when at normal operating temperature) passing over fins of the radiator via a fan blowing the air over the fins and/or forced over the fins by driving that removes heat from the coolant (operating as a second heat exchanger). While the limitations of claim 13 are not fairly anticipated by the reference, a person of ordinary skill in the art would reasonably and obviously expect their presence and/or regard them as conventional from provision of the coolant to a vehicle internal combustion engine cooling system as disclosed and motivated by the reference.
As to claim 19, while the not more than 2% by weight 200-300°C mass loss are not anticipated/exemplified by the references, as similarly stated above, the more narrow loss of mass would flow naturally from the cited teachings of the references due to the identity of the polymeric carboxylic acids and molecular weight thereof (polyacrylic and/or polymaleic acid homo- and co-polymers with up to 100,000 and preferably 2,000-10,000 as taught in Pfitzner et al., copolymers of acrylic acid and methacrylic acid with molecular weights of up to about 5,000 and even some slightly above 5,000 and up to about 9,000, with improved thermal stability, as taught in Hann et al., and/or homo- or copolymers comprising acrylic acid and/or methacrylic acid and/or maleic acid and/or itaconic acid in polymerized form with molecular weights of 500 to 250,000 and subsets thereof as taught by Turcotte et al.) being substantially the same as, and overlapping, that instantly claimed, absent a showing to the contrary.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Pfitzner et al. (US 5,454,967 A) optionally in view of Hann et al. (US 4,530,766 A) or Turcotte et al. (US 5,290,468 A) as applied to claims 1-7, 10-13, 16, and 18-21 above, and further in view of Dietl et al. (US 2014/0224193 A1).
The disclosure of Pfitzner et al. optionally in view of Hann et al. or Turcotte et al. is relied upon as set forth above.
Pfitzner et al. teach the coolant mixture can contain further conventional components (col. 3 lines 6-7) but fails to teach the additional presence of carboxylic acids as instantly claimed.
However, Dietl et al. is similarly drawn to antifreeze concentrates and aqueous coolant compositions thereof comprising a number of substantially the same components as Pfitzner et al. such as water, glycol, phosphate salts, and polyacrylic/maleic hard water stabilizers (abstract, para. 0018, 0032, 0053, 0072 & 0075) where various carboxylic acid compounds may be added as an additional corrosion inhibitor in the composition (para. 0017 and 0033-0038). Suitable carboxylic acids include monocarboxylic acids having 3-16 carbon atoms and species thereof such as propionic acid, pentanoic acid, hexanoic acid, etc. (para. 0034 and 0036), which meet the claimed monocarboxylic acid having 2 to 18 carbon atoms of claim 8 and species of claim 9. Suitable carboxylic acids also include dicarboxylic acids having 3 to 21 carbon atoms (para. 0034), which overlap the claimed dicarboxylic acid having 4 to 20 carbon atoms of claim 8. Additionally, suitable dicarboxylic acids include succinic acid, glutaric acid, pimelic acid, etc. (para. 0036), which meet the claimed species of claim 9.
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide the carboxylic acid compound(s) taught by Dietl et al. as an additional component in Pfitzner et al.’s coolant compositions (optionally in view of Hann et al. or Turcotte et al.) in order to improve or at least affect the corrosion inhibiting properties of the coolant with a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 07/31/2026 regarding Pfitzner et al. (US 5,454,967 A) have been fully considered but they are not persuasive.
Applicant argues the claimed hard water stabilizer (D)’s maximum loss of mass of not more than 10% in the temperature range of 200°C to 300°C is not inherent to the disclose of Pfitzner et al. in view of two NPL references cited as evidence, McGaugh et al. (“The thermal degradation of poly(acrylic acid). Journal of Polymer Science Part B: Polymer Letters, 5(9), 817-820, 1967) and McNeill et al. (“Thermal degradation of poly(acrylic acid), Polymer Degradation and Stability, 29(2), 233-246, 1990). Applicant’s position is these references indicate the loss of mass is associated with carboxylic acid functional groups in the polymer (p.10 to 11 of the response).
In response, this argument is not persuasive because copies of the references have not been provided for consideration and the Office is therefore unable to consider the evidence proffered by Applicant. Arguendo, the two short portions of Applicant’s evidentiary references copied into the present remarks do not indicate the molecular weight of the tested poly(acrylic acid) to constitute a fair comparison with or nexus to the applied prior art reference(s). Additionally, while it is acknowledged the cited evidentiary references appear to be drawn to studies of mass loss of certain poly(acrylic acid) polymers, please note that the cited prior art reference(s) and the claims are not necessarily only limited to poly(acrylic acid) polymers.
Applicant’s discussion of an effective carboxyl-based hard water stabilizer and the difference between long polymers (equaling high molecular weights) and short polymers (equaling low molecular weights) on p.11 to 12 of the response is also noted.
Applicant’s discussion concludes that the claimed mass of loss does not depend on molecular weight alone but is an independent further parameter in addition to molecular weight. However, this discussion/argument is confusing and at odds with other portions of the discussion because the remarks indicate long polymers of high molecular weights may be degraded to remain effective unlike short polymers of low molecular weight (p.12) and molecular weight is a necessary prerequisite for the mass of loss (bottom of p.12). The remarks all but say higher molecular weight polymers possess the recited mass loss property.
The Office has cited prior art references that teach homo- or copolymers comprising acrylic acid and/or methacrylic acid and/or maleic acid and/or itaconic acid in polymerized form with molecular weights overlapping the at least 4,500 g/mol range as claimed. In response to applicant's argument that the prior art fails to teach a hard water stabilizer polymer comprising acrylic acid and/or methacrylic acid and/or maleic acid and/or itaconic acid in polymerized form with molecular weights of at least 4,500 g/mol range and having a loss of mass of not more than 10% between 200°C and 300°C, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Additionally, the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).
Applicant also cites the comparative showing in the present application’s specification where Comparative Examples 4 and 5, using polyacrylic acid or polycarboxylate copolymers outside of that claimed (molecular weights of 2,500 and 1,200, respectively) had reduced performance in a modular heat test apparatus (p.13 of the response).
In response, the examples in the present specification are little probative value in the determining patentability of claims since they do not involve a comparison of Applicant’s invention with the closest applied prior art. See In re De Blawe, 222 USPQ 191 (FED. Cir. 1984), and In re Fenn, 208 USPQ 470 (CCPA 1981). Even if, arguendo, the comparison was done between the applicant’s invention and the closest prior art, the claims are not deemed patentable over the reference of record since they are not commensurate in scope with the probative value of data in the examples. The claimed hard water stabilizer has a more broad scope (content and molecular weight) than tested in the comparative showing. The stabilizers used in the comparative showing are loosely defined as “commercially available polyacrylic acid or polycarboxylate copolymers” with generic abbreviations (“HWS1”, “HWS2”, “HWS3”, and “HWS4”) with varying molecular weights (5000, 2500, 1200, and 4500, respectively), and it is unclear which stabilizers are polyacrylic acids and which stabilizers are polycarboxylate copolymers. Additionally, the composition of the polycarboxylate copolymers are not disclosed, either, and polycarboxylate copolymers are not necessarily limited to copolymers comprising “acrylic acid and/or methacrylic acid and/or maleic acid and/or itaconic acid in polymerized form” required by the copolymer-related aspects of the claimed stabilizer. What are the chemical compositions of “HWS1”, “HWS2”, “HWS3”, and “HWS4” stabilizers? See In re Clemens, 206 USPQ 289 (CCPA 1980).
Applicant’s arguments with respect to the rejection(s) based on Pfitzner et al. (US 5,454,967 A) or Pfitzner et al. (US 5,454,967 A) further in view of Dietl et al. (US 2014/0224193 A1) are also arguably moot because the arguments do not apply to all of the references being used in the current rejection. The current rejection also utilizes new optional secondary references, Hann et al. (US 4,530,766 A) and Turcotte et al. (US 5,290,468 A), combined with Pfitzner et al. under new ground(s) of rejection which render obvious the instant claims. See above.
Prior Art Cited But Not Applied
The following prior art is made of record and not relied upon but is considered pertinent to applicant's disclosure and/or to support the above grounds of rejection:
The Car Temperature Gauge: What you Need to Know about your Vehicle (2019) NPL is a cited reference of interest that has diagrams and temperatures thereof of typical, conventional vehicle cooling systems that support the official notice taken in the above grounds of rejection.
Dietl et al. (US 2014/0224193 A1), while relied upon above as a secondary reference for claims 8 and 9, also supports the official notice taken in the above grounds of rejection. See, for example, para. 0002-0007 disclosing cooling apparatus of internal combustion engines (and vehicles thereof) are usually configured as cooling circuits transferring heat from the engine to a radiator.
Zientek (US 4,676,919 A) also supports the official notice taken in the above grounds of rejection regarding typical engine operating temperatures (col. 18 lines 21-35).
The remaining references listed on Forms 892, 1449, and PCT 210 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or discussed above.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
October 13, 2026
