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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-19) in the reply filed on 14 July 2026 is acknowledged.
Claims 20-24 are withdrawn from consideration from further consideration pursuant to 37 CFR 1.142(b), as being withdrawn to a non-elected invention, and non-elected species of the invention, there being no allowable generic or linking claims.
Claims 1-19 are under examination and the requirement for restriction is made
final.
Information Disclosure Statement
The information disclosure statement filed 14 December 2023 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because there is no record of US-6242631-A. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
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.
Claims 1-8, 13, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Tong (US-20180233791-A1, located in the Information Disclosure Statement) in view of Wolfe (US-20060094606-A1).
With regard to claims 1 and 8, Tong teaches a battery pack system that corresponds to the claimed immersion cooling system. This system comprises a battery box (the claimed reservoir) containing a battery pack (the claimed electrical componentry) partially immersed in a coolant (claimed heat transfer fluid) (Abstract). An external circulating system (the claimed circulating system) connects to the battery box via a circulating pipeline, wherein the coolant circulates therein (para [0033]), thereby reading on the claimed immersion cooling system.
Tong does not teach the claimed heat transfer fluid comprises the phosphate ester of formula (I). However, Tong teaches that the coolant is at least trimethyl phosphate and tripropyl phosphate (which can satisfy the claimed trialkyl phosphate with less than 6 carbon atoms). Tong further teaches these compounds exhibit a relatively low volatilization temperature alongside, advantageous insulating, flame-retardant, and anti-electrolyzation properties (para [0020]).
In the same field of endeavor, Wolfe teaches a functional fluid useful as aircraft hydraulic fluid comprising phosphate esters of the following structure (para [0009]):
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wherein R1, R2 and R3 are alkyl groups having from 1 to 14 carbon atoms. The total sum of carbon atoms in R1, R2 and R3 is in the range of from 9 to 18. The alkyl groups may be the identical or distinct. Wolfe notes this specific compound, when combined with art recognized additives and aryl compounds, exhibit critical properties for hydraulic systems. Specifically, a fire point of at least 177° C., a flash point of at least 160° C., an autoignition temperature of at least 399° C., a pour point of less than −62° C., a viscosity at −54° C. less than 2000 cS, and a viscosity at 98.9° C. greater than 3.0 cS (para [0009]), when concentration is of at least 50 wt.% (para [0006]). Consequently, these disclosures reads on the claimed phosphate ester of formula (I) and its corresponding concentration. Wolfe further teaches the important component of the functional fluids is at least one aryl compound (e.g., tert-butylphenyl diphenyl phosphate ester, para [0020]) at a concentration of at least 5 wt.% (para [0006]), which reads on the fluid containing a mixture of phosphate esters of formula (I).
Furthermore, Wolfe teaches the functional fluids of the present invention may incorporate additional ingredients, such as alternative base stocks and additive materials. While these components may materially affect certain properties of the resulting composition—including viscosity, lubricity, foamability, and flammability—they do not diminish the utility of the claimed invention. Consequently, the functional fluid are not limited to the essential ingredients defined herein, but may be utilized in combinations and mixtures with numerous other compositions, as would be readily apparent to an artisan of ordinary skill (para [0023]).
With regard to the phosphate ester of formula (I), it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, to modify Tong’s phosphate esters. Specifically, one would be motived to adapt Tong’s coolant to comprise the mixture of phosphate esters taught by Wolfe to reach the claimed invention. Specifically, Wolfe’s composition comprising trialkyl phosphate esters and aryl compounds. For doing so, a person of ordinary skill in the art would have combined these known elements, with a reasonable expectation of success to achieve the enhanced fire point, flash point, autoignition temperature, pour point, and viscosity properties for similar applications.
With regard to claim 2, Tong teaches that the battery box comprises battery cells (para [0046]).
With regard to claim 3, Tong teaches that the lithium-ion battery cells are widely utilized in electric vehicles due to their high specific energy, high voltage, low self-discharge rate and long cycle life (para [0002]). Tong further notes that conditions such as internal or external short circuit, overcharging, mechanical damage can cause battery cell temperatures to exceed safe thresholds, generating extreme heat (para [0002]). Accordingly, Tong seeks to provide a battery pack system capable of mitigating and controlling thermal runaway propagation (para [0001]). These disclosures describes the battery pack are lithium cell battery cells widely utilized in electric vehicles, thereby reading on the claimed limitation.
With regard to claim 4, Tong teaches an external circulating system that includes a circulating pump (3) and a heat exchanger (31)(paras [0034 and 0044]).
With regard to claim 5, Tong teaches that the external circulating system includes a buffer tank (33), filled with a coolant (paras [0034-0035 and 0044]).
With regard to claims 6 and 19, Tong does not teach the heat transfer fluid comprises the phosphate ester of formula (I) containing an R as an alkyl of C6-18 and C6-12.
In the same field of endeavor, Wolfe teaches individual alkyl groups in the range of 1 to 14 (para [0009]), which reads on the claimed phosphate ester of formula (I).
As stated above, the combination of Tong and Wolfe teaches the claimed phosphate ester of formula (I) mixture.
With regard to claim 7, Tong does not teach the heat transfer fluid comprises the phosphate ester of formula (I).
In the same field of endeavor, Wolfe teaches alkyl substituted aryl compounds in the range of 1 to 30 (para [0013]), specifically tert-butylphenyl diphenyl phosphate ester (para [0020], Table 3, S-154), which can read on the claimed phosphate ester of formula (I) containing an alkyl-substituted phenyl group.
As stated above, the combination of Tong and Wolfe teaches the claimed phosphate ester of formula (I) mixture.
With regard to claim 13, Tong teaches a coolant comprising at least trimethyl phosphate and tripropyl phosphate (i.e., claimed trialkyl phosphate). While Tong indicates these compounds exhibit a relatively low volatilization temperature alongside, advantageous insulating, flame-retardant, and anti-electrolyzation property (para [0020]), these components do not read on the phosphate ester formula (I), thus reading on the claimed limitation.
Claims 9-12, 14-15, and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Tong (US-20180233791-A1, located in the Information Disclosure Statement) in view of Wolfe (US-20060094606-A1) as applied to claims 1-8, 13, and 19 above, and further in view of Gunkel (US-5206404-A, located in the Information Disclosure Statement).
The teachings of Tong and Wolfe are disclosed above.
With regard to claim 9, Tong and Wolfe do not teach the claimed mixture of compounds of formula (I).
In the same field of endeavor, Gunkel teaches a novel composition of alkylated phenyl phosphate comprising trialkyl phenyl phosphate, dialkylphenyl monophenyl phosphate, monoalkylphenyl diphenyl phosphate, and triphenyl phosphate (Abstract). This disclosure reads on the claimed mixture of compounds of formula (I).
Furthermore, Gunkel teaches these phosphate esters are useful as fire resistant lubricant base stocks, lubricant anti-wear additives, and flame retardant plasticizers. Gunkel further teaches that these phosphate ester are desirable to exhibit highly resistant to oxidative, thermal stability, hydrolytic degradation, low volatility to minimize evaporation losses, which is advantageous for high temperature applications (col 1, line 34-40).
With regard to the mixture of compounds of formula (I), it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, to modify Tong’s coolant to comprise the mixture of phosphate esters taught by Gunkel to achieve the claimed invention. Specifically, one would be motivated to adopt Gunkel’s composition comprising trialkyl phenyl phosphate, dialkylphenyl monophenyl phosphate, monoalkylphenyl diphenyl phosphate, and triphenyl phosphate. For doing so, a person of ordinary skill in the art would have combined these known elements, with a reasonable expectation of success to achieve the enhanced thermal, oxidative, and hydrolytic stability, as well as application versatility as established in Gunkel.
With regard to claims 10-12, Tong and Wolfe do not teach the heat transfer fluid comprises the claimed mixture of compounds of formula (I).
In the same field of endeavor, Gunkel teaches a composition comprising 10% to 50% dialkylphenyl monophenyl phosphate, 15% to 60% monoalkylphenyl diphenyl phosphate, and 1% to 20% trialkyl phenyl phosphate (Abstract), which overlaps the claimed ranges.
Gunkel further teaches that this composition provides enhanced thermal and hydrolytic stability (col 2, lines 34-36). The resulting high stability, ashless, anti-wear base stock is highly desirable for critical applications, including fire-resistant hydraulic fluids, compressor lubricants, aircraft hydraulic fluids. Furthermore, Gunkel notes that the reduced volatility of this product is particularly advantageous for high-temperature applications, where it serves as a lubricant additive, base fluid, or plasticizer (col 3, lines 28-43).
With regard to the mixture of compounds of formula (I), it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify Tong’s phosphate esters. Specifically, one would be motived to adapt Tong’s coolant to comprise the mixture of phosphate esters taught by Gunkel to reach the claimed invention. Gunkel’s composition of alkylated phenyl phosphate comprising 10% to 50% dialkylphenyl monophenyl phosphate, 15% to 60% monoalkylphenyl diphenyl phosphate, and 1% to 20% trialkyl phenyl phosphate. For doing so, a person of ordinary skill in the art would be motivated to combine these known elements, with a reasonable expectation of success to achieve superior thermal, oxidative, and hydrolytic stability for versatile applications as established in Gunkel.
With regard to the overlapping concentrations, it would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP §2144.05(I). It has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results, In re Greenfield, 197 USPQ 227. As such, the teaching of Gunkel, when combined with general knowledge in the art, render the claimed feature obvious.
With regard to claim 14, Tong teaches the coolant is at least trimethyl phosphate and tripropyl phosphate (which can satisfy the claimed trialkyl phosphate with less than 6 carbon atoms). Tong further teaches these compounds exhibit a relatively low volatilization temperature alongside, advantageous insulating, flame-retardant, and anti-electrolyzation property (para [0020]).
In the same field of endeavor, Wolfe teaches a formula that yields trialkyl phosphates having carbons less than 6 carbon atoms and triphenyl phosphate (para [0009]), as well as exemplifies the utilization of tributyl phosphate (TBP hereinafter) (Table 1). However, Wolfe does not explicitly teach motivation to select triphenyl phosphate.
In the same field of endeavor, Gunkel teaches the resulting product mix is a statistical mixture based on the starting alkylate composition, which consistently includes a triphenyl phosphate (TPP), typically ranging from 5 to 50 wt.% (col 1, lines 15-18). This disclosure can be interpreted that the triphenyl phosphate product is a byproduct of the starting material and will be included in the resulting product.
As stated above, in combination of Tong and Wolfe teaches the inclusion of trialkyl phosphates with carbon atoms of 6 and lower.
With regard to the triphenyl phosphate, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, to modify Tong’s phosphate esters. Specifically, one would be motived to adapt Tong’s coolant to comprise the mixture of phosphate esters taught by Gunkel containing triphenyl phosphate to reach the claimed invention. Specifically, Gunkel’s composition comprising trialkyl phenyl phosphate, dialkylphenyl monophenyl phosphate, monoalkylphenyl diphenyl phosphate, and triphenyl phosphate (Abstract). For doing so, a person of ordinary skill in the art would be motivated to combine these known elements, with a reasonable expectation of success to achieve the thermal, oxidative, and hydrolytic stability (col 1, line 34-40) as established in Gunkel.
With regard to claims 15 and 17-18, Tong and Wolfe do not explicitly teach weight concentrations for triphenyl phosphate.
In the same field of endeavor, Gunkel teaches the resulting product mix is a statistical mixture based on the starting alkylate composition, which consistently includes a triphenyl phosphate (TPP), typically ranging from 5 to 50 wt.% (col 1, lines 15-18), which overlaps the claimed ranges. Furthermore, Gunkel teaches that the TPP content of a product initially containing 41% TPP can be reduced to 1.3% without adversely affecting product color or acidity, noting that distillate or overhead fractions can be blended back into other products when a higher TPP content is desired (Pass V, col 6, lines 7-11). These disclosures read on the claimed triphenyl phosphate concentration of no more than 25 wt.% based on the fluid, which remains a variable open to be optimized to desired concentration.
Furthermore, Gunkel teaches the mixed t-butylphenyl phosphate esters produced contained 1% or less of triphenyl phosphate. This composition is particularly preferred as a highly stable base fluid suitable for resistant lubricant base stocks, lubricant anti-wear additives, and flame retardant plasticizers. Gunkel further teaches that these phosphate ester are desirable to exhibit highly resistant to oxidative, thermal, hydrolytic degradation, low volatility to minimize evaporation losses, which is advantageous for high temperature applications (col 1, line 34-40).
With regard to triphenyl phosphate concentration, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, to modify Tong’s phosphate esters. Specifically, one would be motived to adapt Tong’s coolant to comprise the mixture of phosphate esters taught by Gunkel containing triphenyl phosphate to reach the claimed invention. Gunkel would guide one having ordinary skill in the art to route the composition through multiple passes of distillation to achieve the desired triphenyl phosphate concentration (Pass V, col 6, lines 7-11). For doing so, a person of ordinary skill in the art would be motivated to combine these known elements, with a reasonable expectation of success to achieve the reduced volatility and optimal fluid properties for versatile applications (col 3, lines 28-43) as established in Gunkel. p
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Tong (US-20180233791-A1, located in the Information Disclosure Statement) in view of Wolfe (US-20060094606-A1) and Gunkel (US-5206404-A, located in the Information Disclosure Statement) as applied to claims 9-12, 14-15, and 17-18 above, and further in view of Farng (US-20170158981-A1) and Okazaki (US- 20020117648-A1).
The teachings of Tong, Wolfe, and Gunkel are disclosed above.
With regard to claim 16, Although, Tong, Wolfe, and Gunkel do not explicitly teach the claimed concentration of trialkyl phosphate having a less than 6 carbon atoms per alkyl group. Tong does teach the coolant comprising at least trimethyl phosphate and tripropyl phosphate (this corresponds to trialkyl phosphate with less than 6 carbon atoms) which exhibit a relatively low volatilization temperature alongside, advantageous insulating, flame-retardant, and anti-electrolyzation property (para [0020]).
In the same field of endeavor, Farng teaches a functional fluid composition for aircraft hydraulic systems comprising a base fluid of the following structure (para [0051]):
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wherein R1, R2 and R3 independently represent a substituted or unsubstituted alkyl or aryl hydrocarbon group (para [0051]) to exhibit effective erosion inhibition (para [0131]). Farng identifies preferred trialkyl phosphate esters with 1 to 12 carbon atoms—specifically tri-(nbutyl) phosphate and tri(2-ethylhexyl) phosphate (para [0052]), and alongside the triaryl phosphate esters include alkyl-substituted phenyl groups (para [0053]). This overlaps the core structure.
Furthermore, Farng teaches the amounts of each type of phosphate ester in the functional fluid can vary depending upon the type of phosphate ester involved. Farng further teaches that trialkyl phosphate in the base stock fluid range is preferably from 0 to 50 wt.% (para [0061]), which overlaps the claimed range.
In the same field of endeavor, Okazaki teaches phosphate ester base fluids and aircraft hydraulic fluid containing a novel combination of phosphate ester components. Okazaki further teaches that the fluid compositions interact synergistically and selecting specific ratios yield an unexpected balance of critical properties including acceptable hydrolytic stability, a high flash point, robust anti-wear, erosion protection, flow properties, and elastomer compatibility (para [0080]). Specifically, Okazaki exemplifies varying tri-n-butyl phosphate (TBP) concentrations at or below 38.2 wt.% (Ex. C, para [0081]), 40 wt.%, 20 wt.%, and 7.5 wt.% (Table 4, 8225, 8226, and 8227), 16.2 wt.% (Table 5, 8117), 30wt.% (Table 6, 8148, 8150, and 8149). These disclosures overlap the claimed trialkyl phosphate concentration range.
With regard to trialkyl phosphate concentration, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, to modify Tong’s phosphate esters. Specifically, one would be motived to adapt Tong’s coolant to comprise the mixture of phosphate esters taught by Gunkel, in combination with a trialkyl phosphate (e.g. tri-nbutyl phosphate, trimethyl phosphate), to arrive at the claimed invention. Okazaki would guide one having ordinary skill in the art to select particular ratios to that optimize the balance of performance characteristic critical to hydraulic fluids while within the parameters of World Health Organization. The references collectively teach these overlapping analogous components for essential properties including acceptable hydrolytic stability, high flash point, robust anti-wear performance, sufficient erosion protection, adequate low-temperature viscosity, and elastomer compatibility. For doing so, a person of ordinary skill in the art would be motivated to combine these known elements, with a reasonable expectation of success to achieve the versatile, high performance fluid properties.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-19 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-4-16 of copending Application No. 18/570,409 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons listed below.
It is clear that all the elements of the US 18/570330 claims (1-19) are to be found in US 18/570,409 (claims 1-4-16). US 18/570,409 claims a heat transfer fluid composition comprising phosphate ester formula (I) and (II), specified mixture ratios, and an immersion cooling system. US 18/570330 claims overlap in claimed heat transfer fluid formula (I), mixture ratios, and immersion cooling system used as the instant claims. The difference between the instant claims lies in the fact that ‘409 is narrower in scope; it delineates the phosphate ester formula into distinct R groups to represent formulas (I) and (II) and explicitly incorporates triphenyl phosphate within the mixture ratios. A person of ordinary skill in the art would conclude that the invention described in the instant claims would have been an obvious variation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-19 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-9 of copending Application No. 18/570,452 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons listed below.
It is clear that all the elements of the US 18/570330 claims (1-19) are to be found in US 18/570,452 (claims 1-9). US 18/570,452 claims an immersion cooling system comprising electrical componentry, a heat transfer fluid, a reservoir, and a circulating system. ‘452 also claims the heat transfer fluid comprises one or more of the phosphate ester of formula (I). US 18/570409 claims overlap in claimed immersion cooling system and heat transfer fluid formula (I) used as the instant claims. The difference between the instant claims lies in the fact that ‘330 claims require the heat transfer to include one or more phosphate ester not of formula (I), making the present claims narrower in scope. A person of ordinary skill in the art would conclude that the invention described in the instant claims would have been an obvious variation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/A.A.W./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
