CTNF 18/600,962 CTNF 95414 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC § 112(b) 07-30-02 AIA 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. 07-34-01 Claims 16–17 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 16 is indefinite because it is unclear what is included in “large organic contaminants”. Claim 17 is indefinite because it depends on claim 16. Claim Rejections - 35 USC § 102(a)(1) 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. The claims are rejected as follows: 07-15 AIA Claim s 1–4, 6, 8, 10–15 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Gerardo et al., Mineral oil regeneration using selective molecular sieves as sorbents, Chemosphere 2010, (“Gerardo”) 1 .. Regarding claim 1: Gerardo discloses that an adsorption filter (Gerardo discloses two molecular sieve crystals with LTL- and BEA-type structures are used for lubricant oil purification by adsorption, and therefore Gerardo’s molecular sieve crystals are filters, Gerardo, p. 591) for filtering a hydrocarbon cooling oil (Gerardo discloses its molecular sieve is for oil purification, the term “cooling” is intended use, Gerardo, p. 591), the adsorption filter including a molecular sieve composite mixture (Gerardo discloses molecular sieve zeolite Beta and ITL is combined with silica content, Gerardo p. 591, molecular sieve zeolite with silica is a composite) that comprises: a first filter material comprising an alkali metal aluminosilicate molecular sieve (Gerardo’s Zeolite LTL, Gerardo, p. 592, Zeolite LTL is alkali metal aluminosilicate molecular sieve), and having a surface chemistry (Gerardo discloses its Zeolite LTL comprising potassium cations, which would read on the claimed “surface chemistry”, Gerardo, p. 597, and Gerardo discloses potassium cations are known for the sorption of benzene, Gerardo, p. 597) and/or a pore size distribution selected for preferential adsorption of a first contaminant present or expected to be present in the hydrocarbon cooling oil (Gerardo discloses its Zeolite LTL show selectivity towards oxidation products, especially carboxylic acids, Gerardo p. 598); and a second filter material (Gerardo discloses as silica, Gerardo p. 592) having a surface chemistry and/or a pore size distribution selected for preferential adsorption of a second contaminant present or expected to be present in the hydrocarbon cooling oil (Gerardo discloses its mineral oil to be purified could comprise water as contaminants, Gerardo p. 593, and silica is a known adsorbent for water 2 ). Regarding claim 2: Gerardo discloses that the adsorption filter of claim 1, wherein the first contaminant is a polar chemical resulting from oxidation of the hydrocarbon cooling oil (Gerardo discloses carboxylic acids, Gerardo, p. 598, carboxylic acids is polar chemical formed through oxidation of hydrocarbon cooling oils). Regarding claim 3: Gerardo discloses that the adsorption filter of claim 1, wherein the first contaminant is a carboxylic acid (Gerardo, p. 598). Regarding claim 4: Gerardo discloses that the adsorption filter of claim 1, wherein the first contaminant or second contaminant is water (Gerardo, p. 593). Regarding claim 6 : Gerardo discloses that the adsorption filter of claim 1, wherein the first contaminant or second contaminant a hydroxylate, a ketone, or an aldehyde (Gerardo, p. 592). Regarding claim 8: Gerardo discloses that the adsorption filter of claim 1, wherein the first filter material and the second filter material have different pore size distributions because Gerardo’s first material is mapped to zeolite LTL and second is map to silica, and they have different pore size distribution because they have different chemical structure. Regarding claim 10: Gerardo discloses that the adsorption filter of claim 1, wherein one or both of the first filter material and the second filter material has an alkaline-modified surface chemistry (Gerardo discloses its Zeolite LTL, Gerardo, p. 592, which has alkaline-modified surface chemistry). Regarding claim 11: Gerardo discloses that the adsorption filter of claim 10, wherein the alkaline-modified surface chemistry is due to exposure to sodium hydroxide, potassium hydroxide, sodium carbonate, or potassium carbonate (Gerardo discloses potassium hydroxide, Gerardo p. 592). Regarding claim 12: Gerardo discloses that the adsorption filter of claim 1, wherein the first filter material has a silicon to aluminum ratio of about 4 to 1 or less (Gerardo discloses a Si/Al of 3, which falls within the claimed range, Gerardo p. 594). Additionally, the instant disclosure does not teach the claimed Si/Al ratio is critical to the operation of the claimed invention. Therefore, absent evidence of criticality, this difference fails to patentably distinguish over prior art because it produces a difference in degree rather than in kind. MPEP 2044.05 (III)(A). Regarding claim 13: Gerardo discloses that the adsorption filter of claim 1, wherein the first filter material has a silicon to aluminum ratio of about 4 to 1 or more (Gerardo discloses a Si/Al of 26, which falls within the claimed range, Gerardo p. 594). Additionally, the instant disclosure does not teach the claimed Si/Al ratio is critical to the operation of the claimed invention. Therefore, absent evidence of criticality, this difference fails to patentably distinguish over prior art because it produces a difference in degree rather than in kind. MPEP 2044.05 (III)(A). Regarding claim14: Gerardo discloses that the adsorption filter of claim 1, wherein one of the first filter material and the second filter material is selected to target absorption of water (Gerardo’s silica is capable of adsorb water, Gerardo p. 592), and the other of the first filter material and the second filter material is selected to target absorption of polar chemicals (Gerardo discloses zeolite LTL adsorbs carboxylic acids, which is polar chemicals, Gerardo p. 598). Regarding claim 15: Gerardo discloses that the adsorption filter of claim 1, further comprising a third filter material, and wherein a first one of the first, second, and third filter materials is selected to target absorption of water, a second one of the first, second, and third filter materials is selected to target absorption of polar chemicals, and a third one of the first, second, and third filter materials is selected to target absorption of non-polar chemicals (other than Gerardo’s silica and Zeolite LTL, which targets polar chemicals of water and carboxylic acids, respectively, Gerardo also discloses Zeolite BET, which adsorbs nitrogen, Gerardo p. 593; nitrogen is nonpolar chemicals) . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. The claims are rejected as follows: 07-21-aia AIA Claim s 5, 7 are rejected under 35 U.S.C. 103 as being unpatentable over Gerardo in view of Wang et al., CN 110358577 A (“Wang”) 3 . Regarding claim 5: Gerardo does not disclose that the adsorption filter of claim 1, wherein the first contaminant or second contaminant is a sulfur compound. In the analogous art of alkali metal aluminosilicate adsorbents, Wang discloses its adsorbent could be used to purify naphtha olefins, Wang p. 8. Naphtha olefins is a hydrocarbon oil. Wang discloses naphtha olefins could require sulfur, Wang p. 8. Wang discloses it is necessary to desulfurizing, Wang p. 5. It would therefore have been obvious for one ordinary skill in the art at the time of filing to use Gerardo’s adsorption filter Wang’s hydrocarbon oil because both uses alkali metal aluminosilicate adsorbents, and with such modification, the first or second contaminant is a sulfur compound. Additionally, it is noted here that the current invention is directed to an adsorption filter, the contaminants that worked upon does not get patentable weight because they are not part of the claimed adsorption filter. Here, the examiner shows that alkali metal aluminosilicate adsorbent could be used to adsorb sulfur and therefore, read on the claim. Regarding claim 7: Gerardo discloses that the adsorption filter of claim 1, wherein the second filter material is a molecular sieve, a clay, or a silica gel (Gerardo discloses silica, Gerardo p. 592; Gerardo does not disclose its silica is in the form of silica gel). In the analogous art of alkali metal aluminosilicate adsorbents, Wang discloses its adsorbents could include silica gel, Wang p. 7. It would therefore have been obvious for one ordinary skill in the art at the time of filing for Gerardo’s silica to be silica gel because silica gel is known in the art as being suitable as a silica source for alkali metal aluminosilicate adsorbents . 07-21-aia AIA Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Gerardo in view of Sterte et al., US 2002/0192155 A1 (“Sterte”) . Regarding claim 9: Gerardo discloses that the adsorption filter of claim 1, wherein the pore size distribution of the first filter material is in the nanopore range (Gerardo discloses zeolite LTL has nanocrystals, Gerardo p. 596, nanocrystal is in the nanopore range). Gerardo does not disclose that the pore size distribution of the second filter material is in the micropore, mesopore, or macropore range. In the analogous art of LTL molecular sieve comprising silica, Sterte discloses silica has a pore size distribution in the mesopore range, Sterte [0124]. Sterte discloses its molecular sieve is very advantageous in respect to the handling/use properties of a composition composed of macrostructures where the chemical properties thereof are primarily dictated by the characteristics of microcrystals of which the macrostructures are composed, Sterte [0036]. It would therefore have been obvious for one ordinary skill in the art at the time of filing for Gerardo’s silica to be in the same mesopore range as disclosed by Sterte for the benefits disclosed above . 07-21-aia AIA Claim s 16–17 are rejected under 35 U.S.C. 103 as being unpatentable over Gerardo in view of Sterte and in further view of Wang . Regarding claim 16: Gerardo discloses that the adsorption filter of claim 15, wherein each of the first, second, and third filter materials has either a microporous or a mesoporous pore size distribution because Gerardo disclose its first and third filter materials is zeolite, which is microporous, Gerardo p. 593. Additionally, as modified in claim 9, Sterte discloses silica could be mesoporous, Sterte [0036]. Gerardo as modified in claim 9 does not disclose the adsorption filter further comprising a fourth filter material having a mesoporous pore distribution to absorb large organic contaminants. However, Wang discloses its alkali metal aluminosilicate adsorbents could include silica gel, Wang p. 7. It would have been obvious to include Wang’s silica gel in Gerardo’s adsorption filter to adsorb water in hydrocarbon oil as water is a known contaminants in hydrocarbon oil. With such modification, Gerardo would comprise a fourth filter material of silica gel. The published instant disclosure recognized silica gel as “typically” have larger pores that falls into the mesoporous and microporous category and to be capable of adsorb large organic compounds, Spec. [0034]. And it would therefore have been obvious for one ordinary skill in the art at the time of filing to recognize that silicon gel has a mesoporous pore distribution to absorb large organic contaminants because the published Spec. admits this is “typical”. Regarding claim 17: Modified Gerardo discloses that the adsorption filter of claim 16, wherein the fourth filter material is a molecular sieve or a silica gel (as discussed in claim 16, the fourth filter material is silica gel) . 07-21-aia AIA Claim s 18–20 are rejected under 35 U.S.C. 103 as being unpatentable over Gerardo in view of Best et al., US 2014/0211412 A1 (“Best”) . Regarding claim 18: Gerardo does not disclose that an oil immersion cooling system for using the hydrocarbon cooling oil to cool one or more electronic components, and comprising the adsorption filter of claim 1. In the analogous art of hydrocarbon mineral oil, Best discloses mineral oil could be used for liquid coolant to cool hard disc drives (HDD), Best [0012]. It would therefore have been obvious for one ordinary skill in the art at the time of filing to use Gerardo’s hydrocarbon oil for such purpose because Best disclose mineral oil is suitable to use as coolant oil. Additionally, a person of ordinary skill in the art would be motivated to include Gearado’s adsorption filter to filter out contaminants incurred during the cooling process such that the hydrocarbon cooling oil could be reused to save cost. Regarding claim 19: Modified Gerardo discloses that the oil immersion cooling system of claim 18, wherein the electronic components are processing devices (Best discloses as HDD, which is a device that is used for storing and retrieving digital information such as data in computing system, which is a processing device, Best, [0005]). Regarding claim 20: Modified Gerardo discloses that the oil immersion cooling system of claim 18, wherein the electronic components are data storage devices (Best discloses as HDD, which is a device that is used for storing and retrieving digital information such as data in computing system, Best, [0005]. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to QIANPING HE whose telephone number is (571)272-8385. The examiner can normally be reached on 7:30-5:00 M-F. 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, Jennifer Dieterle can be reached on (571) 270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /Qianping He/Examiner, Art Unit 1776 Application/Control Number: 18/600,962 Page 2 Art Unit: 1776 Application/Control Number: 18/600,962 Page 4 Art Unit: 1776 Application/Control Number: 18/600,962 Page 5 Art Unit: 1776 Application/Control Number: 18/600,962 Page 6 Art Unit: 1776 Application/Control Number: 18/600,962 Page 7 Art Unit: 1776 Application/Control Number: 18/600,962 Page 8 Art Unit: 1776 Application/Control Number: 18/600,962 Page 9 Art Unit: 1776 Application/Control Number: 18/600,962 Page 10 Art Unit: 1776 Application/Control Number: 18/600,962 Page 11 Art Unit: 1776 Application/Control Number: 18/600,962 Page 12 Art Unit: 1776 1 Gerardo is the 8-page NPL dated Mar. 11, 2024. 2 is silica adsorbent for water - Google Search 3 A copy of Wang’s original document and machine translation are provided with the office action. The examiner relies on the original document for the figure and machine translation for the text.
Prosecution Insights