DETAILED ACTION
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 .
Response to Amendment
Upon entry of the amendment filed on 16 June 2026, Claim(s) 1 is/are amended; Claim(s) 3-12 is/are added, and Claim(s) 2 is/are cancelled. The currently pending claims are Claims 1 and 3-12.
Applicants’ remarks and amendments have been carefully considered and are found persuasive regarding the Qi reference – thus the rejection based on Qi has been withdrawn. However, they are not found persuasive regarding Sasaki, and the rejections are maintained. Further, new grounds of rejections are provided necessitated by the amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 11 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. It is noted that the originally filed specification is silent regarding the “substantially free of ionic compounds” feature.
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.
Claim 11 is 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. The term “substantially free” in claim 11 is a relative term which renders the claim indefinite. The term “substantially free” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is noted that the specification does not recite the “substantially free of ionic compounds” – thus it is unclear as to the metes and bounds of the claimed limitation (what is the threshold for the composition to be “substantially free”?).
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sasaki (US-5512198-A).
Sasaki discloses a coolant composition comprising a mineral/synthetic oil and a boric acid ester (abs, col 4/26-5/48, col 6/51-7/9, col 8/45). Further, Sasaki discloses various boric acid esters such as tribenzyl borate – thus meeting the claimed aromatic ring and R values - and various oils (Table 1 with accompanying text). Regarding the claimed low conductivity property, if a prior art reference teaches a substantially identical composition, it would be reasonable that the same function and/or property would be imparted or exhibited. See MPEP 2112.01. In particular, it is noted that all the components required by Sasaki are insulator thus reinforcing the non-conductive nature of the composition. Applicant is welcome to provide any evidence that the disclosed material is exceedingly different from the claimed material - thus the claimed properties would inevitably not be present. It is noted that Sasaki does not require any specific conductivity threshold – thus, the low conductivity range would be expected.
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.
Claim(s) 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki.
Claims 8 and 9: Sasaki discloses 0.1-50 % of boric acid ester and a viscosity of 2-150 cst (col 4/45 to 5/35). The Sasaki reference discloses the claimed invention but does not explicitly disclose the claimed loading amounts and viscosity ranges. Given that the Sasaki reference discloses ranges that overlap with the presently claimed ranges, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize any of the taught values, including those presently claimed, to obtain a suitable composition. According to MPEP 2131.03 and MPEP 2144.05, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize the loading and viscosity variables with the benefit gain of enhanced workability and lubricating parameters of the composition. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components would be repugnant to a skilled artisan.
Claim 10 and 11: Sasaki discloses the oil cooling and does not require ionic compounds (abs, col 8/23-29, examples).
Claim(s) 1 and 3-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takashima (JP-2020164768-A, a translation is provided).
Claims 1, 3-6 and 12: Takashima discloses a composition with (a) mineral and/or synthetic oil and (b) boric acid ester B(OR)3 with R being alkyl having 1-24 carbon atoms (abs, pg. 2, 3, 5, 17, 18- 23 and formula 1). The Takashima reference discloses the claimed invention with the mineral and/or synthetic oil and boric acid ester B(OR)3 with R being alkyl having 1-24 carbon atoms but does not disclose the composition with the claimed elements with enough specificity to anticipate the claimed invention. Nevertheless, given that Takashima discloses the mineral and/or synthetic oil and boric acid ester B(OR)3 with R being alkyl having 1-24 carbon atoms, it would have been obvious to one of ordinary skill in the chemical art at the time of the invention to utilize any of the taught components since Takashima teaches each one. Therefore, it would have been obvious to one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success since the reference is directed to a similar field of endeavor. It is also noted that the fact that many components are disclosed would not have made any of them, such as the mineral and/or synthetic oil and boric acid ester B(OR)3 with R being alkyl having 1-24 carbon atoms, less obvious. Here, Takashima discloses each of the claimed components and there is no evidence nor teaching that the selection of the claimed components would be repugnant to a skilled artisan. Further, obviousness only requires a reasonable expectation of success. See MPEP 2143.
Regarding the cooling and conductivity properties, if a prior art reference teaches the substantially identical material, it would be reasonable that the same function and/or property would be imparted or exhibited. See MPEP 2112.01. Applicant is welcome to provide any evidence that the disclosed material is exceedingly different from the claimed material - thus the claimed properties would inevitably not be present.
Claims 7, 8 and 9: Takashima discloses 0.1-5.0 % of boric acid ester, greater than 80 % of the mineral oil and a viscosity of 3-10 mm2/s (pg.2, 3, 17-23). The Takashima reference discloses the claimed invention but does not explicitly disclose the claimed loading amounts and viscosity ranges. Given that the Takashima reference discloses ranges that overlap with the presently claimed ranges, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize any of the taught values, including those presently claimed, to obtain a suitable composition. According to MPEP 2131.03 and MPEP 2144.05, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize the loading and viscosity variables with the benefit gain of enhanced workability and lubricating parameters of the composition. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components would be repugnant to a skilled artisan.
Claims 10 and 11: Takashima discloses the vehicle application and does not require any ionic compounds (pg. 19).
Claim(s) 4-6 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki as applied to claim 1 above, and further in view of Takashima.
The Sasaki reference discloses the claimed invention but does not explicitly disclose the feature of the R being an alkyl group having 6 to 18. It is noted that the Sasaki reference discloses boric acid ester with hydrocarbon chains and the claim(s) call(s) for the R being an alkyl group having 6 to 18. In an analogous art, the Takashima reference discloses that a boric acid ester B(OR)3 with R being alkyl having 1-24 carbon atoms is well known in the art (see above). One of ordinary skill in the art would have recognized that applying the known component of Takashi to the teachings of Sasaki would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions for the benefit gain of enhanced lubrication as desired by Sasaki. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the substitution and/or optimization would be repugnant to a skilled artisan.
Response to Arguments
Applicant's arguments filed 16 June 2026 have been fully considered and are found persuasive regarding the Qi reference. The rejection based on Qi has been withdrawn.
However, they are not persuasive regarding the Sasaki reference.
Applicant argues that the additional oxygen containing compounds of Sasaki would lead to an increase in conductivity of the composition (pg. 5).
The examiner respectfully disagrees and notes that the components listed in the examples are all insulators. Further, Sasaki discloses enhanced lubrication and cooling in electroconductive environment thus the low conductivity would be desired to avoid corrosion and shorts.
Applicant argues the unexpected result of the low conductivity based on Table 1 (pg. 6).
The examiner respectfully disagrees. In order to overcome the prima facie case of obviousness for the numerical range claim limitation, the applicant may show (1) criticality or unexpected result of the range, (2) the prior art teaches away from the claim or (3) pertinent secondary factors to rebut the rejection under 35 USC 103. MPEP 2144.05. Here, the applicant intends to show criticality or unexpected result of low conductivity. However, it is noted that the instant claim 1 is not commensurate with the showing in Table 1 (see the specific components and specific loading amounts). In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of non-obviousness fails to outweigh the evidence of obviousness. Thus, the showing has been found insufficient to overcome the rejections based on the instant claims and the rejections are maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/TRI V NGUYEN/Primary Examiner, Art Unit 1764
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