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 .
The amendments filed 10/15/25 overcome the rejections set forth under 35 USC 103 in the office action mailed 7/16/25. New grounds of rejection, necessitated by the amendments, are set forth below. The amendments also overcome the rejection set forth under 35 USC 112(b) for claim 13 and its dependent claims, but fail to overcome the rejection of claim 1 and its dependent claims under 35 USC 112(b), the discussion of which has been updated in accordance with the claim amendments.
Claim Rejections - 35 USC § 112
Claims 1 and 4-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 has been amended to require that the base fluid be a blend of the ester of Ex 7 and an ester of either Ex 12 or Ex 14. However, the preamble to the claim requires a “neat ester base stock” as the base fluid, and the specification, for example in paragraphs 6, 33-34, and Table 1, indicates that a neat ester is a single ester, as opposed to the base stock blend required in the amended claims. The examiner recommends that the preamble to claim 1 be amended to simply recite “A heat transfer fluid comprising a base fluid and an additive”.
Claim Rejections - 35 USC § 103
Claims 1, 4-10, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Flores-Torres (U.S. PG Pub. No. 2018/0100120) in view of Young (U.S. Pat. No. 2,929,786).
In paragraph 2 Flores-Torres discloses a lubricating oil for an electric vehicle powertrain and powertrain components. In paragraphs 42 and 53-57 Flores-Torres discloses that the base oil of the composition can be an ester oil. In paragraph 54 Flores-Torres discloses that particularly useful esters are obtained by reactions a hindered polyol, which can be 2-methyl-2-propyl-1,3-propanediol, with a C5-C30 acid which can be a straight chain fatty acid. Ex 12 and Ex 14 of amended claim 1 are the reaction products of 2-methyl-2-propyl-1,3-propanediol with a C5 and C6 straight chain fatty acid respectively, and the range of the number of carbon atoms for the acid reactant of Flores-Torres therefore encompasses the range of the number of carbon atoms for making the diesters of Ex 12 and Ex 14 of claim 1. In paragraph 67 Flores-Torres discloses that the base oil is more preferably present in an amount of 85 to 95% by weight of the composition, within the range recited for the base fluid of claim 1, and leading to an additive content within the range recited in claims 1 and 14. In paragraphs 14, 22, and 68-231, including Table 1, Flores-Torres discloses that the composition can comprise various additives recited in claims 1 and 15.
In paragraph 38 Flores-Torres discloses that he composition can have a density of about 0.82 g/mL to about 0.96 g/mL, encompassing the range recited in claim 4. In paragraph 37 Flores-Torres discloses that the composition has a viscosity index overlapping or encompassing the ranges recited in claim 7 and 13. In paragraph 33 Flores-Torres discloses that the composition has a viscosity of about 2 to about 20 cSt at 100° C, overlapping the range recited in claim 6, and in combination with the viscosity index of Flores-Torres, implying a viscosity at 40° C also overlapping the range recited in claim 6. In paragraph 39 Flores-Torres discloses that the composition can have a specific heat capacity of greater than about 1.9 kJ/kg K, overlapping the range recited in claim 9, noting that kJ/kg K is equivalent to J/g °C. In paragraph 30 Flores-Torres discloses that the composition has an electrical conductivity in various ranges overlapping the range recited in claims 10 and 13.
The differences between Flores-Torres and the currently presented claims are:
i) Flores-Torres does not specifically disclose a blend of Ex 12 or Ex 14 with Ex 7. Flores-Torres does disclose in paragraph 53 that suitable ester base stocks can be esters of adipic acid.
ii) Some of the ranges of Flores-Torres overlap or encompass the claimed ranges rather than falling within them.
With respect to i), Young discloses in column 3 lines 5-16 ester base oils similar to those disclosed in paragraph 53 of Flores-Torres, and in column 3 line 33 specifically discloses di-(2-ethylbutyl) adipate, corresponding to the ester of Ex 7, as a suitable lubricating oil. Case law holds that “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted). It therefore would have been obvious to one of ordinary skill in the art to combine the esters of either Ex 12 or Ex 14 of Flores-Torres with the ester of Ex 7 of Young, meeting the limitations of the base fluids of amended claims 1 and 13, since Flores-Torres and Young teach that they are all useful for the same purpose as ester base oils.
With respect to ii), See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Claims 1, 4, 6-7, 9-10, and 13-15 are therefore rendered obvious by Flores-Torres and Young. Additionally, since Flores-Torres meets the compositional limitations of the claims, including diester base corresponding to the claimed species and viscosity modifiers which impart low temperature operability (paragraph 182), and is effective as a coolant (paragraph 19), the compositions of Flores-Torres will have a Brookfield viscosity and thermal conductivity in ranges at least overlapping the ranges recited in claims 5 and 8.
Response to Arguments
Applicant's arguments filed 10/15/25 have been fully considered but they are not persuasive. Regarding the rejection set forth over 35 USC 112(b), applicant asserts that the claim amendments overcome the rejections set forth in the office action mailed 7/16/25. While the amendments do overcome the rejection of claims 13-15, the amendments do not overcome the rejections of claims 1 and 4-10, since the preamble to claim 1 continues to recite a neat ester stock while the amended claims now require an ester stock blend.
Regarding the rejections set forth over 35 USC 103, applicant asserts, without further elaboration that paragraphs 53-57 of Flores-Torres teach or suggest the esters of Ex 12 or Ex 14. However, as discussed in the rejection, Flores-Torres discloses that a particularly useful ester base oil is an ester of an alkanoic acid that is preferably a C5-C30 saturated straight chain fatty acid with a hindered polyol such 2-methyl-2-propyl-1,3-propanediol, where the number of carbon atoms in the fatty acid encompasses the range of carbon atoms in the alkyl residues of Ex 12 and Ex 14. Applicant argues that Flores-Torres does not teach a combination of Ex 7 with Ex 12 or Ex 14, but the newly applied Young reference teaches that the di-(2-ethylbutyl) adipate of Ex 7 is also a known ester base oil, and it therefore would have been obvious to one of ordinary skill in the art to combine Ex 7 with Ex 12 or Ex 14 as a mixture of known equivalents, meeting the limitations of the ester base stock blend of both amended claim 1 and amended claim 13.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
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