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 08/19/2026.
Claims 1 and 30-47 are currently pending.
Response to Amendment
The objections of claim 39 and 45 are withdrawn in view of the above amendment. However, claim 1 is objected to a new reason necessitated by the present claim amendment. See below.
The rejection of claims 34-36 and 44-47 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the above amendment.
It is noted the present claim amendments incorporate the limitations of claims 3, 7, and 11 (each not rejected over prior art in the previous Office action and indicated as allowable over the prior art of record) into independent claim 1 and amended claims 30 and 41 to depend on independent claim 1.
The rejection of claim 1 under 35 U.S.C. 103 as being unpatentable over Kontomaris et al. (WO 2017/147400 A1) is withdrawn in view of the above amendment incorporating allowable subject matter into the claim.
The rejection of claim 1 under 35 U.S.C. 103 as being unpatentable over Xing et al. (CN 110343227 A) is withdrawn in view of the above amendment incorporating allowable subject matter into the claim.
The rejection of claims 1, 30-38, and 41-43 under 35 U.S.C. 103 as being unpatentable over Juhasz et al. (WO 2023/064129 A1) is withdrawn in view of the above amendment incorporating allowable subject matter into the claim.
However, the 103 rejection of claims 44-47 over Juhasz et al. (WO 2023/064129 A1) as previously set forth in the Office action mailed 08/03/2026 is maintained and reiterated (albeit slightly revised in view of the withdrawal of the rejection(s) of other claims) below. Note that, unlike claims 1, 30-38, and 41-43, the scope of claims 44-47 remain substantially unchanged from their previous, rejected scope.
Claim Objections
Claims 1 and 30-43 are objected to because independent claim 1 claim recites a period in the middle of the claim and is therefore not in proper form. Note that the claim as amended on line 2 recites “comprising:.” with a colon followed by a period prior to the body of the claim. Applicant is required to amend the claim such that the period is not recited after the colon on the second line. Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. See also MPEP 608.01(m). Claims 30-43 are also objected to for their dependency on claim 1. Appropriate correction is required.
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 44-47 are rejected under 35 U.S.C. 103 as being obvious over Juhasz et al. (WO 2023/064129 A1, earlier filed as US Provisional Application 63/254,856).
The applied reference has a common applicant and at least one common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
Juhasz et al. teach a dielectric working fluid and an immersion cooling unit using the dielectric working fluid comprising at least one of perfluorohept-2-ene or perfluorohept-3-ene, i.e., perfluoroheptene, (abstract of both the WO publication, “WO”, and the provisional application, “Prov. App.”). Juhasz et al. teach a method of replacing a high-GWP dielectric fluid in an immersion cooling system, comprising: charging an immersion cooling system that was designed for use with a perfluorinated working fluid with the dielectric working fluid composition (claim 20 of WO; claim 20 of Prov. App.). An electrical component to fluid thermal resistance of the replacement fluid is lower than or equivalent to said perfluorinated working fluid, no higher than 20% greater than that of said perfluorinated working fluid, or no higher than 10% greater than that of said perfluorinated working fluid ([0047] and claims 21-23 of WO; [0047] and claims 21-23 of Prov. App.), which meets the limitations of claim 45-47.
While Juhasz et al. teach a working fluid composition comprising perfluoroheptene, an immersion cooling unit apparatus thereof, and methods of use thereof, the reference fails to sufficiently meet/exemplify the additional presence of a fluorinated ether selected from nonafluorobutyl methyl ether and nonafluorobutyl ethyl ether under the meaning of anticipation.
However, Juhasz et al. teach the dielectric working fluid may further comprise additional additives including halogenated ethers such as nonafluorobutyl methyl ether (C4F9OCH3) or nonafluorobutyl ethyl ether (C4F9OC2H5) ([0060] and claim 14 of WO; ([0060] and claim 14 of Prov. App.).
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to formulate and provide blends of perfluoroheptene and nonafluorobutyl methyl ether or perfluoroheptene and nonafluorobutyl ethyl ether from the cited teachings of Juhasz et al. in order to obtain dielectric working fluid for an immersion cooling unit and methods of use thereof with a reasonable expectation of success. The reference clearly requires perfluoroheptene as a primary component and motivates both nonafluorobutyl methyl ether and nonafluorobutyl ethyl ether as an additional component further contained in the composition.
While the reference also fails to indicate the working fluid exhibits azeotropic properties, the claimed properties would flow naturally from the cited teachings of the reference as the reference teaches and motivates the same broad blends of perfluoroheptene and nonafluorobutyl methyl ether or perfluoroheptene and nonafluorobutyl ethyl ether as claimed. 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).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Response to Arguments
Applicant's arguments filed 08/19/2026 regarding the 103 rejection over Juhasz et al. (WO 2023/064129 A1) have been fully considered but they are not persuasive.
Applicant argues independent claim 1 has been amended to alternatively recite the azeotropic composition that was previously recited in claims 3, 7, and/or 11 and has also amended independent claims 30 and 41 to recite the composition. Applicant’s position is since claims 3, 7, and 11 were indicated as being directed to allowable subject matter, amended claims 1, 30, and 41 should be similarly be directed to allowable subject matter.
While the Office agrees with Applicant’s remarks, the remarks do not acknowledge or address the 103 rejection of claims 44-47 of Juhasz et al. which, whether in their previous scope or present scope, do not have any dependency or direct relationship to claims 1, 3, 6, 11, 30, or 41. The composition recited in the method of claim 44 is significantly more broad than that of allowable claim 1. Accordingly, the 103 rejection of claims 44-47 is maintained.
Allowable Subject Matter
Claims 1 and 30-43 are objected to but are otherwise allowable over the prior art of record for the reasons already of record and set forth on pages 12-16 the previous Non-Final Office action mailed 08/03/2026.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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./
August 31, 2026
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