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 preliminary amendment filed 05/08/2024 is entered.
Claims 1-13 and 30-47 are pending.
The Drawings filed 05/08/2024 are approved by the examiner.
The IDS statement filed 05/08/2024 has been considered. An initialed copy accompanies this action.
Claim Objections
Claim 39 and 45 are objected to because each claim fails to end with a period and are therefore not in proper form. Applicant is required to amend the claims such that they properly end with a period. 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).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 34-36 and 44-47 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.
Claims 34-36 recite dielectric working fluid in the immersion cooling unit apparatus have certain minimum volume resistivity magnitudes of at least 1 x 1010, at least 1 x 1011, and at least 1 x 1012, respectively. However, the recited volume resistivities lack units, thus rendering the actual magnitudes, and therefore the scope of the claims, unclear and indefinite. It is noted that [0069] of the original specification indicates that embodiments similar to those claimed have volume resistivity units of ohm-cm. Applicant could overcome this issue by adopting the units of “ohm-cm” into the claims.
Independent claim 44 recites a “high-GWP dielectric fluid” in the preamble which renders the claim indefinite. The term “high-GWP” (meaning high global warming potential) is a relative, even subjective, term renders the claim and its dependent claims indefinite. The term 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 unclear what GWP would constitute a high GWP. Furthermore, the meaning of the term can depend on the subjective opinion of a person practicing the invention. For example, one skilled artisan might regard about 1000 as a high GWP whereas another might regard about 350 as a high GWP.
Also, due to evolving technology and regulations, the meaning of high GWP changes over time. What was a normal GWP ten years ago is now considered high, and ten years from now what is a normal GWP now will likely be considered high. As the general scope of the term can change over time, the claim is indefinite.
Independent claim 44 recites a method of replacing a high-GWP dielectric fluid in immersion cooling system comprising a step of charging the immersion cooling system that was designed for use with a perfluorinated working fluid with the particularly recited composition. However, dependent claims 45-47 are drawn to limitations pertaining to “the electrical component to fluid thermal resistance of the replacement fluid” that lacks sufficient antecedent basis in the claims. There is no electrical component recited in the independent claim and the sole recited step in the independent claim’s method arguably does not encompass or require a replacement fluid as the recited steps only require charging of the recited composition to a system broadly “designed for use” with another working fluid rather than positively replacing another working fluid.
Appropriate correction/clarification is required.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Kontomaris et al. (WO 2017/147400 A1).
Kontomaris et al. teach a working fluid comprising perfluoroheptene (abstract). The working fluid may further comprise a hydrofluoroether such as nonafluorobutyl methyl ether (HFE-7100 or C4F9OCH3) or nonafluorobutyl ethyl ether (HFE-7200 or C4F9OC2H5) (p.9 lines 3-24).
While Kontomaris et al. fail to meet the claimed composition comprising perfluoroheptene and a fluorinated ether selected from nonafluorobutyl methyl ether and nonafluorobutyl ethyl ether under the meaning of anticipation, the cited teachings of the reference nevertheless render obvious the claimed pairs of components. 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 Kontomaris et al. in order to obtain working fluid for a power cycle system 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).
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Xing et al. (CN 110343227 A). An English language machine translation of Xing et al. is attached to the supplied copy of the reference, and citations to the reference are with respect to the translation unless specified otherwise.
Xing et al. teach a hard polyurethane foam and preparation method thereof comprising provision of a nucleating agent component (abstract and p.3). The nucleating agent is a perfluoroolefin and/or a fluorine-containing ether (p.5). In other words, the nucleating agent component is itself a composition as it may clearly contain a binary blend of a perfluoroolefin and a fluorine-containing ether per the grammar disclosed. The perfluoroolefin is selected from, among six other species, perfluoro-1-heptene (Id.), i.e., perfluoroheptene. The fluorine-containing ether is selected from, among eighteen other species, nonafluorobutyl methyl ether, nonafluorobutyl ethyl ether, or even tetrafluoroethyl trifluoroethyl ether (Id.). While this is not immediately apparent from the translation attached to the copy of the reference, an alternative translation of this same portion of the reference (para. 0038) is as follows, which clarifies the claimed fluorinated ether species are clearly encompassed by the reference’s fluorine-containing ether component:
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While Xing et al. fail to meet the claimed composition comprising perfluoroheptene and a fluorinated ether selected from 1,1,2,2-tetrafluoroethyl-2,2,2-trifluoroethyl ether, nonafluorobutyl methyl ether, and nonafluorobutyl ethyl ether under the meaning of anticipation, the cited teachings of the reference nevertheless render obvious the claimed pairs of components. 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, perfluoroheptene and nonafluorobutyl ethyl ether, or perfluoroheptene and tetrafluoroethyl trifluoroethyl ether from the cited teachings of Xing et al. in order to obtain a nucleating agent component/composition suitable for use in synthesizing a polyurethane foam with a reasonable expectation of success. The reference clearly motivates provision of both a perfluoroolefin and a fluorine-containing ether for the nucleating agent component/composition and teaches that the claimed species of perfluoroheptene and the fluorinated ethers are suitable for these components, respectively.
While the reference also fails to indicate the nucleating agent component 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, perfluoroheptene and nonafluorobutyl ethyl ether, or perfluoroheptene and tetrafluoroethyl trifluoroethyl 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).
Claims 1, 30-38, and 41-47 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).
Regarding the instantly claimed composition (independent claim 1), 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.”). For purposes of brevity, this rejection will address all non-compositional structural limitations (apparatus, method, steps, etc.) prior to addressing the presence of the fluorinated ether component.
Regarding the instantly claimed immersion cooling unit (independent claim 30), Juhasz et al. teach the immersion cooling unit includes an immersion cell, defining an internal cavity, where an electronic component is positioned in the internal cavity, a dielectric working fluid partially fills the internal cavity and at least partially immerses the electronic component, and a condensing coil is positioned above the dielectric working fluid (abstract, [0022], claim 1, and Fig. 1 of WO; abstract, [0022], claim 1, and Fig. 1 of Prov. App.). The dielectric working fluid does not immerse the condensing coil ([0022], claim 2, and Fig. 1 of WO; [0022], claim 2, and Fig. 1 of Prov. App), which meets the structure of claim 31. The operating temperature range is between 25°C and 100°C and subsets thereof ([0024] and claims 3-5 of WO; [0024] and claims 3-5 of Prov. App.), which meets the limitations of claims 31-33. The resistivity of the dielectric working fluid is at least 1x1010 or at least 1x1012 ([0029] and claims 6-9 of WO; [0029] and claims 6-9 of Prov. App.), which meets the limitations of claims 34-36. The working fluid also has a GWP of less than 100 (claim 10 of WO; claim 10 of Prov. App.), which meets the limitations of claim 37. Examples of devices of the present disclosure include, but are not limited to, microprocessors, wafers used to manufacture semiconductor devices, power control semiconductors, electrical distribution switch gear, power transformers, circuit boards, multi-chip modules, packaged and unpackaged semiconductor devices, laser, fuel cells, electrochemical cells ([0017] and claim 16 of WO; [0017] and claim 16 of Prov. App.), which meets the limitations of claim 38.
Regarding the instantly claimed method for cooling an electrical component (independent claim 41), Juhasz et al. teach a method for cooling an electronic component comprising partially immersing an electrical component in the working fluid; and transferring heat from the electrical component using the working fluid ([0017] and claim 17 of WO; [0017] and claim 17 of Prov. App.). Said transferring of heat occurs through pumping of said working fluid from the electrical component to be cooled to a remote heat sink (claim 18 of WO; claim 18 of Prov. App.), which meets the limitations of claim 42, and said transferring of heat occurs through vaporization of said working fluid in contact with the electrical component to be cooled, and condensing said working fluid vapor through contact with a heat sink ([0023] and claim 19 of WO; [0023] and claim 19 of Prov. App.), which meets the limitations of claim 43.
Regarding the instantly claimed method of replacing a high-GWP dielectric fluid in an immersion cooling system (independent claim 44), 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.). The 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.
Allowable Subject Matter
Claims 2-13, 39, and 40 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record fail to teach or suggest azeotropic compositions comprising perfluoroheptene and the fluorinated species in the recited concentrations or immersion cooling units thereof.
Kikuchi et al. (WO 2017/105962 A1) teach an azeotrope-like composition comprising a perfluoroheptene and an alcohol containing fluorine such as hexafluoroisopropanol, trifluoroethanol, pentafluoropropanol, and tetrafluoroethanol (abstract and p.3). However, fails to teach or suggest the presence of the particular 1,1,2,2-tetrafluoroethyl-2,2,2-trifluoroethyl ether, nonafluorobutyl methyl ether, and nonafluorobutyl ethyl ether fluorinated ether compounds, as claimed.
Kontomaris et al. (WO 2017/147400 A1) teach a working fluid comprising perfluoroheptene (abstract). The working fluid may further comprise a hydrofluoroether such as nonafluorobutyl methyl ether (HFE-7100 or C4F9OCH3) or nonafluorobutyl ethyl ether (HFE-7200 or C4F9OC2H5) (p.9 lines 3-24). While Kontomaris et al. broadly encompasses blends of perfluoroheptene with nonafluorobutyl methyl ether or nonafluorobutyl ethyl ether, the reference fails to teach, suggest, or hint at anything further for a person of ordinary skill in the art to arrive at/within the particular concentration ranges recited in dependent claims 2-13. Additionally, while Kontomaris et al. teach methods of cooling and methods of relacing a prior working fluid (i.e., HFC-245fa) utilizing their perfluoroheptene-based working fluid (abstract, p.2, p.3, etc.) their apparatus involves generation of mechanical work and/or an organic Rankine power cycle and does not fairly teach or encompass an immersion cooling system or the related methods as claimed. Kontomaris et al.'s system includes steps of heating a working fluid with a heat source to pressurize the working the working fluid and causing mechanical work to be performed (Id., p.2 lines 14-18, Fig. 1) and nothing, especially an electrical component, is disclosed or suggested as immersed in the working fluid or is configured to even broadly meet an immersion cooling system as claimed.
Xing et al. (CN 110343227 A) teach a hard polyurethane foam and preparation method thereof comprising provision of a nucleating agent component (abstract and p.3). The nucleating agent is a perfluoroolefin and/or a fluorine-containing ether (p.5). In other words, the nucleating agent component is itself a composition as it may clearly contain a binary blend of a perfluoroolefin and a fluorine-containing ether per the grammar disclosed. The perfluoroolefin is selected from, among six other species, perfluoro-1-heptene (Id.), i.e., perfluoroheptene. The fluorine-containing ether is selected from, among eighteen other species, nonafluorobutyl methyl ether, nonafluorobutyl ethyl ether, or even tetrafluoroethyl trifluoroethyl ether (Id.). While this motivates blends of perfluoroheptene and nonafluorobutyl methyl ether, perfluoroheptene and nonafluorobutyl ethyl ether, or perfluoroheptene and tetrafluoroethyl trifluoroethyl ether that broadly meet independent claim 1, Xing et al. suffers from the same deficiencies as Kontomaris et al. (Id.) and fail to teach or suggest the particular concentration ranges recited in dependent claims 2-13. Xing et al. also fail to teach or suggest an immersion cooling unit, a method of cooling an electrical component, or a method of replacing a dielectric fluid in an immersion cooling system utilizing the nucleating agent component nor would there be any reason or motivation to utilize the nucleating agent useful for preparing a polyurethane foam in such apparatus/methods.
Musyimi (WO 2019/213193 A1, related to US 11,767,494 B2) teach binary azeotrope and azeotrope-like compositions comprising i) perfluoroheptene and ii) a compound selected from methyl acetate, acetone, tert-butyl acetate, isopropyl acetate, n-heptane, iso-octane, n-hexane, hexamethyldisiloxane, and cyclopentane (abstract and p.5). However, like Kikuchi et al. (Id.), Musyimi fails to teach or suggest the presence of the particular 1,1,2,2-tetrafluoroethyl-2,2,2-trifluoroethyl ether, nonafluorobutyl methyl ether, and nonafluorobutyl ethyl ether fluorinated ether compounds, as claimed.
Juhasz et al. (WO 2023/064129 A1, earlier filed as US Provisional Application 63/254,856) teach a dielectric working fluid, an immersion cooling unit using the dielectric working fluid, a method for cooling an electronic component comprising partially immersing an electrical component in the working fluid, and 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 where the dielectric working fluid comprises at least one of perfluorohept-2-ene or perfluorohept-3-ene, i.e., perfluoroheptene, (abstract and claims of both the WO publication and the provisional application). 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 both the WO publication and the provisional application). While this motivates blends of perfluoroheptene and nonafluorobutyl methyl ether and perfluoroheptene and nonafluorobutyl ethyl ether that broadly meet the compositions recited in independent claims 1 and 30, Juhasz et al. fail to teach or suggest the particular concentration ranges recited in dependent claims 2-13, 39, and 40.
Fraser et al. (CN 117946621 A) is additionally cited as teaching a ternary azeotrope or azeotrope-like composition comprising perfluoroheptene, 1,1,2-tetrafluoroethyl-2,2,2-trifluoroethyl ether (HFE-347pc-f) and an additional compound, wherein the additional component is present in the composition in an amount effective to form an azeotropic or azeotrope-like composition with the perfluoroheptene. The additional compound is n-heptane, methylcyclohexane, cyclohexane, methyl ethyl ketone, trans-1,2-dichloroethylene (t-DCE), or methanol. While the reference clearly teaches an azeotropic composition comprising perfluoroheptene and 1,1,2-tetrafluoroethyl-2,2,2-trifluoroethyl ether, the reference is not available as prior art.
The remaining references listed on Forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or described above.
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./
July 30, 2026
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