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 7/20/26 overcome the rejections set forth under 35 USC 103 in the office action mailed 2/20/26. New grounds of rejection necessitated by the amendments are set forth below. The rejection set forth under 35 USC 112(d) in the office action mailed 2/20/26 is maintained.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/20/26 has been entered.
Claim Objections
Claim 27 is objected to because of the following informalities: In line 1 of claim 27, “dry lubricating surface” should be “dry lubricating a surface”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1, from which claim 20 depends, requires that the nonionic surfactant be a fatty alcohol alkoxylate. However, claim 20 recites some options that are not fatty alcohol alkoxylates, such as surfactants based on sorbitan esters, castor oil ethoxylate surfactant, or fatty alcohol surfactant without any alkoxylate component. Claim 20 therefore fails to further limit amended claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-2, 4-6, 10-14, 16, 20-22, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Hong (U.S. PG Pub. No. 2007/0158609) in view of Dance (U.S. PG Pub. No. 2020/0199430).
In paragraph 1 Hong discloses a nanofluid which is a dispersion of carbon nanoparticles in a thermal transfer fluid in the presence of surfactants. In paragraphs 37 and 76 Hong discloses that the thermal transfer fluid can be a vegetable oil, as recited in claim 1. In paragraph 56 Hong discloses that the surfactant can be nonionic and can be an ethoxylated fatty alcohol, meeting the limitations of the nonionic surfactant of claims 1 and 20. Hong specifically discloses that the ethoxylated fatty alcohol can be derived from an alcohol having 6 to 30 carbon atoms and 5 to 150 ethylene oxide units, encompassing and overlapping the ranges recited in conditions (a) and (b) of claim 21. Hong also specifically discloses that the ethoxylated fatty alcohol can be derived from lauryl alcohol, meeting the limitations of condition (c) of claim 21. An ethoxylated fatty alcohol derived from an alcohol having 6 to 30 carbon atoms and 5 to 150 ethylene oxide units also meets the limitations of claim 22 where the number of carbon atoms in the R group encompasses the claimed range, Y is H, n is 5 to 150, overlapping the claimed range, and m is 0 or 2. In paragraphs 76 and 78 Hong discloses that the composition comprises 40 to 99% by weight of the thermal transfer fluid (vegetable oil) and 0.1 to 30% by weight of the surfactant, leading to a weight ratio of vegetable oil to surfactant overlapping the range recited in claim 1, and where the concentration ranges for each component overlap the ranges recited in claims 2 and 6. The composition of Hong does not comprise water and the water content therefore falls within the range recited in claims 1 and 6 where the water content is 0% by weight as well as meeting the limitation of claim 16.
The composition of Hong does not require any of the components recited in claim 26 and therefore can be free of those components.
Hong does not disclose the further inclusion of the claimed fatty alcohol ester.
In paragraph 11 Dance discloses a heat transfer fluid comprising an ester that is fully esterified. In paragraph 80 Dance discloses that the fully esterified esters can be esters of various alcohols having a number of carbon atoms within the range recited for the fatty alcohol ester of amended claims 1 and 6. In paragraph 80 Dance also discloses suitable monoacids for preparing the ester, leading to monoesters of fatty alcohols, meeting the limitations of component (a) of claim 11. In paragraph 81 Dance discloses that octyl octanoate, a specific ester meeting the limitations of the fatty alcohol ester of claims 1 and 6, as well as claim 12 where R1 has 7 carbon atoms and R2 has 8 carbon atoms, is a suitable ester. Octyl octanoate is a synonym of octyl caprylate, meeting the limitations of claim 13 where the ester is a caprylate ester. Paragraph 80 of Dance discloses that lauryl alcohol (dodecyl alcohol) and myristyl alcohol (tetradecyl alcohol) are suitable alcohols for preparing the fatty alcohol esters and that caproic acid (hexanoic acid), caprylic acid (octanoic acid), and capric acid (decanoic acid) are suitable acids, leading to lauryl and myristyl caproate, caprylate, and caprate esters, as recited in claim 14.
In paragraph 58 Dance discloses that the heat transfer fluid can be blended with lubricating oil base fluids, and in paragraph 91 Dance discloses that the base fluid can be a natural oil, which encompasses the vegetable oils of Hong. In paragraph 94 Dance discloses that the optional base oil is preferably present from about 50 to 99% by weight of the composition, indicating a vegetable oil to fatty alcohol ester ratio encompassing the ranges recited in claims 4 and 10, and an ester concentration overlapping the range recited in claim 5.
Including the ester heat transfer fluid of Dance in the thermal transfer fluid of Hong meets the limitations of the compositions of claims 1-2, 4-6, 10-14, 16, 20-22, and 26.
It would have been obvious to one of ordinary skill in the art to include the ester heat transfer fluid of Dance in the thermal transfer fluid of Hong, since Dance teaches that the esters can be combined with a natural oil base fluid, and Hong teaches in paragraph 43 that the thermal transfer fluid can be a mixture of types including synthetic oils.
Claims 18 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Hong in view of Dance as applied to claims 1-2, 4-6, 10-14, 16, 20-22, and 26 above, and further in view of Tian (CN 108559601 A).
The discussion of Hong and Dance in paragraph 9 above is incorporated here by reference. Hong and Dance disclose a composition meeting the limitations of claim 1, including fatty alcohol alkoxylates and fatty alcohol esters meeting the limitations of claim 39. Hong and Dance do not disclose the specific vegetable oils recited in claims 18 and 39.
An English-language machine translation of Tian, which is attached, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the translation.
Tian discloses vegetable oil based cutting fluids, and in paragraph 34 Tian discloses that soybean oil, castor oil, peanut oil, palm oil, and rapeseed oil, all recited in claims 18 and 39, produce systems having good lubricity and heat transfer properties.
It would have been obvious to one of ordinary skill in the art to use the soybean oil, castor oil, peanut oil, palm oil, or rapeseed oil of Tian as the vegetable oil in the composition of Hong and Dance, since Tian discloses that compositions comprising those oils have good lubricity and heat transfer properties, as desired in paragraph 9 of Hong.
Allowable Subject Matter
Claims 27 and 31 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.
Claims 27 and 31 recite specific methods of lubricating a surface (claim 27), or specifically a conveyor belt (claim 31) with the claimed lubricating composition. Hong and Dance disclose compositions useful for their heat transfer properties as well as their lubricity. Paragraph 2 of Hong and paragraphs 98-99 of Dance disclose various applications for heat transfer fluids, but do not disclose applying the compositions of the references to a conveyor belt, nor do they disclose any methods or applications involving the intermittent and discontinuous application of the lubricant composition and water as recited in claim 27. One of ordinary skill in the art would therefore have no motivation to use the composition of Hong and Dance (and Tian) in the methods recited in claims 27 and 31.
Response to Arguments
Applicant’s arguments with respect to claims 1-2, 4-6, 10-14, 16, 18, 20-22, 26-27, 31, and 39 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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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