DETAILED ACTION
Applicant’s reply, filed 23 June 2026 in response to the non-final Office action mailed 21 April 2026, has been fully considered. As per Applicant’s filed claim amendments claims 1-14 are pending, wherein: claims 11 and 14 have been amended, claims 2-4, 7-8 and 12-13 are as originally filed, and claims 1, 5-6 and 9-10 are as previously presented.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 5, 8 and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sedarous et al. (US 9,051,502).
Regarding claim 1, Sedarous teaches stable nanofluids (instant stable colloidal dispersion) comprising a dielectric base fluid, a chemical dispersant, and nanoparticles (abstract; col 2 ln 54-60). Sedarous teaches the dielectric base fluid is a synthetic polyalphaolefin (col 3 ln 13-16; col 5 ln 12-13)(instant non-conductive, non-aqueous and non-water miscible fluid (a)). Sedarous teaches the chemical dispersant is a wetting/hydrophobic/surfactant chemical (col 3 ln 1-3; col 5 ln 1-11; col 5 ln 31-49)(instant surfactant (c)). Sedarous teaches the nanoparticles may be selected from carbon-based nanomaterials, oxides, hexagonal boron nitride (instant solid nanoparticle (b) comprising metal nitride, per instant original specification [0038], [0043]), etc. (col 5 ln 15-20).
Regarding claims 2-3, Sedarous teaches the nanofluids as set forth above and further teaches the use of the smallest amount of nanomaterial that results in the highest thermal conductivity (col 12 ln 1-3), preferably about 0.001 to about 1 wt% (col 3 ln 25-26), and teaches the nanomaterials have a particle size in the range of 1-100 nm (col 3 ln 5-7; col 6 ln 10).
Regarding claim 5, Sedarous teaches the nanofluid as set forth above and further teaches that different nanoparticles can be dispersed in the nanofluids to produce a stable nanofluid that is compatible with the electronic circuitry and components of use (col 2 ln 54-65; col 5 ln 13-21). Sedarous further teaches inclusion of other nanoparticles, which are thermally conductive and electrical insulative, and which can be selected with little difficulty, including oxides of Al2O3, CuO, TiO2, etc. (col 12 ln 7-9)(instant further comprising aluminum oxide).
Regarding claim 8, Sedarous teaches the nanofluids as set forth above and further teaches the base dielectric fluid has a viscosity of about 1.2 cSt (claims; see also Table 2, a base fluid with a kinetic viscosity of 1.8 cSt at 100°C).
Regarding claim 11, Sedarous teaches the nanofluids as set forth above and further teaches methods of making the stable nanofluids including combining the nanoparticles, base fluid and isopropanol as wetting-agent, mixing and sonicating (col 7 ln 10-22; Example 5, col 10-11). Sedarous further teaches that a combination of wetting materials and dispersant surfactants may be used (col 6 ln 31-49). As claim 11 is a product-by-process claim, patentability of said claim is based on the recited product and does not depend on its method of production (see In re Marosi, 710 F2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983); MPEP 2113).
Regarding claims 12-13, Sedarous teaches the nanofluids as set forth in claim 1 above and further teaches the nanofluid is compatible with electronic circuitry and components (col 2 ln 64-65) and may be used to cool electronics by direct cooling via liquid submersion cooling or spray cooling, or by indirect cooling via plates in heat exchange relationships with electronics (col 3 ln 63 to col 4 ln 3). Sedarous teaches examples include data center, server computer, desktop computer, telecommunications switch, laser, amplifier and vehicle -cooling (col 4 ln 3-8; see col 12 ln 12-30).
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.
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 4 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Sedarous et al. (US 9,051,502).
Regarding claim 4, Sedarous teaches the nanofluid as set forth in claim 1 above and further teaches use of wetting/dispersant/surfactants in amounts necessary to stabilize the nanofluids but does not specifically teach using 0.1 to 2 times as much as the nanoparticle amount.
However, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicant’s claims patentable in the absence of unexpected results (see: In re Aller, 105 USPQ 233; and MPEP 2144.05). At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of wetting/dispersant/surfactants and would have been motivated to do so in order to obtain a suitably stable nanofluid and/or to enhance the dispersion and stability of the nanofluid (col 6 ln 31-49). A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good (see In re Boesch and Slaney, 205 USPQ 215).
Regarding claim 14, Sedarous teaches the nanofluid as set forth in claim 1 above and further teaches methods of making the stable nanofluids including combining the nanoparticles and base fluid, then adding isopropanol as wetting-agent, mixing and sonicating (col 7 ln 10-22; Example 5, col 10-11). Sedarous further teaches that a combination of wetting materials and dispersant surfactants may be used (col 6 ln 31-49) and teaches that hydrophobic nanomaterials can be wetted with wetting agents before dispersion into the base fluid (col 5 ln 1-5), wherein wetting agents are exemplified as the isopropanol. As such Sedarous teaches combining nanomaterials with an isopropanol wetting agent prior to further combination with the remainder of the composition and also teaches use of additional dispersant surfactants and therefore renders obvious the method as claimed. It is noted that the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. (see In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959); In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); and MPEP 2144.04).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sedarous et al. (US 9,051,502) in view of Yin et al. (US PGPub 2013/0285781).
Sedarous teaches the nanofluid as set forth in claim 1 above and further teaches that different nanoparticles can be dispersed in the nanofluids to produce a stable nanofluid that is compatible with the electronic circuitry and components of use (col 2 ln 54-65; col 5 ln 13-21). Sedarous further teaches inclusion of other nanoparticles, which are thermally conductive and electrical insulative, and which can be selected with little difficulty, including oxides of Al2O3, TiO2, etc. (col 12 ln 7-9).
Sedarous does not specifically teach magnesium oxide. However, Yin teaches similar dielectric nanofluids comprising the combination of a dielectric insulating liquid, nanoparticles, and surfactants (abstract; [0023]-[0026]). Yin further teaches that in dielectric nanofluids, suitable insulating and non-magnetic nanoparticles include titanium oxide, magnesium oxide, aluminum oxide, etc. and combinations thereof ([0024]). Yin and Sedarous are analogous art and are combinable because they are concerned with the same field of endeavor, namely dielectric nanofluids comprising insulating nanoparticles. In view of the recognition by Yin that aluminum oxide, titanium oxide and magnesium oxide are equivalent and interchangeable, it would have been obvious to one of ordinary skill in the art to substitute the titanium oxide and/or aluminum oxide insulating nanomaterials of Sedarous with the magnesium oxide insulating nanoparticles of Yin and thereby arrive at the present invention. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable (See In re Ruff 118 USPQ 343 (CCPA 1958; MPEP 2144.06).
Claims 7 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Sedarous et al. (US 9,051,502) in view of Carlblom et al (US 7,923,474).
Sedarous teaches the nanofluid as set forth in claims 1, 5 and 8 above. Sedarous further teaches the dispersant surfactants may be selected from known automotive, detergent, engine, oil painting and pigment -dispersants/surfactants, etc. Sedarous does not specifically teach an amine or polyamine (claim 7) type surfactant, and/or a surfactant having a polyolefin backbone of 250 to 5000 Daltons (claims 9-10). However, Carlblom teaches amine dispersants suitable for dispersing ultrafine particles in organic mediums (abstract), wherein ultrafine particles include metal oxide nanoparticles (col 3 ln 40-52; col 4 ln 59 to col 5 ln 47). Carlblom teaches suitable amine dispersants for dispersing in organic hydrocarbon mediums are a reaction product of a polyether (meth)acrylate (col 7 ln 1-17) of n = 2 to 20 with a polyamine having a molecular weight of at least 300, and wherein the polyether (meth)acrylate and the polyamine have polyoxyalkylene backbones (col 7 ln 1-62). Carlblom and Sedarous are analogous art and are combinable because they are concerned with the same field of endeavor, namely dispersion of metal oxide nanoparticles in an organic hydrocarbon medium. At the time of filing a person having ordinary skill in the art would have found it obvious to use the amine dispersants of Carlblom as the dispersant surfactants of Sedarous and would have been motivated to do so as Sedarous invites the use of known dispersant surfactants and further as Carlblom teaches the amine surfactants are suitable for the dispersion of ultrafine particles at reduced levels compared to prior art dispersants (col 8 ln 31-67).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,122,954 in view of Sedarous (US 9,051,502). The claims of both the granted patent and instant application are directed to substantially similar stable colloidal dispersions, and methods of producing and using same, comprising substantially the same combination of (a) non-conductive, non-aqueous and non-water miscible fluids, (b) at least one solid nanoparticle, and (c) surfactant. The claims of the instant application differ from the granted patent in that the granted patent recites (b) comprises magnesium oxide. However, Sedarous teaches similar stable nanofluids comprising a dielectric base fluid, a chemical dispersant, and nanoparticles. Sedarous further teaches that in such nanofluids different nanoparticles can be dispersed in order to produce a stable nanofluid that is compatible with the electronic circuitry and components of use, wherein nanoparticles of oxides, carbon and boron nitride are known and suitable (col 2 ln 54-65; col 5 ln 13-21) and can be easily selected (col 12 ln 7-9). Sedarous and the granted patent are analogous art and are combinable because they are concerned with the same field of endeavor, namely stable nanofluids comprising a dielectric fluid, surfactants and nanoparticles. At the time of filing a person having ordinary skill in the art would have found it obvious to include the boron nitrides of Sedarous in the at least one nanoparticle of the granted patent and would have been motivated to do so as Sedarous teaches boron nitride is suitable for such uses, has high thermal conductivity, and is electrically insulative (col 5 ln 35-39).
Response to Arguments/Amendments
The 35 U.S.C. 102(a)(1) rejection of claims 1-3, 5, 8 and 11-13 as anticipated by Sedarous (US 9,051,502) is maintained. Applicant’s arguments (Remarks, page 5) have been fully considered but were not found persuasive.
Applicant asserts that “boron is a metalloid, not a metal” and therefore Applicant argues that Sedarous cannot anticipate. The Examiner directs Applicant’s attention to the instant original specification at paragraph [0038] which states that the metal of the solid metal nanoparticle can include a metalloid, for example, boron, silicon, germanium, and antimony. The Examiner also directs Applicant’s attention to the instant original specification as paragraph [0043] which states that examples of metal nitride include “boron nitride (e.g. BN)”. As per Applicant’s own specification, ‘boron nitride’ is a metal nitride meeting the instant claims.
The 35 U.S.C. 103 rejection of claims 4 and 14 as unpatentable over Sedarous (US 9,051,502) is maintained. Applicant’s arguments (Remarks, pages 5-6) have been fully considered but were not found persuasive.
Applicant argues the rejection of claim 4 is based upon a ‘flawed premise that the underlying dispersion of claim 1 is obvious”. The Examiner disagrees and notes Applicant’s position is based upon the flawed premise that boron nitride does not meet the definition of a metal nitride, despite the instant original specification explicitly stating it does.
Applicant argues that there is no reasonable expectation of success that optimizing surfactant ratio of a boron nitride would be applicable to optimizing that of a metal nitride. The Examiner notes that 1) Applicant provides no evidence to support such position other than mere assertion and 2) per Applicant’s specification boron nitride meets the claimed metal nitride and as such the optimization is in fact applicable with a reasonable expectation of success.
Applicant argues the rejection of claim 14 as states that the rational relied upon by the Examiner was ‘misplaced’ as the claimed method does not ‘merely reshuffle the order of addition’. This is not found persuasive and Sedarous meets the recitation of claim 14 as is set forth. Applicant’s interpretation of the limitations of claim 14 is overly specific and appears to import limitations not recited by the claim itself. Applicant asserts step 1 constitutes “preparing a separate, isolated first dispersion of nanoparticles in alcohol”. The Examiner notes that step 1 (see claim 14) recites “dispersing the solid nanoparticles in an alcohol with agitation” and contains no recitations of ‘separate’, ‘isolated’ or ‘first dispersion’. Sedarous meets step 1 as noted in the above rejection. Applicant asserts step 2 constitutes “preaparing a separate, isolated second mixture of surfactant fully dissolved in the non-conductive base fluid”. The Examiner notes that step 2 (see claim 14) recites “mixing the surfactant with the non-conductive, non-aqueous and non-water miscible fluid” and contains no recitations of ‘separate’, ‘isolated’ or ‘second mixture’. Sedarous meets step 2 as noted in the above rejection. Applicant asserts step 3 constitutes “combining these two pre-conditioned streams under agitation”. The Examiner agrees that step 3 (see claim 14) does recite ‘agitation’ but otherwise does not recite ‘two pre-conditioned streams’. Sedarous meets step 3 as noted in the above rejection.
Applicant argues that Sedarous teaches only single-pot additions. The Examiner notes that this is an overly narrow interpretation of Sedarous who does in fact teach 1) that the nanomaterials can be wetted with wetting agents i.e. isopropanol (an alcohol) prior to dispersion into the base fluid and 2) dispersants may be included in the base fluid (see rejection).
The 35 U.S.C. 103 rejection of claim 6 as unpatentable over Sedarous (US 9,051,502) in view of Yin (US PGPub 2013/0285781) is maintained. Applicant neither acknowledges nor rebuts the rejection as set forth.
The 35 U.S.C. 103 rejection of claims 7 and 9-10 as unpatentable over Sedarous (US 9,051,502) in view of Carlblom (US 7,923,474) is maintained. Applicant neither acknowledges nor rebuts the rejection as set forth.
The nonstatutory obviousness type double patenting rejection of instant claims 1-14 as unpatentable over the claims of U.S. Patent No 12,122,954 in view of Sedarous (US 9,051,502) is maintained. Applicant’s arguments (Remarks, page 5) have been fully considered but were not found persuasive.
Applicant argues that the claims of the instant application are distinct from the granted patent as they do not recite a metal nitride. The Examiner notes that the double patenting rejection is an obviousness type in view of Sedarous. Applicant provided no arguments as to the combination as set forth in the rejection above. Applicant’s general assertion that any substitution of metal nitride with a metal oxide would result in an unpredictable change. The Examiner notes that 1) Applicant provides no evidence other than mere assertion and 2) as was clearly set forth in the rejection Sedarous renders obvious the selection of boron nitride (defined by the instant original specification as meeting the limitation of ‘metal nitride’ (see [0038] and [0043]).
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 JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767
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