DETAILED ACTION
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 .
Claim Rejections - 35 USC § 102/103
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.
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.
Claims 1 – 17 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Nicholas (WO 2020/007853A1) or, in the alternative, under 35 U.S.C. 103 as obvious over Nicholas (WO 2020/007853A1)
In regards to claim 1, Champagne teaches a composition for cooling and lubricating a propulsion system of an electric or hybrid vehicle comprising a base oil i) and a diester ii) (abstract). The diester can have the same or different R-groups (Ra or Rb, i.e., prepared from same or different monocarboxylic acid(s)), such as saturated or unsaturated, linear or branched alkyl groups having from 2 to 11 or from 3 to 8 carbon atoms from acids such as propanoic acid up to dodecanoic acid (page 4 line 21 – page 5 line 10 and page 16 lines 27 – 32). The diester can be prepared from mono propylene glycol (i.e., 1,2 propane diol or 1,3 propanediol) etc. (page 17 lines 3 – 10). The groups Ra, Rb can be octyl groups, i.e., providing a nonanoic acid (page 17 lines 23 – 31). The ester has a kinematic viscosity of from 5 to 18 mm2/s (cSt) at 40℃, and from 1.5 to 9.3 cSt or from 2 to 4 cSt at 100℃ (page 18 lines 11 – 15). Champagne teaches method of lubricating and cooling the propulsion system of the electric or hybrid vehicle (page 34 lines 13 – 19).
In regards to claim 2, Champagne teaches the method having the claimed limitation as previously stated.
In regards to claim 3, Champagne teaches the method wherein the diester is present in the composition at from 1 to 30% or from 10 to 25% (page 20 lines 1 – 4).
In regards to claim 4, Champagne teaches the method comprising the diester which is present at from 5 to 30% as previously stated. The base oil can be present at amounts of preferably from 90% or more in the composition (page 20 lines 4 – 6).
In regards to claim 5, Champagne teaches the method and propulsion system for electric and hybrid vehicle having a battery and/or power electronic component such as lithium ion or nickel cadmium battery (page 6 lines 7 – 22).
In regards to claim 6, Champagne teaches the method wherein the diester would have carbon content within the claimed range when the R groups are C8 and the diol is propylene glycol.
In regards to claim 7, Champagne teaches the method wherein the diester has the claimed structure as previously discussed (page 11 lines 10 – 26).
In regards to claim 8, Champagne teaches the method wherein the diester has the claimed kinematic viscosity as previously stated.
In regards to claims 9 – 14, Champagne teaches the method wherein the diester is prepared from the claimed ingredients as previously discussed.
In regards to claim 15, Champagne teaches the method wherein the composition can comprise the additives of the claim such as friction modifier, antiwear, antioxidant, detergent, dispersant, EP agent etc. (page 26 lines 1 – 11).
In regards to claims 16, 17, Champagne teaches the method having the claimed limitations as previously discussed.
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771