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 .
The amendment dated 05/21/2026 has been considered and entered. The amendment requires the presence of SiO2 which Agiral et al. (WO 2022/040372A1) does not teach, thus overcoming the previous rejections, now withdrawn. The amendment necessitates new grounds of rejections.
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.
Claims 1 – 15 are rejected under 35 U.S.C. 103 as being unpatentable over Agiral et al. (WO 2022/040372A1) in view of JP 6537578 B2, hereinafter labeled JP578
In regards to claim 1, Agiral teaches organic heat transfer system, method and fluid, wherein the fluid is a colloidal dispersion that comprises a non-aqueous and non-water oleaginous fluid (base oil) a), at least one nanoparticle b) and a surfactant c), and wherein the composition is useful for cooling a battery pack or a power system of an electric vehicle (title, abstract). The base oil a) can be any Group I to III mineral oil, or Groups IV or V synthetic oil [0009 – 0012]. The nanoparticles can be aluminum oxide, boron oxide, cerium oxide, tungsten oxide, titanium carbine etc. and have average (D50) particle sizes of less than 1000 nm such as less than 250 nm, such as from 0.1 nm to 100 nm [0041 – 0045].
The nanoparticles are present at from 0.5 to 40% in a colloidal dispersion [0048]. The colloidal dispersion includes a surfactant such as dispersants, and which are present at ratios of the amounts of the surfactant to the amount of the nanoparticles of from about 0.08 to about 2 [0050, 0052 and 0090]. The dispersant includes succinimides [0076, 0077]. The dispersion has a kinematic viscosity at 100℃ (Kv100) of from 0.7 to 6 cSt [0098]. In the examples, the composition has a Kv25 of from 2 cSt to about 17 cSt [0128, Table 3].
Thus, Agiral teaches the lubricating oil composition having components A, B, C and their amounts of the claim, but fails to teach silica as nanoparticles.
JP578 teaches heat dissipation oil (i.e., heat transfer oil) which is similarly used in automotive electrical components and which can comprise thermally conductive particles such as silica or alumina particles having from 0.1mm (i.e., 100nm) to 50mn, and which is present at from 0.02 to 0.2% by weight of the oil composition as a heat dissipation agent (abstract, specification).
Thus, persons of ordinary skill in the art at the time the claim was filed would have found it obvious to have added the thermally conductive particles of JP578, and in the recited amounts, in the composition of Agiral, as JP578 teaches they are suitable for heat dissipation in similar heat transfer fluids such as those of Agiral.
In regards to claim 2, Agiral teaches the composition having the ratios of B/C of the claims as discussed above.
In regards to claims 3, 4, Agiral teaches the composition having the claimed particles and particle sizes as previously stated.
In regards to claim 5, Agiral teaches the composition having the mineral base oil of the claim.
In regards to claims 6, 9, Agiral teaches the composition having Kv100 and Kv25 within the claimed range and thus would comprise Kv40 of the claims.
In regards to claim 7, Agiral teaches the composition having base oil such as mineral oil similar to the claimed oils and which would have similar volume resistivity of the claims.
In regards to claims 8, 10, Agiral teaches the composition which is non-aqueous (water-free) as previously stated.
In regards to claims 11 – 13, Agiral teaches heat transfer system and coolant composition for electrical apparatuses such as electric vehicles components, battery etc. as previously stated.
In regards to claim 14, Agiral teaches electrical apparatus, method and coolant fluid for the electric apparatus and thus when the fluid is used in the apparatus, the claimed method would be provided.
In regards to claim 15, Agiral teaches the method of preparing the composition which comprises blending the components and mixing the composition [0280 – 0283]. While the speed of the mixer is not particularly discussed, routine process parameters such as mixing speed are within general working conditions or workable ranges that are optimized by routine experimentation. Such a routine parameter would be considered obvious unless there is evidence that it is critical.
Claims 1, 2, 3, 6, 7, 9 – 12, 16 – 18 are rejected under 35 U.S.C. 103 as being unpatentable over Sunahara et al. (WO 20148/070362 A1)
In regards to claims 1, 16 – 18, Sunahara teaches lubricating oil composition having a base oil A), nanoparticles having from 1 to 1000 nm C) etc., (abstract). The base oil can be mineral oil such as paraffinic oil having kinematic viscosity of from 2 to 20 mm2/s (cSt) or from 2 to 5 cSt at 100℃ preferably, and is present at from 55 to 99%; the nanoparticles such as silica that is surface treated with silane coupling agent at from 0.01 to 20%; and wherein the composition can be useful as gasoline or diesel engine oils etc. (specification). Sunahara teaches that the composition can comprise one or more conventional lubricant additives at 0.01 to 8% by weight of the composition. Such oils are known to comprise succinimide dispersant which Sunahara recites in the background of the invention. Thus, the use of well known succinimide dispersants at the amounts recited by Sunahara for conventional additives would be obvious.
In regards to claims 2, 3, Sunahara teaches the composition having the claimed ingredients in amounts overlapping the claimed ranges as previously discussed. The calculated ratio of the nanoparticles to the dispersant would overlap the claimed range.
In regards to claim 6, Sunahara teaches the composition having base oil of 2 to 5 cSt at 100℃ as previously stated. Since mineral oils typically have VI of 120 or less, the equivalent viscosity for the oil at 40℃ will overlap the claimed range.
In regards to claim 7, Sunahara teaches the composition having similar mineral base oil which would be expected to have similar properties such as volume resistivity.
In regards to claims 9 – 12, Sunahara teaches the composition having the claimed oil and which would be expected to have similar properties and would be effective to provide similar uses as claimed.
Response to Arguments
Applicant’s arguments have been considered but are moot because the arguments are not directed to any reference and/or reference combinations currently applied.
Applicant argues that Agiral does not provide guidance to combine the three ingredients of the claims and fails to teach SiO2. The argument is moot based on the new grounds of rejections above.
Applicant argues that Arai teaches a laundry list of ingredients. The argument is not persuasive.
Arai teaches the base oil, nanoparticles and dispersants of the claims. Also, the argument is not deemed to be persuasive because when a claim defines a combination of elements known in the prior art, the combination must do more than yield a predictable result. KSR Int’l Co. v. Teleflex, Inc ……. In rejecting an “obvious to try” argument in support of patentability, KSR states: “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under 103”.
Thus, the examiner is of the position that while the number of suitable ingredients disclosed in the reference is arguably large, it is nevertheless finite. Since the reference teaches that all of these compounds are suitable, each of the various combinations of these compounds would be presumptively effective in the lubricant composition.
The applicant argues that the claimed composition demonstrates unexpected results. The argument is not persuasive.
The inventive examples are not commensurate in scope with the claims.
While the claims allow for the presence of succinimide dispersant to be present at from 0.1 to 20% in the composition, the inventive examples strictly require amounts of 5 to 10% of succinimide which do not support the breadth of the claimed range nor demonstrate criticality at the lower and upper limits of the claimed range.
While the claims allow for use of any silica nanoparticles having a diameter of 500 nm or less to be present at 0.1 to 30% in the composition, the inventive examples require the use of a specific silicone oil surface treated silica having a diameter of 10 nm and present at 1 to 10% in the composition which does not support the breadth of the claims, and is one order of magnitude larger than the lower limit, and three times smaller than the upper limit allowed by the claims.
The results are not persuasive.
The results appear to be merely additive. Applicant demonstrates that the absence of any of the required additives provided poor results in comparatives 2 and 3. However, comparative example 1 provides similar results to inventive example 4 in cooling performance, dispersibility and volume resistivity, except that the inventive example had about 7.7% improvement in the cooling performance. Also, it is noted that the comparative example 1 provides superior volume resistivity to inventive example 5 of over 60% in improvement. Therefore, the results do not demonstrate synergistic properties.
Thus, applicant has failed to provide inventive examples that are commensurate in scope with the claims for demonstrating unexpected results sufficient to rebut the case of obviousness.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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