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 Interpretation
For the record:
the term “about” in the claims has been interpreted as +/- 1% by weight as defined at para. 0018 of the specification. Further, as discussed in the parent application earlier in prosecution, percentage values not preceded by “about,” are given their ordinary meaning (see for example Applicant’s response dated 23 October 2023).
The term “medium temperature” is interpreted according to the definition provided at para. 0053 of the specification as having an evaporator temperature in the range of -12○C and 0○C.
The term “low temperature” is interpreted according to the definition provided at para. 0053 of the specification as having a condenser temperature from about 35○C to about 45○C. (Note that the evaporator temperatures are listed in terms of being simply “preferably,” and thus do not further clearly define the metes and bounds of the limitation.)
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 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/758941 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because lower bounds in currently pending claim 1 of the copending application for each of the constituent components have been reduced as compared to claim 1 of the instant application. Thus, claim 1 of the present application is of narrower scope than currently pending claim 1 of the copending application. Nevertheless, while copending claim 1 does not teach the particular percentages recited, it does teach utilizing the same mixture of compounds. Arriving at particular component percentages is considered a simple matter of result effective variables that could have been easily arrived at through routine experimentation and that would have been obvious to one of ordinary skill in the art at the effective filing date of the invention for the purposes of optimizing refrigerant performance and reducing global warming effects (see corresponding background sections re motivation).
Instant dependent claims 2-6 and 9-10 correspond to dependent claims 2-6 and 9-10 of the copending application, respectively. While instant dependent claims 7-8 recite narrower ranges than those of currently pending claims 7-8 of the copending application, these are again obvious for the same reasons discussed regarding claim 1.
As per claim 11, the co-pending claims do not recite the method being a “drop-in” replacement method. However, according to Applicant’s specification (see para. 0013), “drop-in” replacement simply refers to changing the refrigerant without changing any of the structural components of the system. Such is considered a simple mechanical expedient to one of ordinary skill in the art at the effective filing date of the application for the purpose of reducing the cost of retrofitting.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC E NORMAN whose telephone number is (571)272-4812. The examiner can normally be reached 8:00-4:30 M-F.
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/MARC E NORMAN/Primary Examiner, Art Unit 3763