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 .
This action is responsive to Applicant’s amendment/remarks filed 10/14/2025.
Claims 1, 3-5, 9, 11, 21-23 are currently pending, of which claims 1, 3, 5, 9, and 21-23 are withdrawn
The IDS statement filed 08/12/2025 has been considered. An initialed copy accompanies this action.
Status of Prosecution/Restriction
The two separate 103 rejections of record over Minor et al. (US 2011/0252801 A1) and Fukushima et al. (US 2017/0058174 A1) set forth the rationale that the reference taught a composition comprising cis-1,2-difluoroethylene (HFO-1132(Z)) and 3,3,3-trifluoropropene (HFO-1243zf). Applicant’s amendment canceling 3,3,3-trifluoropropene (HFO-1243zf) from the claims overcomes the 103 rejections/rationale of record of claims 4 and 11 over 1) Minor et al. (US 2011/0252801 A1) and 2) Fukushima et al. (US 2017/0058174 A1). Accordingly, the rejections (and rationale) of record are withdrawn in view of Applicant’s amendment.
The Examiner notes there is a species requirement of record, and Applicant’s present claim amendment cancels elected HFO-1243zf species examined in the previous Office action, which overcomes the rejection of record (Id.).
The species requirement remains in effect. The Examiner chose 1,2,3,3,3-pentafluoropropene (HFO-1225ye) as the next additional compound species for search/examination to be shifted and extended to. Claims 4 and 11 (the claims that contain the HFO-1225ye species in their scope) were searched and examined only to the extent that they read on the elected species, as they were found not to be allowable. New ground(s) of rejection follows.
Claims 1, 3, 5, 9, and 21-23 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 4 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Minor et al. (US 2011/0252801 A1).
Minor et al. teach compositions for use in refrigeration, air-conditioning, and heat pump systems wherein the composition comprises Z-1,2-difluoroethylene, i.e., cis-1,2-difluoroethylene, (abbreviated in the reference as Z-HFO-1132a) (abstract; see also para. 0042 for a key of abbreviations). The compositions comprise an additional compound (see, e.g., para. 0009). “Z-1,2-difluoroethylene and Z-1,2,3,3,3-pentafluoropropene” and “Z-1,2-difluoroethylene and E-1,2,3,3,3-pentafluoropropene” are two specific exemplary/preferred binary composition (para. 0010, claims 2 & 3). These exemplary/preferred binary compositions directly meet a binary mixture of cis-1,2-difluoroethylene (HFO-1132(Z)) and 1,2,3,3,3-pentafluoropropene (HFO-1225ye), as claimed; Minor et al.’s “Z-1,2-difluoroethylene” component meets and is structurally identical to the claimed “cis-1,2-difluoroethylene (HFO-1132(Z))” component (merely stated with different terminology), and Minor et al.’s Z-1,2,3,3,3-pentafluoropropene and E-1,2,3,3,3-pentafluoropropene components each meet the claimed “1,2,3,3,3-pentafluoropropene (HFO-1225ye)” additional compound component (merely stated with a particular isomer further specified than the claimed more broad terminology not requiring any particular isomer(s)). Minor et al. also discloses these binary compositions as azeotropic or azeotrope-like (para. 0010 and claim 2).
Minor et al. fails to meet the claimed composition under the meaning of anticipation because the amount(s) of the 1,2,3,3,3-pentafluoropropene(s) (HFO-1225ye) are not specifically equivalent to nor within the claimed range of 0.001 to 0.1 mass% of additional compound (1,2,3,3,3-pentafluoropropene (HFO-1225ye)) relative to the total amount of HFO-1132(Z) and HFO-1225ye defined as 100 mass%, recited in instant claim 4. However, while not anticipatory, the teachings of the reference meet the claims under a prima facie case of obviousness.
As to the relative amounts/percentages of components, note that claim 2 of Minor et al. recites the combinations of Z-1,2-difluoroethylene and Z/E 1,2,3,3,3-pentafluoropropene(s) are azeotropic or azeotrope-like and then claim 3, dependent on claim 2, recites the (azeotropic or azeotrope-like) composition comprises “about 1 weight percent to about 99 weight percent Z-1,2-difluoroethylene and about 99 weight percent to about 1 weight percent Z-1,2,3,3,3-pentafluoropropene” or “about 1 weight percent to about 99 weight percent Z-1,2-difluoroethylene and about 99 weight percent to about 1 weight percent E-1,2,3,3,3-pentafluoropropene”. These specific disclosures approach, touch, and/or overlap the claimed range of 0.001 to 0.1 mass% of additional compound (1,2,3,3,3-pentafluoropropene (HFO-1225ye)) relative to the total amount of HFO-1132(Z) and HFO-1225ye defined as 100 mass%, recited in instant claim 4. Note the extremity of the disclosed pairs constituting about 99 weight percent Z-1,2-difluoroethylene and about 1 weight percent 1,2,3,3,3-pentafluoropropene.
If this were not enough, Minor et al. further teach other disclosures of azeotrope-like binary compositions at around para. 0049 and Table 1. Therein, Minor et al. teach binary compositions of both “Z-HFO-1132a/Z-HFO-1225ye” and “Z-HFO-1132a/E-HFO-1225ye” are azeotrope-like at weight percentages ranges of “1-99/99-1” (see Table 1). Per the cited abbreviation key at para. 0042 “Z-HFO-1132a” is “Z-1,2-difluoroethylene”, i.e., the claimed cis-1,2-difluoroethylene (HFO-1132(Z)); similarly “Z-HFO-1225ye” and “E-HFO-1225ye” are defined as abbreviation for Z/E isomers of “1,1,1,2,3-pentafluoropropene” in para. 0044, i.e., stated differently, the claimed 1,2,3,3,3-pentafluoropropene (HFO-1225ye). Accordingly, Table 1 of the reference discloses azeotrope-like binary composition(s) of cis-1,2-difluoroethylene and 1,2,3,3,3-pentafluoropropene at relative weight percent ranges of 1-99/99-1. This certainly approaches the claimed range of 0.001 to 0.1 mass% of additional compound (1,2,3,3,3-pentafluoropropene (HFO-1225ye)) relative to the total amount of HFO-1132(Z) and HFO-1225ye defined as 100 mass%, recited in instant claim 4. However, right before the cited table at para. 0048, Minor et al. further teach the “the disclosed compositions are generally expected to maintain the desired properties and functionality when the components are present in the concentrations as listed +/- 2 weight percent”, which further permits some variation in the Table’s values (more than 99 weight percent cis-1,2-difluoroethylene and less than 1 weight percent 1,2,3,3,3-pentafluoropropene) further approaching and touching, if not overlapping, the claimed range recited in instant claim 4.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Prior art teaching a concentration of "about 1-5%" while the claim was limited to "more than 5%" was held as overlapping because "about 1-5%" allowed for concentrations slightly above 5%. In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). An overlapping endpoint of the prior art and claimed range is sufficient to support an obviousness rejection, particularly when there is no showing of criticality of the claimed range. In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.").
Claims 4 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima et al. (US 2017/0058174 A1).
Fukushima et al. teach a composition, notably a working fluid having a low GWP and optionally suitable as an R410A replacement, comprising 1,2-difluoroethylene (abstract & para. 0013). The 1,2-difluoroethylene may specifically be the cis-1,2-difluoroethylene isomer alone (para. 0012 & 0023), i.e., HFO-1132(Z); the reference is sufficiently specific to the provision of solely the cis/Z-isomer of HFO-1132. Fukushima et al. further teach the working fluid may contain an additional compound in addition to the HFO-1132, specifically an HFC or an additional HFO, to improve the relative coefficient of performance and the relative refrigerating capacity (para. 0025-0026). Azeotropic and pseudoazeotropic mixtures of the HFO-1132 and the optional component avoid problems and are preferred (para. 0027-0029). Regarding the selection of the additional HFO, the reference lists merely nine (9) exemplary HFO species, including both “trans-1,2,3,3,3-pentafluoropropene (HFO-1225ye(E))” and “cis-1,2,3,3,3-pentafluoropropene (HFO-1225ye(Z))” in this short list (para. 0041), which are simply two configurational isomers of the same general 1,2,3,3,3-pentafluoropropene (HFO-1225ye) compound; in other words, two (2) of the nine (9) exemplary HFO species correspond to the claimed HFO-1225ye compound; accordingly, the reference is sufficiently specific to the provision of HFO-1225ye as the additional/optional HFO compound in addition to the primary HFO-1132 component.
The totality of the above cited teachings of the reference amount to the reference being sufficiently specific for a person of ordinary skill in the art to at-once envisage a binary mixture of cis-1,2-difluoroethylene (HFO-1132(Z)) and 1,2,3,3,3-pentafluoropropene (HFO-1225ye) from the two short lists of exemplary HFO-1132 isomers/species and additional HFO species (three (3) and nine (9) species, respectively), and prefers azeotrope(like) mixtures of the HFO components.
In the event the reference is found/argued to not be sufficiently specific for a person of ordinary skill in the art to at-once envisage a binary mixture of HFO-1132(Z) and HFO-1225ye, Fukushima et al. still teaches an azeotropic/pseudoazeotropic working fluid having a low GWP with HFO-1132, preferably/exemplarily HFO-1132(Z) and an additional HFO including HFO-1225ye configurational isomers among few other listed exemplary species (Id.). At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art for a working fluid and heat cycle system thereof, as taught by Fukushima et al., to have (or provide/formulate) HFO-1132(Z) and HFO-1225ye, as taught by Fukushima et al., because the reference is directed to a heat cycle system and working fluid therein having such components.
As to relative amounts/percentages of components, Fukushima et al. merely teaches preferred/exemplary contents/ranges but also implies if not directly teaches the additional component improves the relative coefficient of performance, relative refrigerating capacity, temperature glide, and/or GWP compared to the HFO-1132 alone. Para. 0022: “The content of HFO-1132 is preferably at least 20 mass %, more preferably from 20 to 80 mass %, … per 100 mass % of the working fluid.”. In other words, it appears the HFO-1132 is present in an amount of at least 20 mass% and up to about 100 mass% because the 80 mass % range is a more preferred embodiment than the broader range with no set upper limit. Para. 0043: “The content of the HFO other than HFO-1132 in the working fluid (100 mass %) may be optionally selected depending upon the properties required for the working fluid.” As the reference’s primary HFO-1132 component can be present in an amount from at least 20 mass% and up to about 100 mass%, a person of ordinary skill in the art would readily understand and interpret a binary mixture of components contains the second, additional component (HFO-1225ye, in the present case) in an amount of from about 0 mass% to 80 mass% (the difference of the broadest, open-ended range of at least 20 mass% from 100%), the amount of additional component clearly approaches, touches, and/or overlaps the claimed range of 0.001 to 0.1 mass% recited in claim 4. See also para. 0026-0030 & 0040.
In any event, while the reference does not explicitly teach an anticipatory example of HFO-1132(Z) and HFO-1225ye where the HFO-1225ye is present in a total amount of within 0.001 to 0.1 mass% based on the total amount of HFO-1132(Z) and HFO-1225ye as claimed, at the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to arrive within the claimed ranges from the teachings of the reference by varying/optimizing the relative amount of HFO-1132(Z) to HFO-1225ye in order to tailor/balance the relative coefficient of performance, relative refrigerating capacity, temperature glide, and/or GWP of the binary mixture compared to HFO-1132 alone with a reasonable expectation of success. The ranges taught by Fukushima et al. are all merely preferred/exemplary which do not preclude nor constitute a teaching away from broader/non-preferred ranges slightly outside those explicitly stated as preferred in order to tailor/balance the relative coefficient of performance, relative refrigerating capacity, temperature glide, and/or GWP as set forth above. See MPEP 2123 & 2144.05.
Response to Arguments
Applicant's arguments filed 10/14/2025 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to Minor et al. (US 2011/0252801 A1) and Fukushima et al. (US 2017/0058174 A1) have been considered but are considered moot because the new rejections of record do not necessarily apply to any matter specifically challenged in the arguments. Applicant’s arguments pertain to the presence 3,3,3-trifluoropropene (HFO-1243zf) in the references whereas the new rejections of record over Minor et al. and Fukushima et al. each set forth new and different rationales to the presence of 1,2,3,3,3-pentafluoropropene (HFO-1225ye).
In any event, Applicant’s arguments that Minor et al. and Fukushima et al. each fail to teach or suggest a composition as set forth in the claims are not persuasive because both references individually teach and suggest compositions comprising cis-1,2-difluoroethylene (HFO-1132(Z)) and 1,2,3,3,3-pentafluoropropene (HFO-1225ye) as claimed for the reasons of record (see the rationale of the 103 rejections, above).
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
Examiner interviews are available via telephone and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at https://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
December 2, 2025