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 09/12/2025.
Claims 1, 4, 8-11, and 16-21 are currently pending and under examination.
The rejection of claims 16 and 17 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph is withdrawn in view of the above amendments.
The rejection of claim 2 under 35 U.S.C. 103 as being unpatentable over Minor (US 2006/0243945 A1, hereinafter Minor) is withdrawn in view of the above amendments.
The rejection of claims 1, 8, 9, and 16-21 under 35 U.S.C. 103 as being unpatentable over Minor (US 2006/0243945 A1, hereinafter Minor) is maintained in view of the above amendments.
The rejection of claims 4, 10 and 11 under 35 U.S.C. 103 as being unpatentable over Minor (US 2006/0243945 A1, hereinafter Minor) and further in view of Saito (US 2015/0076393 A1, hereinafter Saito) is maintained in view of the above amendments.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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.
1. Claims 1, 8, 9, and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Minor (US 2006/0243945 A1, hereinafter Minor).
Regarding claim 1, the term “suitable for a refrigerator” is an intended use and does not add structural difference, thus the intended use is extended little patentable weight. See MPEP § 2112.02. Minor teaches that the composition is used in a refrigeration system (para [0003]).
Minor teaches a composition consisting of HFC-1234yf and HFC-134a, wherein HFC-1234yf is in a range of 30-99 wt. %, and HFC-134a is in a range of 1-70 wt. % (p. 6, Table 2), which overlaps with the claimed range of “from more than 52 to 66% by mass” of HFC-1234yf.
Minor also teaches that the composition further comprises a lubricant (para [0120]), and the lubricant includes a polyvinyl ether (para [0122]). The lubricant of Minor reads on the claimed base oil.
Minor further teaches that the lubricant (the claimed base oil) has a kinematic viscosity of at least about 5 cs (centistokes) at 40°C (para [0123]), equaling to at least about 5 mm2/s, which overlaps with the claimed range of “from 20 to 150 mm2/s”.
The instant invention discloses that the refrigerator oil may contain other additives in addition to the base oil (P) (the instant para [0060]). Minor also teaches that the composition optionally further comprises commonly used refrigeration system additives (para [0124]). Thus, the combination of the lubricant and the optional refrigeration system additives as taught by Minor reads on the claimed refrigerator oil.
Minor also teaches that the composition may further comprise a compatibilizer, and the compatibilizer is used to improve solubility of hydrofluorocarbon refrigerants in refrigeration lubricants ([0133]).
Minor does not teach that a dissolution viscosity of the composition at 60°C and 1.5MPaG is in a range of from 0.6 to 1.1 mm2/s, and a refrigerant solubility of the composition is in a range of from 62 to 68% by mass.
However, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect that the claimed dissolution viscosity at 60oC and 1.5 MPaG and the claimed refrigerant solubility, would flow naturally from the teachings of Minor, because the teachings of Minor provide substantially the same composition comprising the same mixed refrigerant and the same refrigerator oil comprising the same base oil as claimed, and also because the composition may further comprise a compatibilizer which improves solubility of hydrofluorocarbon refrigerants in refrigeration lubricant (i.e. base oil) as recognized by Minor. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claims 8 and 18-20, Minor teaches that the composition further comprises a lubricant (para [0120]), and the lubricant is a polyvinyl ether (para [0122], [0015]). Thus, the polyvinyl ether can be about 100% by mass in the lubricant (the claimed base oil) of Minor, which falls within the claimed ranges of “from 90 to 100% by mass”, “from 95 to 100% by mass”, and “from 98 to 100% by mass”, and reads on the claimed “100% by mass”.
Regarding claim 9, Minor teaches a composition consisting of HFC-1234yf and HFC-134a, wherein HFC-1234yf is in a range of 30-99 wt. %, and HFC-134a is in a range of 1-70 wt. % (p. 6, Table 2).
Minor also teaches that the composition further comprises a lubricant (para [0120]), and the lubricant includes a polyvinyl ether (para [0122]). Thus, the lubricant of Minor reads on the claimed base oil.
The instant invention discloses that the refrigerator oil may contain other additives in addition to the base oil (P) (the instant para [0060]). Minor also teaches that the composition optionally further comprises commonly used refrigeration system additives (para [0124]). Thus, the combination of the lubricant and the optional refrigeration system additives as taught by Minor reads on the claimed refrigerator oil.
Thus, the total content of the refrigerants, lubricant, and the optional refrigeration system additives can be about 100% by mass in the whole composition of Minor, which falls within the claimed range of “from 90 to 100% by mass”.
Regarding claims 16 and 17, Minor teaches a composition consisting of HFC-1234yf and HFC-134a, wherein HFC-1234yf is in a range of 30-99 wt. %, and HFC-134a is in a range of 1-70 wt. % (p. 6, Table 2), which overlaps with the claimed ranges of “from more than 54 to 66% by mass” and “from more than 55 to 66% by mass” of HFC-1234yf.
Regarding claim 21, Minor teaches that the composition further comprises a lubricant (para [0120]), and the lubricant includes a polyvinyl ether (para [0122]). The lubricant of Minor reads on the claimed base oil. Minor further teaches that the lubricant (the claimed base oil) has a kinematic viscosity of at least about 5 cs (centistokes) at 40°C (para [0123]), equaling to at least about 5 mm2/s, which overlaps with the claimed range of “from 30 to 55.87 mm2/s”.
2. Claims 4, 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Minor (US 2006/0243945 A1, hereinafter Minor) as applied to claims 1, 8, 9, and 16-21 above, and further in view of Saito (US 2015/0076393 A1, hereinafter Saito).
The disclosure of Minor is relied upon as set forth above.
Regarding claim 4, Minor teaches that the composition further comprises a lubricant (para [0120]), and the lubricant includes a polyvinyl ether (para [0122]). The lubricant of Minor reads on the claimed base oil. Minor also teaches that the lubricant (the claimed base oil) has a kinematic viscosity of at least about 5 cs (centistokes) at 40°C (para [0123]), equaling to at least about 5 mm2/s, which overlaps with the claimed range of “from 20 to 150 mm2/s”. Minor also teaches that lubricants are needed to lubricate the compressor of a refrigeration, air-conditioning or heat pump apparatus (para [0133]).
Minor does not teach that the lubricant (the claimed base oil) has a hydroxy value of 15 mgKOH/g or less.
However, Saito teaches a working fluid composition for a refrigerating machine comprising a mixed refrigerant and a refrigerating machine oil (para [0012]-[0014]; abstract), wherein that the refrigerating machine oil comprises a base oil, and the base oil includes a polyvinyl ether (para [0014]). Saito also teaches that the kinematic viscosity of the refrigerating machine oil at 40°C is preferably 5 to 400 mm2/s (para [0102]), which overlaps with the claimed range of “from 20 to 150 mm2/s”, and the range of “at least about 5 mm2/s” as taught by Minor.
Saito specifically teaches base oil 4 which is a copolymer of ethyl vinyl ether and isobutyl vinyl ether (para [0115]), and base oil 4 has kinematic viscosity at 40°C of 66.4 mm2/s and a hydroxyl value of 1.5 mgKOH/g (para [0115], Table 1), which both fall within the claimed ranges of “from 20 to 150 mm2/s” and “15 mgKOH/g or less”, and also falls within the range of “at least about 5 mm2/s” as taught by Minor. Base oil 4 of Saito is a polyvinyl ether. Saito also teaches that the polyvinyl ether as a base oil enhances lubricity of a compressor in a refrigeration system or an air-conditioning system (para [0061]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the base oil which is a polyvinyl ether, having kinematic viscosity at 40°C of 66.4 mm2/s and a hydroxyl value of 1.5 mgKOH/g as taught by Saito as the lubricant in Minor, in order to lubricate the compressor with a reasonable expectation of success, because the base oil (i.e. a polyvinyl ether) having kinematic viscosity at 40°C of 66.4 mm2/s and a hydroxyl value of 1.5 mgKOH/g as taught by Saito and the lubricant such as a polyvinyl ether having a kinematic viscosity at 40°C of at least about 5 mm2/s as taught by Minor both enhance lubricity of a compressor in a refrigeration system as art recognized. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 10, Minor teaches a composition for use in a refrigeration system consisting of HFC-1234yf and HFC-134a, wherein HFC-1234yf is in a range of 30-99 wt. %, and HFC-134a is in a range of 1-70 wt. % (p. 6, Table 2; para [0003]). Minor teaches that the composition further comprises a lubricant (para [0120]), and the lubricant includes a polyvinyl ether (para [0122]). The lubricant of Minor reads on the claimed base oil. Minor also teaches that lubricants are needed to lubricate the compressor of a refrigeration, air-conditioning or heat pump apparatus (para [0133]).
The instant invention discloses that the refrigerator oil may contain other additives in addition to the base oil (P) (the instant para [0060]). Minor teaches that the composition optionally further comprises commonly used refrigeration system additives (para [0124]). Thus, the combination of the lubricant and the optional refrigeration system additives as taught by Minor reads on the claimed refrigerator oil.
Minor does not teach that a (refrigerator oil)/(mixed refrigerant) mass content ratio of the refrigerator oil and the mixed refrigerant at 60oC and 1.5 MPaG in the composition is in a range of from 30/70 to 85/15.
However, Saito teaches a working fluid composition for a refrigerating machine comprising a refrigerant and a refrigerating machine oil (para [0012]-[0014]), wherein the refrigerant comprises a hydrofluoroethane such as HFC-134a and tetrafluoropropene such as HFO-1234yf (para [0013], [0036], [0037]).
Saito also teaches that the refrigerating machine oil comprises a base oil, and the base oil includes a polyvinyl ether (para [0014]). Saito further teaches that the mass ratio of the refrigerating machine oil to the refrigerant is 10:90 to 70:30 (para [0028]), which overlaps with the claimed range of “from 30/70 to 85/15”. Saito also teaches that the refrigerating machine oil is used to enhance lubricity (para [007], [0101]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide the (refrigerating machine oil)/(refrigerant) mass ratio being 10:90 to 70:30 as taught by Saito as the (lubricant and optional additives)/(refrigerant) mass ratio in Minor, in order to make a composition having enhanced lubricity for a refrigerating machine with a reasonable expectation of success, because the composition having the (refrigerating machine oil)/(refrigerant) mass ratio of 10:90 to 70:30 shows good lubricity in a refrigerating machine as recognized by Saito.
Furthermore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect that the claimed mass ratio of (refrigerator oil)/(mixed refrigerant) at 60oC and 1.5 MPaG would flow naturally from the teachings of the combination of Minor and Saito, because the teachings of the combination of Minor and Saito provide substantially the same composition comprising the same mixed refrigerant and the same refrigerator oil comprising the same base oil as claimed. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 11, Minor teaches a composition for use in a refrigeration system consisting of HFC-1234yf and HFC-134a, wherein HFC-1234yf is in a range of 30-99 wt. %, and HFC-134a is in a range of 1-70 wt. % (p. 6, Table 2; para [0003]). Minor teaches that the composition further comprises a lubricant (para [0120]), and the lubricant includes a polyvinyl ether (para [0122]). The lubricant of Minor reads on the claimed base oil. Minor also teaches that lubricants are needed to lubricate the compressor of a refrigeration, air-conditioning or heat pump apparatus (para [0133]).
The instant invention discloses that the refrigerator oil may contain other additives in addition to the base oil (P) (the instant para [0060]). Minor teaches that the composition optionally further comprises commonly used refrigeration system additives (para [0124]). Thus, the combination of the lubricant and the optional refrigeration system additives as taught by Minor reads on the claimed refrigerator oil.
Minor does not teach that in operation, a (refrigerator oil)/(mixed refrigerant) mass ratio is in a range of from 1/99 to 99/1 or less.
However, Saito teaches a working fluid composition for use in a refrigerating machine comprising a refrigerant and a refrigerating machine oil (para [0012]-[0014]), wherein the refrigerant comprises a hydrofluoroethane such as HFC-134a and tetrafluoropropene such as HFO-1234yf (para [0013], [0036], [0037]).
Saito also teaches that the refrigerating machine oil comprises a base oil, and the base oil includes a polyvinyl ether (para [0014]). Saito further teaches that the mass ratio of the refrigerating machine oil to the refrigerant is 10:90 to 70:30 (para [0028]), which overlaps with the claimed range of “from 1/99 to 99/1 or less”. Saito also teaches that the refrigerating machine oil is used to enhance lubricity (para [007], [0101]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide the (refrigerating machine oil)/(refrigerant) mass ratio being 10:90 to 70:30 for use in a refrigerating machine as taught by Saito as the (lubricant and optional additives)/(refrigerant) mass ratio for use in a refrigeration system in Minor, in order to make the composition having enhanced lubricity for use in a refrigerating machine with a reasonable expectation of success, because the composition having the (refrigerating machine oil)/(refrigerant) mass ratio of 10:90 to 70:30 shows good lubricity for use in a refrigerating machine as recognized by Saito. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Response to Arguments
Applicant's arguments filed 09/12/2025 have been fully considered but they are not persuasive.
1. Applicant argues that with the present amendments, the dissolution viscosity is limited to 0.6 to 1.1 mm2/s, and the refrigerant solubility is limited to 62 to 68 mass%, which excludes the R32 examples from the scope of the present claims; this focuses the claims on the results with R134a and the unexpected effect of simultaneously satisfying the lubrication and wear resistance required for high viscosity, and the energy saving required for low viscosity (Remarks, p. 1, last para; p. 2, 1st para).
In response, Applicant’s argument is not persuasive.
Firstly, Applicant’s statement “simultaneously satisfying the lubrication and wear resistance required for high viscosity, and the energy saving required for low viscosity” is ambiguous and unclear. The Office does not understand how the composition satisfies both high viscosity and low viscosity at the same time.
Secondly, Examples 2 and 4 in the instant specification (instant Table 2) are no probative value in the determining patentability of claims since they do not involve a comparison of applicant' s invention with the closest applied prior art.
Examples 2 and 4 in the instant specification (instant Table 2) are limited to compositions consisting of 56 mass% R1234yf and 44 mass% R134a compared to comparative examples consisting of 100 mass% R1234yf which contain no R134a. Minor constitutes closer prior art than Applicant' s comparative examples, because Minor teaches a composition consisting of R1234yf in an amount of 30-99 wt. % and R134a in an amount of 1-70 wt. % (p. 6, Table 2), R134a is an expressly taught component in Minor’s composition (p. 6, Table 2). See In re De Blawe, 222 USPQ 191 (FED. Cir. 1984), and In re Fenn, 208 USPQ 470 (CCPA 1981).
Even if, arguendo, the comparison was done between Applicant's invention and the closest prior art, the claims are not deemed patentable over the reference of record since they are not commensurate in scope with the probative value of data in the examples. The claims are not commensurate in scope with the comparative showing, because the examples are limited to compositions consisting of R1234yf in an amount of 56 mass%, and R134a in an amount of 44 mass%, whereas the claims broadly include compositions consisting of R1234yf in an amount of from more than 52 to 66% by mass, and R134a. See In re Clemens, 206 USPQ 289 (CCPA 1980).
Thirdly, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02 (d). Therefore, Applicant should compare a sufficient number of tests both inside and outside the claimed range to show an unexpected result over a claimed range.
2. Applicant argues that Minor (Example 2, Table 10) teaches that the energy efficiency COP of the refrigerant alone is R1234yf/R32 (95/5 wt.%) = 4.36, while R1234yf/R134a (90/10 wt.%) = 4.33, meaning that the efficiency of R1234yf/R32 is higher than that of R1234yf/R134a, which is the opposite of the refrigeration composition of the present application, and this also shows an unexpected effect that the sufficiency is reversed between the refrigerant alone and the composition of refrigerant and refrigerator oil (Remarks, p. 2, 2nd para).
Applicant continues to argue that in contrast, the present invention’s R1234yf/R134a (56/44 wt.%) has better refrigerant solubility and dissolution viscosity than R1234yf/R32 (65/35, 40/60 wt.%), and simultaneously satisfies the lubrication and wear resistance required for high viscosity and the energy-saving properties required for low viscosity (Remarks, p. 2, last para; p. 3).
In response, Applicant’s arguments are not persuasive.
Firstly, Minor’s R1234yf/R32 (95/5 wt.%) is not comparative to the instant invention’s R1234yf/R32 (65/35, 40/60 wt.%), because they have different amount of R1234yf in the composition.
Minor’s R1234yf/R134a (90/10 wt.%) is not comparative to the instant invention’s R1234yf/R134a (56/44 wt.%), because they have different amount of R1234yf in the composition.
Secondly, Minor (Example 2, Table 10) teaches that the energy efficiency COP of the refrigerant alone is R1234yf/R32 (95/5 wt.%) = 4.36, while R1234yf/R134a (90/10 wt.%) = 4.33.
However, the instant invention discloses the refrigerant solubility and dissolution viscosity of R1234yf/R134a (56/44 wt.%) with a refrigerator oil, and R1234yf/R32 (65/35, 40/60 wt.%) with a refrigerator oil.
It is not reasonable to compare Minor’s compositions’ COP with the instant invention’s compositions’ refrigerant solubility and dissolution viscosity.
Thirdly, the instant invention discloses that the dissolution viscosity of the composition at 60°C and 1.5 MPaG is preferably 0.6 mm2/s or more and 8 mm2/s or less for the lubricity (instant [0080]), and the refrigerant solubility at 60° C. and 1.5 MPaG is preferably 15% by mass or more and 70% by mass or less (instant [0079]).
The instant invention also discloses that the composition is required to have an appropriate dissolution viscosity; if the dissolution viscosity is too low, the lubricity is lowered; if the dissolution viscosity is too high, the energy consumption increases (instant [0004]).
The instant invention’s R1234yf/R32 (65/35 wt.%) with a refrigerator oil has a refrigerant solubility of 22% by mass and a dissolution viscosity of 5 mm2/s (instant Example 1 in instant Table 2), which both fall within the ranges of “15% by mass or more and 70% by mass or less” and “0.6 mm2/s or more and 8 mm2/s or less” as stated by the instant invention.
Therefore, Applicant can not make a conclusion that R1234yf/R134a (56/44 wt.%) with a refrigerator oil having a refrigerant solubility of 62% by mass and a dissolution viscosity of 1.1 mm2/s (instant Example 2 in instant Table 2) has a better refrigerant solubility and dissolution viscosity than R1234yf/R32 (65/35 wt.%) with a refrigerator oil having a refrigerant solubility of 22% by mass and a dissolution viscosity of 5 mm2/s (instant Example 1 in instant Table 2).
Fourthly, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02 (d). Therefore, Applicant should compare a sufficient number of tests both inside and outside the claimed range to show an unexpected result over a claimed range.
Fifthly, Applicant’s statement “simultaneously satisfies the lubrication and wear resistance required for high viscosity and the energy-saving properties required for low viscosity” is ambiguous and unclear. The Office does not understand how the composition satisfies both high viscosity and low viscosity at the same time.
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.
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/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761