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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/22/2025 has been entered.
This action is responsive to Applicant's amendment/remarks filed 05/22/2025.
Claims 1, 11-14, and 35 are currently pending and under examination.
The rejection of claims 1, 11-14, and 35 under 35 U.S.C. 103 as being unpatentable over Pham (US 2004/0127383 A1, hereinafter Pham) is maintained in view of the above amendment/remarks.
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.
Claims 1, 11-14, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Pham (US 2004/0127383 A1, hereinafter Pham).
Regarding claim 1, Pham teaches that a composition comprises from about 1 wt. % to 99 wt. % HFO-1225ye(E) and from about 1 wt. % to 99 wt. % HFO-1234ze (para [0032]), wherein HFO-1225ye(E) is E-isomer of 1,2,3,3,3-pentafluoro-1-propene (para [0006]), and HFO-1234ze is trans-1,3,3,3-tetrafluoropropene (HFO-1234ze(E)) (para [0005]), which overlap with the claimed ranges of “between about 5 and about 40 wt% (E)-1,2,3,3,3-pentafluoro-1-propene” and “about 60 wt% or more R-1234ze(E)”.
Pham fails to teach at once under the meaning of anticipation that a composition comprises between about 5 and about 40 wt% (E)-1,2,3,3,3-pentafluoro-1-propene and about 60 wt% or more R-1234ze(E).
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 11, Pham teaches methods of producing cooling by condensing and evaporating the refrigerant composition (para [0038]), and the methods for cooling an article comprise evaporating the refrigerant composition in the vicinity of the article to be cooled (para [0038]), which read on the claimed process comprising condensing the composition and thereafter evaporating the composition in the vicinity of a body to be cooled.
Regarding claim 12, Pham teaches methods of producing heating by condensing and evaporating the refrigerant composition (para [0038]), and the methods for heating an article comprise condensing the refrigerant composition in the vicinity of the article to be heated (para [0038]), which read on the claimed process comprising evaporating the composition and thereafter condensing the composition in the vicinity of a body to be heated.
Regarding claims 13 and 35, Pham teaches that a composition comprises from about 1 wt. % to 99 wt. % HFO-1225ye(E) and from about 1 wt. % to 99 wt. % HFO-1234ze (para [0032]), wherein HFO-1225ye(E) is E-isomer of 1,2,3,3,3-pentafluoro-1-propene (para [0006]), and HFO-1234ze is trans-1,3,3,3-tetrafluoropropene (HFO-1234ze(E)) (para [0005]). Pham teaches that this composition is an azeotrope-like composition (para [0032]), and has a boiling of about −20° C ± 2° C at about 14.40 psia (para [0034]). Pham also teaches that this composition can be used in a wide variety of refrigeration systems including refrigeration, air-conditioning, or heat pump system (para [0037]). Pham further teaches that this composition has a GWP (global warming potential) that is much lower than that of conventional HFC (hydrofluorocarbon) refrigerants and a compressor discharge temperature that is as low or lower than such refrigerants (para [0037]), and the relatively constant boiling nature of this compositions also makes it desirable for use as refrigerants (para [0037]). Pham also teaches that the composition comprising HFC (hydrofluorocarbons) has low ozone depletion (para [0004]).
Pham is silent on replacing R-1234ze(E) with a composition comprising from about 1 wt. % to 99 wt. % HFO-1225ye(E) and from about 1 wt. % to 99 wt. % HFO-1234ze(E).
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to replace R-1234ze(E) with a composition comprising from about 1 wt. % to 99 wt. % HFO-1225ye(E) and from about 1 wt. % to 99 wt. % HFO-1234ze(E) in a variety of refrigeration systems including refrigeration, air-conditioning, or heat pump system as taught by Pham. For doing so, a person of ordinary skill in the art will achieve the goal of using a refrigerant composition having low GWP, low ozone depletion, low compressor discharge temperature, and constant boiling nature with reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 14, Pham teaches that the composition can be used in a wide variety of refrigeration systems including refrigeration, air-conditioning, or heat pump system (para [0037]).
Response to Arguments
Applicant's arguments filed 05/22/2025 have been fully considered but they are not persuasive.
Applicant argues that Tables 2A and 2B of the instant specification display this distinction by showing the compositions of the claimed subject matter exhibit a cooling capacity, relative to that of R-1234ze(E), from at least 95.5% on the low end (a blend of 40 wt% R-1225ye(E) and 60 wt% R-1234ze(E)) to as much as between 99.1-99.9% on the high end (a blend of 5 wt% R-1225ye(E) and 95 wt% R-1234ze(E)), while refrigerant blends of 45-99 wt% R-1225ye(E) and 1-35 wt% R-1234ze(E) exhibit a cooling capacity, relative to that of R-1234ze(E), from only as high as 94.8% (a blend of 45 wt% R-1225ye(E) and 55 wt% R-1234ze(E)) to as low as 90.7% (a blend of 99 wt% R-1225ye(E) and 1 wt% R-1234ze(E)); thus the concentration ranges of the claimed subject matter represent critical ranges in comparison to the portion of the broad ranges disclosed by Pham (pp. 4-5).
In response, Applicant’s arguments are not persuasive.
Firstly, Pham teaches that a refrigerant composition of about 1 wt%-99 wt% HFO-1225ye(E) and about 1 wt%-99 wt% HFO-1234ze (para [0032]), wherein HFO-1234ze is trans-1,3,3,3-tetrafluoropropene (HFO-1234ze(E)) (para [0005]), which overlap with the claimed ranges of “between about 5 and about 40 wt%” HFO-1225ye(E) and “about 60 wt% or more” R-1234ze(E).
Table 2B of the instant specification shows that the refrigerant blend of 1 wt% HFO-1225ye(E) and 99 wt% HFO-1234ze(E), which is within the range of the composition of Pham but outside the claimed range of the claimed composition, has a cooling capacity of 99.9% relative to that of R-1234ze(E), which is same as or higher than the cooling capacity of the claimed subject matter (i.e., from at least 95.5% on the low end to as much as between 99.1-99.9% on the high end). Thus, the critical ranges or distinction of the claimed subject matter as alleged by Applicant is not critical, and does not show better cooling capacity than that of Pham.
Secondly, Table 2B of the instant specification just demonstrates a tradeoff, which is not indicative of distinction. As the concentration of HFO-1225ye(E) increases while HFO-1234ze(E) decreases, GWP beneficially decreases at the expense of a lowered cooling capacity relative to that of R-1234ze(E).
Thirdly, the fact that the inventor has recognized another advantage which would flow naturally from the combination of references cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). See MPEP 2145.II.
Here, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to expect that the property of the cooling capacity relative to that of R-1234ze(E) would flow naturally from the teachings of Pham, because Pham’s teaching provides substantially the same composition with the same HFO-1225ye(E) and HFO-1234ze(E) as claimed. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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