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 remarks/declaration filed 12/31/2025.
Claims 1-4 are currently pending and under examination.
The rejection of claims 5-6 under 35 U.S.C. 103 as being unpatentable over Hulse (US 2010/0044619 A1) is withdrawn in view of the cancellation of claims 5-6.
The rejection of claims 1 and 3-5 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6, and 8 of copending Application No. 17/627,694 (reference application) is withdrawn in view of the abandonment of 17/627,694 (reference application).
The rejection of claims 1-3 under 35 U.S.C. 103 as being unpatentable over Hulse (US 2010/0044619 A1) is maintained in view of the above remarks.
The rejection of claim 4 under 35 U.S.C. 103 as being unpatentable over Hulse (US 2010/0044619 A1) in view of Hong (CN 106833536 A) is maintained in view of the above 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.
1. Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Hulse (US 2010/0044619 A1, hereinafter Hulse).
Regarding claim 1, Hulse teaches (para [0018], claim 1) that a heat transfer composition can comprise:
(1) difluoromethane (R-32);
(2) a second component comprising at least one tetrafluoropropene, wherein the tetrafluoropropene can be 1,1,1,3-tetrafluoropropene (HFO-1234ze), and 1,1,1,2-tetrafluoropropene (HFO-1234yf) (para [0018]), and in certain embodiments HFO-1234ze is preferably transHFO-1234ze (para [0048]);
(3) a third component, wherein the third component can be 1,1,1,2-tetrafluoroethane (HFC-134a) (para [0020], [0043]).
Hulse also teaches that the composition can comprise both HFO-1234yf and HFO-1234ze such as transHFO-1234ze (para [0018]).
Hulse teaches that difluoromethane (R-32) can be in an amount of from about 3 wt % to about 75 wt % in the composition (para [0040]), which overlaps with the claimed range of “2 to 5 parts of difluoromethane”.
Hulse teaches that HFO-1234ze is preferably transHFO-1234ze (para [0048]); HFO-1234ze can be in an amount of from about 5% to about 95% by weight in the composition ([0039]), HFO-1234yf can be in an amount of from about 5% to about 95% by weight in the composition ([0039]), which overlap with the claimed ranges of “10 to 15 parts of trans-1,3,3,3-tetrafluoropropene” and “75 to 80 parts of 2,3,3,3-tetrafluoropropene”.
Hulse teaches that the third component can be HFC-134a, and the third component can be in an amount of from about 1 to about 99 percent by weight in the composition (para [0043]), which overlaps with the claimed range of “8-10 parts of 1,1,1,2-tetrafluoroethane”.
Hulse also teaches (para [0010]) that the heat transfer composition has excellent heat transfer properties, chemical stability, low or non-toxicity, low or non-flammability and lubricant compatibility.
Hulse does not teach a single embodiment with all the claimed elements together.
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 make a heat transfer composition comprising R-32 in an amount of from about 3 wt.% to about 75 wt.%, transHFO-1234ze in an amount of from about 5 wt.% to about 95 wt.%, HFO-1234yf in an amount of from about 5 wt.% to about 95 wt.%, and HFC-134a in an amount of from about 1 wt.% to about 99 wt.% as taught by Hulse, in order to make the heat transfer composition having excellent heat transfer properties, chemical stability, low or non-toxicity, low or non-flammability, and lubricant compatibility with a reasonable expectation of success.
Furthermore, 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 the person of ordinary skill in the art.
Regarding claim 2, Hulse teaches (para [0050]) that the heat transfer composition can further include a lubricant, and the examples of the lubricant can be polyol esters, poly alkylene glycols, silicone oil, and mineral oil.
Regarding claim 3, Hulse teaches (para [0037]) that the heat transfer composition can have a Global Warming Potential (GWP) of not greater than about 150, which overlaps with the claimed range of “not greater than 150”.
2. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Hulse (US 2010/0044619 A1, hereinafter Hulse) as applied to claims 1-3 above, and further in view of Hong (CN 106833536 A, hereinafter Hong).
The disclosure of Hulse is relied upon as set forth above.
Regarding claim 4, Hulse teaches that the compositions are formulated and prepared by providing the components at desired relative concentrations (Examples at para [0092]-[0102] & Figures).
Hulse is silent on mixing components in a liquid phase state.
However, Hong teaches (p. 2, ll. 45-46, § SUMMARY OF THE PRESENT INVENTION) a refrigerant composition comprising 70-80 % by weight of 2,3,3,3-tetrafluoropropene (HFO-1234yf) and 15-20 % by weight of trans -1,3,3,3-tetrafluoropropene (transHFO-1234ze). Hong also teaches (p. 2, ll. 47-48, § SUMMARY OF THE PRESENT INVENTION) that the components are physically mixed in the liquid phase state according to the weight ratio to obtain the refrigerant composition.
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 mix HFO-1234yf, transHFO-1234ze, HFC-134a, and HFC-32 in desired amounts of the individual components as taught by Hulse by physically mixing the components in a liquid phase state according to their weight ratio as taught by Hong. For doing so, a refrigerant composition would be conveniently prepared with a reasonable expectation of success. Thus, the invention as a whole would be obvious to a person of ordinary skill in the art.
Response to Arguments
Applicant's arguments filed 12/31/2025 have been fully considered but they are not persuasive.
1. Applicant argues that the technical feature of "the composition including 75 to 80 parts of 2,3,3,3-tetrafluoropropene (HFO-1234yf) and 10 to 15 parts of trans-1,3,3,3-tetrafluoropropene (HFO-1234ze(E))" as recited in claim 1 of the present application is able to achieve better characteristics for the relative COP, the relative cooling capacity, and the discharge temperature of compressor as compared to examples having the HFO-1234yf and HFO-1234ze(E) outside of the claimed range (Comparative Examples 1-12 in Declaration filed 12/31/2025) (pp. 4-6).
Applicant also argues that Comparative Examples 1-12 of Declaration filed 12/31/2025 generally had the discharge temperature of compressor exceeding 172°C, reaching the maximum of 179°C; however, Examples 1-5 of the present application had the discharge temperature of compressor below 172°C, specifically, Example 5 had the discharge temperature of compressor as low as 163°C (p. 5).
Applicant also argues that by optimizing the ratio of HFO-type refrigerant (HFO-1234yf and HFO-1234ze(E)) and controlling the ratio of auxiliary refrigerant (HFC-134a and HFC-32), Examples 1-5 of the present application achieved three advantage of improved energy efficiency, increased relative cooling capacity, and reduced discharge temperature of compressor, with significantly better overall cooling effect than Comparative Examples 1-12 of Declaration filed 12/31/2025; thus, the claimed content ranges of HFO-1234yf and HFO-1234ze(E) indeed exhibit unexpected results as demonstrated by Declaration filed 12/31/2025 (pp. 6-7).
In response, Applicant’s arguments are not persuasive.
The Office prepared a table above to include Comparative Examples 1-12 of Declaration filed 12/31/2025, Examples 1-5 of the present application, and Examples 6-12 of Declaration filed 05/13/2025.
No.
1234yf
1234ze(E)
134a
32
relative COP
Relative Capacity
Discharge Temperature
Declaration filed 12/31/2025;
Comparative Examples
1
20
40
30
10
0.97
0.98
179 ᵒC
2
20
60
10
10
0.99
0.91
177 ᵒC
3
5
70
20
5
0.99
0.84
173 ᵒC
4
20
70
5
5
0.97
0.84
172 ᵒC
5
30
60
2
8
0.98
0.89
174 ᵒC
6
10
50
30
10
0.99
0.94
179 ᵒC
7
30
40
20
10
0.97
0.98
178 ᵒC
8
15
20
60
5
0.96
0.98
177 ᵒC
9
5
20
70
5
0.98
0.97
177 ᵒC
10
5
30
60
5
0.97
0.94
178 ᵒC
11
85
5
5
5
0.97
0.99
176 ᵒC
12
90
3
3
4
0.97
0.97
174 ᵒC
Present Application;
Examples
1
70
20
5
5
1.03
1.08
171 ᵒC
2
80
10
8
2
1.05
1.12
166 ᵒC
3
70
15
10
5
1.08
1.11
168 ᵒC
4
75
17
5
3
1.02
1.07
169 ᵒC
5
80
12
5
3
1.10
1.02
163 ᵒC
Declaration filed 05/13/2025;
Examples
6
72
20
5
3
1.01
1.01
77.1 ᵒC
These temperatures are not comparable to above.
7
72
13
10
5
1.03
1.09
78.6 ᵒC
8
75
10
10
5
1.03
1.05
78.5 ᵒC
9
75
12
10
3
1.01
1.04
77.2 ᵒC
10
78
15
5
2
1.01
1.01
76.2 ᵒC
11
78
11
8
3
1.01
1.03
77.0 ᵒC
12
80
10
5
5
1.03
1.05
78.1 ᵒC
Firstly, Examples 6-12 of Declaration filed 05/13/2025 have a discharge temperature in a range of 76.2 ᵒC to 78.6 ᵒC, which are not comparable to the discharge temperature of Comparative Examples 1-12 of Declaration filed 12/31/2025 that is in a range of 172 ᵒC to 179 ᵒC, and the discharge temperature of Examples 1-5 of the present application that is in a range of 163 ᵒC to 171 ᵒC.
Secondly, 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).
Here, among Examples 1-5 of the present application, only Example 2 (1234yf/1234ze/134a/32: 80/10/8/2) falls within the claimed ranges. Among Examples 6-12 of Declaration filed 05/13/2025, only Example 8 (1234yf/1234ze/134a/32: 75/10/10/5), Example 9 (1234yf/1234ze/134a/32: 75/12/10/3), and Example 11 (1234yf/1234ze/134a/32: 78/11/8/3) fall within the claimed ranges. However, for Examples 1 and 3-5 of the present application and Examples 6, 7, 10, and 12 of Declaration filed 05/13/2025, these examples that are outside the claimed ranges also have improved energy efficiency, increased relative cooling capacity, and reduced discharge temperature. For example, Example 5 of the present application (1234yf/1234ze/134a/32: 80/12/5/3) is outside the claimed ranges, but has improved energy efficiency (i.e. relative COP of 1.10), increased relative cooling capacity (i.e. relative cooling capacity of 1.02), and reduced discharge temperature (i.e. discharge temperature of 163 ᵒC). Therefore, Applicant has not demonstrated the claimed composition possesses unexpected results, and has not shown the criticality of the claimed ranges.
Thirdly, the performance of Examples 1-5 of the present application is compared to test substances 134a, 1234yf, and 1234ze(E), and the 134a has a relative COP and relative capacity of “1.00” (present Table 2). This means Applicant is comparing Examples 1-5 relative to 134a (134a is 100% or the relative base case) and implies the claimed composition is a 134a replacement. The present application also discloses that the claimed composition is used to replace 134a (present US Pub. [0021]).
However, Hulse also teaches that the heat transfer composition of Hulse is used to replace 134a ([0022], [0052]); the amount of difluoromethane (R-32) is also adjusted to obtain a 134a replacement ([0040]). 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 reasonably expect that the properties of relative COP, relative capacity, and discharge temperature comparable to HFC-134a, would flow naturally from the teaching of Hulse, because the teaching of Hulse provides substantially the same composition comprising the same amount of HFO-1234yf, transHFO-1234ze, HFC-134a, and R-32 as claimed, and also because the composition of Hulse is used to replace HFC-134a, and the amount of R-32 can be adjusted to obtain a HFC-134a replacement as recognized by Hulse. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
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
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