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 05/21/2026.
Claims 6, 8, 14, and 16 are currently pending.
Status of Prosecution/Restriction
The two separate 103 rejections of record over Corr (GB 2,269,004 A) and Minor (WO 94/11460 A1) as evidenced by or in view of Bell (US 4,129,603 A) in the prior Office action set forth the rationale that the references taught a composition comprising 1,1,2-trifluoroethane (R-143) and 1,1,1,2-tetrafluoroethane (R-134a). Applicant’s amendment canceling 1,1,1,2-tetrafluoroethane (R-134a) from the claims overcomes the 103 rejections/rationale of record over 1) Corr (GB 2,269,004 A) and 2) Minor (WO 94/11460 A1) as evidenced by or in view of Bell (US 4,129,603 A). Accordingly, the rejections (and rationale) of record are withdrawn in view of Applicant’s amendment.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 HFC-134a species examined in the previous Office action, which overcomes the rejection of record (Id.).
The species requirement remains in effect. The Examiner chose 1,1-difluoroethane (HFC-152a) as the next additional compound species for search/examination to be shifted and extended to. The claims 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.
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 6, 8, 14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Corr (GB 2,269,004 A).
As to claims 6 and 8, Corr teaches a working fluid composition containing a heat transfer fluid for provision within a heat transfer device (abstract). The heat transfer fluid (generally disclosed in the reference as the “second heat transfer fluid”) comprises at least one fluoroalkane and is preferably selected from the group consisting of, among others totaling seven (7) compounds, 1,1-difluoroethane (R-152a) and 1,1,2-trifluoroethane (R-143) (p.3 lines 23-34), preferably contains two fluoroalkanes as a binary mixture (p.4 lines 1-4 & 21-23), and may be azeotropic or a near-azeotrope (p.4 lines 23-24). A person of ordinary skill in the art would at-once envisage a binary blend of 1,1,2-trifluoroethane (R-143) and 1,1-difluoroethane (R-152a) from the limited total number of preferred fluoroalkane species (seven (7) total) and the preferred teaching that the second heat transfer fluid is preferably a binary mixture; note that 7C2 (combinations of a sample of 2 compounds from a set of 7 distinct compounds) equals twenty one (21) distinct binary blends of the preferred compounds. See, MPEP 2131.02.
In the event a binary blend of 1,1,2-trifluoroethane (R-143) and 1,1-difluoroethane (R-152a) would not be at-once envisaged from these teachings, there is nevertheless a strong case of prima facie obvious of the claimed presence of the two 1,1,2-trifluoroethane (R-143) and 1,1-difluoroethane (R-152a) over the same cited teachings of the reference. At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide and formulate a binary blend of 1,1,2-trifluoroethane (R-143) and 1,1-difluoroethane (R-152a) with a reasonable expectation of successfully obtaining a heat transfer fluid and working fluid composition thereof suitable of replacing ozone-damaging chlorofluorocarbon and/or hydrochlorofluorocarbon refrigerants (e.g., R-12, R-22, R-124, etc.) from the teachings of Corr because the reference teaches and even prefers binary blends of the seven listed compounds for such purpose. See also p.1 to 3 generally for this ozone/replacement-related purpose of the (binary preferred) fluoroalkane-based second heat transfer fluid.
While the reference fails to indicate the concentration of 1,1-difluoroethane (R-152a) should be specifically greater than 0 and up to 0.1 mass% with respect to the mixture/total of 1,1,2-trifluoroethane and 1,1-difluoroethane, this range is nevertheless overlapped and encompassed by the teachings of Corr because the reference is directed to providing 1,1-difluoroethane, even in an infinitesimal amount such as that claimed, in a binary blend with 1,1,2-trifluoroethane in order to obtain azeotropic refrigerant/heat transfer/working fluid compositions suitable to replace ozone-damaging chlorofluorocarbon and/or hydrochlorofluorocarbon refrigerants with a reasonable expectation of success. “The combination of familiar [components] according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Intern. Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007). Obviousness only requires a reasonable expectation of success. In re Droge, 695 F.3d 1334, 104 USPQ 2d 1377, 1379, 1380 (Fed. Cir. 2012); and In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988). See also, MPEP 2143.02.
As to claims 14 and 16, Corr teaches the heat transfer fluid further comprises a lubricant in addition to the fluoroalkanes (abstract). The lubricants disclosed to be provided with the fluoroalkanes detailed on p.7-18 of the reference are refrigeration oils. This means the fluoroalkanes are mixed with a lubricant to form the heat transfer fluid, which is equivalent to mixing the heat transfer medium with a refrigeration oil to form a working fluid, as claimed. The reference also details a process of charging the lubricant prior to adding the fluoroalkanes (p.2 line 11 to p.3 line 4, p.21 lines 4-17, etc.), which alternatively reads on their mixing, as claimed.
Corr further teaches applicable heat transfer devices are listed on p.1 and include “refrigerative, heat pump and air condition systems”. Since the heat transfer fluid composition comprising the cited fluoroalkanes and lubricant is provided in these devices, the reference effectively reads on and teaches a method for refrigeration comprising, in addition to mixing the heat transfer medium composition and refrigeration oil to form a working fluid (Id.), employing (i.e., providing and/or operating) said working fluid in a refrigerating machine. Note that a prior art devices meets a claimed process if the device carries out the process during normal operation. See, MPEP 2112.02. Also, the reference’s examples demonstrate use of the working fluid composition in a chiller system where the chiller system was run, i.e., operated, for at least 1 month (pages 23 to 25) that also reads on employing said working fluid in a refrigerating machine.
Claims 6, 8, 14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Minor (WO 94/11460 A1) as evidenced by or in view of Minor et al. (US 5,433,880 A).
As to claims 6 and 8, Minor teaches azeotropic or azeotrope-like refrigerant compounds including 1,1,2-trifluoroethane (abstract). The compositions generally comprise up to 99 wt.% 1,1,2-trifluoroethane (page 7 and claim 3). Minor further teach providing an additional compound or other component in the composition such as a hydrofluorocarbonalkane having a boiling point between -60 to +30°C (page 19 lines 31-41).
While Minor (the WO Minor reference) fails to teach the additional hydrofluorocarbonalkane is 1,1-difluoroethane (R-152a), 1,1-difluoroethane (R-152a) is such a hydrofluorocarbon-alkane, a.k.a. hydrofluorocarbon or HFC, that is well-known in the art to have a boiling point within Minor’s range and meeting Minor’s criteria for an additional compound. As evidence thereof, Minor et al. (the US patent reference) teach 1,1-difluoroethane has a low boiling point of -24.7°C (col. 4 lines 45-46) and is useful as a refrigerant (Field of Invention in col. 1 and Summary of Invention in col. 2). Also note that 1,1-difluoroethane is composed only of hydrogen, fluorine, and carbon where the carbon is present as an alkane-chain (1,1-difluoroethane is an ethane having two fluorine atoms and four hydrogen atoms) and is therefore a hydrofluorocarbonalkane. As evidenced by Minor et al. (the US patent), 1,1-difluoroethane is indeed a hydrofluorocarbonalkane having a boiling point between -60 to +30°C which is taught by Minor (the WO reference) as suitable criteria for their additional compound that is provided in an azeotropic 1,1,2-trifluoroethane-based refrigerant composition.
Accordingly, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide 1,1-difluoroethane as the additional compound in Minor’s azeotropic 1,1,2-trifluoroethane-based refrigerant composition because Minor further teach and motivate providing an additional compound or other component in the composition such as a hydrofluorocarbonalkane having a boiling point between -60 to +30°C and, as evidenced by Minor et al. or even in view of Minor et al., 1,1-difluoroethane indeed meets this criteria. While the references fail to indicate the concentration of the additional compound should be specifically greater than 0 and up to 0.1 mass% with respect to the mixture/total of HFC-143 and the additional compound, this range is nevertheless overlapped and encompassed by the teachings of Minor because the reference is directed to providing an additional compound, even in an infinitesimal amount such as that claimed, in an azeotropic HFC-143-based composition with a reasonable expectation of success. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301. See also, MPEP 2144.07. “The combination of familiar [components] according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Intern. Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007). Obviousness only requires a reasonable expectation of success. In re Droge, 695 F.3d 1334, 104 USPQ 2d 1377, 1379, 1380 (Fed. Cir. 2012); and In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988). See also, MPEP 2143.02.
As to claims 14 and 16, Minor further teach lubricants, which are preferably esters having a molecular weight greater than 250, may be added to the composition (p.20), which reads on a step of mixing the composition with a refrigeration oil to form a working fluid, as claimed. A person of ordinary skill in the art would recognize and understand Minor’s lubricant is a refrigeration oil. In the present art, lubricants and refrigeration oils are synonymous. Additionally, the description that the lubricant can be esters having a molecular weight greater than 250 further describes the lubricant as an oil.
Minor further teaches the compositions are used to produce refrigeration by condensing the composition (which may be present with a lubricant, Id.) and thereafter evaporating the condensate in the vicinity of a body to be cooled (page 19 lines 19-24), which reads on a method for refrigeration comprising, in addition to mixing the heat transfer medium composition and refrigeration oil to form a working fluid (Id.), employing (i.e., providing and/or operating) said working fluid in a refrigerating machine. There are also examples that use the compositions as a refrigerant in an apparatus comprising an evaporator, condenser, and compressor (Example 3 beginning on page 16) that also reads on a method on a method for refrigeration comprising, in addition to mixing the heat transfer medium composition and refrigeration oil to form a working fluid (Id.), employing (i.e., providing and/or operating) said working fluid in a refrigerating machine.
Response to Arguments
Applicant's arguments filed 05/21/2026 have been fully considered but they are not persuasive.
Regarding Corr (GB 2,269,004 A) Applicant argues the amendment overcomes the rejection because the independent claim has been amended to delete 1,1,1-trifluoromethane, 1,2-difluoroethane, and 1,1,1,2-tetrafluoroethane. In response, this argument is not persuasive because Corr teaches and meets a blend of 1,1,2-trifluoroethane and 1,1-difluoroethane as encompassed by the amended claims. See the new rationale in the new/revised 103 rejection, above.
Applicant’s arguments with respect to Minor (WO 94/11460 A1) as evidenced by or in view of Bell (US 4,129,603 A) have been considered but are moot because the arguments do not apply to all of the references being used in the current rejection. The current rejection also utilizes a new reference, Minor et al. (US 5,433,880 A), under a new ground(s) of rejection which renders obvious instant claims. See the new 103 rejection over Minor (WO 94/11460 A1) as evidenced by or in view of Minor et al. (US 5,433,880 A), above.
Prior Art Cited But Not Applied
The following prior art is made of record and not relied upon but is considered pertinent to applicant's disclosure and/or to support the above grounds of rejection. Like the Minor et al. (US 5,433,880 A) reference utilized in the above grounds of rejection, Bivens et al. (US 5,262,077 A) teach 1,1-difluoroethane has a low boiling point of
-24.7°C (col. 3 lines 35-36) and is useful as a refrigerant (col. 1 lines 11-15).
The remaining references listed on Forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or discussed 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.
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
July 17, 2026
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