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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/01/2025 has been entered.
This action is responsive to Applicant’s request for continued examination filed 08/01/2025, amendment/remarks filed 07/01/2025, and supplemental response filed 02/09/2026.
The supplemental response filed 02/09/2026 is entered.
Claims 6, 8, 14, and 16 are currently pending.
Response to Amendment
The rejection of claims 14 and 16 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the above amendment.
The 103 rejection over Corr (GB 2,269,004 A) as previously set forth in the Office action mailed 02/03/2025 is maintained and has been revised below to reflect the changes in claim scope made by Applicant’s claim amendments.
The 103 rejection over Minor (WO 94/11460 A1) as evidenced by or in view of Bell (US 4,129,603 A) as previously set forth in the Office action mailed 02/03/2025 is maintained and has been revised below to reflect the changes in claim scope made by Applicant’s claim amendments. Note that the primary reference was formally referred to as Walker however upon review this was a misread of the fields on the reference’s cover page.
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, 1,1,1,2-tetrafluoroethane (R-134a) 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 1,1,1,2-tetrafluoroethane (R-134a) 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 1,1,1,2-tetrafluoroethane (R-134a) 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 1,1,1,2-tetrafluoroethane (R-134a) 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 1,1,1,2-tetrafluoroethane (R-134a) 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 1,1,1,2-tetrafluoroethane (R-134a) should be specifically greater than 0 and up to 0.1 mass% with respect to the mixture/total of 1,1,2-trifluoroethane and 1,1,1,2-tetrafluoroethane, this range is nevertheless overlapped and encompassed by the teachings of Corr because the reference is directed to providing 1,1,1,2-tetrafluoroethane, 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 Bell (US 4,129,603 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 fails to teach the additional hydrofluorocarbonalkane is 1,1,1,2-tetrafluoroethane (HFC-134a), 1,1,1,2-tetrafluoroethane (HFC-134a) is such a hydrofluorocarbonalkane, 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, Bell teach 1,1,1,2-tetrafluoroethane has a low boiling point of -26.5°C and is useful as a refrigerant (col. 3 lines 37-39). Also note that 1,1,1,2-tetrafluoroethane is composed only of hydrogen, fluorine, and carbon where the carbon is present as an alkane-chain (1,1,1,2-tetrafluoroethane is an ethane having four fluorine atoms and two hydrogen atoms) and is therefore a hydrofluorocarbonalkane. As evidenced by Bell, 1,1,1,2-tetrafluoroethane is indeed a hydrofluorocarbonalkane having a boiling point between -60 to +30°C which is taught by Minor 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 1,1,1,2-tetrafluoroethane 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 Bell or even in view of Bell, 1,1,1,2-tetrafluoroethane 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 a 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 07/01/2025 and 02/09/2026 have been fully considered but they are not persuasive. Note that the arguments filed 07/01/2025 to the prior art rejections of record were previously considered and addressed in the Advisory Action mailed 07/29/2025. The arguments filed 07/01/2025 remain not persuasive for the reasons of record. Any arguments in the response filed 02/09/2026 repeated from 07/01/2025 will be repeated, below.
Regarding the 103 rejection over Corr (GB 2,269,004 A) Applicant argues Corr fails to teach or suggest the presence of 1,1,1,2-tetrafluoroethane (R-134a) in a total amount of more than 0 mass% and 0.1 mass% or less based on the entire mixture of 1,1,2-trifluoroethane (R-143) and the additional compound because Corr discloses adding R-134a as the major component of the composition such that one skilled in the art would not modify/arrive at the claimed range of more than 0 mass% and 0.1 mass% or less HFC-134a.
In response, this argument is not persuasive because any teaching in the reference that R-134a is the major component (i.e., present in a large, majority amount) is merely a preferred embodiment of the reference. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. As set forth in the rejection of record, the claimed range of HFC-134a is nevertheless overlapped and encompassed by the teachings of Corr because the reference is directed to providing 1,1,1,2-tetrafluoroethane (R-134a), even in an infinitesimal amount such as that claimed, in a binary blend with 1,1,2-trifluoroethane (HFC-143) 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, and obviousness only requires a reasonable expectation of success.
Applicant further argues the comparative showing in the present application's specification provides evidence that the claimed composition possesses unexpected results via an exemplary composition in Table 1 comprising HFC-143 as a major component at 99 mass% together with HFC-134a at 1 mass% obtains a COP of 1.016 and a refrigerating capacity of 1.638. Applicant’s position is that, even though the specification examples are outside the claimed range, the examples demonstrate advantageous COP and refrigerant capacity when HFC-143 is the main component.
In response, the cited Table in the present specification is of 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. Table 1 in the specification compares binary blends of components (e.g., HFC-143/HFC-134a) all at a single relative formulation by mass of 99/1 whereas Corr directly teach and suggest HFC-143/HFC-134a compositions. See In re De Blawe, 222 USPQ 191 (FED. Cir. 1984), and In re Fenn, 208 USPQ 470 (CCPA 1981).
Additionally, even if, arguendo, the comparison was done between the Applicant’s invention and the closest prior art, the claims are not deemed patentable over the reference of record since Applicant has not established the results are unexpected, significant, and/or critical and the claims are otherwise not commensurate in scope with the probative value of data in the examples. Independent claim 6 in view of the species election of record effectively amounts to a composition comprising 1,1,2-trifluoroethane (HFC-143) and 1,1,1,2-tetrafluoroethane (HFC-134a) in an amount of more than 0 mass% and 0.1 mass% or less based on the mixture of HFC-143 and HFC-134a. However, Table 1 of the specification only demonstrates a single concentration of the claimed/elected composition that is entirely outside the claimed range (in mass%, 99/1 HFC-143/HFC-134a of Table 1 is outside the claimed range requiring HFC-134a be 0-0.1 mass% relative to the HFC-143+HFC-134a). Due to the closest example being outside the scope of the claims, there is insufficient data to permit a person having ordinary skill in the art to ascertain there is a trend of unexpected stability that extends to the claimed HFC-134a concentration range within the scope of the claims with reasonable certainty. Obtaining results alleged as unexpected outside a claimed range is not indicative of a claimed range possessing unexpected results. It is also noted the comparative showing does not appear to contain a comparative example commensurate with the lower boundary of the claimed range. See Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992), In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960), and In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Any of Applicant’s remaining arguments to Corr set forth in the present remarks pertain to or are based on the disclosure of the recently filed 132 Declaration and are addressed separately in the next section, below.
Regarding the 103 rejection over Minor (WO 94/11460 A1) as evidenced by or in view of Bell (US 4,129,603 A) Applicant argues the resulting composition of Walker as evidenced or in view of Bell would not meet the claimed composition because, even if 1,1,1,2-tetrafluoroethane (R-134a) were added to the composition disclosed in Walker, the proportion of 1,1,2-trifluoroethane (R-143) taught by Walker being in an amount of 99% at most would be less than required in the instant claims.
In response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., greater than 99% HFC-143 or any amount of HFC-143) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Declaration of Kazuhiro Takahashi
Page 1 of the declaration provides a summary of the declarant’s background. Page 2 of the declaration sets forth a comparative example carried out by the declarant to allege a person of ordinary skill in the art would not arrive at the claimed composition based on the teachings of Corr. Page 3 of the declaration is a conclusion section with the declarant’s signature.
After careful and full consideration of its contents, the declaration filed 02/09/2026 is insufficient to overcome the 103 rejection of record over Corr (GB 2,269,004 A).
Data is provided in the declaration formulating a composition having a mass ratio of 1,1,2-trifluoroethane (R-143) to 1,1,1,2-tetrafluoroethane (R-134a) of 99.9/0.1 in accordance with Corr and then conducting a refrigeration cycle experiment to determine the refrigerating capacity ratio of this composition relative to chlorodifluoromethane (R-22) (determined to be 0.263). The declarant points out the purpose of Corr’s composition is to obtain a suitable substitute working fluid composition for ozone-depleting refrigerants such as R-22. The declarant’s position (and Applicant’s arguments thereof) is the composition of Applicant’s claims (99.9/0.1 mass ratio of R-143/R-134a) exhibiting such a poor refrigeration capacity ratio relative to R-22 cannot serve as a substitute refrigerant for R-22 because it does not solve the problem addressed in Corr and is therefore not encompassed within Corr’s technical scope.
In response, the arguments and position(s) taken in the declaration are not persuasive because the reference is not exclusively limited to R-22 replacement compositions as alleged. Rather, the reference discloses the replaced composition may be any chlorofluorocarbon (CFC) and/or hydrochlorofluorocarbon (HCFC) containing heat transfer fluid known and used at the time such as dichlorodifluoromethane (R-12), chlorodifluoromethane (R-22), 1-chloro-1,2,2,2-tetrafluoroethane (R-124), 1-chloro-1,1,2,2-tetrafluoroethane (R-124a), 1-chloro-1,1-difluoroethane (R-142b), 1-chloro-1,2-trifluoroethane (R-133), 1,1-dichloro-2,2,2-trifluoroethane (R-123), 1,2-dichloro-1,1,2-trifluoroethane (R-123a) and the azeotrope of R-22 and chloropentafluoroethane (R-115) (aka R-502) (p.3 lines 5-18). While the reference prefers R-22 replacement compositions (p.3 lines 18-22), the reference’s preferred embodiments (replacement compositions for R-22 and R-502) do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (replacement compositions for general CFC and/or HCFC containing heat transfer fluids), and a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments (replacements for other CFCs and/or HCFCs). Just because the claimed composition has been discovered to be a poor R-22 replacement does not mean it is an unsuitable replacement for other CFCs/HCFCs encompassed by the reference. See In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971) and Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
Arguendo, while the declaration’s R-143/R-134a 99.9/0.1 composition exhibits a poor refrigerating capacity ratio relative to R-22, it does not necessarily render the prior art unsatisfactory for its intended purpose. Corr’s ultimate purpose is to formulate ozone friendly refrigerants that replace chlorofluorocarbon and hydrochlorofluorocarbon containing refrigerants that were known to cause destruction of the stratospheric ozone layer (see, e.g., p.1 & 2). P.1 lines 16-23 specifically identifies both 1,1,2-trifluoroethane (R-143) and 1,1,1,2-tetrafluoroethane (R-134a) as ozone friendly fluoroalkanes in a short list of compounds. Formulating ozone friendly refrigerants at the expense of a refrigerating capacity ratio relative to R-22 is more akin to a demonstration of a trade-off between competing features rather than amounting to a true showing that the proposed modification renders the reference unsatisfactory for its intended purpose. Also even if the declaration example’s relative refrigerating capacity ratio to R-22 is low the formulated refrigerant is nevertheless shown to function in a refrigeration cycle apparatus, which meets the reference’s purpose of formulating an operational ozone friendly refrigerant. A given course of action often has simultaneous advantages and disadvantages, which does not necessarily obviate motivation to modify a reference.
Any of Applicant’s arguments set forth in the present remarks to Corr that are based on the declaration are also not persuasive for the same reasons that the declaration is insufficient to withdraw the 103 rejection.
For the sake of completeness, the declaration filed 02/09/2026 is insufficient to overcome the 103 rejection of record over Minor (WO 94/11460 A1) as evidenced by or in view of Bell (US 4,129,603 A) because the rejection/references are neither challenged nor argued in the declaration.
In view of the foregoing, the rejections are maintained for the reasons of record.
Correspondence
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
February 23, 2026