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 filed 04/08/2026.
Claims 1-11 are currently pending and under examination.
The rejection of claims 1-11 under 35 U.S.C. 103 as being unpatentable over Fukushima (US 2017/0058173 A1) in view of Ueno (US 2016/0369146 A1) is maintained in view of the above remarks.
The rationale of record remains the same. See pages 2 to 34 of the Non-final Office action mailed 01/09/2026.
Response to Arguments
Applicant's arguments filed 04/08/2026 have been fully considered but they are not persuasive.
Applicant argues that both Fukushima and Ueno are opposed to the inclusion of water; however, in Applicant's invention, a small amount of water contained in the refrigerant composition stabilizes double bonds in the molecules of unsaturated fluorocarbon compounds that can be present in the refrigerant, and makes it less likely that the unsaturated fluorocarbon compounds will be oxidized, thus increasing the stability of the refrigerant composition; these features cannot be reasonably achieved, with a reasonable expectation of success, based on a combination of Fukushima and Ueno (Remarks, pp. 15-16).
Applicant also argues that the refrigerant compositions comprising 28.0 mass% of HFO-1132(E), 21.5 mass% of R32, 48.0 mass% of R1234yf, and 2.5 mass% of CO2 were prepared; the stability of the refrigerant compositions in which the refrigerants were mixed in a container with specified amounts of water and oxygen as shown in Table A was analyzed; in the situation conducted under the same oxygen content, the generation of acids was suppressed in the added Examples which contained water as containing 0.1 mass% or less (1,000 mass ppm or less) based on the entire refrigerant composition, compared to the added Comparative Examples which did not contain water; in case the water content was too high, as in the Added Comparative Examples, although decomposition of the refrigerant composition was unlikely to occur, the generation of solids was confirmed "Present", the generation of solids leads to impurities in a refrigerating machine; therefore, the above results indicate that the stability of a refrigerant composition is improved by containing 0.1 mass% or less (1,000 mass ppm or less) of water based on the entire refrigerant composition, this effect achieved by water is unexpected (Remarks, pp. 16-17; Declaration, Table A, pp. 5-6).
In response, Applicant’s arguments have been considered but they are not persuasive.
After careful and full consideration of its contents, the declaration under 37 CFR 1.132 filed 04/08/2026 is insufficient to overcome the 103 current grounds of rejection over Fukushima (US 2017/0058173 A1) in view of Ueno (US 2016/0369146 A1).
Firstly, 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.
Ueno teaches that it is necessary to control the moisture concentration in the heat cycle system, and the moisture concentration in the heat cycle system is preferably less than 1,000 ppm by the mass ratio based on the working fluid ([0190]), equaling to less than 0.1 mass%, which falls within the claimed range of “0.1 mass% or less”.
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 property of a small amount of water (0.1 mass% or less of water) contained in the refrigerant composition increasing the stability of the refrigerant composition, would flow naturally from the teaching of the combination of Fukushima and Ueno, because the teaching of the combination of Fukushima and Ueno provides substantially the same composition comprising the same refrigerant comprising the same amounts of CO2, HFO-1132(E), R32, and R1234yf, and the same amount of water in the composition being 0.1 mass% or less based on the entire refrigerant as claimed, and also because the water concentration in the heat cycle system is less than 1,000 ppm by the mass ratio based on the working fluid as recognized by Ueno. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Secondly, the claims are not deemed patentable over the reference of record since the claims are not commensurate in scope with the probative value of data in Sample Nos. 1-20 of Table A. The claims are not commensurate in scope with the comparative showing, because Sample Nos. 1-20 of Table A are limited to a refrigerant comprising 28.0 mass% of HFO-1132(E), 21.5 mass% of R32, 48.0 mass% of R1234yf, and 2.5 mass% of CO2, whereas the claims broadly include any refrigerant comprising from 20 mass% to 55 mass% of HFO-1132(E), from 10 mass% to 50 mass% of R32, from 20 mass% to 55 mass% of R1234yf, and from more than 0 mass% to 5 mass% CO2. See In re Clemens, 206 USPQ 289 (CCPA 1980).
Thirdly, note examples in the declaration like No. 2 and No. 17 that both contain the same amount of water within the claimed range (10 ppm or 0.001 wt.% water) but have vastly different acid contents (<1 ppm and 500 ppm, respectively), which Applicant indicates is indicative of less stability. It is unclear how such a degradation in stability with the amount of water within the claimed range as in declaration example No. 17 constitutes an unexpected result. A similar rationale could be made comparing many other pairs of the declaration examples.
The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). Applicants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness. Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992).
Fourthly, Itano (WO 2017/171090 A1, see US 2020/0308463 A1, hereinafter Itano) as an evidentiary reference teaches when the composition contains water, the double bonds in the molecules of the unsaturated fluorinated hydrocarbons contained in the composition can be stably present, and oxidation of the unsaturated fluorinated hydrocarbons is less likely to occur, consequently improving the chemical stability of the composition ([0174]). Itano also teaches that a composition comprises water in an amount of 0.1 wt % or less in the composition ([0171]), which overlaps with the claimed range of “0.1 mass% or less”.
Therefore, the Office’s position is the declaration’s comparative showing does not rise to a level of establishing unexpected results, because the resultant increase in relative stability when water is added in an amount of 0.1 mass% or less (i.e., 0 ppm water to 1,000 ppm water, both inclusive) is merely an expected beneficial result as recognized by the evidentiary reference Itano.
"Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967).
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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