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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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(s) has/have been entered.
This action is responsive to Applicant’s request for continued examination filed 10/20/2025, remarks/132 declaration filed 08/28/2025, remarks/132 declaration filed 04/17/2026, and amendment/remarks filed 07/31/2026.
Claims 2-18 are currently pending, of which claims 10-13 are withdrawn.
The rejection of claims 2-9 and 14-18 under 35 U.S.C. 103 as being unpatentable over Fukushima (US 2017/0058173 A1) set forth in the previous Office action is generally maintained and has been revised below to reflect the changes in claim scope made by Applicant’s present claim amendments. The current rejection also utilizes new secondary references optionally combined with Fukushima under new ground(s) of rejection which renders obvious the instant claims as amended. See below.
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 2-9 and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima ‘173 (US 2017/0058173 A1) optionally in view of any one of Boussand et al. (US 2013/0099154 A1), Fukushima ‘123 (US 2014/0077123 A1), or Itano et al. (US 2017/0174967 A1).
Note that there are three (3) independent claims presently under examination (claims 2, 16, and 18). However, those claims generally recite the same composition (comprising the same refrigerant with the same components in the same concentrations having the same burning velocity) where claim 2 is drawn to the composition itself and claims 16 and 18 are drawn to methods of using the composition involving circulating the composition as a working fluid in a refrigerating machine. The claims have been grouped into a single rationale in this rejection heading for brevity of the Office action (or else the rejection would be several times longer, spanning many additional pages, if every rationale were repeated for each independent claim).
Fukushima ‘173 teaches working fluid compositions and refrigerating apparatus thereof [0003], [0143]+, & [0175]). The working fluid is suitable as an alternative to R410A ([0011], [0013]-[0014]). Operation of the refrigerating apparatus comprises repeating a cycle of compressing, condensing, expanding, and evaporating the working fluid (Id. & [0054]-[0058]), i.e., circulating the working fluid in the apparatus. Fukushima ‘173 further teaches the working fluid is provided, circulated, and evaluated in a standard refrigerating cycle system that also sufficiently circulates/operates with R410A ([0012], [0015], [0035]-[0037], [0173], claim 6, & Fig. 1), i.e., operating a refrigerating machine comprising circulating working fluid in a refrigerating machine designed for R410A per instant claim 16. See also [0164] regarding instant claim 16 that the heat cycle system (a refrigerating machine according to [0143]+, Id.) employs the working fluid as an alternative to R410A, meaning Fukushima ‘173’s working fluid compositions are circulated in a refrigerating machine designed for R410A during operation/use. Refrigerating oil is expressly taught as a preferred, well-known additive in the refrigerant art for provision in the reference’s working fluid ([0107]-[0132]).
The working fluid compositions comprise 1,2-difluoroethylene (HFO-1132) (abstract & [0011]). The HFO-1132 may be trans-1,2-difluoroethylene/HFO-1132(E) ([0012], [0023], [0079], Examples in Tables 10 to 14). Fukushima ‘173 further teaches the composition, in addition to the HFO-1132, contains at least two members selected form a saturated hydrofluorocarbon and a carbon-carbon double bond-containing hydrofluorocarbon ([0018]), preferably two members selected from a HFC and a HFO ([0024]). Species of HFC are disclosed at [0074]-[0077], species of HFO are disclosed at [0082]-[0084], and [0078] discloses a blend of a single HFC alone with one of the HFOs other than HFO-1132. This amounts to a ternary composition of HFO-1132(E), a HFC, and an additional HFO. Especially preferred HFC are HFC-32, HFC-152a, HFC-134a, and HFC-125 [0077], and especially preferred HFO are HFO-1234yf, HFO-1234ze(E), or HFO-1234ze(Z) [0084]. One of the four preferred HFC is the claimed difluoromethane/R32, and two of the three preferred HFO are the claimed 1,3,3,3-tetrafluoroprpene/R1234ze. Thus, out of twelve (12) preferred HFO-1132(E)-based compositions (with a single additional HFC and a single additional HFO from these embodiments) disclosed/suggested here, two of them (e.g., HFO-1132(E)/HFC-32/HFO-1234ze(E) & HFO-1132(E)/HFC-32/HFO-1234ze(Z)) correspond to the claimed refrigerant composition. Furthermore, Fukushima ‘173 teaches additional preferred compositions and selections of components: “In a case where HFO-1132(E) is mainly contained as HFO-1132, a combination of HFC-32 or HFC-125, one member selected from HFC-134a, HFO-1234yf and HFO-1234ze(E), and the HFO-1132.” [0090]. Here, one of the two preferred first additional compounds is the claimed difluoromethane/R32, and one of the three preferred second additional compounds is the claimed 1,3,3,3-tetrafluoroprpene/R1234ze. Thus, out of six (6) preferred HFO-1132(E)-based compositions (from [0090]’s embodiments) disclosed/suggested here, one of them (e.g., HFO-1132(E)/HFC-32/HFO-1234ze(E)) corresponds to the claimed refrigerant composition.
Regarding the claimed refrigerant composition containing all three of HFO-1132(E), R32, and R1234ze at once, a person of ordinary skill in the art would at-once envisage a composition containing all three of HFO-1132(E), R32, and R1234ze from the teachings of Fukushima ‘173. As described above, twelve (12) expressly preferred ternary compositions are suggested by [0012], [0023], [0077]-[0079], & [0084], where the claimed composition is two of these twelve, which describes the claimed composition with sufficient specificity to at once envisage a composition comprising all three of HFO-1132(E), R32, and R1234ze from the teachings of Fukushima ‘173. Alternatively, six (6) express ternary compositions are suggested by [0090], where the claimed composition is one of these eight, which describes the claimed composition with sufficient specificity to at once envisage a composition comprising all three of HFO-1132(E), R32, and R1234ze from the teachings of Fukushima ‘173.
In the event Fukushima ‘173 is deemed not sufficiently specific to at once envisage a composition comprising all three of HFO-1132(E), R32, and R1234ze, there is nevertheless a strong case of prima facie obvious of the claimed presence of all three of HFO-1132(E), R32, and R1234ze 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 such a composition with a reasonable expectation of successfully obtaining a working fluid composition from the teachings of Fukushima ‘173 because the reference directly teaches/requires HFO-1132(E) as a base component and further teaches/suggests both R32 as a suitable HFC and R1234ze as a suitable HFO for provision in the composition, including in combination as separate components of a ternary composition (Id., e.g., first at [0077]-[0079] & [0084] and additionally/separately at [0090]).
Alternatively, there is additional rationale how Fukushima ‘173 renders obvious the claimed presence of all three of HFO-1132(E), R32, and R1234ze in a composition. Building off all that is disclosed above, Fukushima ‘173 effectively teach HFC-32 and HFC-125 as obvious/alternative equivalent HFC species (or first additional components) in HFO-1132(E)-based compositions (“HFC-32 or HFC-125”, [0090]). Fukushima ‘173 teach exemplary compositions containing solely HFO-1132(E), HFC-125, and HFO-1234ze(E) in Table 12 on p.15:
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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 substitute HFC-32/difluoromethane in place of the HFC-125 in Table 12’s working examples in order to obtain an alternative working fluid composition within the express/preferred teachings of the reference with a reasonable expectation of success because Fukushima ‘173 teach HFC-32 and HFC-125 as obvious/alternative equivalent HFC species via at least [0090]. This substitution amounts to compositions containing solely HFO-1132(E), HFC-32, and HFO-1234ze(E) as claimed. Note that there is also additional strong motivation to make this substitution – Fukushima ‘173 teach HFC-125 has a global warming potential (GWP) of 3,500 while HFC-32 has a GWP of 675 (Table 4 on p.12). The resultant GWP of a composition is the weighted average of the GWPs of the respective compounds in the composition (well-known in the art, but also disclosed at [0174]). Thus, a person of ordinary skill in the art would be motivated to substitute the HFC-32 in place of the HFC-125 in in Table 12’s working examples in order to obtain a working fluid composition within the express/preferred teachings of the reference (HFC-32 and HFC-125 are obvious/alternative equivalent HFC species, Id.) having a significantly reduced GWP and environmental impact with a reasonable expectation of success.
Regarding the recited concentrations of the claimed refrigerant composition
containing all three of HFO-1132(E), R32, and R1234ze, the obviousness rationale set forth above substitutes HFC-32 in place the HFC-125 in Table 12’s working examples in order to obtain an alternative working fluid composition containing solely HFO-1132(E), HFC-32, and HFO-1234ze(E) (Id.). The result of such substitution falls within, overlaps, and/or otherwise encompasses the claimed concentrations of claims 2 to 9.
For example, substituting the HFC-125 for HFC-32 in Example 104 (40 wt.% HFO-1132(E), 10 wt.% HFC-125, 50 wt.% HFO-1234ze(E)) obtains a composition of 40 wt.% HFO-1132(E), 10 wt.% HFC-32, & 50 wt.% HFO-1234ze(E), which falls within a ternary diagram figure connecting the 9 points K, L, M, N, B’’, J, I, H, and G as in claim 2, a ternary diagram figure connecting the 6 points K, L, M, I, H, and G as in claim 3, and a ternary diagram figure connecting the 4 points K, L, H, and G as in claim 4. Similarly, substituting the HFC-125 for HFC-32 in Example 101 (20 wt.% HFO-1132(E), 40 wt.% HFC-125, 40 wt.% HFO-1234ze(E)) obtains a composition of 20 wt.% HFO-1132(E), 40 wt.% HFC-32, & 40 wt.% HFO-1234ze(E), which falls within a ternary diagram figure connecting the 9 points K, L, M, N, B’’, J, I, H, and G as in claim 2, a ternary diagram figure connecting the 8 points K, L, M, N, F, E, D, and C as in claim 5, a ternary diagram figure connecting the 6 points K, L, M, E, D and C as in claim 6. Additional and similar rationale exists for other examples in Table 12, too.
Additionally, note that the totality of Table 12 is essentially compositions including and between points of (20 wt.% HFO-1132(E), 10 wt.% HFC-125, 70 wt.% HFO-1234ze(E)), (20 wt.% HFO-1132(E), 70 wt.% HFC-125, 10 wt.% HFO-1234ze(E)), and (80 wt.% HFO-1132(E), 10 wt.% HFC-125, 10 wt.% HFO-1234ze(E)). Accordingly, substituting the HFC-125 for HFC-32 in the totality of the Table’s examples as set forth above amounts to a preferred disclosure of 20-80 wt.% HFO-1132(E), 10-70 wt.% HFC-32, and 10-70 wt.% HFO-1234ze(E) (where the sum of the three components is 100 wt.%), which overlaps and encompasses a ternary diagram figure connecting the 9 points K, L, M, N, B’’, J, I, H, and G as in claim 2, a ternary diagram figure connecting the 6 points K, L, M, I, H, and G as in claim 3, a ternary diagram figure connecting the 4 points K, L, H, and G as in claim 4, a ternary diagram figure connecting the 8 points K, L, M, N, F, E, D, and C as in claim 5, a ternary diagram figure connecting the 6 points K, L, M, E, D and C as in claim 6, and a ternary diagram figure connecting the 4 points K, L, D, and C as in claim 7.
Further regarding the recited concentrations of the claimed refrigerant composition containing all three of HFO-1132(E), R32, and R1234ze, note that the reference is not specifically limited to just examples. Fukushima ‘173 further teaches providing the HFO-1132(E) and HFC-32 in a composition range of 99:1 to 1:99 relative to each other in order to obtain pseudoazeotropic properties ([0081]) while also providing the HFO component, preferably HFO-1234ze(E), to improve cycle performance of the working fluid while also adjusting temperature glide, critical temperature, and coefficient of performance properties ([0082] & [0084]). Therefore, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to further vary, adjust, and optimize the relative concentrations outside the 20-80 wt.% HFO-1132(E), 10-70 wt.% HFC-32, and 10-70 wt.% HFO-1234ze(E) concentrations suggested by the initial substitution of HFC-32 in place of the HFC-125 in Table 12’s working examples in order to obtain alternative pseudoazeotropic blends with improved cycle performance and tailored temperature glide, critical temperature, and coefficient of performance properties containing HFO-1132(E), HFC-32, and HFO-1234ze(E) with a reasonable expectation of success. The totality of this rationale amounts to a suggestion to provide the HFO-1132(E) in concentrations beneath 20 wt.% that arrive within, overlap, or otherwise encompass a ternary diagram figure connecting the 6 points V, R, S, B’’, J, and I as in claim 8 and a ternary diagram figure connecting the 3 points U, S, and F as in claim 9, as well as alternatively meet the B’’-, E-, F- J-, and/or I-containing ternary diagram figures of claims 2, 3, 5, and 6 for the same reason.
Further alternatively, building off all that is disclosed above, Fukushima ‘173 effectively teach HFO-1234ze and HFO-1234yf as obvious/alternative equivalent other HFO species (or second additional components) in HFO-1132(E)-based compositions (“the HFO other than HFO-1132 is … preferably HFO-1234yf, HFO-1234ze(E), or HFO-1234ze(Z)”, [0084]; “one member selected from HFC-134a, HFO-1234ze, and HFO-1234ze(E)”, [0090]). Fukushima ‘173 also teach exemplary compositions containing solely HFO-1132(E), HFC-32, and HFO-1234yf in Table 13 on p.15:
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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 substitute HFO-1234ze/1,3,3,3-tetrafluoropropene in place of the HFO-1234yf in Table 13’s working examples in order to obtain an alternative working fluid composition within the express/preferred teachings of the reference with a reasonable expectation of success because Fukushima ‘173 teach HFO-1234ze and HFO-1234yf as obvious/alternative equivalent HFC species via at least [0084[ & [0090]. This substitution amounts to compositions containing solely HFO-1132(E), HFC-32, and HFO-1234ze(E) as claimed. The values of concentrations in Tables 12 and 13 are substantially the same such that the detailed rationale set forth above (e.g., to how the substituting the HFC-125 for HFC-32 in Table 12 arrives within the claimed ternary diagram figure, amounts to a preferred disclosure of 20-80 wt.% HFO-1132(E), 10-70 wt.% HFC-32, and 10-70 wt.% HFO-1234ze(E) that sum to 100 wt.% and overlap the claimed ternary diagram figures, and/or optimize the relative concentrations outside concentrations suggested by the initial substitution of HFC-32 in place of the HFC-125 in Table 12’s working examples in order to obtain alternative pseudoazeotropic blends with improved cycle performance and tailored temperature glide, critical temperature, and coefficient of performance properties containing HFO-1132(E), HFC-32, and HFO-1234ze(E) with a reasonable expectation of success) meets the concentrations of claims 2 to 9 applies equally here to the modification of Table 13 (but with respect to the HFO substitution rather than the HFC substitution) and is not repeated here for purposes of brevity.
See MPEP 2144.05.
In the event Applicant disputes presence of a refrigerant oil with the above-cited compositions is not at-once envisaged by the reference, while the Office would disagree with such a position, at the time of the effective filing date the inclusion of a refrigerant oil in Fukushima ‘173’s compositions would have been obvious to a person of ordinary skill in the art in view of the already-cited express teachings of the reference strongly motivating and suggesting its inclusion (“usually as mixed with a refrigerant oil” and expanded discussion of many types of refrigerant oils, Id. at [0107]-[0132]).
Note that some of the claimed limitations (e.g., “for use as a working fluid for a refrigerating machine,” “for use as an alternative refrigerant for R410A”, “as a working fluid”, etc. ) are merely intended use limitations that do not impart additional patentable structure of the claimed invention, but the reference is so specific that is actually meets these intended use limitations (Id.).
Regarding the claimed limitation that water is present in a content ratio of 0.1 mass% or less based on the composition, Fukushima ‘173 further teaches it is preferred to suppress the inclusion of moisture in the working fluid composition and the apparatus containing the working fluid composition because inclusion of moisture decreases properties of the refrigerant oil/lubricant and can impair the long term reliability of a compressor in the apparatus. See [0151]-[0152]. This is a direct teaching to suppress/minimize the inclusion of moisture, i.e., water, in the working fluid composition and apparatus thereof.
As a means of controlling moisture/water concentration, Fukushima ‘173 further preferably teaches contacting the working fluid composition with a desiccating agent to absorb moisture/water from the working fluid composition without adsorbing the working fluid. See [0153]-[0161]. Adsorbing all the moisture/water from the working fluid composition as taught/suggested here reads on a composition free of water, which meets the claimed limitation that the composition comprises water present in a content ratio (i.e., amount) of 0.1 mass% or less based on the entire refrigerant. A recitation of a range as maximum amount “or less” with no specified minimum (precisely the same scenario as that instantly claimed) includes zero as a lower limit. Thus, a composition free of water/moisture as taught/suggested by the reference meets the claimed limitation. See In re Mochel, 470 F.2d 638, 176 USPQ 194 (CCPA 1974) where the term "up to" was regarded as including zero as a lower limit. See also Ex parte Khusid, 174 USPQ 59 (Bd. App. 1971) where the recitation "a moisture content of not more than 70% by weight" reads on dry material (i.e., a material with a moisture content of 0% by weight). See also MPEP 2173.05(c), II.
Alternatively regarding the water content ratio limitation, it is acknowledged Fukushima ‘173 fails to teach the composition comprises water in an amount greater than 0 mass% and 0.1 mass% or less based on the entire refrigerant (i.e., a non-zero amount of water but 0.1 mass% or less).
However, Boussand et al. similarly teach refrigerant compositions where it is disclosed the stability of refrigerant and lubricant mixtures can be affected by the content of water, and heat transfer fluid should preferably have a low moisture/water content, preferably where the water content is less than about 1,000 ppm and subsets thereof. See [0009]. Less than about 1,000 ppm corresponds to a concentration of about 0.1 mass% or less, substantially identical to that instantly claimed.
Additionally, Fukushima ‘123 similarly teaches refrigerant/working fluid compositions where the inclusion of moisture/water in such compositions and apparatus thereof raises problems such as hydrolysis of the working fluid itself or lubricating oil which can from acid components and contaminants and impair the long term reliability of a compressor in the apparatus, and the moisture/water should be suppressed to a concentration of at most 100 ppm and more preferably at most 20 ppm. See [0104]. At most 100 ppm corresponds to a concentration of 0.01 mass% or less, within the concentration instantly claimed.
Furthermore, Itano et al. similarly teach refrigerant compositions where it is preferable to control the amount of water to 0.1 parts by weight or less per 100 parts by weight of the composition so that double bonds in any molecules of unsaturated fluorinated hydrocarbons that may be contained therein can be stably present, and oxidation of unsaturated fluorinated hydrocarbons is less likely to occur, resulting in improved stability of the composition. See [0114]. Water in an amount of 0.1 parts by weight or less per 100 parts by weight of the composition is identical to that instantly claimed.
Thus, in the event the teaching/suggestion to suppress/minimize moisture in the composition as taught by [0153]-[0161] of Fukushima ‘173 is insufficient to meet or render obvious the claimed water concentration (i.e., zero wt.% water within the claimed range including zero as its lower boundary) alone, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide a water content of 0.1 mass% or less (or a subset thereof) as taught by any one of Boussand et al., Fukushima ‘123, or Itano et al. to Fukushima ‘173’s composition in order to improve the stability of the composition and/or long term reliability of an apparatus comprising the apparatus with a reasonable expectation of success.
Regarding the claimed limitation(s) that the composition has a burning velocity (WCF, i.e., worse case formulation per [0014] of the specification) of 10 cm/s or less, while Fukushima ‘173 (with or without the optional secondary references) fails to quantify or teach their composition has a particular flammability property the claimed burning velocity range of the composition would flow naturally from the teachings of the prior art reference because the cited and combined teachings of the reference(s) amount to a composition (and methods of use thereof in refrigeration apparatus) containing the same three refrigerant components (HFO-1132(E), R32, and R1234ze) and water in amounts overlapping, if not precisely within, the same concentrations as those claimed (see above). "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Response to Arguments
Applicant's arguments filed 08/28/2025, 10/20/2025, 04/17/2026, and 07/31/2026 have been fully considered but they are not persuasive.
In the remarks filed on 08/28/2025, Applicant argues the claimed combination of HFO-1132(E), R32, and R1234ze provides an unexpected result of improved performance compared to a combination of HFO-1132(E), R125, and R1234ze. However, this argument are based on the disclosure of a 132 Declaration filed on 08/28/2025 and is addressed separately in the next section, below.
In the remarks filed on 10/20/2025, Applicant argues Fukushima ‘173 (US 2017/0058173 A1) fails to teach or suggest a refrigerant that claims a small amount of water, e.g., a content ratio of 0.1 mass% or less based on the composition and also fails to disclose the unexpected effect of increasing the stability of the refrigerant composition by comprising a content ratio of 0.1 mass% or less of water in the refrigerant composition.
In response, please note the claimed limitation that the composition comprises water in an amount of 0.1 mass% or less based on the entire refrigerant is a recitation of a range with merely a maximum amount (“0.1 mass% or less”) with no specified minimum, which includes zero as a lower limit. See In re Mochel, 470 F.2d 638, 176 USPQ 194 (CCPA 1974) where the term "up to" was regarded as including zero as a lower limit. See also Ex parte Khusid, 174 USPQ 59 (Bd. App. 1971) where the recitation "a moisture content of not more than 70% by weight" reads on dry material (i.e., a material with a moisture content of 0% by weight). See also MPEP 2173.05(c), II.
As Applicant cites that water (moisture) is preferably not contained in Fukushima ‘173’s composition, Fukushima ‘173 meets the claimed water concentration limitation. A composition free of water/moisture as taught/suggested by the reference meets the claimed limitation.
Nevertheless, as similarly set forth in the revised ground(s) of rejection, Fukushima ‘173 further teaches it is preferred to suppress the inclusion of moisture in the working fluid composition and the apparatus containing the working fluid composition because inclusion of moisture decreases properties of the refrigerant oil/lubricant and can impair the long term reliability of a compressor in the apparatus. See [0151]-[0152]. This is a direct teaching to suppress/minimize the inclusion of moisture, i.e., water, in the working fluid composition and apparatus thereof.
As a means of controlling moisture/water concentration, Fukushima ‘173 further preferably teaches contacting the working fluid composition with a desiccating agent to absorb moisture/water from the working fluid composition without adsorbing the working fluid. See [0153]-[0161]. Adsorbing all the moisture/water from the working fluid composition as taught/suggested here reads on a composition free of water, which meets the claimed limitation that the composition comprises water in an amount of 0.1 mass% or less based on the entire refrigerant.
Furthermore, despite Applicant’s argument that the presence of a specific amount of water achieves an effect of increasing the stability of the refrigerant composition, Fukushima ‘173 directly states the presence of water (disclosed as moisture) causes, among other issues/problems, hydrolysis of the working fluid (which is/comprises the refrigerant) that forms an acid component and/or contaminants [0152], which is a teaching that suppressing/minimizes the concentration in the composition indeed increases stability of the composition.
Applicant’s arguments with respect to Fukushima ‘173 not teaching a precise non-zero to 0.1 mass% or less (i.e., small) concentration of water are also moot because the arguments do not apply to all of the references being used in the current rejection. The current grounds of rejection optionally utilizes any one of Boussand et al. (US 2013/0099154 A1), Fukushima ‘123 (US 2014/0077123 A1), or Itano et al. (US 2017/0174967 A1) as secondary references in combination with Fukushima ‘173 to alternatively meet the claimed water concentration in the event the teachings of Fukushima ‘173 are insufficient on their own.
Boussand et al. similarly teach refrigerant compositions where it is disclosed the stability of refrigerant and lubricant mixtures can be affected by the content of water, and heat transfer fluid should preferably have a low moisture/water content, preferably where the water content is less than about 1,000 ppm and subsets thereof. See [0009]. Less than about 1,000 ppm corresponds to a concentration of about 0.1 mass% or less, substantially identical to that instantly claimed.
Fukushima ‘123 similarly teaches refrigerant/working fluid compositions where the inclusion of moisture/water in such compositions and apparatus thereof raises problems such as hydrolysis of the working fluid itself or lubricating oil which can from acid components and contaminants and impair the long term reliability of a compressor in the apparatus, and the moisture/water should be suppressed to a concentration of at most 100 ppm and more preferably at most 20 ppm. See [0104]. At most 100 ppm corresponds to a concentration of 0.01 mass% or less, within the concentration instantly claimed.
Itano et al. similarly teach refrigerant compositions where it is preferable to control the amount of water to 0.1 parts by weight or less per 100 parts by weight of the composition so that double bonds in any molecules of unsaturated fluorinated hydrocarbons that may be contained therein can be stably present, and oxidation of unsaturated fluorinated hydrocarbons is less likely to occur, resulting in improved stability of the composition. See [0114]. Water in an amount of 0.1 parts by weight or less per 100 parts by weight of the composition is identical to that instantly claimed.
Thus, as set forth in the revised 103 rejection, above, at the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to provide a water content of 0.1 mass% or less (or a subset thereof) as taught by any one of Boussand et al., Fukushima ‘123, or Itano et al. to Fukushima ‘173’s composition in order to improve the stability of the composition and/or long term reliability of an apparatus comprising the apparatus with a reasonable expectation of success.
Additionally, as cited above, Fukushima ‘173 directly states the presence of water (disclosed as moisture) causes, among other issues/problems, hydrolysis of the working fluid (which is/comprises the refrigerant) that forms an acid component and/or contaminants [0152], which is a teaching that suppressing/minimizing the water/moisture concentration in the composition indeed increases stability of the composition.
"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).
In the remarks filed on 04/17/2026, Applicant similarly argues Fukushima ‘173 (US 2017/0058173 A1) fails to teach or suggest water present in a content ratio (i.e., amount) of 0.1 mass% or less based on the composition because of a discussion at para. 0151-0153 preferring to suppress the inclusion of moisture.
In response, this argument is not persuasive for the reasons set forth in the preceding paragraphs of this section above regarding the arguments filed 10/20/2025.
Applicant further argues the claimed composition comprising HFO-1132(E), R32, and R1234ze(E) with a small amount of water of 0.1 mass% or less based on the composition has an unexpected effect of improved stability. However, this argument is based on the disclosure of a 132 Declaration filed on 04/17/2026 and is addressed separately in the next section, below.
The remarks filed on 07/31/2026 are essentially duplicative of the issues/arguments stated above. In the remarks filed on 07/31/2026, Applicant similarly argues the declaration filed 08/28/2025 (Declaration I) demonstrate the claimed composition of HFO-1132(E), R32, and R1234ze provides an unexpected result compared to a composition of HFO-1132(E), R125, and R1234ze that a skilled artisan would not expect nor arrive at. Applicant further argues Fukushima ‘173 (US 2017/0058173 A1) fails to teach or suggest water present in a content ratio (i.e., amount) of 0.1 mass% or less based on the composition because of a discussion at para. 0151-0153 preferring to suppress the inclusion of moisture. Applicant further argues the claimed composition comprising HFO-1132(E), R32, and R1234ze(E) with a small amount of water of 0.1 mass% or less based on the composition has an unexpected effect of improved stability via the declaration filed 04/17/2026 (Declaration II).
In response, these arguments are not persuasive for the reasons set forth in the preceding paragraphs of this section above regarding the arguments filed 08/28/2025, 10/20/2025, and 04/17/2026. Additionally, the arguments are based on the disclosures of 132 Declarations filed on 08/28/2025 and 04/17/2026 and are addressed separately in the next section, below.
Second Declaration of Mitsushi Itano
Data is provided in the declaration filed 08/28/2025 (also re-filed on 07/31/2026) to demonstrate the claimed refrigerant has improved performance and that it is impossible to predict the extent to which the refrigeration capacity will improve or not by replacing pentafluoroethane (R125) with difluoromethane (R32). Page 1 of the declaration provides a summary of the declarant’s background. Page 2 of the declaration provides an explanation of the experiments to be performed and the compositions obtained. Page 3 of the declaration provides a table summarizing the compositions prepared and compared, notably taking exemplary compositions from Table 12 of Fukushima ‘173 (US 2017/0058173 A1) and substituting an equal amount of difluoromethane (R32) in place of pentafluoroethane (R125) in selected examples, and measured properties thereof (temperature glide, COP ratio, refrigerating capacity ratio, GWP, and burning velocity). Page 4 of the declaration is a copy of independent claim 2. Page 5 of the declaration is the declarant’s summary of the experimental data. Page 6 of the declaration is a conclusion section and the declarant’s signature.
After careful and full consideration of its contents, the declaration filed 08/28/2025 is insufficient to obviate the new 103 rejection of record over Fukushima ‘173 (US 2017/0058173 A1) optionally in view of any one of Boussand et al. (US 2013/0099154 A1), Fukushima ‘123 (US 2014/0077123 A1), or Itano et al. (US 2017/0174967 A1).
The submitted comparative data takes Examples 102, 103, 104, and 106 from Table 12 of Fukushima ‘173 (US 2017/0058173 A1), substitutes an equal amount of difluoromethane (R32) in place of pentafluoroethane (R125), and measures properties thereof (temperature glide, COP ratio, refrigerating capacity ratio, GWP, and burning velocity) for all eight examples compared to R410A. The declarant shows changing R125 to R32 decreases GWP, decreases temperature glide, COP ratio relative to R510 increases slightly or remains about the same, increases flammability slightly, and the refrigerating capacity ratio relative of R410 improves. The declarant’s position is that the improvement of refrigerating capacity ratio relative of R410 indicates better performance, that it is impossible to predict the extent to which the refrigeration capacity will improve or if there be little to no change by replacing R125 with R32, and the performance of a mixed working medium (i.e., refrigerating capacity) cannot be determined without actual measurements.
In response, the declarant’s position that improvement of refrigerating capacity ratio relative of R410 cannot be determined or predicted without actual measurement is not persuasive to withdraw the rejection because a prima facie case of obviousness does not require absolute predictability, but at least some degree of predictability is required. See MPEP 2143.02.
In the present case, there is indeed some degree of predictability as required for a prima facie case of obviousness for the reasons of record. Fukushima ‘173 teach their 1,2-difluoroethylene-based compositions have performance sufficient as an alternative to R410A (abstract, [0013], Table 12 & 13, etc.). While the declarant is focusing on which compositions might have better performance, the compositions disclosed and encompassed by the reference still have sufficient, operable performance. The ability to absolutely predict a value with pinpoint precision is not a requirement of a prima facie case of obviousness.
Regarding the arguments to the improvement of refrigerating capacity ratio relative of R410 indicating better performance, the showing of some properties increase while others decrease or some properties improve at the at the expense of others at the varying concentrations merely demonstrates trade-offs between the properties rather than amounting to a true showing of unexpected results. Additionally, superiority alone is not sufficient to show that the result is unexpected, Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[A]ny superior property must be unexpected to be considered as evidence of non-obviousness.”)
Arguendo, even if the declaration showed unexpected results of substituting R32 in place the of R125 in the examples of the reference’s Table 12, there is additionally a new, alternative rationale of substituting R1234ze in place of the R1234yf in the examples of the reference’s Table 13 that are not addressed by the present declaration’s comparative showing.
Any of Applicant’s arguments set forth in the remarks filed on 08/28/2025 and 07/31/2026 that are based on the declaration filed 08/28/2025 are also not persuasive for the same reasons that the declaration is insufficient to withdraw/obviate the 103 rejection.
Third Declaration of Mitsushi Itano
Data is provided in the declaration filed 04/17/2026 (also re-filed on 07/31/2026) to demonstrate the claimed refrigerant has an unexpectedly improved stability by addition of a small amount of water. Page 1 of the declaration provides a summary of the declarant’s background. Pages 2-4 of the declaration provides an explanation of the experiment(s) to be performed and a table of results; notably, various refrigerant mixtures of 20 mass% 1,2-difluoroethylene (HFO-1132(E)), 30 mass% difluoromethane (R32), and 50 mass% 1,3,3,3-tetrafluoropropene (R1234ze) are made by first dehydrating refrigerant mixtures and then mixing the refrigerant mixtures with various small amounts of water (0, 10, 100, 1,000, or 5,000 ppm) and/or oxygen (0, 0.01, 0.15, or 0.35 mol%) (see pages 2-4). Pages 5-6 of the declaration describe the obtained refrigerant mixtures were then evaluated by a stability test that tested the appearance and acid content in the refrigerant mixtures after maintaining each refrigerant mixture at 150°C for one week. Page 7 of the declaration is a conclusion section and the declarant’s signature. The specific refrigerant mixtures of the experiment and their evaluation results of the experiments are shown in Table A on page 4 of the declaration; a lower acid content and/or lack of absence of solid matter per the appearance means the refrigerant composition has a higher stability. Based on the results of the experiments in the declaration, the declarant’s position is that the stability of the refrigerant is unexpectedly improved by containing 0.1 mass% or less (1,000 mass ppm or less) of water based on the entire refrigerant.
After careful and full consideration of its contents, the declaration filed 04/17/2026 is insufficient to obviate the new 103 rejection of record over Fukushima ‘173 (US 2017/0058173 A1) optionally in view of any one of Boussand et al. (US 2013/0099154 A1), Fukushima ‘123 (US 2014/0077123 A1), or Itano et al. (US 2017/0174967 A1).
The Office’s position is the declaration’s comparative showing does not rise to a level of establishing unexpected results because, based upon the teachings of the applied prior art of record, the resultant increase in relative stability when oxygen is added in an amount of less than 0.1 mass% (i.e., 0 ppm oxygen to 1,000 ppm oxygen, both inclusive) is merely an expected beneficial result.
As cited in the new rejection of record, Boussand et al. similarly teach refrigerant compositions where it is disclosed the stability of refrigerant and lubricant mixtures can be affected by the content of water, and heat transfer fluid should preferably have a low moisture/water content, preferably where the water content is less than about 1,000 ppm and subsets thereof. See [0009]. Less than about 1,000 ppm corresponds to a concentration of about 0.1 mass% or less, substantially identical to that instantly claimed. Fukushima ‘123 similarly teaches refrigerant/working fluid compositions where the inclusion of moisture/water in such compositions and apparatus thereof raises problems such as hydrolysis of the working fluid itself or lubricating oil which can from acid components and contaminants and impair the long term reliability of a compressor in the apparatus, and the moisture/water should be suppressed to a concentration of at most 100 ppm and more preferably at most 20 ppm. See [0104]. At most 100 ppm corresponds to a concentration of 0.01 mass% or less, within the concentration instantly claimed. Itano et al. similarly teach refrigerant compositions where it is preferable to control the amount of water to 0.1 parts by weight or less per 100 parts by weight of the composition so that double bonds in any molecules of unsaturated fluorinated hydrocarbons that may be contained therein can be stably present, and oxidation of unsaturated fluorinated hydrocarbons is less likely to occur, resulting in improved stability of the composition. See [0114]. Water in an amount of 0.1 parts by weight or less per 100 parts by weight of the composition is identical to that instantly claimed.
Additionally, as cited in the prior section above, Fukushima ‘173 directly states the presence of water (disclosed as moisture) causes, among other issues/problems, hydrolysis of the working fluid (which is/comprises the refrigerant) that forms an acid component and/or contaminants [0152], which is a teaching that suppressing/minimizing the water/moisture concentration in the composition indeed increases stability of the composition.
"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).
The claims are also not deemed patentable over the references of record since they are not commensurate in scope with the probative value of data in the declaration’s comparative showing. The comparative showing only compares performance of one single base refrigerant (20.0 mass% HFO-1132(E), 30.0 mass% R32, & 50.0 mass% R1234ze) with varying small amounts of water and/or oxygen whereas the claims are generally drawn to much broader refrigerant compositions of approximately 2.7 to 72.0 mass% HFO-1132(E), >0.0 to 51.6 21.8 mass% R32, and 19.5 to 60.9 mass% R1234ze.
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).
Additionally, note examples in the declaration like No. 3 and No. 18 that both contain the same amount of water within the claimed range (100 ppm or 0.01 wt.% water) but have vastly different acid contents (<1 ppm and 60 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. 18 constitutes an unexpected result. A similar rationale could be made comparing many other pairs of the declaration examples.
Additionally, example No. 6 with 0 ppm water results in a 60 ppm acid content and is shaded (construed as meaning unacceptable performance), example No. 12 with 10 ppm water results in 150 ppm acid content is not shaded (construed as meaning acceptable performance), and example No. 18 with 100 ppm water results in 60 ppm acid content (substantially the same performance as No. 6) and is not shaded. If the result of No. 6’s 60 ppm acid content is unacceptable, then why are No. 18’s equal 60 ppm and No. 12’s arguably worse 150 ppm performances both acceptable?
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).
Any of Applicant’s arguments set forth in the remarks filed on 10/20/2025, 04/17/2026, and 07/31/2026 that are based on the declaration filed 04/17/2026 are also not persuasive for the same reasons that the declaration is insufficient to withdraw/obviate the 103 rejection.
Correspondence
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
August 28, 2026
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