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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/15/2025 has been entered.
Status of Prosecution
This action is responsive to Applicant’s request for continued examination and remarks filed 04/15/2025.
Claims 2-18 are currently pending, of which claims 10-13 are withdrawn.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) as previously set forth on pages 4 to 11 of the Final Office action mailed 10/21/2024 (and maintained in the Advisory Action mailed 02/28/2025) is maintained. The 103 rejection is re-stated in its entirety, 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 (US 2017/0058173 A1).
Fukushima 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 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’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 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 et al. teach 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. 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. 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.
In the event Fukushima 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 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 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 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 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 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 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, 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 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.
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’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.).
Response to Arguments
Applicant's arguments filed 04/15/2025 regarding the 103 rejection over Fukushima (US 2017/0058173 A1) have been fully considered but they are not persuasive. Applicant argues the composition recited in independent claim 2 has an unexpected effect of having low flammability and is thus not obvious over Fukushima et al. Applicant reiterates and/or slightly elaborates on a previous argument that burning velocity values cannot be predicted based on a weight or molar ratio without actual measurement because there is not a linear correlation between the burning velocity and the mixture ratio.
In response, Applicant's arguments to flammability being unpredictable (and the allegation of unexpected results that follows the arguments to unpredictability) are not persuasive for the reasons of record set forth in the Advisory Action mailed 02/28/2025.
As stated the Advisory Action (see page 7), a prima facie case of obviousness does not require absolute predictability, but at least some degree of predictability is required. See MPEP 2143.02.
As also stated the Advisory Action (see page 7), 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. The Office has previously proffered that a combination of a more-flammable compound (e.g., HFO-1132(E) with less-flammable compounds (e.g., R32 and R1234ze) yielding a composition that is less flammable than the more-flammable compound (HFO-1132(E) is merely an expected beneficial result of their combination (Id., e.g., page 16 of the Final Office action mailed 10/21/2024 & page 4 of the Advisory Action). This can even be expanded for the less-flammable compounds, too: When blending three compounds, such as the three claimed HFO-1132(E), R32, & R1234ze, one of ordinary skill in the art would very reasonably and predictably expect the final composition would contain a composite or net flammability intermediate of the three individual components. Applicant’s examples confirm this, and the ability to absolutely predict a value with pin-point precision is not a requirement of a prima facie case of obviousness.
As also stated in the Advisory Action in addressing the conclusion of the 132 declaration filed 02/13/2025 that burning velocity of multiple refrigerants cannot be determined or predicted without actual measurement since the declaration shows a relationship of burning velocity between two refrigerants is not linear (see page 9), the declaration shows little more than expected beneficial results. The examples in the declaration blend two flammable compounds (a mildly flammable compound with a more flammable compound) to obtain a (mildly) flammable composition. How is a mixture of HFO-1132(E) (a Class 2 flammable refrigerant) and R1234ze (a Class A2L mildly flammable refrigerant) resulting in 1) a Class 2L mildly flammable refrigerant composition over the majority of its concentrations (about 1-72 wt.% HFO-1132(E)) and 2) flammability values intermediate and in between both pure compounds alone over the entirety of its concentrations an unexpected result? A combination of a more-flammable compound (HFO-1132(E)) with a less-flammable compound (R1234ze) yielding a composition with a net flammability in between that of the two components alone that is less flammable than the more-flammable compound and more flammable than the less-flammable compound is the expected and predictable result of their combination. See also page 16 of the Final Office action and page 4 of the Advisory Action that further address Applicant’s allegation that flammability of an unexpected result.
As continued on pages 9 to 10 of the Advisory Action, there is also nothing of probative value in the declaration to establish that a linear correlation is the expected relationship of flammability between the components. It is unclear why a person of ordinary skill in the art should expect a linear correlation of flammability over other types of correlation (such as the “gentle curve” that was obtained). Without context and proper support to the type(s) of correlation persons of ordinary skill in the art would expect, the declaration concluding flammability is unpredictable because it is not linearly correlated amounts to opinion evidence and is not persuasive for that reason. Historically in the refrigerant arts, what is the expected relationship of a composition’s flammability when formulating/blending two or three (all flammable) refrigerant components? Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). Although factual evidence is preferable to opinion testimony, such testimony is entitled to consideration and some weight so long as the opinion is not on the ultimate legal conclusion at issue.
Accordingly, Applicant's arguments regarding predictability (or alleged lack thereof) and the allegation of unexpected results based on those arguments are not persuasive for the reasons of record.
For the sake of completeness, Applicant's statements that their present response “incorporates … the arguments regarding Fukushima presented in the response dated February 13, 2025” near the top of p.13 of the present response and “[f]or the reasons set forth in the remarks provided February 13, 2025 ... the obviousness rejection must be withdrawn” at the top of p.14 of the present response are each noted. Note that the Advisory Action mailed 02/28/2025 responded to and addressed each and every one of Applicant's arguments filed 02/13/2025. Applicant's previous arguments filed 02/13/2025 (and the 132 declaration filed on the same date that accompanied the arguments) are not persuasive to withdraw the 103 rejection of record for the reasons of record thoroughly set forth on pages 2 to 10 of the Advisory Action mailed 02/28/2025.
Art Cited But Not Applied
The Examiner would like to bring the following reference, Petersen et al. (US 2025/0026974 A1), to Applicant’s attention. Note that Petersen et al. was filed and published well-after the effective filing date of the present invention and is not available as prior art.
Petersen et al. claim a refrigerant composition comprising R1132(E), a second refrigerant that is one of R1234yf, R1234ze(E), and R134, and a third refrigerant that is one of R32, R1132a, R1123, and CO2. Further limitations in the claims recite the composition has a GWP of less than 750, including less than 300 and less than 150 as narrower ranges, and a burning velocity of less than 15 cm/s, including less than 10 cm/s. See also Fig. 18 to 21 and para. 0285 to 0318 regarding various embodiments and teachings to refrigerant compositions comprising R1132(E), R1234ze(E), and R32 and their GWP, burning velocities, and other properties rendering them useful as R410A replacements.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 16, 2025
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