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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/02/2026 has been entered.
This action is responsive to Applicant’s request for continued examination filed 08/03/2026 and amendment/remarks filed 07/02/2026.
Claims 2-13 are currently pending, of which claims 6-8 are withdrawn.
Response to Amendment
The previous Office action rejected the claims 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). This effectively had several grounds of rejection: one over Fukushima ‘173 alone and three others over Fukushima ‘173 in view of each one of the secondary references.
Upon careful consideration of Applicant’s amendment and remarks, the 103 rejection over Fukushima ‘173 alone is withdrawn as well as the 103 rejection over Fukushima ‘173 in view of Boussand et al. is withdrawn. The 103 rejection(s) over Fukushima ‘173 in view of Fukushima ‘123 or Itano et al. are maintained and are revised below to reflect the changes in claim scope made by Applicant’s present claim amendments.
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 2-5 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima ‘173 (US 2017/0058173 A1) in view of either one of 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, 11, and 13). However, those claims generally recite the same composition (comprising the same particular 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 11 and 13 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 several additional pages, if every rationale were repeated for each independent claim).
Fukushima ‘173 teach working fluid compositions and refrigerating apparatus thereof ([0003], [0143]+, & [0175]). The working fluid is suitable as an alternative refrigerant ([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. 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-tetrafluoropropene/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. Furthermore, Fukushima ‘173 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.
Regarding the claimed refrigerant 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 six, 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:
PNG
media_image1.png
332
580
media_image1.png
Greyscale
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 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 5, 11, and 13 for any one of a variety of reasons.
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 five points I, J, K, F, and E as in each of claims 2, 11, and 13 and a ternary diagram figure connecting the five points I, J, K, D, and C as in claim 3. Similarly, substituting the HFC-125 for HFC-32 in Example 99 (20 wt.% HFO-1132(E), 10 wt.% HFC-125, 70 wt.% HFO-1234ze(E)) obtains a composition of 20 wt.% HFO-1132(E), 10 wt.% HFC-32, & 70 wt.% HFO-1234ze(E), which falls within a ternary diagram figure connecting the five points I, J, K, F, and E as in each of claims 2, 11, and 13 and a ternary diagram figure connecting the five points L, M, N, F, and E as in claim 4. Additional and similar rationale exists for at least one other example in Table 12, too, (Example 105).
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 five points I, J, K, F, and E as in each of claims 2, 11, and 13, a ternary diagram figure connecting the five points I, J, K, D, and C as in claim 3, and a ternary diagram figure connecting the five points L, M, N, F, and E as in claim 4.
Further regarding the recited concentrations of the claimed refrigerant 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 three points O, N, and D as in claim 5 as well as alternatively meet the other three recited C-, D-, E-, F-, I-, J-, K-, L-, M-, and N-containing five-pointed ternary diagram figures of claims 2, 3, 4, 11, and 13 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:
PNG
media_image2.png
335
573
media_image2.png
Greyscale
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 5, 11, and 13 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 anticipated or 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 R404A”, “as a working fluid”, etc. ) are merely intended use limitations that are extended little patentable weight because they do not impart additional patentable structure of the claimed invention and are therefore met by the cited teachings of the reference.
Regarding the claimed limitation that water is present in a content ratio of more than 0 mass% and 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]. While this is a direct teaching to suppress/minimize the inclusion of moisture, i.e., water, in the working fluid composition and apparatus thereof, 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, 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, overlapping the concentration instantly claimed (nearly within that claimed except that Fukushima ‘123’s lower boundary is zero inclusive whereas the instant claims’ lower boundary is zero exclusive).
Also note the similarities between the moisture suppression/control means between Fukushima ‘173 and Fukushima ‘123. Fukushima ‘173 further preferably teaches contacting the working fluid composition with a desiccating agent, such as a zeolite desiccating agent, to absorb moisture/water from the working fluid composition without adsorbing the working fluid ([0153]-[0161]) but does not indicate the resultant moisture concentration. However, Fukushima ‘123 teach substantially the same means by using a desiccating agent, such as a zeolite desiccating agent, to suppress the moisture concentration to preferably at most 100 ppm ([0104]-[0112]), which as discussed above overlaps the water 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 strongly overlaps the concentration instantly claimed (nearly within that claimed except that Itano et al.’s lower boundary is zero inclusive whereas the instant claims’ lower boundary is zero exclusive).
Thus, 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 either one of 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 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 07/02/2026 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to Fukushima ‘173 (US 2017/0058173 A1) alone or Fukushima ‘173 in view of Boussand et al. (US 2013/0099154 A1) have been considered but are moot because the arguments do not apply to all of the references being used in the current rejection. The present grounds of rejection is over Fukushima ‘173 (US 2017/0058173 A1) in view of either one of Fukushima ‘123 (US 2014/0077123 A1) or Itano et al. (US 2017/0174967 A1), which does not rely on Fukushima ‘173 alone or utilize Boussand et al. as a secondary reference.
Regarding the combination of Fukushima ‘173 and Fukushima ‘123 Applicant argues the references do not provide motivation to configure a composition comprising HFO-1132(E), R32, and R1234ze so as to contain a trace amount of water. Applicant elaborates the two references disclose the concept that the lower the content of water, the better such that a person skilled in art would attempt to avoid including water in the composition and would have no reasonable expectation of success regarding the effect of the presence of 0.1 mass% or less of water. Applicant also argues even if the references were combined the technical concept of incorporating water in an amount of more than 0 mass% and 0.1 mass% or less would not be taught or suggested.
In response, this argument is not persuasive because 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 but a concentration quantifying what is sufficiently suppressed/minimized is not disclosed.
However, 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, overlapping the concentration instantly claimed (nearly within that claimed except that Fukushima ‘123’s lower boundary is zero inclusive whereas the instant claims’ lower boundary is zero exclusive).
Note the similarities between the moisture suppression/control means between Fukushima ‘173 and Fukushima ‘123. Fukushima ‘173 further preferably teaches contacting the working fluid composition with a desiccating agent, such as a zeolite desiccating agent, to absorb moisture/water from the working fluid composition without adsorbing the working fluid ([0153]-[0161]) but does not indicate the resultant moisture concentration. However, Fukushima ‘123 teach substantially the same means by using a desiccating agent, such as a zeolite desiccating agent, to suppress the moisture concentration to preferably at most 100 ppm ([0104]-[0112]), which as discussed above overlaps the water concentration instantly claimed.
Applicant seems to construe both moisture suppression/controlling teachings in the Fukushima references as meaning zero and only zero water/moisture. Of course zero mass% water is encompassed by the combination of references but the combination of references also quantifies near-zero mass% of water within/overlapping the claimed range as sufficient, too. Fukushima ‘123’s preferable at most 100 ppm water does not necessarily mean only zero. At most 100 ppm means zero and up to 100 ppm, which substantially overlaps the claimed range of greater than zero and up to 0.1 mass% (0.1 mass% = 1,000 ppm). The references are not limited to solely zero mass% as argued because the secondary reference (Fukushima ‘123) teaches and quantifies a small amount of water of up to 100 ppm, i.e., 0.01 mass% water, as sufficiently suppressed, controlled, and/or minimized via the moisture suppression/control means between Fukushima ‘173.
Regarding the combination of Fukushima ‘173 and Itano et al. Applicant argues there is no reasonable expectation of success from combining the references because they have opposing, contrary disclosures as Itano et al. teach it is preferably for a composition to contain a trace amount of water whereas Fukushima ‘173 seeks to avoid the inclusion of water. Applicant also argues even if the references were combined Itano et al. fails to demonstrate, teach, or suggest the effect similar to that of the composition in Fukushima is achieved in the composition of the claimed invention because Itano et al.’s refrigerant (R32/R125/R134a) does not contain unsaturated fluorocarbons.
In response, these arguments are not persuasive because Applicant seems to construe the moisture suppression/controlling teachings in Fukushima ‘173 as meaning zero and only zero. Of course zero mass% water is encompassed by Fukushima ‘173’s teachings of moisture suppression/control but the reference does not seem as strictly limited as alleged. Suppressing or controlling, i.e., minimizing, something does not necessarily exclude minor/trace amounts. For example, Fukushima ‘173 further teaches the inclusion of a non-condensing gas (e.g., oxygen) causes issues too, disclosed with language similar to that of the moisture, but a small amount (e.g., preferably at most 0.5 vol.%) is still permitted ([0162]-[0163]). The two references’ disclosures are not as contrary or opposing as alleged.
Regarding the concern that Itano et al. does not demonstrate the effect of markedly improving stability due to the presence of water in the claimed invention, note that Fukushima ‘173 was cited as meeting the claimed refrigerant (HFO-1132(E)/R32/R1234ze) and Itano et al. was cited as teaching/motivating provision of an amount of water overlapping that claimed. Itano et al. need not teach the claimed refrigerant (HFO-1132(E)/R32/R1234ze) to render obvious the claimed invention when a different reference was relied upon to meet the refrigerant component. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Furthermore, it is not a requirement of a prima facie case of obviousness a secondary reference must demonstrate (i.e., exemplify in a comparative showing) the effect similar to that of a primary reference’s composition is achieved in the composition of the claimed invention.
Applicant’s concern that Itano et al.’s invention is to a refrigerant comprising difluoromethane, pentafluoroethane, and 1,1,1,2-tetrafluoroethane (R32/R125/R134a) is noted but is not persuasive with withdraw the rejection or obviate Itano et al.’s combination with Fukushima ‘173. While Itano et al.’s invention is indeed drawn to a distinct composition than that in Fukushima ‘173 and the instantly claimed invention, composed of saturated fluorinated hydrocarbons without any unsaturated fluorinated hydrocarbons such as hydrofluoroolefins, Itano et al. nevertheless teaches provision of a tiny amount of water, quantified as 0.1 parts by weight or less per 100 parts by weight of the mixture/refrigerant, and that, “[w]hen the mixture contains a tiny amount of water, the double bonds in the molecules of unsaturated fluorinated hydrocarbons that may be contained in the composition can be stably present, and oxidation of unsaturated fluorinated hydrocarbons is less likely to occur, resulting in improved stability of the composition.” [0114]. Even though Itano et al.’s refrigerant does not contain unsaturated fluorinated hydrocarbons the reference still teaches inclusion of a tiny amount of water (strongly overlapping that claimed) stabilizes the double bonds in the molecules of unsaturated fluorinated hydrocarbons. R/HFO-1234ze and HFO-1132(E), both components of the instant claims and Fukushima ‘173, are indeed unsaturated fluorinated hydrocarbons with double bonds in their molecules such that one of ordinary skill in the art would be directed and motivated to provide a tiny amount of water as taught by Itano et al. in order to improve stability of a composition comprising unsaturated fluorinated hydrocarbons with a reasonable expectation of success. Provision of water in an amount of 0.1 parts by weight or less per 100 parts by weight of the composition as taught by Itano et al. strongly overlaps the concentration instantly claimed (nearly within that claimed except that Itano et al.’s lower boundary is zero inclusive whereas the instant claims’ lower boundary is zero exclusive).
"The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). 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. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
Applicant further argues the composition of Itano et al. is inherently stable such that a person of ordinary skill in the art would not expect from Itano et al. that a stabilizing effect would be remarkably enhanced in the composition of the claimed invention. However, this argument are based on the disclosure of a 132 Declaration filed on 07/02/2026 and is addressed separately in the next section, below.
Fourth Declaration of Mitsushi Itano
Data is provided in the declaration filed 07/02/2026 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 2-6 of the declaration provides an explanation of the experiments to be performed and tables 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) termed Series 1 and 19.5 mass% difluoromethane (R32), 8.5 mass% pentafluoroethane (R125), and 72 mass% 1,1,1,2-tetrafluoroethane (R134a) termed Series 2 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%). Pages 7-9 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 10 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 B on page 4 of the declaration for the Series 1 refrigerant and Table C on page 6 of the declaration for the Series 2 refrigerant; a lower acid content and/or 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 Series 2 refrigerant (a comparative refrigerant similar to that disclosed in the Itano et al. reference of record) is stable regardless of the presence or absence of water and oxygen and the stability of the Series 1 refrigerant (within the scope of the claimed 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 07/02/2026 is insufficient to obviate the new 103 rejection of record over Fukushima ‘173 (US 2017/0058173 A1) in view of either one of 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.
The Fukushima ‘123 secondary reference 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, overlapping the concentration instantly claimed (nearly within that claimed except that Fukushima ‘123’s lower boundary is zero inclusive whereas the instant claims’ lower boundary is zero exclusive).
Also, the Itano et al. secondary reference 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 strongly overlaps the concentration instantly claimed (nearly within that claimed except that Itano et al.’s lower boundary is zero inclusive whereas the instant claims’ lower boundary is zero exclusive).
"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 declarant’s concern and showing that a refrigerant composition similar to Itano et al.’s (note, the tested 19.5/8.5/72 R32/R125/R134a blend in the declaration, known in the art as R407I, is not actually within the teachings of the Itano et al. reference) is inherently stable is noted but is insufficient to overcome the rejection of record. Itano et al.’s invention is a refrigerant composition comprising approximately 29.4-37.3 wt.% difluoromethane (R32), 10.9-17.0 wt.% pentafluoroethane (R125), and 45.7-58.4 wt.% 1,1,1,2-tetrafluoroethane (R134a) (abstract), primarily containing saturated hydrofluorocarbons and contains no 1,2-difluoroethylene (HFO-1132) or 1,1,1,3-tetrafluoropropene (R1234ze), i.e., hydrofluoroolefins. However, as similarly described above in the Response to Arguments section, Itano et al. nevertheless teaches provision of a tiny amount of water, quantified as 0.1 parts by weight or less per 100 parts by weight of the mixture/refrigerant, and that, “[w]hen the mixture contains a tiny amount of water, the double bonds in the molecules of unsaturated fluorinated hydrocarbons that may be contained in the composition can be stably present, and oxidation of unsaturated fluorinated hydrocarbons is less likely to occur, resulting in improved stability of the composition.” [0114].
Even though Itano et al.’s refrigerant does not contain unsaturated fluorinated hydrocarbons (and/or refrigerant compounds with double bonds), the reference is nevertheless highly pertinent as it teaches and motivates inclusion of a tiny amount of water (strongly overlapping that claimed) stabilizes the double bonds in the molecules of unsaturated fluorinated hydrocarbons. R/HFO-1234ze and HFO-1132(E), both components of the instant claims and Fukushima ‘173, are indeed unsaturated fluorinated hydrocarbons with double bonds in their molecules such that one of ordinary skill in the art would be directed and motivated to provide a tiny amount of water as taught by Itano et al. in order to improve stability of a composition comprising unsaturated fluorinated hydrocarbons with a reasonable expectation of success.
"The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). 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. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
Applicant’s arguments in the remarks filed on 07/02/2026 based on the declaration data (that Itano et al.’s composition is inherently stable in the presence of water and oxygen such that a person of ordinary skill in the art would not expect the stabilizing effect would be remarkably enhanced in the composition of the claimed invention) are not persuasive for the same reason(s).
Any of Applicant’s additional arguments set forth in the present remarks that are based on the declaration are also not persuasive for the reasons that the declaration is insufficient to withdraw/obviate the 103 rejection(s).
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.
Examiner interviews are available via telephone and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at https://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
August 31, 2026
Prosecution Insights