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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/04/2026 has been entered.
This action is responsive to Applicant's remarks filed 02/04/2026.
Claims 1-9 and 23-26 are currently pending and under examination.
The rejection of claims 1-9 and 23-26 under 35 U.S.C. 103 as being unpatentable over Fukushima (JP 2016011423 A, hereinafter Fukushima) is maintained in view of the above remarks.
The rejection of claims 1-9 and 23-26 provisionally on the ground of nonstatutory double patenting as being unpatentable over claims 3-6 of copending Application No. 18/132,065 (reference application) is maintained in view of the above remarks.
Response to Arguments
Applicant's arguments filed 02/04/2026 have been fully considered but they are not persuasive.
1. Applicant argues that the upper limit (i.e., 1000 volume ppm) of the oxygen concentration in the present claims has a critical significance that Fukushima does not disclose or suggest; the instant Specification, para. [0032] (emphasis added) explains that:
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that is, the significance of the 1000 volume ppm limitation to improve the stability of HFO-1132 is recognized and discussed in the instant Specification; However, Fukushima fails to provide any rational reason to utilize the upper limit (i.e., 1000 volume ppm) of the oxygen concentration as a critical factor to achieve the improved stability of HFO-1132, especially since even the most preferred amount (5000 volume ppm or less) is 5 times the upper limit (1000 volume ppm) of the present claims (p. 2, last para; p. 3, 1st para).
Applicant also argues that the experimental data in the instant Specification also experimentally confirms the excellent stability achieved by using the upper limit of 1000 volume ppm; a comparison of Table 72 and Table 74 (each reproduced below) of the instant Specification reveals that as the oxygen concentration increases, the amount of solid substance (i.e., polymer of HFO-1132(E)) produced increases, and at the same time, the amount of acid produced also increases;
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As seen in Table 72 and Table 74 (above), when the oxygen concentration exceeds 1000 ppm, the amount of solid substance and the amount of acid produced are identified as "D," which means that the amount of solid substance produced is 50 mg or more and the acid content is 100 weight ppm or more, respectively; in contrast, the Examples that have the concentration of oxygen of 1000 volume ppm or less achieve lower amounts of solid substance produced and acid content, which shows the improved stability of HFO-1132 discussed in the instant Specification (p. 3, last para; p. 4, 1st para).
Applicant further argues that the "Acidity, Maximum" column in each table of AHRI Standard 700-2024(SI) states that the upper limit is 1 ppm by weight, although it is the acid content in terms of HCl; it would be considered reasonable by a person skilled in the art to set the acid content as an impurity of the HFO-1132 to 10 weight ppm or less, with a slight margin from the AHRI standard in consideration of the fact that the HFO-1132 is not registered with AHRI; according to Table 74 of the instant Specification (above), the allowable upper limit of acid content for the stability of HFO-1132(E) is 10 weight ppm and the corresponding upper limit of the oxygen concentration is 1000 volume ppm; Thus, the data in the instant Specification shows the critical significance of the upper limit (1000 volume ppm) of the oxygen concentration in the recitation "the concentration of oxygen in the gas phase at a temperature of 25°C being 1000 volume ppm or less" in the claims as compared to the general mention of a concentration of 0.5% by volume or less in Fukushima (p. 5, 1st and 2nd para).
In response, Applicant’s arguments are not persuasive.
Firstly, para. [0032] of the instant Specification only discloses that “the stability of HFO-1132 can be improved by setting the concentration of oxygen coexisting with HFO-1132 in the gas phase to a specific concentration or lower”, but does not disclose the upper limit of 1000 volume ppm of the oxygen concentration.
Secondly, regarding Applicant’s argument that the upper limit of 1000 volume ppm of the oxygen concentration has a critical significance to improve the stability of HFO-1132, in response, Table 72 and Table 74 of the instant Specification shows a trend that as the oxygen concentration increases, the amount of solid substance (i.e., polymer of HFO-1132(E)) produced increases, and at the same time, the amount of acid produced also increases. Thus, the upper limit of 1000 volume ppm of the oxygen concentration does not improve the stability of HFO-1132. Improving the stability of HFO-1132 means making HFO-1132 more stable. Here, as the oxygen concentration increases, the stability of HFO-1132 decreases.
Thirdly, claims are not commensurate in scope with the comparative showing in Tables 72 and 74 of the instant Specification for the alleged critical significance to improve the stability of HFO-1132, because the examples in Tables 72 and 74 of the instant Specification are limited to HFO-1132 (E) (i.e. trans-1,2-difluoroethylene), and combining HFO-1132 (E) and oxygen to test the stability, whereas the claims broadly include any HFO-1132 (HFO-1132 (E), HFO-1132 (Z)), and any refrigerant comprising HFO-1132.
Fourthly, regarding Applicant’s argument that Fukushima fails to provide any rational reason to utilize the upper limit (i.e., 1000 volume ppm) of the oxygen concentration as a critical factor to achieve the improved stability of HFO-1132, in response, Applicant’s argument is not persuasive.
As cited in the rejection and copied in Applicant’s own arguments, para. [0112] of Fukushima provides ample motivation to decrease the amount of oxygen present by teaching suppressing the amount of non-condensable gases (e.g., oxygen) in amounts below 0.5 vol% (i.e., 5000 ppm by volume) in order to improve the operation of apparatus comprising the refrigerant and prevent decomposition of the refrigerant or refrigerating oil. Not only is Fukushima teaching “it is necessary to suppress” the amount of non-condensable gas (e.g. oxygen) where 5,000 ppm by volume is a preferred upper limit a teaching of prima facie overlap of the claimed range, but it is also strong motivation and a direct teaching to minimize (suppress) the amount of oxygen therein to arrive at the claimed range for improved operation and/or stability purposes.
The fact that the inventor 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. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). See MPEP 2145.II.
Fifthly, regarding Applicant’s argument by using a reference “AHRI Standard 700-2024(SI)”, Applicant has the responsibility to provide this document to the Office for review.
Regarding Applicant’s argument that the "Acidity, Maximum" column in each table of AHRI Standard 700-2024(SI) states that the upper limit of the acid content is 1 ppm by weight, it would be considered reasonable by a person skilled in the art to set the acid content as an impurity of the HFO-1132 to 10 weight ppm or less, with a slight margin from the AHRI standard in consideration of the fact that the HFO-1132 is not registered with AHRI, in response, Applicant’s reasoning to set the acid content as an impurity of the HFO-1132 to 10 weight ppm or less is random. In consideration of the fact that the HFO-1132 is not registered with AHRI, it would be considered reasonable by a person skilled in the art to set the acid content as an impurity of the HFO-1132 to set the acid content as an impurity of the HFO-1132 to 3 weight ppm or less, or 100 weight ppm or less, which correspond to the oxygen concentration of 400 volume ppm or less, and 4000 volume ppm or less, respectively.
2. Applicant requests that the provisional double patenting rejection be withdrawn since the present application has an earlier effective filing date than the reference application and the provisional double patenting rejection is the only rejection remaining (p. 5, last para).
In response, as discussed above, Applicant's arguments filed 02/04/2026 have been fully considered but they are not persuasive. Therefore, the rejection of claims 1-9 and 23-26 under 35 U.S.C. 103 as being unpatentable over Fukushima (JP 2016011423 A) is maintained in view of the remarks. Therefore, the provisional double patenting rejection is not the only rejection remaining. The rejection of claims 1-9 and 23-26 provisionally on the ground of nonstatutory double patenting as being unpatentable over claims 3-6 of copending Application No. 18/132,065 (reference application) is maintained.
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.
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/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761