DETAILED ACTION
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 .
Status of the Claims
The amendment filed on 12/30/2025 has been entered. Claim 1 has been amended. Thus claims 1-6 are currently pending and are under examination.
Withdrawn Rejection
The indefinite language of claim 1 has been obviated and thus the 112(b) rejection has been withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 are rejected in a modified form under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the limitation “A fluoroethylene composition containing fluoroethylene having one or more and three or less fluorine atoms…the fluoroethylene composition is placed in a glass tube….so that a content of a 1,2-difluoroethylene contained in the fluoroethylene composition is 0.01 mol”. Fluoroethylene having one or more and three or less fluorine atoms in the limitation is interpreted as fluoroethylene having one, two or three. However, the instant specification appears devoid of such description that fluoroethylene composition contains fluoroethylene having the one or more and three or less fluorine atoms when the content 1,2-difluoroethylene contained in the fluoroethylene composition is 0.01 mol for the reason set forth below.
As described in the examples of the specification, the fluoroethylene composition that contains 0.01 mol of 1,2-difluoroethylene does not comprise the fluoroethylenes that encompass fluoroethylenes with one, two, or three fluorine atoms. The composition comprises all of 1,1,2-trifluoroethylene (three fluorine atoms), fluoroethylene (one fluorine atom) and 1,1-difluoroethylene (two fluorine atoms) (pages 14-16). In other words, the presence of any of these fluoroethylenes is not optional as recited in the claim by the usage of or the limitation “one or more and three or less fluorine atoms”, but all of the fluoroethylenes with one, two and three fluorine atoms are contained in the composition.
Thus, at the time the application was filed, a skilled artisan would not recognize from the disclosure that Applicant was in possession of the composition containing fluoroethylene having one or more and three or less fluorine atoms when the composition comprises 0.01 mol of 1,2-difluoroethylene.
MPEP § 2163.06 notes: " If new matter is added to the claims, the examiner should reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph - written description requirement. In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)"
MPEP § 2163.02 states that “Whenever the issue arises, the fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was "ready for patenting" such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the applicant was in possession of the claimed invention. See, e.g., Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 68, 119 S.Ct. 304, 312, 48 USPQ2d 1641, 1647 (1998); Regents of the Univ. of Cal. v. Eli Lilly, 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1406 (Fed. Cir. 1997); Amgen, Inc. v. Chugai Pharm., 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991) (one must define a compound by "whatever characteristics sufficiently distinguish it").”
MPEP § 2163.06 further notes " When an amendment is filed in reply to an objection or rejection based on 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, a study of the entire application is often necessary to determine whether or not "new matter" is involved. Applicant should therefore specifically point out the support for any amendments made to the disclosure."
This is a new matter rejection.
Claims 2-6 also introduce new matter for their dependency on claim 1.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6 stand rejected under 35 U.S.C. 103 as being unpatentable over Patent application publication number US2016/0230059A1 (US’059; cited in PTO-892 05/29/2024) in view of Ashrae (Ashrae “Ashrae Refrigerant Designations” Oct. 18, 2018; cited in PTO-892 05/29/2024). The rejection has been set forth in the Office Action 11/25/2024 and is reiterated herein.
Regarding claim 1, US’059 teaches a halo-olefin based composition comprising haloolefin, water and oxygen, wherein the amount of the water is 200 mass ppm or less based on the total amount of the haloolefin and the amount of the oxygen is 0.35 mol % or less based on the total amount of the haloolefin ([0013]).
Regarding claim 5, US’059 taches that when the composition is used as a refrigerant or heat transfer medium, at least either, or both, of polyalkyleneglycol and polyolether can be contained as a lubricating oil in the composition ([0036]).
Regarding claims 1-4, while US’059 teaches haloolefin-based composition and that the number of carbons in the haloolefin is not limited, the reference fails to teach specifically the claimed composition that comprises fluoroethylene having one or more fluorine atoms.
Regarding claim 6, US’059 also fails to teach or suggest the use of fluoroethylene.
The deficiencies are cured by Ashrae.
Ashrae teaches a list of refrigerants, including fluoroethylenes such as 1,1-difluoroethylene (HFO-1132a) and trans-1,2-difluoroethylene (HFO-1132(E)).
US’059 teaches that the composition provides a highly-stable haloolefin in which decomposition and oxidization are inhibited ([0012]). Furthermore, US’059 teaches in that the haloolefin-based composition being used in a heat transfer medium, refrigerant ([0012]), foaming agent, solvent, cleaning agent, propellant, or fire extinguisher and that the number of carbon atoms in the haloolefin is not particularly limited ([0019]). US’059 teaches that the presence of water in the haloolefin composition improves the stability of the haloolefin, specifically the double bond in the molecule of the haloolefin can be stably present, and the haloolefin does not easily cause oxidization, the performance of the haloolefin is not likely to be lost for a long period of time ([0014]). Furthermore, US’059 teaches that the presence of oxygen in the composition improves the stability of the haloolefin ([0032]). US’059 teaches that the composition can be stored for a long period of time as compared with typical haloolefins.
Similarly, the instant specification describes that if water exceeds 100 mass ppm, solids will be generated due to side reactions ([0016] and that solids, such as agglomerates, are less likely to be generated even after long-term storage ([0019]).
Accordingly, a skilled artisan would have been motivated to use the fluoroethylenes of Ashrae in the composition of US’059 with a reasonable expectation of success in obtaining fluoroethylene composition in a highly-stable fluroolefin in which decomposition and oxidization are inhibited over a long period storage. In other words, a skilled artisan has a reasonable expectation of success in inhibiting any side reactions of Ashrae’s fluoroethylene after a long-term storage, including inhibition of any formation of solids, when using fluoroethylene in the composition of US’059.
The limitation “based on the following Fluoroethylene Stability Test 1…” of claim 1 is a product by process claim language. The product by process limitation is not limited to the manipulations of the recited steps, but only to the structure implied by the steps, in this case, the composition. See MPEP § 2113:
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ( "a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim" ).
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to obtain fluoroethylene composition containing a fluoroethylene having one or more fluorine atoms, water and oxygen, the composition having a water content of 100 mass ppm or less based on the mass of the fluoroethylene, and an oxygen content of 0.35 mol% or less based on the fluoroethylene, and the composition being free of solids in view of the combination of US’059 and Ashrae.
Claims 1-6 stand rejected under 35 U.S.C. 103 as being unpatentable over Patent application publication number US2016/0230059A1 (US’059; cited in PTO-892 05/29/2024) in view of Patent number US8,961,811B2 (US’811; cited in IDS 07/08/2022). The rejection has been set forth in the Office Action 11/25/2024 and is reiterated herein.
Regarding claim 1, US’059 teaches a halo-olefin based composition comprising haloolefin, water and oxygen, wherein the amount of the water is 200 mass ppm or less based on the total amount of the haloolefin and the amount of the oxygen is 0.35 mol % or less based on the total amount of the haloolefin ([0013]).
Regarding claim 5, US’059 taches that when the composition is used as a refrigerant or heat transfer medium, at least either, or both, of polyalkyleneglycol and polyolether can be contained as a lubricating oil in the composition ([0036]).
Regarding claims 1-4, while US’059 teaches haloolefin-based composition and that the number of carbons in the haloolefin is not limited ([0026]), the reference fails to teach specifically the claimed composition that comprises fluoroethylene having one or more fluorine atoms.
Regarding claim 6, US’059 also fails to teach or suggest the use of fluoroethylene.
The deficiencies are cured by US’811.
US’811 teaches compositions for use in refrigeration, air-conditioning, and heat pump systems wherein the composition comprises E-1,2-difluoroethylene.
US’059 teaches that the composition provides a highly-stable haloolefin in which decomposition and oxidization are inhibited ([0012]). Furthermore, US’059 teaches in that the haloolefin-based composition being used in a heat transfer medium, refrigerant ([0012]), foaming agent, solvent, cleaning agent, propellant, or fire extinguisher and that the number of carbon atoms in the haloolefin is not particularly limited ([0019]). US’059 teaches that the presence of water in the haloolefin composition improves the stability of the haloolefin, specifically the double bond in the molecule of the haloolefin can be stably present, and the haloolefin does not easily cause oxidization, the performance of the haloolefin is not likely to be lost for a long period of time ([0014]). Furthermore, US’059 teaches that the presence of oxygen in the composition improves the stability of the haloolefin ([0032]). US’059 teaches that the composition can be stored for a long period of time as compared with typical haloolefins.
Similarly, the instant specification describes that if water exceeds 100 mass ppm, solids will be generated due to side reactions ([0016] and that solids, such as agglomerates, are less likely to be generated even after long-term storage ([0019]).
Accordingly, a skilled artisan would have been motivated to use the E-1,2-difluoroethylene of US’811 in the composition of US’059 with a reasonable expectation of success in obtaining fluoroethylene composition in a highly-stable E-1,2-difluoroethylene in which decomposition and oxidization are inhibited over a long period storage. In other words, a skilled artisan has a reasonable expectation of success in inhibiting any side reactions of US’811’s E-1,2-difluoroethylene after a long-term storage, including inhibition of any formation of solids, when using E-1,2-difluoroethylene in the composition of US’059.
The limitation “based on the following Fluoroethylene Stability Test 1…” of claim 1 is a product by process claim language. The product by process limitation is not limited to the manipulations of the recited steps, but only to the structure implied by the steps, in this case, the composition. See MPEP § 2113:
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ( "a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim" ).
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to obtain fluoroethylene composition containing a fluoroethylene having one or more fluorine atoms, water and oxygen, the composition having a water content of 100 mass ppm or less based on the mass of the fluoroethylene, and an oxygen content of 0.35 mol% or less based on the fluoroethylene, and the composition being free of solids in view of the combination of US’059 and US’811.
Response to the Arguments
Applicant incorporates the arguments of declaration under 37 CFR 1.132 03/21/2025 in the remarks 12/30/2025. Applicant argues that one of ordinary skill in the art would not have been able to predict that 1,2-difluoroethylene in the presence of water could achieve both an improvement in stability and suppression of self-polymerization since Takahashi discloses only the stabilizing effect of the distinct HFO-1234yf that has only 4 fluorine atoms. Applicant argues that neither Ashrae nor Minor remedy the deficiencies of Takahashi.
The arguments are not persuasive.
Firstly, the incorporated declaration under 37 CFR 1.132 has been addressed in the Office Action 10/02/2025. The examiner maintains that the evidence provided in the declaration does not refer to the individual claims of the application and it is not in comparison of the claimed invention with the closest prior art. Thus, there is no showing that the objective evidence of nonobviousness is commensurate in scope with the claims.
Furthermore, Applicant is arguing against Takahashi by pointing only to the exemplified embodiment of the reference that is drawn to the stabilization of a different fluoroolefin, i.e. HFO-1234yf. However, as set forth in the rejection, the non-exemplified embodiment of the reference teaches that the number of carbon atoms in the haloolefin is not limited in providing a highly-stable haloolefin, wherein the decomposition and oxidization are inhibited. The reference recognizes that the stability of these haloolefins have been improved when water and oxygen are present at the amount as instantly claimed. Thus, the examiner maintains that one of ordinary skill in the art would have a reasonable expectation of success in stabilizing any haloolefins, including the instantly claimed 1,2-difluoroethylene, when water and oxygen are present at the amount taught by Takashi, which is the same as instantly claimed.
In view of the foregoing, the instantly claimed composition remains obvious for reasons of record.
Conclusion
Claims 1-6 stand rejected and no claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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/MEDHANIT W BAHTA/ Primary Examiner, Art Unit 1692