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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/08/2026 has been entered.
Status of the Claims
The amendment filed on 07/08/2026 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Withdrawn Rejection
The indefinite language of claim 1 has been obviated and thus the 112(b) rejection of the record has been withdrawn.
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
The Applicant cites paragraph [0019] of the disclosure that discusses how the presence of water in the composition at the claimed amount improves the stability of fluoroethylene. Furthermore, the Applicant notes that the claimed invention suppresses the generation of solids even after long storage, which is specific only to the composition containing 1,2-difluoroethylene. The Applicant argues that Takahashi (US’059) fails to teach or suggest the claimed fluoroethylene and an ordinary skill in the art could not have predicted and would not have expected the advantageous effects of the claimed invention. The Applicant also argues that neither Ashrae nor Minor (US’811) cures the deficiency of US’059.
The examiner disagrees. US’059 has recognized that haloolefins gradually decompose over time and are not stable. Thus US’059 teaches that the objective of the composition is to provide a haloolefin-based composition comprising a highly-stable
haloolefin in which decomposition and oxidization are inhibited ([0012]). Specifically, since 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]).
Paragraph [0019] of the instant disclosure discusses a similar situation of fluoroolefin, in which water improves the stability of fluoroethylene by inhibiting the decomposition stage or by reducing the reaction rate, making chain reaction and oxidation less likely to occur.
US’059 does not explicitly teach the suppression of solid generation, however, the presence of the double bond in both of the haloolefins of US’059 and the fluoroolefin the instant invention is what causes the decomposition, and thus the presence of water in US’059 would have necessarily suppressed any decomposition of the haloolefins, which would have included the solid formation.
In view of the foregoing, the instantly claimed invention is still deemed unobvious over the art of the record.
Conclusion
Claims 1-6 stand rejected and no claims are allowed.
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/MEDHANIT W BAHTA/Primary Examiner, Art Unit 1692
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