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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/13/2025 has been entered.
This action is responsive to Applicant’s request for continued examination and amendment/remarks filed 11/13/2025.
Applicant requested a three (3) month suspension of action with the request for continued examination filed 11/13/2025. The three month period for suspension ran from approximately 11/18/2025 (the day after the request for continued examination was processed internally) to 02/18/2025 (three months after the prior date), and the application was returned to the Examiner's docket on 03/08/2026. As more than three months have passed since the request for continued examination/suspension, prosecution is hereby resumed.
Claims 1-11 and 21-45 are currently pending.
The IDS statements filed 11/13/2025, 11/26/2025, and 03/19/2026 have been considered. Initialed copies accompany this action.
It is noted that, for most of the foreign patent references cited in the IDS filed 03/19/2026, Applicant has merely provided translations of the abstracts of the foreign patent references. While the references have been considered to the best of the Examiner’s ability, the contents of the references/pages in foreign languages have not been considered. Regarding FOR Cite No. 15 & 39 on the IDS filed 03/19/2026, the references are in foreign languages and no English translations has been provided. The content of this reference has not been considered. Applicant is reminded 37 CFR 1.98(a)(3) requires a concise explanation of the relevance, as it is presently understood by the individual designated in § 1.56(c) most knowledgeable about the content of the information, of each publication that is not in the English language.
Response to Amendment
The objection of claims 1, 21, 32, 33, 36, and 37 is withdrawn in view of the above amendment.
The rejection of claims 41 and 45 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the above amendment.
The claim rejections on the grounds of nonstatutory double patenting as being unpatentable over the claims of: U.S. Patent No. 11,732,170, U.S. Patent No. 11,352,534, U.S. Patent No. 11,261,360, U.S. Patent No. 10,767,091, U.S. Patent No. 11,111,424, U.S. Patent No. 10,731,066, and copending application 18/399,063 are
maintained. See below.
The claim rejection on the grounds of nonstatutory double patenting as being unpatentable over the claims of copending application 18/399,063 is withdrawn in view of claim amendments made in the copending application.
The claim rejections under 35 U.S.C. 103 as being unpatentable over/based-on Sato et al. (US 2010/0234256 A1, earlier published as WO 2009/066722 A1) optionally in view of Nimitz et al. (US 5,444,102 A) are maintained and are reiterated below.
The claim rejections under 35 U.S.C. 103 as being unpatentable over/based-on Takigawa et al. (US 2013/0207024 A1) optionally in view of Nimitz et al. (US 5,444,102 A) are maintained and are reiterated below.
Double Patenting
Claims 1-11 and 21-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims (claims 1-20) of U.S. Patent No. 11,732,170.
Although the claims at issue are not identical, they are not patentably distinct from each other because claims in the patent read as follows:
1. A heat transfer composition comprising refrigerant, said refrigerant consisting of the following three compounds, with each compound being present in the following relative percentages: 39 to 45% by weight difluoromethane (HFC-32), 1 to 4% by weight pentafluoroethane (HFC-125), and 51 to 57% by weight trifluoroiodomethane (CF3I).
2. The heat transfer composition of claim 1 further comprising lubricant and stabilizer comprising alkylated naphthalene, wherein said alkylated naphthalene is present in the composition in an amount of from 1% to 8% by weight based on the weight of the alkylated naphthalene and the lubricant.
3. The heat transfer composition of claim 2 wherein said alkylated naphthalene is present in the composition in an amount of from 1.5% to 8% by weight based on the weight of the alkylated naphthalene and the lubricant.
4. The heat transfer composition of claim 2 wherein said alkylated naphthalene is present in the composition in an amount of from 1.5% to 6% by weight based on the weight of the alkylated naphthalene and the lubricant, wherein said lubricant comprises PVE lubricant or POE lubricant.
5. The heat transfer composition of claim 4 wherein said stabilizer further comprises an acid depleting moiety (ADM).
Additionally note that the corresponding specifications of these patents also thoroughly describe and disclose the alkylated naphthalene components have the same viscosity parameters as those disclosed and claimed in the present application, the POE lubricant has the same viscosity as claimed, the additional presence a phenol-based stabilizer preferably BHT, and the same general epoxide-based stabilizer that reads on the claimed acid depleting moiety, which establishes the claimed inventions are obvious variants of one another. Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
Based on the foregoing, the present claims are rejected as nonstatutory double patenting.
Claims 1-11 and 21-45 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,352,534.
Although the claims at issue are not identical, they are not patentably distinct from each other because each of these patents claims heat transfer compositions comprising CF3I and HFC-32 in amounts which fall within the recited broad ranges and HFC-32, HFC-125, and CF3I in amounts which overlap and/or are identical to the recited narrower ranges in admixture with a PVE or POE lubricant as recited, as well as alkylated naphthalene, BHT, and an acid depleting moiety. The claims also recite the compositions are comprised in heat transfer applications including air conditioning, refrigeration, and heat pumps as a replacement for R-410A. Specific alkyl naphthalenes are not disclosed, but selection of one of a limited genus of alkyl naphthalenes amounts to routine experimentation. Note that the corresponding specifications of these patents also thoroughly describe and disclose the alkylated naphthalene components have the same viscosity parameters as those disclosed and claimed in the present application, the POE lubricant has the same viscosity as claimed, which establishes the claimed inventions are obvious variants of one another. Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
Claims 1-11, 22-31, 34, and 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,261,360.
Although the claims at issue are not identical, they are not patentably distinct from each other because each of these patents claims heat transfer compositions comprising CF3I and HFC-32 in amounts which fall within the recited broad in admixture with a PVE or POE lubricant as recited, as well as alkylated naphthalene, an acid depleting moiety, and BHT. Specific alkyl naphthalenes are not disclosed, but selection of one of a limited genus of alkyl naphthalenes amounts to routine experimentation. Note that the corresponding specifications of these patents also thoroughly describe and disclose the alkylated naphthalene components have the same viscosity parameters as those disclosed and claimed in the present application, the POE lubricant has the same viscosity as claimed, which establishes the claimed inventions are obvious variants of one another. Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
Claims 1-7, 22-27, 34, 35, and 38-45 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,767,091.
Although the claims at issue are not identical, they are not patentably distinct from each other because each of these patents claims heat transfer compositions comprising CF3I and HFC-32 in amounts which fall within the recited broad in admixture with a PVE or POE lubricant as recited, as well as alkylated naphthalene and/or a phenol compound. Specific alkyl naphthalenes are not disclosed, but selection of one of a limited genus of alkyl naphthalenes amounts to routine experimentation. The claims also recite the compositions are comprised in heat transfer systems. Note that the corresponding specifications of these patents also thoroughly describe and disclose the alkylated naphthalene components have the same viscosity parameters as those disclosed and claimed in the present application, the POE lubricant has the same viscosity as claimed, the phenol-based stabilizer is preferably BHT, , which establishes the claimed inventions are obvious variants of one another. Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
Claims 1-5, 22-27, 34, 35, and 38-45 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,111,424.
Although the claims at issue are not identical, they are not patentably distinct from each other because each of these patents claims heat transfer compositions comprising CF3I and HFC-32 in amounts which fall within the recited broad in admixture with a PVE or POE lubricant as recited, as well as alkylated naphthalene. Specific alkyl naphthalenes are not disclosed, but selection of one of a limited genus of alkyl naphthalenes amounts to routine experimentation. The claims also recite the compositions are comprised in heat transfer systems. Note that the corresponding specifications of these patents also thoroughly describe and disclose the alkylated naphthalene components have the same viscosity parameters as those disclosed and claimed in the present application, the POE lubricant has the same viscosity as claimed, which establishes the claimed inventions are obvious variants of one another. Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
Claims 1-5, 22-27, 34, 35, and 38-45 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10,731,066.
Although the claims at issue are not identical, they are not patentably distinct from each other because each of these patents claims heat transfer compositions comprising CF3I and HFC-32 in amounts which fall within the recited broad in admixture with a PVE or POE lubricant as recited, as well as alkylated naphthalene. Specific alkyl naphthalenes are not disclosed, but selection of one of a limited genus of alkyl naphthalenes amounts to routine experimentation. The claims also recite the compositions are comprised in heat transfer systems. Note that the corresponding specifications of these patents also thoroughly describe and disclose the alkylated naphthalene components have the same viscosity parameters as those disclosed and claimed in the present application, the POE lubricant has the same viscosity as claimed, which establishes the claimed inventions are obvious variants of one another. Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
Claims 1-11 and 21-37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 and 17-21 of copending Application No. 18/095,446 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite heat transfer compositions comprising refrigerant compositions comprising overlapping amounts of CF3I and HFC-32 and narrower compositions comprising amounts of about 41 wt.% HFC-32, about 3.5 wt.% HFC-125, and about 55.5 wt.% CF3I as well as additional lubricant components (that are POE and/or PVE), an alkylated naphthalene component (that is AN4) in overlapping if not the same concentration, and an acid depleting moiety (that may be/include ADM4) in an overlapping if not same concentration, and an additional phenol stabilizer. While the copending claims do not recite the viscosity of the alkylated naphthalene component, the viscosity of the POE/PVE lubricant, or the additional presence of BHT, the copending application’s original specification nevertheless discloses the alkylated naphthalene component has the same viscosity parameters as those disclosed and claimed in the present application (see Tables on p.20-22 & disclosure on those same pages of the copending application spec.), the POE lubricant has the same viscosity as claimed (see p.53 of copending appl. spec.), and the phenol stabilizer may preferably be BHT (p.35-36 of copending appl. spec.), which establishes the claimed inventions are obvious variants of one another. Also note discussion/definitions of certain epoxide stabilizers as the ADM component (p.23-26 of copending appl. spec.). Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-11, 22-31, 34, 35, and 38-45 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (US 2010/0234256 A1, earlier published as WO 2009/066722 A1) optionally in view of Nimitz et al. (US 5,444,102 A).
Sato et al. teach lubricating oils for refrigeration, wherein the lubricant comprises a compound which includes a double bond, such as an alpha-olefin or a conjugated diene (abstract), [0012]. The base oil may be an alkyl naphthalene, a polyvinyl ether (i.e., PVE) or a polyol ester (i.e., POE), as well as mixtures of the same [0019] & [0030]. See also [0039]-[0041]. Preferred structures of the alkyl naphthalene are disclosed at [0040] and preferred viscosity of the alkyl naphthalene is disclosed at [0041]. [0041] specifically teaches the viscosity of the alkyl naphthalene at 40°C is preferably 5 to 250 mm2/s, which is equivalent to 5-250 cSt; this encompasses, overlaps, and otherwise reads on the claimed viscosity range for the alkylated naphthalenes and “AN5” components. While it is noted [0041] says this viscosity is for a polyvinyl ether-base compound(s), this is clearly a minor typographical error in the reference as it is repeated for every other species of base oil (see [0038], [0044], etc.) and the corresponding portion of Sato et al.’s WO Publication, WO 2009/066722 A1 at [0018] on p.7, clarifies and clearly sets forth the disclosed viscosity indeed refers to the viscosity of the alkyl naphthalene base oil:
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Suitable refrigerants include blends of HFC-32 and CF3I [0139] & [0159]. “di-tert-butyl-4-methylphenol”, which is the claimed “BHT”, is an exemplary useful phenol-based antioxidant and is provided at a content of 0.01-5% by weight of the composition [0171]. Alkyl glycidyl ethers where the alkyl group has 6 to 16 carbon atoms are preferably and exemplary useful acid scavengers and is provided at a content of 0.005-5% by weight of the composition [0172] & [0173]. This genus of acid scavenger reads on the claimed acid depleting moiety or “ADM”, and selection of 2-ethylhexyl glycidyl ether (a C8-alkyl glycidyl ether and the claimed “ADM4”) from the limited genus of C6-C16-alkyl glycidyl ethers amounts to ordinary experimentation and/or is encompassed by the limited genus. Determination of the lubrication-effective amount of alkyl naphthalene lubricant to use amounts to routine experimentation, and selection of any one such from a limited genus of alkyl naphthalenes amounts to routine experimentation as well. Such experimentation would be guided by the disclosed viscosity limitations, as the alkyl naphthalenes vary widely in viscosity, and the desirability of a low viscosity is disclosed.
While the claimed heat transfer apparatus structure is conventional, Sato et al. further teach the lubricating oil compositions and heat transfer compositions thereof are suitable for use in heat transfer apparatus such as air conditioners, heat pumps, and refrigerators (abstract & [0187]); regarding the claimed selection that the air conditioning system is either a residential or commercial system, the reference’s apparatus broadly meet this as it is unclear what patentably differentiates a residential system from a commercial system as recited – the fact that a system is placed in a domicile (a residence) versus a revenue-generating location (a commercial location) seems immaterial to differentiate the two as they contain the same unit ops, a circuit containing a compressor, a condenser, an expansion mechanism, and an evaporator that heat/cools air. Note that nonfunctional matter does not distinguish a claimed product from an otherwise identical prior art product. Arguendo, Sato et al.’s freezer ([0178]) meets the claimed air conditioner being residential or commercial. Similar rationale applies regarding the claimed heat transfer system being designed for use with R-410A; heat transfer systems capable of containing R-410A merely requires a heat exchanger, which Sato et al. certainly includes via condensers and/or evaporators (Id.); if more is required, i.e., that a system designed for use with R-410A requires the capability of vapor compression of R-410A which is a refrigerant capable of vapor-compression, Sato et al.’s apparatus containing a circuit of a compressor, condenser, expansion mechanism, and evaporator as essential components (Id. & [0178]) is a vapor-compression circuit and thus has all the unit ops capable of utilizing R-410A as claimed.
This reference differs from the claimed subject matter in that it does not disclose a composition which reads on applicant’s claims with sufficient specificity to constitute anticipation.
However, at the time of the effective filing date it would have been obvious at the time the invention was made to make such a composition, because this reference teaches that all of the ingredients recited by applicants are suitable for inclusion in a refrigerant composition. The person of ordinary skill in the refrigeration art would expect the recited compositions to have properties similar to those compositions which are exemplified, absent a showing to the contrary.
In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed Cir. 1990).
Sato et al. teach blends of iodotrifluoromethane and difluoromethane refrigerants as described above which meet and encompass the claimed concentrations of about 35-70 wt.% trifluoroiodomethane and about 5-50 wt.% difluoromethane (HFC-32). Nevertheless, in the event Sato et al. fail to sufficiently meet these limitations, the claimed concentrations of trifluoroiodomethane and difluoromethane are obvious further in view of Nimitz et al.
Nimitz et al. is similarly drawn to fluoroiodocarbon-based refrigerant compositions (abstract). Specifically Nimitz et al. teaches effective, environmentally safe, nonflammable, low-toxicity refrigerants comprising a fluoroiodocarbon and additives, miscible with common lubricants (Id. & col. 13 lines 1-26). Exemplary refrigerant blends include, among others, trifluoroiodomethane (CF3I) and difluoromethane in an approximate mol ratio of 20:80 (Table 5), which corresponds to a mass ratio of about 48.5:51.5 and within the claimed concentration ranges. Additionally, Nimitz et al. specifies trifluoroiodomethane as a preferred fluoroiodocarbon species (Table 3 in col. 10) as well as difluoromethane as a “preferred additive to be blended with the fluoroiodocarbon”, i.e., the trifluoroiodomethane, (Table 4 among col. 10 & 11), encompassing 1-99/99-1 wt.% refrigerant blends of trifluoroiodomethane and difluoromethane.
At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide the trifluoroiodomethane and difluoromethane refrigerant blend(s) as taught by Nimitz et al. as the trifluoroiodomethane/saturated fluorohydrocarbon-based refrigerant composition in Sato et al. utilizing Sato et al.’s newer lubricant and stabilizer blends/technology in order to obtain a stabilized, effective, environmentally safe, nonflammable, and low-toxicity refrigerant composition with a reasonable expectation of success.
Claims 21, 32, 33, 36, and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (US 2010/0234256 A1, earlier published as WO 2009/066722 A1) optionally in view of Nimitz et al. (US 5,444,102 A) as applied to claims 1-11, 22-31, 34, 35, and 38-45 above, and further in view of either Funakura et al. (JP 08-277389 A) or Hulse et al. (US 2010/0044619 A1).
The disclosure of Sato et al. optionally in view of Nimitz et al. is relied upon as set forth above.
The above reference(s) amount to teaching a heat transfer composition comprising a refrigerant comprising/overlapping the broad claimed concentration of about 35-70 wt.% trifluoroiodomethane/CF3I and about 5-50 wt.% difluoromethane/HFC-32. While Sato et al. further teach all of difluoromethane, pentafluoroethane, and trifluoroiodomethane individually or in combination as preferred saturated fluorohydrocarbon compounds for inclusion in their refrigerant [0159], Sato et al. and Nimitz et al. fail to teach a refrigerant consisting of the narrower concentrations of 41%±1% by weight (i.e., 40-42 wt.%) difluoromethane/HFC-32, 3.5%±0.5% by weight (i.e., 3-4 wt.%) pentafluoroethane/HFC-125, and 55.5%±0.5% by weight (i.e., 55-56 wt.%) trifluoroiodomethane/CF3I of dependent claims 21, 32, 33, 36, and 37.
However, Funakura et al. teach a working fluid composition, i.e., refrigerant, containing, as the only components, 35-80wt.% of trifluoroiodomethane and either or both of ≤40wt.% of a difluoromethane and ≤65wt.% of pentafluoroethane. Note the “either or both of” means that both the difluoromethane and pentafluoroethane can be present for a refrigerant consisting of difluoromethane, pentafluoroethane, and trifluoroiodomethane. See also the ternary diagram containing all three components, Fig. 1. The disclosed ranges overlap/touch those claimed – the concentration of difluoromethane touches/overlaps that claimed, the concentration of pentafluoroethane overlaps that claimed, and the concentration of trifluoroiodomethane overlaps that claimed. The refrigerant hardly has any influence on the ozone layer, slight global warming action, and is capable of increasing the capacity/width of a working fluid (abstract). Funakura et al. further teach the refrigerant is nonflammable because both trifluoroiodomethane and pentafluoroethane are intrinsically nonflammable and the concentration of difluoromethane is limited to its nonflammable range [0007].
Alternatively, Hulse et al. teach heat transfer system based on difluoromethane (R-32) and trifluoroiodomethane (CF3I) [0073]+. The R-32 is present at about 1-80% by weight of the compositions [0074]. CF3I may be present at about 5-98% by weight [0075]. Possible third components include pentafluoroethane (R-125) [0076]. See Table 1, at the top of the left col. on p.9, which discloses that R-125 may be present at 1-30% by weight. This combination of preferred ranges overlaps those of the claimed difluoromethane, pentafluoroethane, and trifluoroiodomethane composition. Furthermore, Table 2, near the bottom of the left col. on p.9, discloses that R-125 has a relatively high GWP of 3400, which would motivate experimentation at the low end of the 1-30% range of R-125. Hulse et al. teach the compositions do not deplete the ozone layer, do not cause unwanted levels of global warming, and remain suitable as heat transfer compositions having excellent heat transfer properties, chemical stability, low to no toxicity, low to no flammability, and lubricant compatibility that renders them applicable as retrofit/replacement compositions for prior systems (para. 0009, 0010, & 0087).
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 the refrigerant blend consisting of difluoromethane, pentafluoroethane, and trifluoroiodomethane as taught by Funakura et al. as the trifluoroiodomethane/saturated fluorohydrocarbon-based refrigerant composition in Sato et al. utilizing Sato et al.’s lubricant and stabilizer blends/technology in order to obtain a stabilized, effective, environmentally safe, and nonflammable heat transfer/refrigerant composition with a reasonable expectation of success. Alternatively, at the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to provide a refrigerant blend consisting of difluoromethane, pentafluoroethane, and trifluoroiodomethane as taught by Hulse et al. as the trifluoroiodomethane/saturated fluorohydrocarbon-based refrigerant composition in Sato et al. utilizing Sato et al.’s lubricant and stabilizer blends/technology in order to obtain a stabilized, effective, environmentally safe, low/nontoxic, and low/nonflammable heat transfer/refrigerant composition with a reasonable expectation of success.
Claims 1-11, 22-31, 34, 35, and 38-45 are rejected under 35 U.S.C. 103 as being unpatentable over Takigawa et al. (US 2013/0207024 A1) optionally in view of Nimitz et al. (US 5,444,102 A).
Takigawa et al. teach polyol ester refrigerating machine oils comprising an ester of a polyhydric alcohol and fatty acids of 4-6 carbons and 7-9 carbons (abstract). The compositions may further comprise alkylnaphthalenes and polyvinyl esters as additional base oils in the refrigerating machine oil [0055]. The compositions may further comprise a glycidyl ether, which may be 2-ethylhexyl glycidyl ether, [0078], which reads on the claimed acid depleting moiety and “ADM4” species thereof. Phenol-based antioxidants and acid scavengers may be added as well [0087]; [0087] specifically teach “di-tert-butyl-p-cresol” as an exemplary phenol-based antioxidant which is another name for “di-tert-butyl-4-methylphenol” or “butylated hydroxytoluene”, which is the claimed “BHT”. The compositions are useful with refrigerants comprising a blend of difluoromethane and trifluoroiodomethane [0095]. Regarding viscosity, see [0088]; [0088] discloses the viscosity is preferably 20-80 mm2/s which is equivalent to 20-80 cSt; this encompasses, overlaps, and otherwise reads on the claimed viscosity ranges and values. Regarding neopentyl polyol esters, see [0045], which discloses that neopentyl glycol, pentaerythritol, and dipentaerythritol are preferred polyols for formulating polyol esters; these compounds contain neopentyl groups. Regarding amounts, determination of the lubrication-effective amounts of disclosed lubricants to use amounts to routine experimentation. Determination of the stabilizing effective amount of a disclosed stabilizer to use also amounts to routine experimentation. Specific alkyl naphthalenes are not disclosed, but selection of one of a limited genus of alkyl naphthalenes amounts to routine experimentation. Such experimentation would be guided by the disclosed viscosity limitations, as the alkyl naphthalenes vary widely in viscosity, and the desirability of a low viscosity is disclosed. Furthermore, Takigawa et al. teach the POE lubricant should be greater than 50 wt.% (and higher subsets thereof, e.g., greater than 75 wt.%) of the base oil and other additional lubricants (such as the alkylnaphthenes) should be less than 50 wt.% (and lower subsets thereof, e.g., less than 30 wt.%) of the base oil in order to achieve appropriate viscosity and compatibility ([0054] & [0060]), which at least approaches, if not overlaps and encompasses, the claimed relative amounts/ranges of alkylated naphthalene based on the weight of the alkylated naphthalene and the lubricant.
While the claimed heat transfer apparatus structure is conventional, Takigawa et al. further teach the refrigerating machine oil compositions and heat transfer (working fluid) compositions thereof are suitable for use in heat transfer apparatus such as air conditioners, heat pumps, and refrigerators ([0093], [0100], & [0101]); regarding the claimed selection that the air conditioning system is either a residential or commercial system, the reference’s apparatus broadly meet this as it is unclear what patentably differentiates a residential system from a commercial system as recited – the fact that a system is placed in a domicile (a residence) versus a revenue-generating location (a commercial location) seems immaterial to differentiate the two as they contain the same unit ops, a circuit containing a compressor, a condenser, an expansion mechanism, and an evaporator that heat/cools air. Note that nonfunctional matter does not distinguish a claimed product from an otherwise identical prior art product. Arguendo, Takigawa et al.’s room air conditioners [0093] and freezing/refrigerating warehouses [0093] & [0101] meet the claimed air conditioner being residential or commercial. Similar rationale applies regarding the claimed heat transfer system being designed for use with R-410A; heat transfer systems capable of containing R-410A merely requires a heat exchanger, which Takigawa et al. certainly includes via condensers and/or evaporators (Id.); if more is required, i.e., the system designed for use with R-410A requires vapor compression of R-410A which is a refrigerant capable of vapor-compression, Takigawa et al.’s apparatus containing a circuit of a compressor, condenser, expansion mechanism, and evaporator as essential components [0102] is a vapor-compression circuit and thus has all the unit ops capable of utilizing R-410A as claimed. If this were not enough, note that Takigawa et al. teach R-410A as a potential alternative refrigerant suitable for their invention [0096].
This reference differs from the claimed subject matter in that it does not disclose a composition which reads on Applicant’s claims with sufficient specificity to constitute anticipation.
However, at the time of the effective filing date it would have been obvious at the time the invention was made to make such a composition, because this reference teaches that all of the ingredients recited by Applicants are suitable for inclusion in a refrigerant composition. The person of ordinary skill in the refrigeration art would expect the recited compositions to have properties similar to those compositions which are exemplified, absent a showing to the contrary.
In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed Cir. 1990).
Takigawa et al. teach refrigerant blends of difluoromethane and iodotrifluoromethane as described above which meet and encompass the claimed concentrations of about 35-70 wt.% trifluoroiodomethane and about 5-50 wt.% difluoromethane (HFC-32). Nevertheless, in the event Takigawa et al. fail to sufficiently meet these limitations, the claimed concentrations of trifluoroiodomethane and difluoromethane are obvious further in view of Nimitz et al.
Nimitz et al. is similarly drawn to fluoroiodocarbon-based refrigerant compositions (abstract). Specifically Nimitz et al. teaches effective, environmentally safe, nonflammable, low-toxicity refrigerants comprising a fluoroiodocarbon and additives, miscible with common lubricants (Id. & col. 13 lines 1-26). Exemplary refrigerant blends include, among others, trifluoroiodomethane (CF3I) and difluoromethane in an approximate mol ratio of 20:80 (Table 5), which corresponds to a mass ratio of about 48.5:51.5 and within the claimed concentration ranges. Additionally, Nimitz et al. specifies trifluoroiodomethane as a preferred fluoroiodocarbon species (Table 3 in col. 10) as well as difluoromethane as a “preferred additive to be blended with the fluoroiodocarbon”, i.e., the trifluoroiodomethane, (Table 4 among col. 10 & 11), encompassing 1-99/99-1 wt.% refrigerant blends of trifluoroiodomethane and difluoromethane.
At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide the trifluoroiodomethane and difluoromethane refrigerant blend(s) as taught by Nimitz et al. as the difluoromethane/trifluoroiodo-methane-based refrigerant composition in Takigawa et al. utilizing Takigawa et al.’s newer lubricant and stabilizer blends/technology in order to obtain a stabilized, effective, environmentally safe, nonflammable, and low-toxicity refrigerant composition with a reasonable expectation of success.
Claims 21, 32, 33, 36, and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Takigawa et al. (US 2013/0207024 A1) optionally in view of Nimitz et al. (US 5,444,102 A) as applied to claims 1-11, 22-31, 34, 35, and 38-45 above, and further in view of either Funakura et al. (JP 08-277389 A) or Hulse et al. (US 2010/0044619 A1).
The disclosure of Takigawa et al. optionally in view of Nimitz et al. is relied upon as set forth above.
The above reference(s) amount to teaching a heat transfer composition comprising a refrigerant comprising/overlapping the broad claimed concentration of about 35-70 wt.% trifluoroiodomethane/CF3I and about 5-50 wt.% difluoromethane/HFC-32. While Takigawa et al. further teach all of difluoromethane, pentafluoroethane, and trifluoroiodomethane individually or in combination as preferred compounds for inclusion in their refrigerant [0095]-[0096], Takigawa et al. and Nimitz et al. fail to teach a refrigerant consisting of the narrower concentrations of 41%±1% by weight (i.e., 40-42 wt.%) difluoromethane/HFC-32, 3.5%±0.5% by weight (i.e., 3-4 wt.%) pentafluoroethane/HFC-125, and 55.5%±0.5% by weight (i.e., 55-56 wt.%) trifluoroiodomethane/CF3I of dependent claims 21, 32, 33, 36, and 37.
However, Funakura et al. teach a working fluid composition, i.e., refrigerant, containing, as the only components, 35-80wt.% of trifluoroiodomethane and either or both of ≤40wt.% of a difluoromethane and ≤65wt.% of pentafluoroethane. Note the “either or both of” means that both the difluoromethane and pentafluoroethane can be present for a refrigerant consisting of difluoromethane, pentafluoroethane, and trifluoroiodomethane. See also the ternary diagram containing all three components, Fig. 1. The disclosed ranges overlap/touch those claimed – the concentration of difluoromethane touches/overlaps that claimed, the concentration of pentafluoroethane overlaps that claimed, and the concentration of trifluoroiodomethane overlaps that claimed. The refrigerant hardly has any influence on the ozone layer, slight global warming action, and is capable of increasing the capacity/width of a working fluid (abstract). Funakura et al. further teach the refrigerant is nonflammable because both trifluoroiodomethane and pentafluoroethane are intrinsically nonflammable and the concentration of difluoromethane is limited to its nonflammable range [0007].
Alternatively, Hulse et al. teach heat transfer system based on difluoromethane (R-32) and trifluoroiodomethane (CF3I) [0073]+. The R-32 is present at about 1-80% by weight of the compositions [0074]. CF3I may be present at about 5-98% by weight [0075]. Possible third components include pentafluoroethane (R-125) [0076]. See Table 1, at the top of the left col. on p.9, which discloses that R-125 may be present at 1-30% by weight. This combination of preferred ranges overlaps those of the claimed difluoromethane, pentafluoroethane, and trifluoroiodomethane composition. Furthermore, Table 2, near the bottom of the left col. on p.9, discloses that R-125 has a relatively high GWP of 3400, which would motivate experimentation at the low end of the 1-30% range of R-125. Hulse et al. teach the compositions do not deplete the ozone layer, do not cause unwanted levels of global warming, and remain suitable as heat transfer compositions having excellent heat transfer properties, chemical stability, low to no toxicity, low to no flammability, and lubricant compatibility that renders them applicable as retrofit/replacement compositions for prior systems (para. 0009, 0010, & 0087).
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 the refrigerant blend consisting of difluoromethane, pentafluoroethane, and trifluoroiodomethane as taught by Funakura et al. as the trifluoroiodomethane/saturated fluorohydrocarbon-based refrigerant composition in Takigawa et al. utilizing Takigawa et al.’s lubricant and stabilizer blends/technology in order to obtain a stabilized, effective, environmentally safe, and nonflammable heat transfer/refrigerant composition with a reasonable expectation of success. Alternatively, at the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to provide a refrigerant blend consisting of difluoromethane, pentafluoroethane, and trifluoroiodomethane as taught by Hulse et al. as the trifluoroiodomethane/saturated fluorohydrocarbon-based refrigerant composition in Takigawa et al. utilizing Takigawa et al.’s lubricant and stabilizer blends/technology in order to obtain a stabilized, effective, environmentally safe, low/nontoxic, and low/nonflammable heat transfer/refrigerant composition with a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 11/13/2025 have been fully considered but they are not persuasive.
Regarding the double patenting rejections of record and in response to Applicant’s request to hold the double patenting rejections in abeyance, holding in abeyance a response, such as a terminal disclaimer to double patenting rejection(s), cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP § 804 (I)(B)(1): “As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Regarding the prior art rejections, Applicant generally argues that the present claimed alkylated naphthalene in the claimed heat transfer composition comprising the claimed refrigerant and the claimed lubricant is a critical range that possess unexpected results of stability performance. Applicant alleges Examples 1-17 and Comparative Example 1 in the specification establish the use of alkylated naphthene (“AN”) as a stabilizer in the claimed concentration ranges produces dramatic and unexpectedly superior results compared to compositions outside the claimed range (0% AN and 10% AN).
Note that Applicant’s arguments to the claims producing unexpected results (p.10-12 of the response filed on 11/13/2025) appear to be nearly identical, if not identical, to those previously set forth and addressed in the prior response (see p.10-12 of the response filed 03/17/2025).
In response, Applicant’s arguments are not persuasive for the reasons of record set forth in the Final Office action mailed 05/13/2025 that previously addressed these same arguments: The arguments and allegations to unexpected results are not persuasive because, as similarly set forth in the prior Office action(s), the data of the comparative showing is and remains not commensurate in scope with the claimed invention. The examples are drawn/limited to provision of particular stabilizer compounds, if not one single very particular alkylated naphthalene compound optionally with a very particular acid depleting moiety compound, provided in particular concentrations to very particular, narrow refrigerant compositions whereas independent claim 1 is not drawn/limited to such particular stabilizer compounds/concentrations nor the particular narrow refrigerant composition but rather a blend of two refrigerant compositions across a broad range of concentrations. Note that the cited working examples seem to be focused on comparing one particular species of alkylated naphthalene compound while the claims permit the inclusion of any alkylated naphthalene and include a genus of potentially hundreds of distinct alkylated naphthalene compounds. See also the similar response to arguments in the previous Office actions mailed 10/15/2024 and 05/13/2025. See also the similar response to arguments in the previous Office action mailed 03/23/2023 where Applicant’s assertion the present claims produce unexpected advantage in stability in terms of both TAN and R32% was not persuasive because the proposed results were/are not commensurate in scope with the claimed invention. MPEP 716.02(d).
Applicant further states they were in the process of conducting additional testing to submit additional data an analysis to establish evidence in support of the allegation of unexpected results, which is why a three month request for suspension of action was filed.
In response, the arguments of record are not persuasive to overcome the 103 rejections of record because, over four months have passed since the request for suspension was filed and no additional data/analysis to perfect or support Applicant's allegation of unexpected results has been timely filed.
Accordingly, the rejections are maintained for the reasons of record.
The remaining references listed on Forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or described above.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
March 23, 2026