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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/05/2025 has been entered.
Claims 1 and 3-8 are currently pending and under examination.
The rejection of claims 1, 3, and 5-8 under 35 U.S.C. 103 as being unpatentable over Hashimoto (JP 2015-229767 A, hereinafter Hashimoto) is withdrawn in view of the above amendments.
The rejection of claim 4 under 35 U.S.C. 103 as being unpatentable over Hashimoto (JP 2015-229767 A, hereinafter Hashimoto), and further in view of Fukushima (US 2016/0355719 A1, hereinafter Fukushima) is withdrawn in view of the above amendments.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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.
1. Claims 1, 3, and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto (JP 2015-229767 A, hereinafter Hashimoto) in view of Itano (WO 2017/171090 A1, see US 2020/0308463 A1, hereinafter Itano).
Regarding claim 1, Hashimoto teaches a working fluid comprising (E)-HFO-1132, and a first compound, wherein the first compound is HFO-1132a, and the first compound is less than 1.5 mass% based on the total amount of the working fluid (para [0018]). Hashimoto teaches that the working fluid further comprises HFC-32 and HFO-1234yf (para [0024], [0031]), wherein (E)-HFO-1132 is 20 mass% or more and less than 70 mass% based on the total amount of the three components of (E)-HFO-1132, HFC-32, and HFO-1234yf; HFC-32 is 30 mass% or more and 75 mass% or less based on the total amount of the three components of (E)-HFO-1132, HFC-32, and HFO-1234yf; HFO-1234yf is 5 mass % or more and 50 mass % or less based on the total amount of the three components of (E)-HFO-1132, HFC-32, and HFO-1234yf (para [0031]).
Thus, (E)-HFO-1132 of Hashimoto is 20 mass% or more and less than 70 mass% based on the total amount of the working fluid. HFO-1234yf of Hashimoto is 5 mass % or more and 50 mass % or less based on the total amount of the working fluid. HFC-32 of Hashimoto is 30 mass% or more and 75 mass% or less based on the total amount of the working fluid. Hashimoto also teaches that by setting the ratio of each component within the above-mentioned range, a working fluid will have sufficient cycle performance and less impact on global warming (para [0032]).
Hashimoto does not teach a single embodiment with all the claimed elements together.
However, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make a working fluid comprising (E)-HFO-1132, and a first compound such as HFO-1132a, further comprising HFC-32 and HFO-1234yf as taught by Hashimoto, wherein (E)-HFO-1132 is in an amount of 20 mass% or more and less than 70 mass%, HFO-1132a is in an amount of less than 1.5 mass%, HFC-32 is in an amount of 30 mass% or more and 75 mass% or less, and HFO-1234yf is in an amount of 5 mass % or more and 50 mass % or less based on the total amount of the working fluid. For doing so, the working fluid will have sufficient cycle performance and less impact on global warming with a reasonable expectation of success, because by setting the ratio of each component within the above-mentioned range, a working fluid will have sufficient cycle performance and less impact on global warming as art recognized.
Furthermore, the working fluid of Hashimoto comprises (E)-HFO-1132 in an amount of 20 mass% or more and less than 70 mass%, HFO-1132a in an amount of less than 1.5 mass%, HFC-32 in an amount of 30 mass% or more and 75 mass% or less, and HFO-1234yf in an amount of 5 mass % or more and 50 mass % or less, which overlaps with the claimed range of a figure surrounded by straight lines OC, CD, DE, EJ, JF, and FO when 33.4 < a ≤ 41.7.
The Examiner has carefully plotted the working fluid of Hashimoto comprising (E)-HFO-1132 in an amount of 20 mass% or more and less than 70 mass%, HFO-1132a in an amount of less than 1.5 mass%, HFC-32 in an amount of 30 mass% or more and 75 mass% or less, and HFO-1234yf in an amount of 5 mass % or more and 50 mass % or less, against the claimed range of a figure surrounded by straight lines OC, CD, DE, EJ, JF, and FO when a is 37.8 in a ternary diagram:
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In the ternary diagram above, the figure with a solid black color is the overlapping area. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Hashimoto does not teach that the water is present in a content ratio of 0.1 mass% or less based on the composition.
However, Itano teaches a composition comprising difluoromethane (R32), pentafluoroethane (R125), 1,1,1,2-tetrafluoroethane (R134a), 2,3,3,3-tetrafluoropropene (1234yf), and water, wherein the water is in an amount of 0.1 wt % or less in the composition ([0171]), which overlaps with the claimed range of “0.1 mass% or less”.
Itano also teaches when the composition contains water, the double bonds in the molecules of the unsaturated fluorinated hydrocarbons contained in the composition can be stably present, and oxidation of the unsaturated fluorinated hydrocarbons is less likely to occur, consequently improving the chemical stability of the composition ([0174]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make a working fluid comprising (E)-HFO-1132, HFO-1132a, HFC-32, and HFO-1234yf as taught by Hashimoto, further comprising water in an amount of 0.1 wt % or less in the composition as taught by Itano, in order to stabilize the double bonds in the molecules of the unsaturated fluorinated hydrocarbons contained in the composition, thereby improving the chemical stability of the composition with a reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 3, as discussed in claim 1 above, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make a working fluid comprising (E)-HFO-1132, and a first compound such as HFO-1132a, further comprising HFC-32 and HFO-1234yf as taught by Hashimoto, wherein (E)-HFO-1132 is in an amount of 20 mass% or more and less than 70 mass%, HFO-1132a is in an amount of less than 1.5 mass%, HFC-32 is in an amount of 30 mass% or more and 75 mass% or less, and HFO-1234yf is in an amount of 5 mass % or more and 50 mass % or less based on the total amount of the working fluid. For doing so, the working fluid will have sufficient cycle performance and less impact on global warming with a reasonable expectation of success, because by setting the ratio of each component within the above-mentioned range, a working fluid will have sufficient cycle performance and less impact on global warming as art recognized.
Furthermore, the Examiner has carefully plotted the working fluid of Hashimoto comprising (E)-HFO-1132 in an amount of 20 mass% or more and less than 70 mass%, HFO-1132a in an amount of less than 1.5 mass%, HFC-32 in an amount of 30 mass% or more and 75 mass% or less, and HFO-1234yf in an amount of 5 mass % or more and 50 mass % or less, against the claimed range of a figure surrounded by straight lines AD, DE, EJ, JF, and FA, or on the straight line AD when a is 37.8 in a ternary diagram:
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In the ternary diagram above, the figure with a solid black color is the area as taught by Hashimoto, which is merely close to the claimed range of a figure surrounded by straight lines AD, DE, EJ, JF, and FA, or on the straight line AD when a is 37.8. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See MPEP 2144.05 I. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect that the working fluid of Hashimoto would have the same properties as the claimed composition when a is 37.8. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 5, the limitation “for use as an alternative refrigerant for R410A” is an intended use and does not add structural difference, thus the intended use is extended little patentable weight. See MPEP § 2112.02.
Hashimoto teaches that R410A causes global warming, there is an urgent need to develop a working fluid for heat cycles that has little impact on the ozone layer and a low global warming potential (GWP) (para [0003]).
Hashimoto also teaches that the working fluid developed for heat cycle has little effect on the ozone layer and global warming, is excellent in cycle performance, and is highly productive (para [0009]), and the working fluid comprises (E)-HFO-1132, difluoromethane (HFC-32), 2,3,3,3-tetrafluoropropene (HFO-1234yf), and a first compound such as HFO-1132a (para [0010]-[0011]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to reasonably use the working fluid of Hashimoto comprising (E)-HFO-1132, difluoromethane (HFC-32), 2,3,3,3-tetrafluoropropene (HFO-1234yf), and HFO-1132a, as an alternative refrigerant for R410A, because the working fluid of Hashimoto has little effect on the ozone layer and global warming, is excellent in cycle performance, and is highly productive as art recognized. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 6, Hashimoto teaches that R410A causes global warming, there is an urgent need to develop a working fluid for heat cycles that has little impact on the ozone layer and a low global warming potential (GWP) (para [0003]).
Hashimoto also teaches that the working fluid developed for heat cycle has little effect on the ozone layer and global warming, is excellent in cycle performance, and is highly productive (para [0009]), and the working fluid comprises (E)-HFO-1132, difluoromethane (HFC-32), 2,3,3,3-tetrafluoropropene (HFO-1234yf), and a first compound such as HFO-1132a (para [0010]-[0011]). Hashimoto also teaches that the working fluid is used in a heat cycle system such as a refrigerator (para [0072]-[0073]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to reasonably operate a refrigerator by circulating the working fluid of Hashimoto comprising (E)-HFO-1132, difluoromethane (HFC-32), 2,3,3,3-tetrafluoropropene (HFO-1234yf), and HFO-1132a, in the refrigerator designed for R410A, because the working fluid of Hashimoto has little effect on the ozone layer and global warming, is excellent in cycle performance, and is highly productive as art recognized. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 7, Hashimoto teaches that the working fluid is used in a heat cycle system such as a refrigerator (para [0072]-[0073]), which reads on the claimed refrigerating machine comprising the composition as a working fluid.
Regarding claim 8, Hashimoto teaches that the working fluid is used in a heat cycle system such as a refrigerator (para [0072]-[0073]). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to operate the refrigerator by circulating the working fluid of Hashimoto in the refrigerator, because the working fluid is used in a refrigerator as art recognized. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
2. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto (JP 2015-229767 A, hereinafter Hashimoto) in view of Itano (WO 2017/171090 A1, see US 2020/0308463 A1, hereinafter Itano) as applied to claims 1, 3, and 5-8 above, and further in view of Fukushima (US 2016/0355719 A1, hereinafter Fukushima).
The disclosure of Hashimoto in view of Itano is relied upon as set forth above.
Regarding claim 4, the limitation “for use as a working fluid for a refrigerating machine” is an intended use and does not add structural difference, thus the intended use is extended little patentable weight. See MPEP § 2112.02.
Hashimoto teaches that the working fluid comprises (E)-HFO-1132, difluoromethane (HFC-32), 2,3,3,3-tetrafluoropropene (HFO-1234yf), and a first compound such as HFO-1132a (para [0010]-[0011]). Hashimoto teaches that the working fluid is used in a heat cycle system such as a refrigerator (para [0072]-[0073]).
Hashimoto does not teach a refrigerant oil.
However, Fukushima teaches a working fluid for heat cycle system comprising an unsaturated fluorinated hydrocarbon compound, and a refrigerant oil (para [0013]), wherein the heat cycle system is a refrigerating cycle system (para [0025]), the unsaturated fluorinated hydrocarbon compound can comprise 2,3,3,3-tetrafluoropropene (HFO-1234yf) and 1,2-difluoroethylene (HFO-1132) (para [0014]). Fukushima teaches that the working fluid further comprises a saturated fluorinated hydrocarbon compound, wherein the saturated fluorinated hydrocarbon compound can comprise difluoromethane (HFC-32) (para [0014]). Fukushima also teaches that the refrigerant oil improves lubricating properties of the working fluid (para [0108]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make the working fluid comprising (E)-HFO-1132, difluoromethane (HFC-32), 2,3,3,3-tetrafluoropropene (HFO-1234yf), HFO-1132a, and water as taught by the combination of Hashimoto and Itano, further comprising a refrigerant oil as taught by Fukushima. For doing so, the refrigerant oil will improve the lubricating properties of the working fluid. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Response to Arguments
Applicant's arguments filed 11/05/2025 have been fully considered but they are not persuasive.
1. Applicant's arguments with respect to the prior rejections have been considered but are moot, because the arguments do not apply to all of the references being used in the current rejection. The current rejection utilizes a new reference, Itano (WO 2017/171090 A1, see US 2020/0308463 A1), in addition to the previous references Hashimoto (JP 2015-229767 A) and Fukushima (US 2016/0355719 A1) under a new ground(s) of rejection which renders obvious the instant claims.
As stated above, claims 1, 3, and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto (JP 2015-229767 A, hereinafter Hashimoto) in view of Itano (WO 2017/171090 A1, see US 2020/0308463 A1, hereinafter Itano).
2. Applicant argues that the experimental results (Sample Nos. 1-20 in Table A) in the Declaration filed 11/05/2025, indicate that the stability of a refrigerant composition is improved by containing 0.1 mass% or less (1000 mass ppm or less) of water based on the entire refrigerant composition; this effect achieved by water is unexpected (p. 10).
In response, Applicant’s argument is not persuasive.
After careful and full consideration of its contents, the declaration under 37 CFR 1.132 filed 11/05/2025 is insufficient to overcome the 103 current grounds of rejection over Hashimoto (JP 2015-229767 A) in view of Itano (WO 2017/171090 A1, see US 2020/0308463 A1).
Firstly, the Office’s position is the declaration’s comparative showing does not rise to a level of establishing unexpected results because, based upon the teachings of the applied prior art of record, the resultant increase in relative stability when water is added in an amount of 0.1 mass% or less (i.e., 0 ppm water to 1,000 ppm water, both inclusive) is merely an expected beneficial result.
As cited in the rejection of record, Itano teaches when the composition contains water, the double bonds in the molecules of the unsaturated fluorinated hydrocarbons contained in the composition can be stably present, and oxidation of the unsaturated fluorinated hydrocarbons is less likely to occur, consequently improving the chemical stability of the composition ([0174]). Itano also teaches that a composition comprises water in an amount of 0.1 wt % or less in the composition ([0171]), which overlaps with the claimed range of “0.1 mass% or less”.
"Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967).
Secondly, the experimental results (Sample Nos. 1-20 in Table A) in the Declaration filed 11/05/2025, are no probative value in the determining patentability of claims since they do not involve a comparison of Applicant's invention with the closest applied prior art.
Sample Nos. 1-20 in Table A of the Declaration are limited to compositions with 0.1 mass% or less (1000 mass ppm or less) of water, compared to comparative examples lacking water, or comparative examples with 0.5 mass% (5000 mass ppm) of water.
However, as stated above, claims 1, 3, and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto (JP 2015-229767 A, hereinafter Hashimoto) in view of Itano (WO 2017/171090 A1, see US 2020/0308463 A1, hereinafter Itano).
The teaching of the combination of Hashimoto and Itano constitutes closer prior art than Applicant's comparative examples in Table A of the Declaration, because water in an amount of 0.1 wt % or less in the composition is expressly taught by Itano (Itano [0171]). See In re De Blawe, 222 USPQ 191 (FED. Cir. 1984), and In re Fenn, 208 USPQ 470 (CCPA 1981). See MPEP § 716.02(e).
Even if, arguendo, the comparison was done between Applicant's invention and the closest prior art, the claims are not deemed patentable over the reference of record since the claims are not commensurate in scope with the probative value of data in Sample Nos. 1-20 of Table A. The claims are not commensurate in scope with the comparative showing, because Sample Nos. 1-20 of Table A are limited to a refrigerant comprising 23.0 mass% of HFO-1132(E), 44.0 mass% of R32, 31.5 mass% of R1234yf, 1.5 mass% of HFO-1132a, whereas the claims broadly include any refrigerant comprising from 5.7 mass% to 62.2 mass% of HFO-1132(E), from more than 0 mass% to 74 mass% of R32, from more than 0 mass% to 50 mass% of R1234yf, from more than 0 mass% to 26 mass% HFO-1132a. See In re Clemens, 206 USPQ 289 (CCPA 1980).
Thirdly, note examples in the declaration like No. 2 and No. 17 that both contain the same amount of water within the claimed range (10 ppm or 0.001 wt.% water) but have vastly different acid contents (<1 ppm and 400 ppm, respectively), which Applicant indicates is indicative of less stability. It is unclear how such a degradation in stability with the amount of water within the claimed range as in declaration example No. 17 constitutes an unexpected result. A similar rationale could be made comparing many other pairs of the declaration examples.
The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). Applicants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness. Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992).
Conclusion
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/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761