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 .
This action is responsive to Applicant's remarks/declaration filed 06/08/2026.
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) in view of Itano (WO 2017/171090 A1, see US 2020/0308463 A1) is maintained in the view of the above remarks/declaration.
The rejection of claim 4 under 35 U.S.C. 103 as being unpatentable over Hashimoto (JP 2015-229767 A) in view of Itano (WO 2017/171090 A1, see US 2020/0308463 A1), and further in view of Fukushima (US 2016/0355719 A1) is maintained in the view of the above remarks/declaration.
The rationale of record remains the same. See pages 3 to 12 of the Non-Final Office action filed 01/09/2026.
The declaration under 37 CFR 1.132 filed 06/08/2026 is insufficient to overcome the rejections as set forth in the Non-Final Office action filed 01/09/2026 because of the following reasons.
Response to Arguments
Applicant's arguments filed 06/08/2026 have been fully considered but they are not persuasive.
1. Applicant argues that Hashimoto fails to suggest a selection of HFO-1132a from the five first compounds; a person skilled in the art would not be motivated to obtain the composition according to Claim 1 of the present application in view of Hashimoto's teachings (Remarks, p. 10).
In response, Applicant’s arguments are not persuasive.
Hashimoto teaches (para [0018]) that a working fluid comprises (E)-HFO-1132, and a first compound, wherein the first compound is at least one selected from the group consisting of HFO-1132a, HFO-1141, HFC-161, (Z)-HFO-1132 and ethylene. Therefore, a person of skill in the art reading Hashimoto would still “at once envisage” HFO-1132a from the five compounds, because there are only five compounds in the Markush group.
Please note, a reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)). In Kennametal, the challenged claim was to a cutting tool requiring a ruthenium binding agent with a physical vapor deposition (PVD) coating. The reference described all the elements of the claimed coated cutting tool but did not explicitly disclose the specific combination of ruthenium binding agent with a PVD coating. However, the reference disclosed that ruthenium was one of five specified binding agents and PVD was one of three suitable coating techniques. The Federal Circuit stated that the reference’s “express ‘contemplat[ion]’ of PVD coatings provided sufficient evidence that a reasonable mind could find that a person of skill in the art… would immediately envisage applying a PVD coating. Thus, substantial evidence supports the Board's conclusion that [the reference] effectively teaches 15 combinations, of which one anticipates pending claim 1. Though it is true that there is no evidence in [the reference] of ‘actual performance’ of combining the ruthenium binder and PVD coatings, this is not required.” Kennametal, 780 F.3d at 1383, 114 USPQ2d at 1255 (citations omitted). See also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 1274, 122 USPQ2d 1116, 1120 (Fed. Cir. 2017). See MPEP 2131.02. III.
Hashimoto also teaches that the working fluid further comprises HFC-32 and HFO-1234yf (para [0024], [0031]). Hashimoto further 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]).
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, 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.
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. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
2. Applicant argues that as shown in the Declaration filed 06/08/2026, selecting HFO-1132a results in the highest refrigerating capacity, and that this technical effect is unexpected, and it cannot be inferred from the disclosure of Hashimoto; the cycle performance of the mixed refrigerant was only significantly improved when HFO-1132a was present as an additional compound, even in a trace amounts; when an additional refrigerant other than HFO-1132a was contained at 0.5 to 1.5 mass%, the cycle performance deteriorated under all conditions compared to Ex. 1, which did not contain an additional refrigerant; when HFO-1141 was contained at 3.0 mass% or more as an additional refrigerant, the cycle performance of the mixed refrigerant was improved compared to Ex. 1, but to a smaller degree compared to HFO-1132a (Table D); when Z-HFO-1132 and R161 were contained, the cycle performance deteriorated even when the content of the additional refrigerant was increased to 10 mass% (Tables B and C) (Remarks, pp. 10-11; Declaration, Tables A-D, pp. 6-7).
In response, Applicant’s arguments are not persuasive.
Hashimoto teaches (para [0018]) that a working fluid comprises (E)-HFO-1132, and a first compound, wherein the first compound is at least one selected from the group consisting of HFO-1132a, HFO-1141, HFC-161, (Z)-HFO-1132 and ethylene.
Hashimoto also teaches (para [0023]) that when the total content of the first compounds is less than 1.5 mass % based on the total amount of the working fluid, a working fluid having sufficiently excellent cycle performance can be obtained.
In response to Applicant's argument that the cycle performance of the mixed refrigerant was only significantly improved when HFO-1132a was present as an additional compound, even in a trace amounts, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (The prior art taught combustion fluid analyzers which used labyrinth heaters to maintain the samples at a uniform temperature. Although appellant showed that an unexpectedly shorter response time was obtained when a labyrinth heater was employed, the Board held this advantage would flow naturally from following the suggestion of the prior art.). See also Lantech Inc. v. Kaufman Co. of Ohio Inc., 878 F.2d 1446, 12 USPQ2d 1076, 1077 (Fed. Cir. 1989), cert. denied, 493 U.S. 1058 (1990) (unpublished — not citable as precedent) ("The recitation of an additional advantage associated with doing what the prior art suggests does not lend patentability to an otherwise unpatentable invention."). See MPEP 2145.II.
3. Applicant argues that the Declaration filed 06/08/2026 demonstrates that the working fluid disclosed in Hashimoto does not have a high refrigerating capacity comparable to that of R410A (p. 10).
In response, Applicant’s argument is not persuasive.
The instant invention discloses that R410A is a mixed refrigerant of HFC-32 and HFC-125 in a mass ratio of 1:1 (instant US [0002], [0353]).
Tables A-D of the Declaration filed 06/08/2026 do not compare the working fluid disclosed in Hashimoto with R410A. Therefore, the Office does not understand how Applicant gets the conclusion that the Declaration filed 06/08/2026 demonstrates that the working fluid disclosed in Hashimoto does not have a high refrigerating capacity comparable to that of R410A.
4. Applicant argues that the Examples in Table 3 of Hashimoto show that the refrigerating capacity decreases regardless of which compound is selected as the first compound, see below:
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;
based on such Examples, a person skilled in the art would not have considered deliberately selecting and adding HFO-1132a, which is an impurity and the first compound, to the mixed refrigerant (Declaration, p. 7).
In response, Applicant’s argument is not persuasive.
Hashimoto teaches (para [0018]) that a working fluid comprises (E)-HFO-1132, and a first compound, wherein the first compound is at least one selected from the group consisting of HFO-1132a, HFO-1141, HFC-161, (Z)-HFO-1132 and ethylene.
Hashimoto also teaches (para [0023]) that when the total content of the first compounds is less than 1.5 mass % based on the total amount of the working fluid, a working fluid having sufficiently excellent cycle performance can be obtained; the total content of the first compounds is preferably 4 ppm or more (i.e. 0.0004 mass %) based on the total amount of the working fluid.
Furthermore, the Examples in Table 3 of Hashimoto show that when the first compound is contained at 0.1 wt.%, the evaluation is
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, which means the refrigerating capacity is excellent.
Therefore, a person skilled in the art would have considered adding a first compound such as HFO-1132a in the working fluid as taught by Hashimoto, because when the total content of the first compounds is 4 ppm or more and less than 1.5 mass % based on the total amount of the working fluid, a working fluid having sufficiently excellent cycle performance can be obtained as recognized by Hashimoto.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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