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 amendments/remarks filed 08/05/2025.
Claims 1, 4, 5, 7-11, 14, 17, 18, 21, 24, and 25 are currently pending.
Applicant’s election without traverse of HFO-1234yf as the fluoroolefin species and HFC-125 as the optional refrigerant species in the reply filed on 01/16/2025 is acknowledged.
Claim 7 has been amended to recite a nonelected fluoroolefin species (i.e. HFO-1234ze), therefore is withdrawn in view of Applicant’s amendment.
Claims 10 and 11 remain withdrawn because they are drawn to nonelected species.
Claim 14 depends from claim 7, therefore is also withdrawn.
Claim 17 remains withdrawn because it is drawn to nonelected species.
Therefore, claims 1, 4, 5, 8, 9, 18, 21, 24, and 25 are currently under examination.
The rejection of claim 12 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the above amendments.
The rejection of claims 7, 12, 14, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Howell (US 2010/0288965 A1, hereinafter Howell) is withdrawn in view of the above amendments.
The rejection of claims 1, 4, 5, 7-9, 12, 14, 18, 19, 24, and 25 on the ground of nonstatutory double patenting as being unpatentable over claims 1-36 of U.S. Patent No. 12,134,726 B2 is withdrawn in view of the filed Terminal Disclaimer.
The rejection of claims 1, 4, 5, 7-9, 12, 14, 18, 19, 21, 24, and 25 provisionally on the ground of nonstatutory double patenting as being unpatentable over claims 25, 28, 32, 34, 36, 40-45, and 47 of copending Application No. 17/047,860 is withdrawn in view of the filed Terminal Disclaimer.
The rejection of claims 1, 4, 5, 7-9, 12, 14, 18, 19, 24, and 25 provisionally on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8-10, 13, 14, 19, 21, and 24-26 of copending Application No. 18/233,444 is withdrawn in view of the filed Terminal Disclaimer.
The rejection of claims 1, 4, 5, 8, 9, 18, 21, 24, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Howell (US 2010/0288965 A1, hereinafter Howell) is maintained 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 Objections
Claims 1 and 21 are objected to because of the following informalities:
Claim 1 recites “air, present in said composition at a concentration of 1,000 to 10,000 ppm”. Applicant is suggested to delete the comma, a punctuation mark, after “air”. Applicant is suggested to revise it as “air present in said composition at a concentration of 1,000 to 10,000 ppm” for clarity.
Claim 21 recites “d-limomene”. Applicant is suggested to revise it as “d-limonene” for clarity.
Claim 21 recites “an amount tof air corresponding to…”. Applicant is suggested to revise it as “an amount of air corresponding to…” for clarity.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “at least one inhibitor present in said composition at a concentration of 50 to 1,000 ppm” and “air present in said composition at a concentration of 1,000 to10,000 ppm”.
Claim 21 recites “said at least one inhibitor is present in said exposed composition at a concentration of 50 to 1,000 ppm”.
It is unclear whether the “ppm” refers to mass fraction or volume fraction. The instant invention discloses that the inhibitor is present in an amount of about 30 to about 3,000 ppm (by weight) (instant US Publication [0033]), the initiator compounds (e.g. air) can be present in an amount from about 1,000 to about 10,000 ppm by weight (instant US Publication [0048]). Thus, for the purpose of the compact prosecution, the limitation “ppm” in claims 1 and 21 is interpreted as “ppm by weight”.
Claim 21 recites “contacting said exposed composition with an amount of at least one inhibitor”. There is insufficient antecedent basis for this limitation “said exposed composition” in the claim.
Appropriate correction is required.
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, 4, 5, 8, 9, 18, 21, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Howell (US 2010/0288965 A1, hereinafter Howell) as evidenced by “2,3,3,3-tetrafluoropropene” (“2,3,3,3-tetrafluoropropene Information from INCHEM”, 2014, hereinafter “2,3,3,3-tetrafluoropropene”), and “Difluoromethane” (“Difluoromethane Information from Linde”, 2023, hereinafter “Difluoromethane”).
Regarding claims 1 and 4, claim 1 recites a composition comprising an amount of oligomeric, homopolymers or other polymeric products derived from the fluoroolefin, wherein the oligomeric, homopolymers or other polymeric products derived from the fluoroolefin are present in said composition at a concentration of less than 0.003 wt%. This limitation is interpreted as zero being inclusive to less than 0.003 wt% of the oligomeric, homopolymers or other polymeric products derived from the fluoroolefin, as a broadest reasonable interpretation.
Howell teaches a composition comprising at least one fluoroolefin, and an effective amount of a stabilizer (para [0007]-[0008]), wherein the fluoroolefin is HFC-1234yf (para [0041], Table 3, claim 7).
Howell teaches that the composition further comprises at least one additional compound, wherein the additional compound can be a hydrofluorocarbon (para [0176], claim 3), and the hydrofluorocarbon can be difluoromethane (HFC-32) (para [0177], [0183]). Howell specifically teaches a composition comprising HFC-1234yf and HFC-32 (para [0183]).
Howell teaches that the stabilizer can comprise d-limonene (para [0061], claim 5). Howell also teaches that the effective amount of the stabilizer is from about 0.001 weight percent to about 10 weight percent based on the total weight of the composition (para [0190]), equaling to 10 ppm to 100,000 ppm, which overlaps with the claimed range of “50 to 1,000 ppm”.
Howell also teaches that an effective amount of a stabilizer is added to reduce the degradation of the composition comprising fluoroolefin ([0011]), and the degradation of fluoroolefin is caused by the presence of inadvertent air in a refrigeration, air-conditioning or heat pump system (para [0011]). Howell teaches that the composition works as a heat transfer fluid in a refrigeration, air-conditioning, and heat pump system (para [0014]). Thus, the air is present in the composition of Howell.
Howell further teaches that the composition can comprise 2 volume % air ([0203]).
The “2,3,3,3-tetrafluoropropene” as an evidentiary reference shows that 2,3,3,3-tetrafluoropropene (i.e. HFC-1234yf) has a vapor density of 4 when air is 1 (p. 2, § PHYSICAL & CHEMICAL INFORMATION).
The “Difluoromethane” as an evidentiary reference shows that difluoromethane (i.e. HFC-32) has vapor density of 1.8 when air is 1 (p. 9, § SECTION 9: Physical and chemical properties).
Therefore, in the composition comprising HFC-1234yf and HFC-32 as taught by Howell, the air can be present in an amount of from 5,100 ppm to 11,000 ppm by weight, which overlaps with the claimed range of “1,000 to10,000 ppm”.
Howell does not teach that the composition comprises oligomeric, homopolymers or other polymeric products derived from the fluoroolefin.
However, Howell teaches that an effective amount of a stabilizer is added to reduce the degradation of the composition comprising fluoroolefin ([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 expect that the claimed amount of oligomeric, homopolymers or other polymeric products derived from the fluoroolefin, would flow naturally from the teaching of Howell, because the teaching of Howell provides substantially the same composition comprising HFO-1234yf, HFC-32, the same amount of an inhibitor, and the same amount of air as claimed, and also because the stabilizer (the claimed inhibitor) in Howell is added to reduce the degradation of fluoroolefin as recognized by Howell. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 5, the instant invention discloses that POE stands for polyol esters, PAG stands for polyalkylene glycols, and PVE stands for polyvinyl ethers (instant p. 33, ll. 13-15).
Howell teaches that the composition further comprises at least one lubricant (para [0185]), wherein the lubricant comprises polyol esters (POEs), polyalkylene glycols (PAGs), and/or polyvinyl ethers (PVEs) (para [0186]).
Regarding claim 8, Howell teaches that the composition further comprises at least one additional compound (para [0176], claim 3), wherein the additional compound can be a hydrofluorocarbon (para [0176], claim 3), and the hydrofluorocarbon can comprise pentafluoroethane (HFC-125) (para [0177], [0183]).
Regarding claim 9, Howell teaches that the stabilizer (the claimed inhibitor) comprises d-limonene (para [0061]).
Regarding claim 18, Howell teaches a composition comprising at least one fluoroolefin, and an effective amount of a stabilizer (the claimed inhibitor) (para [0007]-[0008]), wherein the fluoroolefin is HFC-1234yf (para [0041], Table 3, claim 7). Howell teaches that the composition further comprises at least one additional compound (para [0176]), wherein the additional compound can be a hydrofluorocarbon (para [0176]), and the hydrofluorocarbon can be difluoromethane (HFC-32) (para [0177]).
While Howell teaches that both ammonia and CF3I may be provided as additional compounds in the composition (para [0176]), note that Howell teaches that the compositions “may further comprise” these compounds and lists these compounds in the alterative disclosing their optionality rather than being out-right required, implying to a person of ordinary skill in the art these compounds may be provided as well as excluded from the disclosed compositions with a reasonable expectation of success.
Regarding claim 21, the terms “reducing formation of oligomers and homopolymers” and “that is effective to result in an amount of oliqomeric, homopolymer or other polymer product formation” are an intended result/use, and do not add structural difference, thus the intended result/use is extended little patentable weight. See MPEP § 2112.02.
Howell teaches a method for reducing degradation of a composition comprising at least one fluoroolefin, wherein said degradation is caused by the presence of inadvertent air in a refrigeration, air-conditioning or heat pump system, said method comprising adding an effective amount of a stabilizer to the composition (para [0011]).
Howell teaches that the composition further comprises at least one additional compound (para [0176]), wherein the additional compound can be a hydrofluorocarbon (para [0176]), and the hydrofluorocarbon can be difluoromethane (HFC-32) (para [0177]). Howell specifically teaches a composition comprising HFC-1234yf and HFC-32 (para [0183]).
Howell teaches that the stabilizer comprises d-limonene (para [0061]). Howell also teaches that the effective amount of the stabilizer is from about 0.001 weight percent to about 10 weight percent based on the total weight of the composition (para [0190]), equaling to 10 ppm to 100,000 ppm, which overlaps with the claimed range of “50 to 1,000 ppm”.
Howell teaches that the composition works as a heat transfer fluid in a refrigeration, air-conditioning, and heat pump system (para [0014]), and the degradation of fluoroolefin is caused by the presence of inadvertent air in a refrigeration, air-conditioning or heat pump system (para [0011]). Thus, the composition of Howell exposes to air.
Howell further teaches that the composition can comprise 2 volume % air ([0203]).
The “2,3,3,3-tetrafluoropropene” as an evidentiary reference shows that 2,3,3,3-tetrafluoropropene (i.e. HFC-1234yf) has a vapor density of 4 when air is 1 (p. 2, § PHYSICAL & CHEMICAL INFORMATION).
The “Difluoromethane” as an evidentiary reference shows that difluoromethane (i.e. HFC-32) has vapor density of 1.8 when air is 1 (p. 9, § SECTION 9: Physical and chemical properties).
Therefore, in the composition comprising HFC-1234yf and HFC-32 as taught by Howell, the air can be present in an amount of from 5,100 ppm to 11,000 ppm by weight, which overlaps with the claimed range of “1,000 to10,000 ppm”.
Howell does not teach the amount of oligomeric, homopolymers or other polymer products derived from the fluoroolefin.
However, Howell teaches that an effective amount of a stabilizer is added to reduce the degradation of the composition comprising fluoroolefin ([0011]).
"Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 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 claimed amount of oligomeric, homopolymers or other polymer products derived from the fluoroolefin, would flow naturally from the teaching of Howell, because the teaching of Howell provides substantially the same method for reducing the degradation of fluoroolefin, comprising the steps of exposing the same composition comprising the same fluoroolefin and HFC-32, to the same amount of air, and contacting the composition with the same amount of an inhibitor as claimed, and also because the stabilizer (the claimed inhibitor) in Howell is added to reduce the degradation of fluoroolefin as recognized by Howell. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 24, Howell teaches that the composition works as a heat transfer fluid in a refrigeration system (para [0014]), wherein the refrigeration system can be an intermodal system which can be a container (para [0193]), thereby reading on the claimed container with a refrigerant comprising the composition.
2. Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Howell (US 2010/0288965 A1, hereinafter Howell) as evidenced by “2,3,3,3-tetrafluoropropene” (“2,3,3,3-tetrafluoropropene Information from INCHEM”, 2014, hereinafter “2,3,3,3-tetrafluoropropene”), and “Difluoromethane” (“Difluoromethane Information from Linde”, 2023, hereinafter “Difluoromethane”) as applied to claims 1, 4, 5, 8, 9, 18, 21, and 24 above, and further as evidenced by Elsheikh (US 2010/0181524 A1, hereinafter Elsheikh).
The disclosure of Howell as evidenced by “2,3,3,3-tetrafluoropropene” and “Difluoromethane” is relied upon as set forth above.
Regarding claim 25, Howell teaches that the composition works as a heat transfer fluid in a refrigeration, air-conditioning, or heat pump system (para [0014]).
Elsheikh as an evidentiary reference shows that a refrigeration, air-conditioning, or heat pump system includes an evaporator, a compressor, a condenser, and an expansion device (para [0013]).
Response to Arguments
Applicant's arguments filed 08/05/2025 have been fully considered but they are not persuasive.
1. Applicant argues that Howell discloses the claimed at least one fluoroolefin, and discloses a two groups of fluoroolefins, where HFO-1234yf is included within a multitude of fluoroolefins; the only fluoroolefin included in each of the Examples in Table 4 is HFO-1225ye(E), not HFO-1234yf (p. 6).
In response, Applicant’s argument is not persuasive.
Firstly, Howell teaches a composition comprising at least one fluoroolefin (para [0007]-[0008]), wherein the fluoroolefin is HFC-1234yf (para [0041], Table 3, claim 7). Claim 7 of Howell teaches “said fluoroolefin comprises at least one fluoroolefin selected from the group consisting of HFC-1225ye, HFC-1234yf, HFC-1234ze, and HFC-1243zf”. Thus, among the total of 4 fluoroolefins disclosed in claim 7 of Howell, HFC-1234yf is one of them.
Furthermore, Howell specifically teaches a composition comprising HFC-1234yf and HFC-32 (para [0183]).
Secondly, "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP 2123. Therefore, the Examples in Table 4 of Howell do not constitute a teaching away from a broader disclosure of Howell.
2. Applicant argues that Howell discloses the claimed air concentration, the Examples of Table 4 disclose air concentrations of 2% (corresponding to 20,000 ppm); in contrast, the claimed subject matter requires a specific air concentration of only 1,000 to 10,000 ppm (p. 6, last para; p. 7, 1st para).
In response, Applicant’s argument is not persuasive.
Howell teaches that the degradation of fluoroolefin is caused by the presence of inadvertent air in a refrigeration, air-conditioning or heat pump system (para [0011]). Howell also teaches that the composition works as a heat transfer fluid in a refrigeration, air-conditioning, and heat pump system (para [0014]). Thus, the air is present in the composition of Howell.
Howell further teaches that the composition can comprise 2 volume % air in the Examples of Table 4 ([0203]).
The “2,3,3,3-tetrafluoropropene” as an evidentiary reference shows that 2,3,3,3-tetrafluoropropene (i.e. HFC-1234yf) has a vapor density of 4 when air is 1 (p. 2, § PHYSICAL & CHEMICAL INFORMATION).
The “Difluoromethane” as an evidentiary reference shows that difluoromethane (i.e. HFC-32) has vapor density of 1.8 when air is 1 (p. 9, § SECTION 9: Physical and chemical properties).
Therefore, in the composition comprising HFC-1234yf and HFC-32 as taught by Howell, the air can be present in an amount of from 5,100 ppm to 11,000 ppm by weight, which overlaps with the claimed range of “1,000 to10,000 ppm”.
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.
3. Applicant argues that Howell discloses the claimed concentration of the at least one inhibitor, it generally discloses broad ranges of:
(i) 0.001 to 10 wt.% (corresponding to 10 to 100,000 ppm),
(ii) 0.01 to 5 wt.% (corresponding to 100 to 50,000 ppm),
(iii) 0.3 to 4 wt.% (corresponding to 3,000 to 40,000 ppm), and
(iv) 0.3 to 1 wt.% (corresponding to 3,000 to 10,000 ppm);
in contrast, the claimed subject matter requires at least one inhibitor at a concentration of only 50 to 1,000 ppm; Howell disclosed ranges (iii), and (iv) exclude the claimed range of 50 to 1,000 ppm (p. 7).
In response, Applicant’s argument is not persuasive.
Firstly, Howell teaches that the stabilizer can comprise d-limonene (para [0061], claim 5). Howell also teaches that the effective amount of the stabilizer is from about 0.001 weight percent to about 10 weight percent, more preferably from about 0.01 weight percent to about 5 weight percent based on the total weight of the composition (para [0190]), equaling to 10 ppm to 100,000 ppm, and 100 ppm to 50,000 ppm, which both overlap with the claimed range of “50 to 1,000 ppm”.
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.
Secondly, "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP 2123. Therefore, the ranges (iii) 0.3 to 4 wt.% (corresponding to 3,000 to 40,000 ppm), and (iv) 0.3 to 1 wt.% (corresponding to 3,000 to 10,000 ppm) as taught by Howell do not constitute a teaching away from a broader disclosure in Howell.
4. Applicant argues that Howell does not disclose oligomeric, homopolymer or other polymer products or any concentration measurements thereof; in contrast, the claimed subject matter requires an amount (i.e., greater than 0) of oligomeric, homopolymer or other polymer product, where the oligomeric, homopolymer or other polymer product is present at a concentration of less than 0.003 wt.% (p. 7).
Applicant also argues that despite a showing of 20,000 ppm of inhibitor in the presence of 20,000 ppm air provides for a qualitative difference in HFO-1225ye degradation in comparison to the same concentration of air with no stabilizer, Howell provides no quantitative assessment of the stabilizer's effectiveness, in particular, no assessment of how much stabilizer is needed for different concentrations of air (p. 8).
Applicant further argues that Howell only investigated the degradation of HFO-1225ye; even if one of ordinary skill in the art would have hypothetically sought to apply the Howell teachings to the inhibition of HFO-1234yf degradation (which Applicant strenuously argues such a one would not), such a one would have used much higher amounts (i.e., 20,000 ppm) of stabilizer in the presence of much higher air concentrations (i.e., 20,000 ppm) (p. 8); one of ordinary skill in the art clearly would have recognized that practice of the invention provides results that are unexpectedly advantageous in view of the limited qualitative results for HFO-1225ye at higher air concentrations and at higher stabilizer concentrations disclosed by Howell (p. 8).
In response, Applicant’s arguments are not persuasive.
Firstly, claim 1 recites a composition comprising an amount of oligomeric, homopolymers or other polymeric products derived from the fluoroolefin, wherein the oligomeric, homopolymers or other polymeric products derived from the fluoroolefin are present in said composition at a concentration of less than 0.003 wt%. This limitation is interpreted as zero being inclusive to less than 0.003 wt% of the oligomeric, homopolymers or other polymeric products derived from the fluoroolefin, as a broadest reasonable interpretation.
Secondly, Howell teaches a composition comprising at least one fluoroolefin, and an effective amount of a stabilizer (para [0007]-[0008]), wherein the fluoroolefin is HFC-1234yf (para [0041], Table 3, claim 7).
Howell teaches that the composition further comprises at least one additional compound, wherein the additional compound can be a hydrofluorocarbon (para [0176], claim 3), and the hydrofluorocarbon can be difluoromethane (HFC-32) (para [0177], [0183]). Howell specifically teaches a composition comprising HFC-1234yf and HFC-32 (para [0183]).
Howell teaches that the stabilizer can comprise d-limonene (para [0061], claim 5). Howell also teaches that the effective amount of the stabilizer is from about 0.001 weight percent to about 10 weight percent based on the total weight of the composition (para [0190]), equaling to 10 ppm to 100,000 ppm, which overlaps with the claimed range of “50 to 1,000 ppm”.
Howell also teaches that an effective amount of a stabilizer is added to reduce the degradation of fluoroolefin ([0011]), and the degradation of fluoroolefin is caused by the presence of inadvertent air in a refrigeration, air-conditioning or heat pump system (para [0011]). Howell teaches that the composition works as a heat transfer fluid in a refrigeration, air-conditioning, and heat pump system (para [0014]). Thus, the air is present in the composition of Howell.
Howell further teaches that the composition can comprise 2 volume % air ([0203]).
The “2,3,3,3-tetrafluoropropene” as an evidentiary reference shows that 2,3,3,3-tetrafluoropropene (i.e. HFC-1234yf) has a vapor density of 4 when air is 1 (p. 2, § PHYSICAL & CHEMICAL INFORMATION).
The “Difluoromethane” as an evidentiary reference shows that difluoromethane (i.e. HFC-32) has vapor density of 1.8 when air is 1 (p. 9, § SECTION 9: Physical and chemical properties).
Therefore, in the composition comprising HFC-1234yf and HFC-32 as taught by Howell, the air can be present in an amount of from 5,100 ppm to 11,000 ppm by weight, which overlaps with the claimed range of “1,000 to10,000 ppm”.
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 claimed amount of oligomeric, homopolymers or other polymeric products derived from the fluoroolefin, would flow naturally from the teaching of Howell, because the teaching of Howell provides substantially the same composition comprising HFO-1234yf, HFC-32, the same amount of an inhibitor, and the same amount of air as claimed, and also because the stabilizer (the claimed inhibitor) in Howell is added to reduce the degradation of fluoroolefin as recognized by Howell. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Thirdly, Applicant's argument of unexpected results is unpersuasive and insufficient. Evidence of unexpected results must be factually supported by an appropriate affidavit or declaration. See MPEP § 716.01(c). Unexpected results must, in actuality, be unexpected. Unexpected results must be compared with the closest prior art. See MPEP § 716.02(e). Here, Howell’s broad disclosure of a composition comprising HFC-1234yf, HFC-32, a stabilizer in an amount of about 0.001 wt% to about 10 wt%, and air in an amount of from 5,100 ppm to 11,000 ppm by weight, constitutes closer prior art than the Examples comprising HFO-1225ye in Table 4 of Howell.
Furthermore, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02 (d). Therefore, Applicant should compare a sufficient number of tests both inside and outside the claimed range to show an unexpected result over a claimed range.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIAJIA JANIE CAI whose telephone number is 571-270-0951. The examiner can normally be reached Monday-Friday 8:30 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisor, Angela Brown-Pettigrew can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761