DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5 February 2026 has been entered.
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed 5 February 2026, with respect to rejections under 35 U.S.C. § 102 in view of MSR have been fully considered and are persuasive. Applicant provides the SDS which shows that the composition includes a large amount of n-butane which would affect the gliding temperature. Accordingly, the 35 U.S.C. § 102 rejection in view of MSR has been withdrawn.
Applicant's amendments and arguments filed 5 February 2026 have been fully considered but they are not persuasive.
Applicant has amended “used as” to “which is” in an attempt to overcome the intended use aspect of the instant claims. However, this is not persuasive as the claim is still drawn to a composition of matter and not to a process, machine, or manufacture. Accordingly, as the art of Podella teaches the composition as claimed it is considered to be capable of use as a refrigerant. Both because the mixture would be a compressible gas which are known to be useful as refrigerants, as well as both components being known and used as refrigerants, isobutane is commonly referred to as “R600a” as a refrigerant and propane is “R-290”.
Accordingly, the rejection under Podella is maintained.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Podella et al. (US Patent #4,013,595, hereinafter referred to as “Podella”).
As to Claims 1, 3, 5, and 6: Podella teaches a propellent composition consisting of 80% isobutane and 20% propane (Table VII, Comp Ex. 27). As to the language drawn to “which is a refrigerant in a refrigeration” this language is considered to be an intended use of the composition and therefore is considered for any structural difference between the claimed invention and the prior art and not the use itself. See MPEP § 2111.02(II). In the instant case the product of Podella is considered to be capable of use as a refrigerant.
As to Claim 2: Podella teaches the composition of claim 1 (supra). Podella does not expressly teach a gliding temperature difference of the non-azeotropic mixed refrigerant is greater than 4°C. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Podella. However, Podella teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, the gliding temperature difference is a property controlled by the composition. Therefore, the claimed effects and physical properties, i.e. a gliding temperature difference of the non-azeotropic mixed refrigerant is greater than 4°C, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
As to Claim 4: Podella teaches the composition of claim 3 (supra). Podella does not expressly teach a gliding temperature difference of the non-azeotropic mixed refrigerant is between 4.1-7.2°C. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Podella. However, Podella teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, the gliding temperature difference is a property controlled by the composition. Therefore, the claimed effects and physical properties, i.e. a gliding temperature difference of the non-azeotropic mixed refrigerant is between 4.1-7.2°C, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J OYER whose telephone number is (571)270-0347. The examiner can normally be reached 9AM-6PM EST M-F.
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/Andrew J. Oyer/Primary Examiner, Art Unit 1767
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