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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 10, 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 30-31 and 34-35 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 30-31 and 34-35 do not require all the limitations of claim 24 as they refer only to the composition recited in claim 24. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 6-9, 14-21, 24-28, 30, and 34-36 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Parrabbi et al. (US Pub. No. 2023/0022894).
Regarding Claims 24, 6-9, and 14: Parrabbi et al. teaches a composition wherein carbon dioxide is present in 69 wt%, difluoromethane is present in 12 wt%, and 1,1,1,2-tetrafluoroethane is present in 19 wt% ([0034]). Parrabbi et al. teaches providing the composition in a refrigeration system (heat transfer system) ([0024]). The act of providing a composition as an alternative to another composition is a mental process that does not result in an additional method step besides simply providing the composition. It is noted that the limitation “configured for” an existing working fluid does not require that the system to have any particular limitations other than being simply capable of using the working fluid. The composition of Parrabbi et al. does not contain any 1,1,2-trifluoroethylene.
Regarding Claim 15: Parrabbi et al. teaches the composition as not flammable ([0017]).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. not flammable as determined in accordance with ASHRAE Standard 34:2019, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. 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 that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 16: Parrabbi et al. teaches the composition having a GWP of less than 380, teaching with sufficient specificity less than 300 ([0036]).
Regarding Claims 17-21: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. the critical temperature, volumetric refrigeration capacity, coefficient of performance, operating pressure, and temperature glide would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. 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 that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 36 and 25: Claim 25 recites an intended use of the refrigeration system (commercial, beverage cooler, warehouse, etc.). A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding Claim 26: Claim 26 recites an intended use of the refrigeration system (transportation). A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding Claim 27: Claim 27 further limits the heat pump of claim 36 but does not require its presence. Therefore, Parrabbi et al. still anticipates claim 27.
Regarding Claim 28: Claim 28 further limits the air-conditioning system of claim 36 but does not require its presence. Therefore, Parrabbi et al. still anticipates claim 28.
Regarding Claim 30: Parrabbi et al. teaches the composition in a refrigeration system (heat transfer device) ([0024]).
Regarding Claims 34-35: Parrabbi et al. teaches the composition in a refrigeration system with a condenser and an evaporator which necessarily cool an article on evaporation and heat an article on condensing with subsequent condensation and evaporation respectively ([0024]).
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.
Claim(s) 2, 4-5, and 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Parrabbi et al. (US Pub. No. 2023/0022894) in view of Low (US Pub. No. 2011/0162410).
Parrabbi et al. teaches the method of claim 24 as set forth above.
Regarding Claims 2 and 4-5: Parrabbi et al. does not teach the method wherein the composition comprises R-1234ze(E). However, Low teaches a heat transfer composition comprising trans-1,3,3,3-tetrafluoropropene (R-1234ze(E)) (abstract and [0024]). Parrabbi et al. and Low are analogous art because they are concerned with the same field of endeavor, namely heat transfer compositions comprising refrigerants such as carbon dioxide, difluoromethane and 1,1,1,2-tetrafluoroethane. At the time of the invention a person of ordinary skill in the art would have found it obvious to substitute a portion of the 1,1,1,2-tetrafluoroethane (R-134a) of Parrabbi et al. with the trans-1,3,3,3-tetrafluoropropene of Low and would have been motivated to do so because Low teaches that the compound can be useful to reduce the amount of 1,1,1,2-tetrafluoroethane present to reduce the GWP of the composition while retaining some 1,1,1,2-tetrafluoroethane to reduce the flammability of the composition ([0019] and [0042]).
Regarding Claims 22-23: Parrabbi et al. is silent on the presence of a lubricant. However, Low teaches refrigerant compositions comprising lubricants such as POEs, PAGs, and PVEs ([0100]-[0101]). Parrabbi et al. and Low are analogous art because they are concerned with the same field of endeavor, namely heat transfer compositions comprising refrigerants such as carbon dioxide, difluoromethane and 1,1,1,2-tetrafluoroethane. At the time of the invention a person of ordinary skill in the art would have found it obvious to include the lubricant of Low in the method of Parrabbi et al. and would have been motivated to do so to provide lubrication in the equipment being utilized with the refrigerant composition.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Parrabbi et al. (US Pub. No. 2023/0022894).
Parrabbi et al. teaches the method of claim 9 as set forth above. Parrabbi et al. teaches more broadly that the carbon dioxide is present in 50-75 wt%, the difluoromethane is present in 9-19 wt%, and the 1,1,1,2-tetrafluoroethane is present in 12.5-22 wt% ([0018]-[0020]).
Parrabbi et al. does not teach the claimed ranges with sufficient specificity. However, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05).
Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Parrabbi et al. (US Pub. No. 2023/0022894) in view of Singh et al. (US Pub. No. 2020/0002500).
Parrabbi et al. teaches the method of claim 24 as set forth above.
Parrabbi et al. does not teach the method wherein the composition comprises R-1132a. However, Singh et al. teaches refrigerants comprising 0.1-99 wt% vinylidene fluoride (R-1132a) ([0009]-[0010]). It is noted that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05). Parrabbi et al. and Singh et al. are analogous art because they are concerned with the same field of endeavor, namely refrigerant compositions comprising compounds such as carbon dioxide and difluoromethane. At the time of the invention a person of ordinary skill in the art would have found it obvious to include the vinylidene fluoride (R-1132a) of Singh et al. in the composition of Parrabbi et al. and would have been motivated to do so because Singh et al. teaches that the compound is suitable for use with refrigerants such as carbon dioxide, difluoromethane, and 1,1,1,2-tetrafluoroethane ([0010]). The selection of a known material based on its suitability for its intended use is prima facie obvious (MPEP 2144.07).
Claim(s) 29 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Parrabbi et al. (US Pub. No. 2023/0022894) in view of Pearson (US Pub. No. 2005/0044885).
Parrabbi et al. teaches the method and device according to claims 24 and 30 respectively.
Parrabbi et al. does not teach the method or device wherein the heat transfer system is a transcritical heat transfer system. However, Pearson teaches a transcritical vapor compression refrigeration system ([0011]). Parrabbi et al. and Pearson are analogous art because they are concerned with the same field of endeavor, namely heat transfer apparatus. At the time of the invention a person of ordinary skill in the art would have found it obvious to include the transcritical heat transfer system of Pearson in the method and device of Parrabbi et al. and would have been motivated to do so because Pearson teaches that the transcritical heat transfer system allows for an increase of refrigerating effect per unit mass of refrigerant ([0020]).
Response to Arguments
Applicant's arguments filed April 10, 2026 have been fully considered but they are not persuasive.
Applicant argues that a heat transfer system configured for R-410A or R407C would require specific components and would not be suitable for the compositions of Parrabbi et al. However, the instant claims do not require any specific compressor sizing, pressure ratings, expansion devices or lubricant compatibility, only that the heat transfer system be capable of utilizing R-410A or R407C.
Applicant argues that Parrabbi et al. fails to disclose a composition that comprises “substantially no” R-1123. However, Parrabbi et al. clearly does not recite the presence of R-1123 in the compositions. Furthermore, as set forth above Parrabbi et al. a composition wherein carbon dioxide is present in 69 wt% of the total mixture, difluoromethane is present in 12 wt% of the total mixture, and 1,1,1,2-tetrafluoroethane is present in 19 wt% of the total mixture ([0034]). Such amounts add to 100 wt% of the total mixture. Thus, there are clearly no other components in the mixture.
Applicant argues that claims the limitation of claims 25-28 are directed to specific heat transfer systems and amount to more than intended use. However, claims 25-28 do not recite any structural limitations of the claimed systems. A “commercial refrigeration system” is not defined in the specification. Any refrigeration system placed in a commercial setting can be deemed a “commercial refrigeration system.” Likewise any refrigeration system that is capable of being placed on a truck or moving vehicle is a “transportation refrigeration system” whether or not it is optimized to be one absent any more specific limitations. As set forth above, Claim 27 further limits the heat pump of claim 36 but does not require its presence. Therefore, Parrabbi et al. still anticipates claim 27. Claim 28 further limits the air-conditioning system of claim 36 but does not require its presence. Therefore, Parrabbi et al. still anticipates claim 28.
In response to Applicant's argument that Low teaches using differing amounts of CO2 and R-1234ze(E), the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In the present case, a person of ordinary skill in the art would have found it obvious to substitute a portion of the 1,1,1,2-tetrafluoroethane (R-134a) of Parrabbi et al. with the trans-1,3,3,3-tetrafluoropropene of Low and would have been motivated to do so because Low teaches that the compound can be useful to reduce the amount of 1,1,1,2-tetrafluoroethane present to reduce the GWP of the composition while retaining some 1,1,1,2-tetrafluoroethane to reduce the flammability of the composition ([0019] and [0042]).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER F GODENSCHWAGER whose telephone number is (571)270-3302. The examiner can normally be reached 8:30-5:00, M-F EST.
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/PETER F GODENSCHWAGER/Primary Examiner, Art Unit 1767 April 17, 2026
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