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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 3, 2026 has been entered.
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) 1-4 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (US Pub. No. 2018/0127341) in view of Cantrell et al. (US Pub. No. 2018/0249738).
Regarding Claims 1-4: Nakamura et al. teaches a composition comprising HCFO-1233yd (1-chloro-2,3,3-trifluoropropene) and HCFC-244ca (1-chloro-2,2,3,3-tetrafluoropropane), wherein the HCFC-244ca is present in 0.0001 to 1 mass% relative to a content of HCFO-1233yd and the amount of HCFO-1233yd in the composition is 90 mass% or more (abstract and [0034]).
Nakamura et al. does not teach the composition wherein the second component is as claimed. However, Cantrell et al. teaches the coolant/heat transfer fluid HCFC-244eb (3-chloro-1,1,1,2-tetrafluoropropane) (abstract and [0028]). Nakamura et al. and Cantrell et al. are analogous art because they are concerned with the same field of endeavor, namely coolant/heat transfer compositions. At the time of the invention a person of ordinary skill in the art would have found it obvious to substitute the HCFC-244ca of Nakamura et al. with the HCFC-244eb (3-chloro-1,1,1,2-tetrafluoropropane) of Cantrell et al. and would have been motivated to do so because they are disclosed by Cantrell et al. as equivalent alternative coolants ([0028] and MPEP 2144.06).
Regarding Claim 7: Nakamura et al. teaches the composition further comprising a non-volatile organic compound to form a composition for forming a coating film (abstract).
Claim(s) 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (US Pub. No. 2018/0127341) in view of Cantrell et al. (US Pub. No. 2018/0249738).
Regarding Claims 12-13 and 15: Nakamura et al. teaches a composition comprising HCFO-1233yd (1-chloro-2,3,3-trifluoropropene) and HCFC-244ca (1-chloro-2,2,3,3-tetrafluoropropane), wherein the HCFC-244ca is present in 0.0001 to 1 mass% relative to a content of HCFO-1233yd and the amount of HCFO-1233yd in the composition is 90 mass% or more (abstract and [0034]).
Nakamura et al. does not teach the composition wherein the second component is as claimed. However, Cantrell et al. teaches the coolant/heat transfer fluid HCC-30 (dichloromethane) (abstract and [0028]). Nakamura et al. and Cantrell et al. are analogous art because they are concerned with the same field of endeavor, namely coolant/heat transfer compositions. At the time of the invention a person of ordinary skill in the art would have found it obvious to substitute the HCFC-244ca of Nakamura et al. with the HCC-30 (dichloromethane) of Cantrell et al. and would have been motivated to do so because they are disclosed by Cantrell et al. as equivalent alternative coolants ([0028] and MPEP 2144.06).
Regarding Claim 14: Nakamura et al. does not teach with sufficient specificity the claimed range of 0.0005 to 0.1 mass%. 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).
Response to Arguments
Applicant's arguments filed August 3, 2026 have been fully considered but they are not persuasive.
Applicant argues that Cantrell et al. does not provide motivation to specifically select a compound of claim 1. However, an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious, In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982) (MPEP 2144.06). In the present case, Cantrell et al. discloses the refrigerants together as equivalent alternative coolants, and one of ordinary skill in the art would have a reasonable expectation of success in employing any of the refrigerants of Cantrell et al. as a refrigerant.
Applicant argues that there is not a reasonable expectation of success to substitute refrigerants as they would have different boiling points which would necessitate a change in apparatus and operation conditions. However, changing operation conditions and apparatus for specific refrigerants is well within the skill level of one of ordinary skill in the art of refrigerants, and one of ordinary skill in the art would be expected to be successful at such a task. 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).
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 August 6, 2026
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