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 amendment/remarks filed 12/30/2025.
Claims 2, 8, and 10-12 are currently pending.
The IDS statements filed 12/01/2025 and 01/27/2026 have been considered. Initialed copies accompany this action.
Response to Amendment
The rejection of claims 2, 8, and 10-12 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the above amendment.
The rejections on the grounds of nonstatutory double patenting as being unpatentable over 1) claims 1 and 3 of copending application 18/226,936, 2) claims 1-3 of copending application 18/426,596, and 3) claims 1-3 of copending application 18/431,360 are each withdrawn in view of the Applicant’s arguments. Applicant’s arguments that the claims of these copending applications do not recite/encompass a concentration of water are persuasive.
However, the nonstatutory double patenting rejections over the previously cited claims of U.S. 11,834,601 and copending application 18/079,383 as previously set forth in the Office action mailed 10/01/2025 are each maintained and have been revised below for clarity (the rejections have been split into two separate headings/rejections, rather than be under a single heading, for clarity) and/or to reflect the changes in claim scope made in the copending application.
The rejection of claims under 35 U.S.C. 103 as being unpatentable over Fukushima ‘173 (US 2017/0058173 A1) optionally in view of any one of Boussand et al. (US 2013/0099154 A1), Fukushima ‘123 (US 2014/0077123 A1), or Itano et al. (US 2017/0174967 A1) as previously set forth in the Office action mailed 10/01/2025 is maintained and has been revised below to reflect the changes in claim scope made by Applicant’s present claim amendment.
Double Patenting
Claims 2, 8, and 10-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5-12 of U.S. Patent No. 11,834,601.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite compositions (comprising a refrigerant comprising trans-1,2-difluoroethylene, difluoromethane, and 2,3,3,3-tetrafluoropropene), methods of using compositions, and/or apparatus comprising compositions comprising the trans-1,2-difluoroethylene, difluoromethane, and 2,3,3,3-tetrafluoropropene components in amounts which fall within, overlap, and/or touch those presently recited. The patented claims also recite and pertain to apparatus and methods of using/operating refrigeration comprising the composition and the composition further comprising a refrigerant oil. Also note that prior art device anticipates a claimed process if the device carries out the process during normal operation. See MPEP 2112.02, I. Additionally, claim 6 of the patent recites the additional presence of water in the composition. While the patented claims do not directly recite a concentration of the water, the patented claims recite the trans-1,2-difluoroethylene, difluoromethane, and 2,3,3,3-tetrafluoropropene components are present in an amount of 99.5 mass% or more, meaning water may be present in an amount of up to 0.5 mass% which overlaps the claimed range.
Claims 2 and 10-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-6, 8, 10, and 11 of copending Application No. 18/079,383.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are not patentably distinct from each other because the patented claims recite compositions (comprising a refrigerant comprising trans-1,2-difluoroethylene, difluoromethane, and 2,3,3,3-tetrafluoropropene in a total content of more than 99.5 mass%), methods of using compositions, and/or apparatus comprising compositions comprising the trans-1,2-difluoroethylene, difluoromethane, and 2,3,3,3-tetrafluoropropene components in amounts which fall within, overlap, and/or touch those presently recited. The patented claims also recite and pertain to apparatus and methods of using/operating refrigeration comprising the composition. Also note that prior art device anticipates a claimed process if the device carries out the process during normal operation. See MPEP 2112.02, I. Regarding the claimed limitation that the composition also comprises water in an amount of 0.1 mass% or less, the copending claims indeed recite such a limitation (see claim 8).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. While it is noted the copending claims have been allowed and the issue fee has been paid by Applicant, the allowed claims have not yet published as a patent.
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.
Claims 2, 8, and 10-12 are rejected under 35 U.S.C. 103 as obvious over Fukushima ‘173 (US 2017/0058173 A1) optionally in view of any one of Boussand et al. (US 2013/0099154 A1), Fukushima ‘123 (US 2014/0077123 A1), or Itano et al. (US 2017/0174967 A1).
Fukushima ‘173 teaches working fluid compositions and refrigerating apparatus thereof ([0003], [0143]+, & [0175]). The working fluid is as an alternative to R410A ([0011], [0013]-[0014]). Operation of the refrigerating apparatus comprises repeating a cycle of compressing, condensing, expanding, and evaporating the working fluid (Id. & [0054]-[0058]), i.e., circulating the working fluid in the apparatus. Exemplary working fluid compositions containing trans-1,2-difluoroethylene (“HFO-1132(E)”), difluoromethane (“HFC-32” aka R32), and 2,3,3,3-tetrafluoro-1-propene (“HFO-1234yf” aka R1234yf) are disclosed at Table 13 at p. 15. See also [0090]. Refrigerating oil is expressly taught as a preferred, well-known additive in the refrigerant art for provision in
the reference’s working fluid ([0107]-[0132]).
Fukushima ‘173 teaches the following exemplary refrigerant blends (Table 13,
p.15):
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272
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Note that these five working examples have a fixed amount of HFO-1132(E) (20 wt.%) and varied amounts of HFC-32 and HFO-1234yf (each 10-70 wt.%) and demonstrate a trade-off of several beneficial properties in the refrigerant art among the data points (temperature glide, relative COPs, relative refrigerating capacities, and GWP; the Table shows some properties increase while others decrease along the ternary composition of 20,10,70 to 20,70,10 1132E/32/1234yf and vice-versa).
The Examiner has carefully plotted these five specific working examples against the scope of the claimed figure of/surrounding linear and quadratic line segments MM’,
M’N, NV, VG, & GM in a ternary diagram:
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654
870
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The lighter points are that of Applicant’s claimed segments (note that points M, M’, N, V, & G are indicated and curves are drawn therebetween), and the darker points are those of Fukushima ’173’s Ex. 113 to 117 (also indicated by number). The Examiner has drawn a line connecting the reference’s five working examples; the line corresponds to a fixed HFO-1132(E) concentration of 20wt.% between 10wt.%/70wt.% to 70wt.%/10wt.% R-32/R-1234yf. Note that the line connecting the five working examples intersects directly through Applicant’s claimed figure of line segments MM’, M’N, NV, VG, & GM; Examples 113 & 114 and the line segment connecting the two are very notably close to the NV and VG segment extremities at 20 wt.% 1132(E) and otherwise surround and box-in Applicant’s figure of line segments MM’, M’N, NV, VG, & GM.
While the reference not sufficiently specific to anticipate the claimed refrigerant concentrations, there is nevertheless a strong case of prima facie obviousness over the cited teachings of the reference. The drawn line in the ternary plot connecting the reference’s five working examples intersects directly through (and therefore overlaps) Applicant’s figure of line segments MM’, M’N, NV, VG, & GM (Id.). These is especially strong, substantial overlap between the segment of the drawn line between Examples 113 & 114, notably close to the NV and VG segment extremities and box-in Applicant’s figure of line segments MM’, M’N, NV, VG, & GM, which has been circled by the Examiner in the ternary plot. The reference’s cited examples clearly encompass the claimed refrigerant concentrations. See MPEP 2144.05. With the above trade-off(s) in mind shown among Examples 113 to 117, or even between Examples 113 & 114, at the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to arrive at the claimed refrigerant from the cited teachings of the Fukushima ‘173 by varying/optimizing the relative amounts of HFC-32 and HFO-1234yf at the fixed amount of 20 wt.% HFO-1132(E) as disclosed in the reference with the reasonable expectation of striking a beneficial balance of temperature glide, a relative coefficient of performance, a relative heating capacity, and GWP suitable for use as a refrigerant. Stated differently, each exemplary point corresponds to an exemplary, preferred, and/or otherwise sufficient refrigerant composition with a beneficial/sufficient balance of temperature glide, relative COP, relative refrigerating capacity, and GWP, and a person of ordinary skill in the art would expect intermediate points between these exemplary points would also obtain beneficial/sufficient temperature glides, relative COPs, relative refrigerating capacities, and GWPs of varying degree(s) between the exemplary points along the short line segment(s) of: 1) a fixed 20 wt.% HFO-1123(E) between 10wt.%/70wt.% to 70wt.%/10wt.% R-32/R-1234yf, i.e., between Examples 114 & 117, and/or 2) a fixed 20 wt.% HFO-1123(E) between 10wt.%/70wt.% to 20wt.%/60wt.% R-32/R-1234yf, i.e., between Examples 113 & 114. As clearly directed by the cited Table, such a resultant refrigerant between Examples 113 & 114 would have a temperature glide of about 5.8°C, a RCOPR134a of about 0.95, a RQ134a between 1.48 and 1.66, a RCOPR410A of about 1.03, a RQR410A between 0.66 and 0.74, and a GWP between 72 and 139.
Additionally, note that the totality of Table 13 is essentially compositions including and between points of (20 wt.% HFO-1132(E), 10 wt.% HFC-32, 70 wt.% HFO-1234yf), (20 wt.% HFO-1132(E), 70 wt.% HFC-32, 10 wt.% HFO-1234yf), and (80 wt.% HFO-1132(E), 10 wt.% HFC-32, 10 wt.% HFO-1234yf), which overlaps and encompasses a refrigerant of ternary diagram figure connecting the five points M, M’, N, G, and G as in claim 2.
In the event Applicant disputes presence of a refrigerant oil with the above-cited exemplary compositions is not anticipated or at-once envisaged by the reference, while the Office would disagree with such a position, at the time of the effective filing date the inclusion of a refrigerant oil in Fukushima ’173’s compositions would have been obvious to a person of ordinary skill in the art in view of the already-cited express teachings of the reference strongly motivating and suggesting its inclusion (“usually as mixed with a refrigerant oil” and expanded discussion of many types of refrigerant oils, Id. at [0107]-[0132]).
Note that some of the claimed limitations (e.g., “as a working fluid”, “wherein the composition is an alternative refrigerant for R410A”, etc.) are merely intended use limitations that do not impart additional patentable structure to the claimed invention (MPEP 2111.02), but the Fukushima ‘173 reference is so specific that it actually meets these intended use limitations (Id.).
For purposes of claim interpretation, the claimed limitation that the composition comprises water wherein the water is present in an amount of 0.1 mass% or less based on the entire refrigerant is construed as meaning the water is present in an amount of zero mass% to 0.1 mass%, both inclusive. The recited presence of water is synonymous to reciting a presence of moisture where the moisture content is 0.1 mass% or less. See Ex parte Khusid, 174 USPQ 59 (Bd. App. 1971) where “a moisture content of not more than 70% by weight” reads on dry material. Note that this interpretation would not be the case had the claim recited “the water is present in an amount of greater than 0 mass% and 0.1 mass% or less based on the entire refrigerant” instead.
Regarding water, Fukushima ‘173 further teaches it is preferred to suppress the inclusion of moisture in the working fluid composition and the apparatus containing the working fluid composition because inclusion of moisture decreases properties of the refrigerant oil/lubricant and can impair the long term reliability of a compressor in the apparatus. See [0151]-[0152]. This is a direct teaching to suppress/minimize the inclusion of moisture, i.e., water, in the working fluid composition and apparatus thereof.
As a means of controlling moisture/water concentration, Fukushima et al. further preferably teach contacting the working fluid composition with a desiccating agent to absorb moisture/water from the working fluid composition without adsorbing the working fluid. See [0153]-[0161]. Adsorbing all the moisture/water from the working fluid composition as taught/suggested here reads on a composition free of water, which meets the claimed limitation that the composition comprises water in an amount of 0.1 mass% or less based on the entire refrigerant – a recitation of a range as maximum amount “or less” with no specified minimum (precisely the same scenario as that instantly claimed) includes zero as a lower limit. Thus, a composition free of water/moisture as taught/suggested by the reference meets the claimed limitation. See In re Mochel, 470 F.2d 638, 176 USPQ 194 (CCPA 1974) where the term "up to" was regarded as including zero as a lower limit. See also Ex parte Khusid (Id.) where the recitation “a moisture content of not more than 70% by weight” reads on dry material (i.e., a material with a moisture content of 0% by weight). See also MPEP 2173.05(c), II.
Alternatively, it is acknowledged Fukushima ‘173 fails to teach the composition comprises water in an amount greater than 0 mass% and 0.1 mass% or less based on the entire refrigerant (i.e., a non-zero amount of water but 0.1 mass% or less).
However, Boussand et al. similarly teach refrigerant compositions where it is disclosed the stability of refrigerant and lubricant mixtures can be affected by the content of water, and heat transfer fluid should preferably have a low moisture/water content, preferably where the water content is less than about 1,000 ppm and subsets thereof. See [0009]. Less than about 1,000 ppm corresponds to a concentration of about 0.1 mass% or less, substantially identical to that instantly claimed.
Additionally, Fukushima ‘123 similarly teaches refrigerant/working fluid compositions where the inclusion of moisture/water in such compositions and apparatus thereof raises problems such as hydrolysis of the working fluid itself or lubricating oil which can from acid components and contaminants and impair the long term reliability of a compressor in the apparatus, and the moisture/water should be suppressed to a concentration of at most 100 ppm and more preferably at most 20 ppm. See [0104]. At most 100 ppm corresponds to a concentration of 0.01 mass% or less, within the concentration instantly claimed.
Furthermore, Itano et al. similarly teach refrigerant compositions where it is preferable to control the amount of water to 0.1 parts by weight or less per 100 parts by weight of the composition so that double bonds in any molecules of unsaturated fluorinated hydrocarbons that may be contained therein can be stably present, and oxidation of unsaturated fluorinated hydrocarbons is less likely to occur, resulting in improved stability of the composition. See [0114]. Water in an amount of 0.1 parts by weight or less per 100 parts by weight of the composition is identical to that instantly claimed.
Thus, in the event the teaching/suggestion to suppress/minimize moisture in the composition as taught by [0153]-[0161] of Fukushima ‘173 is insufficient to meet or render obvious the claimed water concentration (i.e., zero wt.% water within the claimed range including zero as its lower boundary) alone, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide a water content of 0.1 mass% or less (or a subset thereof) as taught by any one of Boussand et al., Fukushima ‘123, or Itano et al. to Fukushima ‘173’s composition in order to improve the stability of the composition and/or long term reliability of an apparatus comprising the composition with a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 12/30/2025 have been fully considered but they are not persuasive.
Regarding the nonstatutory double patenting rejection over the identified claims of U.S. Patent No. 11,834,601 Applicant argues the claims of the patent fail to claim the composition comprises water in an amount of 0.1 mass% or less based on the refrigerant as claimed.
In response, this argument is not persuasive because the patent claims recite the presence of water (see claim 6). As the independent claim in the patent recites the trans-1,2-difluoroethylene, difluoromethane, and 2,3,3,3-tetrafluoropropene components are present in an amount of 99.5 mass% or more, the additional presence of water per claim 6 means water may be present in an amount of up to 0.5 mass% which overlaps the claimed range.
Regarding the nonstatutory double patenting rejection over the identified claims of copending application no. 18/079,383 Applicant argues the claims of the copending application do not encompass each feature of Applicant’s claims.
In response, this argument is not persuasive because the copending claims indeed encompass each feature of Applicant’s claims. See the rationale of record, e.g., the copending claims recite compositions (comprising a refrigerant comprising trans-1,2-difluoroethylene, difluoromethane, and 2,3,3,3-tetrafluoropropene in a total content of more than 99.5 mass%), methods of using compositions, and/or apparatus comprising compositions comprising the trans-1,2-difluoroethylene, difluoromethane, and 2,3,3,3-tetrafluoropropene components in amounts which fall within, overlap, and/or touch those presently recited and claim 8 of 18/079,383 further recites water is present in a content ration of 0.1% or less based on the composition.
It is also noted Applicant argues the claimed water content of 0.1 mass% or less based on the entire refrigerant increases the stability of the refrigerant composition and suppresses generation of acids even if oxygen is mixed into the refrigerant composition. However, it is unclear how the instantly claimed water content of 0.1 mass% or less based on the entire refrigerant limitation can be regarded as affording the instantly claimed composition unexpected results over the composition recited in the copending claims of 18/079,383 since they contain nearly, if not exactly, the same, water concentration feature via claim 8 of 18/079,383.
Regarding the 103 rejection over Fukushima ‘173 (US 2017/0058173 A1) optionally in view of any one of Boussand et al. (US 2013/0099154 A1), Fukushima ‘123 (US 2014/0077123 A1), or Itano et al. (US 2017/0174967 A1) Applicant argues the claim as amended recites, inter alia, “the composition comprising water, wherein the water is present in an amount of 0.1 mass% or less based on the entire refrigerant” construing this as water is present in the composition.
In response, this claimed limitation that the composition comprises water wherein the water is present in an amount of 0.1 mass% or less based on the entire refrigerant is construed as meaning the water is present in an amount of zero mass% to 0.1 mass%, both inclusive. The recited presence of water is synonymous to reciting a presence of moisture where the moisture content is 0.1 mass% or less. See Ex parte Khusid, 174 USPQ 59 (Bd. App. 1971) where “a moisture content of not more than 70% by weight” reads on dry material. Note that this interpretation would not be the case had the claim recited “the water is present in an amount of greater than 0 mass% and 0.1 mass% or less based on the entire refrigerant” instead.
Applicant further argues Fukushima ‘173 discloses only that water is preferably not contained and fails to teach or suggest the presence of a specific amount of water as that claimed increases stability of the refrigerant composition.
In response, this argument is substantially the same as that set forth on page 7 of the response filed 09/11/2025 and is not persuasive for the reasons set forth on pages 14 to 16 of the Non-Final Office action mailed 10/01/2025:
The claimed limitation that the composition comprises water in an amount of 0.1 mass% or less based on the entire refrigerant is a recitation of a range with merely a maximum amount (“0.1 mass% or less”) with no specified minimum, which includes zero as a lower limit. See In re Mochel, 470 F.2d 638, 176 USPQ 194 (CCPA 1974) where the term "up to" was regarded as including zero as a lower limit. See also Ex parte Khusid, 174 USPQ 59 (Bd. App. 1971) where the recitation "a moisture content of not more than 70% by weight" reads on dry material (i.e., a material with a moisture content of 0% by weight). See also MPEP 2173.05(c), II.
As Applicant states that water is preferably not contained in Fukushima ‘173’s composition, Fukushima ‘173 meets the claimed water concentration limitation. A composition free of water/moisture as taught/suggested by the reference meets the claimed limitation.
Nevertheless, as similarly set forth in the revised ground(s) of rejection, Fukushima ‘173 further teaches it is preferred to suppress the inclusion of moisture in the working fluid composition and the apparatus containing the working fluid composition because inclusion of moisture decreases properties of the refrigerant oil/lubricant and can impair the long term reliability of a compressor in the apparatus. See [0151]-[0152]. This is a direct teaching to suppress/minimize the inclusion of moisture, i.e., water, in the working fluid composition and apparatus thereof.
As a means of controlling moisture/water concentration, Fukushima ‘173 further preferably teaches contacting the working fluid composition with a desiccating agent to absorb moisture/water from the working fluid composition without adsorbing the working fluid. See [0153]-[0161]. Adsorbing all the moisture/water from the working fluid composition as taught/suggested here reads on a composition free of water, which meets the claimed limitation that the composition comprises water in an amount of 0.1 mass% or less based on the entire refrigerant.
Furthermore, despite Applicant’s argument that the presence of a specific amount of water achieves an effect of increasing the stability of the refrigerant composition, Fukushima ‘173 directly states the presence of water (disclosed as moisture) causes, among other issues/problems, hydrolysis of the working fluid (which is/comprises the refrigerant) that forms an acid component and/or contaminants [0152], which is a teaching that suppressing/minimizes the concentration in the composition indeed increases stability of the composition.
Applicant’s arguments with respect to Fukushima ‘173 not teaching a precise non-zero to 0.1 mass% or less concentration of water do not apply to all of the references being used in the current rejection. The current grounds of rejection optionally utilizes any one of Boussand et al. (US 2013/0099154 A1), Fukushima ‘123 (US 2014/0077123 A1), or Itano et al. (US 2017/0174967 A1) as secondary references in combination with Fukushima ‘173 to alternatively meet the claimed water concentration in the event the teachings of Fukushima ‘173 are insufficient on their own. In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues the data provided in the previously submitted 132 declaration filed 09/11/2025 demonstrates unexpected results of the instant claims (i.e., the stability of a refrigerant composition is unexpectedly improved by containing 0.1 mass% or less [1000 mass ppm or less] of water based on the entire refrigerant).
In response, the present arguments to the declaration are substantially the same as that set forth on pages 5 to 7 of the response filed 09/11/2025. These arguments, and the declaration filed 09/11/2025, were fully considered and addressed in the Non-Final Office action mailed 10/01/2025. The arguments and declaration remain insufficient to withdraw the 103 rejection(s) for the for the reasons set forth on pages 17 to 21 of the Non-Final Office action mailed 10/01/2025. Please see pages 17 to 21 of the Non-Final Office action mailed 10/01/2025. The entire disclosure of pages 17 to 21 of the prior Office action is not repeated here for purposes of brevity, but the main reasons set forth in the prior Office action are:
The Office’s position is the declaration’s comparative showing does not rise to a level of establishing unexpected results because, based upon the teachings and totality of the applied prior art of record, the resultant increase in relative stability when oxygen is added in an amount of less than 0.1 mass% (i.e., 0 ppm oxygen to 1,000 ppm oxygen, both inclusive) is merely an expected beneficial result. See pages 18 and 19 of the Non-Final Office action mailed 10/01/2025.
The claims are not commensurate in scope with the probative value of data in the declaration’s comparative showing. See pages 19 and 20 of the Non-Final Office action mailed 10/01/2025.
Applicant further argues the three secondary references, Boussand et al., Fukushima ‘123, and Itano et al., fail to remedy the omission(s) of the Fukushima ‘173 primary reference. Specifically, Applicant argues Boussand et al. is directed to heat transfer fluids comprising 1,3,3,3-tetrafluoropropene and polyol ester oils which is distinct from the trans-1,2-difluoroethylene (HFO-1132(E)), difluoromethane (R32), and 2,3,3,3-tetrafluoropropene (HFO-1234yf) composition of the instant claims, Fukushima ‘123 fails to teach or suggest the amount of water recited in the instant claims, and Itano et al. is directed to heat transfer fluids comprising difluoromethane (R32), pentafluoroethane (R125), and 1,1,1,2-tetrafluoroethane (R134a) which is distinct from the trans-1,2-difluoroethylene, difluoromethane, and 2,3,3,3-tetrafluoropropene composition of the instant claims. Applicant’s position is because of these differences, a person of ordinary skill in the art would not look to Boussand et al., Fukushima ‘123, or Itano et al. absent reliance on impermissible hindsight.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to Applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, there is indeed teachings and motivation to combine the teachings of the prior art found in the references themselves. As cited in the rejection of record, the Fukushima ‘173 primary reference teaches suppressing/minimizing the inclusion of moisture, i.e., water, for purposes of stability but does not specify the precise range instantly claimed. However, each of the Boussand et al., Fukushima ‘123, and Itano et al. secondary references teach providing small amounts of water (overlapping, equivalent to, or within that claimed) to refrigerant compositions in view of various, similar stability-related reasons. Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide a water content of 0.1 mass% or less (or a subset thereof) as taught by any one of Boussand et al., Fukushima ‘123, or Itano et al. to Fukushima ‘173’s composition in order to improve the stability of the composition and/or long term reliability of an apparatus comprising the composition with a reasonable expectation of success. Accordingly, there is a sufficient, articulated reasoning with rational underpinning found within the references themselves supporting the combination of references and the conclusion of obviousness.
In response to Applicant's arguments against the secondary references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. The combination of references meets the claimed invention. The primary reference teaches a refrigerant comprising HFO-1132(E), R32, and R1234yf with concentrations overlapping that claimed and the secondary references teach providing certain water concentrations (overlapping, equivalent to, or within that claimed) to refrigerants for stability purposes such that at the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to provide a water content of 0.1 mass% or less (or a subset thereof) as taught by any one of Boussand et al., Fukushima ‘123, or Itano et al. to Fukushima ‘173’s composition in order to improve the stability of the composition and/or long term reliability of an apparatus comprising the composition with a reasonable expectation of success. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Additionally to Applicant’s arguments Boussand and Itano et al. are drawn to different refrigerants, the fact that the secondary references might be drawn to different refrigerant compositions do not preclude their combination with the primary reference. The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art, and all teachings in the prior art must be considered to the extent that they are in analogous arts. The references are all analogous art to one another in that they are all from the same field of endeavor and art, e.g., refrigerant compositions. Boussand et al., Fukushima ‘123, and Itano et al. each teach providing a very small amount of water to improve the stability of refrigerant compositions. The teachings of the secondary references suggest to one of ordinary skill in the art to provide a very small amount of water to improve the stability of refrigerant compositions. Itano et al. even teach the very small amount of water stabilize double bonds of any unsaturated fluorinated hydrocarbon molecules that may be present (para. 0114); note that none of R32, R125, and R134a (the composition Applicant alleges Itano et al. is directed to) are unsaturated fluorinated hydrocarbons, meaning the teachings of Itano et al. suggest much more to a person of ordinary skill in the art than alleged by Applicant.
Additionally, obviousness requires a reasonable expectation of success. As set forth in the rejection of record, the articulated reasoning in combining the reference sets forth there is a reasonable expectation of successfully improve the stability of Fukushima ‘173’s composition and/or long term reliability of an apparatus comprising the composition by providing a small amount of water as taught by any one of Boussand et al., Fukushima ‘123, or Itano et al. Applicant has not demonstrated the combination references do not have a reasonable expectation of success.
Additionally to Applicant’s argument Fukushima ‘123 fails to teach or suggest the amount of water recited in the instant claims, this is not persuasive because Fukushima ‘123 teaches refrigerant/working fluid compositions where the inclusion of moisture/water in such compositions and apparatus thereof raises problems such as hydrolysis of the working fluid itself or lubricating oil which can from acid components and contaminants and impair the long term reliability of a compressor in the apparatus, and the moisture/water should be suppressed to a concentration of at most 100 ppm and more preferably at most 20 ppm. See [0104]. At most 100 ppm corresponds to a concentration of 0.01 mass% or less, within the concentration instantly claimed.
Accordingly, the rejections are maintained for the reasons of record.
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.
Correspondence
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
March 5, 2026