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 04/23/2026.
Claims 1-8 are currently pending.
The IDS statement filed 03/04/2026 has been considered. An initialed copy accompanies this action.
Response to Amendment
The rejections under 35 U.S.C. 103 as being unpatentable over (or based on) Fukushima (US 2017/0058173 A1) in view of Tooyama et al. (JP 2013-172615 A) set forth in the Office action mailed 02/05/2026 are maintained and have been revised below to reflect the changes in claim scope made by Applicant’s present claim amendments.
The rejections on the grounds of nonstatutory double patenting as being unpatentable over the claims of US Patent Nos. 11,435,118, 11,441,802, 11,441,819, 11,493,244, 11,506,425, 11,549,041, 11,549,695, 11,820,933, 11,906,207, 12,270,575, & 12,379,140 and the claims of copending application nos. 17/887,125, 18/079,383, & 18/226,936 set forth in the Office action mailed 02/05/2026 are each maintained and have been revised below to reflect the changes in claim scope made by Applicant’s present claim amendments to the instant claims or issuance of the copending claims as a patent. Note that, since the previous Office action mailed 02/05/2026, 18/079,383 has issued as US 12,584,055 on 03/24/2026, and Applicant filed 19/550,741 as a continuation of 18/079,383 / US 12,584,055 on 02/26/2026.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima (US 2017/0058173 A1) in view of Tooyama et al. (JP 2013-172615 A). Citations to Tooyama et al. are with respect to the English language machine translation of the reference that was submitted by Applicant in the parent application’s (US 16/913,145) file wrapper.
Fukushima teaches heat cycle system apparatus including air-conditioning apparatus ([0003], [0143]+, & [0175]) containing working fluid/refrigerant compositions comprising trans-1,2-difluoroethylene (“HFO-1132(E)”) (abstract & [0012]). The apparatus comprises a compressor that compresses the working fluid/refrigerant ([0053] & [0143]). Preferred/exemplary compositions contain a mixture of trans-1,2-difluoroethylene (“HFO-1132(E)”), difluoromethane (“HFC-32” aka R32), and 2,3,3,3-tetrafluoro-1-propene (“HFO-1234yf” aka R1234yf) (see Table 13 at p. 15; see also [0090]).
Fukushima teaches the following exemplary refrigerant blends (Table 13, p.15):
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While the reference is not sufficiently specific to anticipate the claimed refrigerant concentrations recited as the alternative refrigerants numbered (1) and (2) in independent claim 1, there is nevertheless a strong case of prima facie obviousness of the concentrations of these alternative refrigerant compositions over the cited teachings of Fukushima because the totality of Table 13 overlaps each of the particularly recited figures of the recited line segments and meets the claimed 99.5 mass% or more total/sum concentration. Note that the working examples of Table 13 generally vary as having 20-80 wt.% HFO-1132(E), 10-70 wt.% HFC-32, and 10-70 HFO-1234yf where the sum of HFO-1132(E), HFC-32, and HFO-1234yf in each and every example is 100 wt.%; these ranges alone overlap the limitations of the alternative refrigerants numbered (1) and (2) in the independent claim and meet the requirement in each alternative refrigerant that the refrigerant comprises HFO-1132(E), R32, and R1234yf in a total amount of 99.5 mass% or more based on the entire refrigerant. Furthermore, these working examples also demonstrate 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 depending on the relative concentrations).
To show the extent of overlap, the Examiner submits the following figure which plots the working examples of Fukushima’s Table 13 against a ternary diagram showing the scope of the claimed figures (with the linear and quadratic line segments) of 1) ON, NU, & UO and 2) PS, ST, TP, i.e., claim 1’s refrigerants (1) and (2), respectively:
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In the above figure, Fukushima’s working examples from Table 13 are numbered as they are from the reference (113, 114, etc.), the extremities of Fukushima's examples are connected as a dotted-dashed line (which demonstrates the total extent and/or concentrations of Fukushima’s Table 13), the various claimed figures (ONU of refrigerant (1) & PST of refrigerant (2)) are shown with bolded lines, and the overlapping portions between the various claimed figures and the extent of the cited Table 13 are filled-in with black.
In view of the foregoing, the cited examples in Fukushima clearly encompass and overlap each of the claimed refrigerant concentrations. See MPEP 2144.05. Additionally and/or alternatively, with the above-cited trade-off(s) in mind demonstrated in the Table, 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 each of the claimed refrigerant compositions (1) and (2) in independent claim 1 from the cited teachings of the Fukushima by varying/optimizing the relative amounts of HFO-1132(E), HFC-32, and HFO-1234yf 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 in Fukushima’s Table 13 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.
Alternatively and/or further regarding the claimed 99.5 mass% or more total/sum concentration of HFO-1132(E), R32, and R1234yf, the teachings of Fukushima encompass a composition containing only (i.e., 100 mass%) of the HFO-1132(E), R32, and R1234yf components because each and every further component is expressly disclosed as “optional” or disclosed using terminology synonymous with optional (e.g., “may further contain”, “may be used”, etc.). See para. 0096, 0107, 0108, and 0133. The disclosure that the additional components are optional means that the reference expressly teaches compositions that do not contain those components, meaning the teachings of Fukushima encompass a composition containing only (i.e., 100 mass%) of the HFO-1132(E), R32, and R1234yf components. Furthermore and/or alternatively, the reference’s mixture of only HFO-1132(E), R32, and R1234yf is disclosed as a “working fluid” meeting the claimed refrigerant and that the working fluid (i.e., refrigerant) is mixed with a refrigerant oil to obtain a “composition for a heat cycle system” (para. 0012 and 0107), indicating that, even if a refrigerant oil is present with the working fluid of HFO-1132(E), R32, and R1234yf as a composition for a heat cycle system, the working fluid of HFO-1132(E), R32, and R1234yf is composed of 100 mass% of HFO-1132(E), R32, and R1234yf which reads on the claimed refrigerant(s) and refrigerant mixture(s).
The further-recited apparatus structure regarding a motor driving the compressor and a power conversion device that is connected between an alternating current (AC) power source and the motor, has a switching element, and controls the switching element such that an output of the motor becomes a target value is not disclosed in Fukushima.
However, Tooyama et al. teach a power conversion device having switching control for driving an electric motor of a compressor provided in a refrigerant circuit of an air conditioner apparatus ([0001] & [0051]). Many embodiments are disclosed, but the gist of all of them is that the power conversion device takes an AC power supply/source and converts the AC power supply to supply three-phase AC current with a variable frequency and variable current to the electric motor (see, e.g., [0002], [0056], [0085], & Figures 1 to 3). Some embodiments include a rectifier circuit (20 in the reference) that rectifies an AC voltage of the AC power source and a capacitor (26 in the reference) connected in parallel between an output side of the rectifier circuit and smooths voltage variation/fluctuation caused by switching in the device (see [0050], [0053], [0055], [0070], and Fig. 1 & 2). These embodiments also include an inverter circuit (30 in the reference) ([0050], [0056], [0070], and Fig. 1 & 2). As is well known in circuitry, rectifiers inherently receive an AC voltage and convert the AC voltage in a direct current (DC) voltage, and inverters inherently convert DC voltage into an AC voltage; accordingly, these embodiments read on the device being an indirect matrix converter (i.e., indirect conversion of AC to AC via an intermediate conversion of AC to DC; in other words, an AC to DC to AC converter) including a converter that receives an AC voltage of the AC power source and converts the AC voltage in a DC voltage and inverter that converts the DC voltage into an AC voltage and supplies the AV voltage to the motor. Other embodiments alternatively include a matrix converter (51 in the reference) that directly converts an AC voltage of the AC power source into an AC voltage having a predetermined frequency and supplies/outputs it to the motor without converting it into a DC voltage (Id. & [0084]-[0088] & Fig. 3). Tooyama et al. further teach the AC power source may be a single-phase power source or a three-phase power source ([0050], [0070], [0088], & Fig. 1 to 3).
At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide the power conversion device/apparatus of Tooyama et al. to that in Fukushima in order to obtain an air conditioning device with a sufficiently controlled, if not improved control, of power driving an electric motor of the air conditioner device’s compressor with a reasonable expectation of success.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Fukushima (US 2017/0058173 A1) in view of Tooyama et al. (JP 2013-172615 A) as applied to claims 1-6 above, and further in view of Trane Air Conditioning Manual (Chapters VI & VII to Refrigeration Theory, Compressors and Refrigeration Cycle Components & Refrigeration and Cooling Apparatus, pages 121 to 240, 1996) or Yanashima et al. (US 2002/0140309 A1).
The disclosure of Fukushima in view of Tooyama et al. is relied upon as set forth above. Fukushima in view of Tooyama et al. teach an air conditioning apparatus comprising a compressor that compresses a refrigerant composition comprising trans-1,2-difluoroethylene (and difluoromethane and 2,3,3,3-tetrafluoropropene) with a motor that drives the compressor and a power conversion device that supplies power to the motor.
While the references clearly teach presence of a compressor, they fail to specify the type of compressor as claimed.
However, the recited types of compressors are well known in the art, and at the time of the effective filing date it would have been obvious to a person of ordinary skill in the refrigeration/air conditioning art(s) to provide any one of the recited compressor types (e.g., scroll, rotary, turbo, or screw) as the generic compressor in Fukushima in view of Tooyama et al. in order to obtain an air conditioning device with a reasonable expectation of success.
The cited Trane Air Conditioning Manual and Yanashima et al. references are each documentary evidence of such a statement/rationale. The Refrigeration Theory, Compressors and Refrigeration Cycle Components chapter and the Refrigeration and Cooling Apparatus chapter of the Trane Air Conditioning Manual teach each of scroll compressors, rotary compressors, turbo (centrifugal) compressors, and screw compressors are well-known and suitable to serve as the compressor in an air conditioning device (p.140, 144, 145, 187, & 188). Note that the Trane Air Conditioning Manual also teach compressors are well known to be driven by an electric motor (p.140 & 188). Alternatively, Yanashima et al. is drawn to electric motors for driving air conditioner compressors (abstract, [0030], [0033]) and teach scroll compressors, rotary compressors, and screw compressors are well-known and suitable to serve as the compressor in an air conditioning device ([0119]).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Fukushima (US 2017/0058173 A1) in view of Tooyama et al. (JP 2013-172615 A) as applied to claims 1-6 above, and further in view of Yanashima et al. (US 2002/0140309 A1).
The disclosure of Fukushima in view of Tooyama et al. is relied upon as set forth above. Fukushima in view of Tooyama et al. teach an air conditioning apparatus comprising a compressor that compresses a refrigerant composition comprising trans-1,2-difluoroethylene (and difluoromethane and 2,3,3,3-tetrafluoropropene) with a motor that drives the compressor and a power conversion device that supplies power to the motor.
While the references clearly teach presence of a motor that drives the compressor, they fail to specify the motor is a permanent magnet synchronous motor having a rotor including a permanent magnet as recited.
However, Yanashima et al. is drawn to three-phase electric motors for driving air conditioner compressors (abstract, [0030], [0033]) and teach incorporating permanent magnets into slots of the motor’s rotor in a manner so as to improve features of the motor (abstract). In other words, Yanashima et al. teach synchronous motors having a rotor including permanent magnets, i.e., permanent magnet synchronous motors, are well-known and suitable to serve as motor/driving-means of compressors in an air conditioning device ([0119]).
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 permanent magnet synchronous motor as taught by Yanashima et al. as the motor/driving-means for the compressor of Fukushima in view of Tooyama et al. in order to obtain an air conditioning device with a reasonable expectation of success.
Double Patenting
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over the following listed U.S. Patents and copending applications, and further in view of Tooyama et al. (JP 2013-172615 A), Trane Air Conditioning Manual (Chapters VI & VII to Refrigeration Theory, Compressors and Refrigeration Cycle Components & Refrigeration and Cooling Apparatus, pages 121 to 240, 1996) and Yanashima et al. (US 2002/0140309 A1).
Patent Number Claims
11,435,118 1-18
11,441,802 1-24
11,441,819 1-20
11,493,244 1-10
11,506,425 1-30
11,549,041 1-4
11,549,695 1-5
11,820,933 1-5
11,906,207 1-5
12,270,575 1-9
12,379,140 1-13
12,584,055 1-7 and 9.
Application Number Claims
17/887,125 2, 8, 10, and 11
18/226,936 2 and 6-11
19/550,741 1-7 and 11.
The cited issued patents and copending applications claim air conditioning and/or refrigeration apparatus containing a refrigerant comprising trans-1,2-difluoroethylene/HFO-1132(E), difluoromethane/R32, and 2,3,3,3-tetrafluoro-1-propene/R1234yf in amounts that at least overlap, if not encompass or equivalent to, at least one of the particular sets of concentrations recited in refrigerants (1) and (2) in independent claim 1 of the instant claims.
The recited concentrations of HFO-1132(E), R32, and R1234yf are also recited in the patented/copending claims to sum to 100 mass% and/or that the total content of HFO-1132(E), R32, and R1234yf is more than 99.5 mass% of the refrigerant, either of which meets the instantly claimed total amount of 99.5 mass% or more concentration; alternatively, the cited issued patents and applications disclose their refrigerant compositions preferably comprise HFO-1132(E), R32, and R1234yf in a total amount of 99.5 mass % or more based on the entire refrigerant in their specifications (note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent; see MPEP 804, II, B, 1). The cited issued patents and applications either further recite the apparatus contains a compressor or disclose in their specifications to contain a compressor. Alternatively, air conditioning and/or refrigeration apparatus generally contain a compressor driven by a motor, as is well known in the art.
The difference between the instantly claimed invention and the listed issued patents and copending applications is that the listed issued patents and copending applications do not recite the apparatus comprises a power conversion device and the incidental structure to the compressor and motor, as claimed.
However, it would have been obvious to a person of ordinary skill in the art to provide the missing apparatus structure to the claimed apparatus in the cited issued patents and copending applications in further view of the following-cited teachings of the secondary references in order to obtain an air conditioning and/or refrigeration apparatus having a power converting means and/or a compressor-driving means thereof with a reasonable expectation of success.
Tooyama et al. teach a power conversion device having switching control for driving an electric motor of a compressor provided in a refrigerant circuit of an air conditioner apparatus ([0001] & [0051]). Many embodiments are disclosed, but the gist of all of them is that the power conversion device takes an AC power supply/source and converts the AC power supply to supply three-phase AC current with a variable frequency and variable current to the electric motor (see, e.g., [0002], [0056], [0085], & Figures 1 to 3). Some embodiments include a rectifier circuit (20 in the reference) that rectifies an AC voltage of the AC power source and a capacitor (26 in the reference) connected in parallel between an output side of the rectifier circuit and smooths voltage variation/fluctuation caused by switching in the device (see [0050], [0053], [0055], [0070], and Fig. 1 & 2). These embodiments also include an inverter circuit (30 in the reference) ([0050], [0056], [0070], and Fig. 1 & 2). As is well known in circuitry, rectifiers inherently receive an AC voltage and convert the AC voltage in a direct current (DC) voltage, and inverters inherently convert DC voltage into an AC voltage; accordingly, these embodiments read on the device being an indirect matrix converter (i.e., indirect conversion of AC to AC via an intermediate conversion of AC to DC; in other words, an AC to DC to AC converter) including a converter that receives an AC voltage of the AC power source and converts the AC voltage in a DC voltage and inverter that converts the DC voltage into an AC voltage and supplies the AV voltage to the motor. Other embodiments alternatively include a matrix converter (51 in the reference) that directly converts an AC voltage of the AC power source into an AC voltage having a predetermined frequency and supplies/outputs it to the motor without converting it into a DC voltage (Id. & [0084]-[0088] & Fig. 3). Tooyama et al. further teach the AC power source may be a single-phase power source or a three-phase power source ([0050], [0070], [0088], & Fig. 1 to 3).
At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide the power conversion device/apparatus of Tooyama et al. to the air conditioning and/or refrigeration apparatus of the cited issued patents and copending applications in order to obtain devices with a sufficiently controlled, if not improved control, of power driving an electric motor of the air conditioner device’s compressor with a reasonable expectation of success.
The Refrigeration Theory, Compressors and Refrigeration Cycle Components chapter and the Refrigeration and Cooling Apparatus chapter of the Trane Air Conditioning Manual teach each of scroll compressors, rotary compressors, turbo (centrifugal) compressors, and screw compressors are well-known and suitable to serve as the compressor in an air conditioning device (p.140, 144, 145, 187, & 188). Note that the Trane Air Conditioning Manual also teach compressors are well known to be driven by an electric motor (p.140 & 188).
At the time of the effective filing date it would have been obvious to a person of ordinary skill in the refrigeration/air conditioning art(s) to provide any one of the compressor types (e.g., scroll, rotary, turbo, or screw) as taught by the Trane Air Conditioning Manual as the compressors of the air conditioning and/or refrigeration apparatus of the cited issued patents and copending applications in order to obtain an air conditioning device with a reasonable expectation of success.
Yanashima et al. is drawn to three-phase electric motors for driving air conditioner compressors (abstract, [0030], [0033]) and teach incorporating permanent magnets into slots of the motor’s rotor in a manner so as to improve features of the motor (abstract). In other words, Yanashima et al. teach synchronous motors having a rotor including permanent magnets, i.e., permanent magnet synchronous motors, are well-known and suitable to serve as motor/driving-means of compressors in an air conditioning device ([0119]). Yanashima et al. also teach scroll compressors, rotary compressors, and screw compressors are well-known and suitable to serve as the compressor in an air conditioning device ([0119]).
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 permanent magnet synchronous motor as taught by Yanashima et al. as the motor/driving-means for the compressors of the air conditioning and/or refrigeration apparatus of the cited issued patents and copending applications in order to obtain an air conditioning device with a reasonable expectation of success. At the time of the effective filing date it would have also been obvious to a person of ordinary skill in the refrigeration/air conditioning art(s) to provide any one of the compressor types (e.g., scroll, rotary, or screw) as taught by Yanashima et al. as the compressors of the air conditioning and/or refrigeration apparatus of the cited issued patents and copending applications in order to obtain an air conditioning device with a reasonable expectation of success.
The rejections citing U.S. Patents are non-provisional nonstatutory double patenting rejections because the patentably indistinct claims have been patented. The rejections citing copending U.S. applications are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 04/23/2026 have been fully considered but they are not persuasive.
Regarding the 103 rejection(s) over Fukushima (US 2017/0058173 A1) in view of Tooyama et al. (JP 2013-172615 A) Applicant argues the Office’s rationale that Fukushima’s working examples of Table 13 imply concentration ranges of HFO-1132(E), HFC-32, and HFO-1234yf that overlap the claimed ranges is incorrect because Fukushima provides no comments whatsoever concerning the results in Table 13. Applicant’s position is the rationale of record is improper because plotting Fukushima’s teachings/examples in Applicant’s Figure is hindsight that improperly reconstructs the claimed invention.
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 the presence case, the rejection of record takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was filed.
In the present case, the rejection of record merely relies on Fukushima’s working examples and what they would have reasonably suggested to one having ordinary skill in the art (Table 13 in the reference clearly shows there are trade-offs in various properties between the cited refrigerant examples, which is a suggestion, if not strong motivation, to a person of ordinary skill in the art to work within and formulate refrigerants in-between them). Relying on a prior art reference’s working examples and what they would have reasonably suggested to one having ordinary skill in the art is not hindsight reasoning.
While Applicant is concerned the triangular area in the ternary plot diagram (20-80 wt.% HFO-1132(E), 10-70 wt.% HFC-32, and 10-70 HFO-1234yf where the sum of HFO-1132(E), HFC-32, and HFO-1234yf is 100 wt.% shown as dotted-dashed lines) is not disclosed in Fukushima, note that this line provided in the marked-up plot was drawn by the Examiner but is (and shows) the extent of overlap between the cited Examples of Fukushima (Examples 113 to 126 in Table 3) with the claimed figure of line segments ON, NU, and UO corresponding to the claimed refrigerant (1) and the claimed figure of line segments PS, ST, and TP corresponding to the claimed refrigerant (2). It is not hindsight to annotate Applicant’s ternary diagram (a plot that depicts three component compositions) with a prior art reference’s working examples and what would be suggested to a person of ordinary skill in the art to fairly compare the claims against the prior art.
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). "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)). "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382.
Regarding Applicant’s concern Fukushima provides no comments concerning the results of Table 13, this concern is not persuasive to withdraw the rejection because cited Table presents results of the compositions which constitute data for a person of ordinary skill in the art to interpret and utilize regardless of whether the reference presents a section elaborating upon the data reduced to words.
See Table 13 of Fukushima:
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The results of table demonstrate trade-off(s) 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 depending on the relative concentrations) such that it would be obvious to one of ordinary skill in the art to vary or optimize the relative amounts of HFO-1132(E), HFC-32, and HFO-1234yf 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. For example, the data shows, at least, 1) increasing HFC-32 increases the RQR410A at the expense of GWP and RCOPR410A and increases the RQR134a at the expense of RCOPR134a, 2) increasing HFO-1234yf generally increases RCOPR410A at the expense of Temperature glide (a greater temperature glide indicates a composition is less azeotrope-like) and RQR410A, and 3) increasing HFO-1132(E) generally increases the minimum RQR134a and RQR410A at smaller concentrations of HFC-32 but lowers the maximum RQR134a and RQR410A at higher concentrations of HFC-32.
"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 (Id.).
Applicant further argues the claimed refrigerants were selected based on their low ASHRAE flammability whereas Fukushima fails to teach or suggest the flammability of their refrigerants.
In response to applicant's argument that Fukushima fails to teach, suggest, or contemplate the flammability of their refrigerant compositions, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant has not demonstrated that the claimed ranges are critical to flammability. The Office reviewed the working examples in the present application’s specification and only found that flammability of the claimed ternary HFO-1132(E)/R32/R1234yf compositions were disclosed at Tables 1 to 3 on pages 23 and 24; these Tables only test the flammability of a few points and all obtain WCF burning velocities of 10 cm/s or 8 cm/s or less (every example whether inside and outside the claimed ranges in Table 1 obtains “10 cm/s”, and every example whether inside or outside the claimed ranges in Tables 2 & 3 obtains “8 cm/s or less”), which is “Class 2L” “ASHRAE lower flammability” when determined by ANSI/ASHRAE Standard 34 per [0015] of the specification. 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). How are the claimed ranges critical to flammability when the same degree of flammability is obtained inside and outside the claimed ranges?
Also note, as is known to persons of ordinary skill in the refrigerant arts, ASHRAE Standard 34 classifies and categorizes refrigerants according to their flammability and that there are four classes of flammability for refrigerants therein, ordered in ascending risk of flammability: Class 1 (no flame propagation at 60°C but may still be flammable at higher temperatures), Class 2L (lower/mildly flammable; difficult to ignite with a relatively low energy release and low flame propagation speed), Class 2 (flammable; ignite easily with a relatively high energy release), and Class 3 (higher flammable; ignite very easily and are potentially explosive). The present invention’s obtained Class 2L lower flammability WCF results of 10 cm/s and/or 8 cm/s or less are still mildly flammable. How is a mixture of HFO-1132(E) (a Class 2 flammable refrigerant), R-32 (a Class 2L mildly flammable refrigerant), and R1234yf (another Class 2L mildly flammable refrigerant) resulting in a Class 2L mildly flammable refrigerant composition an unexpected result? Applicant has the burden to establish the results are unexpected and significant. Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). Additionally, a combination of a more-flammable compound with less-flammable compounds yielding a composition that is less flammable than the more-flammable (or most-flammable) compound is merely an expected beneficial result of their combination. In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967).
Applicant further argues the Office’s position to Table 13 demonstrating trade-off(s) of properties is detached from reality because determining the beneficial results between the sample points of Table 13 requires an enormous amount of trial and error and would not be attempted by the skilled artisan. Applicant also argues the skilled artisan would not presume that such beneficial results would be achieved between the sample points.
In response, these arguments are not persuasive because, as explained above, the rejection of record merely relies on Fukushima’s working examples and what they would have reasonably suggested to one having ordinary skill in the art. The results of table demonstrate trade-off(s) 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 depending on the relative concentrations) such that it would be obvious to one of ordinary skill in the art to vary or optimize the relative amounts of HFO-1132(E), HFC-32, and HFO-1234yf 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. For example, the data shows, at least, 1) increasing HFC-32 increases the RQR410A at the expense of GWP and RCOPR410A and increases the RQR134a at the expense of RCOPR134a, 2) increasing HFO-1234yf generally increases RCOPR410A at the expense of Temperature glide (a greater temperature glide indicates a composition is less azeotrope-like) and RQR410A, and 3) increasing HFO-1132(E) generally increases the minimum RQR134a and RQR410A at smaller concentrations of HFC-32 but lowers the maximum RQR134a and RQR410A at higher concentrations of HFC-32.
For example, note that Example 114 of Fukushima (20 wt.% HFO-1132(E), 20 wt.% HFC-32, and 60 wt.% HFO-1234yf) obtains a temperature glide of 5.8, RCOPR134a of 0.95, RQR134a of 1.66, RCOPR410A of 1.03, RQR410A of 0.74 and GWP of 139 and Example 115 of Fukushima (20 wt.% HFO-1132(E), 40 wt.% HFC-32, and 40 wt.% HFO-1234yf) obtains a temperature glide of 4.4, RCOPR134a of 0.94, RQR134a of 1.99, RCOPR410A of 1.01, RQR410A of 0.78 and GWP of 274. The only difference between the two examples’ concentrations is HFO-1234yf is decreased for an increase of HFC-32 which results in an improved decreased temperature glide, increased RQR134a, and increased RQR410A at the expense of an increased GWP, decreased RCOPR134a, and decreased RCOPR410A. As clearly directed and suggested by the cited Table, a resultant refrigerant between Examples 114 & 115 would have a temperature glide of between 4.4 and 5.8, a RCOPR134a of about 0.95, a RQ134a between 1.66 and 1.99, a RCOPR410A of between 1.01 and 1.03, a RQR410A between 0.74 and 0.88, and a GWP between 139 and 274. Of course, additional rationale exists over each and every other distinct pair of working examples in Table 13 of Fukushima.
A given course of action often has simultaneous advantages and disadvantages (here, the concentration of each component imparts simultaneous advantages and disadvantages to the resultant refrigerant composition) that does not necessarily obviate one of person of ordinary skill from modifying a reference.
Applicant’s arguments are not persuasive because they are not supported by actual proof (e.g., proof that intermediate points between Fukushima’s exemplary points do not obtain beneficial/sufficient temperature glides, relative COPs, relative refrigerating capacities, and GWPs of varying degree(s) between the exemplary points, proof that the skilled artisan would not presume beneficial results would be achieved between the sample points, proof that the rationale is detached from reality, proof that enormous trial and error is needed, etc.). Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).
Applicant further argues Fukushima fails to meet the limitation regarding the refrigerant comprising HFO-1132(E), R32, and R1234yf in a total amount of 99.5 mass% or more of the entire refrigerant recited in claim 1 because para. 0044 allegedly recommends HFO-1132(Z) is also contained in addition to HFO-1132(E).
In response, this argument is not persuasive because para. 0044 is merely one alternative preferred embodiment of the reference over other alternative embodiments and various sets of working examples. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (or other working examples). A recommendation (i.e., para. 0044) does not constitute a teaching away from other alternative embodiments and working examples (i.e., Table 13). See In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
Also, the Office respectfully disagrees Applicant’s interpretation of Fukushima (requiring HFO-1132(Z) in addition to HFO-1132(E)) because the cited and relied upon working examples of Table 13 are wholly silent to the provision of any HFO-1132(Z) as alleged. The cited examples of Table 13 are refrigerants consisting of HFO-1132(E), HFC-32, and HFO-1234yf. No HFO-1132(Z) is contained in the cited examples. Refrigerants consisting of HFO-1132(E), HFC-32, and HFO-1234yf contain 100 mass% of the total sum of the components. A total amount of 100 wt.% is in a total amount of 99.5 mass% or more based on the entire refrigerant, as claimed. See para. 0173 disclosing the working examples of Table 13 (examples 113 to 126) were obtained by mixing HFO-1132(E) with two other components (HFC-32 and HFO-1234yf). Para. 0173 is silent to provision of any HFO-1132(Z). Please contrast para. 0173 (to HFO-1132(E)-based examples) with para. 0172 describing a different set of working examples that expressly add HFO-1132(Z).
See also the rationale of record regarding this claimed limitation (the paragraph in the rejection of record beginning, “Alternatively and/or further regarding the claimed 99.5 mass% or more total/sum concentration of HFO-1132(E), R32, and R1234yf …”).
Regarding the nonstatutory double patenting rejections, Applicant notes the claims of 12,270,575, 18/887,125, 18/079,383, and 18/226,936 do not include the now-claimed refrigerants such that the ODP rejections based on those patents/applications are moot and must be withdrawn.
In response, this argument is not persuasive because the cited patents and copending applications recite refrigerants overlapping and/or encompassing (including touching) those claimed:
The claims of US 12,270,575 recite a refrigerant comprising HFO-1132(E), R32, and R1234yf in the same mass percentage amounts of the claimed refrigerant (1) (mass percentages within a figure surrounded by line segments ON, NU, and UO that connect the same points O, N, and U). See, e.g., claim 1 of the patent.
The claims of copending application 17/887,125 recite a refrigerant comprising HFO-1132(E), R32, and R1234yf in mass percentage amounts overlapping and touching that of the claimed refrigerant (1) (by reciting mass percentages within a figure surrounded by line segments including the same point N (27.7, 18.2, 54.1). See, e.g., claim 1 of the copending application.
The claims of 18/079,373, now US 12,584,055, recite a refrigerant comprising HFO-1132(E), R32, and R1234yf in the same mass percentage amounts of the claimed refrigerant (1) (by reciting a figure surrounded by straight lines C1D, DG, GH, HB′, and B′C1 that connect the following 5 points: point C1 (52.0, 36.9, 11.1), point D (44.0, 0.0, 56.0), point G (12.2, 0.0, 87.8), point H (0.0, 8.2, 91.8), and point B′ (0.0, 36.6, 63.4), or on the above straight lines C1D and B′C1 that overlaps and encompasses the instantly claimed figure surrounded by line segments ON, NU, and UO that connect the following 3 points: point O (22.6, 36.8, 40.6), point N (27.7, 18.2, 54.1), and point U (3.9, 36.7, 59.4), or on these line segments). See, e.g., claim 1 of the patent and compare the scope encompassed by the patent's claims as depicted in Fig. 1 of the patent to the scope encompassed by the present application's claims as depicted in Fig. 2 of the present application. Just because the cited patent does not present language in the same terminology as instantly claimed (i.e., the same point names) does not mean that the numerical mass% values of the underlying points and ranges thereof do not overlap.
The claims of copending application 18/226,936 recite a refrigerant comprising HFO-1132(E), R32, and R1234yf in mass percentage amounts overlapping and touching that of the claimed refrigerant (1) (by reciting mass percentages within a figure surrounded by line segments including the same point N (27.7, 18.2, 54.1). See, e.g., claim 1 of the copending application.
Additionally regarding the nonstatutory double patenting rejections, Applicant reiterates their previous argument that the patented and copending claims do not require the refrigerants comprise HFO-1132(E), R32, and R1234yf in a total amount of 99.5 mass% or more based on the entire refrigerant. Applicant argues the Office's relies upon condition language relative to the recited copending application/patented ternary diagrams of the sum of HFO-1132(E), R32, and R1234yf that refer to how the ternary composition is displayed rather than the amount based on the entire refrigerant.
In response, this argument remains not persuasive for the reason(s) of record that the cited patents and copending applications recite equivalent limitations in their claims and/or establish the limitation as an obvious variant of their HFO-1132(E), R32, and R1234yf compositions:
Claims 1, 6, 11, and 13-18 of U.S. Pat. No. 11,435,118 each recite "the sum of HFO-1132(E), R32, and R1234yf is 100 mass%"; the patent's specification also discloses the refrigerant preferably comprises HFO-1132(E), R32, and R1234yf in a total amount of 99.5 mass % or more based on the entire refrigerant.
Claims 5, 9, 13, 17, and 21 of U.S. Pat. No. 11,441,802 each recite "the sum of HFO-1132(E), R32, and R1234yf is 100 mass%"; the patent's specification also discloses the refrigerant preferably comprises HFO-1132(E), R32, and R1234yf in a total amount of 99.5 mass % or more based on the entire refrigerant.
Claims 1, 5, 9, 13, and 17 of U.S. Pat. No. 11,441,819 each recite "the sum of HFO-1132(E), R32, and R1234yf is 100 mass%"; the patent's specification also discloses the refrigerant preferably comprises HFO-1132(E), R32, and R1234yf in a total amount of 99.5 mass % or more based on the entire refrigerant.
Claims 1 and 7-10 of U.S. Pat. No. 11,493,244 each recite "the sum of HFO-1132(E), R32, and R1234yf is 100 mass%"; the patent's specification also discloses the refrigerant preferably comprises HFO-1132(E), R32, and R1234yf in a total amount of 99.5 mass % or more based on the entire refrigerant.
Claims 1, 7, 13, 19, and 25 of U.S. Pat. No. 11,506,425 each recite "the sum of HFO-1132(E), R32, and R1234yf is 100 mass%"; the patent's specification also discloses the refrigerant preferably comprises HFO-1132(E), R32, and R1234yf in a total amount of 99.5 mass % or more based on the entire refrigerant.
Claim 1 of U.S. Pat. No. 11,549,041 recites "the sum of HFO-1132(E), R32, and R1234yf is 100 mass%"; the patent's specification also discloses the refrigerant preferably comprises HFO-1132(E), R32, and R1234yf in a total amount of 99.5 mass % or more based on the entire refrigerant.
Claims 1-5 of U.S. Pat. No. 11,549,695 each recite "the sum of HFO-1132(E), R32, and R1234yf is 100 mass%"; the patent's specification also discloses the refrigerant preferably comprises HFO-1132(E), R32, and R1234yf in a total amount of 99.5 mass % or more based on the entire refrigerant.
Claim 1 of U.S. Pat. No. 11,820,933 recites "the sum of HFO-1132(E), R32, and R1234yf is 100 mass%"; the patent's specification also discloses the refrigerant preferably comprises HFO-1132(E), R32, and R1234yf in a total amount of 99.5 mass % or more based on the entire refrigerant.
Claim 1 of U.S. Pat. No. 11,906,207 recites "the sum of HFO-1132(E), R32, and R1234yf is 100 mass%"; the patent's specification also discloses the refrigerant preferably comprises HFO-1132(E), R32, and R1234yf in a total amount of 99.5 mass % or more based on the entire refrigerant.
Claim 1 of U.S. Pat. No. 12,270,575 recites "the sum of HFO-1132(E), R32, and R1234yf is 100 mass%"; the patent's specification also discloses the refrigerant preferably comprises HFO-1132(E), R32, and R1234yf in a total amount of 99.5 mass % or more based on the entire refrigerant.
Claim 7 of U.S. Pat. No. 12,379,140 recites "the sum of HFO-1132(E), R32, and R1234yf is 100 mass%"; the patent's specification also discloses the refrigerant preferably comprises HFO-1132(E), R32, and R1234yf in a total amount of 99.5 mass % or more based on the entire refrigerant.
Claim 1 of U.S. Pat. No. 12,584,055 recites "the total content of HFO-1132(E), R32, and HFO1234yf is more than 99.5 mass%, based on the total of the refrigerant".
Claim 1 of copending application No. 17/887,125 recites "the sum of HFO-1132(E), R32, and R1234yf is 100 mass%"; the copending application's specification also discloses the refrigerant preferably comprises HFO-1132(E), R32, and R1234yf in a total amount of 99.5 mass % or more based on the entire refrigerant.
Claim 2 of copending application No. 18/226,936 recites "the sum of HFO-1132(E), R32, and R1234yf is 100 mass%" and claim 6 even recites "the refrigerant comprising HFO-1132(E), R32, and R1234yf in a total amount of 99.5 mass% or more based on the entire refrigerant"; the copending application's specification also discloses the refrigerant preferably comprises HFO-1132(E), R32, and R1234yf in a total amount of 99.5 mass % or more based on the entire refrigerant.
Claim 1 of copending application No. 19/550,741 recites "the total content of HFO-1132(E), R32, and HFO1234yf is more than 99.5 mass%, based on the total of the refrigerant".
Arguendo, in the cited patents and copending applications that do not expressly recite the sum of HFO-1132(E), R32, and R1234yf is 99.5 mass% or more (some of the cited patents/applications recite the same limitation) there are no other components recited as contained in the claimed refrigerants in amounts greater than or equal to 0.5 mass% meaning the refrigerant may inherently or intrinsically contain the HFO-1132(E), R32, and R1234yf in a total amount of 99.5 mass% or more based on the refrigerant. For example, in US 12,270,575, HFO-1132(E), R32, and R1234yf are the only components recited in the refrigerant – as there are no other components recited as contained in the claimed refrigerant of US 12,270,575, the refrigerant of US 12,270,575 may intrinsically or obviously contain 100 mass% of HFO-1132(E), R32, and R1234yf.
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./
May 18, 2026
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