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 .
The amendment dated 10/08/2024 has been considered and entered. The amendment removes the indefinite language of claim 9, thus overcoming the rejections based on indefiniteness. The response was considered but was not found to be persuasive over the prior art rejections in view of Kontomaris et al. (US 2016/0137895) which are hereby maintained.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/08/2024 has been entered.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4 – 6, 8 – 24 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Kontomaris et al. (US 2016/0137895) or, in the alternative, under 35 U.S.C. 103 as obvious over Kontomaris et al. (US 2016/0137895)
In regards to claim 1, Kontomaris teaches use of alkyl perfluoroalkene ethers and mixtures in working fluid in high temperature heat pumps (abstract). The alkyl perfluoroalkene ether can comprise methyl perfluoroheptene ethers comprising 5-methoxyperfluoro-3-heptene, 3-methoxyperfluoro-3-heptene, 4-methoxyperfluoro-2-heptene, 3-methoxyperfluoro-2-heptene and mixtures [0046]. The composition can optionally comprise 0.01 (i.e., 100ppm) to about 5% (i.e., 50,000ppm) additives such as antioxidant, scavengers, or stabilizers such as butylated hydroxy toluene (BHT) [0182, 0183]. Stabilizers such as nitromethane are also optional [0184]. Thus, since the additives are optional, the claimed composition is anticipated or is at least obvious.
In regards to claims 4 – 6, 8, 9, Kontomaris teaches the composition having the claimed limitations.
In regards to claim 10, Kontomaris teaches the composition comprising the working fluid and the claimed scavenger and antioxidant and thus would intrinsically provide the method of reducing acidic degradation of the working fluid comprising the claimed additives.
In regards to claims 11 – 13, Kontomaris provides the claimed method and teaches the composition having the claimed limitations.
In regards to claim 14, Kontomaris provides a composition comprising additives which are solutes dissolved in composition thus providing the claimed method.
In regards to claim 15, Kontomaris teaches the working fluid having the composition of the claim and which are contacted with heat pumps thus providing a method of cleaning the surface as claimed.
In regards to claims 16, 17, Kontomaris teaches the working fluid for heat pumps similar to the system of the applicant (see page 2 of applicant’s specification). The composition comprises glycols such as ethylene glycol, polyalkylene glycol, etc., which are non-ionic surfactants and thus would intrinsically provide the dewatering or drying of the substrate as claimed [0116, 0175]. The system may comprise water, glycol or mixtures as heat transfer medium and which is heated and evaporated, which provides removal of water [0062,0116].
In regards to claims 18 – 21, Kontomaris teaches heat transfer fluid comprising the claimed composition as previously stated and which are used in heat pumps similar to the device of the claims. Thus, the steps of combining fluorolubricant in solvent such as water or glycol, contacting the surface of the heat pump and evaporating the solvent to leave the fluorolubricant on the surface would be intrinsically performed. The process of producing heating, cooling, heat and/or heat transfer are intrinsically performed as previously discussed.
In regards to claims 22 – 24, Kontomaris teaches the heat transfer fluid for heat pumps and which are used for replacing heat transfer fluids in a chiller and thus intrinsically provide the method of replacing the heat transfer fluid [0086, 0087]. The types of chillers used in the heat pump system do not carry patentable weight as they do not further limit the process of replacing a heat transfer fluid in the system. However, to the extent that the type of chiller used in the heat pump carries patentable weight, it would at least have been obvious to use conventional heat transfer fluids in heat pumps that use the claimed chillers as they are drawn to similar fluids useful for similar purposes. According to KSR, choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (“obvious to try”) is a basis for obviousness.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that the prior art fails to teach the amount of the second component such as BHT as claimed. The argument is not persuasive.
Kontomaris teaches that a single additive such as BHT can be present at the amounts claimed range as discussed above.
Applicant argues that the claimed stabilizers demonstrate critical improvement at the claimed ranges of from 100 to 1100 ppm. The argument is not persuasive.
Allegations of criticality cannot overcome rejections based on anticipation. However, to the extent that the case is found to be obvious, the inventive examples are not commensurate in scope with the claims.
While the claims allow for a concentration of stabilizers to range from about 100ppm to about 1100 ppm, the inventive examples only allow the concentration of 2-t-butyl-6-methylphenol to be as low as 110ppm which still does not support the breadth of the claims nor demonstrate criticality at the lower endpoint of 100 ppm or lower amounts than 100 ppm which still encompasses the about 100 ppm of the claims.
Similarly, the inventive examples fail to provide a single stabilizer useful at 1100 ppm but requires the use of combinations of stabilizers to provide 1000 ppm which still fails to support the breadth of the claimed range nor demonstrate criticality at the upper limit of 1100 ppm or slightly higher amounts which encompasses the about 1100ppm limit.
While applicant attempts to demonstrate criticality over a composition comprising 1,3-dioxolane alone, none of the inventive examples comprises a 1,3-dioxolane alone as stabilizer. Rather, it appears that when 1,2-epoxybutane or 1,3-dioxolane is used they must be combined with another stabilizer which does not support the breadth of the claims that allows for the use of such ingredients alone as sole stabilizers.
Therefore, applicant fails to provide inventive examples that are commensurate in scope with the claims or to persuasively demonstrate criticality of the claimed range to sufficiently rebut the case of obviousness.
Allowable Subject Matter
Claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Kontomaris fails to teach compositions having the combination of stabilizers having the claimed amounts.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAIWO OLADAPO whose telephone number is (571)270-3723. The examiner can normally be reached 8-5pm.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771