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 remarks filed 07/06/2026.
Claims 1-20 are currently pending, of which claims 9-16 and 19 are withdrawn.
Claims 1-8, 17, 18, and 20 are currently under examination.
The rejection of claims 1-8, 17, 18, and 20 under 35 U.S.C. 103 as being unpatentable over Singh (US 8,962,707 B2, hereinafter Singh) is maintained in view of the above remarks.
The rationale of record remains the same. See pages 3 to 7 of the Non-Final Office action mailed 04/03/2026.
Response to Arguments
Applicant's arguments filed 07/06/2026 have been fully considered but they are not persuasive.
Applicant argues that the ranges disclosed in Singh are extremely broad (e.g., 5-95 wt% for each of HFCO-1233zd(E) and HFO-1234ze(E), and 5-60 wt% for CO2); Singh is a genus-level disclosure with countless permutations for a person of ordinary skill in the art to choose from; the claimed species is not merely a selection of three known components, but a three-component refrigerant in which CO2, HFO-1234ze(E), and HFCO-1233zd(E) are present in the claimed coordinated relative amounts and together constitute at least about 98.5% by weight of the refrigerant; Singh does not identify this three-component refrigerant as preferred, does not exemplify the claimed relative proportions, does not teach that the claimed proportions provide the nonflammability and low-temperature refrigeration performance described in the present application, and does not provide a reason to select the claimed components and ranges from the several alternatives provided therein (pp. 7-8).
Applicant also argues that the rejection identifies, at most, broad overlapping ranges, but not a teaching or reason to select the claimed species from the genus of Singh; however, the refrigerant of claim 1 was compared with a conventional refrigerant (Comparative Example 1); the flammability of the two refrigerants were compared and it was observed that during a vapor leak, the refrigerant of Comparative Example 1 was found to have flame limits, while the refrigerant of claim 1 did not have flame limits which is nonflammable; further, using the refrigerant of the present invention (Refrigerant E1) provides a better match to the cooling curve compared to the prior refrigerant; thus, comparative examples show that the claimed relative amounts are critical and produce materially different results, including nonflammability and reduced power consumption, compared to conventional refrigerants (pp. 8-9).
In response, Applicant’s arguments have been considered but they are not persuasive.
Firstly, regarding Applicant’s argument about Singh is a genus-level disclosure with countless permutations for a person of ordinary skill in the art to choose from, in response, Applicant’s argument is not persuasive.
Singh’s claim 1 teaches as below:
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Singh’s claim 1 explicitly teaches that a blowing agent composition comprises HFCO-1233zdE, HFO-1234zeE, and component (c) at least one component selected from the group consisting of methylformate, water, CO2, 2-ethyl-1-hexanol, trans-1,2 dichloroethylene, and dimethoxymethane. Thus, a person of ordinary skill in the art reading Singh’s claim 1 would “at once envisage” CO2 from the six components (methylformate, water, CO2, 2-ethyl-1-hexanol, trans-1,2 dichloroethylene, and dimethoxymethane), because there are only six components which are clearly suggested by Singh’s claim 1 as component (c).
Furthermore, Singh also teaches that water and CO2 are particularly preferred for use in blowing agents (col. 19, ll. 14-17). Thus, a person of ordinary skill in the art reading Singh’s col. 19 and ll. 14-17 would “at once envisage” CO2 from the two components (water and CO2). Therefore, CO2 as component (c) in Singh’s claim 1 with Singh’s col. 19 and ll. 14-17 is not among countless permutations as alleged by Applicant.
Secondly, regarding Applicant’s argument that Singh does not teach that the claimed proportions provide the nonflammability and low-temperature refrigeration performance described in the present application, in response, claim 1 does not require that the claimed refrigerant has nonflammability and low-temperature refrigeration performance. Thus, the Office does not have the burden to show that Singh teaches nonflammability and low-temperature refrigeration performance.
Furthermore, Singh teaches that the composition of Singh is preferably nonflammable (col. 19, ll. 28-32; col. 27, ll. 54-56). Singh also teaches that the composition of Singh can be used in a low temperature condition, or a cold or cryogenic application (col. 34, ll. 50-53, 58-61).
Singh further teaches that the blowing agent comprises at least about 50% by weight of the composition, and in certain embodiments the blowing agent consists essentially of the composition/compounds (col. 14, ll. 54-57; col. 19, 50-52), which overlaps with the claimed range of “at least about 98.5% by weight”.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect that the properties of having nonflammability and low-temperature refrigeration performance, would flow naturally from the teaching of Singh, because the teaching of Singh provides substantially the same refrigerant comprising the same amount of the three compounds, the same amount of CO2, the same amount of HFO-1234ze(E), and the same amount of HFCO-1233zd(E) as claimed, and also because the composition of Singh is preferably nonflammable, and can be used in a low temperature condition, or a cold or cryogenic application as recognized by Singh. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Thirdly, regarding Applicant’s argument that the ranges disclosed in Singh are extremely broad (e.g., 5-95 wt% for each of HFCO-1233zd(E) and HFO-1234ze(E), and 5-60 wt% for CO2), however, the comparative examples (i.e. comparing with Refrigerant E1 with Comparative Example 1, comparing Refrigerant E1 with R410A in the instant specification) show that the claimed relative amounts are critical and produce materially different results, including nonflammability and reduced power consumption, in response, Applicant’s argument is not persuasive.
Unexpected results must, in actuality, be unexpected. Unexpected results must be compared with the closest prior art. See In re De Blawe, 222 USPQ 191 (FED. Cir. 1984), and In re Fenn, 208 USPQ 470 (CCPA 1981). See MPEP § 716.02(e).
Refrigerant E1, Comparative Example 1, and R410A in the instant specification (instant Table E1, Table CE1, and Table E3) are no probative value in the determining patentability of claims since they do not involve a comparison of Applicant's invention with the closest applied prior art. Refrigerant E1, Comparative Example 1, and R410A in the instant specification (instant Table E1, Table CE1, and Table E3) are limited to a composition containing CO2, HFO-1234ze(E) and HFCO-1233zd(E) (instant Refrigerant E1 in Table E1), compared to comparative examples lacking HFO-1234ze(E) and HFCO-1233zd(E) (instant Comparative Example 1 in Table CE1 which contains CO2, propane and isopentane; R410A containing HFC-32 and HFC-125). Singh constitutes closer prior art than Applicant's comparative examples (instant Comparative Example 1 in Table CE1, and R410A in instant Table E3), because HFO-1234ze(E) and HFCO-1233zd(E) are expressly taught components in Singh’s composition (Singh’s claim 1).
Even if, arguendo, the comparison was done between the Applicant's invention and the closest prior art, the claims are not deemed patentable over the reference of record since they are not commensurate in scope with the probative value of data in the examples. The claims are not commensurate in scope with the comparative showing, because claim 1 recites “2.0% to about 15% by weight of HFCO-1233zd(E)”, however, Refrigerant E1 in instant Table E1 contains 18 wt.% of HFCO-1233zd(E), which is out of the claimed range of “2.0% to about 15% by weight”. See In re Clemens, 206 USPQ 289 (CCPA 1980).
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.
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/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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