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 .
Response to Election/Restrictions
Applicant's election of Invention I (claims 1-8, 17, 18, and 20) without traverse in the reply filed on 03/16/2026 is acknowledged.
Claims 1-20 are currently pending. Claims 9-16 and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being withdrawn to a non-elected invention, and non-elected species of the invention, there being no allowable generic or linking claims.
Claims 1-8, 17, 18, and 20 are currently under examination.
Claim Rejections - 35 USC § 103
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.
1. Claims 1-8, 17, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Singh (US 8,962,707 B2, hereinafter Singh).
Regarding claim 1, Singh teaches (claim 1) a composition comprising:
(a) from about 5% to about 95% by weight of transCF3CH═CClH (HFCO-1233zd(E)), which overlaps with the claimed range of “2.0% to about 15% by weight”;
(b) from about 5% to about 95% by weight of trans-1,3,3,3-tetrafluoropropene (HFO-1234ze(E)), which overlaps with the claimed range of “about 30% to about 45% by weight”;
(c) at least one component other than said HFCO-1233zd(E) and said HFO-1234ze(E) which can be CO2.
Singh also teaches that the composition comprises CO2 in an amount of from about 5% by weight to about 60% by weight of the total composition (col. 24, ll. 1-5), which overlaps with the claimed range of “about 40% to about 60% by weight”.
Thus, the total amount of HFCO-1233zd(E), HFO-1234ze(E) and CO2 can be about 100% by weight based on the total amount of the composition of Singh, which falls within the claimed range of “at least about 98.5% by weight”.
Singh further teaches that the composition is used as a blowing agent (abstract, claim 1); 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”.
Singh does not teach the claimed refrigerant at once under the meaning of anticipation.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claims 2-5, Singh teaches (claim 1) a composition comprising:
(a) from about 5% to about 95% by weight of transCF3CH═CClH (HFCO-1233zd(E)), which overlaps with the claimed ranges of “about 5% to about 10% by weigh”, “about 8% by weight”, and “8% +/- 1% by weight”;
(b) from about 5% to about 95% by weight of trans-1,3,3,3-tetrafluoropropene (HFO-1234ze(E)), which overlaps with the claimed ranges of “about 35% to about 45% by weight”, “about 35% to about 40% by weight”, “about 38% by weight”, and “38% +/- 1% by weight”;
(c) at least one component other than said HFCO-1233zd(E) and said HFO-1234ze(E) which can be CO2.
Singh also teaches that the composition comprises CO2 in an amount of from about 5% by weight to about 60% by weight of the total composition (col. 24, ll. 1-5), which overlaps with the claimed ranges of “about 50% to about 60% by weight”, “about 50% to about 55% by weight”, “about 54% by weight”, and “54% +/- 1% by weight”.
Regarding claim 6, Singh teaches (claim 1) that the composition comprises:
(a) from about 5% to about 95% by weight of transCF3CH═CClH (HFCO-1233zd(E));
(b) from about 5% to about 95% by weight of trans-1,3,3,3-tetrafluoropropene (HFO-1234ze(E));
(c) at least one component other than said HFCO-1233zd(E) and said HFO-1234ze(E) which can be CO2, wherein the CO2 is in an amount of from about 5% by weight to about 60% by weight of the total composition (col. 24, ll. 1-5).
Thus, the total amount of HFCO-1233zd(E), HFO-1234ze(E) and CO2 can be 100% by weight based on the total amount of the composition of Singh.
Singh also teaches that monochlorotrifluoropropene (i.e. HFCO-1233zd(E)) can be in combination with one or more other components such as two other components which can include CO2 and other fluoroalkene such as HFO-1234ze(E), to form a composition for using as a blowing agent (abstract, claim 1).
Singh further teaches that the composition is used as a blowing agent (abstract, claim 1); 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).
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 combine HFCO-1233zd(E) with two other components such as HFO-1234ze(E) and CO2 as taught by Singh, in order to form a composition for use as a blowing agent with a reasonable expectation of success. The combination of HFCO-1233zd(E), HFO-1234ze(E) and CO2 reads on the claimed refrigerant consisting of CO2, HFO-1234ze(E), and HFCO- 1233zd(E). Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claims 17 and 20, the transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original) See MPEP 2111.03 III. Additional refrigerants (and even additives typical for provision in refrigerants) are permissible because they would not change the characteristics of the composition from being a refrigerant. Therefore, for the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355. See MPEP 2111.03 III.
Singh teaches (claim 1) that the composition comprises:
(a) from about 5% to about 95% by weight of transCF3CH═CClH (HFCO-1233zd(E)), which overlaps with the claimed ranges of “2.0% to about 15% by weight” and “8% +/- 1% by weight”;
(b) from about 5% to about 95% by weight of trans-1,3,3,3-tetrafluoropropene (HFO-1234ze(E)), which overlaps with the claimed ranges of “about 30% to about 45% by weight” and “38% +/- 1% by weight”;
(c) at least one component other than said HFCO-1233zd(E) and said HFO-1234ze(E) which can be CO2, wherein the CO2 is in an amount of from about 5% by weight to about 60% by weight of the total composition (col. 24, ll. 1-5), which overlaps with the claimed ranges of “about 40% to about 60% by weight” and “54% +/- 1% by weight”.
Regarding claims 7, 8, and 18, The instant invention discloses that the term “low temperature refrigeration” refers to heat transfer systems and methods which operate with the refrigerant evaporating at a temperature of from about −45° C. and up to and about ambient (instant US Pub. [0086]).
Singh teaches that the composition can be used in a cold or cryogenic application (col. 34, ll. 58-61).
Singh also teaches that the composition can be used in a refrigeration system where the evaporator temperature is about −35° F (col. 36, ll. 1-3), equaling to -37 °C, which reads on the claimed low temperature refrigeration system.
Conclusion
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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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