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 .
Status of the Claims
The preliminary amendment filed on 12/10/2025 has been entered. Claim 1 has been amended and claims 8-9 have been newly added. Thus claims 1-9 are currently pending and are under examination.
Withdrawn Rejection
In view of the amendment of the copending claim 1 of Application no. 18/031,514, the instant claims are not obvious and thus the nonstatutory double patenting rejection over claims of 18/03,514 has been withdrawn.
Claim Objections
Claims 8-9 are newly 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.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Air Liquide, Safety Data Sheet “(E)-1,1,1,4,4,4-Hexafluoro-2-Butene” Jun. 13, 2014, pages 1-9 (Liquide hereinafter; cited in PTO-892 09/15/2025). See underlined that addresses the amended limitation/s.
Regarding claims 1-3 and 5, Liquide teaches a method for storing (E)-1,1,1,4,4,4-hexafluoro-2-butene (page 3) in a container (throughout the document), wherein the composition of (E)-1,1,1,4,4,4-hexafluoro-2-butene is 100 mol% (page 2), i.e. the fluorobutene does not contain any of the claimed metals as impurities.
Response to Arguments
Applicant argues that Liquide fails to disclose the presence of manganese, cobalt, nickel, and silicon in a gas phase leads to isomerization of (E)-1,1,1,4,4,4-hexafluoro-2-butene. Furthermore, it has been argued that the reference neither teaches nor suggests evaluation about the isomerization when the total concentration of manganese, cobalt, nickel, and silicon is more than 1,000 ppb or less as discussed in the instant specification.
The examiner disagrees.
Firstly, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In this instance, nowhere in the claim describes about the isomerization of (E)-1,1,1,4,4,4-hexafluoro-2-butene as Applicant argues.
Furthermore, instant claim 1 recites “the fluorobutene contains or does not contain at least one of manganese, cobalt, nickel, and silicon” which makes the presence of at least one of manganese, cobalt, nickel, and silicon optional. Liquide teaches storing (E)-1,1,1,4,4,4-hexafluoro-2-butene that has a composition of 100 mol%. A 100 mol% in the composition means that there is no other component, including at least one of manganese, cobalt, nickel, and silicon, other than (E)-1,1,1,4,4,4-hexafluoro-2-butene and thus the reference reads on the claimed “does not contain at least one of manganese, cobalt, nickel, and silicon”. Thus, Applicant’s arguments with respect to Liquide not teaching “containing at least one of manganese, cobalt, nickel, and silicon” is mute.
In view of the foregoing, instant claims 1-3 and 5 remain anticipated by Liquide.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Air Liquide, Safety Data Sheet “(E)-1,1,1,4,4,4-Hexafluoro-2-Butene” Jun. 13, 2014, pages 1-9 (Liquide hereinafter; cited in PTO-892 09/15/2025).
The teachings of Liquide have been set forth above.
Regarding claims 4 and 6-7, the reference further teaches that the cylinders containing (E)-1,1,1,4,4,4-hexafluoro-2-butene should be stored in areas not exceeding 52°C (page 3). The claimed storage temperature of -20°C or more and 50°C or less lies inside that of Liquide, and is rendered obvious in view of MPEP § 2144.05 “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to conduct a method for storing a fluorobutene, wherein the fluorobutene is stored at a temperature of -20°C or more and 50°C or less in view of the teachings of Liquide.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 stand provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/031,425 (reference application), over claims 1-7 of copending Application No. 18/031,460 (reference application), and over claims 1-4 of copending Application No. 18/031,542 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to a method for storing a fluorobutene represented by general formula C4HxFy where x is 0 or more and 7 or less, y is 1 or more and 8 or less, and x + y is 8.
The copending claims recite that the fluorobutene contains or does not contain impurities, and the instant claim recites that the fluorobutene contains or does not contain at least one of manganese, cobalt, nickel, and silicon as a metal impurity. A skilled artisan would have had a reason to try the copending claims’ limited number of fluoro-2-butene composition, including the fluorobutene which does not contain any additional impurities and would have a reasonable expectation of success in arriving at the instantly claimed method in which fluorobutene does not contain any of the metal impurities.
MPEP § 2143 states that the Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp and that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at 421, 82 USPQ2d at 1397. Therefore, choosing from a finite number of identified, predictable solutions, is likely to be obvious when it does no more than predictable results and with a reasonable expectation of success.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to conduct a method for storing a fluorobutene as instantly claimed in view of the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
The subject matter of claims 8-9 is free of prior art. The closest prior art reference is Patent application publication number US2016/0009847A1 (US’847).
US’847 teaches a method for storing a composition containing 1,1,1,4,4,4-hexafluoro-2-butene by forming a forming a storage stable foamable composition that comprises: (i) a blowing agent composition comprising 1,1,1,4,4,4-hexafluoro-2-butene (1336mzzm), one or more polyols, one or more surfactants, and at least one catalyst. The reference further teaches that the catalyst system includes an amine catalyst ([0030]) and that in addition to the amine catalyst, the catalyst system alco includes at least non-amine catalyst such as cobalt, manganese, and nickel ([0034]). The catalysts are present in an amount of from about 0.001 wt. % to about 5.0 wt. ([0034]). However, nowhere in the reference teaches or suggests that a total concentration of manganese, nickel, cobalt, nickel, and silicon is 1,000 ppb by mass or less as instantly claimed.
Conclusion
Claims 1-7 are rejected and no claims are allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEDHANIT W BAHTA whose telephone number is (571)270-7658. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MEDHANIT W BAHTA/Primary Examiner, Art Unit 1692