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 03/16/2026.
Claims 1-13 and 15-21 are currently pending.
Applicant requested a six (6) month suspension of action with the response filed 03/16/2026. The six month period for suspension ran from approximately 04/01/2026 (the day the letter of suspension was mailed) to 10/01/2026 (six months after the prior date), and the application was returned to the Examiner's docket on 10/08/2026. As more than six months have passed since the letter of suspension was mailed, prosecution is hereby resumed.
The IDS statements filed 11/26/2025, 03/19/2026, and 09/23/2026 have been considered. Initialed copies accompany this action.
For most of the foreign patent references cited in the IDS filed
03/19/2026, Applicant has merely provided translations of the abstracts of the foreign patent references. While the references have been considered to the best of the Examiner’s ability, the contents of the references/pages in foreign languages have not been considered. Regarding NPL Cite. No. 1 & 2 on the IDS filed 11/26/2025 and FOR Cite No. 15 & 39 on the IDS filed 03/19/2026, the references are in foreign languages and no English translations have been provided; the content of these references have not been considered. Applicant is reminded 37 CFR 1.98(a)(3) requires a concise explanation of the relevance, as it is presently understood by the individual designated in § 1.56(c) most knowledgeable about the content of the information, of each publication that is not in the English language.
Response to Amendment
The objections of claims 1-3, 15, 16, and 19 are withdrawn in view of the above amendment.
The rejection of claims 1-13 and 15-20 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the above amendment.
The claim rejection under 35 U.S.C. 103 as being unpatentable over Yana Motta et al. (US 2019/0161660 A1) is maintained and reiterated below with revisions made as needed to the very minor changes in terminology made by the present claim amendments.
The claim rejections under 35 U.S.C. 102 and 103 as being anticipated by and/or obvious/unpatentable over Smith (US 2020/0131417 A1) are generally maintained and reiterated below with revisions made as needed to the minor changes in terminology made by the present claim amendments. Rationale to claim 17 (and its dependent claim(s)) is modified, necessitated by the amendment amending “ADM4, ADM6 and combinations of these” to “glycidyl ester”. Additional rationale is also presented to newly added claim 21, necessitated by its addition to the claims.
The claim rejections under 35 U.S.C. 102 and 103 as being anticipated by and/or obvious/unpatentable over Smith (US 2020/0131418 A1) are generally maintained and reiterated below with revisions made as needed to the minor changes in terminology made by the present claim amendments. Rationale to claim 17 (and its dependent claim(s)) is modified, necessitated by the amendment amending “ADM4, ADM6 and combinations of these” to “glycidyl ester”. Additional rationale is also presented to newly added claim 21, necessitated by its addition to the claims.
The claim rejection under 35 U.S.C. 103 as being unpatentable over Yana Motta et al. (US 10,731,066 B2) is maintained and reiterated below with revisions made as needed to the very minor changes in terminology made by the present claim amendments.
The claim rejection under 35 U.S.C. 103 as being unpatentable Sethi et al. (US 10,767,091 B2) is maintained and reiterated below with revisions made as needed to the very minor changes in terminology made by the present claim amendments.
Upon careful consideration, the nonstatutory double patenting rejections over the claims of 1) U.S. Patent No. 10,731,066, 2) U.S. Patent No. 10,767,091, 3) U.S. Patent No. 11,111,424, and 4) copending Application No. 18/399,063 are each withdrawn in view of the above amendment. The claims cited patents/applications do not recite the presence of all trifluoroiodomethane, lubricant, alkylated naphthalene/AN4, and acid depleting moiety/ADM components (or genera that might obviously contain the components as species) to meet the instant claims under a proper double patenting rejection.
The nonstatutory double patenting rejection over the claims of copending Application No. 17/556,509 is withdrawn as the copending application appears abandoned (more than six months have passed since the Final Office action mailed 03/25/2026 in the copending application). However, a new nonstatutory double patenting rejection over the claims of copending Application No. 19/819,549 (a continuation of 17/556,509) was recently filed (09/25/2026) and a new nonstatutory double patenting rejection is made over the newly filed continuation, below.
The nonstatutory double patenting rejection over the claims of copending Application No. 19/298,906 is withdrawn in view of its abandonment since the previous Office action.
The nonstatutory double patenting rejections over the claims of 1) U.S. Patent No. 11,261,360, 2) U.S. Patent No. 11,352,534, and 3) U.S. Patent No. 11,732,170 as set forth in the previous Office action are each maintained and have been revised below to reflect the changes in claim scope made by Applicant’s present claim amendments.
Claim Interpretation
It is noted the claims recite several clear and definite abbreviations for chemical components that are clearly defined either by Applicant in the specification or in the claims themselves. POE is a clear and definite abbreviation for polyol ester as is PVE for polyvinyl ether (see, for example, claim 1). AN4, AN5, and AN10 are clear and definite abbreviations for certain alkylated naphthalenes with defined properties (Tables 1 and 2 among p.20-22 of the spec. set forth a clear definition and standard for the abbreviated and numbered alkylated naphthalenes). “ADM” (see claim 1, etc.) is a clear and definite abbreviation for an “acid depleting moiety” (see p.23 line 3 of the spec.).
ADM4 is a clear and definite abbreviation for 2-ethylhexyl glycidyl ether (see p.26 lines 1-4 of the spec. which set a clear definition for the abbreviation ADM4).
Claim Rejections - 35 USC § 102 & 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, 4, 5, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Yana Motta et al. (US 2019/0161660 A1).
Yana Motta et al. teach a heat transfer composition comprising a refrigerant, a lubricant, and a stabilizer (abstract, para. 0144+, and para. 0223+). Preferred refrigerants contain trifluoroiodomethane within the range of about 5-100 wt.% (para. 0015-0113). The lubricant preferably comprises POE or PVE and is provided in an amount of about 0.1-5 wt.% of the heat transfer composition (para. 0146-0149). Alkylated naphthenes are one genus of preferred stabilizer, of which “AN4” and alkylated naphthenes with narrower viscosities, pour points, flash points, aniline points, and noack volatilities are preferred and exemplary alkylated naphthene species, and provided in an amount between about 0.01-10 wt.% and subsets thereof based on the amount of naphthene plus refrigerant (para. 0225-0235), which overlaps the recited ranges of alkylated naphthene. Phosphates are also another genus of preferred stabilizer and includes triaryl phosphates or trialkyl phosphates (para. 0241-0243). Epoxides are also another genus of preferred stabilizer and includes aromatic epoxides, alkyl epoxides, and alkyenyl epoxides (para. 0249-0250), which reads on the presence of an acid depleting moiety or ADM. Regarding a concentration of the epoxide, determination of a sufficient amount of an epoxide stabilizer amounts to routine experimentation; alternatively, a person of ordinary skill in the art would be motivated to try providing the epoxide stabilizer in an amount generally between less than about 5 wt.% and subsets thereof such as 0.01-1 wt.% based on the express ranges of the alternative stabilizer compounds among pages 9 and 10, which reads on and overlaps the recited range of acid depleting moiety relative to the amount of stabilizer and lubricant. Combinations of stabilizers are suggested (para. 0224 and 0251).
While Yana Motta et al. fail to sufficiently meet the instant claims under the meaning of anticipation (for example, fail to teach a working example comprising each and every claimed component with sufficient specify to the recited structure(s) within the claimed ranges), the claimed limitations are nevertheless prima facie obvious over the cited teachings of the reference. At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to make and formulate such a composition from the cited teachings of the reference because this reference teaches that all of the ingredients recited by applicants are suitable for inclusion in a refrigerant composition in overlapping amounts thereof.
Claims 1, 2, 4-6, 8, and 10-12 are rejected under 35 U.S.C. 102(a)(1,2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Smith (US 2020/0131417 A1). Note that Smith is the PGPub of US 11,261,360.
Smith teaches stabilized heat transfer compositions comprising refrigerant, lubricant, and stabilizer, wherein the refrigerant comprises about 49% by weight difluoromethane (HFC-32), about 11.5% by weight pentafluoroethane (HFC-125), and about 39.5% by weight trifluoroiodomethane (CF3I), and wherein said lubricant comprises polyol ester (POE) lubricant and/or polyvinyl ether (PVE) lubricant, and wherein said stabilizer comprises an alkylated naphthalene and optionally but preferably an acid depleting moiety (abstract). The disclosed refrigerant is exactly the same as that recited in claim 2. An Example teaches providing the above refrigerant with POE lubricant and AN4 in an amount of about 6-10% based on the weight of the lubricant and ADM4 (a species of ADM) in an amount of about 0.05-5% based on the weight of the lubricant (para. 0340). This anticipates claims 1 and 2.
See also claims 1-20 of the PGPub which recites the above refrigerant in admixture with a POE or PVE lubricant, an alkylated naphthalene comprising AN5 or AN10 in amounts of from 1-10 wt.%, 1-8 wt.%, or 1.5-6 wt.% based on the weight of the alkylated naphthalene and the lubricant, an acid depleting moiety (ADM) comprising ADM4 present in the stabilizer at 0.05-50 wt.% with the alkylated naphthalene at about 40-99.9 wt% in the stabilizer, and an additional phenol stabilizer. This anticipates claims 1, 2, 4-6, 8, and 10-12. While the limitations cited as anticipatory might be scattered among different dependent claims, they are nevertheless anticipatory as a person of ordinary skill in the art, reading the claims of the reference, would at once envisage the claimed arrangement or combination.
In the event the disclosed example and claims are deemed to insufficiently meet the claims under the meaning of anticipation, there is nevertheless a prima facie case of obviousness over the teachings of the reference. If the cited teachings of the reference are found to be not anticipatory, they nevertheless establish a prima facie case of obviousness as the disclosed ranges certainly overlap those claimed. Furthermore, see also the ranges of ADM and AN set forth at para. 0042, 0111, and 0112 and related subsets thereof, which certainly overlap those claimed. Smith further teaches, in addition to AN4 as a preferred and exemplary alkylated naphthalene (Id.), AN5 and AN10 are preferred, narrower alkyl naphthalene stabilizers (para. 0071-0083). See also para. 0102, 0106, 0128, and 0129 which teach and motivate providing ADM4 in admixture with either AN5 or AN10. Smith further teaches providing phenol-based compounds as an additional stabilizer in addition to the alkylated naphthalenes and ADM (para. 0115-0129). Note that para. 0128 and 0129 specifically teach and motivate providing ADM4 in admixture with either AN5 or AN10 and “BHT”, a phenol stabilizer. If the cited claims reference are found to be not anticipatory, they nevertheless establish a prima facie case of obviousness as one of ordinary skill in the art would nevertheless be motivated to combine the limitations of the reference claims (or provide the narrower or specific components and ranges thereof disclosed and cited above to the recited components of the reference’s claims) in order to practice the reference’s invention.
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 2020/0131417 A1).
The disclosure of Smith is relied upon as set forth above.
Smith further teaches providing phosphorus-based compounds such as a trialkyl phosphate or a triaryl phosphate as an additional stabilizer in addition to the alkylated naphthalenes and ADM (para. 0115 and 0133-0135). See also para. 0141 and 0143.
While Smith fail to sufficiently meet the instant claims under the meaning of anticipation (for example, fail to teach a working example comprising each and every claimed component with sufficient specify to the recited structure(s), i.e., an example or claim additionally containing a triaryl- or trialkyl phosphate), the claimed limitations are nevertheless prima facie obvious over the cited teachings of the reference. At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to make and formulate such a composition from the cited teachings of the reference because this reference teaches that all of the ingredients recited by applicants are suitable for inclusion in a refrigerant composition in overlapping amounts thereof.
Claims 7, 9, 13, 17, 18, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 2020/0131417 A1) as applied to claims 1, 2, 4-6, 8, 10-12, 15, and 16 above, and further in view of any one of Matsumoto (US 2013/0012419 A1), Takahashi et al. (US 2016/0244692 A1), or Nagai et al. (WO 2021/005986 A1, utilizing US 2022/0325159 A1 as an English language equivalent).
The disclosure of Smith is relied upon as set forth above.
As to claims 7, 9, and 13, Smith teaches, inter alia, a heat transfer composition comprising a CF3I-containing refrigerant, a PVE and/or POE lubricant, and a stabilizer comprising AN4 (and alternatively/obviously AN5 or AN10) as an alkylated naphthalene, and an ADM (preferably ADM4) in/overlapping the recited amounts (Id.). As cited above, it is both taught and even claimed in Smith that the ADM is present in the stabilizer at 0.05-50 wt.% with the alkylated naphthalene at about 40-99.9 wt% in the stabilizer (Id.), which meets the ranges of claim 9. While ADM4 (i.e., 2-ethylhexyl glycidyl ether) is certainly the preferred ADM of Smith (Id. & para. 0093), Smith more broadly teaches epoxides, especially epoxide ethers, of various formulae are preferred ADMs where the groups on either side of the ether are “independently a C1-C14 straight or branched chain, preferably unsubstituted, alkyl group” (para. 0088-0092) which opens the ADMs up to alternative compounds under the broad formula(e).
Smith fails to teach the ADM is a glycidyl ester.
However, Matsumoto teaches a lubricating oil composition having excellent compatibility with a refrigerant (abstract), which may comprise CF3I (para. 0152+, e.g., 0182), comprising addition of an acid scavenger (in other words, an acid depleting moiety) to the base oil/lubricant where the acid scavenger includes an epoxy compound of glycidyl ethers or glycidyl esters (para. 0015 & 0199-0203). Therein, 2-ethylhexyl glycidyl ether is a preferred glycidyl ether) and glycidyl 2-ethylhexanoate, glycidyl 3,5,5-trimethylhexanoate, glycidyl caprate, glycidyl laurate, glycidyl versatate (aka glycidyl neodecanoate), and glycidyl myristate are preferred glycidyl esters. In other words, Matsumoto teaches, recognize, and establish glycidyl esters are equivalent ADMs to glycidyl ethers such as 2-ethylhexyl glycidyl ether/ADM4.
Alternatively, Takahashi et al. teach a refrigerating machine oil composition suitable for use with trifluoroiodomethane-based refrigerants (abstract and para. 0055) comprising addition of an epoxy compound in order to suppress an increase in the acid value of the composition (in other words, an acid depleting moiety) including a glycidyl ether or a glycidyl ester (abstract, and para. 0026-0041). Therein, 2-ethylhexyl glycidyl ether is a preferred glycidyl ether) and glycidyl neodecanoate and glycidyl-2,2-dimethyloctanoate (another glycidyl neodecanoate isomer) are preferred glycidyl esters. See also para. 0068. In other words, Takahashi et al. teach, recognize, and establish glycidyl esters are equivalent ADMs to glycidyl ethers such as 2-ethylhexyl glycidyl ether/ADM4.
Alternatively, Nagai et al. teach a working fluid composition for a refrigerating machine containing a refrigerant containing trifluoroiodomethane and a refrigerating machine oil, i.e., lubricant, (abstract), where the lubricant preferably comprises an acid scavenger (in other words, an acid depleting moiety) (para. 0054) where the acid scavenger includes an epoxy compound of glycidyl ethers or glycidyl esters (para. 0056-0064). Therein, 2-ethylhexyl glycidyl ether is a preferred glycidyl ether) and glycidyl neodecanoate and glycidyl-2,2-dimethyloctanoate (another glycidyl neodecanoate isomer) are preferred glycidyl esters. A broad glycidyl ester compound formula is even disclosed (para. 0061). In other words, Nagai et al. teach, recognize, and establish glycidyl esters are equivalent ADMs to glycidyl ethers such as 2-ethylhexyl glycidyl ether/ADM4.
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 and substitute a glycidyl ester as taught by any one of Matsumoto, Takahashi et al., or Nagai et al. as the ADM and in place of the preferred ADM4/glycidyl ether of Smith in order to sufficiently stabilize Smith’s trifluoroiodomethane-based/containing refrigerant with a reasonable expectation of success. Each of Matsumoto, Takahashi et al., and Nagai et al. teach, recognize, and establish glycidyl esters are equivalent ADMs to glycidyl ethers such as 2-ethylhexyl glycidyl ether/ADM4. Note that the cited glycidyl esters of the secondary references fall under/within Smith’s epoxide/ADM formula(e) where the alkyl group is merely a substituted alkyl group and is still within their formula(e), albeit a nonpreferred embodiment thereof.
As to claims 17 and 18, the combination of the above references meet and render obvious the limitations of independent claim 17 and its dependent claim 18. Note, as has been thoroughly described above, Smith teaches their composition may comprise trifluoromethane in an amount overlapping/within that claimed, the refrigerant comprises about 49% by weight difluoromethane (HFC-32), about 11.5% by weight pentafluoroethane (HFC-125), and about 39.5% by weight trifluoroiodomethane (CF3I), a POE and/or PVE lubricant, a stabilizer comprising an alkylated naphthalene (AN) that may be preferably selected as AN5 and an acid depleting moiety (ADM) that totals/overlaps the claimed range of 1-10 wt.% based on the weight of the AN, ADM, and lubricant, and the combination of Smith with any one of Matsumoto, Takahashi et al., or Nagai et al. provides and substitutes a glycidyl ester as the ADM and in place of the preferred ADM4/glycidyl ether of Smith in order to sufficiently stabilize Smith’s trifluoroiodomethane-based/containing refrigerant with a reasonable expectation of success. For purposes of brevity (or else this correspondence would span many additional pages and merely repeat rationale already set forth above), the precise rationale/citations to each and every limitation will not be repeated here. See the rationale/citations of the references, above.
Similarly to claim 20, the combination of the above references meet and render obvious the limitations of independent claim 20. Note, as has been thoroughly described above, Smith teaches their composition may comprise trifluoromethane in an amount overlapping/within that claimed, a POE and/or PVE lubricant, a stabilizer comprising an alkylated naphthalene (AN) that may be preferably selected as AN10 and an acid depleting moiety (ADM) that totals/overlaps the claimed range of 1-10 wt.% based on the weight of the AN, ADM, and lubricant, and the combination of Smith with any one of Matsumoto, Takahashi et al., or Nagai et al. provides and substitutes a glycidyl ester as the ADM and in place of the preferred ADM4/glycidyl ether of Smith in order to sufficiently stabilize Smith’s trifluoroiodomethane-based/containing refrigerant with a reasonable expectation of success. For purposes of brevity (or else this correspondence would span many additional pages and merely repeat rationale already set forth above), the precise rationale/citations to each and every limitation will not be repeated here. See the rationale/citations of the references, above.
As to claim 21, the combination of the above references meet and render obvious the limitations of claim 21 amounting to the composition of claim 13 where said glycidyl ester comprises glycidyl 2-methyl-2-ethylpentanoate. The combination of Smith with any one of Matsumoto, Takahashi et al., or Nagai et al. provides and substitutes a glycidyl ester as the ADM and in place of the preferred ADM4/glycidyl ether of Smith in order to sufficiently stabilize Smith’s trifluoroiodomethane-based/containing refrigerant with a reasonable expectation of success (Id.). Regarding the identity of the glycidyl esters, the secondary references disclose the following:
Matsumoto teaches the glycidyl ester includes a glycidyl ester of a linear, branched or cyclic, saturated or unsaturated, aliphatic carboxylic acid or aromatic carboxylic acid generally having from 3 to 30 carbon atoms, preferably from 4 to 24 carbon atoms, and more preferably from 6 to 16 carbon atoms (para. 0200). The pictured/claimed glycidyl ester (glycidyl 2-methyl-2-ethylpentanoate) is a glycidyl ester of a branched, saturated, aliphatic carboxylic acid of 8 carbon atoms and is certainly encompassed by Matsumoto's teachings. Furthermore, the claimed glycidyl ester (glycidyl 2-methyl-2-ethylpentanoate, a branched C8 glycidyl ester) is a structural isomer of the disclosed glycidyl 2-ethylhexanate (another branched C8 glycidyl ester) of sufficiently close structural similarity that a person of ordinary skill in the art would reasonably presume they possess similar acid scavenging properties (Matsumoto's utility for the glycidyl ester, para. 0199) absent a showing to the contrary.
Takahashi et al. teach the glycidyl ester includes a glycidyl ester of the following formula
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64
243
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where R3 is an alkyl group having 5 to 18 carbon atoms (para. 0032), and examples thereof are given at para. 0033 & 0068 such as glycidyl neodecanoate and glycidyl-2,2-dimethyloctanoate which contain branched alkyl groups as the R3. Accordingly, the reference clearly encompasses glycidyl esters where R3 is a branched alkyl group having 5 to 18 carbon atoms. Note that the formula depicts the carboxyl group with an additional carbon bound to the R3 (-O-C(=O)-R3), meaning the glycidyl esters are/comprise glycidyl esters of branched carboxylic acids having 6 to 19 carbon atoms (the carbon atom range of R3 plus one). The pictured/claimed glycidyl ester (glycidyl 2-methyl-2-ethylpentanoate) is a glycidyl ester of a branched, saturated, aliphatic carboxylic acid of 8 carbon atoms and is certainly encompassed by Takahashi et al.'s teachings. Furthermore, the claimed glycidyl ester (glycidyl 2-methyl-2-ethylpentanoate, a branched C8 glycidyl ester) is a isomeric homolog of the disclosed exemplary glycidyl neodecanoate and glycidyl-2,2-dimethyloctanoate (branched C10 glycidyl esters) of sufficiently close structural similarity that a person of ordinary skill in the art would reasonably presume they possess similar stability, decomposition suppression, acid value suppression, self-polymerization suppression, and sufficient refrigerant solubility properties (Takahashi et al.'s utilities for the glycidyl ester, para. 0034 & 0041) absent a showing to the contrary.
Nagai et al. teach the glycidyl ester includes a glycidyl ester of the following formula:
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48
198
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where, like Takahashi et al., Rb is an alkyl group having 5 to 18 carbon atoms (para. 0061), and examples thereof are given at para. 0063 such as glycidyl neodecanoate and glycidyl-2,2-dimethyloctanoate which contain branched alkyl groups as the Rb. Accordingly, the reference clearly encompasses glycidyl esters where Rb is a branched alkyl group having 5 to 18 carbon atoms. Note that the formula depicts the carboxyl group with an additional carbon bound to the Rb (-O-C(=O)-Rb), meaning the glycidyl esters are/comprise glycidyl esters of branched carboxylic acids having 6 to 19 carbon atoms (the carbon atom range of Rb plus one). The pictured/claimed glycidyl ester (glycidyl 2-methyl-2-ethylpentanoate) is a glycidyl ester of a branched, saturated, aliphatic carboxylic acid of 8 carbon atoms and is certainly encompassed by Nagai et al.'s teachings. Furthermore, the claimed glycidyl ester (glycidyl 2-methyl-2-ethylpentanoate, a branched C8 glycidyl ester) is a isomeric homolog of the disclosed exemplary glycidyl neodecanoate and glycidyl-2,2-dimethyloctanoate (branched C10 glycidyl esters) of sufficiently close structural similarity that a person of ordinary skill in the art would reasonably presume they possess similar acid scavenging properties (Nagai et al.'s utility for the glycidyl ester, para. 0056) absent a showing to the contrary.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1,2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Smith (US 2020/0131418 A1). Note that Smith is the PGPub of US 11,352,534 and the PGPub of the parent application of US 11,732,170.
Smith teaches stabilized heat transfer compositions comprising refrigerant, lubricant, and stabilizer, wherein the refrigerant comprises 39-45 by weight difluoromethane (HFC-32), 1-4% by weight pentafluoroethane (HFC-125), and 51-57% by weight trifluoroiodomethane (CF3I), and wherein said lubricant comprises polyol ester (POE) lubricant and/or polyvinyl ether (PVE) lubricant, and wherein said stabilizer comprises an alkylated naphthalene and optionally but preferably an acid depleting moiety, i.e., ADM, (abstract). The refrigerant preferably consists essentially of 41%±1% wt. HFC-32, 3.5±0.5% wt. HFC-125, and 55.5%±0.5% wt. CF3I (para. 0031), which is exactly the same as that recited in claim 3. This preferred refrigerant is also refrigerant “A2” (Table 2 on p.19). An Example teaches providing the above refrigerant with POE lubricant and AN4 in an amount of about 6-10% based on the weight of the lubricant and ADM4 (a species of ADM) in an amount of about 0.05-5% based on the weight of the lubricant (para. 0329-0331). This anticipates claims 1 and 3.
In the event the disclosed example is deemed to insufficiently meet the claims under the meaning of anticipation, there is nevertheless a prima facie case of obviousness over the teachings of the reference. If the cited teachings of the reference are found to be not anticipatory, they nevertheless establish a prima facie case of obviousness as the disclosed ranges certainly overlap those claimed. Furthermore, see also the ranges of ADM and AN set forth at para. 0041, 0111, and 0112 and related subsets thereof, which certainly overlap those claimed.
Claims 4-6, 8, 10-12, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 2020/0131418 A1).
The disclosure of Smith is relied upon as set forth above.
As to claims 4-6, 8, 10-12, 15, and 16, while the example cited above fails to sufficiently meet the instant claims under the meaning of anticipation (for example, fail to teach a working example comprising each and every claimed component with sufficient specify to the recited structure(s) within the claimed ranges), the claimed limitations are nevertheless prima facie obvious over the teachings of the reference.
Smith further teaches the alkylated naphthalene is present in an amount of from 1% to less than 10% by weight based on the weight of the alkylated naphthalene and the lubricant and subsets thereof such as 1-8 wt.% and 1.5-6 wt.% (para. 0031-0034). ADM4 is the exemplary and therefore preferred ADM (Id.). There is an embodiment that the stabilizer may comprise about 40-99.9 wt.% of alkylated naphthalenes and about 0.05-50 wt.% ADM based on the weight of the stabilizer (para. 0041). Smith further teaches, in addition to AN4 as a preferred and exemplary alkylated naphthalene (Id.), AN5 and AN10 are preferred, narrower alkyl naphthalene stabilizers (para. 0076-0085). Smith further teaches providing phenol-based compounds and/or phosphorus-based compounds such as a trialkyl phosphate or a triaryl phosphate as an additional stabilizer in addition to the alkylated naphthalenes and ADM (para. 0115-0128 and 0132-0134). See also para. 0103-0104 which teach and motivate providing ADM4 in admixture with either AN5 or AN10. See also para. 0126-0128 which teach and motivate providing ADM4 in admixture with either AN5 or AN10 and “BHT”, a phenol stabilizer. See also para. 0142 which teach and motivate providing ADM4 in admixture with either AN5 or AN10 and a combination of a phosphate and a phenol stabilizer.
At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to make and formulate such a composition from the cited teachings of the reference because this reference teaches that all of the ingredients recited by applicants are suitable for inclusion in a refrigerant composition in overlapping amounts thereof.
Claims 7, 9, 13, 17, and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 2020/0131418 A1) as applied to claims 1, 3-6, 8, 10-12, 15, and 16 above, and further in view of any one of Matsumoto (US 2013/0012419 A1), Takahashi et al. (US 2016/0244692 A1), or Nagai et al. (WO 2021/005986 A1, utilizing US 2022/0325159 A1 as an English language equivalent).
The disclosure of Smith is relied upon as set forth above.
As to claims 7, 9, and 13, Smith teaches, inter alia, a heat transfer composition comprising a CF3I-containing refrigerant, a PVE and/or POE lubricant, and a stabilizer comprising AN4 (and alternatively/obviously AN5 or AN10) as an alkylated naphthalene, and an ADM (preferably ADM4) in/overlapping the recited amounts (Id.). As cited above, it is taught in Smith that the ADM is present in the stabilizer at 0.05-50 wt.% with the alkylated naphthalene at about 40-99.9 wt% in the stabilizer (Id.), which meets the ranges of claim 9. While ADM4 (i.e., 2-ethylhexyl glycidyl ether) is certainly the preferred ADM of Smith (Id. & para. 0094), Smith more broadly teaches epoxides, especially epoxide ethers, of various formulae are preferred ADMs where the groups on either side of the ether are “independently a C1-C14 straight or branched chain, preferably unsubstituted, alkyl group” (para. 0086-0093) which opens the ADMs up to alternative compounds under the broad formula(e).
Smith fails to teach the ADM is a glycidyl ester.
However, Matsumoto teaches a lubricating oil composition having excellent compatibility with a refrigerant (abstract), which may comprise CF3I (para. 0152+, e.g., 0182), comprising addition of an acid scavenger (in other words, an acid depleting moiety) to the base oil/lubricant where the acid scavenger includes an epoxy compound of glycidyl ethers or glycidyl esters (para. 0015 & 0199-0203). Therein, 2-ethylhexyl glycidyl ether is a preferred glycidyl ether) and glycidyl 2-ethylhexanoate, glycidyl 3,5,5-trimethylhexanoate, glycidyl caprate, glycidyl laurate, glycidyl versatate (aka glycidyl neodecanoate), and glycidyl myristate are preferred glycidyl esters. In other words, Matsumoto teaches, recognize, and establish glycidyl esters are equivalent ADMs to glycidyl ethers such as 2-ethylhexyl glycidyl ether/ADM4.
Alternatively, Takahashi et al. teach a refrigerating machine oil composition suitable for use with trifluoroiodomethane-based refrigerants (abstract and para. 0055) comprising addition of an epoxy compound in order to suppress an increase in the acid value of the composition (in other words, an acid depleting moiety) including a glycidyl ether or a glycidyl ester (abstract, and para. 0026-0041). Therein, 2-ethylhexyl glycidyl ether is a preferred glycidyl ether) and glycidyl neodecanoate and glycidyl-2,2-dimethyloctanoate (another glycidyl neodecanoate isomer) are preferred glycidyl esters. See also para. 0068. In other words, Takahashi et al. teach, recognize, and establish glycidyl esters are equivalent ADMs to glycidyl ethers such as 2-ethylhexyl glycidyl ether/ADM4.
Alternatively, Nagai et al. teach a working fluid composition for a refrigerating machine containing a refrigerant containing trifluoroiodomethane and a refrigerating machine oil, i.e., lubricant, (abstract), where the lubricant preferably comprises an acid scavenger (in other words, an acid depleting moiety) (para. 0054) where the acid scavenger includes an epoxy compound of glycidyl ethers or glycidyl esters (para. 0056-0064). Therein, 2-ethylhexyl glycidyl ether is a preferred glycidyl ether) and glycidyl neodecanoate and glycidyl-2,2-dimethyloctanoate (another glycidyl neodecanoate isomer) are preferred glycidyl esters. A broad glycidyl ester compound formula is even disclosed (para. 0061). In other words, Nagai et al. teach, recognize, and establish glycidyl esters are equivalent ADMs to glycidyl ethers such as 2-ethylhexyl glycidyl ether/ADM4.
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 and substitute a glycidyl ester as taught by any one of Matsumoto, Takahashi et al., or Nagai et al. as the ADM and in place of the preferred ADM4/glycidyl ether of Smith in order to sufficiently stabilize Smith’s trifluoroiodomethane-based/containing refrigerant with a reasonable expectation of success. Each of Matsumoto, Takahashi et al., and Nagai et al. teach, recognize, and establish glycidyl esters are equivalent ADMs to glycidyl ethers such as 2-ethylhexyl glycidyl ether/ADM4. Note that the cited glycidyl esters of the secondary references fall under/within Smith’s epoxide/ADM formula(e) where the alkyl group is merely a substituted alkyl group and is still within their formula(e), albeit a nonpreferred embodiment thereof.
As to claims 17 and 19, the combination of the above references meet and render obvious the limitations of independent claim 17 and its dependent claim 19. Note, as has been thoroughly described above, Smith teaches their composition may comprise trifluoromethane in an amount overlapping/within that claimed, the refrigerant preferably consists essentially of 41%±1% wt. HFC-32, 3.5±0.5% wt. HFC-125, and 55.5%±0.5% wt. CF3I, a stabilizer comprising an alkylated naphthalene (AN) that may be preferably selected as AN5 and an acid depleting moiety (ADM) that totals/overlaps the claimed range of 1-10 wt.% based on the weight of the AN, ADM, and lubricant, and the combination of Smith with any one of Matsumoto, Takahashi et al., or Nagai et al. provides and substitutes a glycidyl ester as the ADM and in place of the preferred ADM4/glycidyl ether of Smith in order to sufficiently stabilize Smith’s trifluoroiodomethane-based/containing refrigerant with a reasonable expectation of success. For purposes of brevity (or else this correspondence would span many additional pages and merely repeat rationale already set forth above), the precise rationale/citations to each and every limitation will not be repeated here. See the rationale/citations of the references, above.
Similarly to claim 20, the combination of the above references meet and render obvious the limitations of independent claim 20. Note, as has been thoroughly described above, Smith teaches their composition may comprise trifluoromethane in an amount overlapping/within that claimed, a POE and/or PVE lubricant, a stabilizer comprising an alkylated naphthalene (AN) that may be preferably selected as AN10 and an acid depleting moiety (ADM) that totals/overlaps the claimed range of 1-10 wt.% based on the weight of the AN, ADM, and lubricant, and the combination of Smith with any one of Matsumoto, Takahashi et al., or Nagai et al. provides and substitutes a glycidyl ester as the ADM and in place of the preferred ADM4/glycidyl ether of Smith in order to sufficiently stabilize Smith’s trifluoroiodomethane-based/containing refrigerant with a reasonable expectation of success. For purposes of brevity (or else this correspondence would span many additional pages and merely repeat rationale already set forth above), the precise rationale/citations to each and every limitation will not be repeated here. See the rationale/citations of the references, above.
As to claim 21, the combination of the above references meet and render obvious the limitations of claim 21 amounting to the composition of claim 13 where said glycidyl ester comprises glycidyl 2-methyl-2-ethylpentanoate. The combination of Smith with any one of Matsumoto, Takahashi et al., or Nagai et al. provides and substitutes a glycidyl ester as the ADM and in place of the preferred ADM4/glycidyl ether of Smith in order to sufficiently stabilize Smith’s trifluoroiodomethane-based/containing refrigerant with a reasonable expectation of success (Id.). Regarding the identity of the glycidyl esters, the secondary references disclose the following:
Matsumoto teaches the glycidyl ester includes a glycidyl ester of a linear, branched or cyclic, saturated or unsaturated, aliphatic carboxylic acid or aromatic carboxylic acid generally having from 3 to 30 carbon atoms, preferably from 4 to 24 carbon atoms, and more preferably from 6 to 16 carbon atoms (para. 0200). The pictured/claimed glycidyl ester (glycidyl 2-methyl-2-ethylpentanoate) is a glycidyl ester of a branched, saturated, aliphatic carboxylic acid of 8 carbon atoms and is certainly encompassed by Matsumoto's teachings. Furthermore, the claimed glycidyl ester (glycidyl 2-methyl-2-ethylpentanoate, a branched C8 glycidyl ester) is a structural isomer of the disclosed glycidyl 2-ethylhexanate (another branched C8 glycidyl ester) of sufficiently close structural similarity that a person of ordinary skill in the art would reasonably presume they possess similar acid scavenging properties (Matsumoto's utility for the glycidyl ester, para. 0199) absent a showing to the contrary.
Takahashi et al. teach the glycidyl ester includes a glycidyl ester of the following formula
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64
243
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where R3 is an alkyl group having 5 to 18 carbon atoms (para. 0032), and examples thereof are given at para. 0033 & 0068 such as glycidyl neodecanoate and glycidyl-2,2-dimethyloctanoate which contain branched alkyl groups as the R3. Accordingly, the reference clearly encompasses glycidyl esters where R3 is a branched alkyl group having 5 to 18 carbon atoms. Note that the formula depicts the carboxyl group with an additional carbon bound to the R3 (-O-C(=O)-R3), meaning the glycidyl esters are/comprise glycidyl esters of branched carboxylic acids having 6 to 19 carbon atoms (the carbon atom range of R3 plus one). The pictured/claimed glycidyl ester (glycidyl 2-methyl-2-ethylpentanoate) is a glycidyl ester of a branched, saturated, aliphatic carboxylic acid of 8 carbon atoms and is certainly encompassed by Takahashi et al.'s teachings. Furthermore, the claimed glycidyl ester (glycidyl 2-methyl-2-ethylpentanoate, a branched C8 glycidyl ester) is a isomeric homolog of the disclosed exemplary glycidyl neodecanoate and glycidyl-2,2-dimethyloctanoate (branched C10 glycidyl esters) of sufficiently close structural similarity that a person of ordinary skill in the art would reasonably presume they possess similar stability, decomposition suppression, acid value suppression, self-polymerization suppression, and sufficient refrigerant solubility properties (Takahashi et al.'s utilities for the glycidyl ester, para. 0034 & 0041) absent a showing to the contrary.
Nagai et al. teach the glycidyl ester includes a glycidyl ester of the following formula:
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48
198
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where, like Takahashi et al., Rb is an alkyl group having 5 to 18 carbon atoms (para. 0061), and examples thereof are given at para. 0063 such as glycidyl neodecanoate and glycidyl-2,2-dimethyloctanoate which contain branched alkyl groups as the Rb. Accordingly, the reference clearly encompasses glycidyl esters where Rb is a branched alkyl group having 5 to 18 carbon atoms. Note that the formula depicts the carboxyl group with an additional carbon bound to the Rb (-O-C(=O)-Rb), meaning the glycidyl esters are/comprise glycidyl esters of branched carboxylic acids having 6 to 19 carbon atoms (the carbon atom range of Rb plus one). The pictured/claimed glycidyl ester (glycidyl 2-methyl-2-ethylpentanoate) is a glycidyl ester of a branched, saturated, aliphatic carboxylic acid of 8 carbon atoms and is certainly encompassed by Nagai et al.'s teachings. Furthermore, the claimed glycidyl ester (glycidyl 2-methyl-2-ethylpentanoate, a branched C8 glycidyl ester) is a isomeric homolog of the disclosed exemplary glycidyl neodecanoate and glycidyl-2,2-dimethyloctanoate (branched C10 glycidyl esters) of sufficiently close structural similarity that a person of ordinary skill in the art would reasonably presume they possess similar acid scavenging properties (Nagai et al.'s utility for the glycidyl ester, para. 0056) absent a showing to the contrary.
Claims 1, 4, 5, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Yana Motta et al. (US 10,731,066 B2).
Yana Motta et al. teach a heat transfer composition comprising a refrigerant, a lubricant, and a stabilizer (abstract, col. 8 line 62+, and col. 11 line 49+). Preferred refrigerants contain trifluoroiodomethane within the range of about 5-100 wt.% (col. 3 lines 29 to col. 5 line 46). The lubricant preferably comprises POE or PVE and is provided in an amount of about 0.1-5 wt.% of the heat transfer composition (col. 9 lines 15-30). Alkylated naphthenes are one genus of preferred stabilizer, of which “AN4” and alkylated naphthenes with narrower viscosities, pour points, flash points, aniline points, and noack volatilities are preferred and exemplary alkylated naphthene species, and provided in an amount between about 0.01-10 wt.% and subsets thereof based on the amount of naphthene plus refrigerant (col. 12 line 21 to col. 14 line 30), which overlaps the recited ranges of alkylated naphthene. Phosphates are also another genus of preferred stabilizer and includes triaryl phosphates or trialkyl phosphates (col. 15 line 45+). Epoxides are also another genus of preferred stabilizer and includes aromatic epoxides, alkyl epoxides, and alkyenyl epoxides (col. 16 lines 52-54), which reads on the presence of an acid depleting moiety or “ADM”. Regarding a concentration of the epoxide, determination of a sufficient amount of an epoxide stabilizer amounts to routine experimentation; alternatively, a person of ordinary skill in the art would be motivated to try providing the epoxide stabilizer in an amount generally between less than about 5 wt.% and subsets thereof such as 0.01-1 wt.% based on the express ranges of the alternative stabilizer compounds among col. 15 and 16, which reads on and overlaps the recited range of acid depleting moiety relative to the amount of stabilizer and lubricant. Combinations of stabilizers are suggested (col. 12 lines 14-20 and col. 16 line 55).
While Yana Motta et al. fail to sufficiently meet the instant claims under the meaning of anticipation (for example, fail to teach a working example comprising each and every claimed component with sufficient specify to the recited structure(s) within the claimed ranges), the claimed limitations are nevertheless prima facie obvious over the cited teachings of the reference. At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to make and formulate such a composition from the cited teachings of the reference because this reference teaches that all of the ingredients recited by applicants are suitable for inclusion in a refrigerant composition in overlapping amounts thereof.
Claims 1, 4, 5, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Sethi et al. (US 10,767,091 B2).
Sethi et al. teach a heat transfer composition comprising a refrigerant, a lubricant, and a stabilizer (abstract, col. 11 line 16+, and col. 14 line 65+). Preferred refrigerants contain trifluoroiodomethane within the range of about 5-100 wt.% (col. 3 line 36 to col. 6 line 24). The lubricant preferably comprises POE or PVE and is provided in an amount of about 0.1-5 wt.% of the heat transfer composition (col. 11 lines 37-51). Alkylated naphthenes are one genus of preferred stabilizer, of which “AN4” and alkylated naphthenes with narrower viscosities, pour points, flash points, aniline points, and noack volatilities are preferred and exemplary alkylated naphthene species, and provided in an amount between about 0.01-10 wt.% and subsets thereof based on the amount of naphthene plus refrigerant (col. 15 line 20 to col. 17 line 35), which overlaps the recited ranges of alkylated naphthene. Phosphates are also another genus of preferred stabilizer and includes triaryl phosphates or trialkyl phosphates (col. 18 line 35+). Epoxides are also another genus of preferred stabilizer and includes aromatic epoxides, alkyl epoxides, and alkyenyl epoxides (col. 19 lines 44-46), which reads on the presence of an acid depleting moiety or “ADM”. Regarding a concentration of the epoxide, determination of a sufficient amount of an epoxide stabilizer amounts to routine experimentation; alternatively, a person of ordinary skill in the art would be motivated to try providing the epoxide stabilizer in an amount generally between less than about 5 wt.% and subsets thereof such as 0.01-1 wt.% based on the express ranges of the alternative stabilizer compounds among col. 17 to 19, which reads on and overlaps the recited range of acid depleting moiety relative to the amount of stabilizer and lubricant. Combinations of stabilizers are suggested (col. 15 lines 14-19 and col. 19 line 47).
While Sethi et al. fail to sufficiently meet the instant claims under the meaning of anticipation (for example, fail to teach a working example comprising each and every claimed component with sufficient specify to the recited structure(s) within the claimed ranges), the claimed limitations are nevertheless prima facie obvious over the cited teachings of the reference. At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to make and formulate such a composition from the cited teachings of the reference because this reference teaches that all of the ingredients recited by applicants are suitable for inclusion in a refrigerant composition in overlapping amounts thereof.
Double Patenting
Claims 1, 2, 4-6, 8, and 10-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,261,360.
Although the claims at issue are not identical, they are not patentably distinct from each other because both set of claims recite heat transfer compositions comprising CF3I in overlapping amounts in admixture with a PVE or POE lubricant as recited, as well as alkylated naphthalene and an acid depleting moiety (ADM). The claims recite the refrigerant comprises about 49 wt.% HFC-32, about 11.5 wt.% HFC-125, and about 39.5 wt.% CF3I. The claims recite the alkylated naphthalene is present in an amount of about 1-10 wt.% and subsets thereof based on the weight of the alkylated naphthalene and the lubricant, which overlaps if not corresponds to the claimed ranges and subsets thereof. AN5 and AN10 are recited as the alkylated naphthalene, which meet and fall within the claimed AN4 and AN5. ADM4 is recited as the ADM. The claims also recite the stabilizer comprises about 40-99.9 wt.% of the alkylated naphthalene and 0.05-50 wt.% of the ADM based on the stabilizer. The claims also recite the stabilizer further comprises a phenol. The claims overlap, if not anticipate, many of the instant claims.
Claims 1, 3-6, 8, and 10-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,352,534.
Although the claims at issue are not identical, they are not patentably distinct from each other because both set of claims recite heat transfer compositions comprising CF3I in overlapping amounts in admixture with a PVE or POE lubricant as recited, as well as alkylated naphthalene and an acid depleting moiety (ADM). The claims recite the refrigerant comprises 30-45 wt.% HFC-32, 1-4 wt.% HFC-125, and 51-57 wt.% CF3I including a narrower refrigerant of about 41 wt% HFC-32, about 3.5 wt.% HFC-125, and about 55.5 wt.% CF3I. The claims recite the alkylated naphthalene is present in an amount of about 1-10 wt.% and subsets thereof based on the weight of the alkylated naphthalene and the lubricant, which overlaps if not corresponds to the claimed ranges and subsets thereof. AN5 and AN10 are recited as the alkylated naphthalene, which meet and fall within the claimed AN4 and AN5. ADM4 is recited as the ADM. The claims also recite the stabilizer comprises about 40-99.9 wt.% of the alkylated naphthalene and 0.05-50 wt.% of the ADM based on the stabilizer. The claims also recite the stabilizer further comprises a phenol. The claims overlap, if not anticipate, many of the instant claims.
Claims 1, 3-6, 8, and 10-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,732,170.
Although the claims at issue are not identical, they are not patentably distinct from each other because both set of claims recite heat transfer compositions comprising CF3I in overlapping amounts in admixture with a PVE or POE lubricant as recited, as well as alkylated naphthalene and an acid depleting moiety (ADM). The claims recite the refrigerant comprises 30-45 wt.% HFC-32, 1-4 wt.% HFC-125, and 51-57 wt.% CF3I. The claims recite the alkylated naphthalene is present in an amount of about 1-8 wt.% and subsets thereof based on the weight of the alkylated naphthalene and the lubricant, which overlaps if not corresponds to the claimed ranges and subsets thereof. AN5 and AN10 are recited as the alkylated naphthalene, which meet and fall within the claimed AN4 and AN5. ADM4 is recited as the ADM. The claims also recite the stabilizer comprises about 40-99.9 wt.% of the alkylated naphthalene and 0.05-50 wt.% of the ADM based on the stabilizer. The claims also recite the stabilizer further comprises a phenol. The claims overlap, if not anticipate, many of the instant claims.
Claims 1, 4-6, 8, and 10-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/819,549 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite heat transfer compositions comprising refrigerant compositions comprising overlapping amounts of CF3I as well as additional lubricant components (that are POE and/or PVE), an alkylated naphthalene component (that is AN4, AN5, or AN10) in overlapping if not the same concentration, and an acid depleting moiety (that may be/include ADM4) in an overlapping if not same concentration. Additional limitations are recited that the stabilizer further comprises a phenol. The claims overlap, if not anticipate, many of the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 03/16/2026 have been fully considered but they are not persuasive.
Regarding the nonstatutory double patenting rejections over the claims of 1) U.S. Patent No. 11,261,360, 2) U.S. Patent No. 11,352,534, and 3) U.S. Patent No. 11,732,170, in response to Applicant’s request to hold in abeyance a response, such as, a terminal disclaimer to the non-statutory double patenting rejections of record, it is noted that the filing of a terminal disclaimer cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP § 804 (I)(B)(1): “As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Regarding the 102 and 103 rejections based on each of Smith (US 2020/0131417 A1) and Smith (US 2020/0131418 A1), i.e., the Smith references, Applicant argues the Smith references are not citable as prior art under 35 U.S.C. 102(a)(1) because they allegedly have publication dates after the effective filing date of the present Application. Applicant's position is that the present application has priority claims as early as July 29, 2016 and a latest possible effective filing priority claim of December 24, 2019 whereas the Smith references each have a publication/disclosure date of April 30, 2022 which is after the latest possible effective filing date of the present claims. See p.10 of the response filed 03/16/2026.
In response, these arguments/allegations are not persuasive because they are neither accurate nor true.
The present application does not have priority to 2016 or 2019. In fact, the earliest possible effective date of the present application is January 12, 2022 (the filing dates of provisional applications 63/298,966, 63/298,968, and 63/298,964). Other provisional applications of the present application were also filed on February 28, 2022 (63/315,025 and 63/315,019). Please see the ADS of record. However, for purposes of brevity and due to time constraints of producing this Final Office action, the contents of the provisional applications has not been thoroughly reviewed to determine the true effective filing date; as will be explained below, such a thorough analysis is not needed due to the publication dates of the Smith references being greater than one year before the filing date of the earliest provisional applications. The Office does not understand or follow where the alleged 2016 and 2019 effective filing dates of the present application are coming from or have merit.
The Smith references were both published on April 30, 2020. See (43) on each reference's title page and the publication year "2020" is even clear in the references' PGPub numbers in (10) on each reference's title page. The Office does not understand or follow where the alleged 2022 publication dates of the Smith references are coming from or have merit.
In summary, the Smith references each have publication dates of April 30, 2020 whereas the present application has an earliest possible effective filing date of January 12, 2022. The Smith references absolutely quality as prior art under the definitions of 35 U.S.C. 102(a)(1) because they were described in a printed publication before the effective filing date of the claimed invention. The Smith references also do not qualify for any exception under 35 U.S.C. 102(b)(1) because the disclosure was made greater than one year before the earliest possible effective filing date of the present invention.
Applicant also argues the Smith references (US 2020/0131418 A1 and US 2020/0131418 A1, Id.) are not citable as prior art under 35 U.S.C. 102(a)(2). Applicant's representative states the Smith references (US 2020/0131418 A1 and US 2020/0131418 A1) and all applications leading to the present application (18/095,466) including US Provisional Application 63/548,380 "were owned by the same entity, namely, Honeywell International, Inc., at least as early as the date on which the parent application 16/726555, of which the present application is a divisional, was filed. Thus, the undersigned respectfully submits that the Smith publications are not properly citable as prior art to the invention now claimed, and therefore all of the rejections based on the Smith publications as the primary reference should be withdrawn." (see p.11 of the response filed 03/16/2026).
In response, the Office acknowledges Applicant’s/Applicant’s representative’s statement but cannot take any particular action in response the statement.
While a clear and conspicuous statement by the applicant (or the applicant's representative) that the claimed invention of the application under examination and the subject matter disclosed in the U.S. patent document applied as prior art were owned by the same person or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention is sufficient to establish that the AIA 35 U.S.C. 102(b)(2)(C) exception applies (MPEP 2154.02(c)), the wording of the above statement in the present response falls short of establishing the 102(b)(2)(C) exception applies. The present application has no direct relationship (divisional or otherwise) to 16/726,555 as alleged. Furthermore, the presented statement is confusing and tells nothing about whether the subject matter disclosed in the U.S. patent document applied as prior art were owned by the same person or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention because 16/726,555 was filed in 2019 whereas the present application has an earliest possible effective date in 2022 (Id.).
Further adding to the confusion, US Provisional Application 63/548,380 referenced in the statement has no relationship to any one of the Smith references or the present application. US Provisional Application 63/548,380 was also filed on November 13, 2023 which is after all the present application’s provisional application filing dates (all in 2022, Id.) and the present application itself (July 13, 2023). The Office does not follow Applicant's citations to non-related applications.
Arguendo, even if Applicant was able to perfect that a 102(b)(2)(C) exception applies to the Smith references, a 102(b)(2)(C) exception would not change the fact the references remain applicable under 102(a)(1). The AIA 35 U.S.C. 102(b)(2)(C) exception does not apply to a disclosure that qualifies as prior art under AIA 35 U.S.C. 102(a)(1) (disclosures made before the effective filing date of the claimed invention). Thus, if the publication date or issue date of a U.S. patent document is before the effective filing date of the claimed invention, it may be prior art under AIA 35 U.S.C. 102(a)(1), regardless of common ownership or the existence of an obligation to assign.
In view of the foregoing, the Smith references remain applicable under AIA 35 U.S.C. 102(a)(1) and 102(a)(2).
Applicant further argues the 103 rejections over each of Yana Motta et al. (US 2019/0161660 A1), Yana Motta et al. (US 10,731,066 B2), and Sethi et al. (US 10,767,091 B2) should be withdrawn because the claimed combination of alkylated naphthalene (AN4/etc.) and acid depleting moiety (ADM) in the claimed refrigerant and lubricant produces unexpected improvements in stability, i.e., unexpected results. See p.11-13 of the response filed 03/16/2026.
In response, Applicant’s arguments and allegation of unexpected results are not persuasive because the data of the comparative showing is not commensurate in scope with the claimed invention. The examples are drawn/limited to provision of particular stabilizer compounds, if not one single very particular alkylated naphthalene compound optionally with a very particular acid depleting moiety compound, provided in particular concentrations to very particular, narrow refrigerant compositions whereas independent claim 1 is not drawn/limited to such particular stabilizer compounds/concentrations nor the particular narrow refrigerant composition.
Applicant further states they were planning to conducting additional testing to submit additional data to establish evidence in support of the allegation of unexpected results, which is why a six month request for suspension of action was filed.
In response, the arguments of record are not persuasive to overcome the 103 rejections of record because, over six months have passed since the request for suspension was filed and no additional data/analysis to perfect or support Applicant's allegation of unexpected results has been timely filed.
Accordingly, the rejections are maintained for the reasons of record.
The remaining references listed on Forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or described above.
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
October 13, 2026
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