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 .
Claims 1-13 and 15-20 are currently pending.
Note that, even though there is only the one set of claims in the record (filed 01/10/2023), there is no claim 14 listed in the claim set. For purposes of further examination (or else the examination on the merits would be significantly delayed by mailing a non-responsive-type correspondence), claim 14 is presumed as “canceled”. Please update future claim sets accordingly or else the reply will be held non-responsive.
The IDS statement filed 03/26/2025 has been considered. An initialed copy accompanies this action.
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). 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). “ADM” (see claim 17) is a clear and definite abbreviation for an “acid depleting moiety” (see p.23 line 3 of the spec.).
Claim Objections
Claims 1-3, 15, 16, and 19 are objected to because of the following informalities:
In claim 1, Applicant is suggested to amend “from about 0.05 to% about 2.5%” to read as “from about 0.05% to about 2.5%” (correct the typo in the range) in order to improve clarity in the claim.
In claim 2, Applicant is suggested to amend “(CF3I.” to read as “(CF3I).” (close the parentheses) in order to improve clarity in the claim.
In both claims 3 and 19, Applicant is suggested to amend “(CF3I)” to read as “(CF3I)” (present “3” as a subscript) in order to improve clarity in the claims.
In both claims 15 and 16, Applicant is suggested to amend “The heat transfer composition of claim 1wherein …” to read as “The heat transfer composition of claim 1 wherein …” (add a space between “1” and “wherein”) in order to improve clarity in the claims.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-13 and 15-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation that the composition comprises “one or more compounds according to AMD1”. However, it is unknown and unclear what a compound according to “AMD1” is or means. While Applicant has defined several compounds in the specification as being represented by certain abbreviations (see, e.g., pages 20-27 of the spec.), there is no definition, meaning, nor standard for an “AMD1” or any “AMD” compound, which renders the claim indefinite. Claims 2-17 are also indefinite for their dependency on claim 1 and lack of specifically clarifying what the AMD1 compound(s) is/are specifically limited to (while it is noted claim states the AMD1 comprises ADM4, a clearly defined compound [Id.], the term “comprising” means there can be other compounds present as the one or more AMD1 and it remains unclear what those AMD1 compounds are).
For purposes of further examination and compact prosecution (or else the claims could not be fairly compared against prior art), the recited “AMD1” component is broadly interpreted as referring to any and all “acid depleting moiety” or “AMD” compound(s).
Claim 7 recites the AMD1 comprises “ADM6”. The specification does not have a clear definition, meaning, or standard for an “ADM6” compound, rendering the scope of the claim indefinite. A short discussion of “ADM6” is set forth on page 27 of the spec.:
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The paragraph first describes ADM6 is glycidyl neodecanoate, i.e., a branched C10 glycidyl ester, but then depicts ADM6 as the structure of glycidyl 2-methyl-2-ethylpentanoate, i.e., a branched C8 glycidyl ester. These compounds described in words and then depicted in structure are not the same, rendering the meaning, scope, and metes and bounds of the “ADM6” unclear, vague, and indefinite. Is ADM6 one of these compounds, both of these compounds, any glycidyl ester, or any branched glycidyl ester?
Independent claims 17 and 20 are also indefinite for reciting ADM6, and claims 9, 13, 18, and 19 are indefinite for their dependency on one of claims 7 or 17.
For purposes of further examination and compact prosecution (or else these claims could not be fairly compared against prior art), the recited “ADM6” is broadly construed as requiring a glycidyl ester compound.
In claims 4, 5, and 10, the limitation “said alkylated naphthalene” lacks sufficient antecedent basis in the claims. For purposes of further examination (and Applicant is suggested to amend following this interpretation), “said alkylated naphthalene” is construed as referring to the parent claims’ “AN4” (i.e., interpreted as “wherein said AN4 comprises AN5”). Claim 11 is also indefinite for its dependency on claim 10.
In claims 12 and 13, there is insufficient antecedent basis in the claims for “said compound according to ADM1”. Note that the parent claims recite an (unclear) “AMD1” compound but not an “ADM1” compound. For purposes of further examination, the limitation is construed as referring to the parent claims’ “AMD1”.
Appropriate correction/clarification is required.
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, 4, 5, 15, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,731,066.
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. Specific alkyl naphthalenes are not recited in the patented claims, but selection of one of a limited genus of alkyl naphthalenes amounts to routine experimentation. Note that the corresponding specification of the patent also thoroughly describes and discloses the alkylated naphthalene components are of the same nomenclature and properties as those disclosed and claimed in the present application in an amount overlapping that claimed, that the composition may further comprise an epoxide that reads on an acid depleting moiety, the same general epoxide-based stabilizer that reads on the claimed acid depleting moiety, and the additional presence of a trialkyl or triaryl phosphate-based stabilizer, which establishes the claimed inventions are obvious variants of one another. Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
Claims 1, 4, 5, 15, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,767,091.
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. Specific alkyl naphthalenes are not recited in the patented claims, but selection of one of a limited genus of alkyl naphthalenes amounts to routine experimentation. Note that the corresponding specification of the patent also thoroughly describes and discloses the alkylated naphthalene components are of the same nomenclature and properties as those disclosed and claimed in the present application in an amount overlapping that claimed, that the composition may further comprise an epoxide that reads on an acid depleting moiety, the same general epoxide-based stabilizer that reads on the claimed acid depleting moiety, and the additional presence of a trialkyl or triaryl phosphate-based stabilizer, which establishes the claimed inventions are obvious variants of one another. Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
Claims 1, 4, 5, 15, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,111,424.
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. Specific alkyl naphthalenes are not recited in the patented claims, but selection of one of a limited genus of alkyl naphthalenes amounts to routine experimentation. Note that the corresponding specification of the patent also thoroughly describes and discloses the alkylated naphthalene components are of the same nomenclature and properties as those disclosed and claimed in the present application in an amount overlapping that claimed, that the composition may further comprise an epoxide that reads on an acid depleting moiety, the same general epoxide-based stabilizer that reads on the claimed acid depleting moiety, and the additional presence of a trialkyl or triaryl phosphate-based stabilizer, which establishes the claimed inventions are obvious variants of one another. Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
Claims 1, 2, 4-6, 8, 10-12, and 15-18 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.
Also note that the corresponding specification of the patent also thoroughly describes and discloses the additional presence of a trialkyl or triaryl phosphate-based stabilizer, which further establishes the claimed inventions are obvious variants of one another. Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
Claims 1, 3-6, 8, 10-12, and 15-17 and 19 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.
Also note that the corresponding specification of the patent also thoroughly describes and discloses the additional presence of a trialkyl or triaryl phosphate-based stabilizer, which further establishes the claimed inventions are obvious variants of one another. Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
Claims 1, 3-6, 8, 10-12, 15-17, and 19 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.
Also note that the corresponding specification of the patent also thoroughly describes and discloses the additional presence of a trialkyl or triaryl phosphate-based stabilizer, which further establishes the claimed inventions are obvious variants of one another. Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
Claims 1, 3-6, 8, 10-12, and 15-17, and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 21-45 of copending Application No. 17/556,509 (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 and narrower compositions comprising amounts of about 41 wt.% HFC-32, about 3.5 wt.% HFC-125, and about 55.5 wt.% CF3I as well as additional lubricant components (that are POE and/or PVE), an alkylated naphthalene component (that is AN4 or AN5) 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. While the copending claims do not recite the presence of a trialkyl phosphate or a triaryl phosphate in the stabilizer, the copending application’s original specification nevertheless discloses the stabilizer may further comprise such phosphates (e.g., p.22), which establishes the claimed inventions are obvious variants of one another. Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3-5, 15, and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/399,063 (reference application).
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 and narrower compositions comprising amounts of about 41 wt.% HFC-32, about 3.5 wt.% HFC-125, and about 55.5 wt.% CF3I in admixture with a PVE or POE lubricant as recited, as well as alkylated naphthalene. Specific alkyl naphthalenes are not recited in the patented claims, but selection of one of a limited genus of alkyl naphthalenes amounts to routine experimentation. Note that the corresponding specification of the patent also thoroughly describes and discloses the alkylated naphthalene components are of the same nomenclature and properties as those disclosed and claimed in the present application in an amount overlapping that claimed, that the composition may further comprise an epoxide that reads on an acid depleting moiety, and the additional presence of a trialkyl or triaryl phosphate-based stabilizer, which establishes the claimed inventions are obvious variants of one another. Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3-6, 8, 10-12, and 15-17, and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/298,906 (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 or AN5) 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. While the copending claims do not recite the presence of a trialkyl phosphate or a triaryl phosphate in the stabilizer or that the refrigerant has the precise composition of about 41 wt.% HFC-32, about 3.5 wt.% HFC-125, and about 55.5 wt.% CF3I, the copending application’s original specification nevertheless discloses the stabilizer may further comprise such phosphates (e.g., p.22) and the refrigerant preferably comprises such a composition (see Table 2 on p.52, especially refrigerant “A2”), which establishes the claimed inventions are obvious variants of one another. Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102 & 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4, 5, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Yana Motta et al. (US 2019/0161660 A1). Note that Yana Motta et al. is the PGPub of US 11,111,424.
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. 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, 10-12, 17, and 18 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 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, 10-12, 17, and 18. 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.
Any remaining limitations in claim 17 are recited in the alternative (ADM6 singly and combinations of ADM4 and ADM6 are recited in the alternative from ADM4 singly) and are therefore optional.
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, and 20 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, and 15-18 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 “ADM6” (i.e., 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, meeting the claimed “ADM6”, 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 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, meeting the claimed “ADM6”, 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.
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 (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 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, 15-17, and 19 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.
As to claims 17 and 19, 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 (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 19. This preferred refrigerant is also refrigerant “A2” (Table 2 on p.19). An Example teaches providing the above refrigerant with POE lubricant and AN4 as the alkylated naphthalene in an amount of about 6-10% based on the weight of the lubricant and ADM4 as the acid depleting moiety in an amount of about 0.05-5% based on the weight of the lubricant (para. 0329-0331), which, totaled, overlaps the claimed range of 1-10% by weight of alkylated naphthalene, acid depleting moiety, and lubricant.
The only difference between these cited teachings of Smith and claims 17 and 19 (besides the overlapping range of stabilizer(s)) is that the example provides AN4 as the alkylated naphthalene while the claims require AN5.
However, as similarly cited above, 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).
Thus, 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 (provide the alternatively preferred AN5 in place of the exemplary AN4) with a reasonable expectation of success because this reference teaches that all of the ingredients recited by applicants are suitable for inclusion in a refrigerant composition in overlapping amounts thereof.
Any remaining limitations in claim 17 are recited in the alternative (ADM6 singly and combinations of ADM4 and ADM6 are recited in the alternative from ADM4 singly) and are therefore optional.
Claims 7, 9, 13, and 20 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, 15-17, and 19 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 “ADM6” (i.e., 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