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 response to election/restriction filed 10/23/2025.
Claims 1-11 are currently pending.
The Drawings filed 01/19/2023 are approved by the examiner.
The IDS statements filed 01/19/2023, 04/20/2023, and 07/29/2024 have been considered. Initialed copies accompany this action.
Applicant’s election of R32/HFO-1132(E)/R1234ze/HFO-1132a as the refrigerant species in the reply filed on 10/23/2025 is acknowledged. Because Applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant identified claims 1-3 and 7-11 as reading on the elected species. Claims 1-3 and 7-11 were searched and examined only to the extent that they read on the elected invention/species, as they were found not to be allowable.
Claims 4-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 9 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Claim 9 is a use claim. The claim does not fall within at least one of the four categories of patent eligible subject matter because a “use” claim does not purport to claim a process, machine, manufacture, or composition of matter. See MPEP 2173.05(q).
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 2, 3, and 9 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.
In claims 2 and 3, it is unclear whether the limitation within parentheses (“(excluding the points A, B, C, and D)” in claim 2 and “excluding the points A’, B’, C, and D)” in claim 3) are part of the claimed invention and render the claims indefinite.
Also note that if these parenthetical expressions are not read into the claims, while improper, the claims are further indefinite because independent claim 1 requires four components (R32, HFO-1132(E), R1234ze, and HFO-1132a), and these points excluded from the concentrations have a zero concentration of at least one of the components, meaning only two or three of the components are actually present at those points. See claims 2 and 3 where point A has a zero concentration of R1234ze, point B has a zero concentration of HFO-1132(E), point C has a zero concentration of R1234ze, and point O has a zero concentration of both R32 and R1234ze. This renders these claims unclear under an indefiniteness rationale (rather than a clear-cut 112(d) rationale) whether they actually further limit and/or include all the parent claim’s limitations requiring four components.
Claims 2 and 3 would be definite if the expressions were not recited within parentheses.
For further examination claims 2 and 3 will be interpreted as if they did exclude the points of the recited segments in the parentheses thus requiring a quaternary composition of the recited components as set forth in the parent, independent claim.
Claim 9 is indefinite because the claim merely recites a use without any active, positive steps delimiting how this use is actually practiced. See MPEP 2173.05(q).
Appropriate correction/clarification is required.
Note that the recited (x,y,z) coordinates written within parentheses are clear and definite as this is a common notation for numerical coordinates.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Tasaka et al. (US 2016/0340565 A1).
As to claim 1, Tasaka et al. teach a working fluid, i.e., refrigerant composition, comprising difluoroethylene in an amount of less than 1.5 mass% (abstract). The difluoroethylene component in the composition may comprise both 1,1-difluoroethylene (HFO-1132a) and trans-1,2-difluoroethylene (HFO-1132(E)) as they are by-products of forming trifluoroethylene (HFO-1123), another required component in Tasaka et al.’s composition, (para. 0023). The working fluid may further contain a hydrofluorocarbon (HFC) and another hydrofluoroolefin (HFO) (para. 0026). Difluoromethane (R-32) is a particularly preferred HFC (para. 0027), and trans-1,3,3,3-tetrafluoropropene (HFO-1234ze(E)) is a particularly preferred HFO (para. 0028).
While Tasaka et al. is not sufficiently specific to a composition at-once containing all four of difluoromethane (R32/HFC-32), trans-1,2-difluoroethylene (HFO-1132(E)), 1,3,3,3-tetrafluoropropene (R1234ze/HFO-1234ze(Z)/HFO-1234ze(E)), and 1,1-difluoroethylene (HFO-1132a) under the meaning of anticipation, the claimed composition/refrigerant is 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 provide/formulate a composition comprising the four components from the cited teachings of the reference with a reasonable expectation of success as Tasaka et al. teach a composition requiring difluoroethylene, which may be/include both of HFO-1132a and HFO-1132(E), and particularly prefers provision of both difluoromethane (HFC-32 which is R32) as an additional HFC and a 1,3,3,3-tetrafluoropropene isomer (HFO-1234ze(Z) and/or HFO-1234ze(E) which are each R1234ze) as an additional HFO.
As to claims 8-11, the working fluid is useful as a working fluid for a heat cycle system including refrigerating apparatus (para. 0146), which certainly meets a refrigerating machine comprising the composition. Operation of the refrigerating apparatus comprises repeating a cycle of compressing the working fluid in a compressor, condensing the working fluid in vapor form in a condenser to cool and liquefy the working fluid vapor discharged from the compressor, expanding the working fluid liquid discharged from the condenser through an expansion valve, and evaporating the working fluid liquid discharged from the expansion valve (para. 0155 and Fig. 1), i.e., circulating the working fluid in the apparatus. Note that some of the claimed limitations in these dependent claims (e.g., “for use as an alternative refrigerant for R410”, “as an alternative refrigerant for R410A”, and “as a working fluid”) are merely intended use limitations that do not impart additional patentable structure of the claimed invention, but the reference is so specific that it actually appears to meet these intended use limitations (it is implied in the background section Tasaka et al.’s working fluid is intended to replace R410A).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Tasaka et al. (US 2016/0340565 A1) as applied to claims 1 and 8-11 above, and further in view of Fukushima (US 2016/0355719 A1).
The disclosure of Tasaka et al. is relied upon as set forth above.
Tasaka et al. teach a working fluid that may comprise all of difluoromethane, trans-1,2-difluoroethylene, 1,3,3,3-tetrafluoropropene, and 1,1-difluoroethylene as well as refrigeration apparatus and methods of use thereof (Id.). As similarly described above, note that some of the claimed limitations (e.g., “for use as a working fluid for a refrigerating machine”) are merely intended use limitations that do not impart additional patentable structure of the claimed invention, but the reference is so specific that it actually meets these intended use limitations (Id.).
Tasaka et al. fail to teach the composition further comprises a refrigeration oil.
However, Fukushima similarly teaches a working fluid for a heat cycle system, such as a refrigerating cycle system, comprising an unsaturated fluorinated hydrocarbon compound and a refrigerant oil (abstract and para. 0013 & 0025). Therein, Fukushima et al. similarly teach the unsaturated fluorinated hydrocarbon compound may comprise a 1,2-difluoroethylene and a 1,3,3,3-tetrafluoropropene (para. 0033-0034) as well as further comprise difluoromethane as an additional HFC component (para. 0044-0047). Fukushima teaches the refrigerant oil improves lubricating properties of the working fluid (para. 0108).
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 a refrigerant oil as taught by Fukushima to the working fluid of Tasaka et al. in order to improve the lubricating properties of the working fluid with a reasonable expectation of success.
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 and 7-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6-8, and 11-13 of U.S. Patent No. 11,306,234. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite a composition comprising a refrigerant comprising an unsaturated compound (b) comprising HFO-1132a and a hydrofluorocarbon (HFC) compound (c) (claim 1) where the (b) unsaturated compound further comprises at least one compound selected from a closed group consisting of, among others, HFO-1234ze(E), HFO-1234ze(Z), and HFO-1132(E) (claims 2 & 6), the (c) HFC further comprises, among others, HFC-32 (claims 3 & 6), the further presence of a refrigerant oil (claim 7), the intended uses that the composition is a working fluid for a refrigeration apparatus and an alternative refrigerant for R410A (claims 7 & 8), a refrigeration method comprising operating a refrigerating cycle apparatus/machine using the composition (claim 11), and a refrigerant apparatus/machine comprising the composition (claims 12 & 13). While the patented composition/refrigerant does not directly meet the claimed composition/refrigerant under an anticipation-type meaning, they overlap in scope as each comprise or may comprise each of difluoromethane (R32/HFC-32), trans-1,2-difluoroethylene (HFO-1132(E)), 1,3,3,3-tetrafluoropropene (R1234ze/HFO-1234ze(E)/HFO-1234ze(Z)), and 1,1-difluoroethylene (HFO-1132a). The claimed compositions broadly overlap in scope.
However, note that the patented claims in no way recite, suggest, or hint at the particular concentrations of dependent claims 2 and/or 3.
Allowable Subject Matter
Claims 2 and 3 would be allowable if rewritten to overcome the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Aside from the 112(b) issues of claims 2 and 3, claims 2 and 3 generally require complex quaternary blends of difluoromethane (R32), trans-1,2-difluoroethylene (HFO-1132(E)), 1,3,3,3-tetrafluoropropene (R1234ze), and 1,1-difluoroethylene (HFO-1132a) where the concentrations of R32, HFO-1132(E), and R1234ze be within the recited ternary diagram figures connecting the recited points and a general HFO-1132a concentration of 1.5 to 10 mass%. The closest prior art of record fail to teach or suggest a refrigerant composition (or methods of use or refrigerating machines thereof) comprising difluoromethane (R32), trans-1,2-difluoroethylene (HFO-1132(E)), 1,3,3,3-tetrafluoropropene (R1234ze), and 1,1-difluoroethylene (HFO-1132a) that represented in a ternary composition diagram of the R32, HFO-1132(E), and R1234ze components fall on or within a figure connected by the five recited points A, B, C, D, and O (and narrower figure/points A’, B, C, D, and O).
Tasaka et al. (US 2016/0340565 A1) teach a working fluid comprising difluoroethylene in an amount of less than 1.5 mass% (abstract). The difluoroethylene component in the composition may comprise 1,1-difluoroethylene (HFO-1132a) and trans-1,2-difluoroethylene (HFO-1132(E)) as they are by-products of forming trifluoroethylene (HFO-1123), another required component in Tasaka et al.’s composition, (para. 0023). The working fluid may further contain a hydrofluorocarbon (HFC) and another hydrofluoroolefin (HFO) (para. 0026). Difluoromethane (R-32) is a particularly preferred HFC (para. 0027), and trans-1,3,3,3-tetrafluoropropene (HFO-1234ze(E)) is a particularly preferred HFO (para. 0028). When difluoromethane is present, with respect to the proportions of trifluoroethylene and difluoromethane is 100 mass%, the trifluoroethylene spans 1-99 mass% and the difluoromethane spans 99-1 mass% and/or the sum of trifluoroethylene and difluoromethane is preferably at least 80 mass% of the working fluid where the trifluoroethylene is preferably at least 40 mass$ of the working fluid (para. 0029-0030). Similarly, when trans-1,3,3,3-tetrafluoropropene is present, with respect to the proportions of trifluoroethylene and trans-1,3,3,3-tetrafluoropropene is 100 mass% (the total amount of the two components), the trifluoroethylene spans 35-95 mass% and/or the sum of trifluoroethylene and trans-1,3,3,3-tetrafluoropropene is preferably 70-100 mass% of the working (para. 0033-0034). Tasaka et al. also teach some preferred compositions comprising 30-80 mass% trifluoroethylene, up to 40 mass% trans-1,3,3,3-tetrafluoropropene, and >0 to 30 mass% difluoromethane (para. 0068+) and 10-70 mass% trifluoroethylene, >0 to 50 mass% trans-1,3,3,3-tetrafluoropropene, and 30-44 mass% difluoromethane (para. 0087+).
However, as described above, Tasaka et al. limits their composition to less than 1.5 mass% of the total of all difluoroethylene compounds/isomers and fails to teach, meet, suggest, or provide motivation to arrive at the claimed quaternary composition comprising difluoromethane (R32), trans-1,2-difluoroethylene (HFO-1132(E)), 1,3,3,3-tetrafluoropropene (R1234ze), and 1,1-difluoroethylene containing HFO-1132(E) and HFO-1132a in the recited amounts. Tasaka et al.’s total difluoroethylene concentration of less than 1.5 mass% is below the claimed HFO-1132(E) and HFO-1132a combined concentrations, and there is no reason or motivation to increase the amount of difluoroethylene(s) in Tasaka et al.’s composition as it is expressly taught that the presence of difluoroethylene causes the working fluid’s cycle performance to be low and that a difluoroethylene content of less than 1.5 mass% is needed for a sufficient cycle performance to be obtained (para. 0024), which serves as a teaching away from the claimed concentrations of HFO-1132(E) and HFO-1132a.
Itano et al. (US 2022/0106510 A1) and Itano et al. (US 2022/0145154) each teach compositions comprising refrigerants comprising trans-1,2-difluoroethylene (HFO-1132(E)), difluoromethane (R32), and 1,3,3,3-tetrafluoropropene (R1234ze) (abstracts). However, both references fail to teach or suggest the further presence of 1,1-difluoroethylene (HFO-1132a), as claimed.
The remaining references listed on Forms 892, 1449, and PCT 210 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.
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./
December 18, 2025