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 04/23/2026.
Claims 1, 3-8, 10, and 11 are currently pending, of which claims 4-6 are withdrawn.
Response to Amendment & Arguments
The rejection of claim 9 under 35 U.S.C. 101 is withdrawn in view of the above amendment canceling the claim.
The rejection of claims 2 and 9 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the above amendment. While it is noted Applicant made amendments to overcome the 112(b) rejection of claim 3 and argues the amendments to claim 3 renders the rejection moot, the claim remains indefinite despite the amendment and brief arguments. See the revised reasons below.
The amendment to claim 1 also raises a new 112(d) issue in claim 3. See the new 112(d) rejection below.
The rejection of claims 1 and 7, 8, 10, and 11 under 35 U.S.C. 103 as being unpatentable over Minor et al. (US 2011/0253927 A1) is withdrawn in view of the above amendment incorporating the previously identified allowable subject matter of claim 2 into the independent claim.
The rejection of claims 1 and 7, 8, 10, and 11 on the grounds of nonstatutory double patenting as being unpatentable over claims 1-5 of US Patent No 12,473,477 and claims 1 and 14 of copending Application No. 17/705,356 are both withdrawn in view of the above amendment incorporating the previously identified allowable subject matter of claim 2 into the independent claim.
Claim Objections
Claim 3 is objected to because of the following informalities: In claim 3 in point D of the “0<a≤17.3” section of the claim, Applicant is suggested to amend the x coordinate “0.0151a2-2.1344a+80.8” to read as “0.0151a2-2.1344a+80.8” (superscript the “2” of “0.0151a2”) in order to improve clarity in the claim. Based on the context of the claim and invention, it is believed Applicant intended for the 2 to be a superscript meaning “a” (the concentration of R32) squared. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is 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 3 has been amended to change its “a” R32 mass% range from “0<a≤29.2” to “0<a≤51.6”, now clearly including the “if 33.1<a≤33.3” and “if 33.3<a≤51.6” conditions of the claim. However, these conditions are unclear so as to render the claim indefinite because of their point P’s. Each recited “point” is an endpoint/extremity of the refrigerant composition. Point P in both conditions are, where a (mass% R32) is in the prior condition range, x = 0.0 mass% HFO-1132(E), y = 100.0 mass% CF3I, and z = 0.0 mass% R1234yf. It is unclear how point P is a valid coordinate in a ternary diagram representing the refrigerant of HFO-1132(E)+CF3I+R1234yf+R32 with mass% concentrations of x, y, z, and a, respectively, because the mass% concentrations sum to well in excess of 100 mass%. For example, point P of the “if 33.1<a≤33.3” condition has a x+y+z+a of greater than 133.1 mass% and less than or equal to 133.3 mass% (x and z are zero but y is 100.0, i.e., 100%, and 33.1<a≤33.3). Similarly, point P of the “if 33.3<a≤51.6” condition has a x+y+z+a of greater than 133.3 mass% and less than or equal to 151.6 mass% (x and z are zero but y is 100.0, i.e., 100%, and 33.3<a≤51.6).
How can the conditions of R32 being above 33.1 mass% have points/compositions where the components sum to greater than 100%? As the point P’s amount to points/compositions where the components are well in excess of 100 mass% it is unclear how the compositions can be represented by a ternary composition diagram (that must sum to 100 mass% to be valid) as recited.
Please note this issue in claim 3 was not pointed out in the previous Office action because the claim seemed to only be limited to “a” concentrations of up to 29.2 mass% R32 (Id.) and this issue occurs in “a” concentration ranges/tiers that were outside the prior scope of the claim. Applicant’s amendment for the claim to clearly include “a” concentrations of up to 51.6 mass% R32 (rather than merely up to 29.2 mass%) raised/necessitated this new issue.
Additionally in claim 3, Applicant’s amendment to point W in the “33.3<a≤51.6” condition raises a new indefinite issue. The amendment changes the y coordinate of point W from “0.05178a2 - 6.0017a + 176.35” to “0.05178a2 - 6.0017a - 176.35”. The point W y coordinate is a function of a (the mass% of R32). However, it is unclear how this point as amended could ever be represented a ternary diagram (where all components are 0 to 100 mass% and sum to 100 mass%) because every value for point W as amended results in a negative mass%. It is unclear how the point W can be a negative mass%, especially hundreds of negative mass percentages, as amended. For example:
a (R32 mass%)
Expression for y
y (CF3I mass%)
33.5
0.05178(33.5)2 - 6.0017(33.5) - 176.35
-319.297
38.0
0.05178(38)2 - 6.0017(38) - 176.35
-327.526
45.0
0.05178(45)2 - 6.0017(45) - 176.35
-341.572
51.6
.05178(51.6)2 - 6.0017(51.6) - 176.35
-348.17
Please check the math of the expression(s). The sum of the expressions for x, y, and z sum to less than 0 mass%, which renders the scope of the claim indefinite. How can there be negative amounts of CF3I resulting in a negative mass% sum of the composition/point?
Appropriate correction/clarification is required.
There is a great deal of confusion and uncertainty as to the proper interpretation of claim 3 due to the issues cited above, and a person of ordinary skill in the art would not be apprised as to the scope of the invention. Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. See MPEP 2173.06.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Independent claim 1 recites a composition comprising a refrigerant comprising trans-1,2-difluoroethylene (HFO-1132(E)), trifluoroiodomethane (CF3I), 2,3,3,3-tetrafluoro-1-propene (R1234yf), and difluoromethane (R32) where the sum of these components are represented by mass% variables of x, y, z, and a, respectively (meaning x is the mass% of HFO-1132(E), y is the mass% of CF3I, z is the mass% of R1234yf, and a is the mass% of R32) “provided that 0<a≤29.2” meaning the refrigerant of claim 1 is limited to a R32 concentration of greater than zero mass% and equal to or less than twenty nine point two mass%.
Claim 3 is dependent on claim 1 and recites the limitation “provided that 0<a≤51.6” meaning the refrigerant of claim 3 includes a R32 concentration of greater than zero mass% and equal to or less than fifty one point six mass%. The upper boundary of 51.6 mass% R32 significantly extends the 29.2 mass% maximum concentration of R32 of the parent claim, rendering claim 3 to fail to further limit and/or include all the limitations of its parent claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 1, 7, 8, 10, and 11 are allowed.
As similarly set forth in the previous Office action, claim 1 claim generally requires a complex quaternary blend of trans-1,2-difluoroethylene (HFO-1132(E)), trifluoroiodomethane (CF3I), 2,3,3,3-tetrafluoro-1-propene (R1234yf), and difluoromethane (R32) where the concentrations of HFO-1132(E), CF3I and R1234yf be within the recited ternary diagram figures connecting the recited points and a general R32 concentration of greater than zero and up to 29.2 mass%. The closest prior art of record fail to teach or suggest a refrigerant composition (or methods of use or refrigerating machines thereof) comprising trans-1,2-difluoroethylene (HFO-1132(E)), trifluoroiodomethane (CF3I), 2,3,3,3-tetrafluoro-1-propene (R1234yf), and difluoromethane (R32) that represented in a ternary composition diagram of the HFO-1132(E), CF3I and R1234yf components fall within figures connected by the four recited points A, S, B, and O at lower R32 concentrations and the five recited points P, A, S, B, and O at higher R32 concentrations.
Minor et al. (US 2011/0253927 A1) teach compositions for use in refrigeration, air-conditioning, and heat pump systems, i.e., refrigerant compositions, comprising E-1,2-difluoroethylene, i.e., trans-1,2-difluoroethylene (HFO-1132(E)) (abstract). More specifically, Minor et al. teach the compositions comprise E-1,2-difluoroethylene (HFO-1132(E)) and at least one compound selected from a closed group of alternatives (para. 0009). Therein, the closed group of alternative compounds for the “at least one” additional compound includes each of 2,3,3,3-tetrafluoropropene (i.e./aka 2,3,3,3-tetrafluoro-1-propene or R1234yf), difluoromethane (i.e./aka R32), and trifluoroiodomethane (i.e./aka CF3I) (para. 0009). While Minor et al. broadly encompass a composition comprising all four of the instantly claimed components, Minor et al.’s disclosure is primarily drawn to much discussion and examples to binary compositions of the required E-1,2-difluoroethylene component and one additional component (e.g., Table 1 and claims). Minor et al. fail to teach or suggest the particular concentrations of the components as instantly claimed and there is no teaching(s), guidance, or motivation to arrive at the particular concentrations of the components as instantly claimed.
Wilson et al. (US 2006/0025322 A1) teach azeotrope-like compositions comprising difluoroethane (HFC-152a) and trifluoroiodomethane (CF3I) and azeotrope-like compositions comprising HFC-152a, tetrafluoropropene (HFO-1234), and CF3I (abstract and para. 0018+). While Wilson et al. further teach difluoromethane (HFC-32) as an additional co-refrigerant for the composition (para. 0062-0065), Wilson et al. fail to further teach or suggest the presence of trans-1,2-difluoroethylene as claimed.
Minor et al. (US 2008/0230738 A1) teach compositions comprising a fluoroolefin, particularly compositions comprising 2,3,3,3-tetrafluoropropene (HFC-1234yf) as the fluoroolefin with difluoromethane (HFC-32) and trifluoroiodomethane (CF3I) as additional components therein. See the preferred compositions in Table 2, particularly the HFC-1234yf-based compositions in Table 2 near the end of the table on p.5, such as, in wt.% concentrations, 1) 1-98 HFC-1234yf, 1-98 HFC-32, & 1-98 CF3I, 2) 1-97 HFC-1234yf, 1-97 HFC-32, 1-97 HFC-134a, & 1-97 CF3I, and 3) 1-97 HFC-1234yf, 1-97 HFC-32, 1-97 HFC-125, & 1-97 CF3I. While Minor et al. teach the composition may further comprise a brominated difluoroethylene compound (1-monobromo-1,2-difluoroethene) or a brominated ethylene compound (monobromoethene) as a tracer compound (para. 0049, 0050, and Table 7, particularly Table 7 at the top of p.13), Minor et al. fail to teach or suggest the composition further comprises trans-1,2-difluoroethylene, as claimed.
Singh et al. (US 9,175,201 B2) teach stabilized iodocarbon compositions useful as refrigerants comprising at least one iodocarbon compound and at least one stabilization agent (abstract). Trifluoroiodomethane (CF3I) is a preferred iodocarbon compound (col. 2 lines 35-44 & col. 7). The composition may further comprise at least one saturated hydrofluorocarbon (HFC) compound and/or at least one haloalkene such as 2,3,3,3-tetrafluoropropene (HFO-1234yf) (col. 6). One genus of preferred compositions comprise 0-95 wt.% fluoroalkene(s), >0-99 wt.% iodocarbon(s), and 0-95 wt.% HFC(s) (Table 1 in col. 18). Another genus of preferred compositions comprise 0-75 wt.% fluoroalkene(s), >0-40 wt.% CF3I, and 50-<100 wt.% HFC(s) preferably difluoromethane/HFC-32 (Table 4 in col. 19). There is a detailed discussion of potential fluoroalkenes among col. 15 to 17. Therein, fluoroethenes, i.e., fluorinated ethylenes, are disclosed as potential fluoroalkenes, and various species as listed (col. 15 line 65 to col. 16 line 3). While vinylidene fluoride, i.e., 1,1-difluoroethylene, is disclosed in the list as a suitable difluoroethylene and fluoroethene compound as the fluoroalkene, Singh et al. fail to teach or suggest the fluoroalkene/fluoroethylene/difluoroethylene comprises trans-1,2-difluoroethylene and thus fail to teach or suggest the composition further comprises trans-1,2-difluoroethylene, as claimed.
Fukushima (US 2017/0002245 A1) teaches working fluid compositions comprising trifluoroethylene (HFO-1123) and 1,2-difluoroethylene (HFO-1132) (abstract). The HFO-1132 may be present as and preferred as HFO-1132(E), i.e., trans-1,2-difluoroethylene, (para. 0022). The composition may further comprise difluoromethane (HFC-32) and 2,3,3,3-tetrafluoropropene (HFO-1234yf) (para. 0023, 0033, 0038, 0044). However, Fukushima fails to teach or suggest the presence of trifluoroiodomethane 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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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./
May 4, 2026
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