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 11/21/2025.
Claims 1-11 are currently pending.
The Drawings filed 01/27/2023 are approved by the examiner.
The IDS statements filed 01/27/2023, 07/13/2023, and 08/13/2024 have been considered. Initialed copies accompany this action.
Applicant’s election without traverse of HFO-1132(E)/CF3I/R1234yf/R32 as the refrigerant species in the reply filed on 11/21/2025 is acknowledged.
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Claims 4-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.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 and B)” in claim 2 and “(excluding the points 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 (HFO-1132(E), CF3I, R1234yf, and R32), 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 R1234yf, point B has a zero concentration of CF3I, point P has a zero concentration of HFO-1132(E) and R1234yf, some point C have a zero concentration of R1234yf while other point C have a zero concentration of HFO-1132(E), point D has a zero concentration of CF3I, and point O has a zero concentration of both CF3I and R1234yf. 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. Claim 2 would be definite if the expressions were not recited within parentheses.
Additionally in claim 3, the scope of the claim is unclear due to the recited ranges of the “a” variable. Note that the limitation at the beginning of the claim recites “provided that 0<a≤29.2” regarding mass% of R32, which sets forth that the claim is limited to compositions where difluoromethane (R32) is present in an amount greater than 0 mass% and less than or equal to 29.2 mass%. However, the body of the claim then later very unclearly recites limitations of ternary diagram compositions figures of the HFO-1132(E), CF3I, R1234yf, and R32 components where “if 17.3<a≤33.1”, “if 33.1<a≤33.3”, and “if 33.3<a≤51.6” that are drawn to compositions that contain R32 well in excess of the stated maximum of 29.2 mass% (effectively up to 51.6 mass% R32). If the claim is limited to certain compositions where difluoromethane is present in an amount greater than 0 mass% and less than or equal to 29.2 mass% then why are compositions comprising up to 33.1 mass% difluoromethane, greater than 33.1 mass% and less than or equal to 33.3 mass% difluoromethane, and greater than 33.3 mass% and less than or equal to 51.6 mass% difluoromethane recited?
Also, in the “if 33.1<a≤33.3” limitation of claim 3, the coordinates of point C are very unclear due to the y coordinate of “-7.5a+315.15.053”. What is “315.15.053”?
Also, in the “if 33.3<a≤51.6” limitation of claim 3, the point W appears to have a sum of mass% of greater than 100 mass%, which renders the claim indefinite.
For further examination claims 2 and 3 will be interpreted as if they did exclude the points of the recited segments thus requiring a quaternary composition of the recited components as set forth in the parent, independent claim. Additionally, claim 3 is interpreted as if it is only limited to “0<a≤29.2” regarding mass% of R32, i.e., where difluoromethane (R32) is present in an amount greater than 0 mass% and less than or equal to 29.2 mass%.
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. Also, the recited “(100-a)” within parentheses in the limitations reciting “the sum of HFO-1132(E), CF3I, and R1234yf is (100-a) mass%” are clear and definite as “(100-a”) is a clear, complete mathematical expression.
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 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Minor et al. (US 2011/0253927 A1).
As to claim 1, Minor et al. 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. is not sufficiently specific to a composition at-once containing all four of trans-1,2-difluoroethylene (HFO-1132(E)), trifluoroiodomethane (CF3I), 2,3,3,3-tetrafluoro-1-propene (R1234yf), and difluoromethane (R32) 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 Minor et al. teach a composition requiring trans-1,2-difluoroethylene and additional compounds including all of trifluoroiodomethane (CF3I), 2,3,3,3-tetrafluoro-1-propene (R1234yf), and difluoromethane (R32).
As to claim 7, Minor et al. teach the composition further comprises a lubricant (para. 0056+). Note that the limitation that the composition is “for use as a working fluid for a refrigerating machine” is merely an intended use limitation that does 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 (see, e.g., para. 0018 & 0046).
As to claims 8-11, Minor et al. teach a refrigeration apparatus, i.e., refrigerating machine, comprising the composition (para. 0013 & 0134). Operation of the refrigerating apparatus comprises repeating a cycle of boiling a liquid refrigerant in an evaporator after passing through an expansion device, compressing a low-pressure gas after the evaporator in a compressor, and condensing the gaseous refrigerant in a condenser before returning the refrigerant to the expansion device (para. 0134), 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 (e.g., para. 0011, 0046, & 0127).
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 1-5 of U.S. Patent No. 12,473,477.
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 CF3I i.e. trifluoroiodomethane, HFC-32 i.e. difluoromethane, at least one compound A which may be selected as trans-1,2-difluoroethylene (HFO-1132(E)) and at least one compound B which may be selected as 2,3,3,3-tetrafluoropropene (HFO-1234yf) (claims 1 and 2), as well as refrigerating machines/heat cycle systems, i.e., apparatus, comprising the composition (claims 3-5). 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 trans-1,2-difluoroethylene (HFO-1132(E)), trifluoroiodomethane (CF3I), 2,3,3,3-tetrafluoro-1-propene (R1234yf), and difluoromethane (R32). The claimed compositions broadly overlap in scope.
Additionally, while the patented claims do not recite the composition further comprises a refrigeration oil nor a method of operating a refrigerating machine (or the claimed heat cycle system) comprising circulating the composition, the patent’s specification nevertheless discloses these features are encompassed by the invention such that the inventions are clearly obvious variants of one another. See, for example, cols. 9 & 10 of the patent. Additionally, while the claimed limitations pertaining to R410A are drawn to intended use, the patent’s specification also indicates the composition is a R410A replacement/alternative refrigerant. 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. Any remaining claim limitations are optional or intended use.
However, note that the patented claims in no way recite, suggest, or hint at the particular concentrations of dependent claims 2 and/or 3.
Claims 1 and 8-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 14 of copending Application No. 17/705,356 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application claims recite a refrigeration cycle apparatus comprising a non-azeotropic refrigerant mixture, i.e., a composition, including any of R32, R1132(E), R1234yf, R1234ze, CF3I, and CO2 (claims 1 and 14). 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 trans-1,2-difluoroethylene (HFO-1132(E)), trifluoroiodomethane (CF3I), 2,3,3,3-tetrafluoro-1-propene (R1234yf), and difluoromethane (R32) as a refrigerant mixture. The claimed compositions broadly overlap in scope.
Additionally, while the patented claims do not recite a method of operating a refrigerating machine comprising circulating the composition, the patent’s specification nevertheless discloses these features are encompassed by the invention such that the inventions are clearly obvious variants of one another. See, for example, at least the first embodiments section beginning on p.3 of the original specification and Fig. 1. 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. Any remaining claim limitations are optional or intended use.
However, note that the reference application claims in no way recite, suggest, or hint at the particular concentrations of dependent claims 2 and/or 3.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claim 2 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 claim 2, the 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.
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./
January 14, 2026