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 .
Election/Restrictions
Applicant's timely election with traverse of Group II, claim 3, in the reply filed on 01/09/2026 is acknowledged. The traversal is on the grounds that Groups II, III, and IV (claims 3, 4, and 5, respectively) fall within the scope of Group I/claim 1 and the claims are not mutually exclusive related products because they overlap in scope. Upon careful consideration of the claims, the restriction requirement between Groups I to IV set forth in the Office action mailed 11/10/2025 is hereby withdrawn, and claims 1, 3-5, and 9-14 will be examined on the merits.
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed 05 April 2023 and 21 October 2024. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see the attached USPTO Form.
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.
Claim 12 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)
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 12 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Claim 12 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 § 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.
Claims 1, 3-5, and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima (US 20170058172 A1, hereinafter Fukushima).
With regard to claims 1, 3-5, and 9, Fukushima teaches a working fluid composition comprising 1,2-difluoroethylene (HFO-1132) and 2,3,3,3-tetrafluoro-1-propene (HFO-1234yf), wherein 1,2-difluoroethylene can be trans-1,2-difluoroethylene (HFO-1132 (E)) (para 0023), is a concentration of 70 to 100 wt. % based on the total working fluid, with an HFO-1234yf proportion of 5 to 65 wt. % relative to the total amount of HFO-1132 and HFO-1234yf, is preferred for balancing cycle performance, temperature glide, and GWP (para 0044). Fukushima also teaches that the working fluid may contain an optional component (para 0049), which can be a hydrocarbon (para 0049), and specifically, propane (para 0050), at a concentration of less than 10% based on 100 wt. % of the total working fluid (para 0050-0052, which overlaps the claimed range of z ≥1, wherein z is the wt.% of propane). Fukushima further teaches that the optional component such as hydrocarbon has less influence over the ozone layer, has less influence over global warming, and helps the solubility of the refrigerant oil in the working fluid be more favorable (paras 0049 and 0052).
Fukushima does not teach a single embodiment with all the claimed elements together.
However, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to formulate a working fluid comprising HFO-1132(E), HFO-1234yf, and further comprising an optional component such as propane, wherein HFO-1132 is in an amount of 35 to 95 wt.%, HFO-1234yf is in an amount of 5 to 65 wt.%, and an optional component of a hydrocarbon such as propane is 0 to 10 wt. % of the total working fluid. For doing so, the inclusion of propane can enhance the solubility and mitigate its impact over global warming. Furthermore, when propane is at the minimum (0 wt.%) it permits 100 wt.% of HFO-1132E and HFO-1234yf, wherein 5 to 65 wt.% of the mixture is 1234yf, resulting in the points of (95,5,0) and (35,65,0). Conversely, when the propane is at the maximum (10 wt.%) it enforces HFO-1132E and HFO-1234yf to be 90 wt.% (which remains within the range of 70 to 100 wt.% as specified in para 0044). This resulted in the calculation of 5% x 90% = 4.5 wt.% HFO-1234yf, and 65% x 90% = 58.5 wt.% HFO-1234yf to obtain points of (85.5,4.5,10) and (31.5,58.5,10). Thus, the preferred concentrations of 1,2-difluoroethylene, 2,3,3,3-tetrafluoro-1-propene, propane, and the calculated points of (95,5,0), (35,65,0), (85.5, 4.5,10), and (31.5, 58.5,10) overlap within the claimed range.
The Examiner has carefully plotted the working fluid comprising HFO-1132 in an amount ranging from 35 to 95 wt.%, HFO-1234yf in an amount ranging from 5 to 65 wt.%, and propane in an amount ranging from 0 to 10 wt.% (in green), against the scope of the claimed figure of/surrounding line segments AB, BC, CD, and DA (of claim 1) to AB, BC, CE3, E3F3, and F3A (of claim 5) (claims 1, 3, 4, and 5 reside within claims 1 and 5 drawn) in the ternary diagram:
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457
466
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Greyscale
In the ternary diagram above, the figure with a solid black color is the overlapping area. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP §2144.05(I). Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
With regard to claim 10, Fukushima teaches the working fluid composition containing a refrigeration oil (Abstract). Fukushima further teaches that the refrigerant oil and working fluid should be soluble in each other; however, when employing a lubricant capable of circulating within the heat cycle system, a lower-solubility oil shall be selected (para. 0065).
With regard to claims 11-13, the claim limitations (e.g. “for use as an alternative refrigerant for R410A”, “use of composition”, “as a working fluid”, etc.) are merely intended use limitations that do not impart additional patentable structure to the claimed invention (MPEP 2111.02), but Fukushima actually meets these intended use limitations. Fukushima teaches a composition for a heat cycle system with favorable lubrication, comprising a low global warming potential (GWP) working fluid that serves as a suitable R410A alternative (Abstract).
With regard to claims 14, Fukushima teaches a process for operating a refrigerating cycle system by circulating a refrigerant (e.g. working fluid) through compression, condensation, expansion, and evaporation (para 0132, Fig. 1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Aja A Walker whose telephone number is (571)272-0037. The examiner can normally be reached Monday - Friday 7-5.
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/A.A.W./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761