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 03 July 2026.
The rejection of claim 12 under 35 U.S.C. 112(b) as being indefinite is withdrawn in view of amendments.
The rejection of claim 12 under 35 U.S.C. 101 as being directed to non-statutory subject matter is withdrawn in view of amendments.
The rejection of claims 1, 3-5, and 9-14 as being unpatentable over Fukushima (US-20170058172-A1) is maintained in view of amendments/arguments.
Response to Amendment & Arguments
Applicant's arguments filed 03 July 2026 have been fully considered but they are not persuasive.
Applicant argues Fukushima does not provide a basis to select propane and Examiner’s rationale uses hindsight (see page 12). Applicant’s argument is unpersuasive. As such, Fukushima explicitly teaches that the hydrocarbon may be propane, propylene, cyclopropane, butane, isobutane, pentane, or isopentane, used alone or in combination at a concentration less than 10 wt.% (paras. [0050-0052]). These disclosures provide an adequate motivation to select one or more of these compounds seven compounds. Furthermore, Fukushima highlights those optional components, such as hydrocarbons offer environmental benefits—such a reduced impact on the ozone layer and global warming—while improving the solubility of the refrigerant oil in the working fluid to be more favorable (paras 0049 and 0052).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have been motivated to utilize these hydrocarbons or select propane, as the available list is limited. A person of ordinary skill is also a person of ordinary creativity, when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. KSR International Co. V Teleflex Inc 550 USPQ2d 398, 421 (2007).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The rejection was based on teachings of Fukushima.
Applicant argues Fukushima does not provide a basis over the refrigerant ranges (see page 12). Applicant’s argument is unpersuasive. As such, 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). This overlaps the claimed range for (HFO-1132) and (HFO-1234yf). 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).
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.%, 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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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). It has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results, In re Greenfield, 197 USPQ 227. As such, the teaching of Fukushima, when combined with general knowledge in the art, render the claimed feature obvious.
Applicant argues the claimed invention has enhanced properties not taught by the prior
art (see pages 12-13).
In response to applicant's argument that the refrigerant exhibits improvement of COP ratio, lower combustion heat, flammability, and fire risk, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant's argument that the reference fails to show certain features of the
invention, it is noted that the features upon which applicant relies (i.e., COP ratio, lower combustion heat, flammability, and fire risk) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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 3-5, 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima (US-20170058172-A1).
With regard to claims 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). This overlaps the claimed range for (HFO-1132) and (HFO-1234yf). 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.%, 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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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
THIS ACTION IS MADE FINAL. 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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A.W./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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