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 04/17/2026.
Claims 13-25 are currently pending.
The IDS statements filed 04/06/2023, 05/12/2023, and 10/22/204 have been considered. Initialed copies accompany this action.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election of trans-1,2-difluoroethylene (HFO-1132(E)) as the species of refrigerant in the reply filed on 04/17/2025 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)).
Claims 13-25 were searched and examined only to the extent that they read on the elected species, as the elected species was found not to be allowable.
Claim Rejections - 35 USC § 112 & Claim Interpretation
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 18-25 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 18 recites “A method for suppressing a disproportionation reaction of a refrigerant using a refrigeration oil, …”. Thereafter, the claim merely recites the content of the refrigerant (“the refrigerant comprising at least one refrigerant selected from …, wherein the refrigerant content is 40 mass% or more …”), a feature of the refrigeration oil (“the refrigeration oil having a contact angle with a substrate of …, the substrate comprising engineering plastics”), and some other forming a contact portion comprising at least one engineering plastic but that limitation has no nexus recited to the refrigerant or refrigeration oil.
Claim 18 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). What active, positive steps does the method for suppressing a disproportionation reaction of the refrigerant require?
Additionally, the limitation of “wherein the refrigerant content is 40 mass% or more, based on the entire composition” is indefinite because the term “the entire composition” lacks sufficient antecedent basis in the claim.
As implied above, the end of claim 18 states “forming a contact portion comprises at least one engineering plastic selected from …” but it is unclear what is required or how this relates to the method because it has no nexus recited to the refrigerant or refrigeration oil. How does forming a contact portion comprising at least one engineering plastic relate to the “using a refrigerant oil” step and method for suppressing a disproportionation reaction of a refrigerant thereof?
Claims 19 and 20 are also indefinite for their dependency on claim 18.
For purposes of further claim interpretation of claim 18, the mere presence of the recited refrigerant with the refrigerant oil where the content of the refrigerant is present in a concentration of 40 mass% or more of the two will read on the claim because the method appears to merely be the presence of the two together. Additionally, note the refrigerant oil’s contact angle and related substrate are merely functional limitations of the refrigeration oil. The refrigeration oil must be capable of having the specified content angle with one of the broad engineering plastic species but, as recited, presence of a literal substrate is not required in the method.
Claim 21 recites “A composition comprising a refrigerant and a refrigeration oil”. Like claim 18, additional details to the content and concentration of the refrigerant and a functional limitation regarding a contact angle of the refrigeration oil relative to a substrate comprising engineering plastic is required. However, the end of the composition claim recites a limitation “and forming a contact portion comprises at least one engineering plastic …”, which renders the claim indefinite because it is seriously unclear what is meant by the limitation. The claim is to a composition of matter, not a manufacture/article nor a method. How does a step of “forming a contact portion comprises at least one engineering plastic” relate to the recited “composition comprising a refrigerant and refrigeration oil”?
Claims 22-25 are also indefinite for their dependency on claim 21.
For purposes of further claim interpretation of claim 21, like claim 18, the mere presence of the recited refrigerant with the refrigerant oil where the content of the refrigerant is present in a concentration of 40 mass% or more of the two will read on the claim because that is the composition. A contact portion is not a component of the composition. Additionally, note the refrigerant oil’s contact angle and related substrate are merely functional limitations of the refrigeration oil. The refrigeration oil must be capable of having the specified content angle with one of the broad engineering plastic species but, as recited, presence of a literal substrate is not required in the composition comprising the refrigerant and refrigeration oil.
Appropriate correction/clarification is required.
For purposes of further claim interpretation (unrelated to the 112 rejection and only placed here for brevity and convenience), it is noted the preamble of claim 13, “A heat cycle system using a composition comprising a refrigerant and a refrigeration oil”, is clearly understood to mean a heat cycle system (apparatus) comprising the recited composition therein.
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 13-25 are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima (US 9,790,412 B2) in view of Fukushima et al. (US 9,957,430 B2).
As to independent claim 13, Fukushima teaches a heat cycle system comprising a working medium comprising 1,2-difluoroethylene (abstract), which reads on a heat cycle system using a composition comprising a 1,2-difluoroethylene refrigerant. The heat cycle system comprises a compressor (Fig. 1, col. 8 lines 1-6 & 19-21, and claim 11), which reads on the presence of a compression mechanism. As compressors compress working fluids/media in such heat cycle apparatus (e.g., col. 8 lines 1-6 & 19-21), there intrinsically exists a contact portion that comes into contact with the (working medium) composition within the compressor/compression mechanism, as claimed; refrigerants/working media must be present within and come into contact with internals of a compressor for compression to take place.
Regarding the content of the refrigerant, Fukushima teaches the 1,2-difluoroethylene may comprise the trans-1,2-difluoroethylene (HFO-1132(E)) isomer alone and the HFO-1132(E) may be 100 mass% of the working medium (col. 3 lines 20-29). A working medium of 100 mass%, i.e., only, HFO-1132(E) is also exemplified that contain example working medium of 100 mass% HFO-1132(E) (see Tables 1, 3, 6, 7, 8, 11, & 12). Fukushima further teaches a lubricating oil may be provided in the working medium-containing composition (col. 4 line 60+), which reads on the presence of a refrigeration oil. The lubricating oil may comprise any of a polyoxyalkylene glycol, i.e., a polyalkylene glycol, a polyol ester, and/or a polyvinyl ether (see generally col. 5 & 6). The content of the lubricating oil is preferably from 10 to 100 parts by mass based on the working medium (100 parts by mass), meaning there are 10 to 100 parts of the lubricating oil for every 100 parts by mass of the working medium (HFO-1132(E), Id.) which amounts to a composition comprising 50 to about 91 mass% HFO-1132(E) and about 9 to 50 mass% lubricating oil and clearly meets the refrigerant content of 40 mass% or more based on the entire composition as claimed.
Fukushima fails to teach 1) the contact portion in the compressor that comes into contact with the refrigerant comprises an engineering plastic and 2) the refrigeration oil has a contact angle of 0.1° to 90° with a substrate comprising the engineering plastic.
However, Fukushima et al. similarly teaches a composition for a heat cycle system and heat cycle system employing the composition similarly containing a working fluid and a refrigerant oil where the refrigerant oil has a breakdown voltage of at least 25 kV (abstract). Fukushima et al. has a very thorough disclosure of potential refrigerant oils (col. 12 line 6 to col. 27 line 13). Therein, the refrigerant oil may comprise a polyalkylene glycol (col. 24 line 63+), a polyol ester (col. 14 line 27+), and/or a polyvinyl ether. Fukushima et al. further teach the refrigerant oil has a breakdown voltage of at least 25 kV so sufficient insulation is maintained even in a heat cycle system in which an electromagnet for driving and the refrigerant oil are brought into direct contact with each other and the heat cycle system will be stably operated (col. 12 lines 11-24). Note the exemplary Unister-, Ze-GLES-, Daphne Hermetic Oil-, and Suniso-branded refrigerant oils disclosed in the reference that have very high breakdown voltages above 25 kV (bridging col. 36 and 37 & Table 3).
Fukushima et al. also teaches selection of a contact portion material, such as a slide member in the cycle’s compression mechanism/compressor, to comprise an engineering plastic for the heat cycle system to have acid resistance and be stable operated in the event of a working fluid compound containing a carbon-carbon double bond (i.e., a hydrofluoroolefin or HFO refrigerant) deteriorates and generates an acid (col. 32 line 44 to col. 33 line 15). Fukushima et al. teach and list polyamide resin, polyphenylene sulfide resin, polyacetal resin and fluororesin as suitable engineering plastics (col. 33 lines 16-18). Additionally, polybutylene terephthalate is a preferred material for an insulating film of an electric motor (col. 33 lines 38-59, which is presumed to be a part of the compressor as a compressor is the unit op in the heat cycle apparatus, e.g., compressor-condenser-expansion mechanism-evaporator, that routinely has a motor to drive the compression).
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 an engineering plastic as a compressor contact portion with a refrigerant/working fluid as taught by Fukushima et al. to the compressor/heat cycle apparatus of Fukushima in order to impart acid resistance to the compressor/heat cycle apparatus with a reasonable expectation of success. It would have also been obvious to a person of ordinary skill in the art to provide a high breakdown voltage refrigerant oil as taught by Fukushima et al. as the refrigeration/lubricating oil of Fukushima in order to main electrical insulation and stable operation within a heat cycle system with a reasonable expectation of success.
While the references fail to indicate the refrigeration oil has a contact angle between 0.1° to 90° with an engineering plastic-based substrate, the claimed contact angle would flow naturally from the combined teachings of the references, particularly the teachings of the Fukushima et al. secondary reference because Fukushima et al. teach provision of the same genera/species of refrigeration oils with the same high breakdown voltage (polyalkylene glycol, polyol ester, and/or polyvinyl ether having a breakdown voltage of at least 25 kV) as that claimed in an apparatus comprising the same species of engineering plastics in a compressor/compression mechanism as that claimed (e.g., polyamide resin, polyphenylene sulfide resin, polyacetal resin, fluororesin, and polybutylene terephthalate). In fact, refrigerant oils of the tradenames “UNISTER RH-208BRS”, “UNISTER RH-481R”, “UNISTER RHR-32”, “UNISTER RHR-64”, “UNISTER RHR-200”, “UNISTER RHR-609BR”, “Ze-GLES RB-68”, and “Daphne Hermetic Oil FVC68D” are exemplary refrigerant oils in Fukushima (Id.), which Applicant has disclosed in the present application’s specification have substrate contact angles of 25°, 30°, 34°, 28°, 38°, 40°, 25°, and 31°, respectively, (see p.26 of the original specification). "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).
As to claims 14 and 15, the combination of references meets the refrigeration oil having a breakdown voltage of 10 kV or more and polyalkylene glycol, polyol ester, and/or polyvinyl ether structure (Id.).
As to claim 16, this claim merely recites an intended use of the refrigerant+refrigeration oil-based composition that it is for use as a refrigeration oil-containing working fluid that is extended little patentable weight. However, the references as cited indeed encompass the composition’s intended use as a working fluid in the apparatus (Id.).
As to claim 17, the Fukushima primary reference teaches the heat cycle system is at least one of the various members/apparatus structures as claimed (see col. 1 lines 13-19 and col. 22 lines 53-60). If this were not enough, the Fukushima et al. secondary reference teaches such heat cycle apparatus may obviously be configured as such (col. 4 lines 3-6).
As to independent claim 18, Fukushima teaches working medium for a heat cycle comprising 1,2-difluoroethylene and heat cycle system thereof (abstract). Fukushima teaches the 1,2-difluoroethylene may comprise the trans-1,2-difluoroethylene (HFO-1132(E)) isomer alone and the HFO-1132(E) may be 100 mass% of the working medium (col. 3 lines 20-29). A working medium of 100 mass%, i.e., only, HFO-1132(E) is also exemplified that contain example working medium of 100 mass% HFO-1132(E) (see Tables 1, 3, 6, 7, 8, 11, & 12). Fukushima further teaches a lubricating oil may be provided in the working medium-containing composition (col. 4 line 60+), which reads on the presence of a refrigeration oil. The lubricating oil may comprise any of a polyoxyalkylene glycol, i.e., a polyalkylene glycol, a polyol ester, and/or a polyvinyl ether (see generally col. 5 & 6). The content of the lubricating oil is preferably from 10 to 100 parts by mass based on the working medium (100 parts by mass), meaning there are 10 to 100 parts of the lubricating oil for every 100 parts by mass of the working medium (HFO-1132(E), Id.) which amounts to a composition comprising 50 to about 91 mass% HFO-1132(E) and about 9 to 50 mass% lubricating oil and clearly meets the refrigerant content of 40 mass% or more based on the entire composition as claimed.
Fukushima fails to teach the refrigeration oil has (i.e., is capable of) a contact angle of 0.1° to 90° with a substrate comprising an engineering plastic.
However, Fukushima et al. similarly teaches a composition for a heat cycle system and heat cycle system employing the composition similarly containing a working fluid and a refrigerant oil where the refrigerant oil has a breakdown voltage of at least 25 kV (abstract). Fukushima et al. has a very thorough disclosure of potential refrigerant oils (col. 12 line 6 to col. 27 line 13). Therein, the refrigerant oil may comprise a polyalkylene glycol (col. 24 line 63+), a polyol ester (col. 14 line 27+), and/or a polyvinyl ether. Fukushima et al. further teach the refrigerant oil has a breakdown voltage of at least 25 kV so sufficient insulation is maintained even in a heat cycle system in which an electromagnet for driving and the refrigerant oil are brought into direct contact with each other and the heat cycle system will be stably operated (col. 12 lines 11-24). Note the exemplary Unister-, Ze-GLES-, Daphne Hermetic Oil-, and Suniso-branded refrigerant oils disclosed in the reference that have very high breakdown voltages above 25 kV (bridging col. 36 and 37 & Table 3).
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 high breakdown voltage refrigerant oil as taught by Fukushima et al. as the refrigeration/lubricating oil of Fukushima in order to main electrical insulation and stable operation within a heat cycle system with a reasonable expectation of success.
While the references fail to indicate the refrigeration oil has a contact angle between 0.1° to 90° with an engineering plastic-based substrate or that the combination of the refrigerant oil and trans-1,2-difluoroethylene (HFO-1132(E)) refrigerant suppresses a disproportionation reaction of the refrigerant, the claimed contact angle would flow naturally from the combined teachings of the reference, because the Fukushima et al. secondary reference teach provision of the same genera/species of refrigeration oils with the same high breakdown voltage (polyalkylene glycol, polyol ester, and/or polyvinyl ether having a breakdown voltage of at least 25 kV) as that claimed. In fact, refrigerant oils of the tradenames “UNISTER RH-208BRS”, “UNISTER RH-481R”, “UNISTER RHR-32”, “UNISTER RHR-64”, “UNISTER RHR-200”, “UNISTER RHR-609BR”, “Ze-GLES RB-68”, and “Daphne Hermetic Oil FVC68D” are exemplary refrigerant oils in Fukushima (Id.), which Applicant has disclosed in the present application’s specification have engineering plastic substrate contact angles of 25°, 30°, 34°, 28°, 38°, 40°, 25°, and 31°, respectively, (see p.26 of the original specification). "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).
The claimed method for suppressing a disproportionation reaction of a trans-1,2-difluoroethylene (HFO-1132(E)) refrigerant using/providing the refrigerant oil would flow naturally from providing Fukushima et al.’s high breakdown voltage (and naturally flowing certain engineering plastic contact angle(s)) refrigerant oil to Fukushima’s trans-1,2-difluoroethylene (HFO-1132(E)) working fluid composition and heat cycle system thereof. Note that the intended purpose and result of both references is to obtain an operating heat cycle apparatus containing both the working fluid/refrigerant and lubricating/refrigerating oil. A prior art device (i.e., the heat cycle system of Fukushima containing a HFO-1132(E) refrigerant modified with Fukushima et al.’s particular lubricating refrigerating oil) meets a claimed process (i.e., the instantly claimed suppressing a disproportionation reaction of the HFO-1132(E) refrigerant) if the device carries out the process during normal operation (MPEP 2112.02).
Any remaining limitations are intended use limitations extended little patentable weight or are unrelated (or non-operable) steps having no nexus to the recited “using a refrigeration oil” step/method.
As to claims 19 and 20, the combination of references meets the refrigeration oil having a breakdown voltage of 10 kV or more and polyalkylene glycol, polyol ester, and/or polyvinyl ether structure (Id.).
As to independent claim 21, Fukushima teaches working medium for a heat cycle comprising 1,2-difluoroethylene and heat cycle system thereof (abstract). Fukushima teaches the 1,2-difluoroethylene may comprise the trans-1,2-difluoroethylene (HFO-1132(E)) isomer alone and the HFO-1132(E) may be 100 mass% of the working medium (col. 3 lines 20-29). A working medium of 100 mass%, i.e., only, HFO-1132(E) is also exemplified that contain example working medium of 100 mass% HFO-1132(E) (see Tables 1, 3, 6, 7, 8, 11, & 12). Fukushima further teaches a lubricating oil may be provided in the working medium-containing composition (col. 4 line 60+), which reads on the presence of a refrigeration oil. The lubricating oil may comprise any of a polyoxyalkylene glycol, i.e., a polyalkylene glycol, a polyol ester, and/or a polyvinyl ether (see generally col. 5 & 6). The content of the lubricating oil is preferably from 10 to 100 parts by mass based on the working medium (100 parts by mass), meaning there are 10 to 100 parts of the lubricating oil for every 100 parts by mass of the working medium (HFO-1132(E), Id.) which amounts to a composition comprising 50 to about 91 mass% HFO-1132(E) and about 9 to 50 mass% lubricating oil and clearly meets the refrigerant content of 40 mass% or more based on the entire composition as claimed.
Fukushima fails to teach the refrigeration oil has (i.e., is capable of) a contact angle of 0.1° to 90° with a substrate comprising an engineering plastic.
However, Fukushima et al. similarly teaches a composition for a heat cycle system and heat cycle system employing the composition similarly containing a working fluid and a refrigerant oil where the refrigerant oil has a breakdown voltage of at least 25 kV (abstract). Fukushima et al. has a very thorough disclosure of potential refrigerant oils (col. 12 line 6 to col. 27 line 13). Therein, the refrigerant oil may comprise a polyalkylene glycol (col. 24 line 63+), a polyol ester (col. 14 line 27+), and/or a polyvinyl ether. Fukushima et al. further teach the refrigerant oil has a breakdown voltage of at least 25 kV so sufficient insulation is maintained even in a heat cycle system in which an electromagnet for driving and the refrigerant oil are brought into direct contact with each other and the heat cycle system will be stably operated (col. 12 lines 11-24). Note the exemplary Unister-, Ze-GLES-, Daphne Hermetic Oil-, and Suniso-branded refrigerant oils disclosed in the reference that have very high breakdown voltages above 25 kV (bridging col. 36 and 37 & Table 3).
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 high breakdown voltage refrigerant oil as taught by Fukushima et al. as the refrigeration/lubricating oil of Fukushima in order to main electrical insulation and stable operation within a heat cycle system with a reasonable expectation of success.
While the references fail to indicate the refrigeration oil has a contact angle between 0.1° to 90° with an engineering plastic-based substrate, the claimed contact angle would flow naturally from the combined teachings of the reference, because the Fukushima et al. secondary reference teach provision of the same genera/species of refrigeration oils with the same high breakdown voltage (polyalkylene glycol, polyol ester, and/or polyvinyl ether having a breakdown voltage of at least 25 kV) as that claimed. In fact, refrigerant oils of the tradenames “UNISTER RH-208BRS”, “UNISTER RH-481R”, “UNISTER RHR-32”, “UNISTER RHR-64”, “UNISTER RHR-200”, “UNISTER RHR-609BR”, “Ze-GLES RB-68”, and “Daphne Hermetic Oil FVC68D” are exemplary refrigerant oils in Fukushima (Id.), which Applicant has disclosed in the present application’s specification have engineering plastic substrate contact angles of 25°, 30°, 34°, 28°, 38°, 40°, 25°, and 31°, respectively, (see p.26 of the original specification). "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).
Any remaining limitations are intended use limitations extended little patentable weight or are unrelated (or non-operable) steps having no nexus to the recited composition of matter “comprising a refrigerant and a refrigeration oil”.
As to claims 22 and 23, the combination of references meets the refrigeration oil having a breakdown voltage of 10 kV or more and polyalkylene glycol, polyol ester, and/or polyvinyl ether structure (Id.).
As to claims 24 and 25, these claims merely recite intended uses of the refrigerant+refrigeration oil-based composition that it is for use as a refrigeration oil-containing working fluid and/or for use in a heat cycle system that are extended little patentable weight. However, the references as cited indeed encompass the composition’s intended uses as a working fluid and for use in a heat cycle system (Id.).
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./
May 5, 2026