DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This Office Action is responsive to the amendment filed on 07/03/2026.
3. Claims 1-20 are pending. Claims 16, 18-20 are under examination on the merits. Claims 1-2, 12-17 are amended. Claims 18-20 are newly added. Claims 1-15, 17 are withdrawn to a non-elected invention from further consideration.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant’s arguments with respect to claims 16, 18-20 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Claim Rejections - 35 USC § 102/103
6. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
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.
7. Claims 16, 18-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Okamoto et al. (US Pub. No. 2016/0347980 A1 hereinafter “’’980”).
Regarding claim 16: ‘980 discloses a method for suppressing a disproportionation reaction of a refrigerant (Page 2, [0022]), the method comprising mixing a refrigerant that undergoes disproportionation and a refrigerant that does not undergo disproportionation as the refrigerant (Page 11, [0170]), Table 2; Page 12 to Page 14, Tables 3 to 14, Examples 3-14), wherein the refrigerant that undergoes disproportionation comprises at least one component selected from the group consisting of (HFO-1123), and CF3I (Page 12, [0174], Example 3) at an ignition energy of 30 J (Page 7, [0093]), by adjusting or controlling temperature, pressure, and/or refrigerant formulation so as to suppress a disproportionation reaction (Page 2, [0022]; Page 14, [0186]). ‘719 is silent with regard to the refrigerant satisfies the range represented by the formula:
y < -1.5761x + 3.9516,
wherein x represents a common logarithm (log) of a concentration (mol/m3) of the
refrigerant that undergoes disproportionation in a gas phase of the composition, and
y represents a common logarithm (log) of thermal diffusivity (mm2/s) of the entire
refrigerant in the composition.
However, the recited claim is a composition (product), and the thermal diffusivity of a composition changes depending on use conditions (i.e., temperature, pressure and refrigerant formulation, and ignition energy) therefor. Thus, the recited claim 1 involves a composition which can satisfy the inequality depending on use conditions. From the disclosures in the examples of the present application and most of the compositions shown in the examples of ‘980 are ones which can be made to satisfy the inequality by regulating the temperature, pressure, etc. during use. As such, it is impossible to distinguish the composition described in claim 1 of the present application from the composition described by ‘980 as a product. Furthermore, ‘980 indicates that HFC (Page 4, [0040]; Page 4, [0048]), HFO (Page 5, [0049]; Page 5, [0054]), hydrocarbons (Page 5, [0063]), etc. are used as a refrigerant, and that polyalkylene glycols, polyol esters, poly(vinyl ether)s, etc. are used as a refrigerating machine oil (Page 7, [0097]), that examples of the heat cycle systems include freezing/refrigerating apparatuses and air conditioners, and that to inhibit the self-decomposition of unsaturated fluorinated hydrocarbon compounds is a problem to be solved (Page 14, [0186]).
Since, ‘980 discloses the identical or substantially identical mixture of a refrigerant that undergoes disproportionation and a refrigerant that does not undergo disproportionation as the refrigerant as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. thermal diffusivity, would inherently/implicitly be achieved by ‘980 (i.e., the refrigerant satisfies the range represented by the formula: y < -1.5761x + 3.9516, wherein x represents a common logarithm (log) of a concentration (mol/m3) of the refrigerant that undergoes disproportionation in a gas phase of the composition, and y represents a common logarithm (log) of thermal diffusivity (mm2/s) of the entire refrigerant in the composition). If there is any difference between the product of ‘980 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5).
Regarding claim 18: ‘980 discloses the method, wherein the refrigerant that does not undergo disproportionation comprises at least one component selected from the group consisting of 2,3,3,3-tetrafluoropropene (HFO- 1234yf), 3,3,3-trifluoropropene (HFO-1243zf) (Page 5, [0050]), trans-1,3,3,3-tetrafluoropropene (HFO-1234ze(E)(Page 5, [0051]), and trifluoroiodomethane (CF₃I) (Page 12, [0174], Example 3).
Regarding claim 19: ‘980 discloses the method, which is for use as a refrigeration oil-containing working fluid, the composition further comprising a refrigeration oil (Page 7, [0097]).
Regarding claim 20: ‘980 discloses the method, wherein the refrigeration oil contains at least one polymer selected from the group consisting of polyalkylene glycol (PAG) (Page 8, [0111]), polyol ester (POE) (Page 7, [0100]), polyvinyl ether (PVE) (page 8, [0170]), silicone oil, and fluorine-containing oil.
Response to Arguments
8. Applicant’s arguments with respect to claims 16, 18-20 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
9. 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 extension fee 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 date of this final action.
Examiner Information
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
8/10/2026
bijan.ahvazi@uspto.gov
Prosecution Insights