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 application is a CON of App. No. PCT/JP2021/037080, filed on 10/07/2021, which is entitled to and claims the benefit of priority of JP Patent App. Nos. 2020-171237, filed 10/09/2020, and 2020-217947, filed 12/25/2020, respectively. The preliminary amendment filed on 04/07/2023 is entered and acknowledged by the Examiner.
3. Applicant’s election of Group VII, claim16 in the reply filed on 01/09/2026 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 § 818.03(a)).
4. Claims 1-17 are pending. Claim 16 is under examination on the merits. Claims 1-15, 17 are withdrawn to a non-elected invention from further consideration.
Information Disclosure Statement
5. The information disclosure statements submitted on 08/04/2023, 10/07/2024, and 02/05/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statements.
Drawings
6. The drawings are received on 04/07/2023. These drawings are acceptable.
Priority
7. Receipt is acknowledged of papers submitted on 05/24/2023 under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Rejections - 35 USC § 102/103
8. 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.
9. Claim 16 is 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 Fukushima et al. (US Pub. No. 2016/0355719 A1 hereinafter “’719”).
Regarding claim 1: ‘719 discloses a method for suppressing a disproportionation reaction of a refrigerant, the method comprising mixing a refrigerant that undergoes disproportionation and a refrigerant that does not undergo disproportionation as the refrigerant (Page 3, [0026]), wherein the refrigerant that undergoes disproportionation comprises working fluids (Page 19, [0276], Table 2), and refrigerant oils as shown below (Page 20, [0277]-[0282]). ‘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.
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However, the recited claim is a composition (product), and the thermal diffusivity of a composition changes depending on use conditions (temperature, pressure) 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 ‘719 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 ‘719 as a product. Furthermore, ‘719 indicates that HFC, HFO, hydrocarbons, etc. are used as a refrigerant, and that polyalkylene glycols, polyol esters, poly(vinyl ether)s, etc. are used as a refrigerating machine oil, 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 3, [0026]).
Since, ‘719 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 ‘719 (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 ‘719 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).
Prior-Art Cited But Not Applied
10. Any prior-art reference which is cited on FORM PTO-892 but not applied is cited of interest to show the general state of the prior-art at the time of the application’s invention. Please see Fukushima et al. (US Pub. No. 2017/0058171 A1), and Itano et al. (US Pub. No. 2021/0246348 A1).
Examiner Information
11. 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
02/10/2026
bijan.ahvazi@uspto.gov