DETAILED ACTION
Applicant’s reply, filed 17 April 2026 in response to the non-final Office action mailed 17 December 2025, has been fully considered. As per Applicant’s filed claim amendments claims 1-5, 7-9 and 11-13 are pending, wherein: claims 1-2, 4-5 and 9 have been amended, claim 3 is as originally filed, claims 7-8 and 11-12 are as previously presented, claims 6 and 10 have been cancelled, and claim 13 is new. The amendment to the specification filed 17 April 2026 has been fully considered and is found acceptable.
Claim Objections
Claim 1 is objected to because of the following informalities: in line 14 an improperly amended typo now appears that must be corrected “1,2,2-tricF(hloro-1,1-difluoroethane (HCFC- 122)”.
Claim 13 is objected to because of the following informalities: in line 1 “and the additional compound” should instead be –and the additional compound (1)-- or –and the (1) additional compound--, or similar (specifically the claim must be amended to directly link the recitation of dependent claim 13 to the optional proviso (1) of independent claim 4 as no longer being optional in claim 13). Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
Claims 1-3, 5 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takahashi (WO 2020/184634 A1; using US PGPub 2021/0403779 for English language citations).
Regarding claims 1 and 5, Takahashi teaches compositions comprising 1,1,2-trifluoroethane (HFC-143) and at least one further compound (abstract; [0001]-[0006]). Takahashi teaches the further compound is present from more than 0 mass% to 10 mass% or less with HFC-143 as remainder ([0016]).
Takahashi further teaches the inclusion of optional components including water ([0030]; [0032]) (instant claim 1, (1) and/or (2), where (2) is selected and (1) is optional; instant claim 5).
Takahashi further teaches the inclusion of optional components including tracers ([0030]; [0035]), where tracers include tetrafluoromethane (FC-14), etc. ([0037]) present from about 10 to 1000 ppm ([0038]).
Regarding claim 2, Takahashi teaches the composition as set forth in claim 1 above and, as noted, teaches the amount of HFC-143 is the remainder of the combination of HFC-143 and >0 to ≤30 mass% of the further compound (i.e. ≥30 to < 100 mass% HFC-143; see also examples).
Regarding claim 3, Takahashi teaches the composition as set forth in claim 1 above and teaches the further optional inclusion of a second additional compound including 2-chloro-1,1,1-trifluoroethane (HCFC-133a) ([0017]). Also, as noted, Takahashi teaches the inclusion of optional tracer compounds including 1,1,2,2-tetrafluoroethane (HFC-134) ([0037]) (also readable over instant second additional compound).
Regarding claims 7-8, Takahashi teaches the composition as set forth in claim 1 above and further teaches the employing the compositions as heat transfer medium compositions, working fluids, and refrigerants ([0027]-[0029]; [0083]) and teaches working fluids for refrigeration machines ([0029]). Takahashi further teaches subjecting to a refrigeration cycle (Example 2; [0095])(instant method of circulating).
Claims 4, 9 and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fukushima et al. (WO 2018/169039 A1; using US PGPub 2020/0010777 for English language citations).
Regarding claims 4 and 9, Fukushima teaches compositions for heat cycle systems comprising at least one of a HCFO and CFO (abstract), including as working fluids and mixed refrigerants ([0016]-[0020]). Fukushima teaches the working fluid comprises from 20 to 95 mass% ([0061]; see also [0067]) of at least one compound selected from a HCFO and a CFO which are represented by formula (a):
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614
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, wherein Ra is a fluorine, chlorine or hydrogen, Rb is (CRa2)nY where Y is CF2, n is 0 or 1, and at least one Ra is a chlorine atom ([0052]-[0053]). Fukushima taches 1-chloro-2-fluoroethylene (HCFO-1131) is a representative structure (a) HCFO ([0056])(instant 30 mass% or more ‘HFO-1131’).
Fukushima further teaches inclusion of additional compounds in the working fluid for the purpose of adjusting the temperature glide of the working fluid ([0070]; [0074]), selected from HFCs and CFOs which act to improve cycle performance (capacity), maintain GWP, and/or maintain temperature glide ([0075]; [0081]-[0082]).
Fukushima teaches the optional inclusion of 1 to 90 mass% HFC ([0080]) selected from compounds including trifluoroethane, tetrafluoroethane (instant ‘HFC-14’ as recited), etc. ([0077]) preferably including 1,1,2,2-tetrafluoroethane (HFC-134) and 1,1,1,2-tetrafluoroethane (HFC-134a) ([0078]) (instant claim 4: (1) and/or (2), where (1) is selected and (2) is optional).
Fukushima teaches the optional inclusion of 1 to 90 mass% HFO ([0085]) selected from compounds including preferred 1,1-difluoroethylene (HFO-1132a) and 1,2-difluoroethylene (HFO-1132), etc. ([0083]) (instant claim 4: (1) and/or (2), where (1) is selected and (2) is optional).
Fukushima further teaches the optional inclusion of other components including carbon dioxide and hydrocarbons ([0086]) (further reading over instant (1)).
Fukushima further teaches that the concentration of moisture (i.e. water) present due to the moisture absorbing properties and/or hydrolysis of the refrigerant fluid must be controlled ([0199])(i.e. water is/can be present in some amount, instant (1) and/or (2), where (1) and (2) are selected (instant claim 4 ((1) and/or (2)) and instant claim 9 ((1) and (2))).
Regarding claims 11-12, Fukushima teaches the compositions for heat cycle systems as set forth in claim 4 above and, as noted, Fukushima teaches the compositions as working fluids and refrigerant compositions ([0016]-[0020]). Fukushima further teaches heat cycle systems employing the compositions including refrigeration equipment, air-conditioner apparatus, power generation systems, etc. ([0170]-[0181]; [0234]) and teaches cycles thereof ([0181]-[0187]; Fig 1) (instant method of circulating).
Regarding claim 13, Fukushima teaches the compositions as set forth in claim 4 above and, as noted, teaches 20 to 95 mass% of compound (a)(= HCFO-1131), teaches 1 to 90 mass% HFC (including HFC-134 and HFC-134a, etc.), and teaches of 1 to 90 mass% HFO (including HFO-1132a and HFO-1132, etc.), and teaches carbon dioxide (see above)(instant 99.5 mass% or more HCFO-1131+’additional’).
Claims 1-3, 5 and 7 (rejection set A) and Claims 4, 9 and 11 (rejection set B) are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takahashi (WO 2020/184635 A1; using US PGPub 2021/0403778 for English language citations).
Rejection set A):
Regarding claims 1 and 5, Takahashi teaches compositions comprising 1,1,2-trifluoroethane (HFC-143) and at least one further compound (abstract; [0001]-[0006]). Takahashi teaches the further compound is present from more than 0 mass% to 30 mass% or less with HFC-143 as remainder ([0018]).
Takahashi further teaches the inclusion of optional components including water ([0024]; [0026]) (instant claim 1, (1) and/or (2), where (2) is selected and (1) is optional; instant claim 5).
Takahashi further teaches the inclusion of optional components including tracers ([0024]; [0031]), where tracers include tetrafluoromethane (FC-14), etc. ([0031]) present from about 10 to 1000 ppm ([0032]).
Regarding claim 2, Takahashi teaches the composition as set forth in claim 1 above and, as noted, teaches the amount of HFC-143 is the remainder of the combination of HFC-143 and >0 to ≤30 mass% of the further compound (i.e. ≥30 to < 100 mass% HFC-143; see also examples).
Regarding claim 3, Takahashi teaches the composition as set forth in claim 1 above and, as noted, teaches the inclusion of optional tracer compounds including 1,1,2,2-tetrafluoroethane (HFC-134) ([0031]) (instant second additional compound).
Regarding claim 7, Takahashi teaches the composition as set forth in claim 1 above and further teaches the employing the compositions as heat transfer medium compositions, working fluids, and refrigerants ([0022]-[0023]; [0074]) and teaches working fluids for refrigeration machines ([0023]).
Rejection set B):
Regarding claims 4 and 9, Takahashi teaches compositions comprising 1,1,2-trifluoroethane (HFC-143) and at least one further compound including HCFO-1131(E) and HCFO-1131(Z) (abstract; [0001]-[0006])(where both Z and E isomers of HCFO-1131(Z/E) read on instant HCFO-1131). Takahashi teaches the further compound is present from more than 0 mass% to 30 mass% or less with HFC-143 as remainder ([0018])(anticipates endpoint of instant 30 mass% or more ‘HFO-1131’).
Takahashi further teaches the inclusion of optional components including water ([0024]; [0026]) (instant claim 4, (1) and/or (2), where (2) is selected and (1) is optional; instant claim 9).
Takahashi further teaches the inclusion of optional components including tracers ([0024]; [0031]), where tracers include tetrafluoromethane (FC-14), trifluoromethane (HFC-23), 1,1,1-trifluoroethane (HFC-143a), etc. ([0031]) present from about 10 to 1000 ppm ([0032])(instant claim 4, (1) and/or (2), where (1) is selected and (2) is optional and instant claim 4, (1) and/or (2), where (1) and (2)-water are selected).
Regarding claim 11, Takahashi teaches the composition as set forth in claim 4 above and further teaches the employing the compositions as heat transfer medium compositions, working fluids, and refrigerants ([0022]-[0023]; [0074]) and teaches working fluids for refrigeration machines ([0023]).
Response to Arguments/Amendments
The objections of claims 1-2, 4-5 and 9 are withdrawn as a result of Applicant’s filed claim amendments. Note the new objections to claims 1 and 13 as necessitated by said claim amendments.
The 35 U.S.C. 112(b) rejections of claims 1-12 are withdrawn as a result of Applicant’s filed claim amendments.
The 35 U.S.C. 101/112(b) rejections of claims 6 and 10 are withdrawn as a result of Applicant’s cancellation of respective claims.
The 35 U.S.C. 102(a)(1) rejection of claims 1-3 and 5-8 as anticipated by Takahashi (WO 2020/184634 A1; using US PGPub 2021/0403779 for citations) is maintained. Applicant’s arguments (Remarks, page 8-9) have been fully considered but were not found persuasive.
It is noted that the instant claims recite (1) and (2) as optional alternatives (“and/or”) and does not require that (1) be present or that both (1) and (2) be present (claim is met by a teaching of (1)-only, (2)-only, or (1)+(2)). As such, the teaching of Takahashi of HFC-143 and water (see rejection) is itself sufficient to anticipate claim 1 (see rejection for relevant teachings of components also readable over (1) ‘additional compound’ which also serves to render anticipated instant claim 1).
It is further noted that the instant claim contains the open-ended transitional phrase of “comprising” and as such does not exclude additional, unrecited elements or steps (MPEP 211.03). Applicant’s assertion that the instant claim 1 “clearly excludes” any of the components or combinations of Takahashi is incorrect. Further, Applicant’s argument that HFC-41, CH3Cl and HCFC-1113 are components ‘of Takahashi’ not included in instant claim 1 is irrelevant. The noted compounds are taught by Takahashi to be optional tracer compounds ([0034]) not required, nor were the noted compounds relied upon or cited by the Examiner.
The 35 U.S.C. 102(a)(1) rejection of claims 4 and 9-12 as anticipated by Fukushima (WO 2018/169039 A1; using US PGPub 2020/0010777 for citations) is maintained. Applicant’s arguments (Remarks, page 9) have been fully considered but were not found persuasive.
Applicant argues that Fukushima is “based on” HCFC-1224yd because it is taught as a most preferred compound of (a) and is the compound utilized in examples. This is not persuasive. Fukushima clearly also teaches that HCFO-1131 is a suitable exemplary and preferred compound of (a) ([0056]). While HCFO-1131 may not be the most preferred, it is still taught by Fukushima as representative of the invention. It is noted that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments (see MPEP 2123; see Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); see Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005)). Furthermore, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971)).
The 35 U.S.C. 102(a)(1) rejection of claims 1-3 and 5-7 (rejection set A) and claims 4 and 9-11 (rejection set B) as anticipated by Takahashi (WO 2020/184635 A1; using US PGPub 2021/0403778 for citations) is maintained. Applicant’s arguments (Remarks, pages 9-10) have been fully considered but were not found persuasive.
Set A:
As noted above, the instant claims recite (1) and (2) as optional alternatives (“and/or”) and does not require that (1) be present or that both (1) and (2) be present (claim is met by a teaching of (1)-only, (2)-only, or (1)+(2)). As such, the teaching of Takahashi of HFC-143 and water (see rejection) is itself sufficient to anticipate claim 1 (see rejection for relevant teachings of components also readable over (1) ‘additional compound’ which also serves to render anticipated instant claim 1).
It is further noted that the instant claim contains the open-ended transitional phrase of “comprising” and as such does not exclude additional, unrecited elements or steps (MPEP 211.03). Applicant’s assertion that the instant claim 1 “clearly excludes” any of the components or combinations of Takahashi is incorrect. Further, Applicant’s argument that HFC-41, CH3Cl and HCFC-1113 are components ‘of Takahashi’ not included in instant claim 1 is irrelevant. The noted compounds are taught by Takahashi to be optional tracer compounds ([0034]) not required, nor were the noted compounds relied upon or cited by the Examiner.
Set B:
Applicant’s argument that claim 4 does not include HFC-143 is not persuasive. As noted above, the instant claim contains the open-ended transitional phrase of “comprising” and as such does not exclude additional, unrecited elements or steps (MPEP 211.03). HFC-143 is not “excluded”. Takahashi anticipates the instant claims by teaching HCFO-1130 at 30 mass% in combination with (2) water (see rejection). Takahashi further anticipates the instant claims by teaching HCFO-1130 at 30 mass% in combination with other compounds readable over instant (1) ‘additional compounds’ including, FC-14, HFC-23, HFC-143a, etc. (see rejection). Additionally, Takahashi anticipates the instant claims by teaching HCFO-1130 at 30 mass% in combination with compounds readable over instant (1) ‘additional compounds’ including, FC-14, HFC-23, HFC-143a, etc. and (2) water (see rejection).
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767
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