DETAILED ACTION
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 .
Claim Objections
Claim 1 is objected to because of the following informalities: in line 6 the comma after hydrogen fluoride should be a semicolon.
Claim 2 is objected to because of the following informalities: in line 1 “comprises HFC-143” should instead be --comprises the HFC-143--. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: i) in line 3 an –and-- is missing prior to the proviso (1) recitation; ii) in line 6 the comma after hydrogen fluoride should be a semicolon followed by an –and-- (i.e. --hydrogen fluoride; and--); iii) in line 17, it appears a comma is missing between HCC-120 and tetrachloromethane as they are not the same compound; iv) in line 20, “carbon dioxide, and HFO-1131” should instead be –carbon dioxide; and the HCFO-1131--. Furthermore with respect to the ‘additional compound’ recitation: the claim uses inconsistent terminology where some compounds are identified by known refrigerant abbreviations/identifiers, some compounds are identified by written out chemical names, and some compounds are both, and such may result in issues of clarity and/or general confusion. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: in line 2 “comprising at least one compound” should instead be –comprising the (2) at least one compound—or similar (specifically the claim must be amended to directly link the recitation of dependent claim 5 to the optional proviso (2) of independent claim 1 as no longer being optional in claim 5). Appropriate correction is required.
Claim 9 is objected to because of the following informalities: in line 1 “comprising at least one compound” should instead be –comprising the (2) at least one compound—or similar (specifically the claim must be amended to directly link the recitation of dependent claim 9 to the optional proviso (2) of independent claim 4 as no longer being optional in claim 9). Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 1-12 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.
Regarding claim 1, the recitation of “tetrafluoroethane (HFC-14)” is indefinite as ‘tetrafluoroethane’ is generally known by the refrigerant designations of HFC-134 (for the 1,1,2,2,-tetrafluoroethane) or HFC-134a (for the 1,1,1,2-tetrafluoroethane), whereas ‘HFC-14’ is not a commonly known term nor is such a known term for tetrafluoroethane. It is not clear if by ‘HFC-14’ the claim is reciting a typographical error where a different number was intended with respect to a tetrafluoroethane compound or if the claim intended to recite known terms R-14 or PFC-14 or FC-14 with respect to a tetrafluoromethane compound (see “FC-14 (tetrafluoromethane, CF3)” at para [0034]). (It is noted that where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999).). This includes claims 2-3, 5 and 6-8 as they depend from claim 1.
Regarding claim 4, the recitation of “HFC-14” is indefinite as the claim does not specify the meaning, the term is not a generally known refrigerant and the instant specification recites “HFC-14” only within the context of “tetrafluoroethane (HFC-14)” (paras [0005], [0012], and [0062]) which is not a commonly known refrigerant name+designation combination. It is not clear if by ‘HFC-14’ the claim intended to refer to “FC-14 (tetrafluoromethane, CF3)” (para [0034]) or to “tetrafluoroethane (HFC-14)” (paras [0005], [0012], and [0062])(see above claim 1 rejection to this term). This includes claims 9-12 as they depend from claim 4.
Claim Rejections - 35 USC § 101/112(b)
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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.
A) Claim 6 is rejected under 35 U.S.C. 112(b) because the claim provides for the use of a composition as a refrigerant, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim 6 is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
B) Claim 10 is rejected under 35 U.S.C. 112(b) because the claim provides for the use of a composition as a refrigerant, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim 10 is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
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 and 5-8 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 6-8, 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 and 9-12 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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196
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 10-12, 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).
Claims 1-3 and 5-7 (rejection set A) and Claims 4 and 9-11 (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 claims 6-7, 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 claims 10-11, 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]).
Correspondence
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767