DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112(2nd)
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 and 13-17 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 that the composition comprises HFO-1132 and HFC-32 and further at least one of HFO-1225ye, HFO-1243zf and HFO-1234ze is rendered unclear by the following recitation of a mass ratio of HFO-1132 to that of HFO-1225ye/HFO-1243zf/HFO-1234ze of 100/0. As such it is not clear if the presence of at least one of HFO-1225ye, HFO-1243zf and HFO-1234ze is in fact required by the instant claim (see the 103 rejection below) or is instead an optional component whose presence is not required (see the 102 rejection below). This includes claims 13-17 as they depend from claim1.
Regarding claim 14, the recitation that HFO-1225ye be present is rendered indefinite by the following recitation of a mass ratio of HFO-1132 to that of HFO-1225ye of 100/0. As such it is not clear if the presence of HFO-1225ye is in fact required by the instant claim (see the 103 rejection below) or is instead an optional component whose presence is not required (see the 102 rejection below).
Regarding claim 15, the recitation that HFO-1243zf be present is rendered indefinite by the following recitation of a mass ratio of HFO-1132 to that of HFO-1243zf of 100/0. As such it is not clear if the presence of HFO-1243zf is in fact required by the instant claim (see the 103 rejection below) or is instead an optional component whose presence is not required (see the 102 rejection below).
Regarding claim 16, the recitation that HFO-1234ze be present is rendered indefinite by the following recitation of a mass ratio of HFO-1132 to that of HFO-1234ze of 100/0. As such it is not clear if the presence of HFO-1234ze is in fact required by the instant claim (see the 103 rejection below) or is instead an optional component whose presence is not required (see the 102 rejection below).
Claim Rejections - 35 USC § 102(e)
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claims 1 and 13-17 are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Minor et al. (US PGPub 2011/0253927).
Minor teaches heat transfer fluids comprising 1,2-difluoroethylene (E-HFO-1132a)([0042])(instant claim 17) in combination with a hydrocarbon ([0043]) and/or a further fluorinated compound ([0044]). Minor teaches the hydrocarbon and/or further fluorinated compound(s) used in combination with the E-HFO-1132a wherein the components are present in ranges to obtain a composition that has a desired azeotrope-like, azeotropic, or non-azeotropic properties ([0047]-[0052]; Table 1). Minor teaches the E-HFO-1132a is present at about 1 to about 99 wt%, more preferably about 50 to about 98wt% of the composition ([0047]), and exemplifies E-HFO-1132a/’other’ combinations of 1-99/1-99 (wt%)(Table 1) and of 80/20, 70/30, 60/40, etc. (wt%)(Table 3). Minor teaches use of the heat transfer fluids in refrigeration, air-conditioning and heat pump systems ([0134])(instant claim 13).
Minor further teaches the hydrocarbon preferably includes difluoromethane (HFC-32) ([0044]-[0045]; Table 1), wherein the components are present in ranges to obtain a composition that has a desired azeotrope-like, azeotropic, or non-azeotropic properties ([0047]-[0052]). Minor teaches the E-HFO-1132a is present at about 1 to about 99 wt%, more preferably about 50 to about 98wt% of the composition ([0047]), and exemplifies E-HFO-1132a/HFC-32 combinations of 1-77/23-99 (wt%)(Table 1) and of 60/40, etc. (wt%)(Table 3)(anticipates instant claims 1 and14-16 where the ratio of HFO-1132 to HFO-1225ye/HFO-1243zf/HFO-1234ze is 100/0).
Claim Rejections - 35 USC § 103(a)
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 and 13-17 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Minor et al. (US PGPub 2011/0253927).
Minor teaches the compositions as set forth above, and incorporated here by reference in this alternative rejection. As noted Minor teaches E-HFO-1132a used in combination with ‘other’ fluorinated compounds, and mixtures thereof. Minor teaches the preferred and suitable ‘other’ fluorinated compounds include difluoromethane (HFC-32), 1,1,1,2,3-pentafluoropropene (= 1,2,3,3,3-pentafluoropropene; HFO-1225ye), 1,3,3,3-tetrafluropropene (HFO-1234ze) and 3,3,3-trifluoropropene (HFO-1243zf) ([0044]-[0045]; Table 1; Table 3).
Minor further teaches the fluorinated compounds includes mixtures of fluorinated compounds, preferably including difluoromethane (HFC-32) and compounds of 1,1,1,2,3-pentafluoropropene (= 1,2,3,3,3-pentafluoropropene; HFO-1225ye)(claim 14), 1,3,3,3-tetrafluropropene (HFO-1234ze)(claim 16) and 3,3,3-trifluoropropene (HFO-1243zf)(claim 15) ([0044]-[0045]; Table 1). Minor teaches the components are present in ranges to obtain a composition that has a desired azeotrope-like, azeotropic, or non-azeotropic properties ([0047]-[0052]). Minor teaches the E-HFO-1132a is present at about 1 to about 99 wt%, more preferably about 50 to about 98wt% of the composition ([0047]), and exemplifies E-HFO-1132a/’other’ combinations of 1-77/23-99 (wt%)(Table 1) and of 80/20, 70/30, 60/40, etc. (wt%)(Table 3). One of ordinary skill in the art would have found it obvious to select the preferred difluoromethane (HFC-32) in combination with a further fluorinated compound as recited by Minor and arrive at the instant invention with a reasonable expectation of success. Motivation stemming from the express teaching of Minor that the combination of E-HFO-1132a with mixtures of the noted additional fluorinated compounds of difluoromethane (HFC-32), 1,1,1,2,3-pentafluoropropene (= 1,2,3,3,3-pentafluoropropene; HFO-1225ye), 1,3,3,3-tetrafluropropene (HFO-1234ze) and 3,3,3-trifluoropropene (HFO-1243zf), wherein such mixtures are suitable and preferred.
Furthermore, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicant’s claims patentable in the absence of unexpected results (see: In re Aller, 105 USPQ 233; and MPEP 2144.05). At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the relative amounts of the further fluorinated compounds and would have been motivated to do so in order to obtain the desired heat transfer properties and/or the desired azeotropic/non-azeotropic state ([0046]; [0048]; [0049]-[0052]). A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good (see In re Boesch and Slaney, 205 USPQ 215).
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