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 .
Response to Election/Restrictions
Applicant's election of Species I (claims 24-26, 33, and 36-39) without traverse in the reply filed 04/22/2026 is acknowledged.
Claims 24-40 are currently pending. Claims 27-32, 34, 35, and 40 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being withdrawn to a non-elected invention, and non-elected species of the invention, there being no allowable generic or linking claims.
Claims 24-26, 33, and 36-39 are currently under examination.
Claim Rejections - 35 USC § 101
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.
Claim 39 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because it is a “use” claim. See MPEP 2173.05(q).
Claim Rejections - 35 USC § 112
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.
Claim 39 is 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.
Claim 39 merely recites a "use" of the claimed composition and is indefinite for not reciting any active, positive steps delimited how this use is actually practiced. See MPEP 2173.05(q).
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
1. Claims 24-26, 33, and 37-39 are rejected under 35 U.S.C. 103 as being unpatentable over Gotou (JP 6773180 B1 (published 10/21/2020), see US 2022/0106242 A1, hereinafter Gotou).
Regarding claim 24, Gotou teaches a method for producing a working medium containing difluoroethylene, by mixing a first component containing difluoroethylene held in a first container, with a second component without self-decomposition properties held in a second container ([0004], claim 1),
wherein the working medium contains difluoroethylene at a ratio of 65 mol % or less based on the entire amount of the working medium ([0004]),
the difluoroethylene can be 1,1-difluoroethylene (HFO-1132a) ([0036], claim 2),
the second component held in the second container can contain trans-1,3,3,3-tetrafluoropropene (HFO-1234ze(E)) and difluoromethane (HFC-32) ([0088], claim 12),
the working medium contains the second component (i.e. a mixture of HFO-1234ze(E) and HFC-32) at a ratio of 35 mol % or more based on the entire amount of the working medium ([0064]).
Thus, the working medium of Gotou can contain HFO-1234ze(E) at a ratio of 17.5 mol % or more based on the entire amount of the working medium, and contain HFC-32 at a ratio of 17.5 mol % or more based on the entire amount of the working medium.
Thus, the working medium of Gotou can contain HFO-1132a, HFO-1234ze(E), and HFC-32, wherein HFO-1132a is in an amount of 65 mol % or less, HFO-1234ze(E) is in an amount of 17.5 mol % or more, HFC-32 is in an amount of 17.5 mol % or more based on the entire amount of the working medium, and wherein the total amount of HFO-1132a, HFO-1234ze(E), and HFC-32 can be about 100 mol % based on the entire amount of the working medium, which falls within the claimed range of “99.5 mass% or more”.
Therefore, the working medium of Gotou can comprise HFO-1132a in an amount of 59 wt.% or less, HFO-1234ze(E) in an amount of 28 wt.% or more, HFC-32 in an amount of 13 wt.% or more, wherein the total amount of HFO-1132a, HFO-1234ze(E), and HFC-32 can be about 100 wt.% based on the entire amount of the working medium, which overlaps with the claimed range of a figure surrounded by straight lines IB, BE, EF, and FI.
The Examiner has carefully plotted the working medium comprising HFO-1132a in an amount of 59 wt.% or less, HFO-1234ze(E) in an amount of 28 wt.% or more, HFC-32 in an amount of 13 wt.% or more, against the claimed range of a figure surrounded by straight lines IB, BE, EF, and FI in a ternary diagram:
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In the ternary diagram above, the figure with a solid black color is the overlapping area.
Gotou does not teach the claimed refrigerant comprising HFO-1132a, R32, and R1234ze at once under the meaning of anticipation.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 25, Gotou teaches a method for producing a working medium containing difluoroethylene, by mixing a first component containing difluoroethylene held in a first container, with a second component without self-decomposition properties held in a second container ([0004], claim 1),
wherein the working medium contains difluoroethylene at a ratio of 65 mol % or less based on the entire amount of the working medium ([0004]),
the difluoroethylene can be 1,1-difluoroethylene (HFO-1132a) ([0036], claim 2),
the second component held in the second container can contain trans-1,3,3,3-tetrafluoropropene (HFO-1234ze(E)) and difluoromethane (HFC-32) ([0088], claim 12),
the working medium contains the second component (i.e. a mixture of HFO-1234ze(E) and HFC-32) at a ratio of 35 mol % or more based on the entire amount of the working medium ([0064]).
Thus, the working medium of Gotou can contain HFO-1234ze(E) at a ratio of 17.5 mol % or more based on the entire amount of the working medium, and contain HFC-32 at a ratio of 17.5 mol % or more based on the entire amount of the working medium.
Thus, the working medium of Gotou can contain HFO-1132a, HFO-1234ze(E), and HFC-32, wherein HFO-1132a is in an amount of 65 mol % or less, HFO-1234ze(E) is in an amount of 17.5 mol % or more, HFC-32 is in an amount of 17.5 mol % or more based on the entire amount of the working medium, and wherein the total amount of HFO-1132a, HFO-1234ze(E), and HFC-32 can be about 100 mol % based on the entire amount of the working medium, which falls within the claimed range of “99.5 mass% or more”.
Therefore, the working medium of Gotou can comprise HFO-1132a in an amount of 59 wt.% or less, HFO-1234ze(E) in an amount of 28 wt.% or more, HFC-32 in an amount of 13 wt.% or more, wherein the total amount of HFO-1132a, HFO-1234ze(E), and HFC-32 can be about 100 wt.% based on the entire amount of the working medium, which overlaps with the claimed range of a figure surrounded by straight lines G'B, BG, and GG'.
The Examiner has carefully plotted the working medium comprising HFO-1132a in an amount of 59 wt.% or less, HFO-1234ze(E) in an amount of 28 wt.% or more, HFC-32 in an amount of 13 wt.% or more, against the claimed range of a figure surrounded by straight lines G'B, BG, and GG' in a ternary diagram:
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media_image2.png
Greyscale
In the ternary diagram above, the figure with a solid black color is the overlapping area.
Gotou does not teach the claimed refrigerant comprising HFO-1132a, R32, and R1234ze at once under the meaning of anticipation.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 26, Gotou teaches a method for producing a working medium containing difluoroethylene, by mixing a first component containing difluoroethylene held in a first container, with a second component without self-decomposition properties held in a second container ([0004], claim 1),
wherein the working medium contains difluoroethylene at a ratio of 65 mol % or less based on the entire amount of the working medium ([0004]),
the difluoroethylene can be 1,1-difluoroethylene (HFO-1132a) ([0036], claim 2),
the second component held in the second container can contain trans-1,3,3,3-tetrafluoropropene (HFO-1234ze(E)) and difluoromethane (HFC-32) ([0088], claim 12),
the working medium contains the second component (i.e. a mixture of HFO-1234ze(E) and HFC-32) at a ratio of 35 mol % or more based on the entire amount of the working medium ([0064]).
Thus, the working medium of Gotou can contain HFO-1234ze(E) at a ratio of 17.5 mol % or more based on the entire amount of the working medium, and contain HFC-32 at a ratio of 17.5 mol % or more based on the entire amount of the working medium.
Thus, the working medium of Gotou can contain HFO-1132a, HFO-1234ze(E), and HFC-32, wherein HFO-1132a is in an amount of 65 mol % or less, HFO-1234ze(E) is in an amount of 17.5 mol % or more, HFC-32 is in an amount of 17.5 mol % or more based on the entire amount of the working medium, and wherein the total amount of HFO-1132a, HFO-1234ze(E), and HFC-32 can be about 100 mol % based on the entire amount of the working medium, which falls within the claimed range of “99.5 mass% or more”.
Therefore, the working medium of Gotou can comprise HFO-1132a in an amount of 59 wt.% or less, HFO-1234ze(E) in an amount of 28 wt.% or more, HFC-32 in an amount of 13 wt.% or more, wherein the total amount of HFO-1132a, HFO-1234ze(E), and HFC-32 can be about 100 wt.% based on the entire amount of the working medium, which overlaps with the claimed range of a figure surrounded by straight lines JB', B'E, EF, and FJ.
The Examiner has carefully plotted the working medium comprising HFO-1132a in an amount of 59 wt.% or less, HFO-1234ze(E) in an amount of 28 wt.% or more, HFC-32 in an amount of 13 wt.% or more, against the claimed range of a figure surrounded by straight lines JB', B'E, EF, and FJ in a ternary diagram:
PNG
media_image3.png
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media_image3.png
Greyscale
In the ternary diagram above, the figure with a solid black color is the overlapping area.
Gotou does not teach the claimed refrigerant comprising HFO-1132a, R32, and R1234ze at once under the meaning of anticipation.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 33, the term “for use as an alternative refrigerant for R410A” is an intended use and does not add structural difference, thus the intended use is extended little patentable weight. See MPEP § 2112.02.
Gotou teaches that the working medium targeted by the production method has a low global warming potential (GWP) and has cycle performance that is practically sufficient to replace conventionally used R410A ([0064]).
Regarding claim 37, Gotou teaches that the working medium is used as a refrigerant for a refrigerating equipment such as a refrigerator ([0264]), which reads on the claimed refrigerating machine comprising the composition as a working fluid.
Regarding claim 38, Gotou teaches that the working medium is used as a refrigerant for a refrigerating equipment such as a refrigerator ([0264]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to operate a refrigerator comprising circulating the working medium as taught by Gotou in the refrigerator with a reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 39, Gotou teaches that the working medium is practically sufficient to replace conventionally used R410A ([0064]).
2. Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over Gotou (JP 6773180 B1 (published 10/21/2020), see US 2022/0106242 A1, hereinafter Gotou) as applied to claims 24-26, 33, and 37-39 above, and further in view of Ohkubo (WO 2019/203271 A1, see US 2021/0122961 A1, hereinafter Ohkubo).
Regarding claim 36, the term “for use as a working fluid for a refrigerating machine” is an intended use and does not add structural difference, thus the intended use is extended little patentable weight. See MPEP § 2112.02.
Gotou teaches that the working medium is used as a refrigerant for a refrigerating equipment such as a refrigerator ([0264]).
Gotou does not teach that the composition further comprises a refrigeration oil.
However, Ohkubo teaches a refrigerant comprising an unsaturated compound and a HFC (hydrofluorocarbon), wherein the unsaturated compound can comprise HFO-1234ze and HFO-1132a, and the HFC can comprise HFC-32 ([0009]-[0014], claims 18-20).
Ohkubo also teaches that the refrigerant is further mixed with a refrigerant oil to be used as a working fluid for a refrigeration apparatus ([0021], claim 26).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make the working medium comprising HFO-1132a, HFO-1234ze(E) and HFC-32 as taught by Gotou being mixed with a refrigerant oil as taught by Ohkubo in order to make a working fluid for a refrigeration apparatus with a reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Conclusion
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/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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