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 .
Status of the Claims
Claims 1-16 are pending.
Election of Invention
Applicants’ election without traverse (see pages 1-3 of Remarks filed on 02/26/2026), of the invention of Group I (claims 1-13), is acknowledged and entered.
Applicants’ election of following species without traverse (see pages 1-3 of Remarks filed on 02/26/2026), is acknowledged and entered:
a) 1,1,1-trifluoro-2-iodoethane: CF3CH2I, as the elected species of a compound of formula (1): CF3(CX2)nCH2I, wherein n = 0;
b) 2,2,2-trifluoroethanol, as the elected species of a flammable liquid.
Claims 6-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to non-elected species of a flammable liquid. Claims 14-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to non-elected invention. Therefore, claims 1-5 and 13 are currently drawn to the elected species and are the subject of the Office action below.
Priority
This application filed on 07/17/2023, is a 371 of PCT/JP2022/002064, filed on 01/20/2022, which claims priority to JP application No. 2021-009596, filed on 01/25/2025.Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Burke et al (hereinafter “Burke”, J. Magnetic Resonance, 1970, 3, 55-75).
By way of a background, the Applicants’ invention is directed to a compound comprising a fluoroiodo alkane and a flammable solvent, which can be employed in a wide range of applications such as a disinfectant or a cleaning solvent (see, e.g., ¶s 0001 and 0009-0010 of the specification). Applicants (see, e.g., ¶s 0005, 0029 and 0066 of the specification), have surprisingly and unexpectedly discovered that the fluoroiodo alkanes of the Applicants’ invention exhibit lower effects on ozone depletion potential (ODP) and global warming potential (GWP).
Under the broadest reasonable interpretation (BRI), consistent with the specification, the claimed invention is being interpretated as a liquid composition comprising a fluoroiodoalkane compound of formula (1) and a flammable liquid, wherein the total amount of fluoroiodoalkane and the flammable liquid is from 95 to 100 wt%.
Regarding claims 1-3, 5 and 13, Burke (see table 3 and Figures 4-5, 7-8), teaches a composition comprising: i) CF3CH2I and CCl4; ii) CF3CH2I and diethyl ether; iii) CF3CH2I and CHCl3; and iv) CF3CH2I and benzene, wherein the CF3CH2I is in an amount of up to 100 wt% (1.0 mole fraction). CCl4 and CHCl3 are halogenated hydrocarbons (see instant claim 3), diethyl ether is an ether (see instant claim 3), and benzene is an aromatic compound (see instant claim 3).
Therefore, claims 1-3, 5 and 13 are anticipated by Burke.
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.
Claims 1-5 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Uenveren of record (WO2009019219A2, published 02/12/2009).
By way of a background, the Applicants’ invention is directed to a compound comprising a fluoroiodo alkane and a flammable solvent, which can be employed in a wide range of applications such as a disinfectant or a cleaning solvent (see, e.g., ¶s 0001 and 0009-0010 of the specification). Applicants (see, e.g., ¶s 0005, 0029 and 0066 of the specification), have surprisingly and unexpectedly discovered that the fluoroiodo alkanes of the Applicants’ invention exhibit lower effects on ozone depletion potential (ODP) and global warming potential (GWP).
Under the broadest reasonable interpretation (BRI), consistent with the specification, the claimed invention is being interpretated as a liquid composition comprising a fluoroiodoalkane compound of formula (1) and a flammable liquid, wherein the total amount of fluoroiodoalkane and the flammable liquid is from 95 to 100 wt%.
Regarding claims 1-5 and 13, Uenveren discloses a composition (see page 4, lines 14-16), that can comprise compounds such as CF3CH2I (see page 3, lines 20-21, compound 7, Table 1) and a solvent (see page 5, lines 23-25), selected from the group consisting of hydrocarbons, halogenated hydrocarbons, alcohols, esters, ketones or ethers (flammable liquid, see instant claim 3). Examples of alcohols include, but not limited to ethanol (see page 6, lines 7-14). The liquid and the compound can be in amount of up to 100 wt% (see, e.g., page 5, lines 4-12 and page 7, lines 6-11). Each of the claimed amounts the fluoroiodoalkane compound and/or solvent in the composition (see, e.g., instant claims 1, 5 and 13), is a result effective variable that would have been routinely determined and optimized in the pharmaceutical art (see discussions above).
Furthermore, MPEP § 2144.05(II)(B), states that “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”
It is noted that no criticality (emphasis added) has been demonstrated in the specification with regard to the claimed amounts the fluoroiodoalkane compound and/or solvent in the composition.
Similar to the Applicants’ invention (see discussions above), Uenveren discloses that the compounds of the invention are environmentally advantageous, especially in view of low or zero ODP and GWP (see page 4, lines 11-13) and can be used for cleaning a surface (see page 4, lines 14-16).
Accordingly, at the time of the instant invention, a person skilled in the art would have envisaged a composition comprising a fluoroiodoalkane compound of formula (1), such as 1, 1, 1-trifluoro-2-iodo-ethane and a flammable liquid (e.g., ethanol), wherein the liquid and the compound can be in amount of up to 100 wt%, in the disclosures of Uenveren. One skilled in the art would have had a reasonable expectation of success in cleaning a surface with the composition, wherein the composition exhibits low or zero ODP and GWP on the environment.
Obviousness requires only a reasonable expectation of success, not complete confidence in a given outcome; "at least some degree of predictability" is all that is required. M.P.E.P. § 2143.02.
The prior art can be modified or combined to reject claims as prima facie obvious as long as there is a reasonable expectation of success. See In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (see MPEP § 2143.02).
Therefore, claims 1-5 and 13 are obvious over Uenveren.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a). From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Thus, the claims fail to patentably distinguish over the state of the art as represented by the cited reference. Therefore, the invention as a whole was prima facie obvious at the time it was made.
Conclusion
No claim is allowable.
If Applicants should amend the claims, a complete and responsive reply will clearly identify where support can be found in the disclosure for each amendment. Applicants should point to the page and line numbers of the application corresponding to each amendment, and provide any statements that might help to identify support for the claimed invention (e.g., if the amendment is not supported in ipsis verbis, clarification on the record may be helpful). Should the Applicants present new claims, Applicants should clearly identify where support can be found in the disclosure.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IBRAHIM D BORI whose telephone number is (571)270-7020. The examiner can normally be reached on Monday through Friday 8:00AM-5:00PM(EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFREY S LUNDGREN can be reached on 571-272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IBRAHIM D BORI/
Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
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