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 2 (claims 1, 2, 4-6, 9, 14-18, 25 and 29-31) without traverse in the reply filed on 05/10/2026 is acknowledged.
Claims 1-18, 25, and 29-31 are currently pending. Claims 3, 7, 8, and 10-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being withdrawn to a non-elected invention, and non-elected species of the invention, there being no allowable generic or linking claims.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 1, 2, 4-6, 9, 14-18, 25, and 29-31 are currently under examination.
Claim Objections
Claims 2 and 18 are objected to because of the following informalities:
Claim 2 recites “an oligomer having a linking unit chosen from least one of the following: -CF(CF3)CH2-O-O-CH2CF(CF3)-, or -CF(CF3)CH2-O-O-CF(CF3)CH2-, or -CH2CF(CF3)-O-O-CF(CF3)CH2-, or -CF(CF3)CH2-O-CH2CF(CF3)- , or -CF(CF3)CH2-O- CF(CF3)CH2-, or -CH2CF(CF3)-O-CF(CF3)CH2-”. Applicant is suggested to revise it as “an oligomer having a linking unit chosen from at least one of the following: -CF(CF3)CH2-O-O-CH2CF(CF3)-, -CF(CF3)CH2-O-O-CF(CF3)CH2-, -CH2CF(CF3)-O-O-CF(CF3)CH2-, -CF(CF3)CH2-O-CH2CF(CF3)- , -CF(CF3)CH2-O- CF(CF3)CH2-, or -CH2CF(CF3)-O-CF(CF3)CH2-” for clarity.
Claim 18 recites “the composition comprises limonene or α-terpinene or α-pinene or β-pinene”. Applicant is suggested to revise it as “the composition comprises limonene, α-terpinene, α-pinene, or β-pinene” for clarity.
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.
Claims 1, 2, 4-6, 9, 14-18, 25, and 29-31 are rejected under 35 U.S.C. 103 as being unpatentable over Peng (WO 2019/213004 A1, see US 2021/0108119 A1, hereinafter Peng).
Regarding claims 1, 2, and 4, the instant invention discloses that the composition is prepared by contacting 1234yf with a source of oxygen at a contact time and contact temperature (instant US Pub. [0050]), the oxygen source can be air (instant US Pub. [0050]), the contact time is at least 3 days or at least 14 days (instant US Pub. [0051]), the contact temperature is in the range of −25 to 150 °C (instant US Pub. [0051]). The instant invention also discloses that the additional compounds may be added prior to or following the above-recited contacting step (instant US Pub. [0053]), the inhibitor may be added prior to or following the above-recited contacting step (instant US Pub. [0054]).
Peng teaches that a composition comprises 2,3,3,3-tetrafluoropropene (HFO-1234yf), at least one inhibitor, air, and less than about 0.03 wt. % of oligomer(s) (claims 1-3 and 6; Table 4). Thus, the composition of Peng can comprise oligomer (s).
Peng also teaches that the composition is prepared by contacting HFO-1234yf with air at a contact time of at least 3 days or at least 14 days and at the contact temperature of from 40 to 150 °C, the inhibitor is added prior to the contacting step ([0142], Table 4), which is the identical or substantially identical composition preparation method as disclosed by the instant invention.
Peng does not teach that the one or more oligomers have a repeating linking unit of —{[CF(CF3)CH2]x(On)}y[CF(CF3)CH2]z—, where, x, y≥1, n=1 or 2, and z≥0.
However, "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
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 expect that the claimed property of the oligomer having a repeating linking unit of —{[CF(CF3)CH2]x(On)}y[CF(CF3)CH2]z—, would be present in the oligomer as taught by Peng with a reasonable expectation of success, because the composition of Peng is prepared by contacting HFO-1234yf with air at a contact time of at least 3 days or at least 14 days and at the contact temperature of from 40 to 150 °C, the inhibitor being added prior to the contacting step, which is identical or substantially identical process as the composition preparation method as disclosed by the instant invention. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claims 5 and 6, Peng teaches that a composition comprises less than about 0.03 wt. % of oligomer(s) (claim 2, [0021]), which overlaps with the claimed ranges of “at least 0.001 % by weight” and “at least 0.01 % by weight”.
Regarding claim 9, Peng teaches that the composition further comprises at least one additional compound, and the examples of the additional compound include HFO-1243zf, HFC-134a, HCFC-1122, HFC-143a, and HFC-254eb ([0027]-[0028], [0101]). Thus, the additional compound of Peng can be a combination of HFO-1243zf, HFC-134a, HCFC-1122, HFC-143a, and HFC-254eb.
Regarding claims 14 and 15, Peng teaches that HFO-1234yf has a purity of greater than 99.5 wt %, and contains greater than zero and less than about 0.5 wt % of additional compounds ([0098], [0100], [0101], [0117], [0142]), which falls within the claimed range of “greater than 0 wt% and less than 1 wt%” and overlaps with the claimed range of “greater than 0.1 ppm and less than 0.5 wt%”.
Regarding claim 16, Peng teaches that the composition comprises at least one inhibitor (claims 1-3 and 6; Table 4).
Regarding claims 17 and 18, Peng teaches that the inhibitor can be limonene (claim 12, Table 4).
Regarding claim 25, Peng teaches that the composition is used as a heat transfer medium ([0047]), and the heat transfer medium is a working fluid used to carry heat from a heat source to a heat sink ([0053]), which reads on the claimed process for heat transfer comprising transporting the composition from a heat source to a heat sink.
Regarding claim 29, Peng teaches that the composition is used in a heat transfer system ([0047]).
Regarding claim 30, Peng teaches that the composition is used to make a refrigerant blend for use in a stationary heat transfer system ([0047], [0134]), which reads on the claimed stationary refrigeration apparatus.
Regarding claim 31, Peng teaches that the composition is used in a heat transfer system, and the heat transfer system is a mobile air conditioning system ([0047]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 4, 16-18, 25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5-10, 15-16, 19, 22, 25, and 28 of copending Application No. 18/703,229 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of the claims recite a composition comprising 2,3,3,3-tetrafluoropropene,and one or more oligomers having a repeating linking unit of —{[CF(CF3)CH2]x(On)}y[CF(CF3)CH2]z—, where, x, y≥1, n=1 or 2, and z≥0.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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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