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 .
This action is responsive to Applicant's amendments/remarks filed 09/03/2026.
Claims 1-18, 25, and 29-31 are currently pending. Claims 3, 7, 8, and 10-13 are withdrawn. Therefore, claims 1, 2, 4-6, 9, 14-18, 25, and 29-31 are currently under examination.
The rejection of claims 1, 2, 4-6, 9, 14-18, 25, and 29-31 under 35 U.S.C. 103 as being unpatentable over Peng (WO 2019/213004 A1, see US 2021/0108119 A1) is maintained in view of the above amendment/remark.
The rejection of claims 1, 2, 4, 16-18, 25 provisionally 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as being unpatentable over claims 1, 2, 5-10, 15-16, 19, 22, 25, and 28 of copending Application No. 18/703,229 is withdrawn in view of the approved Terminal Disclaimer.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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, 4, and 16, 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 oxygen source can be in combination with peroxides (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 the above-recited contacting step (instant US Pub. [0053]), the inhibitor may be added prior to 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, an oxidizer, and less than about 0.03 wt. % of oligomer(s) (claims 1-3 and 6; Table 4), wherein the oxidizer can be air and/or peroxides (claim 3, [0044]). Thus, the composition of Peng can comprise oligomer(s).
Peng also teaches that the composition is prepared by contacting HFO-1234yf with air/peroxides 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= 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—, where, x, y≥1, n= 2, and z≥0, 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/peroxides 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 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]).
Response to Arguments
Applicant's arguments filed 09/03/2026 have been fully considered but they are not persuasive.
Applicant argues that the present invention discovered that adding fluorinated olefin-derived oligomers enhances the performance of the resulting refrigerant or heat-transfer composition; when a peroxygen unit is present, the composition is stable, meaning the composition is stable under refrigerant use conditions; the invention achieves stability under refrigerant operating conditions through the use of oligomers having this specific peroxide-containing structure, which is unexpected (p. 6, 2nd and 3rd para).
Applicant also argues that Peng neither discloses nor suggests such peroxide-containing oligomers; Peng does not provide any structural characterization showing that any polymer formed contains peroxide (-O-O-) linkages, does not teach or suggest that peroxide-containing oligomers provide beneficial effects, and does not teach or suggest that such oligomers improve solubility of HFO-1234yf in synthetic hydrocarbon oils; even assuming arguendo that the prior art inherently possesses the asserted property, the issue is not whether the property existed, but whether one of ordinary skill in the art would have reasonably expected the claimed invention to achieve the demonstrated results (p. 6, last para; p. 7, 2nd para).
Applicant further argues that Peng teaches away from the claimed invention; Peng is directed to preventing and eliminating oligomer and polymer formation through the use of inhibitors such as limonene and a-terpinene; claim 1 of Peng expressly requires that the composition be substantially free of oligomers, homopolymers, or other polymerization products; not only does Peng fail to suggest that peroxide-containing oligomers improve performance, but it affirmatively instructs the skilled artisan to inhibit the chemical pathway that leads to oligomer formation (p. 7, 3rd and 4th para).
In response, Applicant’s arguments are not persuasive.
Firstly, in response to Applicant's argument that adding the claimed oligomers with a peroxygen unit enhances the performance of the resulting refrigerant or heat-transfer composition, the fact that the inventor has recognized another advantage which would flow naturally from the teaching of prior art reference cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). See MPEP 2145.II.
As discussed in claim 1 above, 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—, where, x, y≥1, n= 2, and z≥0, 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/peroxides 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, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect that the property of enhancing the performance of the resulting refrigerant or heat-transfer composition, would flow naturally from the teaching of Peng, because the teaching of Peng provides substantially the same composition comprising the same HFO-1234yf and the same oligomer(s) as claimed. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Secondly, evidence of unexpected results must be factually supported by an appropriate affidavit or declaration. See MPEP § 716.01(c). Unexpected results must, in actuality, be unexpected. Unexpected results must be compared with the closest prior art. See In re De Blawe, 222 USPQ 191 (FED. Cir. 1984), and In re Fenn, 208 USPQ 470 (CCPA 1981). See MPEP § 716.02(e).
The instant invention’s disclosure “Surprisingly it is now found that adding a fluoroolefin-derived oligomer to a fluoroolefin enhances performance of the resulting composition as a refrigerant or heat transfer composition” (instant US Pub. [0019]) and “Surprisingly, even when a peroxygen unit is present, the composition is stable, meaning the composition is stable under refrigerant use conditions” (instant US Pub. [0027]) are not factually supported by any experimental data. Furthermore, they are no probative value in the determining patentability of claims since they do not involve a comparison of Applicant's invention with the closest applied prior art. Peng constitutes closer prior art than Applicant's disclosure which does not contain fluorinated olefin-derived oligomers. Peng explicitly teaches that a composition comprises HFO-1234yf, and less than about 0.03 wt. % of oligomer(s) (claims 1-3 and 6; Table 4).
Furthermore, as discussed in claim 1 above, 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—, where, x, y≥1, n= 2, and z≥0, would be present in the oligomer as taught by Peng with a reasonable expectation of success.
Thirdly, regarding Applicant's argument that Peng teaches away from the claimed invention, Peng is directed to preventing and eliminating oligomer and polymer formation through the use of inhibitors such as limonene and a-terpinene, in response, Applicant’s argument is not persuasive.
"The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP 2123.
Peng explicitly teaches that a composition comprises HFO-1234yf, 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/peroxides 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.
The instant invention discloses that the composition is prepared by contacting HFO-1234yf with a source of oxygen at a contact time and contact temperature (instant US Pub. [0050]), the inhibitor can be added prior to the contacting step (instant US Pub. [0054]). Claim 16 of the instant invention clearly recites that “the composition further comprises an inhibitor”. Therefore, an inhibitor is not excluded in the contacting step of the instant invention.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
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