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 1 of an oxidation product (i.e. an oxidation product being at least one of carvone, carveol and limonene oxide) and Species 5 of an additional compound (i.e. an additional compound being a combination of HFO-1243zf, HFC-134a, HFC-143a, HCFO-1122 and HFC-254eb) without traverse in the reply filed on 05/10/2026 is acknowledged.
Claims 1, 3-25, 32, and 36-38 are currently pending. Claims 3, 5-11, 14, 15, 17, 18, and 23-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being withdrawn to a non-elected invention, and non-elected species of the invention, there being no allowable generic or linking claims.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, 4, 12, 13, 16, 19-22, 32, and 36-38 are currently under examination.
Claim Objections
Claims 4 and 19 are objected to because of the following informalities:
Claim 4 recites “the oxidation product may be at least one of carvone, carveol and limonene oxide”. Applicant is suggested to revise it as “the oxidation product is at least one of carvone, carveol and limonene oxide” for clarity.
Claim 19 recites “the total amount of additional compound may be greater than 0 wt% and less than 1 wt%”. Applicant is suggested to revise it as “the total amount of additional compound is greater than 0 wt% and less than 1 wt%” 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, 4, 12, 13, 16, 19-22, 32, and 36-38 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 and 4, the instant invention discloses that a composition comprises HFO-1234yf, a terpene inhibitor and one or more oxidation products, wherein the oxidation product is an oxidation product of a terpene inhibitor (instant US [0048]); this composition is prepared by contacting a composition comprising HFO-1234yf and a terpene inhibitor chosen from one or more of limonene, α-terpinene, α-pinene and β-pinene with an oxygen source at a contact time and contact temperature (instant US [0049]), the oxygen source can be air (instant US [0049]), the contact time is at least 3 days or at least 14 days (instant US [0050]), the contact temperature is in the range of −25 to 150 °C (instant US [0050]).
Peng teaches that a composition comprises 2,3,3,3-tetrafluoropropene (HFO-1234yf) and an inhibitor, wherein the inhibitor can be limonene (claims 1, 4 and 6; [0142]; Table 4).
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 such as limonene 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 composition comprises an oxidation product, wherein the oxidation product is an oxidation product of an inhibitor, and the oxidation product is chosen from at least one of carvone, carveol and limonene oxide.
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 oxidation product being at least one of carvone, carveol and limonene oxide, would be present in the composition as taught by Peng with a reasonable expectation of success, because the composition of Peng is prepared by contacting a composition comprising HFO-1234yf and an inhibitor (i.e. limonene) 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, 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 12 and 13, Peng teaches that the inhibitor can be present in an amount of from about 0.001% to about 10% by weight in the composition ([0104]), which falls within the claimed range of “at least 0.001 % by weight”, and overlaps with the claimed range of “at least 0.01 % by weight”.
Regarding claim 16, 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 19 and 20, 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 21, Peng teaches that the composition comprises an inhibitor, wherein the inhibitor comprises at least one member selected from the group consisting of limonene, α-terpinene, α-tocopherol, butylated hydroxytoluene, 4-methoxyphenol, benzene-1,4-diol (claim 4; [0001]). Thus, the composition of Peng can comprise an inhibitor comprising limonene and an additional inhibitor such as α-tocopherol.
Regarding claim 22, Peng teaches that the composition comprises an inhibitor, wherein the inhibitor can comprise limonene (claim 4; [0001]).
Regarding claim 32, 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 36, the instant invention discloses that a composition comprises HFO-1234yf, a terpene inhibitor and one or more oxidation products, wherein the oxidation product is an oxidation product of a terpene inhibitor (instant US [0048]); this composition is prepared by contacting a composition comprising HFO-1234yf and a terpene inhibitor chosen from one or more of limonene, α-terpinene, α-pinene and β-pinene with an oxygen source at a contact time and contact temperature (instant US [0049]), the oxygen source can be air (instant US [0049]), the contact time is at least 3 days or at least 14 days (instant US [0050]), the contact temperature is in the range of −25 to 150 °C (instant US [0050]).
Peng teaches that a composition comprises 2,3,3,3-tetrafluoropropene (HFO-1234yf) and an inhibitor, wherein the inhibitor can be limonene (claims 1, 4 and 6; [0142]; Table 4), which reads on the claimed terpene inhibitor.
Peng also teaches that the composition is used in a heat transfer system ([0047]), which reads on the claimed heat transfer system comprising the composition.
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 such as limonene 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 composition comprises an oxidation product, wherein the oxidation product is an oxidation product of an inhibitor.
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 oxidation product being an oxidation product of the inhibitor, would be present in the composition as taught by Peng with a reasonable expectation of success, because the composition of Peng is prepared by contacting a composition comprising HFO-1234yf and an inhibitor (e.g. limonene) 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, 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 claim 37, 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 38, Peng teaches that the composition is used in a heat transfer system, and the heat transfer system is a mobile air conditioning system ([0047]).
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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