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 Amendment
The Amendment filed on November 26th, 2025 has been entered. Claims 1-16 are pending in the application.
The rejection of claims 1-2, 6, 9, and 13-14 under 35 U.S.C. 103 as obvious over Wu (US 20220089982 A1) is maintained.
The rejection of claims 3-5 under 35 U.S.C. 103 as obvious over Wu (US 20220089982 A1) and Shellef (US 20170283959 A1) is maintained.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-2 and 6-16 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (US 20220089982 A1).
With regard to claims 1-2, 6, 9, and 13-14, Wu discloses an azeotrope-like composition comprising trans-dichloroethylene and three or more additional components (see Abstract). Wu further discloses 75-85wt% of trans-dichloroethylene (see [0065]), 1-15wt% of 1,1,2,2,3,3,4-heptafluorocyclopentane (see [0079]), 1-5wt% (see [0070], [0072]) of 1-chloro-2,3,3-trifluoro-1-propene (see [0043]). Wu further teaches a composition comprising trans-1,2-dichloroethylene, a second component which recites HCFO-1233yd(Z) (i.e. 1-chloro-2,3,3-trifluoro-1-propene), as one of the selections, a third component which recites 1,1,2,2,3,3,4-heptafluorocyclopentane, and a fourth component selected from methanol, ethanol, isopropanol, and n-hexane (see [0089]-[0093]). Wu further discloses the composition may comprise a surfactant as one of the selections (see [0235]-[0236]).
However, Wu fails to specifically disclose the specific concentrations of the three components disclosed in claim 1 and claim 2.
The subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference (75-85wt% of trans-dichloroethylene (see [0065]), 1-15wt% of 1,1,2,2,3,3,4-heptafluorocyclopentane (see [0079]), 1-5wt% (see [0070], [0072]) of 1-chloro-2,3,3-trifluoro-1-propene (see [0043])) because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549; In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990); In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
With regard to claims 7-8 and 10-12, Wu discloses an azeotrope-like composition comprising trans-dichloroethylene and three or more additional components (see Abstract). Wu further discloses 75-85wt% of trans-dichloroethylene (see [0065]), 1-15wt% of 1,1,2,2,3,3,4-heptafluorocyclopentane (see [0079]), 1-5wt% (see [0070], [0072]) of 1-chloro-2,3,3-trifluoro-1-propene (see [0043]). Wu further discloses the composition may comprise a surfactant (see [0265]-[0236]). Wu further discloses “about 85wt%” of trans-dichloroethylene and further teaches “about” as meaning “plus or minus 10%” (see [0023]), meaning 85wt% may be as much as 93.5wt%.
With regard to claim 15, Wu discloses a means for contacting may be accomplished by spraying or vapor (see [0237]) and further discloses contacting the substrate with the composition and removing the substrate (see Claim 45).
With regard to claim 16, Wu discloses a coupon being placed in the vapor phase of a boiling composition for 60min, removing the coupon, and allowing the coupon to dry and off-gas for 10min (see [0260]).
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (US 20220089982 A1), as applied to claim 1 above, and in further view of Shellef (US 20170283959 A1).
With regard to claim 3 and claim 5, Wu discloses all of the limitations of claim 1.
However, Wu fails to disclose a cosolvent selected from one or more of N,N dimethyl 9-decenamide, a mixture of greater than 80wt% polyoxyethylene tridecyl ether phosphate, less than 18wt% alcohol ethoxylate, less than 1wt% phosphoric acid, and less than about 1wt% water, benzyl alcohol, hexylene glycol.
Shellef discloses an azeotrope-like composition comprising trans-1,2-dichloroethylene and an organic compound, an analogous art (see Abstract). Shellef further discloses various known alcohols and solvents may be used at 0.01-5wt%. Shellef further teaches benzyl alcohol as a suitable solvent.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to utilize the benzyl alcohol at 0.01-5wt% of Shellef in the azeotrope-like composition of Wu as alcohols are known solvents in the art, as disclosed by Shellef.
Further, both Wu and Shellef disclose an azeotrope-like composition comprising trans-1,2-dichloroethylene. Applicant is reminded of In re Kerkhoven, which affirmed that "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose....the idea of combining them flows logically from their having been individually taught in the prior art". In re Kerkhoven, 626 F .2d 846, 850, 205, USPQ 1069, 1072 (CCPA 1980). Therefore one having ordinary skill in the art would find the claimed invention obvious as both Wu and Shellef disclose azeotrope-like compositions comprising trans-1,2-dichloroethylene. As stated above, Wu and Shellef disclose azeotrope-like compositions. It would, therefore, have been obvious to combine the benzyl alcohol of Shellef in the azeotrope-like composition of Wu to produce an azeotrope-like composition.
With regard to claim 4, Wu discloses all of the limitations of claim 1.
However, Wu fails to disclose 0.1-3wt% of surfactants.
Shellef discloses an azeotrope-like composition comprising trans-1,2-dichloroethylene and an organic compound, an analogous art (see Abstract). Shellef further discloses additives at up to 5wt% and surfactants as a suitable additive (see [0033]). Shellef further discloses additives are typically added in amounts known to one of skill in the art (see [0033]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to utilize the surfactant at up to 5wt% of Shellef in the azeotrope-like composition of Wu, as such typical amounts of additives are known to those skilled in the art, as disclosed by Shellef.
Further, both Wu and Shellef disclose an azeotrope-like composition comprising trans-1,2-dichloroethylene. Applicant is reminded of In re Kerkhoven, which affirmed that "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose....the idea of combining them flows logically from their having been individually taught in the prior art". In re Kerkhoven, 626 F .2d 846, 850, 205, USPQ 1069, 1072 (CCPA 1980). Therefore one having ordinary skill in the art would find the claimed invention obvious as both Wu and Shellef disclose azeotrope-like compositions comprising trans-1,2-dichloroethylene. As stated above, Wu and Shellef disclose azeotrope-like compositions. It would, therefore, have been obvious to combine the surfactant of Shellef in the azeotrope-like composition of Wu to produce an azeotrope-like composition.
Response to Arguments
Applicant's arguments filed November 26th, 2025 have been fully considered but they are not persuasive.
Applicant argues that the phrase “consisting essentially of” renders Wu insufficient as prior art. Wu discloses a fourth component which Applicant argues falls outside of the “consisting essentially of” phrasing. However, claim 1 states that the composition may optionally comprise one or both of a surfactant and a cosolvent. The fourth component of Wu is an alcohol. With the addition of optional components, the “consisting essentially of” language expands to a total of five components. Therefore, the alcohol disclosed by Wu, and subsequently Shellef, would be consistent with the instant claims. Applicant is directed toward MPEP 2111.03: “The transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original)”. Both Wu and Shellef disclose an azeotrope-like composition comprising trans-1,2-dichloroethylene. Therefore, the additional components would not change the compositions.
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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/B.S.H./ Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/ Supervisory Patent Examiner, Art Unit 1761
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