Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Information Disclosure Statement (IDS)
Non-patent literature document Nos. 5 and 11 in the IDS filed 03/10/2026 have been crossed out, i.e., not considered, since they did not accompany the IDS.
Statement Under 3.73(c)
The Statement Under 3.73(c) filed 03/10/2026 is defective, and thus, the application is objected to under 37 CFR 1.172(a) because the information provided in the Statement is not for U.S. Patent 8,318,992 which issued Nov. 27, 2012, but rather is for Serial No. 14/552,613, filed Nov. 25, 2014, now U.S. Patent RE49,849.
A new statement under 3.73(c) identifying the patent number as 8,319,992, the issue date as Nov. 27, 20212, and the assignment information associated therewith is required. As noted in 37 CFR 1.172(a) in MPEP 1410.01, “[a]ll assignees consenting to the reissue must establish their ownership in the patent [to be reissued, i.e., U.S. 8,319,992] by filing in the reissue application a submission in accordance with the provisions of § 3.73(c) of this chapter.”
Reissue Declaration and 35 USC 251
The reissue oath/declaration filed 03/10/2026 is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
The present reissue application is a broadening reissue application. As per MPEP 1414.II(B) (emphasis added):
For an application filed on or after September 16, 2012 that seeks to enlarge the scope of the claims of the patent, the reissue oath or declaration must also identify a[n original] claim that the application seeks to broaden in the identification of the error that is relied upon to support the reissue application. A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. In specifically identifying the error as required by 37 CFR 1.175(a), it is sufficient that the reissue oath/declaration identify the claim being broadened and a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. The corresponding corrective action which has been taken to correct the original patent need not be identified in the oath/declaration.
The instant reissue declaration filed 03/10/2026 is defective because it does not identify an original (i.e., issued) claim to be broadened, and does not identify a single word, phrase, or expression in the original claim, and how it renders the original patent wholly or partly inoperative or invalid. The instant reissue declaration identifies expressions in claims 17, 32 and 46, which are new claims, not original claims.
An example of an acceptable error statement is as follows:
Claim 1 is to be broadened. Claim 1 is unduly narrow in its recitation that the process is “for making at least one product compound selected from the group consisting of CF3CF2CH3, CF3CF=CH2 and CF3CCl=CH2.”
The error statement in the reissue declaration further states: “It was error to have an Abstract >150 words and include duplication terms, such as ‘halopropene’.” However, an abstract greater than 150 words and use of duplicate terms therein are not errors that support a reissue application. Thus, this statement should not be included in the error statement.
A new reissue declaration with a proper error statement is required.
Claims 17-62 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the reissue declaration is set forth in the discussion above in this Office action.
Non-Compliant Amendment
The amendment filed 03/10/2026 is improper. The amendment does not comply with 37 CFR 1.173 which sets forth the manner of making amendments in reissue applications. While the improper amendment has been entered and considered, a compliant amendment is required with Applicant’s next response. An amendment filed after final rejection that fails to comply with 37 CFR 1.173 will not be entered.
All amendment changes must be made relative to the patent to be reissued, not relative to a previously submitted amendment. Pursuant to 37 CFR 1.173(d), any such changes which are made to the specification, including the claims, must be shown by employing the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets, i.e., single brackets; and (2) The matter to be added by reissue must be underlined.
The non-compliance issues are as follows:
The amendment to the paragraph at col. 1, lines 4-7 of the specification:
The underlined period at the end of the amended paragraph should not be underlined because the period is present in the ‘992 patent specification.
Claims 17-62:
Claims 17-62 are new claims relative to the issued claims of the ‘992 patent. They must be underlined in their entirety, must not have any bracketing for deletion or any other indication of what was in the previous version of the claim, and should have the status identifier “New”. If material has been removed from a previous version of a new claim, it is simply left out of the claim. Although the presentation of the amended new claim does not contain any indication of what is changed from the previous version of the claim, Applicant must point out what is changed in the "Remarks" portion of the amendment. See MPEP 1453.V.D. Claims 17-62 in the amendment filed 03/10/2026 are not underlined in their entirety, improperly use bracketing relative to the previous version of the claim, and Applicant has not pointed out what is changed in the "Remarks" portion of the amendment.
Specification
The abstract of the disclosure filed 03/10/2026 is objected to because:
The abstract contains consecutive close brackets as noted below with annotation arrows:
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198
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The close bracket indicated by the left-most annotation arrow should be removed.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 46 is objected to because of the following informalities:
In claim 46, at line 5, “BF.” should be “BF,”. At line 6, the close parenthesis should be removed, i.e., “3)” should be “3”. At line 8, “materials” should be “material”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 30, 55 and 56 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 30 recites the broad recitation “metals”, and the claim also recites “(including elemental metals, metal oxides, metal halides, and/or other metal salts)” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 55 and 56 recite the term “1,1,1,2,2-Pentapropane (245cb)”. It is unclear what is meant by “Pentapropane”. It appears “Pentapropane” should be “Pentafluoropropane” since 245cb has five fluorine atoms.
Claims 55 and 56 recite the phrase “the CF3CH=CHF (1234ze) and 1,1,1,2,2-Pentapropane (245cb) formed from the process of claim 22 and separated from the product mixture.” The 1,1,1,2,2-Pentapropane (245cb) lacks positive antecedent basis in claim 22, where it is not indicated as being formed and separated from the product mixture. It is suggested that said phrase be rewritten as “CF3CH=CHF (1234ze) and 1,1,1,2,2-Pentafluoropropane (245cb) both formed from the process of claim 22 and separated from the product mixture.”
Response to Arguments
Applicant's arguments filed March 10, 2026 have been fully considered but they are not persuasive.
The only issues remaining in the instant reissue application are those set forth above.
With respect to the defective reissue declaration and corresponding rejection of the claims under 35 USC 251, Applicant provides an explanation in the Remarks as to the error statement supporting the instant reissue declaration (Remarks, pp. 11-12).
However, such is insufficient since the statement of error must be in the reissue declaration itself not Applicant’s Remarks (see MPEP §§ 1414(B) and 1414.II). As noted above, the statement of error in a reissue declaration for a broadening reissue application must identify an original (i.e., issued) claim to be broadened, and identify a single word, phrase, or expression in the original claim, and how it renders the original patent wholly or partly inoperative or invalid. The reissue declaration filed 03/10/2026 does not provide such a statement, and neither did the reissue declaration filed 01/15/2024. In fact, the error statement in the two reissue declarations is identical.
An example of a suitable error statement for use in the reissue declaration is given above in the objection to the reissue declaration. Alternatively, another exemplary statement that can be used is as follows based on Applicant’s statement on p. 12 of the Remarks:
Claim 1 is to be broadened. Claim 1 is unduly narrow in its recitation "to produce a product mixture comprising at least one product compound selected from the group consisting of CF₃CF₂CH₃, CF₃CF=CH₂ and CF₃CCI=CH₂” in that the product mixture does not cover the full scope of the disclosure.
Duty to Disclose
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which Patent No. 8,318,992 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN D DIAMOND whose telephone number is (571)272-1338. The examiner can normally be reached Monday through Thursday 5:30 am to 3:00 pm, and Fridays from 5:30 am to 9:30 am.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle can be reached on 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Signed:
/ALAN D DIAMOND/Patent Reexamination Specialist
Central Reexamination Unit 3991
Conferees:
/JOSEPH R KOSACK/Patent Reexamination Specialist
Central Reexamination Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991