DETAILED ACTION
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 .’
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 3/1/2024, 9/23/2024, 12/2/2024, 3/4/2025, 3/26/2025 and 9/02/2025 were filed on or after the mailing date. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because the recitation “No studies have been made regarding what kinds of refrigerants should be used in a refrigeration cycle device for a vehicle” is not a concise statement of the technical disclosure of the patent and does not include that which is new in the art to which the invention pertains. There have been studies performed regarding refrigerants for a refrigeration cycle for a vehicle, refer to pertinent art Shah below. 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).
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112
§ 112(b)
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 2 and 3 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.
Regarding Claim 2, it is noted that the conditional steps of “if 0<w<1.2, coordinates (x,y,z) in a ternary composition diagram are within the range…”, “if 1.2<w<4.0, coordinates (x,y,z) in the ternary composition diagram are within the range…” and “if 4.0<w<7.0, coordinates (x,y,z) in a ternary composition diagram are within the range…” may never occur.
In particular, claim 2 does not positively recite the condition
precedent, (i.e. 0<w ≤1.2, 1.2<w ≤4.0, and 4.0<w ≤7.0), actually occurs, or is ever required to occur, within the broadest reasonable interpretation. Since the recited “if” conditions need not be satisfied to meet the claim, the recited steps of coordinates (x,y, z) in a ternary composition diagram being within some range need not occur to satisfy the claim. As such, the Examiner need not present evidence establishing the obviousness of the conditional "if” step of claim 2, because it is not required to be performed under the broadest reasonable interpretation of the
claim
Regarding Claim 3, it is noted that the conditional steps of “if 0<w<1.2, coordinates (x,y,z) in a ternary composition diagram are within the range…”, “if 1.2<w<1.3, coordinates (x,y,z) in the ternary composition diagram are within the range…”, “if 1.3<w<4.0, coordinates (x,y,z) in a ternary composition diagram are within the range…” and “if 4.0<w<7.0, coordinates (x,y,z) in a ternary composition diagram are within the range…” may never occur.
In particular, claim 3 does not positively recite the condition
precedent, (i.e. 0<w ≤1.2, 1.2<w ≤1.3, 1.3<w ≤4.0, and 4.0<w ≤7.0), actually occurs, or is ever required to occur, within the broadest reasonable interpretation. Since the recited “if” conditions need not be satisfied to meet the claim, the recited steps of determining need not occur to satisfy the claim. As such, the Examiner need not present evidence establishing the obviousness of the conditional "if” step of claim 3, because it is not
required to be performed under the broadest reasonable interpretation of the
claim
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fukushima (US20170058174A1).
Regarding Claim 1, Fukushima discloses a refrigeration cycle device [refrigeration cycle system 10, Figure 1] for a vehicle [where the heat cycle system is an automobile air conditioning system; 0143], comprising:
a refrigerant circuit [where fluid A-D cycles through refrigerant cycle system 10, Figure 1; 0150] that includes a compressor[compressor 11, Figure 1], a condenser [condenser 12, Figure 1], a decompressor [an expansion valve 13, Figure 1], and an evaporator [evaporator 14, Figure 1]; and
a refrigerant [working fluid; 0158] that is sealed in the refrigerant circuit [where refrigerant cycle system 10 is a closed loop, Figure 1;0158-0160] and that contains at least 1,2 difluoroethylene [where the working fluid is a mixed fluid comprising HFO-1132, Figure 1; 0158].
Claim 4 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Minor (US20150121873A1).
Regarding Claim 4, Minor discloses a refrigeration cycle device [where the heat transfer composition is a refrigerant in a cycle where the fluid undergoes phase change; 0046] for a vehicle [where the heat source may be a passenger compartment of an automobile requiring air conditioning; 0016;0020], comprising:
a refrigerant circuit [0046] that includes a compressor, a condenser, a decompressor, and an evaporator [where vapor-compression refrigeration, air-conditioning, or heat pump systems include an evaporator, a compressor, a condenser, and an expansion device; 0134]; and
a refrigerant [a composition for heat transfer; 0133;0134] that is sealed in the refrigerant circuit [where the composition is provided to a mobile air conditioning unit; 0020;0133] and that contains at least HFO- 1132(E) and HFO-1234yf [where the composition comprises E-1,2-difluoroethylene and 2,3,3,3-tetrafluoropropen, referred to as E-HFO-1132a/HFO-1234yf in Table 1; 0126].
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.
Claims 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Minor (US20150121873A1).
Regarding Claim 5, Minor teaches the invention of claim 4 and further teaches where the refrigerant [a composition for heat transfer; 0133;0134] comprises HFO-1132(E) and HFO-1234yf [where the composition comprises E-1,2-difluoroethylene and 2,3,3,3-tetrafluoropropen, referred to as E-HFO-1132a/HFO-1234yf in Table 1; 0126].
Minor does not teach a content rate of HFO-1132(E) is 31.1 to 39.8 mass% and a content rate of HFO- 1234yf is 68.9 to 60.2 mass%, based on a total mass of HFO-1132(E) and HFO-1234yf.
However, Minor teaches a composition comprising HFO-1132(E) and HFO- 1234yf [0045] where HFO-1132(E) may be between 1 and 99 percent weight percent of the composition and HFO- 1234yf may be between 1 and 99 weight percent of the composition [E-HFO-1132a/HFO-1234yf, Table 1] where the claimed content rates would have been obvious to one of ordinary skill in the art through routine experimentation in an effort to optimize efficiency and capacity [see columns COP and Cap of E-HFO-1132a/HFO-1234yf, Table 4] taking into consideration condenser temperature, evaporator temperature, subcool temperature, return gas temperature, and compressor efficiency.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the assembly of Minor to have where a content rate of HFO-1132(E) is 31.1 to 39.8 mass% and a content rate of HFO- 1234yf is 68.9 to 60.2 mass%, based on a total mass of HFO-1132(E) and HFO-1234yf in view of the teachings of Minor where the modification constitutes routine optimization of a known result-effective variable to achieve a recognized result, i.e., optimizing coefficient of performance relative to a refrigerant to be replaced [Minor, see columns COP relative to R22 and Cap relative to R22 of E-HFO-1132a/HFO-1234yf, Table 4].
Regarding Claim 6, Minor teaches the invention of claim 4 and does not teach where the refrigerant comprises a content rate of HFO- 1132(E) is 31.1 to 37.9 mass% and a content rate of HFO-1234yf is 68.9 to 62.1 mass%, based on a total mass of HFO-1132(E) and HFO-1234yf.
However, Minor teaches a composition comprising HFO-1132(E) and HFO- 1234yf [0045] where HFO-1132(E) may be between 1 and 99 percent weight percent of the composition and HFO- 1234yf may be between 1 and 99 weight percent of the composition [E-HFO-1132a/HFO-1234yf, Table 1] where the claimed content rates would have been obvious to one of ordinary skill in the art through routine experimentation in an effort to optimize efficiency and capacity [see columns COP and Cap of E-HFO-1132a/HFO-1234yf, Table 4] taking into consideration condenser temperature, evaporator temperature, subcool temperature, return gas temperature, and compressor efficiency.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the assembly of Minor to have where a content rate of HFO- 1132(E) is 31.1 to 37.9 mass% and a content rate of HFO-1234yf is 68.9 to 62.1 mass%, based on a total mass of HFO-1132(E) and HFO-1234yf in view of the teachings of Minor where the modification constitutes routine optimization of a known result-effective variable to achieve a recognized result, i.e., optimizing coefficient of performance relative to a refrigerant to be replaced [Minor, see columns COP relative to R22 and Cap relative to R22 of E-HFO-1132a/HFO-1234yf, Table 4].
Regarding Claim 7, Minor teaches the invention of claim 4 and further teaches where the refrigerant [a composition for heat transfer; 0133;0134] comprises HFO-1132(E) and HFO-1234yf [where the composition comprises E-1,2-difluoroethylene and 2,3,3,3-tetrafluoropropen, referred to as E-HFO-1132a/HFO-1234yf in Table 1; 0126].
Minor does not teach a content rate of HFO-1132(E) is 21.0 to 28.4 mass% and a content rate of HFO- 1234yf is 79.0 to 71.6 mass%, based on a total mass of HFO-1132(E) and HFO-1234yf.
However, Minor teaches a composition comprising HFO-1132(E) and HFO- 1234yf [0045] where HFO-1132(E) may be between 1 and 99 percent weight percent of the composition and HFO- 1234yf may be between 1 and 99 weight percent of the composition [E-HFO-1132a/HFO-1234yf, Table 1] where the claimed content rates would have been obvious to one of ordinary skill in the art through routine experimentation in an effort to optimize efficiency and capacity [see columns COP and Cap of E-HFO-1132a/HFO-1234yf, Table 4] taking into consideration condenser temperature, evaporator temperature, subcool temperature, return gas temperature, and compressor efficiency.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the assembly of Minor to have where a content rate of HFO-1132(E) is 21.0 to 28.4 mass% and a content rate of HFO- 1234yf is 79.0 to 71.6 mass%, based on a total mass of HFO-1132(E) and HFO-1234yf in view of the teachings of Minor where the modification constitutes routine optimization of a known result-effective variable to achieve a recognized result, i.e., optimizing coefficient of performance relative to a refrigerant to be replaced [Minor, see columns COP relative to R22 and Cap relative to R22 of E-HFO-1132a/HFO-1234yf, Table 4].
Regarding Claim 8, Minor teaches the invention of claim 4 and further teaches where the refrigerant [a composition for heat transfer; 0133;0134] comprises HFO-1132(E) and HFO-1234yf [where the composition comprises E-1,2-difluoroethylene and 2,3,3,3-tetrafluoropropen, referred to as E-HFO-1132a/HFO-1234yf in Table 1; 0126] and the apparatus is in-car air conditioning equipment [where the heat source may be a passenger compartment of an automobile requiring air conditioning; 0016;0020].
Minor does not teach a content rate of HFO-1132(E) is 12.1 to 72.0 mass% and a content rate of HFO- 1234yf is 87.9 to 28.0 mass%, based on a total mass of HFO-1132(E) and HFO-1234yf.
However, Minor teaches a composition comprising HFO-1132(E) and HFO- 1234yf [0045] where HFO-1132(E) may be between 1 and 99 percent weight percent of the composition and HFO- 1234yf may be between 1 and 99 weight percent of the composition [E-HFO-1132a/HFO-1234yf, Table 1] where the claimed content rates would have been obvious to one of ordinary skill in the art through routine experimentation in an effort to optimize efficiency and capacity [see columns COP and Cap of E-HFO-1132a/HFO-1234yf, Table 4] taking into consideration condenser temperature, evaporator temperature, subcool temperature, return gas temperature, and compressor efficiency.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the assembly of Minor to have where a content rate of HFO-1132(E) is 12.1 to 72.0 mass% and a content rate of HFO- 1234yf is 87.9 to 28.0 mass%, based on a total mass of HFO-1132(E) and HFO-1234yf in view of the teachings of Minor where the modification constitutes routine optimization of a known result-effective variable to achieve a recognized result, i.e., optimizing coefficient of performance relative to a refrigerant to be replaced [Minor, see columns COP relative to R22 and Cap relative to R22 of E-HFO-1132a/HFO-1234yf, Table 4].
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima (US20170058174A1).
Regarding Claim 2, Fukushima teaches the invention of claim 1 and further teaches where the refrigerant [composition for a heat cycle system; 0021;0022] contains CO2 [where an optional component is carbon dioxide; 0049], trans-1,2-difluoroethylene (HFO-1132(E)) [where HFO-1132 is a mixture of HFO-1132(E) and HFO-1132(Z) or pure HFO-1132(E); 0182;0183, Table 2], difluoromethane (R32), and 2,3,3,3-tetrafluoro-1-propene (R1234yf) [where the working fluid of the present invention may be a combination of HFO-1132, HFC-32 and HFO-1234yf, Table 2; 0045].
Fukushima does not teach where when the mass% of CO2, R32, HFO-1132(E), and R1234yf based on their sum in the refrigerant is respectively represented by w, x, y, and z,
if 0<w ≤1.2, coordinates (x,y,z) in a ternary composition diagram in which the sum of R32, HFO- 1132(E), and R1234yf is (100-w) mass% are within the range of a figure surrounded by curve IJ, curve JK, curve KL, straight line LB", straight line B"D, straight line DC, and straight line CI that connect the following 7 points or on these line segments (excluding points on straight line B"D and straight line CI):
point I (0.0, 72.0, 28.0-w)
point J (18.3, 48.5, 33.2-w)
point K (36.8, 35.6, 27.6-w)
point L (51.7, 28.9, 19.4-w) point B" (-1.5278w2+2.75w+50.5, 0.0, 1.5278w2 -3.75w+49.5)
point D (-2.9167w+40.317, 0.0, 1.9167w+59.683)
point C (0.0, -4.9167w+58.317, 3.9167w+41.683);
if 1.2<w ≤4.0, coordinates (x,y,z) in the ternary composition diagram are within the range of a figure surrounded by curve IJ, curve JK, curve KL, straight line LB", straight line B"D, straight line DC, and straight line CI that connect the following 7 points or on these line segments (excluding the points on straight line B"D and straight line CI):
point I (0.0, 72.0, 28.0-w)
point J (18.3, 48.5, 33.2-w)
point K (36.8, 35.6, 27.6-w)
point L (51.7, 28.9, 19.4-w)
point B" (51.6, 0.0, 48.4-w)
point D (-2.8226w+40.211, 0.0, 1.8226w+59.789)
point C (0.0, 0.1081w2 -5.169w+58.447, -0.1081w2+4. 1 69w+41.553); and
if 4.0<w ≤7.0, coordinates (x,y,z) in the ternary composition diagram are within the range of a figure surrounded by curve IJ, curve JK, curve KL, straight line LB", straight line B"D, straight line DC, and straight-line CI that connect the following 7 points or on these line segments (excluding points on straight line B"D and straight line CI):
point I (0.0, 72.0, 28.0-w)
point J (18.3, 48.5, 33.2-w)
point K (36.8, 35.6, 27.6-w)
point L (51.7, 28.9, 19.4-w)
point B" (51.6, 0.0, 48.4-w)
point D (-2.8w+40.1, 0.0, 1.8w+59.9)
point C (0.0, 0.0667w2 -4.9667w+58.3, -0.0667w2 +3.9667w+41.7), and curve IJ is represented by coordinates (x, 0.0236x2- 1.716x+72, -0.0236x2+0.716x+28-w),curve JK is represented by coordinates (x, 0.0095x2 -1.2222x+67.676, - 0.0095x2 +0.2222x+32.324-w), and curve KL is represented by coordinates (x, 0.0049x2 -0.8842x+61.488, - 0.0049x2 -0.1158x+38.512).
However, Fukushima teaches HFO-1132 content is 20-80 mass percent, HFC-32 is 10-75 mass percent, and HFO-1234yf is 5-60 mass percent [0046;0047;0048; where HFO-1132 may be pure HFO-1132(E); Table 2] where one of ordinary skill in the art would have been capable of applying routine optimization of a known result effective variable, weight-percent compositions, to achieve a recognized result such that the content of HFO-1132 would fall within the claimed range of the ternary composition diagram [for example, where CO2 is mass percent of the composition, HFO-1132(E) is 40 mass percent, HFC-32 is 20 percent, and R1234yf is 40 mass percent minus 1.3 mass percent, see annotated Figure 1o of Applicant Drawings below].
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the assembly of Fukushima to have the composition with the ranges as claimed in view of the teachings of Fukushima where the modification constitutes routine optimization of a known result-effective variable to achieve a recognized result, i.e., reducing influence over global warming while providing high cycle performance, in which the working fluid for heat cycle is stabilized, and which is efficiently operated [Fukushima, 0014].
Regarding Claim 3, Fukushima teaches the invention of claim 1 and further teaches where the refrigerant [composition for a heat cycle system; 0021;0022] contains CO2 [where an optional component is carbon dioxide; 0049], trans-1,2-difluoroethylene (HFO-1132(E)) [where HFO-1132 is a mixture of HFO-1132(E) and HFO-1132(Z); 0182;0183], difluoromethane (R32), and 2,3,3,3-tetrafluoro-1-propene (R1234yf) [where the working fluid of the present invention may be a combination of HFO-1132, HFC-32 and HFO-1234yf, Table 2; 0045].
Fukushima does not explicitly teach the ternary diagram wherein when the mass% of CO2, R32, HFO-1132(E), and R1234yf based on their sum in the refrigerant is respectively represented by w, x, y, and z,
if 0<w ≤1.2, coordinates (x,y,z) in a ternary composition diagram in which the sum of R32, HFO-1132(E), and R1234yf is (100-w) mass% are within the range of a figure surrounded by curve IJ, curve JK, straight line KF, straight line FC, and straight line CI that connect the following 5 points or on these line segments (excluding points on straight line CI):
point I (0.0, 72.0, 28.0-w)
point J (18.3, 48.5, 33.2-w)
point K (36.8, 35.6, 27.6-w)
point F (-0.0833w+36.717, -4.0833w+5.1833, 3.1666w+58.0997)
point C (0.0, -4.9167w+58.317, 3.9167w+41.683);
if 1.2<w ≤1.3, coordinates (x,y,z) in the ternary composition diagram are within the range of a figure surrounded by curve IJ, curve JK, straight line KF, straight line FC, and straight line CI that connect the following 5 points or on these line segments (excluding points on straight line CI):
point I (0.0, 72.0, 28.0-w)
point J (18.3, 48.5, 33.2-w)
point K (36.8, 35.6, 27.6-w)
point F (36.6, -3w+3.9, 2w+59.5)
point C (0.0, 0.1081w2 -5.169w+58.447, -0.1081w2+4.169w+41.553);
if 1.3<w ≤4.0, coordinates (x,y,z) in the ternary composition diagram are within the range of a figure surrounded by curve IJ, curve JK, straight line KB', straight line B'D, straight line DC, and straight line CI that connect the following 6 points or on these line segments (excluding points on straight line CI):
point I (0.0, 72.0, 28.0-w)
point J (18.3, 48.5, 33.2-w) point K (36.8, 35.6, 27.6-w)
point B'(36.6, 0.0, -w+63.4)
point D (-2.8226w+40.211, 0.0, 1.8226w+59.789)
point C (0.0, 0.1081w2 -5.169w+58.447, -0.1081w2+4.169w+41.553); and
if 4.0<w ≤7.0, coordinates (x, y, z) in the ternary composition diagram are within the range of a figure surrounded by curve IJ, curve JK, straight line KB', straight line B'D, straight line DC, and straight line CI that connect the following 6 points or on these line segments (excluding points on straight line CI):
point I (0.0, 72.0, 28.0-w)
point J (18.3, 48.5, 33.2-w)
point K (36.8, 35.6, 27.6-w)
point B' (36.6, 0.0, -w+63.4)
point D (-2.8w+40.1, 0.0, 1.8w+59.9)
point C (0.0, 0.0667w2 -4.9667w+58.3, -0.0667w2+3.9667w+41.7), and curve IJ is represented by coordinates (x, 0.0236x2 -1.716x+72, - 0.0236x2 +0.716x+28-w), and curve JK is represented by coordinates (x, 0.0095x2 -1.2222x+67.676, - 0.0095x2 +0.2222x+32.324-w).
However, Fukushima teaches HFO-1132 content is 20-80 mass percent, HFC-32 is 10-75 mass percent, and HFO-1234yf is 5-60 mass percent [0046;0047;0048; where HFO-1132 may be pure HFO-1132(E); Table 2] where one of ordinary skill in the art would have been capable of applying routine optimization of a known result effective variable, weight-percent compositions, to achieve a recognized result such that the content of HFO-1132 would fall within the claimed range of the ternary composition diagram [for example, where CO2 is mass percent of the composition, HFO-1132(E) is 40 mass percent, HFC-32 is 20 percent, and R1234yf is 40 mass percent minus 1.3 mass percent, see annotated Figure 1o of Applicant Drawings below].
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the assembly of Fukushima to have the composition with the ranges as claimed in view of the teachings of Fukushima where the modification constitutes routine optimization of a known result-effective variable to achieve a recognized result, i.e., reducing influence over global warming while providing high cycle performance, in which the working fluid for heat cycle is stabilized, and which is efficiently operated [Fukushima, 0014].
PNG
media_image1.png
667
776
media_image1.png
Greyscale
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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/431360 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-7 anticipate claims 1-8 of the instant application. Although claim 1 of the instant application recites “a refrigeration cycle device for a vehicle” and claim 1 of the copending application recites “a refrigerant cycle apparatus for freezing or cold storage…” the limitations are drawn toward the intended use or manner of operating the claimed apparatus. The courts have held that: (1) "apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), and (2) a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP § 2114.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shah (Shah, R. “Automotive Air-Conditioning Systems—Historical Developments, the State of Technology, and Future Trends”, Aug 2009, Heat Transfer Engineering , [retrieved on 11/72025]. Retrieved from Internet <https://doi.org/10.1080/01457630802678193>.) where Shah discusses automotive air conditioning and refrigerant history from the inception of the A/C system and next generation refrigerants having no ozone depletion potential in the stratosphere and global warming potential less than 150.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEONA LAUREN BANKS whose telephone number is (571)270-0426. The examiner can normally be reached Mon-Fri 8:30- 6:00 EST.
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, Jerry-Daryl Fletcher can be reached at 5712705054. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KEONA LAUREN BANKS/Examiner, Art Unit 3763
/ELIZABETH J MARTIN/Primary Examiner, Art Unit 3763
Prosecution Insights