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 .
Status of Claims
The Office Action is in response to the remarks and amendments filed on 3/4/2025. The objections to the specification have been withdrawn in light of the amendments filed. Claims 2, 3, and 5-8 are cancelled. The rejections pursuant to 35 U.S.C. 112(b) have maintained in light of the amendments. The provisional nonstatutory double patenting rejection is withdrawn. Accordingly, claims 1 and 4 are pending for consideration in this Office Action.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/02/2025 and 3/04/2026 was filed after the mailing date of the Non-Final office action on 11/17/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the point F as recited in claim 1 must be shown or the feature(s) canceled from the claim(s). In particular point F is not clearly marked on the ternary diagrams Fig. 1M and Fig. 1N or the drawing is not legible to where point F is plotted. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 1 is 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 1, 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 1 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.
Further Regarding Claim 1, 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 1 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 § 102/103
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 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.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over 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 (10) 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 (10) [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] where the refrigerant contains CO2, [where the composition may contain carbon dioxide; 0049; 0059] trans-1,2-difluoroethylene (HFO-1132(E)), difluoromethane (R32), and 2,3,3,3-tetrafluoro-1-propene (R1234yf) [where the working fluid preferably comprises HFO-1132, HFC-32 and HFO-1234yf, and the proportions of the respective compounds based on the entire amount of the working fluid;0045-0048]; and
Fukushima teaches mass% ranges for each of the four components and teaches adjustment thereof as needed/desired to obtain a composition for a heat cycle system containing HFO-1132 with a more stabilized working fluid, low global warming potential and excellent cycle performance [0013;0026;0033;0042;0049]. Fukushima teaches ranges including an embodiment of 0 mass %≦HFO-1132≦80 mass %, 10 mass %≦HFC-32≦75 mass, 5 mass % ≦ HFO-1234yf ≦60 mass % [0045-0048], where total content of additional optional carbon dioxide in the working fluid is less than 10 mass % [0059].
While Fukushima does not obscure the amounts necessary for obtaining a suitable refrigerant composition by recitation of the ‘diagrams’ claimed, it is held that the amounts taught by Fukushima anticipate the diagram recitations absent objective evidence to the contrary (MPEP 2112.01).
In the alternative, Fukushima teaches that the ranges of each component may be adjusted as needed in order to obtain a composition for a heat cycle system containing a refrigerant containing HFO-1132 with a more stabilized working fluid, low global warming potential and excellent cycle performance [0013;0026;0033;0042;0049]. Not disclosed is the ‘diagram’ recitations as claimed. However, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicant’s claims patentable in the absence of unexpected results (see:In re Aller, 105 USPQ 233; and MPEP 2144.05). At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of each of the respective four components and arrive at the instant invention with a reasonable expectation of success, and would have been motivated to do so in order to obtain a composition for a heat cycle system containing HFO-1132 with a more stabilized working fluid, low global warming potential and excellent cycle performance [0013;0026;0033;0042;0049]. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good (see In re Boesch and Slaney, 205 USPQ 215).
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 18/431,360 (reference application).
The reference application is not identical to the instant application because the instant application recites “a refrigeration cycle device for a vehicle” comprising a “a condenser, a decompressor, and an evaporator” whereas the reference application recites “a refrigerant cycle apparatus for freezing or cold storage” comprising “a radiator, a decompressing portion, and a heat absorber” but is not patentably distinct because “s refrigeration cycle device for a vehicle” and “a refrigerant cycle apparatus for freezing or cold storage” are drawn toward the intended use or manner of operating the claimed apparatus. The courts have held that: (1) “apparatus claims clover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2s 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 prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) MPEP 2114.
Further, the reference application uses the term “radiator” interchangeably with the term “condenser”, see the reference signs list of 0914 of reference application, and one of ordinary skill in the art would understand “decompressing portion” and “decompressor” are equivalent valve structures, see reference signs list 0914 of reference application and 1270 of Applicant Specification. One of ordinary skill in the art would understand a “heat absorber” is equivalent to an “evaporator” where the reference application uses the term “evaporator” and “heat absorber” interchangeably, see the reference signs list of 0914 of reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claim 4 is allowed.
The following is an examiner’s statement of reasons for allowance:
Regarding Claim 4, the subject matter which is considered to distinguish from the closest prior art of record, Minor (US20150121873A1), where 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 (10) [0046; 0017] 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 that is sealed in the refrigerant circuit (10) 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 8] including the refrigerant compositions comprising HFO-1132(E) and HFO-1234yf [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; Table 1] and the apparatus is in-car air conditioning equipment [where the present disclosure relates to compositions for use in mobile air conditioning systems; 0006] but does not specifically preferred or narrow ranges overlapping with the content rates of (1) to (4) where the content rate of refrigerant other than HFO-1132(E) and HFO-1234yf on the total mass of refrigerant is 0.5 mass % or less.
Therefore, it would not be obvious to modify the technique of the prior art structures to have the apparatus as claimed without improper hindsight and independent claim 4 is considered allowable.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s arguments, see page 12 of remarks filed 03/04/2026, with respect to amended claim 4 have been fully considered and are persuasive. The 35 U.S.C 102 rejection of claim 4 has been withdrawn.
Applicant's arguments filed 3/04/2026 regarding rejections under 35 U.S.C. 112(b) have been fully considered but they are not persuasive.
On page 11 of the remarks filed 3/04/2026, Applicant argues in regards to claims 2-3 rejected under 35 U.S.C. 112(b), that the clauses beginning with “if” define the claimed composition rather than merely providing conditional requirements and thus the underlying basis for the rejections are untenable. Applicant’s arguments have been fully considered but they are not persuasive. In particular, the claim requires a composition of trans-1,2-difluoroethylene (HFO-1132(E)), difluoromethane (R32), and 2,3,3,3-tetrafluoro-1-propene (R1234yf) within a range as represented by the referenced ternary composition diagram under a condition of a mass% of CO2 but does not require a composition of CO2. Therefore, when CO2 is beyond the recited ranges (e.g. if 0<w<=1.2, if 1.2<w<=4.0, if 4.0<w<=7.0) the content of HFO-1132(E), R32 and R1234yf may be broadly interpreted. The use of “if” renders the claim unclear because “if” statements are provided to introduce a list of alternatives without requiring the basis for the alternatives. The Examiner suggests amending “if” to -- when --. Accordingly, the rejections of record are considered proper and remain.
Applicant's arguments filed 3/04/2026 regarding rejection under 35 U.S.C. 102 and 103 in view of Fukushima have been fully considered but they are not persuasive.
On pages 12-15, Applicant argues in regards to the rejection of claim 1, where claim 1 has been amended to incorporate the subject matter of claims 2 and 3, that the rejection is based upon improper hindsight because a roundabout selection of elements from Fukushima together with subsequent optimization is unreasonable and an impermissible hindsight reconstruction of the claims.
Applicant argues that there is no motivation to optimize each member of a four-component composition in order to arrive to refrigerant composition as claimed because the rejection suggests very specific selections of mainly optional compositions where neither of the components are disclosed by Fukushima to provide benefits that would motivate one skilled in the art to perform optimization. Applicant’s arguments have been fully considered and are not persuasive.
Fukushima clearly teaches preferred and narrow ranges of each of the of the refrigerants of the composition: HFO-1132(E), R32 (referred to as HFC-32), R1234yf (referred to as HFO-1234yf), and CO2 . Fukushima teaches where HFO-1132, where HFO-1132(E) may be used alone, have improved coefficient of performance and refrigerating capacity relative to R410A, 0024 and Table 1 of Fukushima. Fukushima teaches an HFC may, for example, be preferably HFC-32 in view of less influence over the ozone layer and excellent refrigerating cycle performance, see 0031-0034 of Fukushima. Fukushima further teaches the coefficient of performance will improve with an HFO-1234yf, see 0043 of Fukushima.
Regarding selecting a combination of HFO1132(E), HFC-32 and HFO-1234yf, Fukushima teaches preferred content rates where the working fluid preferably comprises HFO-1132, HFC-32 and HFO-1234yf, in 0045-0048, suggesting simultaneous optimization of the content of at least the three components by one of ordinary skill in the art before the effective filing date. In addition to the working fluid above, Fukushima teaches an optional additional component CO2, where the component preferably has less influence over the ozone layer and less influence over global warming, 0049 of Fukushima, and teaches a content amount where in a case where the working fluid to be used for the composition for a heat cycle system of the present invention contains the above optional component, the total content of such optional components in the working fluid is less than 10 mass %, preferably at most 8 mass %, more preferably at most 5 mass % per 100 mass % of the working fluid, see 0059 of Fukushima.
Although an exemplary composition is picked from a large range (similar to picking something from a large list), the claimed compositions would have been obvious because the prior art teaches the same composition where the preferred content ranges of the composition overlap the claimed regions, see annotated Figure 1o of applicant drawings above. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Accordingly, the rejections of record are considered proper and remain.
Applicant's arguments filed 3/04/2026 regarding the provisional non statutory double patenting rejection on page 15 have been fully considered and are not persuasive.
Applicant argues the present claims are structurally different from the claims of the reference application because the present claim 1 recites a radiator instead of a condenser. Applicant’s arguments have been fully considered are not persuasive. In particular, one of ordinary skill in the art would understand a radiator is an equivalent structure to a condenser where the reference application uses the term “radiator” interchangeably with the term “condenser”, see the reference signs list of 0914 of reference application.
Accordingly, the rejections of record are considered proper and remain.
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.
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.
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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.
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/KEONA LAUREN BANKS/Examiner, Art Unit 3763
/ELIZABETH J MARTIN/Primary Examiner, Art Unit 3763
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