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 .
Election/Restrictions
Applicant’s election without traverse of Species A in the reply filed on 8/7/2026 is acknowledged.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
The following limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses means or a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the means or generic placeholder is not preceded by a structural modifier.
“decompressing portion” includes the generic/nonce term “portion” coupled with the function of “decompressing”. A return to the specification provides an expansion valve (page 286) Therefor the limitation is interpreted as the same or equivalents thereof.
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 and 4-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 8, and 13 of U.S. Patent No. 12,650,250. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims include overlapping ranges of the %mass of the refrigerants with the ranges of the instant claims.
Claims 1 and 4-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,584,055. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims include overlapping ranges of the %mass of the refrigerants with the ranges of the instant claims.
Claims 1 and 4-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,270,575. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims include overlapping ranges of the %mass of the refrigerants with the ranges of the instant claims.
Claims 1 and 4-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,906,207. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims include overlapping ranges of the %mass of the refrigerants with the ranges of the instant claims.
Claims 1 and 4-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 11-12 of U.S. Patent No. 11,834,601. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims include overlapping ranges of the %mass of the refrigerants with the ranges of the instant claims.
Claims 1 and 4-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,820,933. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims include overlapping ranges of the %mass of the refrigerants with the ranges of the instant claims.
Claims 1 and 4-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11,549,041. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims include overlapping ranges of the %mass of the refrigerants with the ranges of the instant claims.
Claims 1 and 4-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11,549,695. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims include overlapping ranges of the %mass of the refrigerants with the ranges of the instant claims.
Claims 1 and 4-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,535,781. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims include overlapping ranges of the %mass of the refrigerants with the ranges of the instant claims.
Claims 1 and 4-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11,525,076. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims include overlapping ranges of the %mass of the refrigerants with the ranges of the instant claims.
Claims 1 and 4-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,506,425. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims include overlapping ranges of the %mass of the refrigerants with the ranges of the instant claims.
Claims 1 and 4-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11,492,527. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims include overlapping ranges of the %mass of the refrigerants with the ranges of the instant claims.
Claims 1 and 4-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7-10 of U.S. Patent No. 11,493,244. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims include overlapping ranges of the %mass of the refrigerants with the ranges of the instant claims.
Claims 1 and 4-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,5,9,13, and17 of U.S. Patent No. 11,441,819. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims include overlapping ranges of the %mass of the refrigerants with the ranges of the instant claims.
Claims 1 and 4-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 11-18 of U.S. Patent No. 11,435,118. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims include overlapping ranges of the %mass of the refrigerants with the ranges of the instant claims.
Claims 1 and 4-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11,365,335. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims include overlapping ranges of the %mass of the refrigerants with the ranges of the instant claims.
Claims 1 and 4-7 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2of copending Application No. 17/887125 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims include overlapping ranges of the %mass of the refrigerants with the ranges of the instant claims. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 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.
Claims 2 and 3 each recite “if” in regard to an amount of component w, CO2. However, there is no requirement that “w” must be within any of said ranges. The limitation is contingent. MPEP 2111.04. For example, a composition including CO2, HFO-1132(E), R32, and R1234yf having a CO2 mass% of 8.0 and the other three constituents present in any value would satisfy the claim as none of the contingencies are triggered and all of the positively recited components are present. Because it is unclear if any of the ranges of the ternary diagrams are necessarily required, the scope of the claims are unclear.
Claims 2 and 3 provide a plurality of parenthetical limitations, e.g. “(excluding points on straight line B”D and straight line CI)” which call into question whether the limitations within the parentheticals are required by the claim. The examiner suggests removing the parenthesis.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 4-5, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fukushima et al (US 2016/0333243).
Regarding claim 1, Fukushima discloses a refrigerant cycle apparatus for freezing or cold storage comprising:
a refrigerant circuit including a compressor (11), a radiator (12), a decompressing portion (13), and a heat absorber (14); and
a refrigerant enclosed in the refrigerant circuit containing at least 1,2-difluorothylene (HFO-1132(E) of table 11 at page 13).
Regarding claim 4, Fukushima discloses a refrigerant cycle apparatus for freezing or cold storage comprising:
a refrigerant circuit including a compressor (11), a radiator (12), a decompressing portion (13), and a heat absorber (14); and
a refrigerant enclosed in the refrigerant circuit, wherein the refrigerant comprises trans-1,2-difluoroethylene (HFO-1132 (E)) and 2,3,3,3- tetrafluoropropene (HFO-1234yf) (table 11 at page 13), and
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 (example 29 at table 11 provides 20% mass HFO-1132(E) and 40% mass HFO-1234yf out of 100% total mass thus of only those two constituents they are in a ratio of 1/3 to 2/3 or 33% and 66% which provides a specific example in the claimed range).
Regarding claim 5, Fukushima discloses 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 (example 29 at table 11 provides 20% mass HFO-1132(E) and 40% mass HFO-1234yf out of 100% total mass thus of only those two constituents they are in a ratio of 1/3 to 2/3 or 33% and 66% which provides a specific example in the claimed range).
Regarding claim 7, Fukushima discloses a refrigerant cycle apparatus for freezing or cold storage comprising:
a refrigerant circuit including a compressor (11), a radiator (12), a decompressing portion (13), and a heat absorber (14); and
a refrigerant enclosed in the refrigerant circuit, wherein the refrigerant comprises trans-1,2-difluoroethylene (HFO-1132 (E)) and 2,3,3,3- tetrafluoropropene (HFO-1234yf) (table 11 at page 13), and
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 (example 29 at table 11 provides 20% mass HFO-1132(E) and 40% mass HFO-1234yf out of 100% total mass thus of only those two constituents they are in a ratio of 1/3 to 2/3 or 33% and 66% which provides a specific example in the claimed range)..
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.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima et al (US 2016/0333243).
Regarding claim 6, Fukushima discloses a refrigerant cycle apparatus for freezing or cold storage comprising:
a refrigerant circuit including a compressor (11), a radiator (12), a decompressing portion (13), and a heat absorber (14); and
a refrigerant enclosed in the refrigerant circuit, wherein the refrigerant comprises trans-1,2-difluoroethylene (HFO-1132 (E)) and 2,3,3,3- tetrafluoropropene (HFO-1234yf) (table 11 at page 13).
Fukushima lacks 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.
It has been held that the optimization of a result-effective variable is obvious. In this instance each constituent component provides for different properties, e.g. combustion lower limit, self-decomposition, relative pressure, or cycle performance (provided in tables 2 and 3). Therefor because the relative weight of HFO-1132(E) and HFO-1234yf is recognized as effecting the result of combustion lower limit, self-decomposition, relative pressure, or cycle performance; the value of 21.0 to 28.4 mass% HFO-1132(E) and 79.0 to 71.6 mass% HFO-1234yf is not a product of innovation but of ordinary skill and is obvious.
Claim(s) 2 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima et al (US 2016/0333243) in view of Low (GB 2566809).
Regarding claims 2 and 3, Fukushima further discloses the refrigerant containers, trans-1,2-difluoroethylene (HF)-1132(E)), difluoromethane (R32), and 2,3,3,3-tetrafluoro-1-propene (R1234yf) (examples shown in table 11).
Fukushima lacks providing CO2 to the refrigerant composition. Low discloses a refrigerant composition including difluoro ethylene, difluoroethane, and tetrafluoropropene (page 3, lines 5-7) and CO2 (page 3, line 8). It would have been obvious to one of ordinary skill in the art to have provided Fukushima with CO2 refrigerant, in the amount of 0-7.0 mass%, in order to reduce flammability.
Further regarding the %mass of trans-1,2-difluoroethylene (HF)-1132(E)), difluoromethane (R32), and 2,3,3,3-tetrafluoro-1-propene (R1234yf); in one sense the examples provided in table 11 include specific examples in the claimed range, but in another sense said ranges are not contingent on an amount of CO2. However, it has been held that the optimization of a result-effective variable is obvious. In this instance each constituent component provides for different properties, e.g. combustion lower limit, self-decomposition, relative pressure, or cycle performance (provided in tables 2 and 3). Therefor because the relative weight of HFO-1132(E), R32, and HFO-1234yf is recognized as effecting the result of combustion lower limit, self-decomposition, relative pressure, or cycle performance; the claimed values are not a product of innovation but of ordinary skill and are obvious.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ueno et al (US 10,380,518) optionally includes CO2 in refrigerant composition.
Singh et al (US 8,053,404) tetrafluopropene and CO2 refrigerants
Singh et al (US 2007/0007488) adding CO2 to the cycle.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER R ZERPHEY whose telephone number is (571)272-5965. The examiner can normally be reached M-F 7:00-4:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jianying Atkisson can be reached at 5712707740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER R ZERPHEY/Primary Examiner, Art Unit 3799
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