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 .
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 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.
Claims 1-6 and 14-21 are rejected under pre-AIA 35 U.S.C. 102 (a)(1) as
being anticipated by Minor et al. (US 2010/0122545).
In regards to claim 1, Minor discloses a heat transfer composition (refer to par. 25)
comprising:
(i) trans-1,3,3,3-tetrafluoropropene (R- 1234ze(E)), (refer to pars. 71 and 80);
(ii) a second component selected from difluoromethane (R-32), (refer to pars. 71 and
80); (iii) a third component selected from pentafluoroethane (R-125), and/or 1,1,1,2-
tetrafluoroethane (R-34a), (refer to pars. 71 and 80); and (iv) a fourth component
selected from fluoroethane (R-161).
In regards to claim 2, Minor meets the claim limitations as disclosed above in the rejection of claim 1. Further, Minor teaches comprising from about 5 to about 50 % by weight of R-1234ze(E) (refer to page 14 par. 212; Table 5 for % by weight of R-1234ze(E)).
In regards to claim 3, Minor meets the claim limitations as disclosed above in the rejection of claim 1. Further, Minor teaches comprising from about 10 to about 40% by weight of the second component (refer to page 14 par. 212; Table 5 for % by weight of second component or (R-32)).
In regards to claim 4, Minor meets the claim limitations as disclosed above in the rejection of claim 1. Further, Minor teaches comprising from about 10 to about 80 % by weight of the third component (refer to page 14 par. 212; Table 5 for % by weight of third component or (R-125)).
In regards to claim 5, Minor meets the claim limitations as disclosed above in the rejection of claim 1. Further, Minor teaches wherein the second component comprises R-32 (refer to pars. 71 and 80).
In regards to claim 6, Minor meets the claim limitations as disclosed above in the rejection of claim 1. Further, Minor teaches wherein the third component is R-125 and R-134a (refer to pars. 71 and 80).
In regards to claim 14, Minor meets the claim limitations as disclosed above in the rejection of claim 1. Further, Minor teaches wherein the composition has a GWP of less than 2800, less than 1500 (refer to page 14 par. 212; Table 5 for composition having a GWP of less than 2800, preferably less than 1500; also par 155).
In regards to claim 15, Minor meets the claim limitations as disclosed above in the rejection of claim 1. Further, Minor teaches wherein the temperature glide is less than about 15k less than about 10k (refer to page 17 par. 225; Table 10 for the temperature glide is less than about 15k, preferably less than about 10k).
In regards to claim 16, Minor meets the claim limitations as disclosed above in the rejection of claim 21. Further, Minor teaches wherein the composition has a volumetric refrigeration capacity within about 15% within about 10% of the existing refrigerant that the composition is intended to replace (refer to par. 216).
In regards to claim 17, Minor meets the claim limitations as disclosed above in the rejection of claim 1. Further, Minor teaches wherein the composition is less flammable than R-32 alone (refer to par. 94 for non-flammable).
In regards to claim 18, Minor meets the claim limitations as disclosed above in the rejection of claim 17. Further, Minor teaches wherein the composition has: (a) a higher flammable limit; (b) a higher ignition energy; and/or (c) a lower flame velocity compared to R-32 alone (refer to par. 210, Table 4).
In regards to claim 19, Minor meets the claim limitations as disclosed above in the rejection of claim 21. Further, Minor teaches wherein the method has a cycle efficiency within about 10% of the existing refrigerant that the composition is intended to replace (refer to par. 218).
In regards to claim 20, Minor meets the claim limitations as disclosed above in the rejection of claim 21. Further, Minor teaches wherein the method has a compressor discharge temperature within about 15k, of the existing refrigerant that the composition is intended to replace (refer to pars. 208, 214 and 217 for discharge temperature).
In regards to claim 21, Minor meets the claim limitations as disclosed above in the rejection of claim 1. Further, Minor teaches a method for replacing an existing refrigerant (replacement refrigerants; pars. 5 and 7) in a heat transfer device (refrigeration, air-conditioning, or heat pump apparatus; par. 170), the method comprising removing at least a portion of the existing refrigerant from the heat transfer device and introducing with the composition according to claim 1 into the heat transfer device (pars. 5, 7 and 170).
Claim Rejections - 35 USC §103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, 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 8-13 are rejected under 35 U.S.C. 103 as being unpatentable
over Minor et al. (US 2010/0122545) in view of CORR et al. (GB 2435747).
In regards to claim 8, Minor meets the claim limitations as disclosed above in the rejection of claim 1, but fails to explicitly teach comprising R-1234ze(E), R-32, R-134a and R-161. CORR teaches comprising R-1234ze(E), R-32, R-134a and R-161 (refer to page 6, line 20).
It would have been obvious to a person skilled in the art before the effective filing date of the claimed invention to modify the method of Minor such that comprising R-1234ze(E), R-32, R-134a and R-161 as taught by CORR in order to provide alternative refrigerants having improved properties, such as low flammability (refer to page 2, lines 19-22 of CORR).
In regards to claim 9, Minor meets the claim limitations as disclosed above in the rejection of claim 8, but fails to explicitly teach comprising from about 5 to about 60 % by weight R-1234ze(E), from about 20 to about 50 % by weight R-32, from about 10 to about 60 % by weight R-161, and from about 10 to about 40 % by weight R-134a.
CORR teaches comprising from about 5 to about 60 % by weight R-1234ze(E), from about 20 to about 50 % by weight R-32, from about 10 to about 60 % by weight R-161, and from about 10 to about 40 % by weight R-134a (refer to Tables 1-7).
It would have been obvious to a person skilled in the art before the effective filing date of the claimed invention to modify the method of Minor such that comprising from about 5 to about 60 % by weight R-1234ze(E), from about 20 to about 50 % by weight R-32, from about 10 to about 60 % by weight R-161, and from about 10 to about 40 % by weight R-134a as taught by CORR in order to provide alternative refrigerants having improved properties, such as low flammability (refer to page 2, lines 19-22 of CORR).
In regards to claim 10, Minor meets the claim limitations as disclosed above in the rejection of claim 9, but fails to explicitly teach comprising from about 30 to about 60% by weight R-1234ze(E), from about 20 to about 50% by weight R-32, from about 10 to about 30% by weight R-161, and from about 10 to about 25% by weight R-134a.
CORR teaches comprising from about 30 to about 60% by weight R-1234ze(E), from about 20 to about 50% by weight R-32, from about 10 to about 30% by weight R-161, and from about 10 to about 25% by weight R-134a (refer to Tables 1-7).
It would have been obvious to a person skilled in the art before the effective filing date of the claimed invention to modify the method of Minor such that comprising from about 30 to about 60% by weight R-1234ze(E), from about 20 to about 50% by weight R-32, from about 10 to about 30% by weight R-161, and from about 10 to about 25% by weight R-134a as taught by CORR in order to provide alternative refrigerants having improved properties, such as low flammability (refer to page 2, lines 19-22 of CORR).
In regards to claim 11, Minor meets the claim limitations as disclosed above in the rejection of claim 1, but fails to explicitly teach comprising R-1234ze(E), R-32, R-125 and R-161. CORR teaches comprising R-1234ze(E), R-32, R-125 and R-161 (refer to Tables 1-7).
It would have been obvious to a person skilled in the art before the effective filing date of the claimed invention to modify the method of Minor such that comprising R-1234ze(E), R-32, R-125 and R-161 as taught by CORR in order to provide alternative refrigerants having improved properties, such as low flammability (refer to page 2, lines 19-22 of CORR).
In regards to claim 12, Minor meets the claim limitations as disclosed above in the rejection of claim 11, but fails to explicitly teach comprising from about 0 to about 65% by weight R-1234ze(E), from about 15 to about 40% by weight R-32, from about 10 to about 30% by weight R-161, and from about 10 to about 25% by weight R-125.
CORR teaches comprising from about 0 to about 65% by weight R-1234ze(E), from about 15 to about 40% by weight R-32, from about 10 to about 30% by weight R-161, and from about 10 to about 25% by weight R-125 (refer to Tables 1-7).
It would have been obvious to a person skilled in the art before the effective filing date of the claimed invention to modify the method of Minor such that comprising from about 0 to about 65% by weight R-1234ze(E), from about 15 to about 40% by weight R-32, from about 10 to about 30% by weight R-161, and from about 10 to about 25% by weight R-125 as taught by CORR in order to provide alternative refrigerants having improved properties, such as low flammability (refer to page 2, lines 19-22 of CORR).
In regards to claim 13, Minor meets the claim limitations as disclosed above in the rejection of claim 12, but fails to explicitly teach comprising from about 25 to about 60% by weight R-1234ze(E), from about 20 to about 40% by weight R-32, from about 10 to about 20% by weight R-161, and from about 10 to about 25 % by weight R-125.
CORR teaches comprising from about 25 to about 60% by weight R-1234ze(E), from about 20 to about 40% by weight R-32, from about 10 to about 20% by weight R-161, and from about 10 to about 25 % by weight R-125 (refer to Tables 1-7).
It would have been obvious to a person skilled in the art before the effective filing date of the claimed invention to modify the method of Minor such that comprising from about 25 to about 60% by weight R-1234ze(E), from about 20 to about 40% by weight R-32, from about 10 to about 20% by weight R-161, and from about 10 to about 25 % by weight R-125 as taught by CORR in order to provide alternative refrigerants having improved properties, such as low flammability (refer to page 2, lines 19-22 of CORR).
Response to Arguments
The applicant's arguments on 03/03/2026 traversing the § 103 rejection of claims 7-13 (now incorporated into amended claim 1 and claims 1-6 and 8-21) over Minor et al. (US 2010/0122545) in view of Corr et al. (GB 2435747) have been considered. The rejection is maintained for the reasons set forth below.
The Examiner's Characterization of Corr Is Addressed but Does Not Overcome the Rejection. The applicant contends that the Office Action incorrectly characterized Corr as teaching "R-1234ze(E), R-32, R-134a and R-161," and that Corr's disclosure is in fact centered on R-1225ye(E) as its base refrigerant, not R-1234ze(E).
The Examiner acknowledges that Corr's primary and preferred embodiments use R-1225ye(E) as the principal HFO component. However, this concession does not overcome the rejection. The § 103 rejection does not rely on Corr as a standalone anticipatory disclosure of the full claimed composition. Rather, Corr is cited for its teaching of co-refrigerant combinations, specifically the combination of R-32, R-134a, and R-161, as suitable co-components in low-GWP HFO-based refrigerant systems. The motivation to combine Minor with Corr is not to wholesale transplant Corr's compositions, but to draw on Corr's explicit teaching that R-32, R-134a, and R-161 are effective and compatible co-refrigerants in HFO-based blends directed toward low-GWP, low-flammability refrigerant compositions.
There Is a Proper Motivation to Combine Minor and Corr:
The applicant argues that there is no proper motivation to combine Minor and Corr because doing so would require (1) taking Corr's R-1225ye(E)-based system, (2) replacing its backbone with R-1234ze(E), (3) retaining the same three co-components, and (4) expecting the same performance. The Examiner disagrees.
The motivation to combine does not require that an artisan wholesale adopt Corr's system. Under KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), it is sufficient that a person of ordinary skill would have had reason to combine known elements using known methods to yield predictable results. Here:
Minor expressly teaches R-1234ze(E) as a base refrigerant component and discloses multi-component blends including R-32 and R-134a as co-refrigerants, with R-161 identified as an optional additional component. Minor's disclosure thus provides the base refrigerant and the general co-component framework.
Corr teaches that R-32, R-134a, and R-161 are specifically compatible and effective co-refrigerants in low-GWP HFO-based systems, and provides guidance on the rationale for including R-161, namely, its ability to moderate flammability and adjust thermodynamic properties in HFO blends.
Both references are directed to the same technical field, low-GWP heat transfer compositions intended as alternatives to high-GWP refrigerants such as R-407C, and share the same design goals: reduced global warming potential, acceptable flammability characteristics, and performance comparable to existing refrigerants. One of ordinary skill in this field routinely consults both classes of HFO-based refrigerant literature when formulating candidate replacement blends. The motivation to look to Corr's co-refrigerant teachings when working from Minor's R-1234ze(E)-based platform is therefore well-grounded in the art and does not depend on knowledge of the applicant's invention.
R-1225ye(E) and R-1234ze(E) Are Sufficiently Similar for Purposes of Co-Component Selection (C₃H₂F₄, tetrafluoropropene) are fundamentally different compounds with distinct thermodynamic, flammability, and GWP profiles, and that one of ordinary skill would not expect co-components effective in an R-1225ye(E) system to perform equivalently in an R-1234ze(E) system.
The Examiner acknowledges that R-1225ye(E) and R-1234ze(E) are not identical compounds. However, for purposes of the § 103 rejection, the relevant question is not whether the two base refrigerants are identical, but whether one of ordinary skill would have had a reasonable expectation that co-refrigerants known to be effective in one HFO-based system would also be worth investigating in another HFO-based system with similar design objectives. Both compounds are:
- C₃ fluorinated olefins with low GWP;
- Directed toward the same end-use applications (low-GWP replacements for HFC refrigerants);
- Used in combination with the same classes of co-refrigerants (HFCs such as R-32, R-134a) in the prior art literature; and
- Subject to the same design constraints (flammability reduction, temperature glide control, capacity matching).
The co-refrigerant combination of R-32, R-134a, and R-161 is not unique to Corr's R-1225ye(E) platform. These are well-known HFC components used across a broad range of refrigerant blends. One of ordinary skill would have recognized that R-161's role as a flammability modifier and capacity adjuster, as taught by Corr, is a property of R-161 itself, not solely a property of its interaction with R-1225ye(E). The Examiner therefore maintains that selecting R-32, R-134a, and R-161 as co-components in a Minor-based R-1234ze(E) system represents a combination of known elements with a reasonable expectation that similar functional benefits, flammability moderation, capacity adjustment, and glide control, would result.
The Rejection Does Not Rest on Impermissible Hindsight
The applicant invokes In re McLaughlin, 443 F.2d 1392 (CCPA 1971), arguing that the only basis for combining Minor and Corr in the manner proposed is hindsight knowledge of the claimed invention. The Examiner respectfully disagrees.
The combination is rooted in the shared technical field, shared design objectives, and overlapping co-refrigerant disclosures of the two references, not in the applicant's specification. Minor independently discloses R-1234ze(E) with R-32 and R-134a as a multi-component blend and identifies R-161 as an optional further component. Corr independently teaches the specific utility of R-32, R-134a, and R-161 in combination as co-refrigerants in an HFO-based low-GWP system. The logical step of combining these teachings to arrive at an R-1234ze(E)/R-32/R-134a/R-161 quaternary blend follows from the art itself and does not require the applicant's disclosure as a roadmap. The breadth of Minor's generic disclosure of R-161 as an optional component is itself a basis, independent of Corr, for a prima facie case of obviousness.
Applicant's Unexpected Results Arguments Are Not Sufficient to Overcome the Prima Facie Case
The applicant identifies several properties of the claimed composition alleged to be unexpected: 1. Condenser glide < 8 K and evaporator glide < 6 K;
2. COP within 5% of R-407C despite inclusion of R-161;
3. Volumetric capacity within an acceptable range of R-407C;
4. Non-flammability despite R-161 being individually flammable; and
5. GWP < 1400 while maintaining performance. The Examiner has considered these arguments but finds them insufficient to overcome the prima facie case of obviousness for the following reasons: a. The results are not adequately compared to the closest prior art. To be probative of non-obviousness, unexpected results must be compared to the closest prior art composition, not merely to R-407C (a high-GWP commercial refrigerant that is not the reference composition). The applicant has not provided side-by-side data comparing the claimed composition to the specific compositions most closely taught by Minor or Corr. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). b. The results are not commensurate in scope with the claims. The claims encompass broad ranges of component weight percentages across a variety of optional component combinations (R-125 and/or R-134a as the third component; R-152a and/or R-161 as the optional fourth component). The specification data points, even if accepted at face value, are directed to specific exemplary compositions and may not be representative of the full claimed scope. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). c. No declaration evidence has been submitted. The applicant's unexpected results arguments rely on data and assertions in the specification rather than a declaration under 37 C.F.R. § 1.132 from a person having ordinary skill in the art attesting to the unexpected nature of the results. Specification data alone, without a supporting declaration, carries limited evidentiary weight in rebutting a prima facie obviousness case, particularly where the prior art itself broadly encompasses the relevant compositional space. d. Low flammability of R-161-containing blends is not per se unexpected. The use of R-161 as a flammability modifier in HFO/HFC blends is expressly contemplated in Corr. That an optimized blend containing R-161 achieves non-flammability is consistent with, rather than contrary to, the teachings of the prior art. Disposition: The § 103 rejection of claim 1 (incorporating the limitations of cancelled claim 7) and claims 2–6 and 8–21 over Minor in view of Corr is maintained. Applicant is invited to submit a declaration under 37 C.F.R. § 1.132 with comparative experimental data against the closest prior art compositions, or to further narrow the claims to a compositional range for which unexpected results can be demonstrated to be both genuine and commensurate in scope.
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 MARTHA TADESSE whose telephone number is (571) 272-0590. The examiner can normally be reached on 7:30am-5:00pm EST. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Frantz Jules can be reached on 571 -272-6681. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571 -272-1000.
/M.T/ Examiner, Art Unit 3763
/FRANTZ F JULES/Supervisory Patent Examiner, Art Unit 3763
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