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 .
This action is responsive to Applicant’s amendment/remarks filed 06/11/2026.
Claims 1-29 are currently pending.
Response to Amendment
The objection to the specification/title is withdrawn in view of the above amendment.
The objection to claim 28 is withdrawn in view of the above amendment.
The rejection of claims 12, 14, and 18 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the above amendment.
The 103 rejections over/based on Singh et al. (US 2016/0017110 A1) as previously set forth in the Office action mailed 04/15/2026 are maintained and have been revised below to reflect the changes in claim scope made by Applicant’s present claim amendments.
The 103 rejections over/based on Tasaka et al. (US 2016/0340565 A1) as previously set forth in the Office action mailed 04/15/2026 are maintained and are reiterated below.
The rejections on the grounds of nonstatutory double patenting as being unpatentable over the claims of US Patent Nos. 11,136,482, 11,692,114, 11,692,115, 11,773,308, 12,018,203, 12,286,580, & 12,534,655 and the claims of copending application nos. 17/289,595, 17/795,417, 17/795,442, 17/795,473, & 18/748,444 set forth in the Office action mailed 04/15/2026 are each maintained and have been revised below to reflect the changes in claim scope made by Applicant's present claim amendments to the instant claims, amendments to claims made in the copending applications, and/or issuance of the copending claims as a patent. Note that, since the previous Office action mailed 04/15/2026, 17/795,473 has issued as US 12,612,542 on 04/28/2026, 17/289,595 has issued as US 12,617,990 on 05/05/2026, and 17/795,442 has issued as US 12,637,602 on 05/28/2026.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-22 and 25-29 are rejected under 35 U.S.C. 103 as being unpatentable over Singh et al. (US 2016/0017110 A1).
As to claims 1-10 and 29, Singh et al. teach compositions comprising vinylidene fluoride (abstract). The composition comprises 0.1-99.9 wt.%, preferably 5-99.9 wt.% or 40-99.9 wt.%, vinylidene fluoride (para. 0010 and 0023). These ranges of vinylidene fluoride overlap the claimed ranges of 1,1-difluoroethene. The composition further comprises at least one coagent provided in an amount of 0.1-99 wt.% or 0.1-60 wt.% selected from, among a few other specific components, 2,3,3,3-tetrafluoropropene (HFO-1234yf) and difluoromethane (HFC-32) (para. 0010). Regarding the additional limitation of claim 29 that the composition contains no 1,1,2-trifluoroethene (R-1123) (the only difference between independent claim 1 and independent claim 29 is that claim 29 further recites this exclusionary/negative limitation), Singh et al. is also wholly silent to the presence of any trifluoroethene (or synonym thereof), which meets the instantly claimed exclusion of the compound.
Singh et al. fail to teach a composition additionally at once comprising 2-95 wt.% HFC-32 (and subsets thereof) and HFO-1234yf under the meaning of anticipation.
However, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to arrive at the claimed limitations from the teachings of Singh et al. with a reasonable expectation of successfully obtaining a heat transfer composition. Singh et al. teach providing “at least one” (which includes two) coagent with the required vinylidene fluoride (Id.), and the coagent may suitable be/comprise both difluoromethane and 2,3,3,3-tetrafluoropropene (Id.). Regarding concentrations, Singh et al. teach various concentrations for the vinylidene fluoride (Id.) and the coagent is the remainder (Id.). (which is the total amount of coagent if there is more than one). Singh et al. further teach when a hydrofluorocarbon (HFC) is present it is preferably present in an amount of 50-95 wt.% of the composition and subsets thereof (para. 0048); note that difluoromethane (HFC-32) is a HFC. Combined with the above teachings/embodiments, this amounts to a composition comprising 0.1-99.9 wt.% vinylidene fluoride, 50-95 wt.% difluoromethane, and the remainder (i.e., up to about 50 wt.%) 2,3,3,3-tetrafluoropropene. In a three component system (i.e., vinylidene fluoride+difluoromethane+2,3,3,3-tetrafluoropropene), a concentration of a third component can be determined by subtracting the other two components with known concentrations from 100%. This overlaps and meets the concentrations recited in claims 1 to 10. The above rationale also meets the broad “consisting essentially of” language of claims 9 and 10. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
As to claims 11 and 12, while Singh et al. does not explicitly teach or quantify their composition has the recited properties, the recited property(ies) would nevertheless flow naturally from the cited teachings of the reference as the reference teaches substantially the same composition as that claimed (amounts of difluoromethane and 2,3,3,3-tetrafluoropropene within those claimed and an amount of 1,1-difluoroethene strongly overlapping and meeting that claimed). Singh et al. also teach their compositions may obtain low- or non-flammability (para. 0009) and coefficients of performance high relative to those of prior refrigerants (para. 0041). "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
As to claims 13 and 14, Singh et al. further teach the composition comprises a lubricant such as Polyol Esters (POEs) and Poly Alkylene Glycols (PAGs), PAG oils, silicone oil, mineral oil, alkyl benzenes (ABs) and poly(alpha-olefin) (PAO) (para. 0046).
As to claim 15, Singh et al. further teach the composition comprises a stabilizer (para. 0024).
As to claim 16, Singh et al. teach the composition may further comprises an oxyethylated alkylphenol (para. 0070). While this component is disclosed that it is provided as a surfactant instead of a stabilizer as instantly claimed, it nevertheless reads on the claimed stabilizer species because it has the same chemical structure as the claimed stabilizer (a phenol compound). The recitation of a stabilizer is also merely an intended use of the phenol compound. In the art, one component may read on another type of ingredient, e.g., one skilled person’s stabilizer is another person’s surfactant or acid scavenger.
As to claims 17 and 18, Singh et al. further teach the composition comprises a flame retardant (initially disclosed as a flammability suppressant, para. 0024). Disclosed species of conventional flame retardants include many of the same as those claimed, e.g., tris(2-chloroethyl)phosphate, tris(2-chloropropyl)phosphate, diammonium phosphate, antimony oxide, etc. (para. 0083).
As to claims 19 and 20, Singh et al. teach a heat transfer system comprising the composition including refrigeration systems (para. 0049-0060) which reads on a heat transfer device and refrigerating device comprising the composition.
As to claims 21 and 22, Singh et al. teach methods of cooling and heating an article (para. 0050-0053). The reference teaches providing the composition as a heat transfer fluid in a vapor compression cycle which includes changing the fluid from a liquid to a vapor though heat absorption and then from vapor to liquid though heat removal (para. 0050), meaning the composition is both condensed and evaporated within the system/method. A body can be cooled by evaporating/vaporizing the composition in the vicinity to be cooled (para. 0043, 0050). A body can be heated by condensing the composition in the vicinity of a body to be heated (para. 0050, 0052).
As to claims 25-28, Singh et al. teach their composition may replace prior refrigerants in heat transfer apparatus (para. 0041 & 0056-0059), which meets and reads on methods of retrofitting heat transfer devices and reducing environmental impact arising from the operation of a heat transfer device/product. A prior existing composition would obviously need to be first removed if it were replaced in a device prior to introducing the new replacement composition.
Claims 16 and 25-28 are rejected under 35 U.S.C. 103 as being unpatentable over Singh et al. (US 2016/0017110 A1) as applied to claims 1-22 and 25-29 above, and further in view of Minor et al. (US 2011/0253927 A1).
The disclosure of Singh et al. is relied upon as set forth above.
Alternatively regarding claim 16, Singh et al. clearly teach and motivate provision of a stabilizer (Id.). In the event the phenol-containing surfactant disclosed in Singh et al. fail to sufficiently meet the claimed phenol compound stabilizer, Minor et al. teaches compositions containing, among others, HFO-1132a, HFC-32, and HFO-1234yf (para. 0045). Therein, Minor et al. teach the provision of additional optional components such as stabilizers (para. 0054+). Phenols, phosphates, and epoxides are suitable stabilizers (e.g., para. 0092). Some exemplary stabilizers are also diene-based compounds (e.g., para. 0093).
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide a stabilizer species taught by Minor et al. as the stabilizer of Singh et al. in order to obtain a heat transfer fluid with a sufficient or improved stability with a reasonable expectation of success.
Alternatively regarding claims 25-28, in the event the teachings of Singh et al. are insufficient to meet the claimed methods of retrofitting heat transfer devices and reducing environmental impact arising from the operation of a heat transfer device/product, note that Minor et al. directly teach methods for replacing a prior refrigerant with a newer, lower GWP/environmental damaging refrigerant comprises removing the prior/existing refrigerant and introducing the new composition (e.g., para. 0133) such that at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide the replacement/retrofitting steps as taught by Minor et al. with the compositions and apparatus thereof in Singh et al. in order to obtain heat transfer apparatus having less influence over global warming as compared to heat transfer apparatus with prior working fluids/refrigerants with a reasonable expectation of success. Removing a prior composition and replacing/introducing the composition in heat transfer apparatus reads on the recited method steps in claims 25-28.
Claims 1-12 and 19-28 are rejected under 35 U.S.C. 103 as being unpatentable over Tasaka et al. (US 2016/0340565 A1).
As to claims 1-10, Tasaka et al. teach working fluids for heat cycle comprising difluoroethylene (para. 0001). Exemplary compositions comprise all of 1,1-difluoroethene (HFO-1132a), difluoromethane (HFC-32), and 2,3,3,3-tetrafluoropropene (HFO-1234yf). See, for example, Tables 4, 5, and 6 contain dozens of exemplary compositions comprising all of 1,1-difluoroethene (HFO-1132a), difluoromethane (HFC-32), and 2,3,3,3-tetrafluoropropene (HFO-1234yf) with concentrations. For example, Example 18 in Table 4 contains “at least 1.5” mass% HFO-1132a, 30 mass% HFC-32, 50 mass% HFO-1234yf, and “at most 18.5” mass% HFO-1123. The amount of HFC-32 and HFO-1234yf fall within the ranges thereof recited among claims 4 to 10. There are many other examples like this (e.g., Ex. 20, 22, 24, 26, 28, 30, 32, 34, 36, 38, 40, 42, 44, 46, 48, 50, 52, 54, 56, 58, 60, 62, 64, 66, 68, 70, etc.).
The difference between the cited example(s) and the claimed limitations is that the reference teaches the composition contains at least 1.5 mass% HFO-1132a whereas the instant claims require the R/HFO-1132a have a concentration of about 2-50 wt.% and subsets thereof.
However, the cited example(s) meet the instant claims under a prima facie case of obviousness as the exemplary amount of HFO-1132a overlaps and encompasses the claimed R-1132a amount(s). At least 1.5 mass% overlaps about 2 wt.% and greater, about 3 wt.% and greater, about 4 wt.% and greater, and about 5 wt.% and greater, as claimed. If this were not enough, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to arrive at/within the claimed R-1132a range(s) from the cited examples of the reference as the examples motivate provision R/HFO-1132a in amounts greater than 1.5 wt.% of the composition in order to obtain working fluids with a reasonable expectation of success. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
It is noted that claims 9 and 10 recite the term “consisting essentially of” the recited components/concentrations. However, the term “consisting essentially of” only limits the scope of a claim to the specified materials or steps and those that do not materially affect the basic and novel characteristic(s) of the claimed invention. While the cited examples in Tasaka et al. indeed contain an additional component than that recited (HFO-1123), as will be shown later with regard the claimed methods/apparatus, the reference’s composition has the same utilities as that claimed, meaning Tasaka et al.’s composition has the same basic and novel characteristic(s) of the claimed invention and Tasaka et al.’s composition reads on and meets the claimed transitional phrase. See, e.g., In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976).
As to claims 11 and 12, while Tasaka et al. does not explicitly teach their composition has the recited properties, the recited property(ies) would nevertheless flow naturally from the cited teachings of the reference as the reference teaches substantially the same composition as that claimed (amounts of difluoromethane and 2,3,3,3-tetrafluoropropene within those claimed and an amount of 1,1-difluoroethene strongly overlapping and meeting that claimed). "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
As to claims 19 and 20 , Tasaka et al. teach the composition may be used as a working fluid in a refrigerating apparatus (para. 0146-0147) which reads on a heat transfer device and refrigerating device comprising the composition.
As to claims 21 and 22, Tasaka et al. teach a refrigerating cycle system comprising the composition comprises a compressor 11 to compress a working fluid (vapor), a condenser 12 to cool and liquefy the working fluid vapor discharged from the compressor 11, an expansion valve 13 to let the working fluid (liquid) discharged from the condenser 12 expand, and an evaporator 14 to heat and vaporize the working fluid liquid discharged from the expansion valve 13. In this refrigerating cycle system 10, the temperature of the working fluid increases from an inlet toward an outlet of the evaporator 14 at the time of evaporation, and on the contrary, the temperature of the working fluid decreases from an inlet toward an outlet of the condenser 12 at the time of condensation (para. 0155). This reads on both methods for cooling and heating an article as the composition is condensed and evaporated therein and the condenser 12 condenses the composition in the vicinity of an article to be heated (a condenser intrinsically transfers heat from a working fluid to an object) and evaporates the composition in the vicinity of an article to be cooled (an evaporator intrinsically transfers heat from an object to a working fluid). See also Fig. 1
As to claims 23 and 24, Tasaka et al. teach the composition may be used as a working fluid in a power generation system (para. 0146, 0149, & 0150) which reads on a mechanical power generation device containing the composition adapted to use a Rankine cycle or modification thereof to generate work from heat.
As to claims 25-28, Tasaka et al. teach in their background section and technical problem their working fluid is to have less influence over global warming as compared to prior working fluids/refrigerants (para. 0002-0011), i.e., the disclosed compositions are to replace other working fluids, meaning the above-referenced methods of use and apparatus thereof read on methods of retrofitting heat transfer devices and reducing environmental impact arising from the operation of a heat transfer device/product.
Claims 13-18 and 25-28 are rejected under 35 U.S.C. 103 as being unpatentable over Tasaka et al. (US 2016/0340565 A1) as applied to claims 1-12 and 19-28 above, and further in view of Minor et al. (US 2011/0253927 A1).
The disclosure of Tasaka et al. is relied upon as set forth above.
As to claims 13-18, Tasaka et al. fails to teach the composition comprises a lubricant, stabilizer, or flame retardant.
However, Minor et al. teaches compositions containing, among others, HFO-1132a, HFC-32, and HFO-1234yf (para. 0045). Therein, Minor et al. teach the provision of additional optional components such as lubricants, stabilizers, and flame retardants (para. 0054+). Mineral oils, alkylbenzenes, polyalphaolefins, polyalkylene glycols, polyol esters, and polyvinyl ethers are suitable lubricants (e.g., para. 0059). Phenols, phosphates, and epoxides are suitable stabilizers (e.g., para. 0092). Some exemplary stabilizers are also diene-based compounds (e.g., para. 0093). Antimony oxide and brominated aromatic compounds are suitable flammability reducing additives (para. 0065 & 0070).
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide a lubricant, stabilizer, and/or flame retardant as taught by Minor et al. in the composition of Tasaka et al. in order to obtain a heat transfer fluid with a sufficient or improved lubricity, stability, or reduced flammability with a reasonable expectation of success.
Alternatively regarding claims 25-28, in the event the teachings of Tasaka et al. are insufficient to meet the claimed methods of retrofitting heat transfer devices and reducing environmental impact arising from the operation of a heat transfer device/product, note that Minor et al. directly teach methods for replacing a prior refrigerant with a newer, lower GWP/environmental damaging refrigerant comprises removing the prior/existing refrigerant and introducing the new composition (e.g., para. 0133) such that at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide the replacement/retrofitting steps as taught by Minor et al. with the compositions and apparatus thereof in Tasaka et al. in order to obtain heat transfer apparatus having less influence over global warming as compared to heat transfer apparatus with prior working fluids/refrigerants with a reasonable expectation of success. Removing a prior composition and replacing/introducing the composition in heat transfer apparatus reads on the recited method steps in claims 25-28.
Double Patenting
Claims 1-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-69 of U.S. Patent No. 11,136,482. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite compositions and methods of use and apparatus thereof comprising 1,1-difluoroethene, difluoromethane, and 2,3,3,3-tetrafluoropropene. The patented claims generally recite a narrower composition within the instantly claimed concentrations. The patented claims also recite the composition is substantially free of trifluoroethane and/or contains no trifluoroethene. In any event, the compositions certainly overlap in scope via the recited concentrations. The patented claims also recite the composition further comprises a lubricant, stabiliser, and/or flame retardants, a heat transfer device thereof, a method for cooling an article with the same steps, a method for heating an article with the same steps, a mechanical power generating device thereof, a method of retrofitting a heat transfer device with the same steps, and a method for reducing the environmental impact with the same step. In the event the patented claims fail to meet any of the instantly recited composition’s properties, said properties would flow naturally from the claimed composition(s) in the patent as they are substantially the same as and/or overlap those instantly claimed.
Claims 1-14, 19-23, and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-32 of U.S. Patent No. 11,692,114. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite compositions and methods of use and apparatus thereof comprising 1,1-difluoroethene, difluoromethane, and 2,3,3,3-tetrafluoropropene. The composition(s) in the patented claims overlap in scope via the recited concentrations with those recited in the instant claims. The claims of the patent are also wholly silent to the presence of any trifluoroethene, which meets the instantly claimed exclusion of the compound. The patented claims also recite the composition further comprises a lubricant, a heat transfer device thereof, a method for cooling an article with the same steps, and a method for heating an article with the same steps. In the event the patented claims fail to meet any of the instantly recited composition’s properties, said properties would flow naturally from the claimed composition(s) in the patent as they are substantially the same as and/or overlap those instantly claimed.
Claims 1-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-51 of U.S. Patent No. 11,692,115. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite compositions and methods of use and apparatus thereof comprising 1,1-difluoroethene, difluoromethane, and 2,3,3,3-tetrafluoropropene wherein the composition contains no trifluoroethene. The composition(s) in the patented claims overlap in scope via the recited concentrations with those recited in the instant claims. The patented claims also recite the composition further comprises a lubricant, stabiliser, and/or flame retardants, a heat transfer device thereof, a method for cooling an article with the same steps, a method for heating an article with the same steps, a mechanical power generating device thereof, a method of retrofitting a heat transfer device with the same steps, and a method for reducing the environmental impact with the same step. In the event the patented claims fail to meet any of the instantly recited composition’s properties, said properties would flow naturally from the claimed composition(s) in the patent as they are substantially the same as and/or overlap those instantly claimed.
Claims 1-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-52 of U.S. Patent No. 11,773,308. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite compositions and methods of use and apparatus thereof comprising 1,1-difluoroethene, difluoromethane, and 2,3,3,3-tetrafluoropropene. The patented claims generally recite a narrower composition within the instantly claimed concentrations. In any event, the compositions certainly overlap in scope via the recited concentrations. The patented claims also recite the composition is substantially free of trifluoroethane and/or contains no trifluoroethene. The patented claims also recite the composition further comprises a lubricant, stabiliser, and/or flame retardants, a heat transfer device thereof, a method for cooling an article with the same steps, a method for heating an article with the same steps, a mechanical power generating device thereof, a method of retrofitting a heat transfer device with the same steps, and a method for reducing the environmental impact with the same step. In the event the patented claims fail to meet any of the instantly recited composition’s properties, said properties would flow naturally from the claimed composition(s) in the patent as they are substantially the same as and/or overlap those instantly claimed.
Claims 1-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-56 of U.S. Patent No. 12,018,203. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite compositions and methods of use and apparatus thereof comprising 1,1-difluoroethene, difluoromethane, and 2,3,3,3-tetrafluoropropene. The patented claims generally recite a narrower composition within the instantly claimed concentrations. In any event, the compositions certainly overlap in scope via the recited concentrations. The claims of the patent are also wholly silent to the presence of any trifluoroethene, which meets the instantly claimed exclusion of the compound. The patented claims also recite the composition further comprises a lubricant, stabiliser, and/or flame retardants, a heat transfer device thereof, a method for cooling an article with the same steps, a method for heating an article with the same steps, a mechanical power generating device thereof, a method of retrofitting a heat transfer device with the same steps, and a method for reducing the environmental impact with the same step. In the event the patented claims fail to meet any of the instantly recited composition’s properties, said properties would flow naturally from the claimed composition(s) in the patent as they are substantially the same as and/or overlap those instantly claimed.
Claims 1-14, 19-22, and 25-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-33 of U.S. Patent No. 12,286,580. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite compositions and methods of use and apparatus thereof comprising 1,1-difluoroethene, difluoromethane, and 2,3,3,3-tetrafluoropropene. The patented claims generally recite a narrower composition within the instantly claimed concentrations. In any event, the compositions certainly overlap in scope via the recited concentrations. The claims of the patent are also wholly silent to the presence of any trifluoroethene, which meets the instantly claimed exclusion of the compound. The patented claims also recite the composition further comprises a lubricant, a heat transfer device thereof, a method for cooling an article with the same steps, a method for heating an article with the same steps, a method of retrofitting a heat transfer device with the substantially the same steps (the patented claims recite replacing an existing heat transfer fluid with the composition and operating the system) which also carries out the instant method for reducing the environmental impact. In the event the patented claims fail to meet any of the instantly recited composition’s properties, said properties would flow naturally from the claimed composition(s) in the patent as they are substantially the same as and/or overlap those instantly claimed.
Claims 1-14, 19-22, and 25-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-31 of U.S. Patent No. 12,534,655. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite compositions and methods of use and apparatus thereof comprising 1,1-difluoroethene, difluoromethane, and 2,3,3,3-tetrafluoropropene. The composition(s) in the patented claims overlap in scope via the recited concentrations with those recited in the instant claims. The claims of the patent are also wholly silent to the presence of any trifluoroethene, which meets the instantly claimed exclusion of the compound. The patented claims also recite the composition further comprises a lubricant, a heat transfer device thereof, a method for cooling an article with the same steps, a method for heating an article with the same steps, and a method of retrofitting a heat transfer device with the substantially the same steps (the patented claims recite replacing an existing heat transfer fluid with the composition and operating the system) which also carries out the instant method for reducing the environmental impact. In the event the patented claims fail to meet any of the instantly recited composition’s properties, said properties would flow naturally from the claimed composition(s) in the patent as they are substantially the same as and/or overlap those instantly claimed.
Claims 1-14, 19-22, and 26-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-33 of U.S. Patent No. 12,612,542. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite compositions and methods of use and apparatus thereof comprising 1,1-difluoroethene, difluoromethane, and 2,3,3,3-tetrafluoropropene. The composition(s) in the patented claims overlap in scope via the recited concentrations with those recited in the instant claims. While there is a dependent claim in the patented claims (claim 8) that recites the composition additionally further comprises a further component that may be selected as trifluoroethylene, note that it is not explicitly required as it is recited in the alternative from other components such as the instantly claimed and relied upon 2,3,3,3-tetrafluoropropene; the patented claims encompass compositions that include as well as exclude trifluoroethylene which meets the instantly claimed exclusion of trifluoroethylene. The patented claims also recite the composition further comprises a lubricant, a heat transfer device thereof, a method for cooling an article with the same steps, a method for heating an article with the same steps, and a method of retrofitting a heat transfer device with the substantially the same steps (the patented claims recite providing the composition as an alternative for an existing heat transfer fluid) which also carries out the instant method for reducing the environmental impact. In the event the patented claims fail to meet any of the instantly recited composition’s properties, said properties would flow naturally from the claimed composition(s) in the patented as they are substantially the same as and/or overlap those instantly claimed.
Claims 1-14 and 19-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-38 of U.S. Patent No. 12,617,990. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recites compositions and methods of use and apparatus thereof comprising 1,1-difluoroethene, difluoromethane, and 2,3,3,3-tetrafluoropropene. The composition(s) in the patented claims overlap in scope via the recited concentrations with those recited in the instant claims. The claims of the patent are also wholly silent to the presence of any trifluoroethene, which meets the instantly claimed exclusion of the compound. The patented claims also recite the composition further comprises a lubricant, a heat transfer device thereof, a method for cooling an article with the same steps, a method for heating an article with the same steps, a mechanical power generating device thereof, a method of retrofitting a heat transfer device with the same steps, and a method for reducing the environmental impact with the same step. In the event the patented claims fail to meet any of the instantly recited composition’s properties, said properties would flow naturally from the claimed composition(s) in the patent as they are substantially the same as and/or overlap those instantly claimed.
Claims 1-14, 19, 20, and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 12,637,602. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite compositions and methods of use and apparatus thereof comprising 1,1-difluoroethene, difluoromethane, and 2,3,3,3-tetrafluoropropene. The composition(s) in the patented claims overlap in scope via the recited concentrations with those recited in the instant claims. The claims of the patent are also wholly silent to the presence of any trifluoroethene, which meets the instantly claimed exclusion of the compound. The patented claims also recite the composition further comprises a lubricant and a heat transfer device thereof. In the event the patented claims fail to meet any of the instantly recited composition’s properties, said properties would flow naturally from the claimed composition(s) in the patent as they are substantially the same as and/or overlap those instantly claimed.
Claims 1-14, 19-22, and 25-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 4-12, 14-31, and 34-36 of copending Application No. 17/795,417 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application recites methods of using a composition (therefore encompassing compositions and their methods of use) and apparatus thereof comprising 1,1-difluoroethene, difluoromethane, and 2,3,3,3-tetrafluoropropene. The composition(s) in the reference application claims overlap in scope via the recited concentrations with those recited in the instant claims. The reference application claims also recite a limitation that the composition comprises substantially no 1,1,2-trifluoroethylene, which meets/encompasses the instantly claimed exclusion of the composition having no 1,1,2-trifluoroethene. The reference application claims also recite the composition further comprises a lubricant, a heat transfer device thereof, a method for cooling an article with the same steps, a method for heating an article with the same steps, and a method of retrofitting a heat transfer device with the substantially the same steps (the reference application claims recite providing the composition as an alternative for an existing heat transfer fluid) which also carries out the instant method for reducing the environmental impact. In the event the reference application claims fail to meet any of the instantly recited composition’s properties, said properties would flow naturally from the claimed composition(s) in the reference application as they are substantially the same as and/or overlap those instantly claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-12 and 29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/748,444 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application recites compositions comprising 1,1-difluoroethene, difluoromethane, and 2,3,3,3-tetrafluoropropene. The composition(s) in the reference application claims overlap in scope via the recited concentrations with those recited in the instant claims. In fact, the compositions recited in claim 15 of the reference application appear to fall within those claimed. While the reference applications recite a limitation of an optional component that may be selected as trifluoroethylene, note that it is not explicitly required as not only is it entirely optional but it is recited in the alternative from other components; the reference application claims encompass compositions that include as well as exclude trifluoroethylene which meets the instantly claimed exclusion of trifluoroethylene. In the event the reference application claims fail to meet any of the instantly recited composition’s properties, said properties would flow naturally from the claimed composition(s) in the reference application as they are substantially the same as and/or overlap those instantly claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 06/11/2026 have been fully considered but they are not persuasive.
Regarding the 103 rejections over/based on Singh et al. (US 2016/0017110 A1) Applicant argues Singh et al. teaches compositions comprising vinylidene fluoride that may further comprise at least one co-agent with a list of many possible co-agents such that the rejection uses the claimed invention as a roadmap to piece together various elements of the prior art to allegedly arrive at the claimed invention.
In response to Applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the Applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Additionally regarding Applicant’s concern that Singh et al. allegedly teach and encompass thousands of possible co-agents, note that the rejection of record cites para. 0010 of Singh et al. that teach only ten (10) preferred species of co-agents (specifically, carbon dioxide, 2,3,3,3-tetrafluoropropene, 1,3,3,3-tetrafluoropropene, propane, butane, difluoromethane, difluoroethane, 1,1,1,1-tetrafluoropethane, pentafluoroethane, and ammonia) and combinations thereof, which is significantly more narrow than alleged. Selection from ten preferred species and their combinations (such as and including pairs of the ten species) is certainly guidance and motivation to select difluoromethane and 2,3,3,3-tetrafluoropropene as co-agents provided with Singh et al.’s required vinylidene fluoride (i.e., 1,1-difluoroethene/R-1132a) component.
Regarding the 103 rejection over Tasaka et al. (US 2016/0340565 A1) Applicant argues Tasaka et al. does not teach or suggest the claimed R-1132a range (“from about 2 to about 50 wt.%”) because Tasaka et al.’s disclosed “at least 1.5%” mass % range of R/HFO-1132a is open ended that only limits the minimum amount and does not expressly or inherently mean the amount of R-1132a is higher than 1.5% by weight, as claimed.
In response, this argument is not persuasive because the open-ended range “at least 1.5%” mass % of R/HFO-1132a indeed overlaps the claimed about 2-50 wt.% range because “at least” means the stated value and more. The plain meaning of “at least 1.5%” means percentages greater than or equal to 1.5 mass% which includes both the 1.5% end point and percentages above the 1.5% end point.
For example, Example 18 in Table 4 contains “at least 1.5” mass% HFO-1132a, 30 mass% HFC-32, 50 mass% HFO-1234yf, and “at most 18.5” mass% HFO-1123. This means that HFC-32 (difluoromethane) is 30 mass% and HFO-1234yf (2,3,3,3-tetrafluoropropene) is 50 mass% (totaling 80 mass% thus far), HFO-1132a (vinylidene fluoride) is at least 1.5 mass% and HFO-1123 (trifluoroethylene) is at most 18.5 mass% meaning, due to the open ranges of HFO-1132a and HFO-1123, HFO-1132a is between 1.5 and 20 mass% and HFO-1132 is between 0 and 18.5 mass%, which overlaps that claimed.
Singh et al.’s disclosed “at least 1.5 mass%” of HFO-1132a overlaps the about 2 wt.% and greater, about 3 wt.% and greater, about 4 wt.% and greater, and about 5 wt.% and greater vinylidene fluoride ranges, as claimed. If this were not enough, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to arrive at/within the claimed R-1132a range(s) from the cited examples of the reference as the examples motivate provision R/HFO-1132a in amounts greater than 1.5 wt.% of the composition in order to obtain working fluids with a reasonable expectation of success. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Applicant’s concern that other working examples (e.g., Example 17) have a lower amount of R-1132a than that claimed (e.g., 0.5 mass%) is acknowledged but note that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure, nonpreferred embodiments, or other distinct working examples.
Applicant further argues Tasaka et al. teach away from the claimed R-1132a range due to, in Tables 4 to 6, the odd numbered working examples (having 0.5 mass% of R/HFO-1132a below the claimed range) having excellent refrigerating capacity whereas the even numbered working examples (having at least 1.5 mass% or R/HFO-1132a) having inferior refrigerating capacity.
In response, note that the cited/relied upon examples are still working examples. Disclosed examples do not constitute a teaching away from other distinct working examples. Also, a known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use. In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
Applicant further argues the Minor et al. (US 2011/0253927 A1) secondary reference combined with Tasaka et al. for some of the dependent claims is concerned with different compositions than those of the present invention because Minor et al. allegedly pertains to E-1,2-difluoroethylene whereas the claimed invention comprises 1,1-difluoroethylene.
In response, even if Minor et al. teach a different difluoroethylene isomer than claimed, Minor et al. is still relevant as a secondary reference for teaching well known, routinely added lubricants, stabilizers, and flame retardants for heat transfer fluid compositions as well as generic/routine methods for replacing a prior refrigerant with a newer, lower GWP/environmental damaging refrigerant. Additionally, Minor et al. teach their compositions may contain, among others, HFC-32 and HFO-1234yf (para. 0045), which are claimed components, that establishes Minor et al.’s lubricant, stabilizer, and flame retardant additives are useful for provision to HFC-32 (difluoromethane) containing and/or HFO-1234yf (2,3,3,3-tetrafluoropropene) containing compositions. Also note that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues newly added independent claim 29 recites the composition contains no 1,1,2-trifluoroethene (R-1123) and Tasaka et al. fail to teach or suggest this limitation because Tasaka et al. disclose their compositions require trifluoroethylene (i.e., trifluoroethane/R-1123) per the abstract, specification, working examples, and claims.
The Office agrees with Applicant's remarks that Tasaka et al. fail to teach or suggest the limitations of independent claim 29 because Tasaka et al. clearly require trifluoroethylene (synonymous with the excluded trifluoroethene component of the instant claims). Thus, claim 29 is not rejected over Tasaka et al.
In response to Applicant’s implied request to hold in abeyance a response, such as, a terminal disclaimer to the non-statutory double patenting rejections over the claims of US Patent Nos. 11,136,482, 11,692,114, 11,692,115, 11,773,308, 12,018,203, 12,286,580, 12,617,990, 12,637,602, and 12,612,542 only if and when each double patenting rejection becomes the last remaining rejection in the application, it is noted that the filing of a terminal disclaimer cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP § 804 (I)(B)(1): “As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Regarding the non-statutory double patenting over the claims of US Patent No. 12,534,655 Applicant argues the claims do not disclose all three components 1,1-difluoroethene, difluoromethane, and 2,3,3,3-tetrafluoropropene as required by the instant claims and do not teach or suggest the ranges as recited in the instant claims.
In response, this argument is not persuasive because the patented claims recite compositions and methods of use and apparatus thereof comprising 1,1-difluoroethene, difluoromethane, and 2,3,3,3-tetrafluoropropene. Independent claim 1 recite and requires difluoromethane. Claim 5, dependent on claim 1, recites the composition further comprises 1,1-difluoroethylene reading on and meeting the claimed 1,1-difluoroethene. Claim 9, dependent on claim 1, recites the composition further comprises, among others, 2,3,3,3-tetrafluoropropene. Accordingly, the patented claims fairly encompass a composition comprising 1,1-difluoroethene, difluoromethane, and 2,3,3,3-tetrafluoropropene, as claimed. Regarding concentrations, claim 7, dependent on claim 5 which is dependent on claim 1, recites the difluoromethane and 1,1-difluoroethylene components are present in a combined amount of less than about 37 wt.%, which overlaps the claimed about 2-50 wt.% 1,1-difluoroethene and about 2-95 wt.% difluoromethane ranges. The composition(s) in the patented claims overlap in scope via the recited concentrations with those recited in the instant claims.
Regarding the non-statutory double patenting over the claims of US Patent Application No. 17/795,417 Applicant argues the rejection is improper because the present application has an earlier filing date than the reference application.
In response, this argument is not persuasive because a provisional non-statutory double patenting rejection with a later filing date than the application under examination may only be withdrawn if it is the only remaining rejection in the application. However, this rejection is not the only remaining rejection in the application as there are many other outstanding rejections. Thus, the rejection stands and is proper to maintain at this time.
Applicant further argues the claims of US Patent Application No. 17/795,417 do not disclose all three components 1,1-difluoroethene, difluoromethane, and 2,3,3,3-tetrafluoropropene as required by the instant claims and do not teach or suggest the ranges as recited in the instant claims.
In response, this argument is not persuasive because the reference application claims recite compositions and methods of use and apparatus thereof comprising 1,1-difluoroethene, difluoromethane, and 2,3,3,3-tetrafluoropropene. Independent claim 24 recites and requires difluoromethane as the (b) component and permits provision of 2,3,3,3-tetrafluoropropene in the (c) component. Claim 11, dependent on claim 24, recites the composition additionally comprises 1,1-difluoroethylene reading on and meeting the claimed 1,1-difluoroethene. Accordingly, the patented claims fairly encompass a composition comprising 1,1-difluoroethene, difluoromethane, and 2,3,3,3-tetrafluoropropene, as claimed. Regarding concentrations, claim 7, dependent on claim 24 recites the difluoromethane is in a range of about 1-25 wt.% or subsets thereof, and claim 12, dependent on claim 24, recites the R-1132a (i.e., the 1,1-difluoroethylene) is present in an amount of about 1-20 wt.% or subsets thereof, which overlap the claimed about 2-50 wt.% 1,1-difluoroethene and about 2-95 wt.% difluoromethane ranges. The composition(s) in the patented claims overlap in scope via the recited concentrations with those recited in the instant claims.
Regarding the non-statutory double patenting over the claims of US Patent Application No. 18/748,444 Applicant argues the rejection is improper because the present application has an earlier filing date than the reference application.
In response, this argument is not persuasive because a provisional non-statutory double patenting rejection with a later filing date than the application under examination may only be withdrawn if it is the only remaining rejection in the application. However, this rejection is not the only remaining rejection in the application as there are many other outstanding rejections. Thus, the rejection stands and is proper to maintain at this time.
Accordingly, the rejections are maintained for the reasons of record.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
July 2, 2026
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