CTNF 18/501,620 CTNF 98162 Notice of Pre-AIA or AIA Status 07-03-fti AIA The present application is being examined under the pre-AIA first to invent provisions. This action is responsive to Applicant's preliminary amendments filed 02/01/2024. Claims 36-49 are currently pending and under examination. Claim Rejections - 35 USC § 103 07-20-fti The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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. 07-20-02-fti This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a). 07-21-fti Claim s 36-49 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Low (US 2011/0184890 A1, hereinafter Low) . Regarding claims 36 and 40 , the transitional phrase "consisting essentially of" 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. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original) See MPEP 2111.03 III. Additional refrigerants (and even additives typical for provision in refrigerants) are permissible because they would not change the characteristics of the composition from being a refrigerant. Therefore, for the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355. See MPEP 2111.03 III. Low teaches that a composition contains from about 2 to about 25% by weight R-32, from about 5 to about 45% by weight R-152a, and from about 60 to about 95% by weight R-1234ze(E) ([0030]), which overlap with the claimed ranges of “about 1 to 43 weight percent HFC-32”, “from 1 to 18 weight percent HFC-152a”, and “from about 56 to 98 weight percent HFO-1234ze”, “about 10 to 43 weight percent HFC-32”, “about 5 to 15 weight percent HFC-152a”, and “from about 75 to 85 weight percent trans-HFO-1234ze”. Low also teaches that the composition containing R-1234ze(E), R-32, and R-152a can consist essentially of these components ([0045]). Low does not teach the claimed composition at once under the meaning of anticipation. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art. Regarding claim 37 , Low teaches that the composition has cooling capacity at 95% or higher of R-134a values ([0085]), which overlaps with the claimed range of “from about 75% to about 130%”. Regarding claim 38 , Low teaches that the composition has a GWP of less than 1000 ([0063]), R-134a has a GWP of 1300 ([0011]), which reads on the claimed GWP of the composition being less than the GWP of R-134a. Regarding claim 39 , Low teaches that the composition containing R-1234ze(E), R-32, and R-152a can be non-flammable ([0132]). Low does not teach that the flammability of the composition is classified at most as 2L. However, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect that the claimed flammability of the composition being classified at most as 2L, would flow naturally from the teaching of Low, because the teaching of Low provides substantially the same composition comprising the same refrigerant consisting essentially of the same amounts of HFO-1234ze, HFC-32, and HFC-152a as claimed, and also because the composition containing R-1234ze(E), R-32, and R-152a is non-flammable as recognized by Low. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art. Regarding claim 41 , Low teaches a method for cooling an article which comprises condensing the composition and thereafter evaporating the composition in the vicinity of the article to be cooled ([0105]). Regarding claim 42 , Low teaches a method for heating an article which comprises condensing the composition in the vicinity of the article to be heated and thereafter evaporating the composition ([0106]). Regarding claims 43 and 44 , Low teaches a method for replacing an existing refrigerant, in a system designed to use the existing refrigerant, wherein the method comprises providing the composition of the invention to the system ([0113]), and the existing refrigerant can be R-134a ([0115]). Regarding claims 45 and 46 , Low teaches that a heat transfer device comprises the composition ([0094]), the heat transfer device can be an air conditioning system ([0096]), and the air conditioning system can be a stationary air conditioning system ([0113]). Regarding claims 45 and 47 , Low teaches that a heat transfer device comprises the composition ([0094]), the heat transfer device can be a refrigeration device ([0095]), and the refrigeration device can be a stationary refrigeration device ([0120]). Regarding claims 45 and 48 , Low teaches that a heat transfer device comprises the composition ([0094]), and the heat transfer device can be an automotive air conditioning system ([0096]). Regarding claim 49 , the transitional phrase "consisting essentially of" 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. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original) See MPEP 2111.03 III. Additional refrigerants (and even additives typical for provision in refrigerants) are permissible because they would not change the characteristics of the composition from being a refrigerant. Therefore, for the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355. See MPEP 2111.03 III. Low teaches that a composition contains R-32, R-152a, and R-1234ze(E), wherein R-152a is in an amount of from about 5 to about 10% by weight ([0031]), which overlap with the claimed range of “from about 1 weight percent to about 15 weight percent”. Low also teaches that the composition containing R-1234ze(E), R-32, and R-152a can consist essentially of these components ([0045]). Low also teaches that the composition has cooling capacity at 95% or higher of R-134a values ([0085]), which overlaps with the claimed range of “from about 75% to about 130%”. Low further teaches that the composition containing R-1234ze(E), R-32, and R-152a can be non-flammable ([0132]). Low does not specifically teach that the flammability of the composition is classified at most as 2L. However, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect that the claimed flammability of the composition being classified at most as 2L, would flow naturally from the teaching of Low, because the teaching of Low provides substantially the same composition consisting essentially of the same trans-HFO-1234ze, HFC-32, and HFC-152a with the same amount as claimed, and also because the composition containing R-1234ze(E), R-32, and R-152a is non-flammable as recognized by Low. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIAJIA JANIE CAI whose telephone number is 571-270-0951. The examiner can normally be reached Monday-Friday 8:30 am - 5:00 pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisor, Angela Brown-Pettigrew can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JIAJIA JANIE CAI/Examiner, Art Unit 1761 /ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761 Application/Control Number: 18/501,620 Page 2 Art Unit: 1761 Application/Control Number: 18/501,620 Page 3 Art Unit: 1761 Application/Control Number: 18/501,620 Page 4 Art Unit: 1761 Application/Control Number: 18/501,620 Page 5 Art Unit: 1761 Application/Control Number: 18/501,620 Page 6 Art Unit: 1761 Application/Control Number: 18/501,620 Page 7 Art Unit: 1761 Application/Control Number: 18/501,620 Page 8 Art Unit: 1761