DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This Office Action is responsive to the amendment filed on 08/26/2026.
3. Claims 1-4, 6, 18-22, 51-5, 57-59 are pending. Claims 1-4, 6, 18-22, 51-5, 57-59 are under examination on the merits. Claims 1-4, 6, 18-20, 22, 51-55, 57 are amended. Claims 5, 56 are cancelled. Claims 7-17, 23-50 are previously cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant's arguments filed 08/26/2026 have been fully considered but they are not persuasive, thus claims 1-4, 6, 18-22, 51-5, 57-59 stand rejected as set forth in Office action dated 08/26/2026 and further discussed in the Response to Arguments below.
Information Disclosure Statement
6. The information disclosure statement submitted on 08/26/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statement.
Claim Objections
7. Claim 3 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 2. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k).
Claim Rejections - 35 USC § 103
8. 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.
9. Claims 1-4, 6,18-22 are rejected under 35 U.S.C. 103 as being unpatentable over Minor et al. (WO 2013/032908 A2, hereinafter “’908”).
Regarding claims 1-4, 6: ‘908 teaches a compositions useful in processes for producing cooling or heat, as heat transfer fluids, foam blowing agents, aerosol propellants, and as power cycle working fluids (Page 1, lines 11-13) comprising 2,3,3,3- tetrafluoropropene (HFO-1234yf) or 1,3,3,3-tetrafluoropropene (trans HFO-1234ze) or a mixture thereof in the amount of about 56% to about 99% (Page 17 lines 28-31 to Page 18, lines 1-2), difluoro methane (HFC-32) in the amount of 1% to about 43% (Page 18, lines 3-7), and 1,1, difluoroethane (HFC-152a) in the amount of 1% to about 43% by weight of the composition (Page 18, lines 8-13).
Thus, the subject as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549.
It is submitted that the present claims “consisting essentially of” language (i.e., claims 2-4) does not necessarily exclude other gradients because “consisting essentially of” renders the composition open to the inclusion of unspecified ingredients which do not materially affect the basic and novel characteristics of the composition, see Exparte Davis et al. (Bd of Appeals), 80 USPQ 448.
Regarding claims 18-20: The disclosure of ‘908 is adequately set forth in paragraph above and is incorporated herein by reference. ‘908 does not expressly teach the refrigerant blend has a burning velocity of 10 cm/s or less, when measured in accordance with ISO 817 vertical tube method or the refrigerant blend is classified as 2L for flammability as defined in ANSI/ASHRAE Standard 34 or wherein the refrigerant blend has an LFL of less than 10 volume percent when measured in accordance with ASTM-E681.
However, pertaining specifically to claims 18-20, since ‘908 teaches the identical or substantially identical composition comprising a refrigerant blend comprising from about 70 to less than 80 weight percent HFO-1234yf and from more than 20 to 30 weight percent HFC-152a as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. a burning velocity or classified as 2L for flammability or an LFL, would be expected to be the same as claimed (i.e., the refrigerant blend has a burning velocity of 10 cm/s or less, when measured in accordance with ISO 817 vertical tube method or the refrigerant blend is classified as 2L for flammability as defined in ANSI/ASHRAE Standard 34 or wherein the refrigerant blend has an LFL of less than 10 volume percent when measured in accordance with ASTM-E681).
If there is any difference between the product of ‘908 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCP A 1975).
Regarding claims 21-22 : ‘908 teaches the compositions useful in processes for producing cooling or heat, as heat transfer fluids, foam blowing agents, aerosol propellants, and as power cycle working fluids (Page 1, lines 11-13), further comprising a lubricant, wherein said lubricant is selected from polyalkylene glycol (Page 42, lines 15-19).
10. Claims 1-4, 6, 18-22, 51-59 are rejected under 35 U.S.C. 103 as being unpatentable over Minor et al. (WO 2006/094303 A2, hereinafter “’303”).
Regarding claims 1-4,6 : ‘303 teaches a composition for use in refrigeration, air-conditioning, and heat pump systems (Page 1, lines 12-13) comprising a refrigerant blend comprising from about 80 weight percent HFO-1234yf and from about 20 weight percent HFC-152a in working examples (Pages 78-79, Table 10). ‘303 teaches a refrigerant blend comprising HFO-1234yf in the amount of 1-99 weight percent and HFC-152a in the amount of 99-1 weight percent (Page 113, Claim 15).
Thus, the subject as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549.
It is submitted that the present claims “consisting essentially of” language (i.e., claims 2-4) does not necessarily exclude other gradients because “consisting essentially of” renders the composition open to the inclusion of unspecified ingredients which do not materially affect the basic and novel characteristics of the composition, see Exparte Davis et al. (Bd of Appeals), 80 USPQ 448.
Regarding claims 18-20: The disclosure of ‘303 is adequately set forth in paragraph above and is incorporated herein by reference. ‘303 does not expressly teach the refrigerant blend has a burning velocity of 10 cm/s or less, when measured in accordance with ISO 817 vertical tube method or the refrigerant blend is classified as 2L for flammability as defined in ANSI/ASHRAE Standard 34 or wherein the refrigerant blend has an LFL of less than 10 volume percent when measured in accordance with ASTM-E681.
However, pertaining specifically to claims 18-20, since ‘303 teaches the identical or substantially identical composition comprising a refrigerant blend comprising from about 70 to less than 80 weight percent HFO-1234yf and from more than 20 to 30 weight percent HFC-152a as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. a burning velocity or classified as 2L for flammability or an LFL, would be expected to be the same as claimed (i.e., the refrigerant blend has a burning velocity of 10 cm/s or less, when measured in accordance with ISO 817 vertical tube method or the refrigerant blend is classified as 2L for flammability as defined in ANSI/ASHRAE Standard 34 or wherein the refrigerant blend has an LFL of less than 10 volume percent when measured in accordance with ASTM-E681).
If there is any difference between the product of ‘303 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCP A 1975).
Regarding claims 21-22: ‘303 teaches the composition for use in refrigeration, air-conditioning, and heat pump systems (Page 1, lines 12-13), further comprising a lubricant, wherein said lubricant is selected from polyalkylene glycol (Page 3, lines 15-20).
Regarding claim 51 : ‘303 a composition for use in refrigeration, air-conditioning, and heat pump systems Page 1, lines 12-13) comprising a refrigerant blend comprising from about 80 weight percent HFO-1234yf and from about 20 weight percent HFC-152a in working examples (Pages 78-79, Table 10). ‘303 teaches a refrigerant blend comprising HFO-1234yf in the amount of 1-99 weight percent and HFC-152a in the amount of 99-1 weight percent (Page 113, Claim 15). ’303 does not expressly teach a heat transfer fluid in a system for heating and cooling the passenger compartment of an electric vehicle.
It is submitted that if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Thus, the subject as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549.
The present claims “consisting essentially of” language does not necessarily exclude other gradients because “consisting essentially of” renders the composition open to the inclusion of unspecified ingredients which do not materially affect the basic and novel characteristics of the composition, see Exparte Davis et al. (Bd of Appeals), 80 USPQ 448.
Regarding claims 52-55, 57: ‘303 teaches a composition for use in refrigeration, air-conditioning, and heat pump systems Page 1, lines 12-13) comprising providing a refrigerant blend comprising from about 80 weight percent HFO-1234yf and from about 20 weight percent HFC-152a in working examples (Pages 78-79, Table 10). ‘303 teaches a refrigerant blend comprising HFO-1234yf in the amount of 1-99 weight percent and HFC-152a in the amount of 99-1 weight percent (Page 113, Claim 15).
It is submitted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Thus, the subject as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549.
The present claims “consisting essentially of” language (i.e., claims 53-56) does not necessarily exclude other gradients because “consisting essentially of” renders the composition open to the inclusion of unspecified ingredients which do not materially affect the basic and novel characteristics of the composition, see Exparte Davis et al. (Bd of Appeals), 80 USPQ 448.
Regarding claims 58-59: ‘303 teaches the composition for use in refrigeration, air-conditioning, and heat pump systems (Page 1, lines 12-13), further comprising a lubricant, wherein said lubricant is selected from polyalkylene glycol (Page 3, lines 15-20).
11. Claims 1-4, 18-22, 52-55, 58-59 are rejected under 35 U.S.C. 103 as being unpatentable over Wissam Rached (US Pub. No. 2016/0355718 A1, hereinafter “’718”).
Regarding claims 1-4,6: ‘718 teaches a heat transfer method using ternary composition containing 2,3,3,3-tetrafluoropropene, 1,1-difluoroethane and difluoromethane, as a heat transfer fluid in refrigeration systems, to replace R-134a (Page 1, [0002]). ‘718 teaches composition comprising a refrigerant blend comprising HFO-1234yf and HFC-152a from 88/12, 84/12, and 82/14 of HFO-1234yf to HFC-152a in working examples (Page 4, Table 2). ‘718 teaches preferably, the compositions contain essentially from 5 to 83 wt. % of 2,3,3,3-tetrafluoropropene and from 2 to 50 wt. % of 1,1-difluoroethane and from 15 to 75 wt. % of difluoromethane (Page 2, [0030]).
Thus, the subject as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549.
It is submitted that the present claims “consisting essentially of” language (i.e., claims 2-4) does not necessarily exclude other gradients because “consisting essentially of” renders the composition open to the inclusion of unspecified ingredients which do not materially affect the basic and novel characteristics of the composition, see Exparte Davis et al. (Bd of Appeals), 80 USPQ 448.
Regarding claims 18-20: The disclosure of ‘718 is adequately set forth in paragraph above and is incorporated herein by reference. ‘718 does not expressly teach the refrigerant blend has a burning velocity of 10 cm/s or less, when measured in accordance with ISO 817 vertical tube method or the refrigerant blend is classified as 2L for flammability as defined in ANSI/ASHRAE Standard 34 or wherein the refrigerant blend has an LFL of less than 10 volume percent when measured in accordance with ASTM-E681.
However, pertaining specifically to claims 18-20, since ‘718 teaches the identical or substantially identical composition comprising a refrigerant blend comprising from about 70 to less than 80 weight percent HFO-1234yf and from more than 20 to 30 weight percent HFC-152a as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. a burning velocity or classified as 2L for flammability or an LFL, would be expected to be the same as claimed (i.e., the refrigerant blend has a burning velocity of 10 cm/s or less, when measured in accordance with ISO 817 vertical tube method or the refrigerant blend is classified as 2L for flammability as defined in ANSI/ASHRAE Standard 34 or wherein the refrigerant blend has an LFL of less than 10 volume percent when measured in accordance with ASTM-E681).
If there is any difference between the product of ‘718 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCP A 1975).
Regarding claims 21-22 : ‘718 teaches a heat transfer method using ternary composition containing 2,3,3,3-tetrafluoropropene, 1,1-difluoroethane and difluoromethane, as a heat transfer fluid in refrigeration systems, to replace R-134a (Page 1, [0002]), further comprising a lubricant, wherein said lubricant is selected from polyalkylene glycol (Page 2, [0037]).
Regarding claims 52-56 : ‘718 teaches a heat transfer method using ternary composition containing 2,3,3,3-tetrafluoropropene, 1,1-difluoroethane and difluoromethane, as a heat transfer fluid in refrigeration systems, to replace R-134a (Page 1, [0002]). ‘718 discloses composition comprising providing a refrigerant blend comprising HFO-1234yf and HFC-152a from 88/12, 84/12, and 82/14 of HFO-1234yf to HFC-152a in working examples (Page 4, Table 2). ‘718 teaches preferably, the compositions contain essentially from 5 to 83 wt. % of 2,3,3,3-tetrafluoropropene and from 2 to 50 wt. % of 1,1-difluoroethane and from 15 to 75 wt. % of difluoromethane (Page 2, [0030]).
It is submitted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Thus, the subject as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549.
It is submitted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claims 58-59: ‘718 teaches a heat transfer method using ternary composition containing 2,3,3,3-tetrafluoropropene, 1,1-difluoroethane and difluoromethane, as a heat transfer fluid in refrigeration systems, to replace R-134a (Page 1, [0002]), further comprising a lubricant, wherein said lubricant is selected from polyalkylene glycol (Page 2, [0037]).
Response to Arguments
12. Applicant's arguments filed 08/26/2026 have been fully considered but they are not persuasive since the new rejection is under 35 U.S.C. 103 as being unpatentable over Minor ’908 or Minor ‘303 or Wissam Rached ’718. It is submitted that the subject as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549.
The applicant is invited to submit any declaration under 37 CFR 1.132 to overcome the rejection based upon reference applied under 35 U.S.C. 103 (a) as set forth in this Office action to compare their invention product (i.e., a composition comprising a refrigerant blend) and show the product is actually different from and unexpectedly better than the teachings of the references. It is noted that the burden is on the applicant to establish that the results are in fact unexpected, unobvious, and of statistical and practical significance. See MPEP 716.02(b). See also Ex parte Gelles, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992), and such a showing also must be commensurate with the scope of the claimed invention, i.e., must bear a reasonable correlation to the scope of the claimed invention.
13. 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 extension fee 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 date of this final action.
Examiner Information
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571)270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. 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.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
09/03/2026
bijan.ahvazi@uspto.gov
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