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 amendments/remarks filed 06/29/2026.
Claims 1-4, 6, and 8-20 are currently pending, of which claims 2, 3, 6, 10, 11, 16-18, and 20 are withdrawn.
Claims 1, 4, 8, 9, 12-15, 19 are currently under examination.
The rejection of claims 5 and 7 under 35 U.S.C. 103 as being unpatentable over Ueno (WO 2016/194847 A1, see US 2018/0079941 A1) is withdrawn in view of the cancellation of claims 5 and 7.
The rejection of claims 1, 4, 8, 9, 12-15, and 19 under 35 U.S.C. 103 as being unpatentable over Ueno (WO 2016/194847 A1, see US 2018/0079941 A1) is maintained in view of the above amendment.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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, 4, 8, 9, 12-15, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Ueno (WO 2016/194847 A1, see US 2018/0079941 A1, hereinafter Ueno).
Regarding claim 1, the instant invention discloses that a lubricant includes a polyol ester (instant US Pub. [0069]).
Ueno teaches a working fluid comprising trifluoroethylene (HFO-1123) (claim 1, [0013]), a first component which is carbon dioxide (claim 3; Tables 4-6), and a second component which can include 2,3,3,3-tetrafluoropropene (HFO-1234yf) and difluoromethane (HFC-32) (claim 13, [0025]). The trifluoroethylene of Ueno reads on the claimed 1,1,2-trifluoroethylene.
Ueno also teaches that a ratio of a total amount of the trifluoroethylene, the first component and the second component with respect to an entire amount of the working fluid is over 90 mass % and 100 mass % or less, wherein a ratio of an amount of the trifluoroethylene with respect to the total amount of the trifluoroethylene, the first component and the second component is 10 mass % or more and 90 mass % or less, wherein a ratio of an amount of the first component with respect to the total amount of the trifluoroethylene, the first component and the second component is 1 mass % or more and 50 mass % or less, and wherein a ratio of an amount of the second component with respect to the total amount of the trifluoroethylene, the first component and the second component is 1 mass % or more and 70 mass % or less ([0029], claim 17).
Thus, the trifluoroethylene of Ueno can be in an amount of 10 mass % or more and 90 mass % or less with respect to an entire amount of the working fluid, which overlaps with the claimed range of “from 5 to 55% by weight”.
The first component (i.e. carbon dioxide) of Ueno can be in an amount of 1 mass % or more and 50 mass % or less with respect to an entire amount of the working fluid, which overlaps with the claimed range of “from 5 to 35% by weight”.
The second component (i.e. 2,3,3,3-tetrafluoropropene and difluoromethane) of Ueno can be in an amount of 1 mass % or more and 70 mass % or less with respect to an entire amount of the working fluid, which overlaps with the claimed range of “from 5 to 60% by weight”.
Ueno also teaches that a heat transfer composition comprises the working fluid and a refrigerant oil ([0122]), wherein the refrigerant oil can be a polyol ester oil ([0125]), which reads on the claimed lubricant.
Ueno further teaches that the refrigerant oil is in an amount of 10 parts by mass or more and 100 parts by mass or less with respect to 100 parts by mass of the working fluid ([0145]). Thus, the refrigerant oil of Ueno can be in an amount of 9 wt.% to 50 wt.% based on the total weight of the heat transfer composition, which overlaps with the claimed range of “from 1 to 15wt%”.
Ueno does not teach the claimed heat transfer 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 4, 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 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, "consists essentially of" will be construed as equivalent to "comprises." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355. See MPEP 2111.03 III.
Ueno teaches that a working fluid comprises trifluoroethylene (HFO-1123) (claim 1, [0013]), a first component which is carbon dioxide (claim 3; Tables 4-6), and a second component which can include 2,3,3,3-tetrafluoropropene (HFO-1234yf) and difluoromethane (HFC-32) (claim 13, [0025]).
Ueno also teaches that a ratio of a total amount of the trifluoroethylene, the first component and the second component with respect to an entire amount of the working fluid is over 90 mass % and 100 mass % or less ([0029]). Thus, a total amount of the trifluoroethylene, the first component (i.e. carbon dioxide), and the second component (i.e. 2,3,3,3-tetrafluoropropene and difluoromethane) with respect to an entire amount of the working fluid of Ueno can be 100 mass %, which reads on the claimed heat transfer fluid consisting essentially of 1,1,2-trifluoroethylene, carbon dioxide, difluoromethane and 2,3,3,3-tetrafluoropropene.
Regarding claim 8, Ueno does not teach that the working fluid is non-flammable.
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 property of the heat transfer fluid being non-flammable would flow naturally from the teaching of Ueno, because the teaching of Ueno provides substantially the same heat transfer fluid including the same amount of 1,1,2-trifluoroethylene, the same amount of carbon dioxide, and the same amount of 2,3,3,3-tetrafluoropropene and difluoromethane as claimed. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 9, Ueno teaches that the working fluid has the global warming potential (GWP) of 250 or less ([0118]), which falls within the claimed range of “less than or equal to 1000”.
Regarding claims 12 and 13, Ueno teaches that the heat transfer composition comprises one or more additives other than the refrigerant oil ([0122], [0147]), and the one or more additives other than the refrigerant oil can be a stabilizer ([0147]).
Regarding claims 14 and 15, Ueno teaches that the heat transfer composition is applied in a heat cycle system, and the heat cycle system can be an air-conditioning apparatus ([0039]-[0040]), which reads on the claimed heat transfer apparatus, and reads on the claimed mobile or stationary apparatuses for heating by air conditioning.
Ueno also teaches that the heat cycle system has a compressor to compress the gaseous working fluid, a condenser to obtain a high-pressured liquid by cooling, an expansion valve to lower the pressure of the high-pressured liquid, and an evaporator to make evaporation at lower temperature for removing heat by the heat of vaporization ([0050]), which reads on the claimed heat transfer apparatus comprising a vapor-compression circuit containing the composition.
Ueno also teaches that the heat transfer composition comprises a working fluid ([0038]); the working fluid comprises trifluoroethylene (HFO-1123) (claim 1, [0013]), a first component which is carbon dioxide (claim 3; Tables 4-6), and a second component which can include 2,3,3,3-tetrafluoropropene (HFO-1234yf) and difluoromethane (HFC-32) (claim 13, [0025]).
Ueno further teaches that a ratio of a total amount of the trifluoroethylene, the first component and the second component with respect to an entire amount of the working fluid is over 90 mass % and 100 mass % or less, wherein a ratio of an amount of the trifluoroethylene with respect to the total amount of the trifluoroethylene, the first component and the second component is 10 mass % or more and 90 mass % or less, wherein a ratio of an amount of the first component with respect to the total amount of the trifluoroethylene, the first component and the second component is 1 mass % or more and 50 mass % or less, and wherein a ratio of an amount of the second component with respect to the total amount of the trifluoroethylene, the first component and the second component is 1 mass % or more and 70 mass % or less ([0029], claim 17).
Thus, the trifluoroethylene of Ueno can be in an amount of 10 mass % or more and 90 mass % or less with respect to an entire amount of the working fluid, which overlaps with the claimed range of “from 5 to 55% by weight”.
The first component (i.e. carbon dioxide) of Ueno can be in an amount of 1 mass % or more and 50 mass % or less with respect to an entire amount of the working fluid, which overlaps with the claimed range of “from 5 to 35% by weight”.
The second component (i.e. 2,3,3,3-tetrafluoropropene and difluoromethane) of Ueno can be in an amount of 1 mass % or more and 70 mass % or less with respect to an entire amount of the working fluid, which overlaps with the claimed range of “from 5 to 60% by weight”.
Ueno 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 19, Ueno teaches that a working fluid is applied in a heat cycle ([0047]), which reads on the claimed heat transfer fluid.
Ueno also teaches that the working fluid comprises trifluoroethylene (HFO-1123) (claim 1, [0013]), a first component which is carbon dioxide (claim 3; Tables 4-6), and a second component which can include 2,3,3,3-tetrafluoropropene (HFO-1234yf) and difluoromethane (HFC-32) (claim 13, [0025]).
Ueno further teaches that a ratio of a total amount of the trifluoroethylene, the first component and the second component with respect to an entire amount of the working fluid is over 90 mass % and 100 mass % or less, wherein a ratio of an amount of the trifluoroethylene with respect to the total amount of the trifluoroethylene, the first component and the second component is 10 mass % or more and 90 mass % or less, wherein a ratio of an amount of the first component with respect to the total amount of the trifluoroethylene, the first component and the second component is 1 mass % or more and 50 mass % or less, and wherein a ratio of an amount of the second component with respect to the total amount of the trifluoroethylene, the first component and the second component is 1 mass % or more and 70 mass % or less ([0029], claim 17).
Thus, the trifluoroethylene of Ueno can be in an amount of 10 mass % or more and 90 mass % or less with respect to an entire amount of the working fluid, which overlaps with the claimed range of “from 5 to 55% by weight”.
The first component (i.e. carbon dioxide) of Ueno can be in an amount of 1 mass % or more and 50 mass % or less with respect to an entire amount of the working fluid, which overlaps with the claimed range of “from 5 to 35% by weight”.
The second component (i.e. 2,3,3,3-tetrafluoropropene and difluoromethane) of Ueno can be in an amount of 1 mass % or more and 70 mass % or less with respect to an entire amount of the working fluid, which overlaps with the claimed range of “from 5 to 60% by weight”.
Ueno does not teach the claimed heat transfer fluid 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.
Response to Arguments
Applicant's arguments filed 06/29/2026 have been fully considered but they are not persuasive.
1. Applicant argues that paragraph [0060] of Ueno includes a list of 13 different substances that can correspond to Ueno's first component; furthermore, paragraph [0082] of Ueno broadly states that "the second component ... is consisting of at least one of substance selected from hydrofluorocarbon (HFC) other than HFC-41 and hydrofluoroolefin (HFO) other than HFO-1123 having the global warming potential (100 years) in the Intergovernmental Panel on Climate Change (IPCC) Fourth Assessment Report of 2000 or less."; thus, the Office has failed to sufficiently demonstrate that a person having ordinary skill in the art would have arrived at the specific combinations of 1,1,2-trifluoroethylene, carbon dioxide, difluoromethane, and 2,3,3,3-tetrafluoropropene, in view of Ueno's broad disclosure (p. 10).
In response, Applicant’s argument is not persuasive.
Ueno teaches that a working fluid comprises trifluoroethylene (HFO-1123), a first component, and a second component (claims 1, 3 and 13).
Claim 3 of Ueno describes below:
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Thus, claim 3 of Ueno clearly teaches that the first component is carbon dioxide. A person of ordinary skill in the art reading Ueno’s claim 3 would “at once envisage” carbon dioxide as the first component. Therefore, carbon dioxide as a first component in claim 3 of Ueno is not among a broad disclosure as alleged by Applicant.
Furthermore, claim 13 of Ueno describes below:
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Therefore, the second component of Ueno can be: (1) 2,3,3,3-tetrafluoropropene (HFO-1234yf); (2) 1,3,3,3-tetrafluoropropene (HFO-1234ze); (3) difluoromethane (HFC-32); (4) HFO-1234yf and HFO-1234ze; (5) HFO-1234yf and HFC-32; (6) HFO-1234ze and HFC-32; (7) HFO-1234yf, HFO-1234ze, and HFC-32. Therefore, the second component of Ueno only has 7 combinations as suggested by claim 13 of Ueno. Thus, the combination of HFO-1234yf and HFC-32 as a second component in claim 13 of Ueno is not among a broad disclosure as alleged by Applicant.
Therefore, a person of ordinary skill in the art reading Ueno’s claims 1, 3, and 13 would have arrived at a working fluid comprising 1,1,2-trifluoroethylene, carbon dioxide, difluoromethane, and 2,3,3,3-tetrafluoropropene.
2. Applicant argues that Ueno's disclosures of compositions are so broad and generic (e.g., 10-90 mass%, 1-50 mass%, 1-70 mass%) that a person having ordinary skill in the art would have had no motivation to conduct routine experimentation to discover the more specific composition of claim 1; the Office has also failed to set forth a rational underpinning establishing why a person having ordinary skill in the art would have been motivated to select the specific composition of claim 1 in view of the generic disclosure in Ueno (p. 11).
In response, Applicant’s argument is not persuasive.
As discussed in claim 1 above, the trifluoroethylene of Ueno can be in an amount of 10 mass % or more and 90 mass % or less with respect to an entire amount of the working fluid, which overlaps with the claimed range of “from 5 to 55% by weight”.
The first component (i.e. carbon dioxide) of Ueno can be in an amount of 1 mass % or more and 50 mass % or less with respect to an entire amount of the working fluid, which overlaps with the claimed range of “from 5 to 35% by weight”.
The second component (i.e. 2,3,3,3-tetrafluoropropene and difluoromethane) of Ueno can be in an amount of 1 mass % or more and 70 mass % or less with respect to an entire amount of the working fluid, which overlaps with the claimed range of “from 5 to 60% by weight”.
Therefore, 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.
"[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005). See MPEP § 2144.05.I.
Furthermore, if Applicant intends to establish unexpected results over the claimed ranges, Applicant should compare a sufficient number of tests both inside and outside the claimed ranges to show the criticality of the claimed ranges.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02 (d).
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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