DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on 12/16/2025 has been entered.
Response to Amendment
Applicants’ response filed 12/16/2025 amended claim 1 and cancelled claim 8. Applicants’ amendments overcome the objection to the specification and the 35 USC 112 rejection from the office action mailed 7/22/2025; therefore, these issues are withdrawn. Applicants’ amendments in light of their arguments are persuasive in overcoming the 35 USC 102 rejections over Matsuura and Oota from the office action mailed 7/22/2025; therefore, these rejections are withdrawn. Neither applicants’ amendments nor arguments addressed below overcome the 35 USC 103 rejections over Matsuura or Oota from the office action mailed 7/22/2025; therefore, these rejections are maintained below.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
6. Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuura et al., JP Publication No. JP2009-222033A (hereinafter referred to as Matsuura).
Regarding claims 1-7, Matsuura discloses a compressor (compressor (30) as recited in claim 1 and reads on claims 4 and 6-7) (Para. [0051]-[0054] and see Figures 1-2) in a refrigeration cycle device (refrigeration device (20) as recited in claim 1) (Para. [0048]) that performs a refrigeration cycle using a refrigerant containing 52 wt% and/or 70 to 94 wt% of a hydrofluoroolefin (as recited in claim 1) (Para. [0074] and [0118]-[0122]) and using a refrigerator oil containing a polyol ester or a polyvinyl ether (as recited in claim 1) (Para. [0075]), the compressor comprising a sliding part made of an aluminum alloy containing 5-25 wt% of silicon (as recited in claim 1) (Para. [0038]-[0039] and [0074]), wherein the refrigerator oil includes 0.05 to 3 wt% of an epoxy-based acid scavenger (as recited in claim 1) (Para. [0045], [0084]-[0085] and [0093]) and additives including an extreme pressure agent (as recited in claim 2) (Para. [0086]) and an antioxidant (as recited in claims 3 and 5) (Para. [0093]).
Matsuura differs from instant claim 1 in that Matsuura does not explicitly disclose the relational expression, that is, "the total content (wt%) of the acid scavenger and the oxygen scavenger in the refrigerator oil > (2.3 + 2.6 x (hydrofluoroolefin content (wt%) in refrigerant) - 1.6 x (silicon content (wt%) in sliding portion))/100)" is satisfied.
The ranges of Matsuura encompass and overlap the ranges recited in the instant specification for each of the acid scavenger, hydrofluoroolefin and silicon content in the sliding portion and therefore would anticipate or render obvious instant claim 1.
Claim Rejections - 35 USC § 103
7. Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Oota et al., US Patent Application Publication No. 2019/0128249 (hereinafter referred to as Oota).
Regarding claims 1-7, Oota discloses a compressor (as recited in claim 1 and reads on claims 4 and 6-7) (see Abstract) in a refrigeration air-conditioning apparatus (as recited in claim 1) (see Title) that compresses a refrigerant containing 20 wt% or more of a hydrofluoroolefin (as recited in claim 1) (see Abstract) and using a refrigerator oil containing a polyvinyl ether base oil (as recited in claim 1) (see Abstract), the compressor comprising a sliding part made of an aluminum alloy containing 10 to 12 wt% of silicon (as recited in claim 1) (Para. [0176]), wherein the refrigerator oil includes 0.1 to 2 wt% of an acid scavenger, alicyclic epoxy compound (as recited in claim 1) (see Abstract) and additives including an extreme pressure agent, such as, tertiary phosphate (as recited in claim 2) (see Abstract and Para. [0012]) and an antioxidant (as recited in claims 3 and 5) (Para. [0102] and [0129]).
Oota differs from instant claim 1 in that Oota does not explicitly disclose the relational expression, that is, "the total content (wt%) of the acid scavenger and the oxygen scavenger in the refrigerator oil > (2.3 + 2.6 x (hydrofluoroolefin content (wt%) in refrigerant) - 1.6 x (silicon content (wt%) in sliding portion))/100)" is satisfied.
The ranges of Oota encompass and overlap the ranges recited in the instant specification for each of the acid scavenger, hydrofluoroolefin and silicon content in the sliding portion and therefore would anticipate or render obvious instant claim 1.
Regarding claim 8, see discussion above.
Response to Arguments
8. Applicants’ arguments filed 12/16/2025 regarding claims 1-7 have been fully considered and are not persuasive.
Applicants argue that Matsuura nor Oota render the instant claims obvious as the example formulations from the instant specification show criticality for the formula of instant claim 1. This argument is not persuasive. In order to demonstrate criticality of results applicants must fulfill two criterions: 1) applicants must compare their formulations against the closest prior art, and 2) the claims must be commensurate in scope with the data provided.
Regarding the first criteria – applicants have not compared their formulations against the closest prior art, nor shown that the comparative examples from the instant specification adequately represent the closest prior art.
Regarding the second criteria – the claims are not commensurate in scope with the data provided. For example, the example formulations from the instant specification require very specific base oils, refrigerants, and additive compounds present in very narrow concentration which are broadly recited in the instant claims. For these reasons applicants have not fulfilled this criteria in the unexpected results analysis.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771