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 05/29/2026.
Claims 1, 2, 6, 7, and 9-21 are currently pending and under examination.
The rejection of claims 1, 2, 6, 7, 9-14, 16, and 17 under 35 U.S.C. 103 as being unpatentable over Huang (CN 110257014 A) is withdrawn in view of the above amendment.
The rejection of claim 15 under 35 U.S.C. 103 as being unpatentable over Huang (CN 110257014 A), and further as evidenced by “IPCC GWP” (IPCC Global Warming Potential Values, 2024) is withdrawn in view of the above amendment.
The rejection of claims 1, 2, 6, 7, 15, and 17 provisionally on the ground of nonstatutory double patenting as being unpatentable over claims 18, 21-28, 30, and 32-36 of copending Application No. 19/313,968 (reference application) 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.
1. Claims 1, 2, 6, 7, 9-16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wilson (US 2006/0025322 A1, hereinafter Wilson) in view of Flohr (US 2006/0202154 A1, hereinafter Flohr).
Regarding claim 1, Wilson teaches that an azeotrope-like composition consists essentially of from about 35 to about 55 weight percent of 1,1-difluoroethane (HFC-152a), and from about 45 to about 65 weight percent of trifluoroiodomethane (CF3I) ([0018], claims 1-2).
Wilson also teaches that the azeotrope-like composition can further include an additive such as a flame suppressant to form a heat transfer composition ([0025]), and the flame suppressant is in an amount of from about 0.5 to about 30% by weight in the heat transfer composition ([0061]). Thus, the heat transfer composition of Wilson can comprise about 35-55 wt.% of HFC-152a, about 45-65 wt.% of CF3I, and about 0.5-30 wt.% of a flame suppressant.
Wilson also teaches that the azeotrope-like composition can further include an additional component such as CO2 to form a heat transfer composition ([0062], [0074]); and the amount of the additional component such as CO2 is incorporated into the composition in an amount depending on the particular application for the composition ([0074]).
Wilson further teaches that the composition is used as a refrigerant in automotive air conditioning system ([0007]).
Wilson does not teach that the CO2 can be the flame suppressant in the heat transfer composition.
However, Flohr teaches that a refrigerant mixture comprises at least one halogenated hydrocarbon with a GWP100 of less than 150 and carbon dioxide ([0011], claim 1), and examples of the halogenated hydrocarbon with a GWP100 of less than 150 include 1,1-difluoroethane (R152a) and trifluoroiodomethane (CF3I, R13I1) ([0015]). Thus, the refrigerant mixture of Flohr can comprise R152a, CF3I, and CO2.
Flohr also teaches that the disadvantageous property (i.e. combustibility) of the individual substances (e.g. R152a) can be compensated for or offset by combining them with carbon dioxide, thereby making the resulting refrigerant mixture being used for automobile air conditioners ([0017]).
Flohr further teaches that R152a is combustible ([0016]); when the carbon dioxide is included in the refrigerant mixture which comprises R152a, the risk of combustibility is minimized or greatly limited ([0018]-[0019], [0021]). Thus, CO2 works as a flame suppressant in the refrigerant mixture of Flohr.
Flohr further teaches that in the refrigerant mixture which comprises R152a and CO2, CO2 is in an amount of 2-30 wt.% in the refrigerant mixture ([0019]), which falls within the range of “about 0.5-30 wt.%” of a flame suppressant in Wilson.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide CO2 as taught by Flohr as the flame suppressant in Wilson, in order to minimize the combustibility of the heat transfer composition comprising R152a, thereby making the composition being used in automobile air conditioners with a reasonable expectation of success, because the combustibility of R152a is compensated for or offset by combining it with CO2, thereby making the resulting refrigerant mixture being used in automobile air conditioners as recognized by Flohr, and the both compositions of Wilson and Flohr can comprise R152a, CF3I, and CO2 as art recognized.
Thus, the heat transfer composition as taught by the combination of Wilson and Flohr can comprise about 35-55 wt.% of HFC-152a, about 45-65 wt.% of CF3I, and about 0.5-30 wt.% of CO2, which is free of fluoroethane (R-161), and overlap with the claimed ranges of “3% by weight or more” of CO2, and “55 to 71.5% by weight” of CF3I.
In the heat transfer composition as taught by the combination of Wilson and Flohr, a total amount of CF3I and HFC-152a can be about 70-99.5 wt.%, which overlaps with the claimed range of “85 to 97%by weight” of a sum of CF3I and HFC-152a. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 2, as discussed in claim 1 above, the heat transfer composition as taught by the combination of Wilson and Flohr can comprise about 0.5-30 wt.% of CO2, which overlaps with the claimed range of “3% by weight or more and 40% by weight or less”.
Regarding claims 6 and 7, as discussed in claim 1 above, the heat transfer composition as taught by the combination of Wilson and Flohr can comprise about 35-55 wt.% of HFC-152a, about 45-65 wt.% of CF3I, and about 0.5-30 wt.% of CO2. Thus, in the heat transfer composition as taught by the combination of Wilson and Flohr, a ratio of the amount of CF3I to the amount of CO2 can be in a range of about 1.5 to 130, which overlaps with the claimed range of “5 to 80”.
In the heat transfer composition as taught by the combination of Wilson and Flohr, a ratio of the amount of CO2 to the amount of HFC-152a can be in a range of about 0.01 to 0.86, which overlaps with the claimed range of “0.01 to 0.3”.
Regarding claims 9-14, as discussed in claim 1 above, the heat transfer composition as taught by the combination of Wilson and Flohr can comprise about 35-55 wt.% of HFC-152a, about 45-65 wt.% of CF3I, and about 0.5-30 wt.% of CO2.
Wilson and Flohr do not teach that this heat transfer composition has a boiling point at 1 atm of -70 to -30 oC, a critical temperature of 105 to 120 oC, a critical pressure of 40 to 50 bar, a temperature glide at a pressure of 1.5 bar of 5 to 40 oC, a temperature glide at a pressure of 15 bar of 3 to 30 oC, and a latent heat at -25 oC of 100 to 250 kJ/kg.
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 those claimed properties would flow naturally from the teachings of the combination of Wilson and Flohr, because the teachings of the combination of Wilson and Flohr provide substantially the same mixed refrigerant composition comprising CO2, CF3I, and R152a, with the same total amount of CF3I and R152a in the composition, the same amount of CO2, the same amount of CF3I, and the composition being free of R-161 as claimed. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 15, the instant invention discloses that the carbon dioxide (R-744) has a global warming potential (GWP) of 1, the trifluoroiodomethane (R-13I1) has a global warming potential (GWP) of 1, and the 1,1-difluoroethane (R-152a) has a global warming potential (GWP) of 124 (instant US [0091]).
As discussed in claim 1 above, the heat transfer composition as taught by the combination of Wilson and Flohr can comprise about 35-55 wt.% of HFC-152a, about 45-65 wt.% of CF3I, and about 0.5-30 wt.% of CO2.
Thus, the heat transfer composition as taught by the combination of Wilson and Flohr can have a global warming potential (GWP) of about 44 to 69, which falls within the claimed range of “1 to 75”.
Regarding claim 16, the preamble term “A heat pump” is an intended use and does not add structural difference, thus the intended use is extended little patentable weight. See MPEP § 2112.02.
Wilson teaches that the composition can be used as a refrigerant in a heat pump system ([0007]).
Regarding claims 18-20, as discussed in claim 1 above, the heat transfer composition as taught by the combination of Wilson and Flohr can comprise about 35-55 wt.% of HFC-152a, about 45-65 wt.% of CF3I, and about 0.5-30 wt.% of CO2, which reads on the claimed CF3I and HFC-152a being the only fluorinated refrigerants in the mixed refrigerant composition, and overlap with the claimed ranges of “25 to 40% by weight” of HFC-152a, and “3% to 5% by weight” of CO2.
2. Claims 17 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Singh (US 2006/0116310 A1, hereinafter Singh) in view of Flohr (US 2006/0202154 A1, hereinafter Flohr).
Regarding claim 17, Singh teaches an azeotrope-like composition consisting essentially of from about 5 to about 35 weight percent of 1,1-difluoroethane (HFC-152a) and from about 65 to about 95 weight percent of trifluoroiodomethane (CF3I) ([0010], claims 1-2).
Singh also teaches that the azeotrope-like composition can further include an additive such as a flame suppressant to form a heat transfer composition ([0020]), and the flame suppressant can be in an amount of from about 0.5 to about 15% by weight in the heat transfer composition ([0055]). Thus, the heat transfer composition of Singh can comprise about 5-35 wt.% of HFC-152a, about 65-95 wt.% of CF3I, and about 0.5-15 wt.% of a flame suppressant.
Singh also teaches that the azeotrope-like composition can further include an additional component such as CO2 to form a heat transfer composition ([0056], [0068]); and the amount of the additional component such as CO2 is incorporated into the composition in an amount depending on the particular application for the composition ([0069]).
Singh further teaches that the composition is used as a refrigerant in automotive air conditioning system ([0011]).
Singh does not teach that the CO2 can be the flame suppressant in the heat transfer composition.
However, Flohr teaches that a refrigerant mixture comprises at least one halogenated hydrocarbon with a GWP100 of less than 150 and carbon dioxide ([0011], claim 1), and examples of the halogenated hydrocarbon with a GWP100 of less than 150 include 1,1-difluoroethane (R152a) and trifluoroiodomethane (CF3I, R13I1) ([0015]). Thus, the refrigerant mixture of Flohr can comprise R152a, CF3I, and CO2.
Flohr also teaches that the disadvantageous property (i.e. combustibility) of the individual substances (e.g. R152a) can be compensated for or offset by combining them with carbon dioxide, thereby making the resulting refrigerant mixture being used for automobile air conditioners ([0017]).
Flohr further teaches that R152a is combustible ([0016]); when the carbon dioxide is included in the refrigerant mixture which comprises R152a, the risk of combustibility is minimized or greatly limited ([0018]-[0019], [0021]). Thus, CO2 works as a flame suppressant in the refrigerant mixture of Flohr.
Flohr further teaches that in the refrigerant mixture which comprises R152a and CO2, CO2 is in an amount of 2-30 wt.% in the refrigerant mixture ([0019]), which overlaps with the range of “about 0.5-15 wt.%” of a flame suppressant in Singh.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide CO2 as taught by Flohr as the flame suppressant in Singh, in order to minimize the combustibility of the heat transfer composition comprising R152a, thereby making the composition being used in automobile air conditioners with a reasonable expectation of success, because the combustibility of R152a is compensated for or offset by combining it with CO2, thereby making the resulting refrigerant mixture being used in automobile air conditioners as recognized by Flohr, and the both compositions of Singh and Flohr can comprise R152a, CF3I, and CO2 as art recognized.
Thus, the heat transfer composition as taught by the combination of Singh and Flohr can comprise about 5-35 wt.% of HFC-152a, about 65-95 wt.% of CF3I, and about 0.5-15 wt.% of CO2, which reads on the claimed CF3I and R-152a being the only fluorinated refrigerants in the mixed refrigerant composition, and overlap with the claimed ranges of “3% to 5% by weight” of CO2, “63% to 71.5% by weight” of CF3I, and “25.5% to 34% by weight” of R-152a. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 21, as discussed in claim 17 above, the heat transfer composition as taught by the combination of Singh and Flohr can comprise about 5-35 wt.% of HFC-152a, about 65-95 wt.% of CF3I, and about 0.5-15 wt.% of CO2.
Thus, in the heat transfer composition as taught by the combination of Singh and Flohr, a ratio of the amount of CO2 to the amount of HFC-152a can be in a range of about 0.01 to 0.4, which overlaps with the claimed range of “0.01 to 0.3”.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 6, 7, and 15-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18, 21-36, and 38-39 of copending Application No. 19/313,968 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
The pending claims of the reference application teach a mixed refrigerant composition comprising a natural refrigerant comprising 3% to 10% by weight of carbon dioxide (R-744); and at least 60% by weight or more of a mixture of fluorinated refrigerants, wherein the mixture of fluorinated refrigerants consists of a mixture of trifluoroiodomethane (R-13I1) and 1,1-difluoroethane (R-152a), and wherein the R-13I1 and the R-152a are the only fluorinated refrigerants in the mixed refrigerant composition.
The pending claims of the reference application also teach that the mixed refrigerant composition comprises 55% to 71.5% by weight of the R-13I1, and 20% to 60% by weight of the R-152a based on the total weight of the mixed refrigerant composition; the ratio of the R-13I1 to the R-744 is 5 to 80 based on the total weight of the mixed refrigerant composition; the ratio of the R-744 to the R-152a is 0.01 to 0.3 based on the total weight of the mixed refrigerant composition; a global warming potential (GWP) of not more than about 50.2.
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 05/29/2026 have been fully considered but they are not persuasive.
1. Applicant's arguments with respect to the prior rejections have been considered but are moot, because the arguments do not apply to any reference being used in the current rejection. The current rejections do not utilize prior art Huang (CN 110257014 A). The current rejections utilize new references, Wilson (US 2006/0025322 A1), Singh (US 2006/0116310 A1), and Flohr (US 2006/0202154 A1), under a new ground(s) of rejection which renders obvious the instant claims.
As stated above, claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Wilson (US 2006/0025322 A1) in view of Flohr (US 2006/0202154 A1).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Singh (US 2006/0116310 A1) in view of Flohr (US 2006/0202154 A1).
2. Applicant argues that the claimed mixed refrigerant compositions display unexpected properties as compared to those of Huang; the claimed mixed refrigerant compositions (comprising R-13I1, R-152a, and R-744, being free of R-161) achieve an improved flammability safety classification, comparable or improved cooling performance, heating performance, and environmental performance (GWP) as compared to Huang’s compositions (comprising R-13I1, R-152a, R-744, and R-161) (Remark, p. 9; Declaration filed 05/29/2026, Tables in § 14 and § 18).
In response, Applicant’s arguments are not persuasive.
Unexpected results must, in actuality, be unexpected. Unexpected results must be compared with the closest prior art. See In re De Blawe, 222 USPQ 191 (FED. Cir. 1984), and In re Fenn, 208 USPQ 470 (CCPA 1981). See MPEP § 716.02(e).
Tables in § 14 and § 18 of the Declaration filed 05/29/2026 are no probative value in the determining patentability of claims, since they do not involve a comparison of Applicant's invention with the closest applied prior art. Tables in § 14 and § 18 of the Declaration filed 05/29/2026 are limited to compositions (comprising R-13I1, R-152a, and R-744, being free of R-161) compared to comparative examples (Huang’s compositions comprising R-13I1, R-152a, R-744, and R-161). However, the teaching of the combination of Wilson and Flohr constitutes closer prior art than Applicant's comparative examples (i.e. Huang’s compositions), because the heat transfer composition of Wilson is free of R-161. Wilson teaches that an azeotrope-like composition consists essentially of from about 35 to about 55 weight percent of 1,1-difluoroethane (HFC-152a), and from about 45 to about 65 weight percent of trifluoroiodomethane (CF3I) ([0018], claims 1-2). Wilson also teaches that the azeotrope-like composition can further include an additive such as a flame suppressant to form a heat transfer composition ([0025]).
Even if, arguendo, the comparison was done between the Applicant' s invention and the closest prior art, the claims are not deemed patentable over the reference of record since they are not commensurate in scope with the probative value of data in the examples. The claims are not commensurate in scope with the comparative showing, because the examples are limited to compositions consisting of R-13I1, R-152a, and R-744, whereas the claims are directed to a compositing comprising R-13I1, R-152a, and R-744. See In re Clemens, 206 USPQ 289 (CCPA 1980).
3. Applicant argues that while the claims of the present application and the co-pending application 19/313,968 share certain subject matter (including the limitation that R-13I1 and R-152a are the only fluorinated refrigerants), the present claims remain distinct in requiring a sum of R-13I1 + R-152a of 85 to 97% by weight, whereas co-pending claim 18 of 19/313,968 requires only "at least 60% by weight or more" without an upper bound (Remarks, p. 11)
Applicant also requests that the provisional double patenting rejection be held in abeyance until allowable subject matter in the present application is identified, at which time Applicant will file a Terminal Disclaimer to obviate the rejection, if necessary (Remarks, p. 11).
In response, Applicant’s argument is not persuasive. The co-pending claim 18 of 19/313,968 requires “at least 60% by weight or more of a mixture of fluorinated refrigerants, wherein the mixture of fluorinated refrigerants consists of a mixture of trifluoroiodomethane (R-13I1) and 1,1-difluoroethane (R-152a)”, which overlaps with the claimed range of “85 to 97% by weight” of a sum of R-13I1 and R-152a.
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. See MPEP § 2144.05.I. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
In response to Applicant's request to hold in abeyance a response, such as, a terminal disclaimer to the copending Application No. 19/313,968 provisional non-statutory double patenting rejection, 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.”
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.
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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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