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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/30/2025 has been entered.
This action is responsive to Applicant's amendments/remarks filed 06/30/2025.
Claims 1, 2, 6, 7, and 9-17 are currently pending and under examination.
The rejection of claims 1-17 under 35 U.S.C. 103 as being unpatentable over Low (US 2021/0403777 A1, hereinafter Low) is withdrawn in view of the above amendments.
The rejection of claims 1-17 under 35 U.S.C. 103 as being unpatentable over Huang (CN 110317574 A, hereinafter Huang) is withdrawn in view of the above amendments.
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, 9-14, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Huang (CN 110257014 A, hereinafter Huang).
Regarding claim 1, Huang teaches a mixed refrigerant comprises 9–76% by weight of trifluoroiodomethane, 3–65% by weight of 1,1-difluoroethane, and 1–75% by weight of a fourth component, wherein the fourth component is carbon dioxide ([0014]-[0015]).
Huang specifically teaches a mixed refrigerant comprises 13-61% by weight of trifluoroiodomethane, 3-39% by weight of 1,1-difluoroethane, and 1-5% by weight of carbon dioxide ([0016]; claim 9), which overlaps with the claimed range of “3% by weight or more” of carbon dioxide, and “55 to 71.5% by weight” of trifluoroiodomethane.
Thus, the total content of trifluoroiodomethane and 1,1-difluoroethane can be 16-100% by weight in the mixed refrigerant of Huang, which overlaps with the claimed range of “85 to 98% by weight”.
Huang does not teach the claimed mixed refrigerant 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 claims 2, 6, and 7, Huang teaches a mixed refrigerant comprises 13-61% by weight of trifluoroiodomethane, 3-39% by weight of 1,1-difluoroethane, and 1-5% by weight of carbon dioxide ([0016]; claim 9), which overlaps with the claimed range of “3% by weight or more and 40% by weight or less” of carbon dioxide.
Thus, the ratio of trifluoroiodomethane to carbon dioxide can be 2.6 to 61 in the mixed refrigerant as taught by Huang, which overlaps with the claimed range of “5 to 80”.
The ratio of carbon dioxide to 1,1-difluoroethane can be 0.03 to 1.67 in the mixed refrigerant as taught by Huang, which overlaps with the claimed range of “0.01 to 0.3”.
Regarding claims 9-14, Huang teaches a mixed refrigerant comprises 13-61% by weight of trifluoroiodomethane, 3-39% by weight of 1,1-difluoroethane, and 1-5% by weight of carbon dioxide ([0016]; claim 9).
Huang does not teach that a boiling point of this mixed refrigerant at 1 atm is -70 to -30 oC, a critical temperature of this mixed refrigerant is 105 to 120 oC, a critical pressure of this mixed refrigerant is 40 to 50 bar, a temperature glide of this mixed refrigerant at a pressure of 1.5 bar is 5 to 40 oC, a temperature glide of this mixed refrigerant at a pressure of 15 bar is 3 to 30 oC, and a latent heat of this mixed refrigerant at -25 oC is 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 Huang, because Huang’s teachings provide substantially the same mixed refrigerant composition with the same sum of trifluoroiodomethane and 1,1-difluoroethane, the same content of the carbon dioxide, and the same content of the trifluoroiodomethane as claimed. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
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.
Regarding claim 17, 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.
Huang teaches a mixed refrigerant comprises 9–76% by weight of trifluoroiodomethane, 3–65% by weight of 1,1-difluoroethane, and 1–75% by weight of a fourth component, wherein the fourth component is carbon dioxide ([0014]-[0015]).
Huang specifically teaches a mixed refrigerant comprises 13-61% by weight of trifluoroiodomethane, 3-39% by weight of 1,1-difluoroethane, and 1-5% by weight of carbon dioxide ([0016]; claim 9), which overlaps with the claimed range of “3% by weight or more and 40% by weight or less” of carbon dioxide, and “55 to 71.5% by weight” of trifluoroiodomethane.
Thus, the total content of trifluoroiodomethane and 1,1-difluoroethane can be 16-100% by weight in the mixed refrigerant of Huang, which overlaps with the claimed range of “85 to 98% by weight”.
The ratio of trifluoroiodomethane to carbon dioxide can be 2.6 to 61 in the mixed refrigerant as taught by Huang, which overlaps with the claimed range of “5 to 80”.
Huang does not teach the claimed mixed refrigerant 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.
2. Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Huang (CN 110257014 A, hereinafter Huang) as applied to claims 1, 2, 6, 7, 9-14, 16, and 17 above, and further as evidenced by “IPCC GWP” (IPCC Global Warming Potential Values, 2024, hereinafter “IPCC GWP”).
The disclosure of Huang is relied upon as set forth above.
Regarding claim 15, the instant invention discloses that the carbon dioxide (R-744) has a global warming potential (GWP) of 1 (instant p. 7, ll. 3-4), the trifluoroiodomethane (R-13I1) has a global warming potential (GWP) of less than 5 (instant p. 7, ll. 8-9), and the 1,1-difluoroethane (R-152a) has a global warming potential (GWP) of 150 or less (instant p. 7, ll. 13-14).
Huang teaches a mixed refrigerant comprises 13-61% by weight of trifluoroiodomethane, 16-78% by weight of fluoroethane, 3-39% by weight of 1,1-difluoroethane, and 1-5% by weight of carbon dioxide ([0016]; claim 9).
“IPCC GWP” as an evidentiary reference shows that HFC-161 (fluoroethane) has a global warming potential (GWP) of 4 (p. 2).
Thus, a global warming potential (GWP) of the mixed refrigerant in Huang can be in a range of from 8 to 60, which falls within the claimed range of “1 to 75”.
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, 15, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18, 21-28, 30, and 32-37 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).
The pending claims of the reference application also teach 55% to 71.5% by weight of the R-13I1 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 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 rejection utilizes a new reference, Huang (CN 110257014 A), under a new ground(s) of rejection which renders obvious the instant claims.
As stated above, claims 1, 2, 6, 7, 9-14, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Huang (CN 110257014 A).
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