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 .
Election/Restrictions
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-5, drawn to a refrigerant composition.
Group II, claim(s) 6, drawn to a refrigeration cycle working fluid.
Group III, claim(s) 7, drawn to a refrigeration cycle system.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I, II and III lack unity of invention because even though the inventions of these groups require the technical feature of a refrigerant composition, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Ueno et al. U.S. Patent Application Publication No.: 2018/0079941 A1 (alone) and Fukushima U.S. Patent Application Publication No.: 2014/0070132 A1 (alone). See the below prior-art rejections made individually over said two prior-art references.
During a telephone conversation with Bing Yang on 09/14/26 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-5. Affirmation of this election must be made by applicant in replying to this Office action. Claims 6-7 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Independent claim 1 is drawn to: “A refrigerant composition comprising: trifluoroethylene (HFO-1123); difluoromethane (R32); and propane (R290),” that must fall within the listed concentration coordinates. The indefiniteness results from the fact that the component “difluoromethane (R32)” is NOT a required component (i.e. its concentration can be zero percent in the refrigerant composition). This fact is clearly testified to by Applicant’s Figures 1-4 and Examples 1-2 of Applicant’s specification. Thus, the component, “difluoromethane (R32)” should be labeled as an optional component, and not as a required component of the claimed refrigerant composition.
Claims 2-5 are also rejected here as being either directly dependent or indirectly dependent on rejected independent claim 1.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
EXAMINATION NOTE:
Dependent claim 2 requirement that the refrigerant composition according to claim 1, must further comprise a halomethane is clearly met when a prior-art reference teaches/suggests a three component refrigerant composition comprising various concentrations of trifluoroethylene (HFO-1123), H3H8 (i.e. propane) and difluoromethane (R32). In such a composition, the difluoromethane (R32) component reads directly on the further required halomethane component, since according to Applicant’s independent claim 1, difluoromethane (R32) is in fact only an optional component.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ueno et al. U.S. Patent Application Publication No.: 2018/0079941 A1.
Ueno et al. discloses a working fluid for a heat cycle, contains: trifluoroethylene; and a first component consisting of at least one of substance selected from carbon dioxide, fluoromethane, trifluoroiodomethane, methane, ethane, propane, helium, neon, argon, krypton, xenon, nitrogen and ammonia, see abstract and claims.
Applicant’s claims 1-2 are deemed to be anticipated over Examples 119-142 as set forth in TABLE 7. Please note that all said Examples teach three component refrigerant compositions consisting of various concentrations of trifluoroethylene (HFO-1123), H3H8 (i.e. propane) and difluoromethane (R32). Applicant’s claim 3 is deemed to be anticipated over Examples 119-129, 132-133, 135-136 and 138-142 as set forth in TABLE 7. Applicant’s claim 4 is deemed to be anticipated over Examples 119-128, 132, 135, 138 and 140-142 as set forth in TABLE 7. Applicant’s claim 5 is deemed to be anticipated over Examples 119-122, 124-127, 132, 135, 138 and 140-142 as set forth in TABLE 7.
Claim(s) 1 and 3-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fukushima U.S. Patent Application Publication No.: 2014/0070132 A1.
Fukushima discloses a working medium for heat cycle, of which combustibility is suppressed, which has less influence over the ozone layer, which has less influence over global warming and which provides a heat cycle system excellent in the cycle performance (capacity), and a heat cycle system, of which the safety is secured, and which is excellent in the cycle performance (capacity), see abstract and claims.
Applicant’s claims are deemed to be anticipated over many of the two component refrigerant compositions consisting of trifluoroethylene (HFO-1123) and propane, as set forth in TABLE 4. As way of illustration only, Applicant’s claims are deemed to be anticipated over the listed compositions consisting of between 20-80 mass percent of trifluoroethylene (HFO-1123) and 80-20 mass percent propane. Likewise, Applicant’s claims are deemed to be anticipated over the listed compositions consisting of between 92-98 mass percent of trifluoroethylene (HFO-1123) and 8-2 mass percent propane.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764
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