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 .
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.
Claim Rejections - 35 USC § 112/101
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.
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 10 is 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.
Claim 10 provides for the use of a composition, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim 10 is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-6, 8-11, and 15-22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Peng et al. (WO 2019/213004 A1).
Regarding Claims 1 and 8-9: Peng et al. teaches a composition comprising HFO-1234yf (2,3,3,3-tetrafluoropropene), an inhibitor such as α-terpinene in 100 ppm, and air (O2) (Pg. 1, Lns. 5-10; Pg. 5, Lns. 15-20; Pgs. 36-37; and Table 5, Example 2). Peng et al. further teaches an embodiment wherein the composition is stored with an oxygen and water concentration of about 3-3000 ppm (Pg. 34, Lns. 15-20).
Regarding Claims 2-3: The composition of Peng et al. does not require the presence of any phenol or benzophenone derivatives.
Regarding Claims 4-5: Peng et al. teaches the composition further comprises HFO-1234ze (1234ze) (Pg. 35, Lns. 10-15; Pgs. 36-37; and Table 2, Example 2).
Regarding Claims 6 and 17-18: Peng et al. teaches the composition further comprises a lubricant (Table 2, Example 2).
Regarding Claim 10: Peng et al. teaches a method of heating or cooling utilizing the composition (Pg. 7, Lns. 5-10).
Regarding Claim 11: Peng et al. teaches the composition in a container (Pg. 7, Lns. 5-10).
Regarding Claim 15: Peng et al. teaches a method of heat transfer comprising utilizing the composition as a heat transfer medium to carry heat from a heat source to a heat sink (Pg. 8, Lns. 15-25 and Pg. 9, Lns. 5-7).
Regarding Claim 16: Peng et al. teaches a method of heat transfer comprising utilizing the composition as a refrigerant that undergoes a phase change from a liquid to a gas and back (Pg. 8, Lns. 15-25 and Pg. 9, Lns. 5-10).
Regarding Claims 19-20: Peng et al. teaches the method wherein the composition further comprises HFO-1234ze (1234ze) (Pg. 35, Lns. 10-15; Pgs. 36-37; and Table 2, Example 2).
Regarding Claims 21-22: Peng et al. teaches the method wherein the composition further comprises HFO-1234ze (1234ze) (Pg. 35, Lns. 10-15; Pgs. 36-37; and Table 2, Example 2).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER F GODENSCHWAGER whose telephone number is (571)270-3302. The examiner can normally be reached 8:30-5:00, M-F EST.
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, Mark Eashoo can be reached at 571-272-1197. 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.
/PETER F GODENSCHWAGER/ Primary Examiner, Art Unit 1767 June 25, 2026
Prosecution Insights