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 .
Status of Claims
The Office Action is in response to the remarks and amendments filed on 1/27/2026. Claims 12-14 are cancelled. Claim 28 is new. Accordingly, claims 1-11 and 15-28 are pending for consideration in this Office Action. The rejections pursuant to 35 U.S.C. 112(b) have been withdrawn in light of the amendments filed.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/19/2024 was filed on or after the mailing date. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-11 and 15-27 are rejected under 35 U.S.C. 103 as being unpatentable Peng et al. (WO2019/213004A1) in view of Sato, et al. (JP2011016930A).
Regarding Claim 1, Peng teaches a composition comprising 2,3,3,3-tetrafluoropropene [where a composition comprises a fluoroolefin component comprising of HFO-1234yf with chemical name 2,3,3,3-tetrafluoro-1-propene; p.23, lines 20-26 and p.16, Table 3], and
at least one gas component [where the compositions may further comprise carbon dioxide (CO2); p.25, lines 31-34], wherein the gas component is selected from the group consisting of O2, N2, Ar, CO2, CH4, He, and N2/O2 mixtures having a ratio of N2/O2 of greater than or equal to 78/21 [where the composition comprises carbon dioxide (CO2); p.25, lines 31 – p.26 line 4] but does not specifically teach at least one compound selected from the group consisting of CHF(CF3)CH2CH=CF(CF3), CHF(CF3)CH=CHCHF(CF3), CF(CF3)=CHCH2CF(CF3)CH2CHF(CF3), and CF3C(=O)CH3.
However, Sato teaches a refrigeration system that uses a hydrofluoroolefin that does not contain chlorine atom and has a carbon-carbon double bond [0001] where the composition [where refrigerant contains tetrafluoropropene; 0021] comprises CF3C(=O)CH3 [where trifluoroacetone, the common name for CF3C(=O)CH3, is an oxidative decomposition product of 2,3,3,3- tetrafluoropropene; 0034] where one of ordinary skill in the art would have been capable of applying this known technique, using a 2,3,3,3- tetrafluoropropene composition as a refrigerant, to a known device, in a refrigeration apparatus where it would be exposed to residual oxygen [0027], that was ready for improvement and the results would have been predictable to one of ordinary skill in the art i.e., heating and cooling with the composition as a refrigerant in a refrigeration cycle leading to oxidation of the composition [Sato, 0036].
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention have where the invention of Peng has CF3C(=O)CH3 in view of the teachings of Sato where this known technique could have been applied to a known device that was ready for improvement and the results would have been predictable i.e., heating and cooling with the composition as a refrigerant in a refrigeration cycle leading to oxidation of the composition [Sato, 0036].
Regarding Claim 2, Peng, as modified, teaches the invention of claim 1 and further teaches where the composition comprises one or more oligomers [where the composition comprises less than about 0.03wt% of oligomeric homopolymers; p.5, lines 5-7] having a repeating unit of -{[CF(CF3)CH2]x(On)}y[CF(CF3)CH2]z-, where x, y > 1, n = 0, 1 or 2, and z > 0, [where initiators cause a fluoroolefin (e.g., tetrafluoropropene) to homopolymerize; p.2, lines 10-13; where initiators that cause the formation of homopolymers include oxidizers; p.7, lines 13-29; where tetrafluoropropene chemical structure is CF3CF=CH2, which is equivalent to CF(CF3)CH2, Table 3; p.16; and where the homopolymer of tetrafluoropropene from oxidation caused by an initiator would be written as -{[CF(CF3)CH2]x(On)}y[CF(CF3)CH2]z- where x, y > 1, n = 0, 1 or 2, and z > 0, to describe the homopolymerization of at least two monomers of tetrafluoropropene with oxygen, refer to pertinent art below].
Regarding Claim 3, Peng, as modified, teaches the invention of claim 1 and further teaches at least one member selected from the group consisting of 1243zf,1234ze, trifluoropropyne, [where the fluoroolefin component comprises one or more members selected from the group including 1243zf, HFO-1234ze, and trifluoropropyne; p.24, lines 1-5],
1140, 225ca, 225cb [where in another embodiment, the fluorolefin component comprises HFO-1234yf and at least one additional compound selected from the group including 1140 and 225; p.24, lines 16-20; where R-225 is a blend of isomers R-225ca and R-225cb, refer to pertinent art below], and
227ea, and 152a [where In other embodiments of the invention, the fluoroolefin comprises one or more of the foregoing fluoroolefins where suitable hydrofluorocarbons comprise at least one member selected from the group consisting of HFC-152a and HFC- 227ea; p.28, lines 10-14].
Regarding Claim 4, Peng, as modified, teaches the invention of claim 1 and further teaches at least one member selected from the group consisting of 1234ze, 1123, 1233zd, Z-1336mzz, E-1336mzz, 1327mz, E-1225ye, 1132a, 1224yd [where the fluorolefin component comprises HFO-1234yf and at least one additional compound selected from the group including 1234ze(E), 1123, 1233zd(E), 1336 isomer, 1336mzzE, 1327 isomer, 1225ye(E), 1132a, and 1224yd; p.24, lines 16-20]
1243zf, E-1225ye, Z-1225ye [where the fluorolefin component comprises one or more members selected from the group including HFO-1243zf and HFO-1225ye(E/Z isomers); p.25, lines 1-5]
1122 [where the blended composition can further comprise at least one additional member selected from the group including HCFC-1122, p.28, lines 18-20],
1234ye [where the fluoroolefin comprises greater than 0 but less than 1 mass% of at least one member selected from the group including HFO-1234ye; p.24, lines 6-9], and
152a [where fluoroolefin comprises one or more of the foregoing fluoroolefins where suitable hydrofluorocarbons comprise at least one member selected from the group including HFC-152a; p.28, lines 10-14].
Regarding Claim 5, Peng, as modified, teaches the invention of claim 1 and further teaches a lubricant [where the foregoing compositions may further comprise at least one lubricant; p.28, lines 28-30]
Regarding Claim 6, Peng, as modified, teaches the invention of claim 1 and further teaches water [where the compositions are stored within a sealed container including water; p. 34, lines 15-20]
Regarding Claim 7, Peng, as modified, teaches the invention of claim 1 and further teaches wherein an inhibitor [where the composition comprises an effective amount of an inhibitor; p. 34, lines 4-7] is present in an amount of about 30 to about 3,000 ppm [where the examples 1-22 evaluate the composition with concentrations of inhibitor ranging from 50 to 1000 ppm, Table 4; p.35-36].
Regarding Claim 8, Peng, as modified, teaches the invention of claim 1 and further teaches where an inhibitor selected from the group consisting of d-limonene, I- limonene, a-pinene, p-pinene, a-terpinene, p-terpinene, y-terpinene, and 8-terpinene, and mixtures of two or more thereof [where the composition comprises an effective amount of an inhibitor comprising at least one of limonene and a-terpinene; p. 34, lines 4-7].
Regarding Claim 9, Peng, as modified, teaches the invention of claim 8 and further teaches wherein the inhibitor comprises at least one of d-limonene and a-terpinene [where the composition comprises an effective amount of an inhibitor comprising at least one of limonene and a-terpinene; p. 34, lines 4-7]
Regarding Claim 10, Peng, as modified, teaches the invention of claim 5 and further teaches a method for heating or cooling using the composition of Claim 5 [a process for producing heat comprises condensing a composition comprising at least one fluoroolefin and an effective amount of an inhibitor in the vicinity of a body to be heated, and thereafter evaporating said composition, p.34, lines 4-7; refer to the rejection of claim 5 above].
Further, Claim 10 recites functional limitations drawn toward the intended use or manner of operating the claimed apparatus. The functional limitations are: “heating or cooling using the composition of Claim 5.” When the cited prior art teaches all of the positively recited structure of the claimed apparatus, it will be held that the prior art apparatus is capable of performing all of the claimed functional limitations of the claimed apparatus. The courts have held that: (1) "apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), and (2) a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP § 2114.
Regarding Claim 11, Peng, as modified, teaches the invention of claim 1 and further teaches a container [where the compositions are stored in gaseous and/or liquid phases within a sealed container; p.34, lines 15-20] comprising the refrigerant composition of claim 1 [p.34, lines 15-20; refer to the rejection of claim 1 above].
Regarding Claim 15, Peng as modified teaches the invention of claim 1 and further teaches a method of heat transfer [a process for producing heat comprises condensing a composition comprising at least one fluoroolefin and an effective amount of an inhibitor in the vicinity of a body to be heated, and thereafter evaporating said composition, p.34, lines 4-7] wherein a working fluid [a composition comprising at least one fluoroolefin and an effective amount of inhibitor; p.33, lines 24-27] is used to carry heat from a heat source [a body to be cooled, p. 33, lines 28-32] to a heat sink [a body to be heated, p. 34, lines 8-14], characterized by said working fluid comprising a composition of claim 1 [p.34, lines 4-7; refer to the rejection of claim 1 above].
Regarding Claim 16, Peng, as modified, teaches the invention of claim 15 and further teaches where the working fluid [a composition comprising at least one fluoroolefin and an effective amount of inhibitor; p.33, lines 24-27] is a refrigerant that undergoes a phase change from a liquid to a gas and back or vice versa [where a process for producing heat comprises condensing a composition in the vicinity of a body to be heated, and thereafter evaporating said composition, p.34, lines 4-7].
Regarding Claim 17, Peng, as modified, teaches the invention of calim 1 and further teaches at least one member selected from the group consisting of 1243zf,1234ze, trifluoropropyne, [where the fluoroolefin component comprises one or more members selected from the group including 1243zf, HFO-1234ze, and trifluoropropyne; p.24, lines 1-5],
1140, 225ca, 225cb [where in another embodiment, the fluorolefin component comprises HFO-1234yf and at least one additional compound selected from the group including 1140 and 225; p.24, lines 16-20; where R-225 is a blend of isomers R-225ca and R-225cb, refer to pertinent art below], and
227ea, and 152a [where In other embodiments of the invention, the fluoroolefin comprises one or more of the foregoing fluoroolefins where suitable hydrofluorocarbons comprise at least one member selected from the group consisting of HFC-152a and HFC- 227ea; p.28, lines 10-14].
Regarding Claim 18, Peng, as modified, teaches the invention of claim 2 and further teaches at least one member selected from the group consisting of at least one member selected from the group consisting of 1234ze, 1123, 1233zd, Z-1336mzz, E-1336mzz, 1327mz, E-1225ye, 1132a, 1224yd [where the fluorolefin component comprises HFO-1234yf and at least one additional compound selected from the group including 1234ze(E), 1123, 1233zd(E), 1336 isomer, 1336mzzE, 1327 isomer, 1225ye(E), 1132a, and 1224yd; p.24, lines 16-20]
1243zf, E-1225ye, Z-1225ye [where the fluorolefin component comprises one or more members selected from the group including HFO-1243zf and HFO-1225ye(E/Z isomers); p.25, lines 1-5]
1122 [where the blended composition can further comprise at least one additional member selected from the group including HCFC-1122, p.28, lines 18-20],
1234ye [where the fluoroolefin comprises greater than 0 but less than 1 mass% of at least one member selected from the group including HFO-1234ye; p.24, lines 6-9], and
152a [where fluoroolefin comprises one or more of the foregoing fluoroolefins where suitable hydrofluorocarbons comprise at least one member selected from the group including HFC-152a; p.28, lines 10-14].
Regarding Claim 19, Peng, as modified, teaches the invention of claim 2 and further teaches a lubricant [where the foregoing compositions may further comprise at least one lubricant; p.28, lines 28-30]
Regarding Claim 20, Peng, as modified, teaches the invention of claim 3 and further teaches a lubricant [a lubricant, where the foregoing compositions may further comprise at least one lubricant; p.28, lines 28-30]
Regarding Claim 21, Peng, as modified, teaches the invention of claim 4 and further teaches a lubricant [a lubricant, where the foregoing compositions may further comprise at least one lubricant; p.28, lines 28-30]
Regarding Claim 22, Peng, as modified, teaches the invention of claim 10 and further teaches comprises one or more oligomers [where the composition comprises less than about 0.03wt% of oligomeric homopolymers; p.5, lines 5-7] having a repeating unit of -{[CF(CF3)CH2]x(On)}y[CF(CF3)CH2]z-, where x, y > 1, n = 0, 1 or 2, and z > 0, [where initiators cause a fluoroolefin (e.g., tetrafluoropropene) to homopolymerize; p.2, lines 10-13; where initiators that cause the formation of homopolymers include oxidizers; p.7, lines 13-29; where tetrafluoropropene chemical structure is CF3CF=CH2, which is equivalent to CF(CF3)CH2, Table 3; p.16; and where the homopolymer of tetrafluoropropene from oxidation caused by an initiator would be written as -{[CF(CF3)CH2]x(On)}y[CF(CF3)CH2]z- where x, y > 1, n = 0, 1 or 2, and z > 0, to describe the homopolymerization of at least two monomers of tetrafluoropropene with oxygen, refer to pertinent art below].
Regarding Claim 23, Peng, as modified, teaches the invention of claim 10 and further teaches at least one member selected the group consisting of 1243zf,1234ze, trifluoropropyne, [where the fluoroolefin component comprises one or more members selected from the group including 1243zf, HFO-1234ze, and trifluoropropyne; p.24, lines 1-5],
1140, 225ca, 225cb [where in another embodiment, the fluorolefin component comprises HFO-1234yf and at least one additional compound selected from the group including 1140 and 225; p.24, lines 16-20; where R-225 is a blend of isomers R-225ca and R-225cb, refer to pertinent art below], and
227ea, and 152a [where In other embodiments of the invention, the fluoroolefin comprises one or more of the foregoing fluoroolefins where suitable hydrofluorocarbons comprise at least one member selected from the group consisting of HFC-152a and HFC- 227ea; p.28, lines 10-14].
Regarding Claim 24, Peng, as modified, teaches the invention of claim 10 and further teaches at least one member selected from the group consisting of 1234ze, 1123, 1233zd, Z-1336mzz, E-1336mzz, 1327mz, E-1225ye, 1132a, 1224yd [where the fluorolefin component comprises HFO-1234yf and at least one additional compound selected from the group including 1234ze(E), 1123, 1233zd(E), 1336 isomer, 1336mzzE, 1327 isomer, 1225ye(E), 1132a, and 1224yd; p.24, lines 16-20]
1243zf, E-1225ye, Z-1225ye [where the fluorolefin component comprises one or more members selected from the group including HFO-1243zf and HFO-1225ye(E/Z isomers); p.25, lines 1-5]
1122 [where the blended composition can further comprise at least one additional member selected from the group including HCFC-1122, p.28, lines 18-20],
1234ye [where the fluoroolefin comprises greater than 0 but less than 1 mass% of at least one member selected from the group including HFO-1234ye; p.24, lines 6-9], and
152a [where fluoroolefin comprises one or more of the foregoing fluoroolefins where suitable hydrofluorocarbons comprise at least one member selected from the group including HFC-152a; p.28, lines 10-14].
Regarding Claim 25, Peng, as modified, teaches the invention of claim 15 and further teaches where the composition further comprises one or more oligomers [where the composition comprises less than about 0.03wt% of oligomeric homopolymers; p.5, lines 5-7] having a repeating unit of -{[CF(CF3)CH2]x(On)}y[CF(CF3)CH2]z-, where x, y > 1, n = 0, 1 or 2, and z > 0, [where initiators cause a fluoroolefin (e.g., tetrafluoropropene) to homopolymerize; p.2, lines 10-13; where initators that cause the formation of homopolymers include oxidizers; p.7, lines 13-29; where tetrafluoropropene chemical structure is CF3CF=CH2, which is equivalent to CF(CF3)CH2, Table 3; p.16; and where the homopolymer of tetrafluoropropene from oxidation caused by an initiator would be written as -{[CF(CF3)CH2]x(On)}y[CF(CF3)CH2]z- where x, y > 1, n = 0, 1 or 2, and z > 0, to describe the homopolymerization of at least two monomers of tetrafluoropropene with oxygen, refer to pertinent art below]and a lubricant [where the foregoing compositions may further comprise at least one lubricant; p.28, lines 28-30].
Regarding Claim 26, Peng, as modified, teaches the invention of claim 15 wherein the composition further comprises at least one member selected from the group consisting of 1243zf,1234ze, trifluoropropyne, [where the fluoroolefin component comprises one or more members selected from the group including 1243zf, HFO-1234ze, and trifluoropropyne; p.24, lines 1-5],
1140, 225ca, 225cb [where in another embodiment, the fluorolefin component comprises HFO-1234yf and at least one additional compound selected from the group including 1140 and 225; p.24, lines 16-20; where R-225 is a blend of isomers R-225ca and R-225cb, refer to pertinent art below], and
227ea, and 152a [where In other embodiments of the invention, the fluoroolefin comprises one or more of the foregoing fluoroolefins where suitable hydrofluorocarbons comprise at least one member selected from the group consisting of HFC-152a and HFC- 227ea; p.28, lines 10-14]
and a lubricant [where the foregoing compositions may further comprise at least one lubricant; p.28, lines 28-30].
Regarding Claim 27, Peng, as modified, teaches the invention of claim 10 wherein the composition further comprises at least one member selected from the group consisting of 1234ze, 1123, 1233zd, Z-1336mzz, E-1336mzz, 1327mz, E-1225ye, 1132a, 1224yd [where the fluorolefin component comprises HFO-1234yf and at least one additional compound selected from the group including 1234ze(E), 1123, 1233zd(E), 1336 isomer, 1336mzzE, 1327 isomer, 1225ye(E), 1132a, and 1224yd; p.24, lines 16-20]
1243zf, E-1225ye, Z-1225ye [where the fluorolefin component comprises one or more members selected from the group including HFO-1243zf and HFO-1225ye(E/Z isomers); p.25, lines 1-5]
1122 [where the blended composition can further comprise at least one additional member selected from the group including HCFC-1122, p.28, lines 18-20],
1234ye [where the fluoroolefin comprises greater than 0 but less than 1 mass% of at least one member selected from the group including HFO-1234ye; p.24, lines 6-9], and
152a [where fluoroolefin comprises one or more of the foregoing fluoroolefins where suitable hydrofluorocarbons comprise at least one member selected from the group including HFC-152a; p.28, lines 10-14]
and a lubricant [where the foregoing compositions may further comprise at least one lubricant; p.28, lines 28-30].
Allowable Subject Matter
Claim 28 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The subject matter which is considered to distinguish from the closest prior art of record, Peng (WO2019/213004A1), where Peng discloses where a fluoroolefin forms dimers and oligomers where the inventive composition contains less than 1 wt. % of fluoroolefin oligomeric products [p. 7, line 30- p.8, line 2] but does not specifically teach the composition contains at least one compound selected from the group consisting of CHF(CF3)CH2CH=CF(CF3), CHF(CF3)CH=CHCHF(CF3) and CF(CF3)=CHCH2CF(CF3)CH2CHF(CF3).
Therefore, it would not be obvious to modify the technique of the prior art structures to have the apparatus as claimed without improper hindsight and dependent claim 28 is considered allowable.
Response to Arguments
Applicant's arguments filed 1/27/2026 have been fully considered but they are not persuasive.
On page 5-8 of the remarks filed regarding the rejection of claim 1 under 35 U.S.C. 103 over Peng in view of Sato, Applicant argues Sato does not cure the deficiencies of Peng because Sato discloses the presence of trifluoroacetone with 2,3,3,3-tetrafluoropropene is undesirable and should be minimized and thus it would be counterintuitive for one skilled in the art to modify the composition of Peng. Applicant's arguments have been fully considered but they are not persuasive. The rejection does not rely on Sato to suggest the modification of the composition of Peng to contain trifluoroacetone, but rather to support it is obvious to one of ordinary skill in the art to use a composition of Peng in conditions under which oxidative decomposition occurs and trifluoroacetone is a predictable biproduct of those conditions. In particular, Peng discloses that certain fluorolefins can exhibit degradation and/or produce unwanted by-products under normal conditions, p.1, lines 16-26. Peng discloses an objective to stabilize a fluoroolefin to inhibit formation of dimers, oligomers, homopolymers or polymeric products due to oxidizers, p. 7, lines 13- 29, where to be substantially free of a product means the composition contains less than 1 wt% of product, p. 7, lines 30- p.8, line 2. In further view of Sato, a predictable result of oxidative decomposition, although undesirable, would be the denaturation of 2,3,3,3-tetrafluoropropene to form trifluoroacetone in the composition, 0034. Sato does teach the addition of an antioxidant ethanol minimizes trifluoroacetone, 0034, however an amount of trifluoroacetone would continue to be present in the composition. Accordingly, the rejections of record are considered proper and remain.
Applicant does not separately argue the rejection of claims 2-11 and 15-27 except for their dependence upon claim 1. Accordingly, the rejections of record are considered proper and remain.
Conclusion
THIS ACTION IS MADE FINAL. 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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/KEONA LAUREN BANKS/Examiner, Art Unit 3763
/ELIZABETH J MARTIN/Primary Examiner, Art Unit 3763
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