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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3 May 2024 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Office.
The information disclosure statement (IDS) submitted on 20 November 2024 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Office.
The information disclosure statement (IDS) submitted on 12 December 2024 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Office.
The information disclosure statement (IDS) submitted on 28 February 2025 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Office.
The information disclosure statement (IDS) submitted on 15 July 2025 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Office.
The information disclosure statement (IDS) submitted on 18 September 2025 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Office.
The information disclosure statement (IDS) submitted on 1 December 2025 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Office.
The information disclosure statement (IDS) submitted on 13 May 2026 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Office.
Claim Rejections - 35 USC § 103
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 and 3-17 are rejected under 35 U.S.C. 103 as being unpatentable over Komatsubara et al. (US 2002/0035848, hereinafter referred to as “Komastubara”) in view of Fukushima et al. (US 2016/0347982, hereinafter referred to as “Fukushima”).
As to Claim 1: Komatsubara teaches a refrigerating device comprising a refrigerant circuit comprising a compressor (Fig. 1). Komatsubara further teaches that the main component of the refrigerant is a hydrocarbon having 1 to 4 carbon atoms such as propane [0026] and a sulfur containing odorant such as tetrahydrothiophene [0029]. Komatusbara further teaches that the refrigeration oil can be an ether oil such as polyalkylene glycol [0037].
Komatsubara does not teach that the ratio of the oxygen to carbon atoms in the polyalkylene glycol is 0.5 or less.
However, Fukushima teaches that ether refrigerant oils with carbon to oxygen ratios of 2-7.5 (i.e., an oxygen to carbon ratio of 0.5 or less) have better compatibility with the working fluid and low moisture absorbance [0134-0138]. Komatsubara and Fukushima are analogous art in that they are from the same field of endeavor, namely refrigerant devices and compositions. At the time of filing, it would have been obvious to a person having ordinary skill in the art to use the carbon to oxygen ratio of Fukushima for the polyalkylene glycol in the composition of Komatusbara because Fukushima teaches that this ratio improves compatibility with the working fluid and has low moisture absorbance [0138].
Komatsubara and Fukushima do not expressly teach the difference between the HSP distance between the PAG and the odorant and the PAG and the refrigerant is -2.0 or more. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Komatsubara and Fukushima. However, Komatsubara and Fukushima teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, HSP difference is related to the O/C ratio which is taught by Fukushima with Komatsubara having the same refrigerant and odorant. Therefore, the claimed effects and physical properties, i.e. the difference between the HSP distance between the PAG and the odorant and the PAG and the refrigerant is -2.0 or more, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
As to Claim 3: Komatsubara and Fukushima render obvious the device of Claim 1 (supra). Komatsubara and Fukushima do not expressly teach the difference between the HSP distance between the PAG and the odorant and the PAG and the refrigerant is -0.5 or more. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Komatsubara and Fukushima. However, Komatsubara and Fukushima teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, HSP difference is related to the O/C ratio which is taught by Fukushima with Komatsubara having the same refrigerant and odorant. Therefore, the claimed effects and physical properties, i.e. the difference between the HSP distance between the PAG and the odorant and the PAG and the refrigerant is -0.5 or more, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
As to Claim 4: Komatsubara and Fukushima render obvious the device of Claim 1 (supra). Kombatsura further teaches that the odorant can be tetrahydrothiophene [0028].
As to Claim 5: Komatsubara and Fukushima render obvious the device of Claim 1 (supra). Kombatusra further teaches that the refrigerant can be propane [0026].
As to Claim 6: Komatsubara and Fukushima render obvious the device of Claim 1 (supra). Kombatsura further teaches that the odorant can be tetrahydrothiophene [0028] and the refrigerant can be propane [0026].
As to Claim 7: Komatsubara and Fukushima render obvious the device of Claim 1 (supra).
Komatsubara does not teach an example wherein the amount of the odorant is 50-1100 ppm by weight.
However, Komatsubara teaches that the odorant should be present in an amount of 10 ppm to 5000 ppm [0029]. At the time of filing it would have been obvious to a person having ordinary skill in the art to select from within the range of Komatusbara including a range of 50-1100 ppm because Komatsubara teaches that this range is preferable and when it is above the range the odor is to strong and below this range the odor is difficult to detect [0029].
As to Claim 8: Komatsubara and Fukushima render obvious the device of Claim 3 (supra). Kombatsura further teaches that the odorant can be tetrahydrothiophene [0028].
As to Claim 9: Komatsubara and Fukushima render obvious the device of Claim 3 (supra). Kombatusra further teaches that the refrigerant can be propane [0026].
As to Claim 10: Komatsubara and Fukushima render obvious the device of Claim 4 (supra). Kombatusra further teaches that the refrigerant can be propane [0026].
As to Claim 11: Komatsubara and Fukushima render obvious the device of Claim 3 (supra). Kombatsura further teaches that the odorant can be tetrahydrothiophene [0028] and the refrigerant can be propane [0026].
As to Claim 12: Komatsubara and Fukushima render obvious the device of Claim 4 (supra). Kombatsura further teaches that the odorant can be tetrahydrothiophene [0028] and the refrigerant can be propane [0026].
As to Claim 13: Komatsubara and Fukushima render obvious the device of Claim 5 (supra). Kombatsura further teaches that the odorant can be tetrahydrothiophene [0028] and the refrigerant can be propane [0026].
As to Claim 14: Komatsubara and Fukushima render obvious the device of Claim 3 (supra).
Komatsubara does not teach an example wherein the amount of the odorant is 50-1100 ppm by weight.
However, Komatsubara teaches that the odorant should be present in an amount of 10 ppm to 5000 ppm [0029]. At the time of filing, it would have been obvious to a person having ordinary skill in the art to select from within the range of Komatusbara including a range of 50-1100 ppm because Komatsubara teaches that this range is preferable and when it is above the range the odor is to strong and below this range the odor is difficult to detect [0029].
As to Claim 15: Komatsubara and Fukushima render obvious the device of Claim 4 (supra).
Komatsubara does not teach an example wherein the amount of the odorant is 50-1100 ppm by weight.
However, Komatsubara teaches that the odorant should be present in an amount of 10 ppm to 5000 ppm [0029]. At the time of filing, it would have been obvious to a person having ordinary skill in the art to select from within the range of Komatusbara including a range of 50-1100 ppm because Komatsubara teaches that this range is preferable and when it is above the range the odor is to strong and below this range the odor is difficult to detect [0029].
As to Claim 16: Komatsubara and Fukushima render obvious the device of Claim 5 (supra).
Komatsubara does not teach an example wherein the amount of the odorant is 50-1100 ppm by weight.
However, Komatsubara teaches that the odorant should be present in an amount of 10 ppm to 5000 ppm [0029]. At the time of filing, it would have been obvious to a person having ordinary skill in the art to select from within the range of Komatusbara including a range of 50-1100 ppm because Komatsubara teaches that this range is preferable and when it is above the range the odor is to strong and below this range the odor is difficult to detect [0029].
As to Claim 17: Komatsubara and Fukushima render obvious the device of Claim 6 (supra).
Komatsubara does not teach an example wherein the amount of the odorant is 50-1100 ppm by weight.
However, Komatsubara teaches that the odorant should be present in an amount of 10 ppm to 5000 ppm [0029]. At the time of filing, it would have been obvious to a person having ordinary skill in the art to select from within the range of Komatusbara including a range of 50-1100 ppm because Komatsubara teaches that this range is preferable and when it is above the range the odor is to strong and below this range the odor is difficult to detect [0029].
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 and 3-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-8 of U.S. Patent No. 12,662,644. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to refrigeration cycle devices having the same refrigerant and refrigerant oil which contains polyalkylene glycol with the same structure.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J OYER whose telephone number is (571)270-0347. The examiner can normally be reached 9AM-6PM EST M-F.
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/Andrew J. Oyer/Primary Examiner, Art Unit 1767
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