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 .
Response to Amendment
2. Applicants’ response filed 1/28/2026 amended claims 1-4, 7-9, 13 and 21, and added new claim 22. Applicants’ amendments overcome the claim objection and the 35 USC 112 rejection from the office action mailed 10/28/2025; therefore, these issues are withdrawn. Applicants’ amendments in light of their arguments are persuasive in overcoming the 35 USC 103 rejection over Takahashi from the office action mailed 10/28/2025; therefore, this rejection is withdrawn. Neither applicants’ amendments nor arguments addressed below overcome the 35 USC 103 rejection over Nagao from the office action mailed 10/28/2025; therefore, this rejection is maintained below.
Information Disclosure Statement
3. The information disclosure statement (IDS) submitted 11/26/2025 was filed after the mailing date of the non-final office action on 10/28/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Rejections - 35 USC § 103
4. 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.
5. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
6. Claims 1-4, 7-9, 13 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Nagao et al., US Patent No. 6,248,256 (hereinafter referred to as Nagao).
Regarding claims 1-4, 7-9, 13 and 21-22, Nagao discloses a refrigerator oil composition (as recited in claim 1) (see Title) comprising a refrigerant containing a C1-8 hydrocarbon as a primary component (as recited in claim 1 and reads on claims 21-22) (see Abstract and Col. 2/L. 17-18), and a base oil comprising a polyalkylene glycol derivative represented by the following general formula (1):
PNG
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162
348
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Greyscale
(as recited in claim 1 – as Example 10 in Table 2 includes R1 as a methyl group, R2 is hydrogen PO=14 units and EO=6 units and reads on claim 2; reads on claim 4 as Example 8/Table 2 uses 20 wt% refrigerant and 80 wt% PAG base oil) (see Tables 2-3/Examples 8 and 10 and Col. 5/L. 52-62).
The polyalkylene glycol compound is clearly within the number average molecular weight recited in instant claims 1 and 7 (and the viscosity index as the viscosity index is directly correlated to the number average molecular weight of the compound). Also, the polyalkylene glycol compound of Nagao reads on the formula of instant claims 1 and 7 and would therefore inherently read on the hydroxyl value recited in claims 1 and 7.
Response to Arguments
7. Applicants’ arguments filed 1/28/2026 regarding claims 1-4, 7-9, 13 and 21-22 have been fully considered and are not persuasive.
Applicants argue that Nagao does not disclose a refrigerating oil composition “consisting of” a hydrocarbon refrigerant and thus does not read on the instant claims. Applicants argue that column 3/line 16 of Nagao allows for the possibility of a mixture of refrigerants and not “solely” a hydrocarbon refrigerant. This argument is not persuasive. Column 3/lines 16-30 preferably include 90 wt% or more of a hydrocarbon refrigerant and allow for the possibility of a mixture of refrigerants but definitely NOT a mandatory mixture of refrigerants. Examples 1-7 from Table 1 of Nagao use a mixture of hydrocarbon refrigerants that fall within the scope of what is recited in instant, independent claims 1 and 7.
Applicants also argue that Nagao does not disclose the ratio of (EO/PO) units being 0.6 or less. This argument is also not persuasive as discussed above. The polyalkylene glycol base oil of Nagao in Example 10 of Tables 2-3 is clearly within the ratio of EO/PO as recited in instant, independent claims 1 and 7.
Finally, applicants argue that the instant application demonstrates unexpected results and as such overcomes the obviousness rejection set forth above. This argument is not persuasive. In order to demonstrate unexpected results applicants must fulfill two criterions: 1) applicants must compare their formulations against the closest prior art, and 2) the claims must be commensurate in scope with the data provided.
Regarding the first criteria – applicants have not compared their formulations against the closest prior art, nor shown that the comparative examples from the instant specification adequately represent the closest prior art.
Regarding the second criteria – the claims are not commensurate in scope with the data provided. For example, the example formulations from the instant specification require very specific PAG base oils and hydrocarbon refrigerants present in very narrow concentrations which are broadly recited in the instant, independent claims. For these reasons applicants have not fulfilled these criteria in the unexpected results analysis.
Conclusion
8. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771