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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/25/25 has been entered.
Claim Rejections - 35 USC § 103
Claims 1, 14-15, and 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over Shono (WO 2020/158518 A1).
An English-language equivalent of Shono, U.S. Pat. No. 2022/0098506, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the English-language reference.
In paragraph 1, Shono discloses a refrigerating machine oil and a method for producing the refrigerating machine oil. In paragraphs 134 and 141 Shono discloses using the refrigerating machine oil is a refrigerating machine, meeting the method limitation of claim 1. In paragraphs 25-27 Shono discloses that the refrigerating machine oil comprises a base oil which can be an oxygenate (oxygen-containing oil), as recited in claim 1. In paragraphs 40-45 Shono discloses that the base oil can be a polyol ester, and in paragraphs 56 and 85-100 Shono discloses that the base oil can be a polyalkylene glycol, both as recited for component (d) of claim 1. In paragraphs 103 and 125 Shono discloses that the composition can comprise an antioxidant, as recited in component (c) of claim 1, and discloses that the antioxidant can be present in an amount of 0.01 to 5% by weight, encompassing the range recited for component (c) of claim 1.
In paragraphs 103-124 and 127 Shono discloses that the composition can comprise an acid scavenger and a defoamer (antifoaming agent), where the defoamer can be present in an amount of 5% by weight or less, encompassing the range recited in claim 15.
In paragraphs 135-137 Shono discloses that the refrigerating machine can be charged with various hydrofluorocarbon refrigerants including R32, R134a, R404A, and R410A, all meeting the limitations of claims 20-21. In paragraph 141 Shono discloses that the compositions are used in various types of refrigerating machines which will contain a compressor and a condenser, as recited in claim 22, and specifically discloses an air conditioner comprising a reciprocating compressor, as recited in claim 23.
The differences between Shono and the currently presented claims are:
i) Shono discloses in paragraph 126 that the composition can comprise various antiwear agents including triphenylphosphorothionate (triphenylthiophosphate), as recited in component (a) of claim 1, and alkylated triphenyl phosphate, but does not specifically disclose compositions comprising a combination of triphenyl phosphorothionate and butylated triphenyl phosphate.
ii) Some of the ranges of Shono overlap or encompass the claimed ranges rather than falling within them.
With respect to i), “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted). It therefore would have been obvious to one of ordinary skill in the art to combine the triphenyl thiophosphate and alkylated triphenyl phosphate in the composition of Shono. Shono discloses in paragraph 126 that the antiwear agent is present in an amount of 0.01 to 5% by weight, leading to concentrations for the individual triphenyl thiophosphate and alkylated triphenyl phosphate components encompassing the ranges recited in components (a) and (b) of claim 1. Shono further discloses that the alkyl group in the alkylated triphenyl phosphate has 1 to 4 carbon atoms, encompassing the 4 carbon atoms represented by the butyl group in the butylated triphenyl phosphate of component (b) of claim 1.
With respect to ii), See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
In light of the above, claims 1, 14-15, and 20-23 are rendered obvious by Shono
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Shono in view of Kishi (U.S. PG Pub. No 2016/0168500).
The discussion of Shono in paragraph 3 above is incorporated here by reference. Shono discloses a refrigerating machine oil and method meeting the limitations of claim 1, and in paragraph 103 Shono discloses that the refrigerating machine oil can comprise additional additives including a metal deactivator (metal passivator), but does not specifically disclose specific suitable metal deactivators.
In paragraphs 17-20 Kishi discloses an ester-based refrigerating machine oil. In paragraphs 35 and 52 Kishi discloses that the composition can comprise a metal deactivator, and in paragraph 52 Kishi discloses that the metal deactivator can be benzotriazole, as recited in claim 11. Benzotriazole is sulfur-free and therefore meets the limitations of claim 13. In paragraph 35 Kishi discloses that the metal deactivator is present in an amount of 0.001 to 5% by weight, encompassing the range recited in claim 12. The inclusion of the benzotriazole of Kishi as the metal deactivator in the composition of Shono, in the amount taught by Kishi, therefore meets the limitations of claims 11-13.
It would have been obvious to one of ordinary skill in the art to include the benzotriazole of Kishi as the metal deactivator in the composition of Shono, in the amount taught by Kishi, since Kishi discloses that it is a suitable type and concentration of metal deactivator for use in a refrigerating machine oil, and since Kishi teaches in paragraph 52 that it inhibits the ability of metal surfaces to catalyze the decomposition of an ester base oil.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Shono in view of Itoh (U.S. PG Pub. No. 2015/0137025).
The discussion of Shono in paragraph 3 above is incorporated here by reference. Shono discloses a refrigerating machine oil and method meeting the limitations of claim 1 and comprising a polyol ester base oil. In paragraphs 43 and 45 Shono discloses that neopentyl glycol and pentaerythritol are suitable polyol reactants, and that 2-ethylhexanoic acid is a preferred acid reactant, but does not specifically disclose a polyol ester derived from the reaction mixture of neopentyl glycol, pentaerythritol, and 2-ethylhexanoic acid.
In paragraph 2 Itoh discloses an ester for refrigerator oils. In paragraphs 51 and 60-64, as well as Examples 3-5 of Table 1, Itoh discloses preparing a polyol ester from a reaction mixture of neopentyl glycol, pentaerythritol, and 2-ethylhexanoic acid, as recited in claim 19. The use of this polyol ester as the polyol ester in the composition of Shono therefore meets the limitations of claim 19.
It would have been obvious to one of ordinary skill in the art to use the polyol ester of Itoh as the polyol ester in the composition of Shono, since Itoh discloses in Table 1 and paragraph 75 that the polyol ester prepared from neopentyl glycol, pentaerythritol, and 2-ethylhexanoic acid, when prepared by the method of Itoh, has improved thermal stability and is effective in preventing corrosion of iron pieces.
Claims 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Shono in view of Ikeda (U.S. PG Pub. No. 2022/0057100).
The discussions of Shono in paragraph 3 above is incorporated here by reference. Shono discloses a composition and method meeting the limitations of claim 1 and a refrigeration system meeting the limitations of claim 22. In paragraph 141 Shono teaches that the refrigeration system can be an air conditioner. Shono does not specifically disclose that the refrigeration system can comprise copper or copper alloy components, and does not disclose the condensing and evaporating temperatures in the refrigeration system.
In paragraph 1 Ikeda discloses an air-conditioning apparatus. In paragraphs 36-38, Ikeda discloses that the apparatus comprises a compressor and a condenser. In paragraphs 44-45, Ikeda discloses that the apparatus can comprise copper pipes, meeting the limitations of the copper component of claim 24. In paragraphs 47-48 Ikeda calculates the pressure loss of the pipes based on a condensing temperature of 50° C and an evaporating temperature of 5° C, within the ranges recited in claim 25. Using the air-conditioning apparatus of Ikeda as the air conditioner of Shono therefore meets the limitations of claim 24, and using and air conditioner having the condensing temperature and evaporating temperature taught by Ikeda meets the limitations of claim 25.
It would have been obvious to one of ordinary skill in the art to use the air-conditioning apparatus of Ikeda as the air conditioner of Shono, since Ikeda teaches in paragraph 10 that it provides various advantages in terms of heat exchange efficiency, system efficiency, and cost. It would have further been obvious to one of ordinary skill in the art for the air conditioner of Ikeda at the condensing temperature and evaporating temperature taught in paragraph 48 of Ikeda, since Ikeda’s use of them in calculating the pressure loss of the pipes indicates that they are typical temperatures for the air-conditioning apparatus.
Claims 1, 14-15, 20-22, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Nara (JP 2019-158233 A).
An English-language machine translation or Nara, which is attached, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the machine translation.
In paragraphs 8-9 Nara discloses the use of a refrigerating machine oil in a refrigerant circulation system provided in a refrigeration machine and filled with a fluorohydrocarbon refrigerant, where the refrigerating machine oil comprises a fatty acid ester as a base oil. A fatty acid ester is an oxygenate, as recited in claim 1, and in paragraphs 29-33 Nara discloses that the fatty acid ester can be a polyol ester, as recited in component (d) of claim 1. In paragraph 61 Nara discloses that the composition preferably comprises an antioxidant, as recited in component (c) of claim 1, where the antioxidant is preferably present in an amount of 0.05 to 0.4% by weight, within the range recited for component (c) of claim 1. In paragraph 55 Nara discloses limiting the acid value and hydroxyl value of the composition to prevent corrosion.
The refrigerating machine oil of Nara comprises a glycidyl acid scavenger, meeting the limitations of claim 14, and in paragraph 62 Nara discloses that the composition can comprise an additional acid scavenger as well as an antifoaming agent (defoamer), also meeting the limitations of claim 14. In paragraph 62 Nara discloses that the concentration of the additional additive can be 5% by weight or less, encompassing the range recited in claim 15 for the defoamer.
In paragraphs 24 and 69 Nara discloses that the refrigeration system comprises a hydrofluorocarbon refrigerant, as recited in claim 20, and specifically discloses R-32, R-134a, as recited in claim 21. In paragraph 25 Nara discloses that the refrigerant can also be R-404A or R-410A, also as recited in claim 21.
In paragraphs 7 and 17 Nara discloses that the refrigerator comprises a compressor and a condenser, as recited in claim 22. In paragraph 20 Nara discloses a condensing temperature of 50 to 70° C and an evaporating temperature of -40 to 0° C, overlapping and encompassing the ranges recited in claim 25.
The differences between Nara and the currently presented claims are:
i) Nara does not specifically disclose the combination of triphenyl thiophosphate and butylated triphenyl phosphate of components (a) and (b) of claim 1.
ii) Some of the ranges of Nara overlap or encompass the claimed ranges rather than falling within them.
With respect to i), In paragraph 53 Nara discloses that the composition can comprise a combination of two or more phosphorus-based extreme pressure agents, including phosphate esters and thiophosphate esters. In paragraph 55 Nara discloses that a preferred phosphate ester is a triphenyl phosphate having an alkyl group of 1 to 4 carbon atoms, and in paragraph 74 Nara specifically discloses (component C2 near the bottom of the paragraph) a butylated triphenyl phosphate, as recited in component (b) of claim 1. In paragraph 57 Nara discloses that triphenyl phosphorothioate (triphenylthiophosphate), as recited in component (a) of claim 1.
“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted).
It therefore would have been obvious to one of ordinary skill in the art to combine the butylated triphenyl phosphate and the triphenyl phosphorothioate in the composition of Nara, since Nara discloses that they have equivalent use as phosphorus-based extreme pressure agents in the composition, discloses that the phosphorus-based extreme pressure agents can be used in combination, and discloses that alkylated triphenyl phosphates are among the preferred extreme pressure agents.
With respect to ii), See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
In light of the above, claims 1, 14-15, 20-22, and 25 are rendered obvious by Nara.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nara in view of Kishi (U.S. PG Pub. No 2016/0168500).
The discussion of Nara in paragraph 7 above is incorporated here by reference. Nara discloses a refrigerating machine oil and method meeting the limitations of claim 1, and in paragraph 62 Nara discloses that the refrigerating machine oil can comprise additional additives including a metal deactivator (metal passivator), but does not specifically disclose specific suitable metal deactivators.
In paragraphs 17-20 Kishi discloses an ester-based refrigerating machine oil. In paragraphs 35 and 52 Kishi discloses that the composition can comprise a metal deactivator, and in paragraph 52 Kishi discloses that the metal deactivator can be benzotriazole, as recited in claim 11. Benzotriazole is sulfur-free and therefore meets the limitations of claim 13. In paragraph 35 Kishi discloses that the metal deactivator is present in an amount of 0.001 to 5% by weight, encompassing the range recited in claim 12. The inclusion of the benzotriazole of Kishi as the metal deactivator in the composition of Nara, in the amount taught by Kishi, therefore meets the limitations of claims 11-13.
It would have been obvious to one of ordinary skill in the art to include the benzotriazole of Kishi as the metal deactivator in the composition of Nara, in the amount taught by Kishi, since Kishi discloses that it is a suitable type and concentration of metal deactivator for use in a refrigerating machine oil, and since Kishi teaches in paragraph 52 that it inhibits the ability of metal surfaces to catalyze the decomposition of an ester base oil.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Nara in view of Itoh (U.S. PG Pub. No. 2015/0137025).
The discussion of Nara in paragraph 7 above is incorporated here by reference. Nara discloses a working fluid composition and refrigerating machine oil meeting the limitations of claim 1. In paragraphs 31-32 Nara discloses that neopentyl glycol and pentaerythritol are preferred polyol reactants, and 2-ethylhexanoic acid is a preferred acid reactant, but does not specifically disclose a polyol ester derived from the reaction mixture of neopentyl glycol, pentaerythritol, and 2-ethylhexanoic acid.
In paragraph 2 Itoh discloses an ester for refrigerator oils. In paragraphs 51 and 60-64, as well as Examples 3-5 of Table 1, Itoh discloses preparing a polyol ester from a reaction mixture of neopentyl glycol, pentaerythritol, and 2-ethylhexanoic acid, as recited in claim 19. The use of this polyol ester as the polyol ester in the composition of Nara therefore meets the limitations of claim 19.
It would have been obvious to one of ordinary skill in the art to use the polyol ester of Itoh as the polyol ester in the composition of Nara, since Itoh discloses in Table 1 and paragraph 75 that the polyol ester prepared from neopentyl glycol, pentaerythritol, and 2-ethylhexanoic acid, when prepared by the method of Itoh, has improved thermal stability and is effective in preventing corrosion of iron pieces.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Nara in view of Ikeda (U.S. PG Pub. No. 2022/0057100).
The discussions of Nara in paragraph 7 above is incorporated here by reference. Nara discloses a composition meeting the limitations of claim 1 and a refrigerator meeting the limitations of claim 22. In paragraph 21 Nara teaches that the refrigerator can be an air conditioner. Nara does not specifically disclose that the refrigerator system can comprise copper or copper alloy components.
In paragraph 1 Ikeda discloses an air-conditioning apparatus. In paragraphs 36-38, Ikeda discloses that the apparatus comprises a compressor and a condenser. In paragraphs 44-45, Ikeda discloses that the apparatus can comprise copper pipes, meeting the limitations of the copper component of claim 24.
It would have been obvious to one of ordinary skill in the art to use the air-conditioning apparatus of Ikeda as the air conditioner of Nara, since Ikeda teaches in paragraph 10 that it provides various advantages in terms of heat exchange efficiency, system efficiency, and cost.
Response to Arguments
Applicant argues that the reference’s cited in the office action mailed 6/26/25 do not teach compositions comprising both triphenylthiophosphate and butylated triphenyl phosphate, as required in the amended claims filed 9/25/25. However, as discussed in the above rejections, the newly applied Shono and Nara references render this limitation obvious. Applicant additionally argues that the claimed compositions yield unexpectedly superior results in terms of metals compatibility and corrosion reduction, pointing to the examples provided in the specification. In order to successfully rebut a prima facie case of obviousness, applicant must demonstrate unexpected results commensurate in scope with the claims. See MPEP 716.02(d). In this case, while claim 1 has been amended to recite specific compounds for components (a) and (b) which match the compounds used in Inventive Examples 3 and 4, the claim still allows for broader concentration ranges of all the claimed components, and broad classes of antioxidants and oxygenates, while the inventive examples supplied by applicant contain specific amounts of each component and use specific antioxidants. Applicant has not provided evidence or reasoning as to why one of ordinary skill in the art would expect superior results to be maintained across the full scope of the claim. The total amount of thiophosphorous and phosphorous additive in Inventive Examples 3 and 4 is greater than the amount of thiophosphorus additive in Inventive Examples 1 and 2; it is not clear whether the superior results are a function of the higher concentration of active ingredient, or whether superior results would be maintained at the low end of the claimed concentration ranges. Applicant therefore has not demonstrated evidence of unexpected results sufficient to overcome the prima facie cases of obviousness set forth in the above rejections.
Conclusion
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771