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
This Office Action is in response to the remarks and amendments filed 05/26/2026. The objections to abstract have been withdrawn in light of the amendments filed. Claims 1-3 remain pending for consideration on the merits.
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.
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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Matsukura et al. (US 20180066871 A1, hereinafter “Matsukura”), and further in view of Saito et al. (US 20200017795 A1, hereinafter “Saito”) and Matsumoto (US 20170335230 A1).
Regarding Claim 1, Matsukura teaches a heat source machine [1; Fig.1] in which a compressor [3], a condenser [5], an expansion valve [at least 9, 19], and an evaporator [11] are connected to each other via a main pipe to form a refrigerant circulation circuit configured to circulate a refrigerant [¶ 0078-0079], and the refrigerant circulation circuit is filled with HFO-1336mzz (Z) as a refrigerant [¶ 0068-0070; the system may comprise refrigerant containing a hydrofluoroolefin (HFO)], the heat source machine comprising:
a refrigerating machine oil supply unit [at least 32, 33, 34, 35, 36] configured to supply a refrigerating machine oil to the compressor [¶ 0099; Fig. 1; oil is supplied from tank 32 via pipe 34 to the compressor],
wherein the refrigerating machine oil supply unit includes a storage unit [32] storing the refrigerating machine oil [¶ 0099; Fig. 1; apparent from inspection],
wherein the refrigerating machine oil includes an ester-based base oil [¶ 0100; oil may be ester-based] and an epoxy-based acid scavenger [¶ 0031-0032; Epoxy based acid acceptor; acid acceptors or acid scavengers are often known as interchangeable/equivalent in the context of polymer stabilization; as evidence, see NPL1: Acid Acceptors a Historical Perspective, Pgs. 6 and 9] at a mass that is greater than or equal to 0.1% by mass and less than or equal to 6% by mass with respect to a total mass of the refrigerating machine oil [¶ 0049; acid acceptor is preferably at least 0.2% to 3% by mass].
While Matsukura discloses that the compressor is capable of increasing the temperature of the refrigerant to about 230 °C [¶ 0080], Matsukura does not explicitly disclose wherein the machine design temperature is greater than or equal to 130 °C and less than or equal to 225 °C, or wherein the ester-based oil is a polyol ester synthesized from a tetravalent and hexavalent polyhydric alcohol and a fatty acid having a dynamic viscosity that is greater than or equal to 130 mm2/s and less than or equal to 160 mm2/s at 40 °C.
However, Saito teaches a refrigeration oil composition and working fluid for refrigeration system [Figs. 1-3] comprising at least one of a polyol ester oil and a polyvinyl ether oil [Abstract] [Note: a polyol ester oil is generally understood as being a refrigerating machine oil containing ester synthesized from tetravalent and hexavalent polyhydric alcohols and fatty acids, thus Saito teaches the limitation]. Saito further discloses that a polyol ester oil at 40 °C is preferably from 68 to 350 mm2/s, wherein Saito further emphasizes that the kinematic viscosity should trend differently depending on the application (i.e. air conditioner vs high temperature heat pump, trending to more narrow ranges with higher temperature systems) [¶ 0023-0024]. Saito discloses that the claimed viscosity range ensures good lubricity of the oil [¶ 0024]. One of ordinary skill in the art could have combined the viscosity as claimed by known methods and that in combination, the viscosity would perform the same function as it did separately, and one of ordinary skills would have recognized that the results of the combination were predictable i.e. providing a means to ensure good lubricity of the oil, thereby improving performance of the system [¶ 0024].
Therefore, it is a simple mechanical expedient that would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the assembly of Matsukura to have wherein the ester-based oil is a polyol ester synthesized from a tetravalent and hexavalent polyhydric alcohol and a fatty acid having a dynamic viscosity that is greater than or equal to 130 mm2/s and less than or equal to 160 mm2/s at 40 °C, in view of the teachings of Saito where the elements could have been combined by known methods with no change in their respective function and the combination would have yielded predictable results i.e. providing a means to ensure good lubricity of the oil, thereby improving performance of the system.
Furthermore, while Matsukura discloses that the temperature of the system may reach the maximum claimed range, the prior art is not entirely clear as to the consistent operation temperature. Matsumoto teaches a lubricant composition for refrigeration machines, wherein the system may comprise a compressor, a condenser, an expansion mechanism, and an evaporator, wherein a composition for the refrigerant may be made from known refrigerants and oil from poly ester compounds [¶ 0026-0029, 0133-135]. Matsumoto conducted a thermal stability test of the combination solution (refrigerant oil mixture) at 175 °C for 336 hours, thereby demonstrating that the oil composition is capable of stability in the claimed temperature ranges, and is therefore known and capable to work consistently when applied to a heat pump system. Given the general disclosure of the claimed range in the prior art, the limitations may be considered an optimization within prior art conditions or through routine experimentation [MPEP 2144.05 II.A] and may therefore not be considered inventive. Additionally, ¶ 0013 of the instant specification further describes how the machine oil claimed employs predetermined solutions using predetermined machine oil (i.e. arriving at a configuration through routine experimentation). Specifically, because at least Matsumoto has disclosed experiments of a refrigerant oil solution in the claimed temperature range, a person of ordinary skill has a good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, i.e. improving thermal stability and sufficiently suppresses the formation of sludge [Matsumoto ¶ 0008], it is likely the product is not of innovation but of ordinary skill and common sense. In that instance, the fact that a combination was obvious to try might show it was obvious under 35 U.S.C. 103 (KSR Int' l Co. v. Teleflex Incl, 127 S. Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)).
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of the effective filing date of the claimed invention, to modify Matsukura by providing the machine design temperature to be greater than or equal to 130 °C and less than or equal to 225 °C, since choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, is within the abilities of one having ordinary skill. See MPEP 2143(I)(E).
Regarding Claim 2, Matsukura teaches an operation method of a heat source machine [1; Fig.1] in which a compressor [3], a condenser [5], an expansion valve [at least 9, 19], and an evaporator [11] are connected to each other via a main pipe to form a refrigerant circulation circuit configured to circulate a refrigerant [¶ 0078-0079], and the refrigerant circulation circuit is filled with HFO-1336mzz (Z) as a refrigerant [¶ 0068-0070; the system may comprise refrigerant containing a hydrofluoroolefin (HFO)],
the operation method comprising:
supplying a refrigerating machine oil to the compressor [via at least 32, 33, 34, 35, 36; ¶ 00999; Fig. 1; apparent from inspection], the refrigerating machine oil including an ester-based base oil [¶ 0100; oil may be ester-based] and an epoxy-based acid scavenger [¶ 0031-0032; Epoxy based acid acceptor; acid acceptors or acid scavengers are often known as interchangeable/equivalent in the context of polymer stabilization; as evidence, see NPL1: Acid Acceptors a Historical Perspective, Pgs. 6 and 9] at a mass that is greater than or equal to 0.1% by mass and less than or equal to 6% by mass with respect to a total mass of the refrigerating machine oil [¶ 0049; acid acceptor is preferably at least 0.2% to 3% by mass].
While Matsukura discloses that the compressor is capable of increasing the temperature of the refrigerant to about 230 °C [¶ 0080], Matsukura does not explicitly disclose wherein the machine design temperature is greater than or equal to 130 °C and less than or equal to 225 °C, or wherein the ester-based oil is a polyol ester synthesized from a tetravalent and hexavalent polyhydric alcohol and a fatty acid having a dynamic viscosity that is greater than or equal to 130 mm2/s and less than or equal to 160 mm2/s at 40 °C.
However, Saito teaches a refrigeration oil composition and working fluid for refrigeration system [Figs. 1-3] comprising at least one of a polyol ester oil and a polyvinyl ether oil [Abstract] [Note: a polyol ester oil is generally understood as being a refrigerating machine oil containing ester synthesized from tetravalent and hexavalent polyhydric alcohols and fatty acids, thus Saito teaches the limitation]. Saito further discloses that a polyol ester oil at 40 °C is preferably from 68 to 350 mm2/s, wherein Saito further emphasizes that the kinematic viscosity should trend differently depending on the application (i.e. air conditioner vs high temperature heat pump, trending to more narrow ranges with higher temperature systems) [¶ 0023-0024]. Saito discloses that the claimed viscosity range ensures good lubricity of the oil [¶ 0024]. One of ordinary skill in the art could have combined the viscosity as claimed by known methods and that in combination, the viscosity would perform the same function as it did separately, and one of ordinary skills would have recognized that the results of the combination were predictable i.e. providing a means to ensure good lubricity of the oil, thereby improving performance of the system [¶ 0024].
Therefore, it is a simple mechanical expedient that would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the assembly of Matsukura to have wherein the ester-based oil is a polyol ester synthesized from a tetravalent and hexavalent polyhydric alcohol and a fatty acid having a dynamic viscosity that is greater than or equal to 130 mm2/s and less than or equal to 160 mm2/s at 40 °C, in view of the teachings of Saito where the elements could have been combined by known methods with no change in their respective function and the combination would have yielded predictable results i.e. providing a means to ensure good lubricity of the oil, thereby improving performance of the system.
Furthermore, while Matsukura discloses that the temperature of the system may reach the maximum claimed range, the prior art is not entirely clear as to the consistent operation temperature. Matsumoto teaches a lubricant composition for refrigeration machines, wherein the system may comprise a compressor, a condenser, an expansion mechanism, and an evaporator, wherein a composition for the refrigerant may be made from known refrigerants and oil from poly ester compounds [¶ 0026-0029, 0133-135]. Matsumoto conducted a thermal stability test of the combination solution (refrigerant oil mixture) at 175 °C for 336 hours, thereby demonstrating that the oil composition is capable of stability in the claimed temperature ranges, and is therefore known and capable to work consistently when applied to a heat pump system. Given the general disclosure of the claimed range in the prior art, the limitations may be considered an optimization within prior art conditions or through routine experimentation [MPEP 2144.05 II.A] and may therefore not be considered inventive. Additionally, ¶ 0013 of the instant specification further describes how the machine oil claimed employs predetermined solutions using predetermined machine oil (i.e. arriving at a configuration through routine experimentation). Specifically, because at least Matsumoto has disclosed experiments of a refrigerant oil solution in the claimed temperature range, a person of ordinary skill has a good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, i.e. improving thermal stability and sufficiently suppresses the formation of sludge [Matsumoto ¶ 0008], it is likely the product is not of innovation but of ordinary skill and common sense. In that instance, the fact that a combination was obvious to try might show it was obvious under 35 U.S.C. 103 (KSR Int' l Co. v. Teleflex Incl, 127 S. Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)).
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of the effective filing date of the claimed invention, to modify Matsukura by providing the machine design temperature to be greater than or equal to 130 °C and less than or equal to 225 °C, since choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, is within the abilities of one having ordinary skill. See MPEP 2143(I)(E).
Regarding Claim 3, Matsukura teaches a refrigerating machine oil [¶ 0029] for a heat source machine [1; Fig.1] in which a compressor [3], a condenser [5], an expansion valve [at least 9, 19], and an evaporator [11] are connected to each other via a main pipe to form a refrigerant circulation circuit configured to circulate a refrigerant [¶ 0078-0079], and the refrigerant circulation circuit is filled with HFO-1336mzz (Z) as a refrigerant [¶ 0068-0070; the system may comprise refrigerant containing a hydrofluoroolefin (HFO)],
wherein the heat source machine comprises a refrigerating machine oil supply unit [at least 32, 33, 34, 35, 36] configured to supply the refrigerating machine oil to the compressor [¶ 0099; Fig. 1; oil is supplied from tank 32 via pipe 34 to the compressor], the refrigerating machine oil supply unit includes a storage unit [32] storing the refrigerating machine oil [¶ 0099; Fig. 1; apparent from inspection],
the refrigerating machine oil for a heat source machine comprising: an ester-based base oil [¶ 0100; oil may be ester-based] and an epoxy-based acid scavenger [¶ 0031-0032; Epoxy based acid acceptor; acid acceptors or acid scavengers are often known as interchangeable/equivalent in the context of polymer stabilization; as evidence, see NPL1: Acid Acceptors a Historical Perspective, Pgs. 6 and 9] at a mass that is greater than or equal to 0.1% by mass and less than or equal to 6% by mass with respect to a total mass of the refrigerating machine oil [¶ 0049; acid acceptor is preferably at least 0.2% to 3% by mass].
While Matsukura discloses that the compressor is capable of increasing the temperature of the refrigerant to about 230 °C [¶ 0080], Matsukura does not explicitly disclose wherein the machine design temperature is greater than or equal to 130 °C and less than or equal to 225 °C, or wherein the ester-based oil is a polyol ester synthesized from a tetravalent and hexavalent polyhydric alcohol and a fatty acid having a dynamic viscosity that is greater than or equal to 130 mm2/s and less than or equal to 160 mm2/s at 40 °C.
However, Saito teaches a refrigeration oil composition and working fluid for refrigeration system [Figs. 1-3] comprising at least one of a polyol ester oil and a polyvinyl ether oil [Abstract] [Note: a polyol ester oil is generally understood as being a refrigerating machine oil containing ester synthesized from tetravalent and hexavalent polyhydric alcohols and fatty acids, thus Saito teaches the limitation]. Saito further discloses that a polyol ester oil at 40 °C is preferably from 68 to 350 mm2/s, wherein Saito further emphasizes that the kinematic viscosity should trend differently depending on the application (i.e. air conditioner vs high temperature heat pump, trending to more narrow ranges with higher temperature systems) [¶ 0023-0024]. Saito discloses that the claimed viscosity range ensures good lubricity of the oil [¶ 0024]. One of ordinary skill in the art could have combined the viscosity as claimed by known methods and that in combination, the viscosity would perform the same function as it did separately, and one of ordinary skills would have recognized that the results of the combination were predictable i.e. providing a means to ensure good lubricity of the oil, thereby improving performance of the system [¶ 0024].
Therefore, it is a simple mechanical expedient that would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the assembly of Matsukura to have wherein the ester-based oil is a polyol ester synthesized from a tetravalent and hexavalent polyhydric alcohol and a fatty acid having a dynamic viscosity that is greater than or equal to 130 mm2/s and less than or equal to 160 mm2/s at 40 °C, in view of the teachings of Saito where the elements could have been combined by known methods with no change in their respective function and the combination would have yielded predictable results i.e. providing a means to ensure good lubricity of the oil, thereby improving performance of the system.
Furthermore, while Matsukura discloses that the temperature of the system may reach the maximum claimed range, the prior art is not entirely clear as to the consistent operation temperature. Matsumoto teaches a lubricant composition for refrigeration machines, wherein the system may comprise a compressor, a condenser, an expansion mechanism, and an evaporator, wherein a composition for the refrigerant may be made from known refrigerants and oil from poly ester compounds [¶ 0026-0029, 0133-135]. Matsumoto conducted a thermal stability test of the combination solution (refrigerant oil mixture) at 175 °C for 336 hours, thereby demonstrating that the oil composition is capable of stability in the claimed temperature ranges, and is therefore known and capable to work consistently when applied to a heat pump system. Given the general disclosure of the claimed range in the prior art, the limitations may be considered an optimization within prior art conditions or through routine experimentation [MPEP 2144.05 II.A] and may therefore not be considered inventive. Additionally, ¶ 0013 of the instant specification further describes how the machine oil claimed employs predetermined solutions using predetermined machine oil (i.e. arriving at a configuration through routine experimentation). Specifically, because at least Matsumoto has disclosed experiments of a refrigerant oil solution in the claimed temperature range, a person of ordinary skill has a good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, i.e. improving thermal stability and sufficiently suppresses the formation of sludge [Matsumoto ¶ 0008], it is likely the product is not of innovation but of ordinary skill and common sense. In that instance, the fact that a combination was obvious to try might show it was obvious under 35 U.S.C. 103 (KSR Int' l Co. v. Teleflex Incl, 127 S. Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)).
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of the effective filing date of the claimed invention, to modify Matsukura by providing the machine design temperature to be greater than or equal to 130 °C and less than or equal to 225 °C, since choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, is within the abilities of one having ordinary skill. See MPEP 2143(I)(E).
Response to Arguments
On pages 5-8 of the remarks, Applicant argues that the claims are significant over the prior art, stating that the present invention address the problem of suppressing a viscosity reduction when a refrigerant is dissolved and providing thermochemical stability in high-temperature environments with HFO refrigerants. Applicant’s arguments have been considered but are not persuasive.
Respectfully, the rejection does not state or intend to imply Applicant’s statement that “the higher the viscosity, the better the thermal stability uniformly”. Rather, only the incorporation of prior art Matsumoto discusses routine experimentation, in tandem with the prior art’s expected result of success (i.e. reduced sludge). The rejection regarding the three prior art references Matsukura, Saito and Matsumoto, does not solely rely on a routine experimentation rational as asserted by applicant. The combination with Saito explicitly discloses a range of polyol ester oil kinematic viscosities (68 to 350 mm2/s) containing the claimed range [¶ 0024]. Saito further emphasizes that different ranges of viscosities are preferred depending on the temperature of the application i.e. Saito discloses a range of at least 5 to 68 mm2/s for air conditioners, as opposed to higher heat applications, such as heat pumps, having ranges from 68 to 350 mm2/s. Saito thus establishes in the prior art that operation temperature (i.e. air conditioner vs. heat pump) is a known variable to be considered when determining a given system’s oil viscosity and composition [¶ 0024]. Saito therefore teaches the claimed viscosity range is known while also highlighting the know design considerations between operating temperature and viscosity, in order to arrive at the desired advantage of ensuring good lubricity.
Furthermore, while Matsukura generally indicated that the compressor is capable of temperatures up to 230°C as claimed [¶ 0080], Matsukura does not explicitly disclose an operating value within the claimed range. Thus, Matsumoto is incorporated to teach a continuous operation temperature utilizing a similar refrigerant oil within the claimed temperature range, thus demonstrating that the claimed temperature is a known condition for the claimed substance to be used as common in the art, because it may lead to anticipated success in the form of improving thermal stability and sufficiently suppresses the formation of sludge [Matsumoto ¶ 0008].
Respectfully, while Applicant asserts that the Matsukura alone does not aim to fundamentally prevent thermal/oxidative deterioration of the resulting acid generation, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Specifically, at least Matsumoto appears to disclose the same exact known advantages argued by applicant to prevent thermal deterioration, wherein the prior art aims to reduce the formation of sludge (reduce the chemical breakdown of refrigerant into the known phenomenon of “sludge”) in refrigerant containing a large portion of HFO, as well as being excellent in thermal stability [¶ 0007-0009]. Accordingly, the claims remain rejected.
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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/KEITH STANLEY MYERS/Examiner, Art Unit 3763
/JERRY-DARYL FLETCHER/Supervisory Patent Examiner, Art Unit 3763
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