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 .
The response received 9/4/2026 is entered. No claim amendments were made.
Claim Interpretation
Claim 9 recites “a disproportionation inhibitor” while claim 1 includes propane, which inhibits disproportionation. However it is clear that the disproportionation inhibitor of claim 9 is in addition to the propane of claim 1.
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.
Claim(s) 1-7 and 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsuda et al (US 2025/0043167) in view of Yamaguchi et al (JP2017-141974; machine translation provided by applicant on 10/25/2024).
Regarding limitations drawn to a temperature and pressure of the fluid within the cycle, the "manner of operating the device does not differentiate apparatus from the prior art" And “apparatus claims cover what a device is, not what a device does” MPEP 2114. Absent distinguishing structure, a mere functional limitation is not sufficient to define over the prior art.
Regarding claim 1, Matsuda discloses an air conditioner comprising a refrigeration cycle including a hermetic compressor (1) in which a refrigerating machine oil is retained, wherein
the air conditioner uses a refrigerant mixture as a refrigerant, the refrigerant mixture containing a fluoroolefin (HFO-1123) and propane (R-290; refrigerant composition discussed throughout disclosure, see at least [0007]), and
a refrigeration cycle working medium composed of at least the refrigerating machine oil and the refrigerant mixture ([0116]) within a temperature of 20-50°C (shown in figure 10) and at a pressure and having a viscosity (no specific values are provided for pressure or viscosity but are inherent physical characteristics).
Matsuda lacks a refrigerant dissolved viscosity of 2 to 4 mm2/s under a working condition at a temperature of 28 to 60°C and an absolute pressure of 2.2 to 4.3 MPa. Although it is again noted that there is inherently a refrigerant dissolved viscosity however Matsuda is silent concerning a value thereof.
Yamaguchi discloses a refrigeration cycle working medium composed of a refrigerating machine oil and a refrigerant mixture exhibits a refrigerant dissolved viscosity of 2 to 4 mm2/s ([0038]) under a working condition at a temperature of 80°C and an absolute pressure of 3.4 MPa.
It has been held that the optimization of a result-effective variable is obvious. In this instance a dissolved viscosity effects cycle COP. Therefor because viscosity at a temperature and pressure is recognized as affecting the result of COP; the value of a refrigerant dissolved viscosity of 2 to 4 mm2/s under a working condition at a temperature of 28 to 60°C and an absolute pressure of 2.2 to 4.3 MPa is not a product of innovation but of ordinary skill and is obvious.
Moreover it has been held that "A difference of degree is not as persuasive as a difference in kind – i.e., if the range produces ‘a new property dissimilar to the known property,’ rather than producing a predictable result but to an unexpected extent." MPEP 2144.05 III.A.
Regarding claims 2-3, Matsuda and Yamaguchi further disclose wherein the refrigeration cycle working medium but do not explicitly state the combination of a refrigerant dissolved viscosity of 2 to 4 mm2/s under a working condition at a temperature of 55-115°C or lower and an absolute pressure of 1.7 to 4.6 MPa. It has been held that the optimization of a result-effective variable is obvious. In this instance a dissolved viscosity effects cycle COP. Therefor because viscosity at a temperature and pressure is recognized as affecting the result of COP; the value of a refrigerant dissolved viscosity of 2 to 4 mm2/s under a working condition at a temperature of 115°C or lower and an absolute pressure of 1.7 to 4.6 MPa is not a product of innovation but of ordinary skill and is obvious.
Moreover it has been held that "A difference of degree is not as persuasive as a difference in kind – i.e., if the range produces ‘a new property dissimilar to the known property,’ rather than producing a predictable result but to an unexpected extent." MPEP 2144.05 III.A.
Regarding claims 4-6 and 13, Matsuda discloses compatibility of the refrigerant mixture with the refrigerating machine oil is adjusted such that a proportion of the propane to a total mass of the fluoroolefin and the propane in the hermetic compressor is 20%, or more or less, by mass or more in case that the temperature in the working condition is higher or lower than 115°C ([0076] describes 18-22%). It has been held that the optimization of a result-effective variable is obvious. In this instance an amount of propane effects the disproportionation reaction of HFO-1123. Therefor because an amount of propane is recognized as effecting the result of HFO-1123 disproportionation; the value of 20% is not a product of innovation but of ordinary skill and is obvious.
Moreover it has been held that "A difference of degree is not as persuasive as a difference in kind – i.e., if the range produces ‘a new property dissimilar to the known property,’ rather than producing a predictable result but to an unexpected extent." MPEP 2144.05 III.A.
Regarding claim 7, Matsuda further discloses the fluoroolefin is at least one selected from the group consisting of 1,1,2-trifluoroethylene ([0003]).
Regarding claim 11, Matsuda further discloses the hermetic compressor includes a rotary compression mechanism ([0077]).
Regarding claim 12, Matsuda further discloses the hermetic compressor is inverter-driven ([0022]).
Claim(s) 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsuda et al (US 2025/0043167), in view of Yamaguchi et al (JP2017-141974; machine translation provided by applicant on 10/25/2024), and in further view of Gotou et al (US 2023/0242801).
Regarding claim 8, Matsuda, as modified, discloses the air conditioner according to claim 1 but lacks the refrigerant mixture further containing difluoromethane. Gotou discloses a plurality of refrigerant compositions including refrigerants that undergo disproportionation, e.g. HFO-1123 ([0040]), and compositions that suppress disproportionation, e.g. propane [0061] and difluoromethane [0044]. The composition comprising “at least one” ([0070]) of said refrigerants not undergoing disproportionation. It would have been obvious to one of ordinary skill in the art to have provided difluoromethane in order to suppress the disproportionation reaction.
Regarding claims 9-10, Matsuda, as modified, discloses the air conditioner according to claim 1, but lacks the disproportionation inhibitor as claimed. Gotou discloses a disproportionation inhibitor ([0070]) is a saturated hydrocarbon with two to five carbon atoms or a haloalkane with one or two carbon atoms, the saturated hydrocarbon is other than propane, and the haloalkane is other than a fluoroalkane containing only fluorine as a halogen substituent ([0054] provides one example of a saturated hydrocarbon). It would have been obvious to one of ordinary skill in the art to have provided the disproportionation inhibitor as taught by Gotou in order to suppress the disproportionation reaction which is undesirable.
Response to Arguments
Applicant's arguments filed 9/4/2026 have been fully considered but they are not persuasive.
Matsuda provides the refrigerating machine oil, fluoroolefin, and propane as claimed. The claim goes on to provide a material property (dissolved viscosity) at a particular temperature and pressure. In response, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01. Which is to say that Matsuda teaches the same composition as is claimed. Thus it is expected that the properties thereof are the same. Nonetheless Yamaguchi is provided who discloses refrigerant dissolved viscosity within the claimed range and as a property to be optimized. Moreover it has been held that "A difference of degree is not as persuasive as a difference in kind – i.e., if the range produces ‘a new property dissimilar to the known property,’ rather than producing a predictable result but to an unexpected extent." MPEP 2144.05 III.A.
Moreover applicant goes on to discuss the desire within the instant application to address the problem of disproportionation. Matsuda is similarly directed to addressing disproportionation withing the working fluid of the cycle. The term appears at least 68 times in the disclosure thereof.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Tashiro et al (US 2025/0215297) three refrigerant composition including HRO-1123 and R290.
Tamashita (US 2017/0089616) disproportionation of HFO-1123.
Tanaka et al (US 10,001,309) control scheme to prevent disproportionation of HFO-1123.
Maeyama (US 10,393,391) preventing disproportionation in HFO-1123
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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/CHRISTOPHER R ZERPHEY/Primary Examiner, Art Unit 3799
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