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 .
Claims 1-17 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claims 1-17 recite “reactor stream composition”; this is unclear and renders the claim indefinite. As there is no literal support in the instant specification or parent application for “reactor stream composition”. The instant examples provide a reaction in a reactor where the composition as instantly claimed is produced and recites “the stream from the reactor was analyzed…results of the test are also shown in Table 1”; hence, the Examiner construes “reactor stream” as just a composition. The claims are drawn to a composition and not the method of making or using the composition. Likewise, any difference imparted by the product by process limitations would have been obvious to one having ordinary skill in the art at the time the invention was made because where the examiner has found a substantially similar product as in the applied prior art, the burden of proof is shifted to the applicant to establish that their product is patentably distinct, not the examiner to show the same process of making, see In re Brown, 173 USPQ 685 and In re Fessmann, 180 USPQ 324.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 8 recites “the composition comprises 1224yd(Z), 1233zd(Z), 1233zd(E), at least one of 244eb, 244fa, 245fa, 245eb and further comprising 224ba; this renders the claim indefinite because it depends from claim 1 which requires at least one b component, claim 8 has b as an optional component. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims 10-11 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 10 and 11 don’t further limit claim 8 as they don’t require all of the components from claim 8. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
Claims 1-7, 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Tasaka et al (WO Patent 2016/171264) in view of Gui et al (Zero-ODP Refrigerants for Low Tonnage Centrifugal Chiller Systems (already of record)).
To further advance the prosecution of this invention, Tasaka et al (US Patent Application 2018/0066170 (already of record)) which is an English equivalent of (WO Patent 2016/171264) will be used in this rejection
Regarding claims 1-7, 16-17, Tasaka et al teaches a composition for heat cycle system comprising 1224yd (Z) and 1224yd (E) at a ratio of 51:49 to 100:0 (Paragraphs 14, 18, 59). Tasaka et al further teaches the composition can optionally contain other compounds including HFC, HFO and HCFO (Paragraph 62). Tasaka et al further teaches the HFC components include pentafluoropropane and hexafluoropropane (Paragraph 73). Tasaka et al further teaches HFC-245fa as a preferred compound that has less effect on the ozone layer and global warming (Paragraph 74). Tasaka et al further teaches heat cycle systems including a centrifugal refrigerant (Claim 14). Tasaka et al further teaches HFO compounds included in the composition that have less effect on the ozone layer and global warming include 1125ye (E) and 1225ye (Z) in the amount of 1-40wt% (Paragraphs 81, 83). Tasaka et al further teaches HCFO compounds including HCFO-1233zd(Z) and HCFO-1233zd(E) as preferred because of the high critical temperature and excellence in durability (Paragraphs 86-87, Table 3). Tasaka et al further teaches the composition comprises 10-100wt% of 1224yd (which satisfies the claimed ranges of 7-95wt% wherein the (Z):(E) ratio is from 51:49 to 100:0) (Paragraph 34). However, Tasaka et al fails to specifically disclose HFC-236ea or HFC-236cb, about 30-90/40-90 mole% 1224yd(Z) and about 32-92mol% of 1224yd(Z) and 1224yd(E).
In the same field of endeavor, Gui et al teaches HFC refrigerants including HFC-236ea and HFC-236cb for centrifugal applications that have zero ozone depleting potential (Abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided HFC-236ea and/or HFC-236cb in Tasaka et al in view of Gui et al in order to provide a hexafluoropropane component into the composition that has zero ozone depleting potential. Both HFC-236ea and HFC-236cb are hexafluoropropanes and the broad teachings of Tasaka et al encompasses the incorporation of hexafluoropropanes into the composition.
With regard to at least 30-90/40-90mole%1224yd(Z) and about 32-92mol% of 1224yd(Z) and 1224yd(E), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided at least 30-90/40-90mole%1224yd(Z) and about 32-92mol% of 1224yd(Z) and 1224yd(E) in Tasaka et al as Tasaka et al teaches the composition comprises 10-100wt% of 1224yd, wherein the (Z):(E) ratio is from 51:49 to 100:0); hence, this range would overlap the instantly mole% ranges. A prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Tasaka et al (WO Patent 2016/171264) in view of Gui et al (Zero-ODP Refrigerants for Low Tonnage Centrifugal Chiller Systems (already of record)) as applied to claims 1-7, 16-17, and in further view of Kitamura et al (JP03255039 (already of record)).
Regarding claim 8, Tasaka et al and Gui et al disclose the invention substantially as claimed. Tasaka et al and Gui et al teach the features above. However, Tasaka et al and Gui et al fail to specifically disclose 224ba.
In the same field of endeavor, Kitamura et al teaches fluorocarbons such as 224ba as solvents, detergents and refrigerants (Pgs. 1-2).
It would have been obvious to one of ordinary skill in art before the effective filing of the claimed invention to have provided 224ba in Tasaka et al and Gui et al in view of Kitamura et al as the broad teachings of Tasaka et al encompasses the incorporation of hydrochlorofluorocarbons into the composition. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
Claims 9-10, 13 are rejected under 35 U.S.C. 103 as being unpatentable over Tasaka et al (WO Patent 2016/171264) in view of Gui et al (Zero-ODP Refrigerants for Low Tonnage Centrifugal Chiller Systems (already of record)).
To further advance the prosecution of this invention, Tasaka et al (US Patent Application 2018/0066170 (already of record)) which is an English equivalent of (WO Patent 2016/171264) will be used in this rejection
Regarding claims 9-10, 13, Tasaka et al teaches a composition for heat cycle system comprising 1224yd (Z) and 1224yd (E) at a ratio of 51:49 to 100:0 (Paragraphs 14, 18, 59). Tasaka et al further teaches the composition can optionally contain other compounds including HFC, HFO and HCFO (Paragraph 62). Tasaka et al further teaches the HFC components include pentafluoropropane and hexafluoropropane (Paragraph 73). Tasaka et al further teaches HFC-245fa as a preferred compound that has less effect on the ozone layer and global warming (Paragraph 74). Tasaka et al further teaches heat cycle systems including a centrifugal refrigerant (Claim 14). Tasaka et al further teaches HFO compounds included in the composition that have less effect on the ozone layer and global warming include 1125ye (E) and 1225ye (Z) in the amount of 1-40wt% (Paragraphs 81, 83). Tasaka et al further teaches HCFO compounds including HCFO-1233zd(Z) and HCFO-1233zd(E) as preferred because of the high critical temperature and excellence in durability (Paragraphs 86-87, Table 3). Tasaka et al further teaches the composition comprises 10-100wt% of 1224yd (which satisfies the claimed ranges of 7-95wt% wherein the (Z):(E) ratio is from 51:49 to 100:0) (Paragraph 34). However, Tasaka et al fails to specifically disclose HFC-236ea or HFC-236cb.
In the same field of endeavor, Gui et al teaches HFC refrigerants including HFC-236ea and HFC-236cb for centrifugal applications that have zero ozone depleting potential (Abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided HFC-236ea and/or HFC-236cb in Tasaka et al in view of Gui et al in order to provide a hexafluoropropane component into the composition that has zero ozone depleting potential. Both HFC-236ea and HFC-236cb are hexafluoropropanes and the broad teachings of Tasaka et al encompasses the incorporation of hexafluoropropanes into the composition.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Tasaka et al (WO Patent 2016/171264) in view of Gui et al (Zero-ODP Refrigerants for Low Tonnage Centrifugal Chiller Systems (already of record)) as applied to claims 9-10, 13 above, and in further view of Nishiguchi et al (US Patent Application 2016/0178254).
Regarding claim 11, Tasaka et al and Gui et al et al disclose the invention substantially as claimed. Tasaka et al and Gui et al teach the features above. However, Tasaka et al and Gui et al fail to specifically disclose 1223xd(E) and 1223xd(Z).
In the same field of endeavor, Nishiguchi et al teaches heat transmission and heat cycle compositions comprising 1223xd(E) and 1223xd(Z) (Abstract, Paragraphs 20, 36).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided 1223xd(E) and 1223xd(Z) in Tasaka et al and Gui et al in view of Nishiguchi et al in order to provide HFCO compounds having good head cycle characteristics and as the broad teachings of Tasaka et al already encompass the incorporation of HFCO compounds.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Tasaka et al (WO Patent 2016/171264) in view of Gui et al (Zero-ODP Refrigerants for Low Tonnage Centrifugal Chiller Systems (already of record)) as applied to claims 9-10, 13 above, and in further view of Nakamura et al (US Patent Application 2018/0187134).
Regarding claim 1, Tasaka et al and Gui et al et al disclose the invention substantially as claimed. Tasaka et al and Gui et al teach the features above. However, Tasaka et al and Gui et al fail to specifically disclose 235da.
In the same field of endeavor, Nakamura et al teaches a composition comprising 1233zd(Z) and a stabilizer such as 235da, in order to suppress decomposition of 1233zd(Z) (Paragraphs 61, 70).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided 235da in Tasaka et al and Gui et al in view of Nakamura et al in order to suppress decomposition of 1233zd(Z) as taught in Nakamura et al.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Tasaka et al (WO Patent 2016/171264) in view of Gui et al (Zero-ODP Refrigerants for Low Tonnage Centrifugal Chiller Systems (already of record)) as applied to claims 9-10, 13 above, and in further view of Omure et al (US Patent 5,066,410).
Regarding claim 14, Tasaka et al and Gui et al et al disclose the invention substantially as claimed. Tasaka et al and Gui et al teach the features above. However, Tasaka et al and Gui et al fail to specifically disclose HFC-235cb.
In the same field of endeavor, Omure et al teaches a refrigerant composition comprising HFC such as HFC-236cb and HCFC such as HCFC-235cb (Abstract, Col. 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided HFC-235cb in Tasaka et al in view of Omure et al as refrigeration agents and the broad teachings of Tasaka et al encompass additional components such as heptafluoropropane and pentafluoropropane.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Tasaka et al (WO Patent 2016/171264) in view of Gui et al (Zero-ODP Refrigerants for Low Tonnage Centrifugal Chiller Systems (already of record)) as applied to claims 9-10, 13 above, and in further view of Tasaka et al (2) (US Patent Application 2016/0340565) and Harkins (WO Patent 2015/200633).
Regarding claim 15, Tasaka et al and Gui et al disclose the invention substantially as claimed. Tasaka et al and Gui et al teach the features above. However, Tasaka et al and Gui et al fail to specifically disclose HFC-1234ze, HFC-245eb and HCFC-244eb.
In the same field of endeavor, Tasaka et al (2) teaches a working fluid for heat cycle having less influence over the ozone layer (Abstract). Tasaka et al (2) further teaches compositions comprising pentafluoropropane HFC-245eb (Table 1). Tasaka et al (2) teaches HFO compounds with less influence over the ozone layer and excellent cycle performance include 1234ze (Paragraph 28).
In the same field of endeavor, Harkins teaches a refrigeration systems comprising a HCFC refrigerant including HCFC-244eb (Abstract, Table 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided HFC-1234ze and HFC-245eb in Tasaka et al and Gui et al in view of Tasaka et al (2) in order to provide HFO and HFC compounds that have less influence over the ozone layer and the broad teachings of Tasaka et al encompass additional HFO and HFC compounds.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have provided HCFC-244eb in Tasaka et al, Gui et al and Tasaka et al (2) in view of Harkins et al in order to provide a refrigerant in the composition and as the broad teachings of Tasaka et al encompasses HCFC compounds.
Conclusion
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/TANISHA DIGGS/Primary Examiner, Art Unit 1761 August 19, 2026
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