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 .
The amendment dated 06/24/2026 has been considered and entered. The response was considered but was not found to be persuasive. Therefore, the previous rejections are maintained.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/24/2026 has been entered.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 8 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over Short (US 5,486,302)
In regards to claim 8, Short teaches lubricant composition for fluorinated refrigerants used in compression refrigeration system (title). The fluorinated refrigerants are hydrofluorocarbons such as hydrofluoroalkanes such as tetrafluoroethane (HFC), or hydrofluoroolefins (HFO) such as difluoroethylene (column 6 lines 51 – 55). The composition comprises polyol esters such as including di-pentaerythritol esters made with a branched carboxylic acid (column 2 lines 10 – 23). In the fatty acid mixture used for making the esters in reaction with mono or dipentaerythritol, the composition can comprise branched acids such as 3,5,5-trimethyl hexanoic acid in amounts of from 20% to 100%, with the balance of linear acids (column 3 lines 30 – column 4 lines 49).
In preferred embodiments, the branched acid is present at 70% and linear monocarboxylic acids such as C7, C8 and C10 are present at 30% in the acidic mixture and the alcohol is preferably di-pentaerythritol (column 5 lines 25 – 41). The composition preferably has a viscosity of ISO 68 (i.e., 68 cSt at 40℃) or higher (column 4 lines 44 – 49). In some examples, the lubricants have Kv40 of 120 and 170 cSt (Fig 10 & 11).
In the examples, the amounts of C7 monocarboxylic acid are from 12.6 to 75%, or from 0 to 30% C7, C8 and C10 monocarboxylic acid, or 15% C7 with 15% C8 and C10 acids etc. and from 25% to 70% of C9 branched monocarboxylic acid in the acid mixture (Table I). Thus, the refrigeration lubricant and the claimed esters are taught. Since the C7 fatty acid can be present at from 12.6 to 75% with the balance of the C8 and C10 acids, it appears obvious that the C8 and C10 acids can be present at equivalent amounts and the claimed ranges would be overlapped.
Short teaches the composition which can allow for C7, C8 and C10 monocarboxylic acids to be present at much higher amounts of up to 80% with branched C9 in minor amounts of from 20% or higher, generally. Thus, the claimed amounts would be obvious. Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In regards to claim 9, Short teaches the composition which can have hydrofluorocarbon refrigerant such as an HFO refrigerant (i.e., difluuoroethylene) but does not particularly recite the claimed limitation. Takahashi et al. (US 2018/0023025) recites hydrofluorocarbon refrigerants for refrigerators similar to Short which can include HFO refrigerants such as 1,3,3,3-tetrafluoropropene (HFO 1234ze or trans 1,3,3,3-tetrafluoropropene), 3,3,3-trifluoropropene etc. [title, 0042]. Thus, it would have been obvious for persons of ordinary skill in the art at the time the claim was filed to have used the hydrofluorocarbon refrigerant of Takahashi as refrigerant in Short, as Short generally allows for the use of hydrofluorocarbon refrigerants.
In regards to claim 10, Short teaches the composition having the claimed viscosity as previously stated.
In regards to claims 11, 13, Short teaches the composition having the amounts of C9 branched acid at 70% or more preferably in the acid composition as previously stated. While the amounts of the acids in the reaction mixture is not recited by Short, it would be obvious to persons of ordinary skill in the art to use stoichiometric amounts of each ingredient required for completing the reaction.
In regards to claims 12, Short teaches the composition having the claimed limitations as previously stated.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that Short is only drawn to HFC refrigerants but not HFO or HCFO’s which the claims “consist” of. The argument is not persuasive.
Short generally recites hydrofluorocarbon refrigerants and cites but HFC and HFO (i.e., difluoroethylene) as useful.
Applicant argues that the examples of Short does not recite the amounts of C7, C8, C9 and C10 fatty acids as claimed. The argument is not persuasive.
Short teaches blends of C7, C8, C9 and C10 acids overlapping and/or obviating the claimed ranges as discussed above.
one of the three groups of refrigerants. Since Short teaches miscibility with HFC’s, the claimed limitation is taught.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAIWO OLADAPO whose telephone number is (571)270-3723. The examiner can normally be reached 8-5pm.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
