The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is responsive to the amendment filed on November 25, 2025.
Claims 1-20 are pending. Claims 5-9, 12 and 14-17 are withdrawn from consideration as being drawn to nonelected inventions. Claims 1, 4, 10, 11, 13 and withdrawn claims 5-6 are currently amended. Claims 14-16 are newly added.
The objection to the disclosure/specification for minor informalities is withdrawn in view of Applicant’s amendment.
The rejection of claim 13 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph is withdrawn in view of Applicant’s amendment.
The rejection of claims 1-3 and 13 under 35 U.S.C. 102(a)(2) as being anticipated by Hurtubise (US 2023/0399591) is withdrawn in view of Applicant’s amendment.
Claim Objections
Claims 1, 3, 10 and 13 are objected to because of the following informalities:
a) in claim 1, it is suggested that “an additive composition” (see last three lines) be replaced with “the additive composition”
b) in claim 3, in line 2, the limitation “up to about 40 wt.% of an additive composition” appears to be outside the amount recited in claim 1 to which this claim is dependent upon because the minimum amount of the non-flammable solvent is about 90.01 wt% (greater than about 90.0 wt% of the trans-1,2-dichloroethylene + about 0.01 wt.% of the one or more of (E)-1-chloro-2,3,3-trifluoroprop-1-ene and (Z)-1-chloro-2,3,3-trifluoroprop-1-ene) and the total weight of the non-flammable solvent and the optional additive totals to 100 wt. % (see claim 1, lines 2-11). It is suggested that the above phrase be replaced with “up to about 10 wt.% of the additive composition” as supported in paragraph [0030] of the specification.
c) in claim 10, line 2, it is suggested that “an additive composition” in line 2 be replaced with “the additive composition”
d) in claim 13, line 13, it is suggested that the phrase “further comprising an additive composition comprising” be replaced with “wherein the additive composition comprises.”
Appropriate correction is required.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zheng et al. (US 2023/0073016, already of record), hereinafter “Zheng.”
Regarding claims 1-3 and 20, Zheng teaches in Example 1, a mixed solution consisting of 97 wt% % T-1,2-DCE (trans-1,2-dichloroethylene) and 3 wt% 1233yd (a cis/trans-1-chloro-2,3,3-trifluoropropene (Table 1; paragraph [0026]), wherein the mixed solution has no flash point (see Table 3). See also Example 2 in Table 1, where Zheng teaches 96 wt% T-1,2-DCE and 4 wt% 1233yd. Zheng need not disclose the recited additive compositions because these are only optional and not required ingredients of the composition, and in addition, “less than 1.0 wt% of the additive composition” in Condition 3 in claim 1 (see last 4 lines) and claim 20, and the limitation “up to” in claim 3, line 2, includes zero as a lower limit, see In re Mochel, 470 F.2d 638, 176 USPQ 194 (CCPA 1974); see also MPEP 2173.05(c)II. Hence, Zheng need not disclose an additive composition. Even though Zheng does not explicitly disclose the composition having no fire point as recited in claim 1, it would be inherent for the composition of Zheng to exhibit the same property because the same components having the same proportions have been utilized. “Products of identical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 II.
Hence, Zheng anticipates the claims.
Claims 1-3, 10-11, 13 and 19-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Borgstedt et al. (US 2024/0209516, already of record), hereinafter “Borgstedt.”
Regarding claims 1-3, 13 and 20, Borgstedt teaches azeotrope or azeotrope-like compositions consisting essentially of, or consisting of, (Z)-1-chloro-2,3,3-trifluoroprop-1-ene (HCFO-1233yd(Z)), methanol and trans-dichloroethylene (trans-DCE) (see abstract, paragraph [0002]). In Example 3, Borgstedt teaches an azeotrope or azeotrope-like composition which consists of 91.34 wt% trans DCE (dichloroethylene), 0.99 wt% methanol (which meets the additive in claim 13 and Condition 3 of claims 1 and 20) and 7.67 wt% HCFO-1233yd(Z) (see 2nd composition in Table 5 and paragraph [0141). Even though Borgstedt does not explicitly disclose the azeotrope or azeotrope-like composition being nonflammable having no fire point as recited in claim 1, or the composition dissolves a greater amount of contaminants or materials as recited in claim 13, it would be inherent for the composition of Borgstedt to exhibit the same properties because the same components having the same proportions have been utilized. “Products of identical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 II.
Regarding claims 10, 11 and 19, Borgstedt teaches that the above composition is used as a carrier for an organic substance such as a lubricant, a mold release agent, oil or silicone oil (see paragraph [0112]).
Hence, Borgstedt anticipates the claims.
Claims 1-4, 10-11, 13 and 19-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Rioux (WO 2024/182748).
Regarding claims 1-4, 13 and 20, Rioux teaches cleaning solvent blends comprising an HCFO such as 1-chloro-2,3,3,-trifluoropropene; trans-dichloroethylene; and a high boiling HEE such as HFE-7300; have utility as a non-flammable, low-global warming potential, azeotrope-like cleaning solvent compositions (see abstract). In Table 9, Rioux teaches Fraction 10 which consists of 0.68 wt% HFE 7300 (i.e., a hydrofluoroether, which meets the additive in Condition 3 of claims 1 and 20), 96.91 wt% TDCE (i.e., trans-dichloroethylene) and 2.41 wt% AS300 (i.e., a specific blend of cis- and trans- geometric isomers of 1-chloro-2,3,3,- trifluoropropene). Even though Rioux does not explicitly disclose the cleaning solvent having no fire point as recited in claim 1, or the composition dissolves a greater amount of contaminants or materials as recited in claim 13, it would be inherent for the composition of Rioux to exhibit the same properties because the same components having the same proportions have been utilized. “Products of identical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 II.
Regarding claims 10 and 19, Rioux teaches that the solvent composition is used as a carrier liquid for lubricants (see paragraph [0014]).
Regarding claim 11, Rioux teaches that in one embodiment, the cleaning solvent composition comprises a surfactant in a concentration of about 0.1 to about 3 weight percent (see paragraph [0027]), wherein the surfactant is construed to read on the at least one mold release additive.
Hence, Rioux anticipates the claims.
Claim Rejections - 35 USC § 103
Claims 4 and 18 rejected under 35 U.S.C. 103 as being unpatentable over Borgstedt as applied to claims 1-3, 10-11, 13 and 19-20 above.
Regarding claims 4 and 18, Borgstedt teaches the features as discussed above. In addition, Borgstedt teaches that the above composition may include one or more co-solvents, other than methanol, like HFE-347 (hydrofluoroether, i.e., trifluoroethyl ether, a fluorocarbon), ethanol, propanol (see paragraph [0091), among others, in an amount of at least about 1% by weight of the composition (see paragraph [0091]). Borgstedt, however, fails to disclose the incorporation of a fluorocarbon in the above composition as recited in claim 4, in an amount of less than 1.0 wt as recited in claim 18.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated HFE-347, i.e., trifluoroethyl ether, as one of the co-solvent in the above composition, say in Example 3, because this is one of the suitable selection of co-solvents taught by Borgstedt.
With respect to the amount of the HFE-347, considering that Borgstedt teaches at least about 1 wt% co-solvent like trifluoroethyl ether, as the word “about” permits some tolerance (see In re Ayers, 69 USPQ 109, and In re Erickson, 145 USPQ 207), the lower limit of “about 1 wt%” in Borgstedt may be considered to read on the upper limit of less than 1.0 wt% of the present claim 18 (Condition 1).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Rioux as applied to claims 1-4, 10-11, 13 and 19-20 above.
Regarding claim 18, Rioux teaches the features as discussed above. In addition, Rioux teaches that the cleaning solvent composition comprises the addition of a cosolvent in an amount of about 1% to about 50 weight percent of the weight of the other ingredients of the solvent blend, and suitable cosolvents include benzyl alcohol, hexylene glycol, among others (see paragraph [0028]). Rioux, however, fails to specifically disclose Condition I, i.e., when the additive composition comprises a fluorocarbon, then the fluorocarbon is present in an amount of less than 1.0 wt% of the nonflammable solvent, based on the total weight of the nonflammable solvent composition, and when the additive composition comprises a co-solvent, then the co-solvent is present in an amount less than 1.0 wt% of the nonflammable solvent, based on the total weight of the nonflammable solvent composition.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a cosolvent, say in the composition as in Fraction 10 above, in its optimum amount because Rioux also desires the addition of a cosolvent as disclosed in paragraph [0028]). With respect to the amount of the cosolvent, considering that Rioux teaches a minimum amount of about 1 wt% co-solvent, as the word “about” permits some tolerance (see In re Ayers, 69 USPQ 109, and In re Erickson, 145 USPQ 207), the lower limit of “about 1 wt%” in Rioux may be considered to read on the upper limit of less than 1.0 wt% of the present Condition 1 in claim 18.
Response to Arguments
Applicant's arguments filed November 25, 2025 have been fully considered but they are not persuasive.
With respect to the anticipation rejection based upon Zheng, Applicant argues that (1) Zheng is not enabled on its face because Zheng does not provide anything regarding a fire point above the flash point for compositions comprising less than 3 wt% (e.g., 1-2 wt%) of one or more of (E)-1-chloro-2,3,3-trifluoroprop-1-ene and (Z)-1-chloro-2,3,3-trifluoroprop-1-ene; (2) the present examples demonstrate that Zheng is not enabled because Zheng Example 1 reports a flash point at 50 oC, when the present examples show that it is 0 oC and 2 oC; and (3) the present examples demonstrate that Zheng is not enabled because Zheng Example 2 reports no flash point, when the present examples show that there is a flash point at 0 oC and 2 oC.
The Examiner respectfully disagrees with the above arguments because, as stated in paragraph 9, Zheng teaches in Example 1, a mixed solution consisting of 97 wt% % T-1,2-DCE (trans-1,2-dichloroethylene) and 3 wt% 1233yd (a cis/trans-1-chloro-2,3,3-trifluoropropene (Table 1; paragraph [0026]), and in Example 2, a mixed solution consisting of 96 wt% T-1,2-DCE and 4 wt% 1233yd, wherein Examples 1 and 2 meet the ingredients and the proportions recited in claims 1-2 and also meet claim 3, and Condition 3 in claims 1 and 20 because “less than 1.0 wt% of the additive composition” in Condition 3 in claim 1 (see last 4 lines) and claim 20, and the limitation “up to” in claim 3, line 2, includes zero as a lower limit, see In re Mochel, 470 F.2d 638, 176 USPQ 194 (CCPA 1974); see also MPEP 2173.05(c)II. Even though Zheng does not explicitly disclose the composition having no fire point as recited in claim 1, it would be inherent for the composition of Zheng to exhibit the same property because the same components having the same proportions have been utilized. “Products of identical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 II. Also, "the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel." Id. See MPEP 2112 I.
With respect to the anticipation rejection over Hurtubise, please note that the rejection is withdrawn in view of Applicant’s amendment.
With respect to the anticipation rejection over Borgstedt, the rejection is maintained because of the same reasons discussed in paragraph 10 above. In view of the present amendment, please note that Borgstedt teaches, in Example 3, an azeotrope or azeotrope-like composition which consists of 91.34 wt% trans DCE (dichloroethylene), 0.99 wt% methanol (which meets the additive in claim 13 and Condition 3 of claims 1 and 20) and 7.67 wt% HCFO-1233yd(Z) (see 2nd composition in Table 5 and paragraph [0141).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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/LORNA M DOUYON/Primary Examiner, Art Unit 1761
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