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 .
This action is responsive to Applicant's preliminary amendments filed 08/29/2025.
Claims 18-37 are currently pending and under examination.
Claim Objections
Claim 25 is objected to because of the following informalities:
Claim 25 recites “comprises of 25% to 40% by weight of the R-152a”. Applicant is suggested to revise it as “comprises 25% to 40% by weight of the R-152a” for clarity.
Appropriate correction is required.
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.
1. Claims 18-27, 29, and 31-37 are rejected under 35 U.S.C. 103 as being unpatentable over Huang (CN 110257014 A, hereinafter Huang).
Regarding claim 18, Huang teaches a mixed refrigerant comprises 9–76% by weight of trifluoroiodomethane, 3–65% by weight of 1,1-difluoroethane, and 1–75% by weight of a fourth component, wherein the fourth component is carbon dioxide ([0014]-[0015]).
Huang specifically teaches a mixed refrigerant comprises 13-61% by weight of trifluoroiodomethane, 3-39% by weight of 1,1-difluoroethane, and 1-5% by weight of carbon dioxide ([0016]; claim 9), which overlaps with the claimed range of “3% to 10% by weight of carbon dioxide”.
Thus, the total content of trifluoroiodomethane and 1,1-difluoroethane can be 16-100% by weight in the mixed refrigerant of Huang, which overlaps with the claimed range of “at least 60% by weight or more”. The mixture of trifluoroiodomethane and 1,1-difluoroethane in Huang reads on the claimed mixture of fluorinated refrigerants.
Huang does not teach the claimed mixed refrigerant composition at once under the meaning of anticipation.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claims 19, 20, and 31, Huang teaches a mixed refrigerant comprises 13-61% by weight of trifluoroiodomethane, 16-78% by weight of fluoroethane, 3-39% by weight of 1,1-difluoroethane, and 1-5% by weight of carbon dioxide ([0016]; claim 9). Thus, the mixed refrigerant as taught by Huang is free of 1,1-difluoroethylene (R-1132a), free of any hydrofluoroolefin (HFO)-based refrigerant, and free of any chlorine atoms.
Regarding claims 21-27, Huang teaches a mixed refrigerant comprises 13-61% by weight of trifluoroiodomethane, 3-39% by weight of 1,1-difluoroethane, and 1-5% by weight of carbon dioxide ([0016]; claim 9), which overlap with the claimed ranges of “55% to 71.5% by weight” of trifluoroiodomethane, “56% to 66.5% by weight” of trifluoroiodomethane, “20% to 60% by weight” of 1,1-difluoroethane, “30% to 50% by weight” of 1,1-difluoroethane, and “25% to 40% by weight” of 1,1-difluoroethane.
Thus, the ratio of trifluoroiodomethane to carbon dioxide can be 2.6 to 61 in the mixed refrigerant as taught by Huang, which overlaps with the claimed range of “5 to 80”.
The ratio of carbon dioxide to 1,1-difluoroethane can be 0.03 to 1.67 in the mixed refrigerant as taught by Huang, which overlaps with the claimed range of “0.01 to 0.3”.
Regarding claim 29, Huang teaches that the ODP (i.e. ozone depleting potential) value of each component in the mixed refrigerant is zero, so even long-term use will not cause damage to the ozone layer ([0018]), which reads on the claimed ozone depleting potential of 0.
Regarding claim 32, Huang teaches that a mixed refrigerant comprises 9–76% by weight of trifluoroiodomethane, 2–78% by weight of fluoroethane, 3–65% by weight of 1,1-difluoroethane, and 1–75% by weight of a fourth component, wherein the fourth component is carbon dioxide ([0014]-[0015]).
Huang specifically teaches that a mixed refrigerant comprises 13-61% by weight of trifluoroiodomethane, 16-78% by weight of fluoroethane, 3-39% by weight of 1,1-difluoroethane, and 1-5% by weight of carbon dioxide ([0016]; claim 9), which overlaps with the claimed range of “at least 3% to 10% by weight of carbon dioxide”.
Huang also teaches that the mixed refrigerant can consist of trifluoroiodomethane, fluoroethane, 1,1-difluoroethane, and carbon dioxide ([0101]-[0108], Examples 35-38).
The mixed refrigerant of Huang reads on the claimed refrigerant. The carbon dioxide in the mixed refrigerant of Huang reads on the claimed one or more natural refrigerants. The trifluoroiodomethane, fluoroethane, and 1,1-difluoroethane in the mixed refrigerant of Huang read on the claimed one or more hydrofluorocarbon (HFC) refrigerant.
Huang also teaches that the mixed refrigerant is used in automotive air conditioning refrigerant composition ([0018]), which reads on the claimed refrigerant composition. Huang further teaches that the mixed refrigerant has a low GWP and ODP (i.e. ozone depleting potential) value of zero ([0018]).
Huang does not teach the claimed refrigerant at once under the meaning of anticipation.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to make the mixed refrigerant as taught by Huang consisting of 13-61% by weight of trifluoroiodomethane, 16-78% by weight of fluoroethane, 3-39% by weight of 1,1-difluoroethane, and 1-5% by weight of carbon dioxide, in order to make the mixed refrigerant having a low GWP and ODP value of zero with a reasonable expectation of success, because the mixed refrigerant can consist of trifluoroiodomethane, fluoroethane, 1,1-difluoroethane, and carbon dioxide as recognized by Huang.
Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claims 33-36, Huang teaches a mixed refrigerant comprises 13-61% by weight of trifluoroiodomethane, 16-78% by weight of fluoroethane, 3-39% by weight of 1,1-difluoroethane, and 1-5% by weight of carbon dioxide ([0016]; claim 9), which overlap with the claimed ranges of “55% to 71.5% by weight” of trifluoroiodomethane, “20% to 60% by weight” of 1,1-difluoroethane, and “30% to 50% by weight” of 1,1-difluoroethane.
Thus, the ratio of carbon dioxide to 1,1-difluoroethane can be 0.03 to 1.67 in the mixed refrigerant as taught by Huang, which overlaps with the claimed range of “0.01 to 0.3”.
Regarding claim 37, Huang teaches a mixed refrigerant comprises 9–76% by weight of trifluoroiodomethane, 3–65% by weight of 1,1-difluoroethane, and 1–75% by weight of a fourth component, wherein the fourth component is carbon dioxide ([0014]-[0015]).
Huang specifically teaches a mixed refrigerant comprises 13-61% by weight of trifluoroiodomethane, 3-39% by weight of 1,1-difluoroethane, and 1-5% by weight of carbon dioxide ([0016]; claim 9), which overlaps with the claimed range of “3% by weight or more of carbon dioxide”.
Thus, the total content of trifluoroiodomethane and 1,1-difluoroethane can be 16-100% by weight in the mixed refrigerant of Huang, which overlaps with the claimed range of “60% by weight or more”.
The ratio of trifluoroiodomethane to 1,1-difluoroethane can be 0.33 to 20.3 in the mixed refrigerant as taught by Huang, which overlaps with the claimed range of “1.4 to 3.95”.
The ratio of carbon dioxide to 1,1-difluoroethane can be 0.03 to 1.67 in the mixed refrigerant as taught by Huang, which overlaps with the claimed range of “0.01 to 0.3”.
Huang does not teach the claimed mixed refrigerant composition at once under the meaning of anticipation.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
2. Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Huang (CN 110257014 A, hereinafter Huang) as applied to claims 18-27, 29, and 31-37 above, and further as evidenced by “IPCC GWP” (IPCC Global Warming Potential Values, 2024, hereinafter “IPCC GWP”).
The disclosure of Huang is relied upon as set forth above.
Regarding claim 30, the instant invention discloses that the carbon dioxide (R-744) has a global warming potential (GWP) of 1 (instant p. 7, ll. 3-4), the trifluoroiodomethane (R-13I1) has a global warming potential (GWP) of less than 5 (instant p. 7, ll. 8-9), and the 1,1-difluoroethane (R-152a) has a global warming potential (GWP) of 150 or less (instant p. 7, ll. 13-14).
Huang teaches a mixed refrigerant comprises 13-61% by weight of trifluoroiodomethane, 16-78% by weight of fluoroethane, 3-39% by weight of 1,1-difluoroethane, and 1-5% by weight of carbon dioxide ([0016]; claim 9).
“IPCC GWP” as an evidentiary reference shows that HFC-161 (fluoroethane) has a global warming potential (GWP) of 4 (p. 2).
Thus, a global warming potential (GWP) of the mixed refrigerant in Huang can be in a range of from 8 to 60, which overlaps with the claimed range of “not more than about 50.2”.
3. Claims 18 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Flohr (US 2006/0202154 A1, hereinafter Flohr).
Regarding claims 18 and 28, Flohr teaches that a refrigerant mixture consists of halogenated hydrocarbons with a GWP100 of less than 150 and carbon dioxide, wherein the halogenated hydrocarbons with a GWP100 of less than 150 can include 1,1-diffluoroethane (R152a), and trifluoroiodomethane (R13I1) ([0014]-[0015]).
Flohr also teaches that carbon dioxide is in an amount of 2 to 30% by weight in the refrigerant mixture ([0019]), which overlaps with the claimed range of “3% to 10% by weight of carbon dioxide”. Thus, the halogenated hydrocarbons with a GWP100 of less than 150 is in an amount of 70 to 98% by weight in the refrigerant mixture of Flohr, which overlaps with the claimed range of “at least 60% by weight or more”.
Flohr further teaches that the refrigerant mixture has a low greenhouse potential ([0010]).
Flohr does not teach the claimed mixed refrigerant composition at once under the meaning of anticipation.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the refrigerant mixture as taught by Flohr consisting of halogenated hydrocarbons with a GWP100 of less than 150 including 1,1-diffluoroethane and trifluoroiodomethane, and carbon dioxide, wherein the halogenated hydrocarbons with a GWP100 of less than 150 is in an amount of 98 to 70% by weight, and the carbon dioxide is in an amount of 2 to 30% by weight, in order to make the refrigerant mixture having a low greenhouse potential with a reasonable expectation of success.
Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 18, 21-27, 30, and 37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 6, 7, 15, and 17 of copending Application No. 18/650,115 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
The pending claims of the reference application teaches a mixed refrigerant composition comprising carbon dioxide (R-744), trifluoroiodomethane (R-13I1), and 1,1-difluoroethane (R-152a), wherein a sum of a content of the trifluoroiodomethane (R-13I1) and a content of the 1,1-difluoroethane (R-152a) based on a total weight of the mixed refrigerant composition is 85 to 98% by weight, a content of the carbon dioxide (R-744) based on the total weight of the mixed refrigerant composition is 3% by weight or more, and a content of the trifluoroiodomethane (R-13I1) based on the total weight of the mixed refrigerant composition is 55 to 71.5% by weight.
The pending claims of the reference application also teaches that a ratio of the content of the trifluoroiodomethane (R-13I1) to the content of the carbon dioxide (R-744) based on the total weight of the mixed refrigerant composition is 5 to 80, a ratio of the content of the carbon dioxide (R-744) to the content of the 1,1-difluoroethane (R-152a) based on the total weight of the mixed refrigerant composition is 0.01 to 0.3.
The pending claims of the reference application also teaches that a global warming potential (GWP) of the mixed refrigerant composition is 1 to 75.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761