UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/000,576
`
`10/05/2010
`
`7279451
`
`9404.2l383—REX
`
`7075
`
`°5’””°" _HONEYWELL/FOX Romscnm
`7”“
`W’
`Patent Services
`JOHNSONJERRY D
`101 Columbia Road
`7
`Morristown NJ 07962
`
`PAPER NUMBER
`
`3991
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`MAIL DATE
`
`05/25/2012
`
`DELIVERY MODE
`
`PAPER
`
`PTOL-90A (Rev. 04/07)
`
`1 of 38
`
`Arkema Exhibit 1055
`
`Arkema Exhibit 1055
`
`1 of 38
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/000,576
`
`10/05/2010
`
`7279451
`
`9404.2l383—REX
`
`7075
`
`°5’””°" _HONEYWELL/FOX Romscnm
`7”“
`W’
`Patent Services
`JOHNSONJERRY D
`101 Columbia Road
`7
`Morristown NJ 07962
`
`PAPER NUMBER
`
`3991
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`MAIL DATE
`
`05/25/2012
`
`DELIVERY MODE
`
`PAPER
`
`PTOL-90A (Rev. 04/07)
`
`1 of 38
`
`Arkema Exhibit 1055
`
`Arkema Exhibit 1055
`
`1 of 38
`
`
`
`‘
`
`,.
`
`."_ UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box 1450
`Alexandria, VA 22313-1450
`www.uspIo.gov
`
`MAILED
`
`-
`
`MAY 2 5 2012
`
`DO NOT USE IN PALM PRINTER
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`patrick ]_ F1313
`
`Date:
`
`CENIRALREEXAMINANON UNIT
`
`RYAN KROMHOLZ & MANION, S.C.
`
`P.O. BOX 26618
`
`Milwaukee, WI 53226
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NO. 2 95000576
`
`PATENT NO. : 7279451
`
`TECHNOLOGY CENTER : 3999
`
`ART UNIT : 3991
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified Reexamination proceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
`communication, the third party requester of the inter partes reexamination may once file
`written comments within a period of 30 days from the date of service of the patent owner's
`response. This 30-day time period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot
`be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no
`responsive submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed
`to the Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end
`of the communication enclosed with this transmittal.
`
`PTOL-2070(Rev.07-04)
`
`2of38
`
`2 of 38
`
`
`
`ACTION CLOSING PROSECUTION
`
`7279451
`
`JERRY D. JOHNSON
`
`3991
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`Responsive to the communication(s) filed by:
`Patent Owner on 22 March 2011
`
`Third Party(ies) on 21 April, 2011
`
`Patent owner may once file a submission under 37 CFR 1.951(a) within _1_ month(s) from the mailing date of this
`Office action. Where a submission is filed, third party requester may file responsive comments under 37 CFR
`1.951(b) within 30-days (not extendab|e- 35 U.S.C. § 314(b)(2)) from the date of service of the initial
`submission on the requester. Appeal cannot be taken from this action. Appeal can only be taken from a
`Right of Appeal Notice under 37 CFR 1.953.
`
`All correspondence relating to this inter partes reexamination proceeding should be-directed to the ‘Central
`Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this Office action.
`
`PART I. THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`
`1. E] Notice of References Cited by Examiner, PTO-892
`2. El Information Disclosure Citation, PTO/SB/08
`3.Ij
`
`PART II. SUMMARY OF ACTION:
`
`1a. El Claims 1 are subject to reexamination.
`1b. 1:] Claims :_ are not subject to reexamination.
`2.
`[:1 Claims j have been canceled.
`
`.
`.
`
`l:| Claims __ are confirmed. [Unamended patent claims]
`|:| Claims __ are patentable.
`[Amended or new claims]
`
`. E Claims _1-Q are rejected.
`.
`l:l Claims __ are objected to.
`E] are not acceptable.
`|:l are acceptable
`. [I The drawings filed on
`CI The drawing correction request filed on
`is:
`E] approved.
`|:l disapproved.
`l:I Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d). The certified copy has:
`El been received.
`E] not been received,
`[I been filed in Application/Control No __
`
`10. D Other
`
`u.s. Patent and Trademark Office
`PTOL-2065 (oa/os)
`
`30f38
`
`Paper No. 20120509
`
`3 of 38
`
`
`
`_
`
`_
`
`_
`
`C t
`
`IN .
`
`P t nt Under Reexamination
`
`Third Party Requester
`:i;‘:2:‘~:r75
`373:3‘
`Inter Partes Reexamination —
`
`JERRY D. JOHNSON
`
`3991
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
`in the above-identified reexamination proceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this communication,
`the third party requester of the inter partes reexamination may once file written comments within a
`period of 30 days from the date of service of the patent owner's response. This 30-day time period is
`statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no responsive
`submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the
`Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of the
`communication enclosed with this transmittal.
`
`u.s. Patent and Trademark Office
`PTOL-2O70 (5/o4)
`
`40f38
`
`Paper No. 20120509
`
`4 of 38
`
`
`
`INTER PARTES REEXAMINATION
`
`Control No.
`
`Patent Under Reexamination
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`JERRY D. JOHNSON
`
`3991
`
`BELOW/ATTACHED YOU WILL FIND A COMMUNICATION FROM THE UNITED STATES PATENT
`AND TRADEMARK OFFICE OFF|C|AL(S) IN CHARGE OF THE PRESENT REEXAMINATION
`PROCEEDING.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the
`Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this
`communication.
`
`U.S. Patent and Trademark Office
`PTOL-2072 (5/04)
`
`50f38
`
`Paper No. 20120509
`
`5 of 38
`
`
`
`Application/Control Number: 95/000,576
`
`Art Unit: 3991
`
`Page 2
`
`Status ofProceedings
`
`A Request pursuant to 37 CFR 1.193 for inter partes reexamination of claims 1-50 of
`
`U.S. Patent 7,279,451 to Singh et al. was filed October 5, 2010. An Order granting inter partes
`
`reexamination of claims 1-50 and a non-final Office Action rejecting claims 1-50 were mailed
`
`December 22, 2010. On March 22, 2011, Patent owner filed a Response and an amendment
`
`which amended claims 1, 7 and 30 and added new claims 51 and 52. Third party Requester
`
`filed Comments on April 21, 2011.
`
`Patent Owner ’s Amendment
`
`The amendment filed by patent owner on March 22, 2011 was held informal in a
`
`NOTICE RE DEFECTIVE PAPER IN INTER PARTES REEXAMINATION mailed May 13,
`
`2011 for failing to comply with 37 CFR 1.530. The March 22, 2011 amendment was found to
`
`improperly use “strike—thru” to indicate subj ect matter that was to be deleted from original patent
`
`claims 1, 7 and 30.
`
`Patent owner timely responded within the one month response period from the mailing
`
`date of the defective paper notice. Page one of the Response filed June 13, 2011 states
`
`is submitting a Corrected Version of
`[i]n this response the Patent Owner
`“EXHIBIT A — CLAIM LISTING” to correct the unintentional "amendment
`marking errors” made in the original Exhibit A filed on March 22, 2011. As
`shown below, Amended claims 1, 7 and 30 now show deleted subject matter in
`brackets, rather than in strike-through, in accordance with 37 C.F.R. 1.530(f). No
`other changes have been made to Exhibit A and acceptance of this Corrected
`Version of Exhibit A is respectfully requested.
`
`The amendment filed June 13, 2011 is also informal as failing to comply with 37 CFR
`
`1.530. Specifically, the amendment to claim 1 fails to include all of the subject matter to be
`
`60f38
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`6 of 38
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`Application/Control Number: 95/000,576
`Art Unit: 3991
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`Page 3
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`omitted by enclosing said subject matter in brackets. The amendment also fails to underline all
`
`of the subject matter that has been added. Claim 1, as it should appear in the June 13, 2011 I
`
`amendment (i.e., containing all of the required markings) appears below. In order to advance
`
`prosecution, the amendment filed June 13, 2011 has been accepted for examination purposes
`
`only. However, an amendment correctly identifying all of the changes in relation to the
`
`originally patented claims will be required. Such an amendment filed after ACP and limited to
`
`the deficiencies noted will be entered.
`
`Scope of claims
`
`In reexamination, patent claims are construed broadly. In re Yamamoto, 740 F.2d 1569,
`
`1571, 222 USPQ 934, 936 (Fed. Cir. 1984) (claims given “their broadest reasonable
`
`interpretation consistent with the specification”). The 7,279,451 patent'contains claims 1-50
`
`directed to a heat transfer composition. Claim 1 is representative:
`
`1. A heat transfer composition comprising:
`gag at least one lubricant in an amount of at least about 5% by weight of the heat
`transfer composition; and
`(l;)[(a)] at least one refrigerant comprising at least one fluoroalkene of Forrnula II:
`
`R
`R
`\ I
`C = C — R’
`
`R/
`
`(11)
`
`where R’ is (CR2),,Y,
`Y lS CF3
`each R is independently [C1,] F[, I] or H
`and n is 0 or 1
`
`7of38
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`7 of 38
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`Application/Control Number: 95/000,576
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`Art Unit: 3991
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`Page 4
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`provided (i) that said fluoroalkene has at least four fluorine substituents, that at
`least one R on the terminal unsaturated carbon is H, and at least one of the
`remaining Rs is a [halogen] fluorine located on [the] Q unsaturated non-terminal
`carbon[,]; and (ii) said lubricant and said refrigerant have one liguid phase at at
`least one temperature between about -50°C and +70°C measured at 5% by weight
`of lubricant based on the weight of the refrigerant and lubricant, said compound
`of Formula II being present in the composition in an amount of from about 5% by
`weight to about 99% by weight, and wherein said heat transfer composition has a
`Global Warming Potential (GWP) of not greater than about 1000.
`
`When n = O, the claimed fluoroalkene refrigerants are limited to HFO-l234yf and
`
`HFO-1225ye.
`
`While claim 48 is directed to a heat transfer composition of claim 1 wherein said
`
`compound of Formula (II) “has a low level of toxicityi’, the specification does not limit or
`
`otherwise define the term “low level of toxicity” to any specific value. Additionally, the
`
`specification teaches “a relatively low toxicity level is associated with compounds of
`
`Formula (II)” (column 4, lines 49-53).
`
`35 U.S.C. § 112, 1"paragraph
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the manner and process of making
`and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it
`pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode
`contemplated by the inventor of carrying out his invention.
`
`Claims 1-6, 12-26, 31-33 and 35-50 are rejected under 35 U.S.C. 112, first paragraph,
`
`because the specification, while being enabling for a refrigerant composition comprising at le_ast
`
`one lubricant in an amount of about 5% by weight to about 50% by weight, does not reasonably
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`80f38
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`8 of 38
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`Page 53
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`provide enablement for a refrigerant composition comprising “at least one lubricant in an amount
`
`of at least about 5% by weight of the heat transfer composition” as presently claimed. The
`
`specification does not enable any person skilled in the art to which it pertains, or with which it is
`
`most nearly connected, to make and practice the invention commensurate in scope with these
`
`claims.
`
`The specification of the 7,279,451 patent teaches that the claimed composition
`
`includes a lubricant "generally in amounts of from about 30 to about 50 percent by
`
`weight of the composition" (column 6, lines 61-65). Example 2, column 15 of the
`
`7,279,451 patent, discloses refrigerant compositions comprising 5, 20 and 50 weight
`
`percent lubricant. Accordingly, the 7,279,451 patent provides support for a composition
`
`comprising about 5 to about 50 weight percent of lubricant but not the “open ended”
`
`range of “at least about 5% by weight” as presently claimed.
`
`35 U.S.C. § 112, 2'"! paragraph
`
`The following is a quotation of the second paragraph of 35 U.S.C. 112:
`
`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 1-6, 12-20, 22-26, 31-33, 35, 36 and 38-49 are rejected under 35 U.S.C. 112,
`
`second paragraph, as being indefinite for failing to particularly point out and distinctly claim the
`
`subject matter which applicant regards as the invention.
`
`Independent claim 1 improperly defines the claimed composition as containing “at least
`
`one lubricant in an amount of at least about 5% by weight of the heat transfer composition” and
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`9 of 38
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`Application/Control Number: 95/000,576
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`3
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`Page 6
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`Art Unit: 3991
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`“said compound of Formula II being present in the composition in an amount of from about 5%
`
`by weight to about 99% by weight”. If the composition contains “at least one lubricant in an
`
`amount of at least about 5% by weight", then the maximum amount of "said compound of
`
`Formula II" would be about 95% by weight. Conversely, if the composition contains "about
`
`99% by weight” of a compound of formula II, then the maximum amount of “at least one
`
`lubricant" is about 1% by weight. Accordingly, claims 1-20 and 22-49 are indefinite.
`
`Claim 36 is improperly directed to “[a] refrigerant according to the composition of claim
`
`1" whereas claim 1 is a composition comprising both a lubricant and a refrigerant.
`
`35 U.S.C. § 112, 4”‘ paragraph
`
`The following is a quotation of the fourth paragraph of 35 U.S.C. 112:
`
`Subject to the [fifih paragraph of 35 U.S.C. 112], a claim in dependent fonn 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.
`
`Claims 36, 40-42, 44, 48 are rejected under 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.
`
`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 36 is improperly directed to "[a] refrigerant according to the composition of claim
`
`1" whereas claim 1 is a composition comprising both a lubricant and a refrigerant.
`
`10 of 38
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`10 of 38
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`Application/Control Number: 95/000,576
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`Page 7
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`Art Unit: 3991
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`Claim 40 fails to further limit claim 1, i.e., the composition of claim 1 already
`
`includes a lubricant soluble in said refrigeration fluid.
`
`Claims 41 and 42 fail to further limit claim 1 as claim 1 already defines R as H or
`
`Claim 44 fails to further limit claim 43, i.e., claim 43 depends from claim 1 which
`
`already defines R as H or F.
`
`Claim 48 fails to fiirther limit claim 1, i.e., the 7,279,451 specification teaches
`
`that the claimed compounds of formula II have a low level of toxicity.
`
`Duplicate Claims
`
`Patent owner is advised that should claim(s) 3, 4 and 32 be found allowable, claim(s) 43,
`
`37, 38, 49 and 50 will be objected to under 37 CFR 1.75 as being substantial duplicate(s) thereof.
`
`When two claims in an application are duplicates or else are so close in content that they both
`
`cover the same thing, despite a slight difference in wording, it is proper after allowing one claim
`
`to object to the other as being a substantial duplicate of the allowed claim. See MPEP
`
`§ 706.03(k).
`
`Claims 3 and 43 are duplicate claims.
`
`Claims 32, 38 and 49 are duplicate claims.
`
`Additionally, should claim 1 be amended so as to correct the above noted
`
`indefiniteness under 35 U.S.C. 112 by, for example, amending claim 1 to require about
`
`5% to about 95% by weight of a compound of Formula 11, then the following claims will
`
`also be duplicates: claim 1 and claim 21; claim 4 and claim 37; claim 32 and claim 50.
`
`11 of38
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`11 of 38
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`Application/Control Number: 95/000,576
`Art Unit: 3991
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`I
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`Page 8
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`35 U.S.C. § 103
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set ‘forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
`
`Requester ’s Proposed Rejections
`
`I.
`
`On pages 17-19 of the Comments, requester proposes that claim 1-2, 4-6, 16-24, 32, 35,
`
`37-39, 41-42 and 45-50 be rejected under 35 U.S.C. 10b(b) as anticipated by RU 2073058
`
`(hereafter “Podchemj aev”).
`
`II.
`On page 19 of the Comments, requester proposes that claims 7, 9-11, 27 and 30-31 be
`rejected under 35 U.S.C. lO3(a) as being unpatentable over Podchemjaev in View ofU.S. Patent
`
`6,783,691 to Bivens et al. (“Bivens”). On pages 31 and 34 of the Comments, requester proposes
`that claims 51 and 52 be rejected over Podchemjaev in View of Bivens.
`‘
`
`III.
`
`On page 20 of the Comments, requester proposes that claim 8 be rejected under 35
`
`U.S.C. l03(a) as being unpatentable over Podchemjaev in view of Bivens and U.S. Patent '
`
`6,374,629 to Oberle et al. (“Oberle”).
`
`12 of 38
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`12 of 38
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`Application/Control Number: 95/000,576
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`Art Unit: 3991
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`Page 9
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`IV.
`
`On pages 20-21 of the Comments, requester proposes that claims 13-15 and 36 be
`
`rejected under 35 U.S.C. 103(a) as being unpatentable over Podchemjaev in view of U.S. Patent
`
`6,991,744 to Mahler et al. (“Mahler”).
`
`V.
`
`On page 21 of the Comments, requester proposes that claim 40 be rejected under 35
`
`U.S.C. 103(a) as being unpatentable over Podchernjaev in View of U.S. Patent 5,736,062 to
`
`Basile et al. (“Basile”).
`
`VI.
`
`On pages 21-22 of the Comments, requester proposes that claims 12 and 33-34 be
`
`rejected under 35 U.S.C. 103(a) as being unpatentable over Podchemjaev in view of U.S. Patent
`
`6,640,841 to Thomas et al. (“Thomas”).
`
`VII. On page 22 of the Comments, requester proposes that claims 25-26 be rejected under 35
`
`U.S.C. 103(a) as being unpatentable over Podchemjaev in view of U.S. Patent 5,611,210 to
`
`Nimitz et al. (“Nimitz”).
`
`VIII." On pages 22-23 of the Comments, requester proposes that claims 28 and 29 be rejected
`
`under 35 U.S.C. 103(a) as being unpatentable over Podchemjaev in view of Oberle.
`
`For the reasons that follow, proposed rejections I-VIII are not adopted. Each of the
`
`proposed rejections I-VIII relies at least in part on the teachings of Podchemjaev. All references
`
`to Podchemjaev are to the English language translation which accompanied the request. While
`
`13 of 38
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`13 of 38
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`Application/Control Number: 95/000,576
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`Page 10
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`Art Unit: 3991
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`Podchemj aev teaches that R-1234 may be part of a three component system containing (1) 1-94
`
`mole % unsaturated fluorocarbon of the propylene series having the structural formula C3F.,H(6_,,)
`
`, (2) 1-94 mole % tetrafluoroethane, and (3) 5-80 mole % hydrocarbon, Podchemjaev does not
`
`teach that the resulting composition has a GWP of not greater than about 1000 as claimed. The
`
`single example of Podchemjaev teaches a composition comprising 60 mole % R134a, 10 mole %
`
`R1243 and 30 mole % Isobutene (Table 3, page 5). That composition has a GWP of greater than
`
`1000:
`
`Compound Mole % E Total Weight
`
`Weight %
`
`0
`
`R134a
`
`R1243
`
`Isobutene
`
`160
`
`10
`
`30
`
`102
`
`6120
`
`6120/8760 = 70% i
`
`.70 * 1430 = 1001
`
`96
`
`960
`
`960/8760 = 11%
`
`.11 *
`
`4 = .44
`
`56 Q 1680/8760 = 19%
`
`.19 *
`
`3 = .57‘
`
`8760
`
`1002
`
`The additionally cited art of Bivens, Mahler, Basile, Thomas, Nimitz and Oberle does not
`
`cure that deficiency, i.e., does not teach that a heat transfer composition should have a GWP of
`
`not greater than about 1000.
`
`Because Podchemj aev only teaches that R-1234 may be part of a three component
`
`composition that requires R134a, does not teach that the resulting composition should have a
`
`GWP of less than 1000, and exemplifies a single composition which has a GWP of greater than
`
`1000, the teachings of Podchemjaev are less pertinent to the claimed invention than those of
`
`Japanese Unexamined Patent Application Laid Open H4-1 103 88 to lnagaki et al. and have not
`
`been adopted.
`
`14 of 38
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`14 of 38
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`
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`Application/Control Number: 95/000,576
`Art Unit: 3991
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`Page 11
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`IX.
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`On page 23 of the Comments, requester proposes that claims 1_-2, 4-7, 16-24, 30-32, 35,
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`37-42 and 45-50 be rejected under 35 U.S.C. l02(b) as anticipated by Japanese Unexamined
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`Patent Application Laid Open H4-110388 to Inagaki et al. (“Inagaki”). On page 31 of the
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`Comments, requester proposes that claim 51 be rejected as anticipated by Inagaki. On page 33-
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`34 of the Comments, requester proposes that claim 52 be rejected as anticipated by Inagaki.
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`The proposed rejection of claims 1-2, 4-7, 16-24, 30-32, 35, 37-42 and 45-52 under 35
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`U.S.C. l02(b) as anticipated by Inagaki is not adopted. All references to Inagaki are to the
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`English language translation which accompanied the request.
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`Inagaki teaches compositions useful for “use in a refrigerator, heat pump or the like”
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`comprising an organic compound represented by the formula C3HmF,, (m = an integer of l to 5,
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`n = an integer of 1 to 5 and m + n = 6) and containing one double bond in its molecular structure
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`(page 1). Mixtures of C3HmF,, and at least one compound selected from a group consisting of,
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`inter alia, R-125, R-134a and R-152 may be used (page 2). While embodiment 5 of Inagaki
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`specifically discloses a heat transfer fluid of the instant claims, the proposed rejection of claims
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`1-2, 4-7, 16-24, 30-32, 35, 37-42 and 45-51 under 35 U.S.C. l02(b) is not adopted because
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`Inagaki does not teach that the heat transfer composition comprises at least one lubricant in an
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`amount of at least about 5% by weight of the heat transfer composition and about 5% by weight
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`to about 99% by weight of the heat transfer fluid of at least one refrigerant (claims 1-50); about
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`5% by weight to about 99% by weight of HFO-l234yf (claim 51); or a polyalkylene glycol
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`lubricant and about 5% by weight to about 99% by weight of HFO-1234yf (claim 52) so as to
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`anticipate the claims.
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`15 of 38
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`15 of 38
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`
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`Application/Control Number: 95/000,576
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`Page 12
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`Art Unit: 3991
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`X.
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`Claims 1-2, 4-7, 16-24, 30-32, 35, _37-42 and 45-51 are rejected under U.S.C. § lO3(a) as
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`being unpatentable over Inagaki.
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`On pages 11-13 of the Comments, requester proposes that the rejection of claims 1-2, 4-
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`7, 16-24, 30-32, 35, 37-42 and 45-50 under 35 U.S.C. 103(a) as being unpatentable over Inagaki
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`be maintained. On page 31 of the Comments, requester proposes that claim 51 is obvious in
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`view of Inagaki. On page 33 of the Comments, requester proposes that claim 52 is obvious in
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`view of Inagaki. On pages 31 and 32 of the Comments, requester also proposes that claim 51 is
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`obvious over Inagaki in view of Bivens, Podchemj aev in view of Bivens, and Podchemjaev
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`“either alone, or in combination with Inagaki”.
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`The proposed rejection of claim 52 as obvious over Inagaki is not adopted because
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`Inagaki does not teach or render obvious a heat transfer composition comprises a polyalkylene
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`glycol lubricant and about 5% by weight to about 99% by weight of HFO-l234yf. For the
`
`reasons that follow, the proposed rejection of claims 1-2, 4-7, 16-24, 30-32, 35, 37-42 and 45-51
`
`as being unpatentable over Inagaki is adopted.
`
`Inagaki teaches compositions useful for “use in a refrigerator, heat pump or the like”
`
`comprising an organic compound represented by the formula C3HmF,. (m = an integer of 1 to 5, n
`
`= an integer of 1 to 5 and m + n = 6) and containing one double bond in its molecular structure
`
`(page 1). Mixtures of C3HmF,, and at least one compound selected from a group consisting of,
`
`inter alia, R-125, R-134a and R-152 may be used (page 2). While embodiment 5 of Inagaki
`
`specifically discloses a heat transfer fluid of the instant claims (i.e., R-l234yf), Inagaki does not
`
`teach that the heat transfer composition comprises about 5 % by weight to about 99 % by weight
`
`of the heat transfer fluid.
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`16 of 38
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`16 of 38
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`
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`Application/Control Number: 95/000,576
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`Page 13
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`Art Unit: 3991
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`To the extent that Inagaki differs from the instant claims in not disclosing the specifically
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`claimed heat transfer fluid concentration range, it has long been an axiom of patent law that it is
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`not inventive to" discover the optimum or workable ranges of result-effective variables by routine
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`experimentation. Peterson, 315 F.3d at 1330 (“The normal desire of scientists or artisans to
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`improve upon what is already generally known provides the motivation to determine where in a
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`disclosed set of percentage ranges is the optimum combination of percentages.”); Aller, 220 F.2d
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`at 456 (“[W]here the general conditions of a claim are disclosed in the prior art, it is not
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`inventive to discover the optimum or workable ranges by routine experimentation.”).
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`Inagaki teaches that the disclosed fluids “[are] useful for the use in a refrigerator, heat
`
`pump or the like" (page 1) and “do not have any problem with respect to their general
`
`characteristics (e.g., compatibility with lubricants, non-erodibility against materials etc.)” (page
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`3). It is well known that compression heat transfer systems require a lubricant to be circulated
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`with the heat transfer composition so as to lubricate and seal compressor components.
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`A person having ordinary skill in the art would have determined, through nothing more
`
`than routine experimentation, the range of concentrations of heat transfer fluid(s) and lubricant in
`
`a heat transfer composition as taught by Inagaki so as to produce a heat transfer composition
`
`having the desired properties. Accordingly, claims 1-2, 4-7, 16-24, 30-32, 35, 37-42 and 45-51
`
`would have been obvious to one having ordinary skill in the art.
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`XI.
`
`Claims 9-11, 28, 40 and 52 are rejected under U.S.C. § 103(a) as being unpatentable over
`
`Inagaki in view of Bivens.
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`17 of 38
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`17 of 38
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`
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`Application/Control Number: 95/000,576
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`.
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`Page 14
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`Art Unit: 3991
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`On page 14 of the Comments, requester proposes that the rejection of claims 9-11, 28 and
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`40 under 35 U.S.C. 103(a) as being unpatentable over Inagaki in view of Bivens be maintained.
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`On pages 31 and 32 of the Comments, requester proposes that claim 51 is obvious over Inagaki
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`in view of Bivens. On page 33 of the Comments, requester proposes that claim 52 be rejected as
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`obvious over Inagaki in view of Bivens.
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`The proposed rejection of claim 51 over Inagaki in view of Bivens is not adopted
`
`because Inagaki, considered alone, renders claim 51 obvious and the teachings of Bivens are
`
`necessary to reach the limitations of claim 51. For the reasons that follow, the proposed rejection
`
`is adopted as to claims 9-1 1, 28, 40 and 52.
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`Inagaki is relied on as cited above, but differs from the instant claims in not disclosing
`
`specific lubricants for hydrofluorocarbon refrigerants.
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`Bivens teaches that alternative lubricants such as polyalkylene glycols and polyol esters
`
`are used for hydrofluorocarbon refrigerants because the conventionally used lubricants in CFC-
`
`based systems (e.g., mineral oils and alkylbenzenes) lack solubility in hydrofluorocarbons
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`(colurrm 1, lines 37-43).
`
`It would have been obvious to one having ordinary skill in the art to use a polyalkylene
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`glycol or polyol ester lubricant in the composition of lnagaki because Bivens teaches that
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`alternative lubricants such as polyalkylene glycols and polyol esters are used for
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`hydrofluorocarbon refrigerants because the conventionally used lubricants in CFC-based systems
`
`(e.g., mineral oils and alkylbenzenes) lack solubility in hydrofluorocarbons.
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`18 of 38
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`18 of 38
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`
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`I Application/Control Number: 95/000,576
`Art Unit: 3991
`
`Page 15
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`XII.
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`Claims 8 and 27-29 are rejected under U.S.C.Ԥ 103(a) as being unpatentable over
`
`Inagaki in view of Oberle.
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`On pages 14 and 15 of the Comments, requester proposes that the rejection of claims 8
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`and 27-29 under 35 U.S.C. 103(a) as being unpatentable over Inagaki in view of Oberle be
`
`maintained. For the reasons as set forth at pages 41-43 of the request and for the reasons that
`
`follow, the proposed rejection is adopted.
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`Inagaki is relied on as cited above, but differs from the instant claims in not disclosing
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`specific lubricants for hydrofluorocarbon refrigerants.
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`Oberle teaches a lubricant-refrigerant composition comprising at least one fluorine-
`
`containing hydrocarbon refrigerant containing 1 to 3 carbon atoms and at least one lubricant
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`comprising (1) a hydrocarbyl substituted arene, (2) a phosphate ester, (3) an organic ester of a
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`carboxylic acid and an alcohol, (4) a perfluoropolyethylene, (5) an ether, (6) a polyether, (7) a
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`polyalphaolefin, or (8) a mineral oil (abstract). Alkyl benzene lubricant (claim 27) is specifically
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`disclosed in column 1 1, lines 13-15 of Oberle.
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`It would have been obvious to one having ordinary skill in the art at the time the
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`invention was made to include a lubricant as taught by Oberle in a composition containing a heat
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`transfer fluid as taught by Inagaki so as to form a composition for use in a compression
`/
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`refrigeration system.
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`XIII. Claims 13-15 and 36 are rejected under U.S.C. § 103(a) as being unpatentable over
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`Inagaki in view of Mahler.
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`19 of 38
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`19 of 38
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`
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`Application/Control Number: 95/000,576
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`Art Unit: 3991
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`Page 16
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`On page 15 of the Comments, requester proposes that the rejection of claims 13-15 and
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`36 under 35 U.S.C. 103(a) as being unpatentable over Inagaki in view of Mahler be maintained.
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`For the reasons as set forth at pages 43-44 of the request and for the reasons that follow, the
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`proposed rejection is adopted.
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`Inagaki is relied on as cited above, but differs from the instant claims in not disclosing
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`that the composition further comprises a compatibilizer.
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`Mahler teaches compositions that are useful for compatibilizing a conventional, non-
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`polar, compression lubricant and a hydrofluorocarbon and/or hydrochlorofluorocarbon in a
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`compression refrigeration apparatus (abstract). The compatibilizers decrease the viscosity of the
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`non-polar lubricant in the coldest portions of a compression refrigeration apparatus by
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`solubilizing the polar halogenated hydrocarbon and lubricant in the non-compressor zones,
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`which results in efficient return of lubricant from non-compressor zones to a compressor zone
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`(column 2, lines 49-55). The halogenated hydrocarbons may optionally further comprise up to
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`10 weight percent of dimethyl ether, or at least one C3 to C5 hydrocarbon, e.g., propane,
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`propylene, cyclopropane, n-butane, i-butane, and n-pentane (column 8, lines 56-60).
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`It would have been obvious to one having ordinary skill in the art at the time the
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`invention was made to include a compatibilizer in the composition of Inagaki in order to promote
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`efficient return of lubricant from non-compressor zones to a compressor zone as taught by
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`Mahler. Further, it would have been obvious to include a C3 to C5 hydrocarbon as also taught by
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`Mahler.
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`20 of 38
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`20 of 38
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`
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`Application/Control Number: 95/000,576
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`Art Unit: 3991
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`Page 17
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`XIV. On page 24 of the Comments and pages 44-45 of the request, requester proposes that
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`claim 40 be rejected under 35 U.S.C. 103(a) as obvious over Inagaki in view of U.S. Patent
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`5,736,062 to Basile et al. (“Basile”).
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`For the reasons that follow, the proposed rejection of claim 40 is not adopted. Requester
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`argues "Basile teaches the use of lubricants that are soluble in HFC refrigerant fluids. See
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`Basile, Col. 2, line 66 - col. 3, line 4. It would have been obvious to use the lubricants of Basile
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`with the refrigerants of Inagaki, and claim 40 is obvious."
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