UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box I450
`Alexandria. Virginia 22313-1450
`www.uspu).gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/001,783
`
`I I/08/201 I
`
`8,033,120
`
`940421592-REX
`
`8580
`
`°"”“‘”°” —HONEYWELL/FOX Romscmw
`7””
`°'°’°
`Patent Services
`XU- LING X
`101 Columbia Road
`PAPER NUMBER
`Morristown, NJ 07962
`
`A“ “N”
`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
`
`09/I4/2012
`
`DELIVERY MODE
`
`PAPER
`
`1 Of 42
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`PTOL-90A (Rev. 04/07)
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`Arkema Exhibit 1156
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`Arkema Exhibit 1156
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`1 of 42
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`

`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`DO NOT USE IN PALM PRINTER
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`RYAN KROMHOLZ & MANION, S.C.
`POST OFFICE BOX 26618
`
`MILWAUKEE, WI 53226
`
`’
`
`Date: M
`A
`SEP 1 4 2012
`
`CENTRAL REEXAMINATION UNIT
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NO. : 95001783
`
`PATENT NO. : 8033120
`
`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.
`
`PTO L-2070(Rev.07~04)
`
`2of42
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`2 of 42
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`

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`Control No.
`
`Patent Under Reexamination
`
`
`
`95/001,783
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`8,033,120
`
`~
`
`
`
`INTER PARTES REEXAMINATION
`
`COMMUNICATION
`Examiner
`
`
`
`
`Lin Xu
`
`
`3991
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`
`
` BELOW/ATTACHED YOU WILL FIND A COMMUNICATION FROM THE UNITED STATES PATENT
`AND TRADEMARK OFFICE OFFIC|AL(S) IN CHARGE OF THE PRESENT REEXAMINATION
`
`»
`PROCEEDING.
`
`
`
`All correspondence relating to this interpartes 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 (53oa)f 42
`
`-
`
`.
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`Paper No. 20120810
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`3 of 42
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`

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`Transmittal of Communication to
`
`Control No.
`
`Patent Under Reexamination
`
`8,033,120
`Art Unit
`
`3991
`
`'
`
`95/001,783
`Examiner
`
`
`
`Lin Xu
`
`
`
`
`
`Third Party Requester
`Inter Partes Reexamination
`
`
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the ‘correspondence address. --
`
`
`
`in the above-identified reexamination proceeding. 37 CFR 1.903.
`
` Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
`
`
`
`
`
`
`
` 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
`
`
`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.
`
`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-2070 (54l>4)f 42
`
`Paper No. 20120810
`
`4 of 42
`
`

`
`Control No.
`Patent Under Reexamination
`
`
`
`
`
`8,033,120
`Art Unit
`
`3991
`
`ACTION CLOSING PROSECUTION
`(37 CFR 1.949)
`
`
`
`95/001,783
`Examiner
`
`Lin Xu
`
`
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`
`
`
`
`
` Responsive to the communication(s) filed by:
`
`Third Party(ies) on 16 July, 2012
` Patent owner may once file a submission under 37 CF R 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. I] Notice of References Cited by Examiner, PTO-892
`2. IX Information Disclosure Citation, PTO/SB/08
`3.I___l
`
`
`
`
`
`
`PART II. SUMMARY OF ACTION:
`
`1a. [Z Claims 1-19 and 22-68 are subject to reexamination.
`
`1b. D Claims
`
`are not subject to reexamination.
`
`2.
`
`IX] Claims 20 and 21 have been canceled.
`
`[3 Claims _ are confirmed. [Unamended patent claims]
`[:1 Claims
`are patentable.
`[Amended or new claims]
`
`[Z Claims 1-19 and 22-68 are rejected.
`[3 Claims
`are objected to.
`E] are acceptable
`E] are not acceptable.
`D The drawings filed on
`l_—_I The drawing correction request filed on
`is:
`I: approved. E] disapproved.
`E] Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d). The certified copy has:
`E] been received.
`E] not been received.
`1:] been filed in Application/Control No __
`
`‘°°°.“.°’.‘-"':"‘.°°
`10. C] Otherj
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`U.S. Patent and Trademark Offioe
`PTOL-2065 (oi/adj 42
`
`Paper No. 20120810
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`
`
`
`
`
`
`Patent Owner on 08 June, 2012
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`5 of 42
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`

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`Application/Control Number: 95/001,783
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`Page 2
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`Art Unit: 1784
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`Detailed Action
`
`11/8/2011:
`
`‘Third party requester filed a request pursuant to 37 CFR 1.193 for inter
`
`partes reexamination of claims 1-21 of U.S. Patent’No. 8,033,120
`
`(hereinafter “the ‘120 patent") to Singh et al.
`
`9
`
`1/30/2012: An Order granting inter partes reexamination of claims 1-21 and a non-
`
`final Office action rejecting claims 1-21 were mailed.
`
`6/8/2012:
`
`Patent owner filed a Response and an amendment which amended claims
`
`1 and 14, cancelled claims 20-21, and added new claims 22-68.
`
`7/16/2012:
`
`Third party requester filed Comments on patent owner’s Response.
`
`References Cited in the Following Office Action
`
`o
`
`lnagaki et al. (JP-04—110388, hereinafter "lnagaki"), unless otherwise stated,
`
`all references to lnagaki are to the English language translation which
`
`accompanied the request.
`
`0 Bivens et al. (US. Patent 6,783,691, hereinafter "Bivens")
`
`0 Thomas et al. (U.S. Patent 5,254,280, hereinafter "Thomas")
`
`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 ‘120 patent contains
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`Application/Control Number: 95/001,783
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`Page 3
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`Art Unit: 1784
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`claims 1-19 and 22-68 directed to a method of cooling air. Independent claims 1 and 14
`
`are representative:
`
`A method of cooling air comprising:
`1.
`(a) providing [a heat transfer fluid] heat transfer composition
`comprising at least one lubricant and a refrigerant comprising §_t
`least one [a] fluoroalkene of Formula |_l[|]:
`
`[XCFzRz-3
`
`R
`R
`\ __lC-C-‘R’
`
`-R
`
`(ll)
`
`
`where R‘ is ]CRg)nY, Y is CF; n is 0 or 1 and [X is a C2 or a
`C3 unsaturated, substituted, alkyl radical, each substituent and]
`each R is independently F or H, provided that at least one of said
`
`Rs is an F on an unsaturated carbon and further [and z is 1 to 3],
`provided that
`(i) said fluoroalkene of Formula |_l_[|] has at least four fluorine
`substituents has a terminal unsaturated carbon atom and has at
`
`least one H on the [said] unsaturated terminal carbon,
`(ii) said lubricant and said refrigerant have one liquid phase
`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, and
`(iii) said refrigerant has a Global Warming Potential (GWP)
`of not greater than about 75; and
`(b) cooling said air by vaporizing said refrigerant by causing heat to
`be transferred from the air being cooled to said [heat transfer fluid]
`heat transfer composition.
`
`A heat transfer method for coolingair comprising:
`14.
`(a) providing a heat transfer composition comprising at least one
`lubricant and a refrigerant comprising at least one fluoroalkene of
`‘ Formula fl[l]:
`
`[XCFzRz-3 (l)]
`
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`Application/Control Number: 95/001,783
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`Page 4
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`Art Unit: 1784
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`'
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`T
`R
`\C=C—R'
`/
`R
`
`(II)
`
`
`where R‘ is (CR;)nY, Y is CF3 n is 0 or 1 and [X is a C2 or a
`C3 unsaturated, substituted, alkyl radical, each substituent and] R is
`independently Cl, F, or H,
`’
`provided that said at least one of fluoroalkene of Formula ll
`has at least four fluorine substituents and at least one of said Rs is
`
`F on an unsaturated carbon [and z is 3] and wherein said providing
`step comprises ensuring that said refrigerant does not include a
`fluoroalkene of Formula [I] H which has no H substituent on an
`unsaturated terminal carbon, and
`further provided that said lubricant and said refrigerant have
`one liquid phase at a_t 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, and
`*
`'
`further provided that said refrigerant has a Global Warming
`Potential (GWP) of not greater than about 150; and
`(b) cooling air by causing heat to be transferred from the air to said
`refrigerant.
`
`Requesterb Proposed Rejections
`
`Claim Rejections - 35 USC § 112
`
`1.
`
`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.
`
`On pages 19-20 of the requester’s Comments filed on 7/16/2012 (hereinafter "the
`
`Comments”), the requester proposes rejections of all the claims (claims 1-19 and 22-68)
`
`of the ‘120 patent as being unpatentable over 35 U. S. C. 112, first paragraph, for failing
`
`to comply with both the enablement and written description requirements. The
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`_
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`_ Page 5
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`proposed rejections of claims 1-19 and *22-68 are not adopted for the following
`
`reasons.
`
`The requester presents the following arguments on pages 19-20 of the
`
`Comments:
`
`“While the Patent Owner asserts that the disclosed compounds are new and
`.
`should not act in the same fashion as identical compounds previously did in similar
`systems, the Patent Owner does not provide any testing or modifications to the recited
`systems, e.g. refrigeration, air conditioning and heat pump systems that would allow
`one of skill in the art to practice the claimed inventions. The Patent Owner repeatedly
`suggests that the systems of Inagaki would not “cool air" as claimed in the ‘120 patent.
`However, given the fact that the systems of Inagaki have been known for over 50 years
`to be capable of cooling air, and that the compounds of Inagaki are to be used for
`replacements of the previously most common refrigerants used in refrigeration, air
`conditioning and heat pump systems, there is no teaching in the ‘120 patent of
`modifications to the systems used in the ‘120 patent for ‘methods of cooling air", or the
`special systems that would be reguired to cool in air in a manner that is different than
`what is understood by one of ordinary skill ill the art. That is, the ‘120 patent does not
`provide any reference to a step of cooling air that would distinguish such a "novel" step
`from what has been well-known and practiced in the industry, well prior to either Inagaki
`or the filing of the ‘120 patent (emphasis added).”
`
`The requester argues that the claim limitations relating to the "method of cooling
`
`air" were not described in the ‘120 patent in a manner that are different than what have
`
`been well-known and practiced in the industry. However, the claim limitations relating to
`the "method of cooling air" was recited in the original claims. ‘According to MPEP 2658
`
`and 37 CFR 1.906, issues relating to 35 U.S.C. 112 are addressed only with respect to
`
`subject matter added or deleted in the reexamination proceeding.
`
`In this case, the
`
`subject matter relating to the "method of cooling air" is not the subject matter that is
`
`added or deleted in the reexamination proceeding. Accordingly, the limitations relating
`
`to "method of cooling air" will m_t be reexamined on the basis of the requirements of 35
`
`U.S.C 112.
`
`9 of 42
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`Application/Control Number: 95/001,783
`Art Unit: 1784
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`‘
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`' Page 6
`
`The requester also presents the following arguments on page 20 of the
`
`Comments:
`
`“Likewise, as noted above, the unexpected results that the Patent Owner relies
`on to suggest patentability, miscibility of a lubricant with a refrigerant, were not
`demonstrated in the'120 patent when filed. The unexpected results for a commercial
`product were stated by the Patent Owner as not being realized until 2007, or 5 years
`after the priority date claimed by the ‘120 patent. If patentability is based on such
`commercial success, five years of testing to achieve such commercial success would
`required more than an ordinary level of testing, and no guidance is provided in the ' 120
`patent to carry out such experimentation. The ‘120 patent only provides ordinagg testing
`and results, and such commercial successes are not enabled by the '12O patent,
`.
`according to the arguments put forth by the Patent Owner. Ironically, the testing carried
`out and demonstrated by the '120 patent is consistent in scope with the testing carried
`out in lnagaki, and if lnagaki does not support the claimed methods, neither does the
`‘120 patent specification (emphasis added).”
`
`The requester argues that the claim limitations relating to the miscibility of a 3
`lubricant with a. refrigerant were not enabled by the ‘120 patent at the time the invention
`
`was made. However, the claim limitations relating to the miscibility of the refrigerant
`
`and the lubricant were recited in-the original claims. According to MPEP 2658 and 37
`
`CF R 1.906, issues relating to 35 U.S.C. 112 are addressed only with respect to subject
`
`matter added or deleted in the reexamination proceeding.
`
`in this case, the subject
`
`matter relating to the miscibility of the refrigerant and the lubricant is not the subject
`
`matter that is added or deleted in the reexamination proceeding. Accordingly, the
`
`limitations relating to the miscibility of a lubricant and a refrigerant will n_ot be
`
`reexamined on the basis of the requirements of 35 U. S.C 112.
`
`2.
`
`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.
`
`10 of 42
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`Application/Control Number: 95/001,783
`
`Page 7
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`Art Unit: 1784
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`Claims 22-41 and 45-54 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.
`
`In claims 22 and 35 and the dependent claims thereof, there is a lack of
`
`antecedent basis for the limitation “[a] heat transfer method of claim 1" since claim 1 is
`
`directed to a method of cooling air.
`
`Similarly, in claim 45 and the dependent claims thereof, there is a lack of
`
`antecedent basis for the limitation “[a] heat transfer method of claim 7” since claim 7 is
`
`directed to a method of claim 1, which is directed to a method of cooling air.
`
`3.
`
`On page 20 of the Comments, the requester proposes the rejection of claims 42,
`
`45-49, 60 and 67 of the ‘120 patent as being unpatentable over 35 U.S.C. 112, second
`
`paragraph. The requester presents the following arguments:
`
`“Claims 42, 45, 60 and 67 should be rejected under 35 U.S.C, as claiming the
`identical subject matter of claim 22. Claim 46 should be rejected under 35 U.S.C. 112,
`second paragraph, as claiming the identical subject matter of claim 23. Claim 47 should
`be rejected under 35 U.S.C. ‘112, second paragraph, as claiming the identical subject
`matter of claim 24. Claim 48 should be rejected under 35 U.S.C, 112, second
`paragraph, as claiming the identical subject matter of claim 26. Claim 49 should be
`rejected under 35 U.S.C § 112 1] 2 as claiming the identical subject matter of claim 27.”
`
`The proposed rejection of claims 42, 45, 60 and 67 is not adopted for the
`
`following reasons.
`
`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
`
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`Application/Control Number: 95/001,783
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`.
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`Page 8
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`Art Unit: 1784
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`after allowing one claim to object to the other as being a substantial duplicate of the
`
`allowed claim. See MPEP § 706.03(k). However, it is not proper to reject two identical
`
`claims under 35 U.S.C. 112, second paragraph for duplicate claims.
`
`Upon further review of the proposed rejected claims, it is found that claims 42,
`
`45, 60 and 67 do not claim the identical subject matter of claim 22. Claims 42, 60 and
`
`67 depend on claim 14 and therefore include all the limitations of claim 14. Claim 22
`
`depends on claim 1. Claim 14 does not contain the identical subject matter as that of
`
`claim 1. Accordingly, Claims 42, 60 and 67 do not claim the identical subject matter of
`
`claim 22.
`
`Similarly, claim 45 depends on claim 7 and therefore includes all the limitations of
`
`claim 7. Claim 7 does not contain the identical subject matter as that of claim 1.
`
`Accordingly, Claim 45 does not claim the identical subject matter of claim 22.
`
`Likewise, claim 46 depends on claim 45, which, as stated above, does not
`contain the identical subject matter as that of claim 22. Claim 23 depends on claim 22.
`
`‘Accordingly, claim 46 does not claim the identical subject matter of c|aim‘23.
`
`Similarly, claim 47 depends on claim 46, which, as stated above, does not
`
`contain the identical subject matter as that of claim 23. Claim 24 depends on claim 23.
`
`Accordingly, claim 47 does not claim the identical subject matter of claim 24.
`
`For the same reason stated above, claim 48 depends on claim 47, which does
`
`not contain the identical subject matter as that of claim 24. Claim 26 depends on claim
`
`24. Accordingly, claim 48 does not claim the identical subject matter of claim 26. Claim
`
`49 depends on claim 48 which does not contain the identical subject matter as that of
`
`12 of 42
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`

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`Application/Control Number: 95/001,783
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`’
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`_ Page 9
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`Art Unit: 1784
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`claim 26. Claim 27 depends on claim 26. Claim 49 does not claim the identical subject
`
`matter of claim 27.
`
`Claim Rejections - 35 USC § 102 and 103
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section made in this Office action:
`
`‘A person shall be entitled to a patent unless —
`
`(b) the invention was patented or described in a printed publication in this or a foreign country or in
`public use or on sale in this country, more than one year prior to the date of application for patent in
`the United States.
`
`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 through 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.
`
`4.
`
`Claims 1-7, 14-19, 22, 35, 42-45, 55, 60-61 and 67 are rejected under 35 U.S.C.
`
`102(b) as anticipated by or, in the alternative, under 35 U.S.C. 103(a) as obvious over
`
`lnagaki
`
`On pages 4-15 of the Comments, the requester proposes the rejection of claims
`
`1-7 and 14-19 be maintained and the newly added claims 22, 35, 42, 44—45,~55, 59-61
`
`and 67 be included in the above rejection over lnagaki.
`
`The proposed rejection of claim 59 is not adopted because claim 59 depends
`
`on claim 58, which recites that the lubricant comprises poly alkylene glycol.
`
`lnagaki
`
`does not disclose the specific lubricant. The proposed rejection of claims 1-7, 14-19,
`
`13 of 42
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`13 of 42
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`

`
`Application/Control Number: 95/001,783
`Art Unit: 1784
`
`'
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`A
`
`Page 10
`
`22, 35, 42, 44-45, 55, 60-61 and 67 is adopted for the following reasons. Claim 43 is
`
`included in the above rejection because lnagaki teaches the heat transfer fluid
`
`comprising transHFO—1234ze as recited in claim 43 (see more detailed discussion
`
`below).
`
`lnagaki discloses a fluid for heat transfer comprising an organic compound
`
`represented by a 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).
`
`Examples of the organic compound include 1,3,3,3-tetrafluoro-I-propene (H_FO-1234ze)
`
`and 2,3,3,3-tetrafluoropropene (HFO-1234yf) (see Examples 2 and 5), which are within
`
`the scope of the claimed formula I.
`
`lnagaki also discloses that the organic compound can be used in a refrigerator as
`
`cooling media (“refrigerant”) (page 1).
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`lnagaki describes the method of cooling air in a
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`refrigerating system as including (1) providing the heat transfer fluid comprising the
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`organic compound (“refrigerant”) and (2) cooling the air by vaporizing the refrigerant by
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`causing heat to be transferred from the air to the heat transfer fluid (see Examples and
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`Figure 2).
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`In addition, as noted above, lnagaki discloses the use of the same‘ refrigerants,
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`such as HFO-1234ze and HFO-1234yf, as claimed. The same refrigerants would
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`inherently have the same properties, including the GWP, _miscibility with lubricants, and
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`toxicity, as claimed.
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`lnagaki also discloses that the organic compound (as a refrigerant) is compatible
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`(miscible) with lubricants (page 3), implying that the organic compound forms a single
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`Application/Control Number: 95/001,783
`Art Unit: 1784
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`.
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`Page 11
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`liquid phase with lubricants at a certain temperature of the operating temperature range
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`(-5(l°C and-+70°C) within the scope as claimed.
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`In the alternative, lnagaki teaches that
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`the refrigerating system comprises a compressor, a condenser, and an evaporator
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`(Figure 2).
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`it is well known that refrigerating systems, such as those disclosed in
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`lnagaki, require lubricants to be circulated with the refrigerants so as to lubricate and
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`seal compressor components. Accordingly, it would have been obvious to one of
`
`ordinary skill in the art to select the lubricants which are compatible with the refrigerants,
`as suggested by lnagaki, in order to lubricate and seal the compressor in the
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`refrigerating system.
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`With respect to the newly added claims 22, 35, 42, 44-45, 55, 60-61 and 67,
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`lnagaki discloses that the heat transfer fluid comprises HFO—1234yf and HFO-1234ze.
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`The heat transfer fluid may further comprise one of more compounds including HFC-32
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`and HFC-152a (see page 3).
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`With respect to the newly added claim 43, lnagaki discloses the heat transfer
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`fluid comprising HFO-1234ze. One skill in the art would recognize that the term HFO- .
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`1234ze refers to both transHFO-1234ze and cisHFO-1234ze. Accordingly, lnagaki
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`discloses the heat transfer fluid comprising transHFO-1234ze.
`
`With respect to the transitional phrase “consisting essentially of," although the
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`transitional phrase limits the scope of a claim to the specified materials or steps and
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`those that do not materially affect the basic and novel ch‘aracteristic(s) of the claimed
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`invention, there is no evidence on the record to show that the presence of other
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`compounds including the cisHFO-1234ze in the heat transfer composition as disclosed
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`Application/Control Number: 95/991,783
`Art Unit: 1784
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`Page 12
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`in Inagaki would materially affect the basic and novel characteristic of the claimed
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`invention (i.e. providing heat transfer function).
`
`“For the purposes of searching for and applying prior art under 35 U.S.C. 102
`
`and 103, absent a clear indication in the specification or claims of what the basic and
`
`novel characteristics actually are, “consisting essentially of” will be construed as
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`equivalent to “comprising.” See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355.
`
`‘‘If
`
`an applicant contends that additional steps or materials in the prior art are excluded by
`
`the recitation of “consisting essentially of,” applicant has the burden of showing that the
`
`introduction of additional steps or components would materially change the
`characteristics of applicants invention. in re De Lajarte, 337 F.2d 870, 143 USPQ 256
`
`(CCPA 1964).” See also MPEP § 2111.03.
`
`To the extent that Inagaki does not specifically disclose the trans—isomer of HFO—
`
`1234ze, the boiling point of the HFO-1234ze disclosed by Inagaki indicates that the
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`composition is predominately, if not entirely, the trans-isomer.
`
`It is well known in the art
`
`that the boiling point of the cisHFO-1234ze is about 9°C and the boiling point of the
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`transHFO-1234ze is about —19°C.
`
`Inagaki discloses that the HFO-1234ze has a boiling '
`
`point of —16°C (page 2). Accordingly, Inagaki clearly indicates that the HFO-1234ze is
`
`predominately trans-isomer.
`
`5.
`
`Claims 8-13, 23-34, 36-41, 46-54, 56-59, 62-66 and 68 are rejected under 35
`
`U.S.C. 103(a) as being unpatentable over Inagaki, as applied to claims 1-7, 14-19, 22,
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`35, 42-45, 55, 60-61 and 67 above, and further in view of patent owner’s own
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`admission.
`
`On pages 15-16 of the Comments, the requester proposes that the rejection of
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`claims 8-13 be maintained and the newly added claims 23-41, 43-44, 46-58, 62-66 and
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`68 be included in the above rejection.
`
`The proposed rejection of claims 35, 43-44 and 55 as obvious over lnagaki in
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`view of patent owner’s own admission is not adopted because lnagaki, considered
`
`alone, renders claims 35, 43-44 and 55 unpatentable (see discussion above in
`
`Rejection No. 4). . For the reasons that follow, the proposed rejection of claims 8-13, 23-
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`34, 36-41, 43, 46-54, 56-58, 62-66 and 68 is adopted. Claim 59 is included in the
`
`above rejection because claim 59 depends on claim 58, which recites that the lubricant
`
`comprises poly alkylene glycol.
`
`lnagaki in view of patent owner’s own admission
`
`teaches the specific lubricant.
`
`lnagaki is relied upon for the reasons stated above in Rejection No. 4.
`
`Specifically, lnagaki discloses a refrigerant comprising the organic compound, such as
`
`HFO-1234ze and HFO-1234yf, as claimed and the refrigerant is miscible with lubricants.
`
`lnagaki does not specify that its lubricant comprises, for example, a polyalkylene '
`
`glycol, an ester oil, and/or alkyl benzene.
`
`However, it is known in the art that lubricants, such as polyalkylene glycols,
`
`polyol esters (ester oil) and/or alkyl benzene, can be used in a refrigeration system. For
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`example, the '12O patent describes that poly alkylene glycols and polyol esters are
`
`commonly used lubricants in refrigeration machinery with hydrofluorocarbon (HFC)
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`Page 14
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`Art Unit: 1784
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`refrigerants (col. 6, lines 13-17). Accordingly, it would have been obvious to one of
`
`ordinary skill in the art to use the commonly used lubricants such as poly alkylene
`
`glycols, polyol esters or alkyl benzene with the HFC refrigerants disclosed by lnagaki in
`
`order to provide lubrication function to the compressor components in |nagaki’s
`
`refrigeration system.
`
`With respect to the amount of the lubricant recited in claims 9 and 11, it would
`
`have been obvious to one of ordinary skill in the art to discover, through nothing more
`
`than routine experimentation, the optimum or workable ranges of the lubricant present
`
`in the refrigerant as taught by lnagaki in order to produce a refrigerant composition with
`
`desired properties. “[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 A/Ier, 220 F.2d 454, 456, 105 USPQ 233, 235(CCPA 1955).
`
`With respect to the newly added claims 31-34, 38, 41, 53-54, 63, 66, and 68, as
`
`stated above in rejection No. 4, lnagaki discloses the heat transfer fluid comprising
`
`l-lFO-1234ze. One skilled in the art would recognize that the term HFO-1234ze refers
`
`to both transHFO-1234ze and cisHFO—1234ze. Accordingly, lnagaki discloses the heat
`
`transfer fluid comprising transHFO-1234ze.
`With respect to the transitional phrase “consisting essentially of," although the
`
`transitional phrase limits the scope of a claim to the specified materials or steps and
`
`those that do not materially affect the basic and novel characteristic(s) of the claimed
`
`invention, there is no evidence on the record to show that the presence of other
`
`compounds including the cisHFO—1234ze in the heat transfer composition as disclosed
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`Page 15
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`in lnagaki would materially affect the basic and novel characteristic of the claimed
`
`invention (i.e. providing heat transfer function).
`
`“For the purposes of searching for and "applying prior art under 35 U.S.C. 102
`
`and 103, absent a clear indication in the specification or claims of what the basic and
`
`novel characteristics actually are, “consisting essentially of” will be construed as
`
`equivalent to “comprising.” See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355.
`
`‘‘If
`
`an applicant contends that additional steps or materials in the prior art are excluded by
`
`the recitation of “consisting essentially of," applicant has the burden of showing that the
`
`introduction of additional steps or components would materially change the
`
`characteristics of applicant's invention. In re De Lajarte, 337 F.2d 870, 143 USPQ 256
`
`(CC_PA 1964)." See also MPEP § 2111.03.
`To the extent that lnagaki does not specifically disclose the trans—isomer of HFO-
`
`1234ze, the boiling point of the HFO-1234ze disclosed by lnagaki indicates that the
`
`composition is predominately, if not entirely, the trans-isomer.
`
`It is well known in the art
`
`that the boiling point of the cisHFO-1234ze is about 9°C and the boiling point of the
`
`transHFO-1234ze is about -19°C.
`
`lnagaki discloses that the HFO-1234ze has a boiling
`
`point of —16°C (page 2). Accordingly, lnagaki clearly indicates that the HFO-1234ze is
`
`predominately trans-isomer.
`
`6.
`
`Claims 8-13, 23-34, 36-41, 46-54, 56-59, 62-66 and 68 are rejected under U.S.C.
`
`§ 103(a) as being unpatentable over lnagaki, as applied to claims 1-7, 14-19, 22, 35,
`
`42-45, 55, 60-61 and 67 above, and further in view of Thomas.
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`Application/Control Number: 95/001,783
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`'
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`Page 16
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`Art Unit: 1784
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`'
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`On pages 16-17 of the Comments, the requester proposes the rejection of claims
`
`8-13 be maintained and the newly added claims 23-41, 43-44, 46-58, 62-66 and 68 be
`
`included in the above rejection.
`
`The proposed rejection of claims 35,