UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box I450
`Alexandria. Virginia Z23l3-I450
`www.usp1o.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/002,l89
`
`O9/I 2/2012
`
`7534366
`
`940421831-REX
`
`I271
`
`°5’””°'“
`7””
`"°‘”
`HONEYWELL/FOX/BANNER
`Patent Services
`101 Columbia Rd.
`Monistown,
`
`’
`
`XU- LING X
`
`ART UNIT
`399!
`
`PAPER NUMBER
`
`MAIL DATE '
`
`05/27/2014
`
`DELIVERY MODE
`PAPER
`
`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.
`:
`
`PTOL-90A (Rev. 04/07)
`
`1 of 73
`
`Arkema Exhibit 1157
`
`Arkema Exhibit 1157
`
`1 of 73
`
`

`
`Page 1 of 1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`’
`
`Commissioner for Patents
`.
`United States Patents and Trademark Office
`P.O.Box I450
`Alexandria, VA‘ 223|3-I450
`www.uspto.gov
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`
`Date:
`
`AMSTER,‘ROTHSTEIN & EBENSTEIN LLP
`
`'
`
`90 PARK AVENUE
`
`NEW YORK, NY 10016
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NO. : 95002044» 9500748"?
`PATENT No.» 7534366
`
`ART UNIT : 3991
`
`
`MAlLE;D
`
`
`
`MAY 27 2014
`
`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 shouldibe 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.
`
`2of73
`
`2 of 73
`
`

`
`Page 1 of 1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Commissioner for Patents
`United States Patents and Trademark Ollice
`P.O.Box 1450
`Alexandria, VA 223l3-I450
`www.uspto.gov
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`
`Date:
`
`Patrick J. Fleis
`1>.o. BOX 26618
`
`I
`
`Milwaukee, WI 53226
`
`I
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NO. : 95002189 i ?5°°17v°‘v'
`
`PATENT NO. : 7534366
`
`ART UNIT ; 3991
`
`.
`
`»
`
`CENTRAL REEXAMWATION UNIT
`
`MAY 27 2014
`
`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 ofthe 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 exparte 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.
`
`3of73
`
`3 of 73
`
`

`
`Transmittal of Communication to
`
`‘
`
`
`
`‘Control No.
`
`'
`
`
`
`Patent Under Reexamination
`
`95/002,204 & 95/002,189
`
`7,534,366 B2
`
`Examiner _
`
`Lin Xu
`
`3991
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`r—-—- (THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS) ———-I
`
`AMSTER, ROTHSTEIN & EBENSTEIN LLP
`90 PARK AVENUE
`-
`NEW YORK, NY 10016
`
`
`
`in the above—identified reexamination prceeding. 37 CFR 1.903.
`
` Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
`
`
`
`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
`pron.-2o7o (Rev. 07-04)
`
`'
`
`Paper No. 20140327
`
`40f73
`
`
`
`
`
`Third Party Requester
`Inter Partes Reexamination
`
`
`
`4 of 73
`
`

`
`Transmittal of Communication to
`
`. Third Party‘Requester
`Inter Partes Reexamination
`
`Control No.
`
`Patent Under Reexamination
`
`
`
`
`
`95/002,189 & 95/002,204
`
`7534366
`
`|—:- (THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS) T
`
` Patrick J. Fleis
`
`P.O.BOX 26618
`Milwaukee, WI 53266
`
`in the above-identified reexamination prceeding. 37 CFR 1.903.
`
` Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
`
`
` 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-2070 (Rev. 07-04)
`
`-50f73
`
`‘
`
`Paper No. 20140411
`
`
`
`
`
`
`
`
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`Lin Xu
`
`3991
`
`
`
`
`
`5 of 73
`
`

`
`, ACTION CLOSING PROSECUTION
`(37 CFR 1.949)
`
`
`Lin Xu
`
`A
`
`3991
`
`‘
`
`Control No.
`
`Patent Under Reexamination
`
`
`
`
`
`95/002,189 & 95/002,204
`A Examiner
`
`7534366
`Art Unit
`
`
`
`
`
`
`
`
`
`-- 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 01 April, 2013
`Third Party(ies) on 01 May, 2013
`
` 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
` I’ART I. THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`
`1. D Notice of References Cited by Examiner, PTO-892
`2. B Information Disclosure Citation, PTO/SB/O8
`.3. E]
`
`
`
`Reexamination Unit at the mail, FAX, or hand-carry addresses given atthe end of this Office action.
`
`
`
`
`
`1a. IX Claims fll are subject to reexamination.
`1b. [:1 Claims j are not subject to reexamination.
`2. D Claims __ have been canceled.
`I] Claims j are confirmed. [Unamended patent claims]
`I] Claims j are patentable. [Amended or new claims]
`
`
`X] Claims 1 are rejected.
`‘
`‘
`
`
`|:] Claims
`are objected to.
`CI The drawings filed on
`E] are acceptable - E] are not acceptable.
`
`
`
`
`CI The drawing correction request filed on
`is:
`E] approved. [] disapproved.
`
`
`[:1 Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)—(d). The certified copy has:
`
`
`I] been received.
`C] not been received.
`E} been filed in Application/Control No
`10. E] Other
`-
`‘
`
`
`
`
`PART II. SUMMARY OF ACTION:
`
`
`
`
`
`‘°°°.“.°’.°".J".°°
`
`u.s. Patent and Trademark Office
`PTOL-2065 (oa/oe)
`
`'
`
`Paper No. 20140411
`
`o'er 73
`
`6 of 73
`
`

`
`Application/Control Number: 95/002,189 & 95/002,204
`
`Page 2
`
`Art Unit: 3991
`
`September 12, 2012:
`
`Status of Proceedings I
`
`A request for inter partes reexamination of claims 1-25 of
`United States Patent Number 7,534,366 (hereinafter "the
`‘366 patent”) was filed by a third party requester and was
`assigned Control No. 95/002,189 ("the '189 proceeding"). A
`second request for inter partes reexamination of claims 1-25
`of the ‘366 patent was filed by a second third party requester
`on the same date and was assigned Control No. 95/002,204
`("the '204 proceeding").
`
`November 26, 2012:
`
`An Order granting the request for inter partes reexamination
`of claims 1-25 of the ‘366 patent in the '189 proceeding was
`mailed.
`
`November 28, 2012:
`
`An_Order granting the request for inter partes reexamination
`of claims 1-25 of the ‘366 patent in the '204 proceeding was
`mailed.
`\
`
`December 13, 2012:
`
`A decision merging the '189 proceeding and the '204
`proceeding was mailed.
`~
`
`January 30, 2013:
`
`A non—final Office action on the merits in the merged
`proceeding was mailed.
`
`April 1, 2013:
`
`May 1,2013:
`
`The patent owner filed a response to the non-final Office
`action including an amendment adding claims 26-81.
`
`The requesters of the ‘189 proceeding and the ‘204
`proceeding filed separate comments to the patent owner's
`response filed on April 1, 2013.
`
`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 ‘366 patent contains
`
`70f73
`
`7 of 73
`
`

`
`Application/Control Number: 95/002,189 & 95/002,204
`Art Unit: 3991
`’
`
`Page 3
`
`claims 1-81 directed to a heat transfer composition for use in an air conditioning system.
`
`Independent claim 1 is representative:
`
`1. (Amended) A heat transfer composition for use in an air
`conditioning system comprising:
`(a) a refrigerant comprising at least about 50% by weight of 1,1 ,1,2-
`tetrafluoropropene (HFO-1234yf), said refrigerant having no
`substantial acute toxicity; and
`‘
`(b) at least one poly alkylene glycol lubricant in the form of a
`homopolymer or co—po|ymer consisting of 2 or more oxypropylene
`"groups and having a viscosity of from about 10 to about 200
`centistokes at about 37°C.
`
`While claim 1 recites that the polyalkylene glycol lubricant is "in the form of a
`
`homopolymer or copo|ymer," claim 1 also recites that the polyalkylene glycol lubricant
`
`"consists of 2 or more oiypropylene groups" (emphasis added). Accordingly, claims 1-
`
`81 are directed to a heat transfer composition containing aipolyalkyleneglycol
`
`homopolymer consisting of 2 or more oxypropylene groups, i.e., a polyoxypropylene
`
`ether containing terminal OH groups.
`
`Claim 8 submitted by the‘ patent owner on 4/1/2013 contains a typographical
`
`error. Claim 8 improperly depends from claim 54 as opposed to claim 1 as originally
`
`patented. Since claim 8 does not contain any of the required markings to indicate
`
`changes made, "claim 8 is hereby treated as ifit depends from claim 1.
`
`80f73
`
`8 of 73
`
`

`
`Application/Control Number: 95/002,189 & 95/002,204
`
`Page 4
`
`Art Unit: 3991
`
`‘
`
`Reguester's Proposed Rejections in the ‘189 Proceeding
`
`Duplicate Claims
`
`The requester of the ‘189 proceeding proposes new claims 27-30 be
`
`rejected as being substantial duplicates of claims 4-7 (see page 15 of the
`
`comments filed 5/1/2013).
`
`The above proposed rejection is not adopted since claim duplication is a matter
`
`of form, not substance. Thus," a claim rejection is not proper. See MPEP 706.01 and '
`
`706.03(k).
`
`However, the patent owner is advised that should claims 4-7 be found allowable,
`
`claims 27-30, respectively, will be objected to under 37 CFR 1.75 as being substantial
`
`duplicates thereof. Claims 4-7 and 27-30 depend on claim 1 and recite the composition
`
`comprising certain amount of the lubricant. Claims 4-7 refer to the lubricant recited in
`
`claim 1 as “said lubricant” while claims 27-30 recite “said said alkylene glycol lubricant.”
`
`However, since the only lubricant recited in claim 1 is the alkylene glycol lubricant, both
`
`“said said alkylene glycol lubricant" recited in claims 27-30 and "said |ubricant" recited in
`
`claims 4-7 refer to the same lubricant recited in claim 1. “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).
`
`90f73
`
`9 of 73
`
`

`
`Application/Control Number: 95/002,189 & 95/002,204
`Art Unit: 3991
`
`I
`
`Page 5
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of pre—AlA 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.
`
`I.
`
`Claims 1-2, 4-12, 15-17 and 20-81 are rejected under pre-AIA 35 U.S.C. §
`
`103(a) as being unpatentable over JP 4-110388 to lnagaki et al. (hereafter
`
`"lnagaki") in view of U_.S. Patent 4,755,316 to Magid et al. (hereafter "Magid").
`
`The above rejection was proposed by the requester of the ‘189 proceeding and
`
`'
`
`is adopted for the reasons as set forth in the request, in the comments filed on
`
`5/1/2013 (pages 6-11) and for the reasons that follow.-
`
`lnagaki teaches a fluid for heat transfercomprising an organic compound of the
`
`formula C3HmFn (wherein m is an integer of 1 to 5; n is an integer of 1 to 5; the sum of
`
`m and n is equal to 6) and containing one double bond in its molecular structure (page
`
`1, lines 1-10). The compounds of the formula C3HmFn excel in characteristics as fluids
`
`for heat transfer and their coefficient of performance, freezing capacity, condensation
`
`pressure, and discharge temperature are well balanced. ‘Moreover, since the boiling
`
`points of these compounds are similar to those of widely used R-12, R-22, R-114 and
`
`R-502, they are suitable for use at evaporating temperatures of -20 to 10 degrees C,
`
`and condensation temperatures of 30 to 60 degrees C (page 2, lines 62-76). The
`
`compounds "do not have any problem with respect to their general characteristics (e.g.,
`
`10 of 73
`
`10 of 73
`
`

`
`Application/Control Number: 95/002,189 & 95/002,204
`Art Unit: 3991
`
`'
`
`Page 6
`
`compatibility with lubricants, non-erodibility against materials etc.)" (page 3, lines 1-9).
`
`The 1,1,1,2-tetrafluoropropene (HFO—1234yf) compound of the claims is specifically
`disclosed" in Embodiment 5 of lnagaki.‘
`.
`
`While lnagaki broadly teaches that the heat transfer compounds are compatible
`
`with lubricants, lnagaki differs from the instant claims in not teaching a polyalkylene
`
`glycol lubricant consisting of.2 or more oxypropylene groups and having a viscosity of
`
`from about 10 to about 200 centistokes at about 37°C as claimed.
`
`Magid teaches that refrigeration equipment usingtetrafluoroethane as a working
`
`fluid may employ polyoxyalkyleneglycols as lubricating oils. The glycols may be
`
`polyoxypropylene glycols which should contain at least'80% oxypropylene units relative
`
`to the total (column 3, lines 34-40). The viscosity will be about 25-150 centistokes at
`
`37°C_ (column 3, lines 48-49). The weight ratio of refrigerant to the glycol lubricant will
`
`be in the range 99/1 to 1/99, preferably 99/1 to 70/30 (column 3, lines 46-54).
`
`It would have been obvious to one having ordinary skill in the art at the time the
`
`invention was made to form a heat transfer composition comprising HFO-1234yf and a
`
`lubricant for use in an air conditioning system as taught by lnagaki wherein the lubricant
`is a polyoxyalkylene glycol lubricating oil as taught by Magid, including a polyalkylene
`
`glycol lubricant consisting of 2 or more oxypropylene groups and having a viscosity of
`from about 10 to about 200 centistokes at about 37°C as claimed, with the reasonable
`
`expectation of forming a heat transfer composition wherein the refrigerant is compatible
`
`with the lubricant as taught by lnagaki.
`
`11 0f73
`
`11 of 73
`
`

`
`Application/Control Number: 95/002,189 & 95/002,204
`‘
`Art Unit: .3991
`'
`Regarding claims 4-7, 12 and 17, it has long been an axiom of patent law that it
`
`'
`
`Page 7
`
`is not inventive to discover the optimum or workable ranges of result-effective variables
`by routine experimentation. Peterson, 315 F.3d at 1330 ("The normal desire of scientists
`or artisans to improve upon what is already generally known provides the motivation to '
`determine where in a disclosed set of percentage. ranges is the optimum combination of
`percentages."); Aller, 220 F.2d at 456 ("[W]here the general conditions of a claim are .
`
`disclosed in the prior art, it is not inventive todiscover the optimum or workable ranges
`
`by routine experimentat_ion."). 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 and lubricant in a heat transfer composition as
`
`taught by Inagaki in viewof Magid so as to produce a heat transfer composition having
`
`the desired properties. Accordingly, claims 4-7, 12 and 17 would have been obvious to
`
`one having ordinary skill in the art.
`
`With respect to newly added claims 31, 56, 69-70 and 74, Inagaki discloses that
`
`mixtures. of the organic compound (C3HmFn) and at least one compound including HFC—
`
`32 and HFC-152a can be used inthe heat transfer composition (page 2, lines 77-84).
`Newly added claims 26-30, 32-35, 51, 57 and 72-73 recite the same/similar
`
`limitations as original claims 4-7. Accordingly, these claims are rejected for the same ‘
`
`reasons as stated above with respect to claims 4-7. ‘
`
`Newly added claims 36-45, 47-50, 52, 55-56, 58, 60-71 and 75-81 recite the
`
`properties of the composition including flammability, relative capacity, stability when
`
`contacting aluminum, steel and copper, miscibility with lubricants, toxicity, COP and
`
`12 of 73
`
`12 of 73
`
`

`
`Application/Control Number: 95/002,189 & 95/002,204
`
`Page 8
`
`Art Unit: 3991 ‘
`
`GWP. As stated above, lnagaki in view of Magid discloses the same composition as
`claimed. Accordingly, the same composition would also have the same properties as
`claimed.
`In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), also
`
`see MPEP 2112_.O1.
`Additionally, with respect to newly added claims, 61, 65 and 71 ,' as stated above,
`
`lnagaki discloses that the refrigerants such as HFO—1234yf can be mixed with at least
`
`_
`
`one compound including R-134a and the mixtures “do not have any problem with
`
`respect to their general characteristics” including “compatibility with |ubricants.” Magid
`
`teaches that refrigeration equipment using tetrafluoroethane (R—134a) as a working fluid
`
`can employ PAGs as lubricating oils. ‘Accordingly, the combination of lnagaki and
`
`Magid teaches the miscibility of the refrigerant with the lubricant as claimed.
`
`Further, with respect to newly added claims 46, 53-54, 59, 65 and 71, lnagaki
`
`_. discloses that the refrigerants which contain the organic compounds (e.g. HFO—1234yf)
`
`for heat transferlcan be used in a refrigerator, heat pump or the like (page 1) and that
`
`the refrigerants "do not have any problem with respect to their general characteristics”
`
`including “non-erodibillty against materials” (page 3, lines 1-9). Accordingly, the
`
`refrigerants disclosed in lnagaki are expected to be non-erodible (stable) when in
`
`contact with commonly used metal materials such as aluminum, steel and copper under
`
`the conditions of use in the air conditioning system.
`
`ll.
`
`Claims 3, 13 and 14 are rejected under pre-AIA 35 U.S.C. 103(a) as being
`
`unpatentable over lnagaki in view of Magid as applied to claims 1-2, 4-12, 15-17
`
`13 of 73
`
`13 of 73
`
`

`
`Application/Control Number: 95/002,189 & 95/002,204
`
`Page 9
`
`Art Unit: 3991
`
`“
`
`’
`
`and 20-81 above, and further in view of U.S. Patent 6,991,744 to Mahler et al.
`
`(hereafter "Mahler").
`
`The above rejection was proposed by the requester of the ‘189 proceeding and
`
`is adopted for the reasons as set forth in the request, in the comments filed on
`
`5/1/2013 (page 11) and for the reasons that follow.
`
`Inagaki in view of Magid, as relied on above, differs from the instant claims in not
`
`teaching that the heat transfer composition contains a compatabilizer.
`
`Mahler teaches lubricant and refrigerant compositions containing a
`
`compatabilizer that satisfies the refrigeration and air—conditioning industries problem of
`
`insolubility between conventional non—polar compression refrigeration lubricants and
`
`'
`polar hydrofluorocarbon and/or hydrochlorofluorocarbon refrigerants (column 2, lines
`44-49). The halogenated hydrocarbons may optionally further comprise up to 10 weight
`
`percent of dimethyl ether, or at least one C3 to C5 hydrocarbon, e.g., propane,
`
`propylene, cyclopropane, n—butane, i-butane and n—pentane (column 8, lines 56-60).
`
`Compatabilizers may comprise from about 0.5 to about 50 weight percent of a linear or
`cyclic aliphatic or aromatic hydrocarbon containing from 5 to 15 carbon atoms (column
`
`14, lines 32-36).
`
`It would have been obvious to one having ordinary skill in the art at the time the
`
`invention was made to include a compatabilizer as taught by Mahler in a heat transfer
`
`composition as taught by Inagaki and Magid to improve the compatibility between the
`
`refrigerant and lubricant as taught by Mahler.
`
`14 of 73
`
`14 of 73
`
`

`
`Application/Control Number: 95/002,189 & 95/002,204
`Art Unit: 3991
`
`'
`
`Page 10 I
`
`Ill.
`
`Claims 4-7, 12, 17, 26-30, 32-37, 41 -49, 51-54, 57-59, 61-64 and 72-73 are
`
`rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over lnagaki in
`
`view of Magid as applied to claims 1-2, 4-12, 15-17 and 20-81 above, and further in
`
`view of U.S. Patent 6,374,629 to Oberle et al. (hereafter "Oberle").
`
`The requester of the ‘189 proceeding proposes claims 4-7, 12, 17, 26-30, 32-37,
`
`41-49, 51, 56-64 and 72-73 be rejected as obvious over lnagaki in view of Magid and
`
`Oberle in the comments filed on 5/1/2013 (page 11). The proposed rejection of claims
`
`4-7, 12, 17, 26-30, 32-37, 41-49, 51, 57-59, 61-64 and 72-73 is adopted for the
`
`reasons as set forth in the request, in the comments (page 11) and for the reasons that
`
`follow. Claims 52-54 are included because claims 52-54 depend on claim 51 and
`
`contain the same lubricant concentration limitations’ as recited in claim 51. The
`
`proposed rejection of claims 56 and 60 is not adopted since claims 56 and 60 do not,
`
`recite any lubricant concentration in the composition.
`
`lnagaki in view of Magid is relied upon for the "reasons stated above. To the
`extent that lnagaki in view of Magid differs from the instant claims in not specifically
`
`teaching the claimed concentration of lubricant in the heat transfer composition, Oberle
`
`is relied on as teaching those limitations.
`Oberle teaches a |ubricant—refrigerant composition comprising at least one
`
`f|uorine—containing hydrocarbon refrigerant_containing 1 to 3 carbon atoms and at least
`
`one lubricant comprising (1) a hydroca_rby| substituted arene, (2) a phosphate ester, (3)
`an organic ester of a carboxylic acid and an alcohol, (4) a perfluoropolyethylene, (5) an
`
`ether, (6) a polyether, (7) a polyalphaolefin, or (8) a mineral oil (abstract). For the
`
`15 of 73
`
`15 of 73
`
`

`
`Application/Control Number: 95/002,189 & 95/002,204
`
`Page 11
`
`Art Unit: 3991
`
`lubricant/refrigerant pair, generally the_lubricant is present at from 0.1-80% by weight of
`
`the pair, preferably at from O.5—50°/o by weight of the pair and most preferably at from 1-
`
`25% by weight of the pair (column 22, lines 1-4).
`
`It would have been obvious to one having ordinary skill in the -art at the time the
`
`invention was made to form a heat transfer composition as taught by lnagaki in view of
`
`Magid wherein the lubricant concentration is from 0.1-80% by weight as taught by
`
`Oberle because Oberle teaches that in |ubricant—refrigerant compositions the lubricant is
`
`generally present at from 0.1-80% by weight of the pair, preferably at from 0.5-50% by
`
`weight of the pair and most preferably at from 1-25% by weight of the pair."
`
`lV.
`
`Claim 18 is rejected under pre-A|A‘35 U.S.C. 103(a) as being unpatentable
`
`over lnagaki in view of Magid as applied to claims 1, 2, 4-12, 15-17 and 20-81
`
`above, and further in view of U.S. Patent‘ 6,640,841 to Thomas et al. (hereafter
`
`"Thomas").
`
`T
`
`The above rejection was proposed by the requester of the ‘189 proceeding and
`
`is adopted for the reasons as set forth in the request, in the comments filed on
`
`5/1/2013 (page 11) and for the reasons that follow.
`
`lnagaki in view of Magid, as relied on above, ‘differs-from the instant claim in not
`
`teaching that the heat transfer composition contains a surfactant and a solubilizing
`
`agent
`
`Thomas teaches a refrigerant composition comprising a hydrofluorocarbon
`
`refrigerant, surfactant, and a solubilizing agent (abstract; column 3, lines 32-41). The
`
`160f73
`
`16 of 73
`
`

`
`Application/Control Number: 95/002,189 & 95/002,204
`
`Page 12
`
`Art Unit: 3991
`
`‘
`
`surfactant, when added to a composition comprising a hydrocarbon—based lubricant and
`
`a non—chlorine containing refrigerant, increases the solubility or dispersibility of one
`
`component in the other (column 3, lines 42-48). The solubilizing agents act as carriers
`
`for the surfactant and aid in enhancing the miscibility of hydrocarbon-based lubricants
`
`and refrigerants (column 4, lines 34-38).
`
`H
`It would have been obvious to one having ordinary skill in the art at the time the
`invention was made to include a surfactant and a solubilizing agent as taught by
`
`Thomas in a heat transfer composition as taught by Inagaki and Magid in order to
`
`improve the solubility, dispersibility and miscibility between the refrigerant and lubricant
`
`as taught by Thomas.
`
`V.
`
`1 Claims 1, 2, 4-12, 15-17 and 19-81 are rejected under pre-AIA 35 U.S.C. §
`
`10-3(a) as being unpatentable over Inagaki in view of the ACURA Service Bulletin
`
`No. 92-027,«pages 1-8, dated September 29, 1992 (hereafter "Acura") and
`
`Patentee's Admissions.
`
`I
`
`The above rejection was proposed by the requester of the '189 proceeding and
`
`is adopted for the reasons as set forth in the request, in the comments filed on
`
`5/1/2013 (page 12) and for the reasons that follow.
`
`Inagaki as relied on above differs from the instant claims in not teaching -a
`
`polyalkylene glycol lubricant consisting of 2 or more oxypropylene groups and having a
`
`viscosity of from about 10 to about 200 centistokes at about 37°C as claimed.
`
`17 of 73
`
`17 of 73
`
`

`
`Application/Control Number: 95/002,189 & 95/002,204
`Art Unit: 3991
`~
`
`Page 13
`1
`
`Acura discloses the polyalkylene glycol lubricant ND-8 and its use with R-134 in an
`
`automotive air conditioning system.
`
`As stated on page 28 of the request,
`
`[a]ccording to the patent owner's own admission, particularly in the
`Remarks made in the Supplemental Response dated November 10, 2008,
`ND-8 is one of the most widely used lubricants for automotive air
`.
`conditioning systems and it is a PAG lubricant that falls within the lubricant
`requirements of the present claims. See..Supplemental Response,
`November 10, 2008 at page 20. As such, the Applicant admits that its
`claimed heat transfer composition would read on ND-8 in combination with
`an HFC compound, which was known prior to Applicant's filing, as shown
`in Service Bulletin that specifically teaches ND-8 for use as a lubricant
`with HFC compositions.
`It would have been obvious to one having ordinary skill in the art at the time the
`
`invention was made to form a heat transfer composition comprising HFO—1234yf and a
`
`lubricant for use in an air conditioning system as taught by lnagaki wherein the lubricant
`
`is the polyoxyalkylene glycol lubricant ND-8 as taught by Acura and Patentee's
`
`Admissions with the reasonable expectation of forming a heat transfer composition
`
`wherein the refrigerant is compatible with the lubricant as taught by lnagaki.
`
`.
`
`Regarding claims 4-7, 12 and 17, a person having ordinary skill in the art would
`
`have determined, through nothing more than routine experimentation, the range of
`
`1 concentrations of heat transfer fluid and lubricant in a heat transfer composition as
`
`taught by lnagaki in view of Acura and Patentee's Admissions so as to produce a heat
`
`transfer composition having the desired properties. Accordingly, claims 4-7, 12 and 17
`
`would have been obvious to one having ordinary skill in thevart.
`
`Regarding claim 19, the '366 patent admits "[c]ommon|y used refrigerant
`
`lubricants such as Polyol Esters (POEs)'and Poly Alkylene Glycol (PAGs) that are used
`
`18 of 73
`
`18 of 73
`
`

`
`Application/Control Number: 95/002,189 & 95/002,204
`
`Page 14
`
`Art Unit: 3991
`
`in refrigeration machinery with hydrofluorocarbon. (HFC) refrigerants may be used with
`
`the refrigerant compositions of the present invention" (column 6, lines 5-9).
`
`Accordingly, it would have been obvious to one having ordinary skill in the art at
`
`the time the invention was made to include an admitted, commonly used refrigerant
`
`lubricant such as a polyol ester in a heat transfer composition comprising the
`
`hydrofluorocarbon HFO-1234yf as taught by lnagaki because lnagaki teaches the
`
`compounds,"do not have any problem with respect to their general characteristics (e.g.,
`
`compatibility with lubricants, non—erodibility against materials etc.)" (page 3, lines 1-9).
`With respect ‘to newly added claims 31, 56, 69-70 and 74, lnagaki discloses that
`
`A
`
`mixtures of the organic compound (C3HmFn) and at least one compound including HFC-
`
`32 and HFC-152a can be used in the heat transfer composition (page 2, lines 77-84).
`
`Newly added claims 26-30, 32-35, 51, 57 and 72-73 recite the same/similar
`
`limitations as original claims 4-7. Accordingly, these claims are rejected for thesame
`reasons as stated above with respect to claims 4-7. 1
`
`Newly added claims 36-45, 47-50, 52, 55-56, 58, 60-71 and 75-81 recite the
`
`properties of the composition including flammability, relative capacity, stability when
`
`A contacting aluminum, steel and copper, miscibility with lubricants, toxicity, COP and
`
`I GWP. As stated above, lnagaki in view of Magid discloses the same composition as
`
`claimed. Accordingly, the same composition would also have the same properties as
`
`claimed.
`
`In re Spada, 911 F.2d. 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), also
`
`see MPEP 2112.01.
`
`19 of 73
`
`19 of 73
`
`

`
`Application/Control Number: 95/002,189 & 95/002,204
`
`Page 15
`
`Art Unit: 3991
`
`Additionally, with respect to newly added claims 61, 65 and 71, as stated above,
`
`lnagakidiscloses that the refrigerants such as HFO—1234yf can be mixed with at least
`one compound including R-134a and the mixtures “donot have any problem with
`
`respect to their general characteristics” including “compatibility with lubricants.” Magid
`
`teaches that refrigeration equipment using tetrafluoroethane (R-134a) as a working fluid
`
`can employ PAGs as lubricating oils. Accordingly, the combination of lnagaki and
`
`Magid teaches the miscibility of the refrigerant with the lubricant as claimed.
`Further, with ‘respect to newly added claims 46, 53-54, 59, 65 and 71, lnagaki
`
`discloses that the refrigerants which contain the organic compounds (e.g. HFO-1«234yf)
`
`'
`
`for heat transfer can be used in a refrigerator, heat pump or the like (page 1) and th