PATENT
`
`Docket No.: H0003965DIVIE
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`In re Letters Patentof:
`Rajiv R. Singhet al.
`
`Patent No.: 9,157,017
`
`Issued: October 13, 2015
`
`Subject of: PGR2016-00011 and PGR2016-00012
`
`For: COMPOSITIONS CONTAINING
`FLUORINE SUBSTITUTED OLEFINS AND
`METHODS AND SYSTEMS USING SAME
`
`Electronically Filed
`
`Attention: Certificate of Correction Branch
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`SECOND RENEWED PETITION FOR RECONSIDERATION
`OF DECISION DENYING PETITION FOR CERTIFICATE OF CORRECTION
`
`Dear Commissioner:
`
`In response to the Decision on the first renewed Petition dated May 26, 2022, this is a
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`second RenewedPetition under 37 .C.F.R. §1.78(c) and (e) seeking acceptance of the delayed
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`claim to priority being requested by the Certificate of Correction originally filed on May 6, 2020.
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`The paymentof the fee required by 37 .C.F.R. §1.17(m) has been made with the original petition.
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`The entire time between the date the benefit claim was due under 37 CFR §1.78 (d)(3)
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`and (a)(4) and the date of this renewed request to makethe priority claim was unintentional.
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`RESPONSE TO PETITION ON DECISION DATED MAY26, 2022
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`On May 26, 2022, a decision was entered (hereinafter “the Decision’) dismissingthe first
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`renewedPetition filed on March 15, 2022, for reconsideration of the decision denying the
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`Petition filed on March 15, 2020, for a Certificate of Correction. In the Decision, the Office of
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`Petitions stated that “[first] renewed petition does not explain the facts and circumstances
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`surrounding applicant’s delay in seeking acceptance of the newly claimed benefit chain,” and the
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`expressly directed the owner of the ‘017 Patent (hereinafter “Petitioner” or “Honeywell”) to
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`

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`“address applicant’s delay in seeking acceptance of the newly claimed benefit chain in a renewed
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`petition under 37 CFR 1.78(c) and (e).” (See last paragraph on page 2 of the Decision). In
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`particular, it was stated that “additional information that provides an explanation of the
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`circumstances surrounding the delay that establishes the entire delay was unintentionalis
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`required.” (See paragraph bridging page 1 and page2).
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`Honeywell summarizes the addtional items of inquiry that are identified in the Decision
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`as follows:
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`1. What date and under what circumstances did petitioner become aware that there was
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`an issue with the benefit information.
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`2. When did the processto correct the benefit information begin after the issue was
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`discovered.
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`3. Whythe additional priority chain issue was not raised during prosecution of
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`Application No. 14/225,588.
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`4. What protocols were present to ensure the benefit information is correct.
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`5.
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`Is the patent reviewed for accuracy uponreceipt?
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`Petitioner’s response to each of these identified areas of inquiry are provided below. Petitioneris
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`filing concurrently herewith a Third Declaration of Joseph F. Posillico (hereinafter “Third
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`Posillico Declaration”) to support Petitioner’s response to these areas of inquiry.
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`1. Discovery of the Issue Regarding the Priority Benefit Claim
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`Petitioner provides the requested information regarding the discovery ofthe error by first
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`identifying the nature of the error (see subsection a. below) and by then identifying how and
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`whenthis error was recognized (see subsecion b. below).
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`a. The Error In The Priority Benefit Claim
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`Asset-forth in the Third Posillico Declaration, U.S. Patent Application. No. 14/225,588
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`(“the 588 application”) is the patent application which led to U.S. Patent No. 9,157,017 (“the
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`‘017 Patent”), which is the patent that is the subject of the Certificate of Correction. (Third
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`Posillico Declaration, para. 2). As originally filed on March 26, 2014, the °588 application
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`included claims focused on cleaning compositions andinflating agents. /d. The claims of the
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`‘017 Patent, however, covered methods of producing/providing automobile air conditioning and
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`heat transfer compositions for automobile air conditioning which use 2,3,3,3-tetrafluoropropene
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`(HFO-1234yf) as the refrigerant.
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`/d. The priority claim originally made on the face of the ’017
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`patent is depicted below graphically on the following page:
`2
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`4862-1692-2663, v. 1
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`

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`Provisional Appl. No. 60/421,435
`Provisional Appl. No. 60/421,263
`Filed Oct. 25, 2002
`Filed Oct. 25, 2002
`"PSSSTSSS ASAT
`i
`
`Appl. No. 10/694,273
`Filed Oct. 27, 2003
`Now U.S,Patent No. 7,534,366
`RECREATEECR
`
`POLLOLLLEAL
`
`ORLALLELE,
`
`
`
`ALAREES
`
`Appl. No. 10/694,272
`Filed Oct. 27, 2003
`Now U.S. Patent No. 7,230,146
`“ocmeccemeocceeacmggecoeeeccerercemrormE
`
`:
`
`
`
`onennnennnentDnES
`
`Appl. No. 10/837,525
`Filed Apr. 29, 2004
`Now U-S. Patent No. 7,279,451
`<<pvsion|
`Divisional
`
`Appl. No. 11/847,192
`Filed Aug. 29, 2007
`
`U-S. Patent No. 9,518,225
`
`Issued December 13, 2016
`
`sot
`Divisional
`
`Td.
`
`Appl. No. 13/844,206
`Filed Mar. 15, 2013
`U.S. Patent No. 9,695,363
`Issued July 4, 2017
`AAAAcAOUMOMMUMO
`
`/wenenereceeapreceecrscnenes
`
`Divisiond (eee
`Appl. No. 14/225,588
`Filed Mar. 26, 2014
`_U.S. Patent No. 9,157,017
`|
`Issued on October 13, 2015PSR
`
`Whenthe 588 application wasfiled, Honeywell inadvertently failed to make a claim to
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`the priority of another chain of applications that was also pending when the 588 application was
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`filed. (Third Posillico Declaration, para. 3). This additional priority chain is shown in red below,
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`together with the original priority claim:
`
`Provisional Appl. No. 60/421,263
`Filed Oct. 25, 2002
`
`Provisional Appl. No. 60/421,435
`Filed Oct. 25, 2002
`STR
`
`Appl. No. 10/694,272
`Filed Oct. 27, 2003
`Now U.S. Patent No, 7,230,146
`"RSSRGSS
`
`Appl. No. 10/694,273
`Filed Oct. 27, 2003
`Now U-S: Patent No. 7,534,366
`TRS SANTANAINSEADIANA
`
`
`Provisional Appl: No. 60/693,853
`Filed Jun: 24,2005
`
`ee
`STILLLTITLPE,
`
`
`
`
`
`
`
`
`DLPLPDIDIOLIIIELLE
`
`Abandoned on April 19, 2018 LLLPLLLLPLLLLLPOPTLEDE,
`
`Appl. No. 11/850,025
`
`Filed Sep. 4; 2007
`a
`TOLLEDLPLLEDLELEETEE
`
`Appl, No, 11/475,605
`Appl. No. 10/837,525
`Fileddun: 26;:2006
`Filed Apr. 29, 2004
`U:SePatent No.:9;005,467
`
`Now U:S. Patent No. 7,279,451
`Issued:on April 14,2015
` IRR
`SAQO_owonnnngygqgq\q4gggTTTgggggg
`
`
`*eepuvsiond.|.Divisional
`Appl. No. 11/847,192
`Filed Aug. 29, 2007
`U.S. Patent No. 9,518,225
`Issued December 13, 2016
`“Ssesesenondtee
`ivisional
`
`Sew
`
`Divisional
`
`Appl. No. 13/844,206 (Filed Mar. 15, 2013)
`US. Patent No. 9,695,363
`Issued July 4, 2017
`
`“SigekneiocioneknciocinsknclncnSeNSANSARMRNAS
`
`4862-1692-2663, v. 1
`
`
`
`Appl. No. 14/225,588
`Filed Mar. 26, 2014
`U:S. Patent No. 9,157,017
`*
`Q
`Is sued on Octo ber 1 3 20 1 5
`ISSERSSSSR
`
`

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`As shown above, Honeywell could have madea priority claim as a continuation-in-part
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`(CIP) to Application No. 11/850,025 since that application (and its parent Application No.
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`11/475,605) was co-pending with and shared common inventors with the ‘588 application.
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`(Third Posillico Declaration, para. 4).
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`During early prosecution of the °588 application, the claims focused on cleaning
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`compositions andinflating agents. (Third Posillico Declaration, paras. 2 and 5). That was
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`because the 588 application wasfiled as a divisional of the ’206 application, and thus the ’588
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`application’s specification, claims, andlisting of “Related Applications” closely resembled that
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`of the ’206 application. /d. In early prosecution, however, Honeywell amendedthe claims in the
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`°588 application to instead be directed to methods of producing/providing automobile air
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`conditioning and to heat transfer compositions for automobile air conditioning which use 2,3,3,3-
`
`tetrafluoropropene (HFO-1234yf) as the refrigerant. /d. But Honeywell through inadvertent
`
`error did not make conforming amendments to the ’588 application’s chain ofpriority to fully
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`list other applications in the same family that describe the claimed compositions’ utility in
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`automobile air conditioning—including the ’025 and ’605 applications and ’853 provisional. /d.
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`This mistake was an inadvertent error made in good faith and without any deceptiveintent.
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`(Third Posillico Declaration, paras. 5 - 9).
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`b. The Error In The Priority Claim Was Discovered in November 2016
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`Petitioner was not aware ofthe error described above until a little more than one year
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`after the ‘017 Patent issued. (Third Posillico Declaration, para. 10). At the time the ‘558
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`application wasfiled, and throughoutthe time that original prosecution leading to the ‘017 Patent
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`was ongoing, Petitioner believed that the pending claims were valid and fully in compliance with
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`35 U.S.C. § 112. Jd. This belief was consistent with the position taken during the original
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`prosecution by the Examiner, whonever rejected Honeywell’s claims under 35 U.S.C. § 112. /d.
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`That is, the Examiner’s review of the specification resulted in a conclusion that the specification
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`of the application fully described and enabled the claims of the ‘017 Patent as issued.
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`/d.
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`Honeywell had reached the same conclusion and had no reason to doubtthat the priority chain on
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`the face of the ’017 patent supported the 017 patent’s claims—specifically that the specification
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`of the *525 application fully described and enabled the claims—whenthe ’017 patent issued. /d.
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`In February 2016, the above-noted PGR2016-00011 and PGR2016-00012 (hereinafter
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`“the PGRs”) werefiled against the ‘017 Patent. (Third Posillico Declaration, para. 11). The
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`PGRsincluded allegations that the claims of the ‘017 Patent were not supported or enabled by
`4
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`4862-1692-2663, v. 1
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`

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`any application in the priority chain with a date prior to March 26, 2014.
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`/d.
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`In June 2016,
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`Honeywell filed a Preliminary Response to the PGRsvigorously refuting this contention, and
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`Honeywell subsequently continued to refute these contentions during that proceeding.
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`/d.
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`On September 2, 2016, the Board entered a decision instituting post grant review. (Third
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`Posillico Declaration, para. 11).
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`In this decision the Board held that the record at that time had
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`“demonstrated by a preponderance of the evidence that the ‘017 patent claims have an effective
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`filing date of March 26, 2014.” /d. Prior to this decision by the Board, Petitioner was not aware
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`of an error in the priority chain.
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`/d. As Honeywell proceeded with the preparation of its Patent
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`Owner Responses, which wasdueto be filed on December 16, 2016, it began to evaluate the
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`possibility that an error may have occurred in the original priority chain.
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`/d. Honeywellfirst
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`realized in November 2016 that additional patent applications could have and should have been
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`includedin the priority chain of the ‘017 Patent.
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`/d.
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`In summary,as part of its preparation of its response to the PGRs in November2016,
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`Honeywell concluded that an error had been madein the priority chain that could be corrected by
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`a Certificate of Correction.
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`2. Petitioner Diligently Sought Correction of The Error After Its Discovery
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`Upon reaching the conclusion in November 2016 that a priority chain error had occurred,
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`and as required by 37 C.F.R. § 42.02(b), Petitioner sought the Board’s permissionto file a
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`Certificate of Correction to amendthe priority chain. (Third Posillico Declaration, para. 13).
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`This request was madeby a telephone conference with the Board that began on November28,
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`2016, and which was continued on November29, 2016.
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`/d. The Board denied this request
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`during the telephone conference of November29, 2016. /d.
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`From the time the Board denied the request to seek a Certificate of Correction to the
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`present, Petitioner has acted diligently to obtain the Certificate of Correction. (Third Posillico
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`Declaration, para. 14). After the Board denied Petitioner’s request to seek the Certificate of
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`Correction, the Board’s Rules specifically prohibited Honeywell from filing for the certificate of
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`correction. (See 35 USC 325(d); 37 CFR 42.3; 37 CFR 42.222(a); Alarm.com Inc. v. Vivint, Inc.
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`2
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`Case IPR2015-01995, Paper No. 10 (PTAB, Jan. 28, 2016)). Accordingly, Petitioner diligently
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`proceeded with the PGRsuntil the Board enteredits final decision on August 31, 2017. /d.
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`Petitioner then timely appealed the Board’s August 31, 2017, decision to the Court of
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`Appeals for the Federal Circuit on November22, 2017. Jd. Petitioner’s appeal sought review
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`of:
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`4862-1692-2663, v. 1
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`“Whether the Board’s denial of Honeywell’s November28, 2016, request
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`for authorization to file a motion seeking permissiontofile a Certificate of
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`Correction to correct the series of applications in the ’017 patent’s priority chain was
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`arbitrary, capricious, an abuse ofdiscretion, or otherwise not in accordance with law.”
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`Id. The Federal Circuit issued its decision on appeal on October 1, 2019, and as a part ofits
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`consideration of the Certificate of Correction question, the Federal Circuit specifically noted
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`that:
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`“Finally, in response to the Board’s questions about whetherthe [priority] change would
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`satisfy the “good faith” requirement of 35 U.S.C. § 255, Honeywell explained that it
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`learned of the incomplete priority chain forthe first time after the Board issued its
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`decision to institute. Honeywell asserts, and Arkema doesnot dispute, that Honeywell
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`sought authorization from the Boardto file its motion for leave “promptly upon
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`discovering the mistake in the course of preparing its Patent Owner Responses.”
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`Honeywell sought authorization from the Boarda little over a year after the ’017 patent
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`issued and less than three months after the Board instituted review.”
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`Id. The Federal Circuit decided that “the Board abusedits discretion” by denying Petitioner’s
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`request to seek a Certificate of Correction and that “[w]e find nothing in the record, or in the
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`Board’s conclusory decision, that warrants denying Honeywell’s request to file a motion for
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`leave to petition the Director for a Certificate of Correction correcting the priority chain of the
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`°017 patent.” Jd.
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`Thus, on October 1, 2019, the Federal Circuit remanded the Certificate of Correction
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`question to the Board. (Third Posillico Declaration, para. 15). Following the remand,
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`Honeywell diligently followed the procedures established by the Board to seek leaveto file the
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`Certificate of Correction.
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`/d. These proceduresincludedfiling with the Board on January 1,
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`2020, a Motion for Leave to Request a Certificate of Correction and conducting discovery
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`relating to the motion and briefing the motion. /d. This diligent effort resulted in the Board
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`granting Honeywell’s motion on April 27, 2020. Jd.
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`Following the Board’s Order granting the motion for leave, Petitioner diligently prepared
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`and filed its request for a Certificate of Correction on May 6, 2020. /d. Petitioner’s request was
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`dismissed on February 15, 2022, and Petitioner diligently filed its first Renewed Petition on
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`March 15, 2022.
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`/d. Petitioner’s first Renewed Petition was dismissed on May 26, 2022, and
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`4862-1692-2663, v. 1
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`Petitioner is now diligently filing its Second RenewedPetition on June 28, 2022, in direct
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`responseto the Office’s request. /d.
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`3. Other Questions Raised in the Dismissal
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`Petitioner respectfully submits that, in view of the explanations provided herein relating
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`to the date on whichthe error was discovered, the remaining inquiries raised in the Dismissal
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`(see items 4 and 5 on page 2 above) are not relevant to the question of Petitioner’s unintentional
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`delay. Each of those inquiries relate to procedures that would have occurred prior to the date
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`Petitioner discovered the error, and thus are not relevant to any delay in seeking correction once
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`the error was knownto Petitioner. As explained above, Honeywell did not learn of the error in
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`the priority chain until after the Board’s decision instituting the PGRsheld that the record at that
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`time “demonstrated by a preponderance of the evidence that the ‘017 patent claims have an
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`effective filing date of March 26, 2014.”
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`CONCLUSION
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`In view of provision by Petitioner of the additional information requested in the Decision,
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`Petitioner respectfully renewsits request to enter the Certificate of Correction filed May 5, 2020.
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`All fees associate with the entry of the Certificate of Correction have been paid, and to the extent
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`any further fee is deemedto be necessary to enter the Certificate of Correction, the
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`Commissioneris hereby authorized to charge such fee, or to credit any over payment, to Deposit
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`Account 60-3928, from which the undersigned is authorized to draw.
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`Dated: July 2, 2022
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`Respectfully submitted,
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`By_/Joseph F. Posillico/
`Joseph F. Posillico
`Registration No.: 32,290
`FisherBroyles, LLP
`One Liberty Place
`1650 MarketStreet, 36th Floor
`Philadelphia, PA 19103
`Telephone: 215 370-2424
`Email: Joseph.Posollico@fisherbroyles.com
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`4862-1692-2663, v. 1
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