UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.goV
`
`APPLICATION NO.
`
`F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONF {MATION NO.
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`14/225,588
`
`03/26/2014
`
`Rajiv R. Singh
`
`H0003965DIV1E
`
`2687
`
`HONEYWELL/FOX Romscmrp —
`°5’”’””
`759°
`9””
`Patent Services
`HARDEE, JOHN R
`
`BER
`PAPER
`ART UNIT
`101 Columbia Road
`Morristown, NJ 07962 “
`1761
`
`05/29/2014
`
`ELECTRONIC
`
`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.
`
`Notice of the Office communication was sent electronically on aboVe—indicated "Notification Date" to the
`following e—mail address(es):
`
`patentservices-us@honeyWell.com
`DL-SM-IP @ HoneyWell.com
`
`Page 1 of 11
`PTOL_90A (R’:V_ 04/07)
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`.
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`Arkema Exhibit 1048
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`Arkema Exhibit 1048
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`Page 1 of 11
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`

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`Application No.
`‘I4/225,588
`
`App|icant(s)
`SINGH ET AL.
`
`Office Action Summary
`
`AIA (First lnventorto File)
`Art unit
`Examiner
`:,*:‘”S
`1761
`JOHN HARDEE
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE § MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, may a reply be timely filed
`
`—
`—
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`Status
`
`1)I:I Responsive to communication(s) filed on
`I:I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)lXl This action is non—final.
`2a)I:l This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
`
`4)I:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)IZI Claim(s) io is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) j is/are allowed.
`s) io is/are rejected.
`
`8 El Claim s) _ is/are objected to.
`9)I:I Claim(s) _ are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`
`
`://vvwvv.usbto. ow atents/init events/'
`if/'index.‘s , orsend an inquiry to PPI--lfeedbackf,<%usj;)togov.
`
`htt
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|:I The drawing(s) filed on _ is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)I:l Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:l Some** c)I:l None of the:
`a)|:l All
`1.|:l Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No. j
`3.I:| Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attach ment(s)
`
`1) E Notice of References Cited (PTO-892)
`_
`_
`2) E Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date 03262014.
`U.S. Patent and
`1
`PTOL—326 (Rev. 11213)
`
`Office Action Summary
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`20f11
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`3) D jntervjew summary (pTo-413)
`Paper No(s)/Mail Date. j
`4) I:I Other: j‘
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`Part of Paper No./Mail Date 20140521
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`2 of 11
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`Application/Control Number: 14/225,588
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`Page 2
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`Art Unit: 1761
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`1.
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`The present application is being examined under the pre-AIA first to invent
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`provisions.
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`DETAILED ACTION
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`Double Parenting
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`2.
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`The nonstatutory double patenting rejection is based on a judicially created
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`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
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`unjustified or improper timewise extension of the “right to exclude” granted by a patent
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`and to prevent possible harassment by multiple assignees. A nonstatutory double
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`patenting rejection is appropriate where the claims at issue are not identical, but at least
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`one examined application claim is not patentably distinct from the reference claim(s)
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`because the examined application claim is either anticipated by, or would have been
`
`obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d
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`1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir.
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`1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum,
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`686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
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`(CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321 (d)
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`may be used to overcome an actual or provisional rejection based on a nonstatutory
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`double patenting ground provided the reference application or patent either is shown to
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`be commonly owned with this application, or claims an invention made as a result of
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`activities undertaken within the scope of a joint research agreement. A terminal
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`disclaimer must be signed in compliance with 37 CFR 1.321 (b).
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`Application/Control Number: 14/225,588
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`Page 3
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`Art Unit: 1761
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`The USPTO internet Web site contains terminal disclaimer forms which may be
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`used. Please visit http://www.uspto.gov/forms/. The filing date of the application will
`
`determine what form should be used. A web-based eTerminal Disclaimer may be filled
`
`out completely online using web-screens. An eTerminal Disclaimer that meets all
`
`requirements is auto-processed and approved immediately upon submission. For more
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`information about eTerminal Disclaimers, refer to
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`http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
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`3.
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`Claims 21-40 are rejected on the ground of nonstatutory double patenting as
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`being unpatentable over claims 1-23 of U.S. Patent No. 7,279,451 ; claims 16-26 of U.S.
`
`Patent No. 7,465,698; claims 1-25 of U.S. Patent No. 7,534,366; claims 1-20 of U.S.
`
`Patent No. 7,605,117; claims 1-20 of U.S. Patent No. 7,622,435; claims 1-21 of U.S.
`
`Patent No. 8,033,120; claims 1-16 of U.S. Patent No. 8,038,899; claims 1-23 of U.S.
`
`Patent No. 8,053,404; claims 1-51 of U.S. Patent No. 8,065,882; claims 1-27 of U.S.
`
`Patent No. 8,322,149; claims 1-19 of U.S. Patent No. 8,623,808; and claims 1-20 of
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`U.S. Patent No. 8,739,559. Although the claims at issue are not identical, they are not
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`patentably distinct from each other because they recite heat transfer compositions and
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`methods of use of heat transfer compositions which may comprise 1234yf and a
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`polyalkylene glycol lubricant. Regarding use in an automobile air conditioner, such is a
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`notoriously common use of heat transfer compositions. Determination of the operating
`
`conditions for a refrigerant composition amount to ordinary optimization. Claims drawn
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`to toxicity, GWP, boiling point and the like are drawn to properties which appear to be
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`inherent in 1234yf and polyalkylene glycols. Compressors, evaporators and condensers
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`Application/Control Number: 14/225,588
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`Page 4
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`Art Unit: 1761
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`are well known, if not mandatory, parts of heat transfer apparatus. Heat transfer
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`equipment which uses R134a is well known in the refrigeration art. Determination of
`
`what, if any, modifications would be necessary to use a different refrigerant would
`
`amount to ordinary experimentation. It would have been obvious at the time that the
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`invention was made to use the recited compositions in the recite equipment, because
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`the cited patents recite heat transfer compositions which may comprise the same
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`ingredients. Determination of how to use known refrigerants in known equipment
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`amounts to routine experimentation.
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`4.
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`Claims 21-40 are provisionally rejected on the ground of nonstatutory double
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`patenting as being unpatentable over claims 1, 3-16 and 21-33 of copending Application
`
`No. 13/274,823; claims 1-5, 10-12, 14-31 and 33 of copending Application No.
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`13/022,902; and claims 19, 20, 22-26, 29 and 59-63 of copending Application No.
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`11/385,259. Although the claims at issue are not identical, they are not patentably
`
`distinct from each other because they recite heat transfer compositions and methods of
`
`use of heat transfer compositions which may comprise 1234yf and a polyalkylene glycol
`
`lubricant. Regarding use in an automobile air conditioner, such is a notoriously common
`
`use of heat transfer compositions. Determination of the operating conditions for a
`
`refrigerant composition amount to ordinary optimization. Claims drawn to toxicity, GWP,
`
`boiling point and the like are drawn to properties which appear to be inherent in 1234yf
`
`and polyalkylene glycols. Compressors, evaporators and condensers are well known, if
`
`not mandatory, parts of heat transfer apparatus. Heat transfer equipment which uses
`
`R134a is well known in the refrigeration art. Determination of what, if any, modifications
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`Application/Control Number: 14/225,588
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`Page 5
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`Art Unit: 1761
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`would be necessary to use a different refrigerant would amount to ordinary
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`experimentation. It would have been obvious at the time that the invention was made to
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`use the recited compositions in the recite equipment, because the cited patents recite
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`heat transfer compositions which may comprise the same ingredients. Determination of
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`how to use known refrigerants in known equipment amounts to routine experimentation.
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`This is a provisional nonstatutory double patenting rejection because the
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`patentably indistinct claims have not in fact been patented.
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`Claim Rejections - 35 USC § 103
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`5.
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
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`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.
`
`6.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
`
`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating
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`obviousness or nonobviousness.
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`Application/Control Number: 14/225,588
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`Page 6
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`Art Unit: 1761
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`7.
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`This application currently names joint inventors. In considering patentability of the
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`claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter
`
`of the various claims was commonly owned at the time any inventions covered therein
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`were made absent any evidence to the contrary. Applicant is advised of the obligation
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`under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was
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`not commonly owned at the time a later invention was made in order for the examiner to
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`consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C.
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`102(e), (f) or (g) prior art under pre—AlA 35 U.S.C. 103(a).
`
`8.
`
`Claims 21-40 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable
`
`over JP 4-110388 in view of Bivens et al., US 6,783,691. The JP reference discloses
`
`refrigerant compositions useful in heat pumps. The compositions have little or no
`
`adverse effect on the ozone layer, and they comprise a hydrofluoropropene containing
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`at least one double bond (p. 4, lines 13-26). See Example 5 on p. 10, in which 1234yf is
`
`used in a heat pump. The lubricant is not disclosed. It is well known in the refrigerant art
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`that use of a lubricant is necessary in heat transfer equipment.
`
`The Bivens reference teaches that mineral oil and alkylbenzene lubricants are
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`not soluble in hydrofluorocarbon refrigerants, so alternative lubricants such as
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`polyalkylene glycols are commonly used with hydrofluorocarbon refrigerants. It would
`
`have been obvious at the time that the invention was made to use polyalkylene glycol
`
`lubricant with 1234yf refrigerant, because 1234yf is a hydrofluorocarbon refrigerant,
`
`albeit an unsaturated one, and Bivens teaches that polyalkylene glycols are useful
`
`lubricants with hydrofluorocarbon refrigerants. Regarding use in an automobile air
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`Application/Control Number: 14/225,588
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`Page 7
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`Art Unit: 1761
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`conditioner, such is a notoriously common use of heat transfer compositions.
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`Determination of the operating conditions for a refrigerant composition amount to
`
`ordinary optimization. Claims drawn to toxicity, GWP, boiling point and the like are
`
`drawn to properties which appear to be inherent in 1234yf and polyalkylene glycols.
`
`Compressors, evaporators and condensers are well known, if not mandatory, parts of
`
`heat transfer apparatus. Heat transfer equipment which uses R134a is well known in the
`
`refrigeration art. Determination of what, if any, modifications would be necessary to use
`
`a different refrigerant in apparatus designed for 134a would amount to routine
`
`experimentation, because the equipment and the refrigerant are both known to the
`
`person of ordinary skill in the refrigerant art. Formulation of a composition with
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`performance as much like that of 134a as possible would allow the most efficient use of
`
`the equipment, as would be realized by the person of ordinary skill. Determination of the
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`lubrication—effective amount of lubricant to combine with a refrigerant amounts to routine
`
`optimization, as is the refrigeration-effective amount of refrigerant to use.
`
`9.
`
`Claims 21-40 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable
`
`over RU 2,073,058 in view of Bivens et al., US 6,783,691. The RU reference discloses
`
`ozone—safe working fluids comprising 1-94 mole percent of tetrafluoroethane, 1-94 mole
`
`percent of an unsaturated fluorinated hydrocarbon and 5-80 mole percent of
`
`hydrocarbon (claim 1). The hydrocarbon has 3-5 carbons, and the unsaturated
`
`fluorinated hydrocarbon has a structural formula of C3FnH(6—n), implying the presence
`
`of one double bond (p. 2, 9th para.) Suitable fluorinated alkenes include 1234yf (3rd
`
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`Application/Control Number: 14/225,588
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`Page 8
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`Art Unit: 1761
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`entry, Table 1, p. 5). The lubricant is not disclosed. It is well known in the refrigerant art
`
`that use of a lubricant is necessary in heat transfer equipment.
`
`The Bivens reference teaches that mineral oil and alkylbenzene lubricants are
`
`not soluble in hydrofluorocarbon refrigerants, so alternative lubricants such as
`
`polyalkylene glycols are commonly used with hydrofluorocarbon refrigerants. It would
`
`have been obvious at the time that the invention was made to use polyalkylene glycol
`
`lubricant with 1234yf refrigerant, because 1234yf is a hydrofluorocarbon refrigerant,
`
`albeit an unsaturated one, and Bivens teaches that polyalkylene glycols are useful
`
`lubricants with hydrofluorocarbon refrigerants. Regarding use in an automobile air
`
`conditioner, such is a notoriously common use of heat transfer compositions.
`
`Determination of the operating conditions for a refrigerant composition amount to
`
`ordinary optimization. Claims drawn to toxicity, GWP, boiling point and the like are
`
`drawn to properties which appear to be inherent in 1234yf and polyalkylene glycols.
`
`Compressors, evaporators and condensers are well known, if not mandatory, parts of
`
`heat transfer apparatus. Note the comparison of compositions according to the
`
`invention with R134a in the tables on p. 5. As there is no disclosure of any modification
`
`to the equipment, use of compositions according to the invention as drop-in
`
`replacements for R134a may be fairly inferred. Formulation of a composition with
`
`performance as much like that of 134a as possible would allow the most efficient use of
`
`the equipment, as would be realized by the person of ordinary skill. Determination of the
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`lubrication—effective amount of lubricant to combine with a refrigerant amounts to routine
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`optimization, as is the refrigeration-effective amount of refrigerant to use.
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`Application/Control Number: 14/225,588
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`Page 9
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`Art Unit: 1761
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`10.
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`Any prior art made of record and not relied upon is of interest and is considered
`
`pertinent to applicant's disclosure.
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`11.
`
`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to the examiner, Dr. John R. Hardee, whose telephone
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`number is (571) 272-1318. The examiner can normally be reached on Monday through
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`Friday from 8:00 until 4:30. In the event that the examiner is not available, his
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`supervisor, Mr. Harold Pyon, may be reached at (571) 272-1498.
`
`The fax phone number for the organization where this application or proceeding
`
`is assigned is (571) 273-8100.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free).
`
`/John R. Hardee/
`
`Primary Examiner
`May 22, 2014
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`

`
`Notice of References Cited Examiner
`
`Application/Control No.
`
`14/225588
`
`JOHN HARDEE
`U.S. PATENT DOCUMENTS
`
`App|icant(s)/Patent Under
`Reexamination
`SINGH ET AL.
`Art Unit
`
`1761
`
`Page 1 °f1
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`*
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`Document Number
`Country Code—Number—Kind Code
`00-0200000
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`Date
`MM-YYYY
`07-2001
`
`Name
`
`_
`_
`_
`C|aSS'f'Cat'°n
`
`02/040
`
`
`
`*
`
`Document Number
`Country COde_NUmber_Kind Code
`I 00200700050
`
`Date
`MM_YYYY
`02-1007
`
`Country
`
`_
`_
`_
`Name
`Classification
`Engiishtransiation ‘
`
`FOREIGN PATENT DOCUMENTS
`
`I
`I
`NON-PATENT DOCUMENTS
`
`Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)
`
`*A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
`Dates in MM—YYYY format are publication dates. Classifications may be US or foreign.
`U.S. Patent and Trademark Office
`
`PTO-892 (Rev. 01-2001)
`
`Notice of References Cited
`
`Part of Paper No. 20140521
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