Statement of Reasonable Likelihood That At Least One Claim ofU.S. Pat. No. 8,033,120 Is
`Invalid
`
`Customer No.: 26308
`
`Patent
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of
`
`Inventors:
`
`Raj iv R. Singh et al.
`
`Patent No.:
`
`8,033,120
`
`Filed:
`
`20 April 2009
`
`Title:
`
`Compositions and Methods Containing Fluorine Substituted Olefins
`
`RE UEST FOR INTER PARTES REEXAMINATION
`
`Mail Stop Inter Partes Reexam
`Attn: Central Reexamination Unit
`
`Commissioner for Patents
`
`P.O. Box 1450
`
`Alexandria, VA 22313—1450
`
`Dear Sir:
`
`Mexichem Amanco Holding S.A. de C.V., having a principal place of business at Rio
`
`San Javier No. 10, Fraccionamiento, Viveros del Rio, Tlalnepantla, C.P. 54060 Estado de
`
`Mexico, c.p. 54060, hereby requests an inter partes reexamination under 35 U.S.C. §§ 311-318
`
`and 37 C.F.R. § 1.913 ofU.S. Pat. No. 8,033,120 (the ‘120 Patent), which issued on October 11,
`
`2011 to Rajiv R. Singh, Hang T. Pham, David P. Wilson, and Raymond H. Thomas. A copy of
`
`the entire ‘120 Patent in accordance with 37 C.F.R. § 1.915 (b)(4), is submitted herewith and
`
`attached as Exhibit A.
`
`A copy of every patent and printed publication relied upon or referred to in this request
`
`for reexamination is hereby submitted, as listed on the attached Form PTO-1449, and are listed
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`1 of 60
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`Arkema Exhibit 1056
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`Arkema Exhibit 1056
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`1 of 60
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`

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`Statement of Reasonable Likelihood That At Least One Claim of US. Pat. No. 8,033,120 Is
`Invalid
`
`below.
`
`In accordance with the requirements set forth in 35 U.S.C. § 311, the cited prior art is
`
`applied to allowed claims 1-21 of the ‘120 Patent.
`
`The following patents and printed publications have been analyzed:
`
`1.
`
`2.
`
`JP — 04-110388 (“Inagaki”)
`
`NASA Contract NAS-7-918, “Nearly Azeotropic Mixtures to Replace Refrigerant R—l2
`
`(“NASA Contract”)
`
`3.
`
`N.°‘.°‘:'-‘-‘
`
`Mahler et al., U.S. Pat. No. 6,991,744 (“Mahler”)
`
`Oberle, et al, U.S. Patent No. 6,374,629 (“Oberle”)
`
`Bivens et al., U.S. Pat. No. 6,783,691 (“Bivens”)
`
`RU 2 073 058 (“Podchernjaev”)
`
`Proposal for a Regulation of the European Parliament and of The Council on Certain
`
`Fluorinated Greenhouse Gases, August 11, 2003 (“EU Proposal”)
`
`8.
`
`9.
`
`Musso et al., U.S. Pat. No. 6,695,973 (“Musso”)
`
`Fundamental Equation of State For 2,3,3,3-Tetrafluoropropene (HFO-l234yf) Ryo
`
`Akasaka, et al. (“HFO-1234yf Property Sheet”)
`
`10.
`
`J. PHYS. CHEM. A 101 “Rate Constants for the Reactions of OH with HFC-245cb
`
`(CH3CF2CF3) and Some Fluoroalkenes (CHZCHCF3, CHZCFCF3, and CF2CF2)'”, 9118-9124
`
`(1997) Orkin et al. (“Orkin”)
`
`11.
`
`Low Global Warming Fluorocarbons are safe and environmentally preferable, (2009)
`
`Singh, et al. (“Singh”)
`
`It is hereby certified that a copy of this request is being served in its entirety on the patent
`
`owner, Honeywell International, Inc., at the following address:
`
`101 Columbia Road, PO Box
`
`2245, Morristown, NJ 07962-2245.
`
`It is further certified that the estoppels provisions of 37 C.F.R. §1.907 do not prohibit this
`
`inter partes reexamination.
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`Statement of Reasonable Likelihood That At Least One Claim of U.S. Pat. No. 8,033,120 Is
`Invalid
`
`I.
`
`CLAIMS FOR WHICH REEXAMINATION IS REQUESTED
`
`Reexamination is requested of Claims 1-21 in view of the above noted references. This
`
`prior art, either alone or in combination, anticipates under 35 U.S.C. § 102(a) or renders obvious
`
`under 35 U.S.C.
`
`§ 103(a) the subject matter recited by claims 1-21 of the ‘120 Patent.
`
`Particularly:
`
`.*‘1F“.U.0.W?>
`
`Claims 1-7, 14-19 are Anticipated by and/or Obvious over Inagaki.
`
`Claims 8-13 and 20-21 are Obvious Over Inagaki.
`
`Claims 8-13 and 20-21 are Obvious Over Inagaki in View of Bivens.
`
`Claims 8-13 and 20-21 are Obvious Over Inagaki in View of Oberle.
`
`Claims 1, 3-6, and 9-18 are Obvious over Podchemjaev in View of Bivens.
`
`Claims 1, 3-6 and 9-18 are Obvious over Podchemjaev in View of Oberle.
`
`II.
`
`THE ‘120 PATENT AND BACKGROUND
`
`The ‘ 120 Patent is directed towards refrigerants containing at least one multi-fluorinated
`
`olefin. The ‘120 Patent, Col 2, lines 32-34.
`
`In particular, the ‘120 Patent is directed towards
`
`fluoroalkenes containing 3 to 4 carbon atoms, and at least one double bond.
`
`Id. at Col. 3, lines
`
`61-63. Such compositions include R-1234yf, R-1234ze, and R-1243zf, which are known as
`
`hydrofluoroolefins (HFOs). These compositions are commonly used as refrigerants, aerosols,
`
`foaming agents, and in other similar products. Depending on the source or person that is
`
`referring to a compound, the compound may be referred to as an HFO, HFC, or R. For example,
`
`HFC-1234yf, HFO-1234yf, and R-1234yf all refer to the same compound, referred to by the
`
`Patentee initially as l,1,1,2-tetrafluoropropene, equivalently, and more correctly according to
`
`IUPAC standards,
`
`this
`
`is described by others as 2,3,3,3-tetrafluoropropene or 2,3,3,3-
`
`tetrafluoroprop-1-ene.
`
`It should be noted that fluorinated alkenes (hydrofluoro-olefins) are
`
`themselves hydrofluorocarbons (HFCS) having at
`
`least one double bond embodied in their
`
`structure. For consistency herein, unless referring to specific language from a patent or
`
`publication, “R-” will be used as the prefix to refer to the discussed refrigerants.
`
`Since at
`
`least the early 1990s, HFCs have been used and contemplated for use as
`
`replacements
`
`for
`
`chlorofluorocarbons
`
`(CFCs), because of
`
`their
`
`zero ozone-depletion
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`Statement of Reasonable Likelihood That At Least One Claim of US. Pat. No. 8,033,120 Is
`Invalid
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`characteristics. See Mahler at col. 1, lines 30-43. Likewise, HFCS generally have a lower Global
`
`Warming Potential (GWP) than CFCs. See Musso at col. 2, line 60 — col. 3, line 4. Particularly,
`
`replacements have been contemplated for dichlorodifluoromethane, CCl2F2, commonly referred
`
`to as R-12, or Refrigerant 12, which previously was the most commonly used refrigerant world-
`
`wide. See NASA contract at p.
`
`i. Replacement of chlorofluorocarbons was directed by an
`
`international agreement, known as the “Montreal Protocol” Id. at p. 2.
`
`It had been determined
`
`that certain nearly azeotropic fluid mixtures were desired as replacements for R-12. Id. at p. 3.
`
`An example of a fluid used as a replacement for R—l2 is 1,1,1,2—tetrafluoroethane,
`
`commonly referred to as R-134a, which is considered as being non-toxic, non-flammable, and
`
`non-ozone-damaging.
`
`Id. at p. 2. However,
`
`international agreements, such as the Kyoto
`
`Protocol of 1997,
`
`implemented by the European Parliament, has mandated that R-134a be
`
`replaced with refrigerants that have a lower GWP. See EU Proposal.
`
`In particular, it is
`
`mandated that “any passenger vehicle and light commercial vehicle placed on the market after 1
`
`January 2009 should use a refrigerant with a global warming potential of 150 or less.” Id. at p. 9.
`
`The GWP for R-l34a is about 1400 and thus needs replacement with a refrigerant with a lower
`
`GWP, such as R-l234yf, which has a GWP of about 4. See HFO-1234yf Property Sheet at 1. R-
`
`1234ze also has a GWP of about 6. See Singh. The use of fluoroalkenes, such as R-l234yf, has
`
`been discussed as a replacement for CFCS, as early as 1997. See Orkin.
`
`The ‘120 Patent was filed as the U.S. Patent Application, Serial No. 12/426,948 (the
`
`“‘948 application”) on April 20, 2009 with 23 claims. To be certain, the HFOs disclosed and
`
`claimed in the ‘ 120 Patent were known and used prior to the filing of the ‘948 application by the
`
`Patentee. For example, U.S. Pat. No. 6,548,719 (the ‘719 patent), which is assigned to the
`
`Patentee, describes and claims a process for producing HFOs having the same formula as is
`
`claimed in the ‘120 Patent. See Col. 6, lines 5-15, Claim 1. Though not written in identical
`
`fashion as the formula of the ‘120 Patent, the formula of the ‘719 patent encompasses and is
`
`directed towards the same compounds, e. g. R—1234ze and R-1234yf.
`
`The ‘948 application was filed as a divisional of a series of applications, with the earliest
`
`priority date being October 25, 2002, with the claims directed towards heat
`
`transfer
`
`compositions, heat transfer methods, blowing agents, and methods for cleaning contaminants,
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`

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`Statement of Reasonable Likelihood That At Least One Claim ofU.S. Pat. No. 8,033,120 Is
`Invalid
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`reducing flammability of a flammable composition, suppressing a flame, and sterilizing an
`
`article, with the independent claims being directed towards compositions having the formula:
`
`XCFZ
`
`(1)
`
`where X is a C2 or C3 unsaturated, substituted or unsubstituted, alkyl radical, and z is 1 to
`
`On January 14, 2010, the U.S. Patent & Trademark Offlce (PTO) issued a Restriction
`
`Requirement, requiring the Applicant to elect one of the seven claimed inventions for further
`
`prosecution. On February 16, 2010, the Applicant elected to prosecute the claims directed
`
`towards heat transfer methods (claims 15 and 16).
`
`On March 1, 2010, the PTO issued an Office Action, rejecting the pending claims of the
`
`‘948 application. Claims 15 and 16 were rejected under 35 U.S.C. § 102(b) as being anticipated
`
`by JP 4-110388 (Inagaki et al.). Claims 15 and 16 were rejected under 35 U.S.C. § 103(a) as
`
`being unpatentable over US 6,041,602 (Olszewski et al.). Claims 15 and 16 were provisionally
`
`rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable
`
`over claim 3 of copending Application No. 12/432,466. Claims 15 and 16 were provisionally
`
`rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable
`
`over claims 10 of copending Application No. 10/892,913. Claims 15 and 16 were provisionally
`
`rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable
`
`over claims 10-12 of copending Application No. 10/837,521.
`
`Claims 15 and 16 were
`
`provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being
`
`unpatentable over claims 20 and 23 of copending Application No. 10/850,027. Claims 15 and
`
`16 were provisionally rejected on the ground of nonstatutory obviousness-type double patenting
`
`as being unpatentable over claim 9 of copending Application No. 10/850,028.
`
`In two personal interviews held on July 28, 2010 and August 23, 2011, the Applicant
`
`argued that the claims should be held allowable over the prior art, suggesting that the prior art
`
`was not used in automobile air conditioning systems and did not teach the low level of toxicity of
`
`the claimed compounds. The applicant submitted an amendment and declaration in support of its
`
`allegations.
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`Statement of Reasonable Likelihood That At Least One Claim of U.S. Pat. No. 8,033,120 Is
`Invalid
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`On September l, 2010, the Applicant responded to the Office Action. The Applicant
`
`amended claim 15 to include the limitation that the heat transfer fluid comprise at least one
`
`lubricant and a refrigerant containing a fluoroalkene of Formula I, and further amended the
`
`fluoroalkene to require a terminal unsaturated carbon atom and at least one H on said unsaturated
`
`terminal carbon. The claim also now required that the lubricant and the refrigerant have one
`
`liquid phase at at least one temperature between about —50°C and +70°C measured at 5% by
`
`weight of lubricant based on the weight of the refrigerant and lubricant, and finally, that the
`
`refrigerant has a Global Warming Potential of not greater than about 75.
`
`Claim l6 was also amended, and now claimed that the fluoroalkene of Claim l5 includes
`
`an unsaturated terminal carbon having one F substituent, whereas prior to the amendment, an
`
`unsaturated terminal carbon having not more than one F substituent was claimed.
`
`The Applicant also added new claims 24—34. Claim 24 was the only independent claim
`
`added, which introduced a method for cooling air comprising providing a heat
`
`transfer
`
`composition having at least one lubricant and a refrigerant comprises at least one fluoroalkene
`
`of Formula I
`
`XCFzR3—z (1)
`
`where X is a C2 or a C3 unsaturated F, Cl,
`
`I, or Br substituted alkyl radical, R is
`
`independently Cl, F or H, and Z is 3, and wherein said refrigerant does not include a fluoroalkene
`
`of Formula I which has no H substituent on an unsaturated terminal carbon. The method also
`
`claimed the same new limitations of Claim 15, except that the GWP for the refrigerant of Claim
`
`24 is to be not greater than about l50.
`
`The remaining new claims 25-34 comprised 5 dependant claims depending from Claim
`
`15, and five identical dependent claims depending from new Claim 24.
`
`In response to the nonstatutory obviousness-type double patenting rejections,
`
`the
`
`Applicant filed a terminal disclaimer to disclaim any patent term for the present application
`
`extending beyond the term of the cited applications.
`
`In two personal interviews held on July 28, 2010 and August 23, 20ll, the Applicant
`
`argued that the claims should be held allowable over the prior art, suggesting that the prior art
`
`did not include the use of a lubricant, did not teach low Global Warming Potentials (GWPS) and
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`Statement of Reasonable Likelihood That At Least One Claim of US. Pat. No. 8,033,120 Is
`Invalid
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`did not teach the low level of toxicity of the claimed compounds. The applicant submitted an
`
`amendment and declaration in support of its allegations.
`
`On September 29, 2010, the Applicant filed a Supplementary Response. The Applicant
`
`made minor amendments to the claims to correct format and conform with proper antecedent
`
`basis, as well as cancelling Claim 28.
`
`On October 14, 2010,
`
`the Applicant filed an Amendment
`
`to the Specification.
`
`In
`
`Applicant’s remarks, it is explained that the amended specification is submitted in order that the
`
`present application be nearly identical to the parent, U.S. Patent No. 7,534,366, incorporated by
`
`reference.
`
`On October 21, 2010, the PTO mailed a Notice of Allowance (NOA).
`
`On January 21, 2011, the Applicant submitted an Information Disclosure Statement and a
`
`Request for Continued Examination.
`
`On January 31, 2011 the PTO mailed a new NOA.
`
`After the NOA, on March 4, 2011 the Applicant submitted an Information Disclosure
`
`Statement (IDS). A preliminary amendment was also submitted with the IDS. On March 22,
`
`2011, the Applicant submitted a second IDS. On March 23, 2011, the Examiner indicated that
`
`the IDSs were reviewed and indicated that the claims were allowable. On March 25, 2011, an
`
`Examiner’s amendment was entered to limit claim 15 (now claim 1), inter alia, to “at least four
`
`fluorine substituents”.
`
`On April 1, 2011 the PTO mailed a NOA. The examiner’s statement of reasons for
`
`allowance was the “claims are allowable over the closest prior art of record, Inagaki et al. (JP
`
`04110388) and Olszewski et al. (US 6,041,621) and the documents on the IDS’s dated 3/4/2011
`
`and 3/22/2-11, because the prior art do not teach or fairly suggest compositions with Global
`
`Warming Potential of not greater than 75 and a liquid phase at at least one temperature between a
`
`out -50°C and +70°C at 5% by weight of the lubricant based on the weight of the refrigerant and
`
`the lubricant. Applicant’s declaration under rule 132 submitted 9/1/2010 demonstrates the
`
`superior reduced toxicity of the fluoroalkenes of instantly claimed formula (1) due to the
`
`presence of at least one H on the unsaturated terminal carbon.”
`
`The ‘120 Patent issued on October 11, 2011.
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`Statement of Reasonable Likelihood That At Least One Claim of US. Pat. No. 8,033,120 Is
`Invalid
`
`III.
`
`EXPLANATION OF PERTINENCY AND MANNER OF APPLYING CITED
`
`ART TO THE CLAIMS FOR WHICH REEXAM [NATION IS REQUESTED
`
`The claims were held to be allowable over the prior art because it was stated that the prior
`
`art do not teach or fairly suggest compositions with Global Warming Potential of not greater than
`
`75 and a liquid phase at at least one temperature between about -50°C and +70°C at 5% by
`
`weight of the lubricant based on the weight of the refrigerant and the lubricant. However, the
`
`prior art does in fact disclose such compositions, with the prior art specifically disclosing and
`
`teaching the identical compositions being claimed in the ‘l20 Patent.
`
`Identical compounds have
`
`identical characteristics, and the two are not separable. As an example, the particular compounds
`
`recited in the ‘l20 Patent as falling within the scope of the claims of the present invention, e.g.
`
`R-l234ze, R-l234yf, and R-l243zf, have all been disclosed and tested in the prior art. There is
`
`no structural difference between the prior art compounds and the claimed compounds of the ‘I20
`
`Patent. As such, any suggestion that the claimed compounds are patentable over the prior art
`
`based upon the characteristics of those compounds, e.g. miscibility, GWP or toxicity,
`
`is
`
`erroneous.
`
`Such characteristics are inherent features of the claimed compounds, which are
`
`necessarily found in the identical compounds found in the prior art.
`
`Likewise, the use of
`
`lubricants, and particularly the claimed polyol esters (POES) and poly alkylene glycols (PAGs)
`
`lubricants are commonly used lubricants with refrigeration machinery with hydrofluorocarbon
`
`(HFC) refrigerants. The ‘l20 patent, col, 6, lines l3—l6.
`
`The claims recite known refrigerants
`
`that are miscible with lubricants, lubricants that were admitted by the Patent Owner when filing
`
`the ‘948 application as being common, known lubricants. Such recitation of known compounds
`
`for known uses does not arise to the level of patentability. Accordingly, there is a reasonable
`
`likelihood that the petitioner would prevail (RLPWP) with respect to at least one, and more
`
`likely all, of the claims of the ‘ 120 Patent.
`
`A. The Independent Claims of the ‘120 Patent
`
`There is a RLPWP in invalidating all claims of the ‘l20 Patent under 35 USC §§ l02,
`
`l03 in view of the previously listed prior art references. The ‘ l20 has two independent claims,
`
`claims l and 14, which are as follows:
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`Statement of Reasonable Likelihood That At Least One Claim of U.S. Pat. No. 8,033,120 Is
`Invalid
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`Independent Claims of the ‘ 120 Patent
`
`Claim 14
`
`Claim 1
`
`1.
`
`A
`
`method
`
`of
`
`cooling
`
`air
`
`comprising:
`fluid
`transfer
`heat
`a
`(a)
`providing
`least one lubricant and a
`comprising at
`refrigerant comprising a fluoroalkene of
`Formula l:
`
`l4. A heat transfer method for cooling air
`comprising:
`(a) providing a heat transfer composition
`comprising at
`least one lubricant and a
`refrigerant comprising a fluoroalkene of
`Formula I:
`
`XCFZRZ_3 (1)
`
`XCFzR3_Z(I)
`
`where X is a C2 or a C3 unsaturated,
`substituted, alkyl radical, each substituent
`and each R is For H, and z is
`l
`to 3,
`provided that
`(i)
`said fluoroalkene of
`Formula I has
`least
`four
`fluorine
`
`at
`
`substituents and has a terminal unsaturated
`
`where X is a C2 or a C3 unsaturated F, Cl, I
`or Br
`substituted alkyl
`radical, R is
`independently Cl, F or H, and z is 3,
`wherein said providing step comprises
`ensuring that said refrigerant does not
`include a fluoroalkene of Formula I which
`
`carbon atom and at
`
`least one H on said
`
`has no H substituent on an unsaturated
`
`said
`(ii)
`carbon,
`unsaturated terminal
`lubricant and said refrigerant have one
`liquid phase at at
`least one temperature
`between about -50°C and +70°C measured
`
`terminal carbon, and further provided that
`said lubricant and said refrigerant have one
`liquid phase at at
`least one temperature
`between about —50°C and +70°C measured
`
`at 5% by weight of lubricant based on the
`weight of the refrigerant and lubricant, and
`(iii) said refrigerant has a Global Warming
`Potential (GWP) of not greater than about
`75; and
`
`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 l50; 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.
`
`to be
`(b) cooling air by causing heat
`transferred from the air to said refrigerant.
`
`The two independent claims are directed towards methods of cooling air, which generally
`
`include a refrigerant and a lubricant. None of the methods claimed address a new use for the
`
`claimed compounds. Each claim requires a fluoroalkene of Formula I (with a discrepancy in the
`
`subscript, 2-3 vs. 3-z). Though not written identically, the language is directed towards the same
`
`compounds, compounds with at least one H on the unsaturated terminal carbon atom. Claim 14
`
`uses a double negative to refer to the same compounds, claiming a step of “ensuring that said
`
`refrigerant does Q include a fluoroalkene of Formula I which has E H substituent on an
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`Statement of Reasonable Likelihood That At Least One Claim of U.S. Pat. No. 8,033,120 Is
`Invalid
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`unsaturated terminal carbon,
`
`thereby stating that
`
`the claimed refrigerant must have a
`
`fluoroalkene of formula I which has an H substituent on the unsaturated terminal carbon.
`
`93
`
`Examples
`
`of
`
`such
`
`compounds
`
`include
`
`HFO—l234yf,
`
`(R—l234yf,
`
`1,l,l,2-
`
`tetrafluoropropene
`
`or
`
`2,3,3,3-tetrafluoropropene), HFO-l234ze
`
`(R-l234ze,
`
`l,l,l,3-
`
`tetrafluoropropene or l,3,3,3-tetrafluoropropene), HFO-l243zf (R-l243zf, l,l,l-trifluoropropene
`
`or 3,3,3-trifluoropropene) or possibly tetrafluorobutene compounds. Claim 1
`
`limits these
`
`compounds to fluoroalkenes that have at least four fluorine substituents, which does not require
`
`such a limitation.
`
`Such compounds were known in the prior art as is evident by the following
`
`references.
`
`It should be noted that claim 14 states that the R substituents could be Cl, 1, or Br,
`
`but by definition, the addition of these substituents would no longer be fluoroalkenes, but would
`
`be chlorofluoro-, iodofluoro-, or bromofluoro-alkenes.
`
`Most glaringly, claim 15 requires a GWP of <l50,
`
`in direct conflict with the
`
`Patent Owner’s arguments to the examiner and the stated reasons for allowance of the claims,
`
`wherein it was stated that the prior art did not disclose refrigerants with a GWP of <75, as noted
`
`above. This will be discussed further below.
`
`B. The Prior Art Relied Upon
`
`The prior art relied upon in the present reexamination generally was made of
`
`record during the prosecution of the ‘l20 Patent (the ‘948 application). However, the cited prior
`
`art can still provide the basis that there is a reasonable likelihood that the claims of the ‘l20
`
`Patent are invalid. As has been previously suggested when reexamining patents, reexamination
`
`shall be based upon a fact-specific inquiry done on a case-by-case basis.
`
`The public interest may demand a finding that a substantial new
`question of patentability affecting a patent claim has been raised
`where a reference cited during the prosecution of the patent is
`presented and viewed in a different light than it was considered
`during the prosecution of the application which issued as a patent.
`The public interest in valid patents intended to be served by the
`patent
`reexamination sections of the patent
`laws cannot be
`disregarded where a reasonable new interpretation of a reference
`disclosure is presented for
`the first
`time via a request
`for
`reexamination. This is especially true, where, as here, the reference
`had previously been considered in a secondary manner for a very
`limited purpose.
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`Statement of Reasonable Likelihood That At Least One Claim of U.S. Pat. No. 8,033,120 Is
`Invalid
`
`Ex Parte Chicago Rawhide Manufacturing Company, 223 U.S.P.Q. 351, 353 (P.T.O. Bd. App.
`1984).
`
`Thus an RLPWP may be based solely on old art where the old art is presented/viewed in
`
`a new light, or
`
`in a different way, as compared with its use in the earlier concluded
`
`examination(s), in View of a material new argument or interpretation presented in the request.
`
`In
`
`this case, the cited references, although considered “old art,” should be considered to present an
`
`RLPWP.
`
`For example, JP — 04-110388 (Inagaki) discloses the compounds of the ‘120 Patent.
`
`Inagaki is a Japanese patent application that was published in Japan on April 10, 1992. The
`
`application, which was filed on August 31, 1990 and assigned to Daikin Industries, discusses
`
`fluids for heat transfer, such as fluorocarbons, that can be used for heat transfer. A certified copy
`
`of a complete translation is included and listed on PTO Form-1449. More particularly,
`
`the
`
`disclosed and claimed fluorocarbons are represented by the formula:
`
`C 3HmFn
`
`wherein m=an integer 1 to 5, n=an integer l to 5, and m+n=6. The formula reads directly on
`
`some of the fluorocarbons of the ‘120 Patent, i.e. R-1234y£ R-1234ze, R-1243zf and R-1225.
`
`This formula is essentially the same formula as being claimed by the Patentee in the ‘ 120 Patent.
`
`Inagaki was discussed during the prosecution of the ‘120 Patent, but it does not appear to
`
`have been appreciated by the Examiner as disclosing the same compounds as claimed in the ‘ 120
`
`Patent. For example, patentability was based on the premise asserted by the Patent Owner that
`
`the present claims had a lower GWP and lower toxicity than Inagaki. However, as is explained,
`
`below, the compounds of Inagaki are the identical compounds as being claimed and have the
`
`identical characteristics, e.g. the same GWP and toxicity. Because the disclosed compounds in
`
`Inagaki were not necessarily named in the same fashion as in the ‘120 patent,
`
`i.e. 1,1,1,3—
`
`tetrafluoro-1-propene VS. transHFO1234ze and F3C-CF=CH2 VS. HFO-l234y£ it may have not
`
`been fully appreciated or realized that Inagaki disclosed the identical compounds as those
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`Statement of Reasonable Likelihood That At Least One Claim of U.S. Pat. No. 8,033,120 Is
`Invalid
`
`disclosed in the ‘ 120 Patent. As such, Inagaki was not properly considered by the Patent Office
`
`and forms the basis of an RLPWP.
`
`RU 2 073 058 (Podchernjaev), which was made of record but was not discussed by the
`
`Examiner during the prosecution of the ‘120 Patent, discloses compounds that read on the
`
`formula above, compounds such as R-1234yf and R-1243zf. A certified copy of a complete
`
`translation is included and listed on Form PTO-1449. As with lnagaki, the compounds were not
`
`named in the same fashion as in the ‘120 Patent, and may not have been appreciated as
`
`disclosing the identical chemical compounds as those of the ‘120 Patent. These compounds, by
`
`definition, have a GWP less than 75, as well as having low toxicity. More specifically, the
`
`claimed GWP and toxicity are inherent features of a compound or composition and, as such, the
`
`compounds recited in Podchernjaev necessarily meet the limitations of the compounds of the
`
`claims of the ‘120 Patent. Podchernjaev was not properly considered by the Patent Office and
`
`forms the basis of an RLPWP.
`
`In the case of the several other references that were made of record during the
`
`prosecution of the ‘ 120 Patent, the references were submitted to the Examiner after a NOA had
`
`already been issued. The references were parts of voluminous IDSs on March 4, 2011 and
`
`March 22, 2011, with the two IDSS totaling well in excess of 1000 pages of documents. The
`
`Patentee noted that these references were relied upon in European Oppositions to related
`
`applications and in Reexaminations.
`
`In an interview summary on March 23, 2011, one day after
`
`receiving the second IDS,
`
`the Examiner stated that she had reviewed and considered the
`
`information in the IDSS. However, given the enormity of the IDSs and the short time between
`
`submission of the materials and review of the materials,
`
`it is clear that the Examiner greatly
`
`relied upon the representation of the Patent Owner in determining the relevance of the material in
`
`the IDSs as opposed to independent analysis. As such, these references form a RLPWP with
`
`respect to at least one claim of the ‘ 120 Patent.
`
`For example,
`
`included in these voluminous IDSs were three separate reexamination
`
`requests, 95/000,574 (reexamination of U.S. Pat. No. 7,524,805 (the ‘805 patent), 95/000,576
`
`(reexamination of U.S. Pat. No. 7,279,451 (the ‘451 patent), and 95/000,630 (reexamination
`
`7,825,081 (the ‘08l patent), which were all granted by the PTO. The three reexaminations,
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`Statement of Reasonable Likelihood That At Least One Claim ofU.S. Pat. No. 8,033,120 Is
`Invalid
`
`which are assigned to the same patentee as the ‘l20 Patent, disclose essentially similar subject
`
`matter, and similar claims to the ‘ 120 Patent (e.g. compare claim 1 of the ‘45l patent to claim 1
`
`of the ‘ 120 Patent), all were granted and, importantly in View of the new standard now applied to
`
`inter partes reexaminations, substantially all of the claims currently stand rejected by the PTO.
`
`These reexaminations provide further evidence that there is a RLPWP with respect to at least one
`
`claim of the ‘ 120 Patent.
`
`The particular characteristics relied upon for patentability, e.g. GWP and toxicity are
`
`described below.
`
`C. Toxicity
`
`The Patent Owner’s reliance on toxicity to suggest patentability is irrelevant and
`
`disingenuous. Toxicity is an inherent feature of a chemical compound or composition and
`
`simply acknowledging that a compound is more or less toxic is not patentable when it is not
`
`compared to the toxicity of the closest prior art, nor is comparing toxicity to other unclaimed
`
`chemical compounds. The patentee’s assertion that R-l234yf is less toxic than R-l225zc is
`
`irrelevant to patentability, since (1) toxicity is an inherent feature of R-l234yf and R-l234ze, and
`
`(2) R-l234yf and R-l234ze were previously disclosed in both Inagaki and Podchemjaev as
`
`refrigerants.
`
`The toxicity comparison should have been made to the R—l234ze and R-l234yf
`
`that were disclosed in the analogous prior art for exactly the same purpose as claimed in the ‘ l20
`
`Patent.
`
`If such testing would have been carried out, it would have shown identical toxicity for
`
`the prior art as for the claimed compounds, as they are identical compounds, i.e. there would be
`
`no toxicity advantage over the most pertinent prior art. This demonstrates that there is more than
`
`a reasonable likelihood that at least one claim of the ‘l20 Patent is invalid.
`
`The Examiner indicated that the claims would be allowed, based on a declaration stating
`
`that the claimed compounds were less toxic than another compound,
`
`i.e. R-1225zc, thereby
`
`overcoming the rejection based upon Inagaki. However, R-l225zc and its properties are
`
`irrelevant to the disclosure of Inagaki, as the particular compounds that Inagaki discloses are the
`
`same compounds as being claimed in the ‘l2O Patent. Toxicity is an inherent quality that cannot
`
`be separated from the actual chemical composition. That is, Inagaki discloses R—l234ze, R-
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`Statement of Reasonable Likelihood That At Least One Claim of US. Pat. No. 8,033,120 Is
`Invalid
`
`1243zf, and R—l234yf, and Podchemjaev discloses R—l234yf and R—l243zf,
`
`the identical
`
`compounds being claimed in the ‘120 Patent.
`
`The Patent Owner’s discussion of the comparative toxicity of R—l234yf versus the
`
`toxicity of R-l225zc is irrelevant to the toxicity of R—l234yf and is irrelevant as to whether R-
`
`l234yf is disclosed in the prior art, such as Inagaki and Podchernjaev. A disclosure and
`
`discussion of R—l225zc is not the closest prior art; a disclosure of R—l234yf or R-l234ze is the
`
`closest prior art.
`
`During the prosecution of the ‘948 application, the Patent Owner did not
`
`provide any explanation to distinguish the toxicity of the compounds of Inagaki from the
`
`compounds in the ‘120 Patent. That is, there is no explanation why Inagaki can disclose
`
`identical compounds used for identical uses as the compounds disclosed in the ‘120 Patent, yet
`
`assert the claims of the ‘ 120 Patent are allowable based on the toxicity of the compounds. The
`
`comparison to R—l225zc is a straw man argument that should not afford patentability to claimed
`
`compounds that were known in the prior art. Simply reciting the inherent and intrinsic properties
`
`of a known compound for a known use does not rise to the level of patentability.
`
`D. Global Warming Potential (GWP)
`
`There is nothing patentable about solely pointing out the Global Warming Potential
`
`(GWP) of a known compound, either. GWP is a predictable linear quality of a compound or
`
`composition. The GWP of R—l234yf is 4. The GWP of R-l234ze is 6. These are not arbitrary
`
`values, nor values “discovered” by the inventors of the ‘120 Patent.
`
`The patentee’s assertion
`
`that they “invented” the claimed alkene compounds, i.e. R—l234yf and R-l234ze, because they
`
`have a GWP below 75 or 150 is irrelevant to patentability, since (1) GWP is an inherent feature
`
`of any compound, such as R—l234yf, (2) the known GWP of R—l234yf is 4 and (3) R—l234yf and
`
`R-l234ze were previously broadly disclose