Statement of Reasonable Likelihood That At Least One Claim of U.S. Pat. No. 8,065,882
`is Invalid
`
`Customer No.: 26308
`
`Parent
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of
`
`Inventors:
`
`Rajiv R. Singh et al.
`
`Patent No. (Application No.): 8,065,882 (12/412,342)
`
`Filed:
`
`Title:
`
`26 March 2009
`
`Compositions Containing Fluorine Substituted Olefins
`
`RE UEST FOR INTER PARTES REEXAMINATION
`
`
`
`
`
`Mail Stop Inter Parres 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, Tlalncpantla, CP. 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 of U.S. Pat. No. 8,065,882 (the ‘882 patent),
`
`which was filed on 29 March 2009 as U.S Patent Appl. No. 12/412,342 (the ‘342
`
`application) by Rajiv R. Singh, Hang T. Pham, David P. Wilson, and Raymond H.
`
`Thomas. A copy of the entire ‘882 patent as issued on November 29, 201 1 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,
`
`Page 1 of 75
`
`Arkema Exhibit 1058
`
`Arkema Exhibit 1058
`
`

`
`Statement of Reasonable Likelihood That At Least One Claim of U.S. Pat. No. 8,065,882
`Is Invalid
`
`and are listed below.
`
`In accordance with the requirements set ‘forth in 35 U.S.C. § 31 1,
`
`the cited prior art is applied to allowed claims 1-52 of the ‘882 patent.
`
`The following patents and printed publications have been analyzed:
`
`1.
`
`2.
`
`JP — 04-1 10388 (Inagaki)
`
`NASA Contract NAS-7-918, “Nearly Azeotropic Mixtures to Replace Refrigerant
`
`R—12 (NASA Contract)
`
`3
`
`4.
`
`5
`
`6
`
`7
`
`8
`
`Oberle, et al, U.S. Patent No. 6,374,629 (0berle)
`
`Bivens, et al., U.S. Pat. No. 6,783,691 (Bivens)
`
`Mahler, ct al., U.S. Pat. No. 6,991,744 (Mahler)
`
`Musso, U.S. Pat. No. 6,695,973 (Musso)
`
`RU 2 073 058 (Podchernjaev)
`
`Proposal for a Regulation of the European Parliament and of The Council on
`
`Certain Fluorinated Greenhouse Gases, August 1 1, 2003 (EU Proposal)
`
`9.
`
`Fundamental Equation of State For 2,3,3,3-Tetrafluoropropene (HFO-1234yt)
`
`Ryo Akasaka, et al. (HFO-1234yf Property Sheet)
`
`10.
`
`1 1.
`
`12.
`
`Nimitz et al., U.S. Pat. No. 5,611,210 (Nimitz)
`
`Novak eta1., U.S. Pat. No. 6,176,102 (Novak)
`
`J. PHYS. CI1Jj1V1.A 101 “Rate Constants for the Reactions of OH with HFC-245cb
`
`(CH3CF2CF3) and Some F1uoroa1kenes(CHgCHCF3, CHgCFCF3, and CFgCFg)”, 9118-
`
`9124 (1997) Orkin et al. (“Orkin")
`
`13.
`
`Low Global Warming F1 uorocarbons are safe and environmentally preferable,
`
`(2009) Singh, ct al. (“Singh”)
`
`14.
`
`15.
`
`16.
`
`17.
`
`18.
`
`19.
`
`20.
`
`21.
`
`Luly, et al. U.S. Pat. Pub. No. 200870003127 (“Luly”)
`
`Nair, et al., U.S. Pat. No.6,548,719 (“Nair”)
`
`Palinchak, U.S. Pat. No. 4,842,024 (“Pa1inehak”)
`
`Mukhopadhyay et al., U.S. Pat. No. 7,345,209 (“Mukhopadhyay”)
`
`Noda et al., U.S. Pat. No. 5,899,086 (Noda)
`
`Lake et al., U.S. Pat. No. 6,118,099 (Lake)
`
`Cho et al., (U.S Pat. No. 6,425,249 (Cho)
`
`Konzo, et al., WINTER AIR CONDITIONING, (The Industrial Press, 1958) (Konzo)
`
`Page 2 of 75
`Page 2 of 75
`
`2
`
`

`
`Statement of Reasonable Likelihood That At Least One Claim of U.S. Pat. No. 8,065,882
`Is Invalid
`
`22.
`
`Office Action Closing Prosecution, Reexamination Serial No. 95x’000,576
`
`It is hereby certified that a copy 01‘ this request as being served in its entirety on the
`
`patent owner at the following address:
`
`101 Columbia Road, PO Box 2245, Morristown,
`
`NJ 07962-2245.
`
`]t is Iiirther certified that the estoppels provisions 013? C.F.R. §1.907 do not prohibit
`
`this interpartes reexamination.
`
`l.
`
`CLAIMS FOR WHICH REEXAMINATION IS REQUESTED
`
`Reexamination is requested of Claims 1-52 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. § l03(b) the subject matter recited by claims 1-52 of the
`
`‘882 patent. Particularly:
`
`A.
`
`Claims 1-5, 7-11, 16-24, 30-33, 36-40, 47-48 and 50 are Anticipated
`
`By lnagaki in View of the Patent Owner’s Own Admission.
`
`Claims 1-5, T-I 1, 16-24, 30-33, 36-40, 4?-48 and 50
`
`are Obvious
`
`under 35 U.S.C.
`
`§
`
`l03(b)
`
`in View of the Patent Owner’s Own
`
`Admission.
`
`. Claims 13-15, 27, 34-35, and 41-46 and 51 a1'e Obvious Over Inagaki
`
`in View ofthe Patent Owner’s Own Admission and Further in View of
`
`Bivens.
`
`Claims 12, 28-29 are Obvious Over Inagaki
`
`in View of the Patent
`
`Owner’s Own Admission and Further in View of Oberle.
`
`Claims 25 and 26 are Obvious Over [nagaki
`
`in View of the Patent
`
`Owner's Own Admission and Further in View of Nimitz.
`
`Claims I and 6 are Obvious Over Novak in View of lnagaki and
`
`further in view of the Patent Owner’s Own Admission.
`
`. Claims 1-5, 7-11, 16-24, 30-32, 33, 36-40, and 47, 48 and 50 are
`
`Obvious Over Inagaki in View of Palinchak.
`
`Claims 13-15, 2?, 34, 41-46 and 5 lare Obvious Over Inagaki in View
`
`ot‘Palinchak and Further in View of Bivens.
`
`Page 3 of 75
`Page 3 of 75
`
`

`
`Statement of Reasonable Likelihood That At Least One Claim of U.S. Pat. No. 8,065,882
`Is Invalid
`
`Claims 12, 28-29 are Obvious Over lnagaki in View of Palinchak and
`
`Further in View of Oberle.
`
`Claims 25 and 26 are Obvious Over Inagaki in View ol‘Palinehak and
`
`Further in View of Nimitz.
`
`. Claims 1 and 6 are Obvious Over Novak in View of Palinchak and
`
`Further in View oflnagaki.
`
`. Claims
`
`I, 3-5, 7,
`
`l0-ll, 16-24, 30-33, 36-40, 47-48 and 50 are
`
`Obvious Over Podchernjaev in View of lnagaki in View of the Patent
`
`Owner’s Own Admission.
`
`. Claims 13-15, 27, 34, 41-42 are Obvious Over Podchemjaev in View
`
`Inagaki in View of the Patent Owner’s Own Admission and Further in
`
`View o1‘Bivens.
`
`. Claims 12 and 28-29 are Obvious Over Podchernjaev and Inagaki in
`
`View of the Patent Owner’s Own Admission a11d Further in View of
`
`Obe rle.
`
`. Claims 25 and 26 are Obvious Over Podchcrnjaev and lnagaki in View
`
`of the Patent Owr1er’s Own Admission and Further in View ofNimitz.
`
`. Claims 1, 3, 7, 11, 16-24, 32-33, 36-39, and 45-47 Are Obvious Over
`
`Inagaki in View of the Patent Owner’s Own Admission and Further i11
`
`View oI‘Orkin.
`
`THE ‘882 PATENT AND BACKGROUND
`
`The ‘882 patent is directed towards refrigerants containing at least one multi-
`
`fluorinated olefin. See the ‘882 patent, column I, lines 22-24.
`
`In particular, the ‘882
`
`patent is directed towards fluoroalkenes containing 3 to 4 carbon atoms, and at least one
`
`double bond.
`
`Id. at column 3, lines 58-61. Such compositions include R-l234yf and R-
`
`l234ze, known as hydrolluoroolelins (HFOs), which 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 either be referred to as an
`
`l-IFO, HFC, or R. For example, HFC-1234yf, HFO—l234y[‘, and R-1234y1‘ all refer to the
`
`same compound, equivalently this is described by others as 2,3,3,3-tetrafluoropropenc or
`
`Page 4 of 75
`Page 4 of 75
`
`4
`
`

`
`Statement of Reasonable Likelihood That At Least One Claim of U.S. Pat. No. 8,065,882
`Is Invalid
`
`l,l,l,2-tetrafluoropropene. Similarly, HFC-l234ze, HFO-1234ze, and R-l234ze all refer
`
`to the same compound, l,3,3,3-tetrafluoropropcne referred to by the Patcntee as 1,l,l,3-
`
`tetrafluoropropene.
`
`It should be noted that lluorinated alkenes (HFOS) are themselves
`
`hydrolluorocarbons (HFCs) having at least one double bond embodied in their structure.
`
`For consistency, unless referring to specific language from a patent or publication, “R-”
`
`will be used as the suffix to refer to the discussed refrigerants.
`
`Since at least the early l990s, HFCs have been used and contemplated for use as
`
`replacements for chlorofluorocarbons (CFCS) and hydrochlorolluorocarbons (HCFCS),
`
`because of their zero ozone-depletion characteristics. See Mahler at col. 1, lines 30-43.
`
`Likewise, HFCS generally have a lower Global Warming Potential (GWP) than C‘-FCS.
`
`See Musso at col. 2,
`
`line 60 — col. 3,
`
`line 4. Particularly, replacements have been
`
`contemplated for dichlorodilluoromethane, CClgF3, 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. R-12 has been used widely in automobile air conditioners.
`
`See id. at p. 1. Replacement of chlorolluorocarbons was directed by an international
`
`agreement, known as the “Montreal Protocol.” Id. at p. 2.
`
`It had been determined that
`
`certain nearly azcotropic fluid mixtures were desired as replacements for R-I2.
`
`Id. at p.
`
`3.
`
`An example of a [luid used as a replacement for R-12 is l,l,l,2-tetralluoroethane,
`
`commonly referred to as R-134a, which is considered as being non-toxic, non-flammable,
`
`and non-ozone-damaging.
`
`Id. at p. 2. However, legislation, 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.
`
`GWP was defined as a concept
`
`in 1990 by the Intergovernmental Panel on
`
`Climate Change (“IPCC”) as cited by the Patent Owner in Luly at
`
`0032. GWP is a
`
`calculatable characteristic of how much heat a greenhouse gas traps in the atmosphere,
`
`relative to carbon dioxide.
`
`It compares the amount of heat trapped by a certain mass of
`
`the gas in question to the amount of heat trapped by a similar mass of carbon dioxide.
`
`Page 5 of 75
`Page 5 of 75
`
`5
`
`

`
`Statement of Reasonable Likelihood That At Least One Claim of U.S. Pat. No. 8,065,882
`Is Invalid
`
`GWP is expressed as a factor ofcarbon dioxide (whose GWP is standardized to I). The
`
`GWP for R-l34a is about I400 and thus needs replacement with a "refrigerant with a
`
`lower GWP, such as R-l234yf, which has a GWP of about 4. See HFO-l234yf Property
`
`Sheet at l. R-1234ze also has a GWP of about 6. See Singh.
`
`Subsequent technical
`
`reviews have led to successive refinements of the GWPS of fluorinated molecules as
`
`more andfor better data were obtained.
`
`The most recent IPCC data set is commonly
`
`called AR4.
`
`To be certain, the HFOS disclosed and claimed in the claimed methods of the ‘882
`
`patent were known and used prior to the filing of the ‘882 patent by the Patentee. For
`
`example, Nair, which is assigned to the Patentee, describes and claims a process for
`
`producing HFOS having the same formula as is claimed in the ‘882 patent. See Col. 6,
`
`lines 5-I5, Claim 1. Though not written in identical fashion as the lbrmula of the ‘882
`
`patent, the formula of Nair encompasses and is directed towards the same compounds,
`
`e.g. R-123-4ze and R-1234yf, as those which are disclosed and claimed in the ‘882 patent.
`
`The ‘882 patent was filed on March 26, 2009 with 27 claims. The ‘882 patent
`
`was filed as a divisional of a series of applications, with the earliest priority date being
`
`October 25, 2002. As "filed, the claims of the ‘882 patent were directed towards heat
`
`transfer compositions, blowing agents, heat transfer methods, foarnable compositions,
`
`and solvating methods, with the independent claims being directed towards compositions
`
`having the broad formula:
`
`xcr,R,3_,,
`
`(1)
`
`where X is a C3 , C3 C4 or C5 unsaturated, substituted or unsubstituted, radical,
`
`each R is independently Cl, F, Br, I or H, and 2 is 1 to 3,
`
`and the more particular formula:
`
`T
`J
`\_‘
`X-:__m»,~——:<
`R
`
`(11)
`
`Page 6 of 75
`Page 6 of 75
`
`

`
`Statement of Reasonable Likelihood That At Least One Claim of U.S. Pat. No. 8,065,882
`Is lnvalid
`
`Where R’ is (CR»_»),,Y, Y is CF3, each R is independently Cl, F, l, or H and n is 0 or 1.
`
`The claims also require at least one hydrogen on the unsaturated terminal carbon.
`
`On June 12, 2009, the Applicant filed a preliminary amendment adding claims 28-
`
`30, directed specifically to systems and methods for conditioning the air
`
`in an
`
`automobile. These claims do not appear in any later listings of claims, and they appear to
`
`have never been subject to prosecution or discussed in prosecution.
`
`On December 1?, 2009, the Applicant filed a Petition to Make Special Under the
`
`Green Technology Pilot Program. The Applicant also filed a preliminary amendment to
`
`reduce the claims to no more than three independent claims and no more than twenty
`
`total claims, as required by the Program. This amendment included amending claims 1
`
`and 11, cancelling claims 9, 10, 12-23, and adding new claims 24-33. (It is unclear what
`
`action was taken on original claims 24-27, and claims 28-30 that were added in the
`
`Preliminary Amendment of June 12, 2009, but these claims do 11ot appear in any further
`
`listing of claims and they were never subject to prosecution.)
`
`Claim 1 was amended to include the limitations that said at least one fluoroalkene
`
`of Formula l comprises an unsaturated terminal carbon and that not more than one F
`
`substituent is located on said unsaturated terminal carbon, and wherein said fluoroalkene
`
`has no substantial acute toxicity. Claim 1 was further amended to include a limitation for
`
`the lubricant, claiming that the lubricant comprises polyol ester andfor poly alkylene
`
`glycol.
`
`Claim 1] was amended to change the limitation regarding the number ol‘ F
`
`substituents on the unsaturated terminal carbon of the compound of tetrafluoropropene
`
`from “not more than one F substituent” to “no F substitutents”.
`
`New Claims 24-33 were directed to methods of transferring heat to provide
`
`heating or cooling of air
`
`in an automobile, a commercial
`
`refrigeration system, a
`
`residential freezer or refrigerator, or a chiller using a heat transfer fluid comprising at
`
`least one lubricant and at least one fluoroalkene o['Fom1ula II.
`
`On February l9, 2010,
`
`the U.S. Patent & Trademark Oflice (PTO) issued a
`
`Restriction Requirement,
`
`requiring the Applicant
`
`to elect either the heat
`
`transfer
`
`compositions or methods of transferring heat for fi.lI’ll'1Cl‘ prosecution. On March l9,
`
`Page 7 of 75
`Page 7 of 75
`
`7"
`
`

`
`Statement of Reasonable Likelihood That At Least One Claim of U.S. Pat. No. 8,065,882
`Is Invalid
`
`2010,
`
`the Applicant elected to prosecute the claims directed towards methods of
`
`transferring heat (claims 24-33, which were new claims added by the Preliminary
`
`Amendment of December 19, 2009).
`
`On July 6, 2010, the PTO issued an Office Action, rejecting the pending claims of
`
`the ‘882 patent. Claims 24-28 and 31-33 were rejected unde1' 35 U.S.C. § 103(a) as being
`
`unpatentable over JP 4-110388 (Inagaki et al.) in view of U.S. Pat. No. 5,370,812
`
`(Brown). Claims 24-32 were rejected under 35 U.S.C. § l03(a) as being unpatentable
`
`over U.S. Pat. No. 6,076,372 (Acharya et al.) in view of Brown. Claims 24-26, 31 and 32
`
`were provisionally rejected on the ground of nonstatutory obviousness-type double
`
`patenting as being unpatentable ever claim 5 of copending Application No.
`
`1 1,850,028 in
`
`view of Brown. Claims 24-32 were provisionally rejected on the ground of nonstatutory
`
`obviousness-type double patenting as being unpatentable over claims 20-22 of copending
`
`Application No. 11f385,259 in view of Brown. Claims 24-28, 31 and 32 were
`
`provisionally rejected on the ground of nonstatutory obviousness-type double patenting
`
`as being unpatentable over claims 20-22 of copending Application No.
`
`l2x’432,466 in
`
`view of Brown.
`
`On October 14, 2010, the Applicant responded to the Office Action, amending
`
`Claims 24, 32, and 33, and adding new claims 34-66. Claims 32 and 33 were amended to
`
`correct infomialities, namely, Claim 32 was amended to depend from independent claim
`
`24, instead of claim 1 (which had been cancelled), and Claim 33 was amended to refer to
`
`1,1,1,2-tetralluoropropene (HFO-1234yl), instead of 1,1,1,3-tetralluoropropene, which is
`
`actually HFO-l234ze.
`
`Claim 24 was amended to specifically claim a method of transferring heat to
`
`provide cooling ofair in an automobile, and removed other potential uses for the heat
`
`transferring method such as providing heating or cooling of air in a commercial
`
`refrigeration system, a residential freezer or refrigerator, or a chiller. Claim 24 was
`
`further amended to eliminate the limitation that the lubricant comprises polyol ester
`
`andfor poly alkylene glycol.
`
`Claim 33, which claimed a method for conditioning the air in an automobile,
`
`comprising providing a vapor compression air conditioning system, was amended to
`
`Page 8 of 75
`Page 8 of 75
`
`

`
`Statement of Reasonable Likelihood That At Least One Claim of U.S. Pat. No. 8,065,882
`Is Invalid
`
`change references from “refrigerant” to “heat transfer fluid” as an element of’ the vapor
`
`compression air conditioning system.
`
`New claims 34-66 were also added to the application.
`
`In two personal
`
`interviews held on July 28, 2011 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.
`
`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.
`
`On December 20, 2010 the PTO mailed a Notice of Allowance. The Examiner
`
`made only minor amendments correcting typographical and spelling errors. The
`
`Examiner stated that the claims are allowable over the closest prior art: Inagaki (JP 4-
`
`1 H1388), Brown (US 5,370,812), and Acharya et al. (US 6,076,372) because Inagaki does
`
`not teach or fairly suggest automobile air conditioning and Acharya and Brown do not
`
`teach the unexpectedly reduced toxic properties ofthe instantly claimed fluoroalkenes as
`
`demonstrated in the Declaration that was filed with the Amendment of October 14, 2010.
`
`After the NOA, on March 4, 2011 the Applicant submitted an Information
`
`Disclosure Statement (IDS). A preliminary amendment was also submitted with the IDS.
`
`With this amendment, Applicant added dependant claims 67-75. On March 22, 2011, the
`
`Applicant submitted a second IDS. On March 23, 2011, the Examiner indicated that the
`
`lDSs were reviewed and indicated that the claims were allowable.
`
`On April I, 20! I the PTO mailed a Notice of Allowance.
`
`The patent issued on November 29, 201 1.
`
`III.
`
`EXPLANATION OF PERTINENCY AND MANNER OF APPLYING
`
`CITED ART TO THE CLAIMS FOR WHICH REEXAMINATION IS
`
`REQUESTED
`
`The claims were held to be allowable over the prior art because it was argued that
`
`the prior art did not anticipate or obviate the claimed compositions. However, the prior
`
`Page 9 of 75
`Page 9 of 75
`
`9
`
`

`
`Statement of Reasonable Likelihood That At Least One Claim of U.S. Pat. No. 8,065,882
`Is Invalid
`
`art does in fact disclose such compositions, with the prior art specifically disclosing and
`
`teaching the identical compositions being claimed in the ‘882 patent for the identical
`
`uses.
`
`Identical compounds have identical characteristics, and the two are not separable.
`
`For example, the particular compounds recited in the ‘882 Patent as falling within the
`
`scope of the claims of the present invention, e.g. R-l234ze, R-l234yf, and R-124311‘,
`
`have all been disclosed and tested in the prior art for use as heat transfer composition.
`
`There is no structural difference between the prior alt compounds and the claimed
`
`compounds of the ‘882 patent. As such, any suggestion that the claimed compounds are
`
`patentablc ever the prior art based upon the characteristics of these 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. Such recitation of inherent qualities of known compounds for known uses
`
`does not arise to the level of palentability. Accordingly, there is a reasonable likelihood
`
`that the petitioner would prevail (RLP) with respect to at least one, and more likely all, of
`
`the claims ofthe ‘882 patent.
`
`Generally speaking, the claims are directed towards a method of cooling air in an
`
`automobile using heat transfer compositions having the formula:
`
`Where R’ is (CR3),,Y, Y is CF3, each R is independently Cl, F, I, or H and n is 0 or 1.
`
`The claims also require at
`
`least one hydrogen on the unsaturated temiinal carbon.
`
`Examples of such compounds include R-1234yf,
`
`i.e.
`
`l,l,l,2-tetralluoropropene or
`
`2,3,3,3-tetrafluoropropene, R-l234z:e, i.e. 1,3,3,3-tetrafluoropropene, R-1243zI‘, i.e. 3,3,3-
`
`trilluoropropene, or possibly tetrafluorobutene compounds.
`
`Independent claim 50 is
`
`directed towards R-l234yf, specifically.
`
`Such compounds were known in the prior art
`
`as is evident by the following references.
`
`For example, JP — 04-110388 (lnagaki) discloses the compounds of the “882
`
`patent.
`
`lnagaki 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
`
`Page 10 of 75
`Page 10 of 75
`
`10
`
`

`
`Statement of Reasonable Likelihood That At Least One Claim of U.S. Pat. No. 8,065,882
`Is Invalid
`
`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
`
`FOIT11-1449. More particularly, the disclosed and claimed lluorocarbons are represented
`
`by the formula:
`
`C 3 Hm F11
`
`wherein m=an integer l to 5, n=an integer 1 to 5, and m+n=6. The formula reads directly
`
`on some of the fluorocarbons of the ‘882 patent, i.e. R-l234yf, R-l234ze, and R-l243z1°.
`
`lnagaki, relied upon in the present reexamination, was made of record during the
`
`prosecution of the ‘882 patent (the ‘342 application), and was used as a reference to reject
`
`the claims in the ‘342 application. However, the cited prior art can still provide the basis
`
`that there is a reasonable likelihood that the claims of the ‘882 patent are invalid.
`
`“A
`
`showing that there is a reasonable likelihood that the requester would prevail with respect
`
`to at least 1 of the claims challenged in the request is not precluded by the fact that a
`
`patent or printed publication was previously cited by or to the Office or considered by the
`
`Office.” 35 U.S.C. § 312. As the PTO noted when dismissing a petition by the Patent
`
`Owner to dismiss a reexamination proceeding:
`
`forth for consideration has been
`the issue being brought
`Whether
`proceeding
`does
`not preclude
`in
`a
`previous Office
`addressed
`reexamination under
`the current standard for ordering inter partes
`reexamination. Under 35 U.S.C. 312,
`the Office has the discretion to
`reconsider issues that have been addressed in the past, provided the
`estoppel provisions of 35 U.S.C. 317 do not apply. The determination of
`whether the questions presented in the request are new is no longer a
`prerequisite to the determination of whether
`to order
`inter‘ parres
`reexamination.
`
`In re Flaherty er 511., Decision on Petition to Vacate Order Granting infer Partes
`Reexamination as Ultra Vfres, at p. 4 (The temporary alteration of 35 U.S.C. § 312 under
`the American lnvents Act (AIA) maintains this position. See 35 U.S.C. § 312).
`
`The Examiner indicated that the claims should be allowed, based on a declaration
`
`stating that the claimed compounds were less toxic that another compound, i.e. R-l225zc,
`
`thereby overcoming the rejection based upon Inagaki. R-l225zc and its properties are
`
`irrelevant to the disclosure of both Inagaki and the ‘882 patent, and are irrelevant to the
`
`Page 11 of 75
`Page 11 of 75
`
`11
`
`

`
`Statement of Reasonable Likelihood That At Least One Claim of U.S. Pat. No. 8,065,882
`Is Invalid
`
`patentability of the claims in overcoming the disclosure of Inagaki. The particular
`
`compounds that Inagaki discloses are the same compounds as being claimed in the ‘882
`
`patent. That
`
`is, Inagaki discloses R-l234ze, R-l234yf, and R-124321‘,
`
`the identical
`
`compounds being claimed in the ‘882 patent. As the PTO has previously noted in the
`
`reexamination of the ‘45l patent‘ The fact that these compounds a1'e more or less toxic
`
`than an unrelated compound, whether it be R-l225zc, R-12, or another refrigerant, does
`
`not change the fact that the claimed compounds are explicitly disclosed in Inagaki.
`
`Further, because the disclosed compounds in Inagaki were not necessarily named
`
`in the same fashion as
`
`in the ‘882 patent,
`
`i.c.
`
`l,l,1,3-tetrafluoro-1-propcne vs.
`
`transHFOl234ze and F3C-CF=CHg VS. HFO-l234yf_,
`
`it may have not been fully
`
`appreciated or realized that Inagaki disclosed the identical compounds as those disclosed
`
`in the ‘882 patent.
`
`Finally,
`
`lnagaki was stated by the Examiner, upon allowance, to not teach or
`
`fairly suggest automobile air conditioning. But Inagaki does, in fact, teach and fairly
`
`suggest use of such heat transfer fluids for use in automobile air conditioning systems.
`
`Inagaki is directed towards fluoroalkenc compounds that are to be used as replacements
`
`for CFCS and HCFCS, e.g. R-12, which were used at
`
`the time of Inagaki as the
`
`predominant refrigerants in the automobile air conditioning industry. Given that Inagaki
`
`states that the disclosed compounds a1'e to be replacements for these compounds, it would
`
`be well understood that they would be used for the same purposes, e.g. automobile air
`
`conditioning systems, as the compounds they were to replace. The Patentee argued
`
`during prosecution that the used of the claimed compounds was distinguished from the
`
`identical compounds disclosed in Inagaki by being used in an automobile air conditioning
`
`system, but there is no support for such an argument in the specification or in Inagaki,
`
`particularly when Inagaki is directed towards replacement for refrigerants that were the
`
`predominant refrigerants used in automobile air conditioning.
`
`The compositions of
`
`Inagaki, being potential replacements for refrigerants used in automobile air conditioning
`
`systems, implicitly shows that the disclosed compounds can be used in automobile air
`
`conditioning systems.
`
`'- Rrscxamination of ‘451 patent, OACP, at p. 24-25 (stating that Hl*(J—l225zc is not the closest prior art, but
`rhar “Inagaki, which discloses the claimecl compound R-123-‘-lyf and its use :1 3 a fluid For heat transfer, is the
`closest prior art")
`
`12
`
`Page 12 of 75
`Page 12 of 75
`
`

`
`Statement of Reasonable Likelihood That At Least One Claim of U.S. Pat. No. 8,065,882
`Is Invalid
`
`It should be understood that the apparatus used in Inagaki are a matter of
`
`experimental convenience and is
`
`irrelevant
`
`to the broader
`
`teaching of lnagaki.
`
`Regardless of the nature of the heat sourcefsink medium used for testing purposes,
`
`[nagaki teaches the utility of a number of lluoroalkene refrigerants, i.e. R-l234ze and R-
`
`l234yf, across a range of evaporator and condenser conditions relative to the behavior of
`
`traditional CFC and HCFC fluids, including R-12 and R-22.
`
`Inagaki further teaches that
`
`these fluoroalkene fluids may be used across a range of applications that traditionally
`
`used R-12 and R-22 that include heat pumping and air conditioning.
`
`lnagaki describes
`
`systems that have been used in automobile air conditioning systems. As has been well
`
`known for at least the last 50 years, a “heat pump process
`
`is used in summer for
`
`cooling air and in winter for heating air,” i.e. used for air conditioning systems. Konzo,
`
`et al., WI.\JTI;'R AIR CONDITIONING, p. 590 (The Industrial Press, 1958). Likewise, heat
`
`pumps, i.e. the devices used for testing purposes in Inagaki, have been employed in
`
`automobile air conditioning systems. Examples of the use of heat pump systems in
`
`automobile air conditioning systems include Lake, Noda, and Cho.
`
`In fact, though the Patentee argues that the identical compounds in lnagaki are
`
`directed towards different uses than those compounds in the ‘882 patent, e.g. automobile
`
`air conditioning and other types of air conditioning, the specification of the ‘882 patent
`
`does not support such a distinction: “The present methods, systems and compositions are
`
`thus adaptable for use in connection with automotive air conditioning systems and
`
`devices, commercial refrigeration systems and devices, chillers, residential refrigerator
`
`and freezers, general air conditioning systems, heat pumps, and the like.”
`
`1][0047].
`
`There is nothing provided in the specification of the ‘882 patent that would distinguish
`
`the use of the disclosed refrigerants in an automobile system compared to another
`
`refrigeration system, and the systems tested in lnagaki are the same systems disclosed in
`
`the ‘882 patent.
`
`As such, Inagaki was not properly considered by the Patent Office, and Inagaki
`
`fomis the basis of an RLP with respect to the claims of the ‘882 patent.
`
`In the case of
`
`some of the other references that form the basis of this request,
`
`the references were
`
`submitted to the Examiner after a Notice of Allowance (NOA) had already been issued.
`
`The references were parts of voluminous lDSs on March 4, 2011 and March 22, 2011,
`
`Page 13 of 75
`Page 13 of 75
`
`13
`
`

`
`Statement of Reasonable Likelihood That At Least One Claim of U.S. Pat. No. 8,065,882
`Is Invalid
`
`with the two IDSS totaling well in excess of 1000 pages of documents. The Patentee
`
`noted that
`
`these references were relied upon in European Oppositionsz to related
`
`applications and in Reexaminations.
`
`In an interview summary on March 23, 201], one
`
`day after receiving the second IDS,
`
`the Examiner stated that she had reviewed and
`
`considered the infomlation in the IDSs. However, given that the enormity of the IDSs
`
`and the short time between submission of the materials and review of the materials, the
`
`other references relied upon also form the basis of an RLP of patentability for the clain1s
`
`of the ‘882 patent.
`
`For
`
`example,
`
`included in
`
`these voluminous
`
`lDSs were
`
`three
`
`separate
`
`reexamination requests, 95s’000,574 (reexamination of US. Pat. No. 7,524,805 (the ‘805
`
`patent)), 95f000,576 (reexamination of US. Pat. No. 7,279,451 (the ‘451 patent)), and
`
`95s’000,630 (reexamination ofU.S. Pat. No. 7,825,081 (the ‘081 patent)), which were all
`
`granted by the PTO. The three reexaminations, which are assigned to the same patentee
`
`as the ‘882 patent, and conceded by the patentee as disclosing similar subject matter to
`
`the ‘882 patent, all were granted and, importantly in view of the new standard now
`
`applied to inter partes reexaminations, substantially all of the claims of the three
`
`reexaminations currently stand rejected by the PTO.
`
`In fact, the PTO recently issued an
`
`Office Action Closing Prosecution (OACP) for reexamination of the ‘45l patent, with the
`
`PTO rejecting all 52 of the pending claims over the prior art. The OACP has been
`
`submitted along with this request to demonstrate the PTO’s position on the compounds
`
`covered by the present claims in view of the prior art relied upon by the requester. These
`
`reexaminations provide further evidence that there is an RLP with respect to at least one
`
`claim of the ‘882 patent.
`
`It should be noted that the reference, Fundamental Equation of State For 2,3,3,3-
`
`Tetrafluoropropene (HFO-l234yt) Ryo Akasaka, et al. (HFO-l234yf Property Sheet),
`
`does not necessarily predate the filing of the ‘882 patent. However, the HFO-1234y'f
`
`property sheet is only being used to show a universal fact that the GWP is an inherent
`
`quality or characteristic of a compound, specifically an inherent quality of HFO-l234yf.
`
`As such, it is an acceptable reference. See In re Wilson, 311 F.2d 266, 135 USPQ 442
`
`3 The related European patent. EP—B—l 716 216 has recently been held invalid in the European Opposition
`Proceedings.
`
`14
`
`Page 14 of 75
`Page 14 of 75
`
`

`
`Statement of Reasonable Likelihood That At Least One Claim of U.S. Pat. No. 8,065,882
`Is Invalid
`
`(C.C.P.A. 1962) (A reference cited to show a universal
`
`fact, such as a compounds
`
`characteristic, need not be available as prior art before appiicant’s filing date). The
`
`references will be discussed in further detail with respect to the individual claims, below.
`
`A. Claims 1-5, 7-11., 16-24., 30-33, 36-40, 47-48, and 50 are Anticipated
`
`By lnagaki in View of the Patent Owner’s Own Admission
`
`An RLP exists with respect to claims 1-5, 7-1 1, 16-24, 30-33, 36-40, 47-48 and
`
`50 as they are anticipated under 35 U.S.C. § l02(a) by lnagaki in VlCW of the Patent
`
`Owncr’s own