throbber
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.
`
`95/002,030
`
`08/20/2012
`
`8065882
`
`9404.21591—REX
`
`2300
`
`91970
`7590
`12/13/2013
`HONEYWELL/FOX Romscmrp
`Patent Services
`101 Columbia Road
`Morristown, NJ 07962
`
`XU, LING X
`
`3991
`
`MAIL DATE
`
`12/13/2013
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL—90A (Rev. 04/07)
`
`1 of 73
`
`Arkema Exhibit 1063
`
`Arkema Exhibit 1063
`
`1 of 73
`
`

`
`Transmittal of Communication to
`
`
`
`Third Party Requester
`.
`.
`
`Control No.
`
`95/002,030
`E
`'
`
`Lin Xu
`
`Patent Under Reexamination
`
`8065882
`A t U "I
`
`3991
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`Ij (THIRD PARTY REQUESTER‘S CORRESPONDENCE ADDRESS) TI
`
`RYAN KROMHOLZ & MANION, S.C.
`POST OFFICE BOX 26618
`MILWAUKEE, WI 53226
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
`in the above-identified reexamination prceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this communication,
`the third party requester of the inter partes reexamination may once file written comments within a
`period of 30 days from the date of service of the patent owner's response. This 30-day time period is
`statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the interpartes reexamination, no responsive
`submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the
`Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of the
`communication enclosed with this transmittal.
`
`U.S. Patent and Trademark Office
`PTOL-2070 (Rev. 07-04)
`
`20f73
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`Paper No. 20131011
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`2 of 73
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`

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`ACTION CLOSING PROSECUTION 95/002,030
`
`8065882
`
`Control No.
`
`Patent Under Reexamination
`
`
`
`Lin Xu
`
`3991
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`Responsive to the communication(s) filed by:
`Patent Owner on 22 May, 2013
`
`Third Party(ies) on 19 June 2013
`
`Patent owner may once file a submission under 37 CFR 1.951(a) within 1 month(s) from the mailing date of this
`Office action. Where a submission is filed, third party requester may file responsive comments under 37 CFR
`1.951 (b) within 30-days (not extendable- 35 U.S.C. § 314(b)(2)) from the date of service of the initial
`submission on the requester. Appeal cannot be taken from this action. Appeal can only be taken from a
`Right of Appeal Notice under 37 CFR 1.953.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
`Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this Office action.
`
`PART I. THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`
`1. I:I Notice of References Cited by Examiner, PTO-892
`2. IX] Information Disclosure Citation, PTO/SB/08
`3.I:I
`
`PART II. SUMMARY OF ACTION:
`
`
`1a. IX] Claims 1-59 61-73 75-92 94 and 96-136 are subject to reexamination.
`1b. I:I Claims j are not subject to reexamination.
`
`IX] Claims 60 74 93 and 95 have been canceled.
`2.
`
`3. El Claims j are confirmed. [Unamended patent claims]
`4. El Claims j are patentable. [Amended or new claims]
`
`IXI Claims 1-59 61-73 75-92 94 and 96-136 are rejected.
`5.
`6. El Claims j are objected to.
`E] are not acceptable.
`I:I are acceptable
`7. E] The drawings filed on
`8 E] The drawing correction request filed on j is:
`I:I approved.
`|:I disapproved.
`9 El Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d). The certified copy has:
`I:I been received.
`I:I not been received.
`I:I been filed in Application/Control No j
`10. El Other _
`
`U.S. Patent and Trademark Office
`PTOL-2065 (08/06)
`
`30f73
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`Paper No. 2013101 1
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`3 of 73
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`Application/Control Number: 95/002,030
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`Page 2
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`Art Unit: 3991
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`Detailed Action
`
`Status of Proceedings
`
`August 20, 2012:
`
`October 23, 2012:
`
`A request for inter partes reexamination of claims 1-52 of
`United States Patent Number 8,065,882 (hereinafter “the
`‘882 patent”) was filed by a third party requester.
`
`An Order granting the request for inter partes reexamination
`of claims 1-52 of the ‘882 patent was mailed. A non—final
`Office action on the merits was also mailed on the same
`
`date.
`
`December 24, 2012:
`
`The patent owner filed a response to the non—final Office
`action including an amendment adding claims 53-136.
`
`January 25, 2013:
`
`The requester filed comments to the patent owner's
`response.
`
`May 22, 2013:
`
`June 19, 2013:
`
`The patent owner filed a supplemental response including an
`amendment cancelling claims 60, 74, 93 and 95.
`
`The requester filed comments to the patent owner’s
`supplemental response.
`
`References Cited
`
`0
`
`JP—04—110388 to lnagaki et al., (hereinafter “|nagaki”), all references to lnagaki
`
`are to the English language translation which accompanied the request filed on
`
`8/20/2012.
`
`o U.S. Patent No. 6,783,691 to Bivens et al. (hereinafter "Bivens")
`
`o U.S. Patent No. 6,374,629 to Oberle et al. (hereinafter "Oberle")
`
`o U.S. Patent No. 4,842,024 to Palinchak (hereinafter "Palinchak")
`
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`Application/Control Number: 95/002,030
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`Page 3
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`0 U. S. Patent No. 5,611,210 to Nimitz et al. (hereinafter “Nimitz”)
`
`0 U. 8. Patent No. 6,176,102 to Novak et al. (hereinafter “Novak”)
`
`o RU-2073058 to Podchernjaev et al. (hereinafter "Podchernjaev"), all references
`
`to Podchernjaev are to the English language translation which accompanied the
`
`request filed on 8/20/2012.
`
`o Orkin et al., "Rate Constants for the Reactions of OH with HFC-245cb
`
`(CH3CF2CF3) and Some Fluoroalkenes (CH2CHCF3, CH2CFCF3, CFQCFCF3 and
`
`CF2CF2)", J. PHYS. CHEM. A. 101, 9118- 9124 (1997) (hereinafter "Orkin")
`
`Scope of claims
`
`In reexamination, patent claims are construed broadly. In re Yamamoto, 740 F.2d
`
`1569, 1571, 222 USPQ 934, 936 (Fed. Cir.1984) (claims given "their broadest
`
`reasonable interpretation consistent with the specification"). The ‘882 patent contains
`
`claims 1-59, 61-73, 75-92, 94 and 96-136, as presented in the amendment filed May 22,
`
`2013. The claims are directed to a method of transferring heat to or from a fluid or body
`
`to provide cooling of air in an automobile.
`
`Independent claims 1, 33, 36, 47 and 50 are
`
`representative:
`
`(Amended) A method of transferring heat to or from a fluid or
`1.
`body to provide cooling of air in an automobile, said method
`comprising;
`(a) providing a heat transfer system comprising an
`automobile air conditioning system;
`(b) providing in said system a heat transfer composition
`comprising at least one lubricant and at least one fluoroalkene of
`Formula II:
`
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`where R‘ is (CR2)nY, Y is CF3, each R is independently Cl, F,
`|orHandnis0or1,
`provided that said fluoroalkene has four halogen substituents
`E at least one of said Rs located on the unsaturated terminal
`carbon is H, wherein said fluoroalkene has no substantial acute
`
`toxicity.
`
`(Amended) A method of providing an air conditioning system
`33.
`for conditioning the air in an automobile comprising:
`(a) providing in the automobile a vapor compression air
`conditioning system having at least one compressor and at least
`one condenser; and
`(b) providing a refrigerant in said system for cooling the air in
`the automobile, said refrigerant having no substantial acute toxicity
`E comprising from about 5% by weight to about 99% by weight of
`1,1,1,2—tetrafluoropropene (R-1234yf).
`
`(Amended) A method for cooling air in an automobile by use
`36.
`of an automobile air conditioning system, said method comprising
`providing in ’th_e said automobile air conditioning system a heat
`transfer composition comprising at least about 50% by weight of at
`least one tetrafluoropropene according to Formula II:
`3
`
` x,
`
`‘‘iP,-
`
`where R‘ is (CR2)nY, Y is CF3, each R is independently F or
`H and n is 0,
`provided that at least one of said Rs located on the
`unsaturated terminal carbon is H.
`
`(Amended). A method for cooling the air in an automobile
`47.
`comprising:
`(a) providing in said automobile a vapor compression air
`conditioning system having at least one compressor and at least
`one condenser operable in a temperature range that includes about
`150.degree. F.; and
`
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`(b) providing a heat transfer fluid in said system, said heat
`transfer fluid comprising a lubricant and a refrigerant, said
`refrigerant comprising 1,1,1,2—tetrafluoropropene (R—1234yf) in an
`amount of from about 5% by weight to about 99% by weight of the
`heat transfer fluid.
`
`(Amended) A method of conditioning the air in an automobile
`50.
`using an automobile air conditioning system including at least one
`compressor and at least one evaporator, said method comprising:
`(a) utilizing in said system a heat transfer fluid comprising a
`lubricant and a refrigerant, said refrigerant comprising 1,1,1,2-
`tetrafluoropropene (R-1234yf) in an amount of from about 5% by
`weight to about 99% by weight of the heat transfer fluid; and
`(b) using said heat transfer fluid to absorb heat from the air
`in the automobile by evaporating in said evaporator said heat
`transfer fluid to produce a vapor comprising said R-1234yf;
`(c) compressing at least a portion of said vapor from said
`step (b) in said at least one compressor to produce a relatively
`elevated pressure vapor comprising R-1234yf; and
`(d) removing heat from said relatively elevated pressure
`vapor by condensing said vapor.
`
`Claim 26 contains a typographical error. Claim 26 improperly
`
`depends from claim 49 as opposed to claim 25 as originally patented.
`
`Claim 26 does not contain any of the required markings to indicate
`
`changes made. Claim 26 is hereby treated as if it depends from claim 25.
`
`Claim 49 does not provide antecedent basis for "said flammability
`
`suppressant" in claim 26.
`
`Claim Rejections - 35 USC § 1 12
`
`The following is a quotation of 35 U.S.C. 112 (pre—AlA), first paragraph:
`The specification shall contain a written description of the invention, and of the manner and
`process of making and using it, in such full, clear, concise, and exact terms as to enable any
`person skilled in the art to which it pertains, or with which it is most nearly connected, to make
`
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`and use the same and shall set forth the best mode contemplated by the inventor of carrying
`out his invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`A.
`
`On pages 22-24 of the comments filed on 1/25/2013, the requester proposed
`
`claims 1-32, 34-35, 53-59, 61-73, 75-92, 94 and 96-136 be rejected 35 U.S.C. 112
`
`(pre-AIA), first paragraph, as failing to comply with the written description
`
`requirement.
`
`The proposed rejection is not adopted.
`
`The requester states that amended claims 1-32, 34-35, and new claims 53-59,
`
`61-73, 75-92, 94 and 96-136 (claims 60, 74, 93 and 95 have been cancelled by the
`
`patent owner) are not supported by the written description of the ‘882 patent, as
`
`indirectly pointed out by the patent owner’s arguments.
`
`The requester cites the Corr Declaration and argues that, if there is no way for
`
`the skilled person to predict the miscibility of a refrigerant-lubricant mixture as argued by
`
`the patent owner, then from the specification of the ‘882 patent, it is not possible to tell
`
`whether or not a particular combination would infringe the broad claims of the ‘882
`
`patent unless the skilled person resorts to extensive experimental investigation, Corr
`
`Declaration at 111] 29-49 (see pages 22-23 of the comments filed on 1/25/2013).
`
`As will be discussed in more detail later in the Response to Patent Owner’s
`
`Arguments section, the arguments presented by the patent owner related to the
`
`miscibility of a refrigerant-lubricant mixture are not persuasive and are inconsistent with
`
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`the specification of the '882 patent. However, the specification of the ‘882 patent
`
`sufficiently describes the miscibility of the refrigerant-lubricant mixture (see col. 6, lines
`
`38 — col. 7, line 19 and also Example 2 at col. 14). Accordingly, claims 1-32, 34-35, 53-
`
`59, 61 -73, 75-92, 94, 96-136 59, 61 -73, 75-92, 94 and 96-136 are supported by the
`
`specification of the ‘882 patent.
`
`B.
`
`On pages 22-24 of the comments filed on 1/25/2013, the requester proposed
`
`claims 1-32, 34-35, 53-59, 61-73, 75-92, 94 and 96-136 be rejected under 35 U.S.C.
`
`112 (pre-AIA), first paragraph, as failing to comply with the enablement
`
`requirement.
`
`The proposed rejection is not adopted.
`
`The requester states that amended claims 1-32, 34-35 and new claims 53-59,
`
`61 -73, 75-92, 94 and 96-136 are not enabled by the written description of the ‘882
`
`patent, as indirectly pointed out by the patent owner’s arguments.
`
`The requester cites the Corr Declaration and argues that (page 23 of the
`
`comments filed on 1/25/2013), if it is not possible to predict the behavior of refrigerant-
`
`lubricant combinations as argued by the patent owner, the skilled person is not enabled
`
`to draw any conclusions of refrigerant-lubricant mixture in the absence of any
`
`experimental data in the ‘882 patent application (Corr Declaration at 1152).
`
`The requester also argues that (page 23 of the comments filed on 1/25/2013):
`
`the ‘882 patent provides no examples of the claimed compounds being tested in
`an AAC system. Further, Example 3 describes the use of R-1234zf, which does
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`not fall within the scope of the pending claims, as being a suitably compatible
`refrigerant compound according to the invention. As the Patent Owner has noted
`in the Response, the use of R-1234zf is unacceptable in AAC systems as it has
`unacceptable flammability. Response at P. 5. However, no such particular
`guidance is recited in the '882 specification. The Patent Owner does not suggest
`that either of the other compounds of example 3, i.e. HFO-1234ze and HFO-
`1225ye, is identified as being better or worse than any other, yet the Patent
`Owner indicates that such a disclosure in lnagaki does not provide preference or
`guidance for selecting one of the compounds over another.
`
`As will be discussed in more detail later in the Response to Patent Owner’s
`
`Arguments section, the arguments presented by the patent owner related to the
`
`miscibility of a refrigerant-lubricant mixture are not persuasive and are inconsistent with
`
`the specification of the '882 patent. However, the specification of the ‘882 patent
`
`sufficiently describes the miscibility of the refrigerant-lubricant mixture which would
`
`enable one skilled in the art to make and/or use the claimed invention (see col. 6, lines
`
`38 — col. 7, line 19 and also Example 2 at col. 14). Accordingly, claims 1-32, 34-35, 53-
`
`59, 61-73, 75-92, 94, 96-136 59, 61-73, 75-92, 94 and 96-136 are enabled by the
`
`specification of the ‘882 patent.
`
`Claim Rejections - 35 USC § 102 & 103
`
`The following is a quotation of the appropriate paragraphs of pre-AlA 35 U.S.C.
`
`102 that form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(b) the invention was patented or described in a printed publication in this or a foreign country
`or in public use or on sale in this country, more than one year prior to the date of application
`for patent in the United States.
`
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`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of this title, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
`
`I.
`
`On pages 15-32 of the request filed on 8/20/2012, the requester proposed
`
`that claims 1-5, 7-12, 16-24, 30-33, 36-40, 47-48 and 50 be rejected under 35 U.S.C.
`
`102(b) as being anticipated by lnagaki in view of the patent owner's own
`
`admission.
`
`The above proposed rejection is not adopted for the following reasons.
`
`lnagaki teaches a method of using a refrigerant fluid composition in refrigerator,
`
`heat pump, or the like, e.g. refrigeration and air-conditioning equipment (page 1).
`
`lnagaki also teaches that the refrigerant fluid composition comprises an organic
`
`compound represented by the formula C3HmF,. (m = an integer of 1 to 5, n = an integer
`
`of 1 to 5 and m + n = 6). The organic compound contains one double bond in its
`
`molecular structure (page 1). Examples of the organic compound include 1,3,3,3-
`
`tetrafluoro—l—propene (HFO-1234ze) and 2,3,3,3-tetrafluoropropene (HFO-1234yf) (see
`
`Examples 2 and 5), which are within the scope of the claimed formula II.
`
`However, lnagaki does not specify that the heat transfer system comprises an
`
`automobile air conditioning system. The patent owner does not admit in the '882 patent
`
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`that the refrigerant composition as claimed is known for use in an automotive air
`
`conditioning system.
`
`The requester relies on the following paragraph recited in the '882 patent (col. 7,
`
`lines 29-34) to show the patent owner's admission of prior art.
`
`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.
`
`However, the above statement is not an admission of prior art. The '882 patent is
`
`directed to compositions containing fluoroalkene compounds and methods and systems
`
`utilizing the compositions (col. 1, lines 19-25), such as automotive air conditioning
`
`systems. The '882 patent describes the specific compositions and the methods and
`
`systems of using the compositions as the patent owner's own work/invention (col. 3,
`
`lines 35-50) and thus is not an admission of prior art.
`
`ll.
`
`Claims 1-5, 7-12, 16-24, 30-33, 36-40, 47-48, 50, 53-59, 61, 65-68, 77-79, 82,
`
`86, 88-92, 94, 96, 100-103, 105-108, 114 and 117-122 are rejected under 35 U.S.C.
`
`103(a) as being unpatentable over lnagaki.
`
`The rejection of claims 1-5, 7-12, 16-24, 30-33, 36-40, 47-48, 50, 53-59, 61, 65-
`
`68, 78-79, 82, 86, 88-92, 94, 96, 100-103, 105-108, 114 and 117-122 was proposed by
`
`the requester and is adopted for the reasons as set forth at page 33 of the request filed
`
`on 8/20/2012, pages 15-17 of the comments filed on 1/25/2013 and for the reasons that
`
`follow.
`
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`Claim 77 is also included in the above rejection since, as will be discussed in
`
`more detail later, lnagaki alone teaches the limitation recited in claim 77.
`
`The requester also proposed claims 70-73, 83-85 and 87 be rejected under 35
`
`U.S.C. 103(a) as being unpatentable over lnagaki. The proposed rejection is not
`
`adopted since claims 70-73, 83-85 and 87 are dependent on claim 63, which is not
`
`included in the above rejection.
`
`With respect to claims 1-5, 7-12, 16-24, 30-33, 36-40, 47-48, 50, 53-59, 61, 65-
`
`68, 77-79, 82, 86, 88-92, 94, 96, 100-103, 105-108, 114 and 117-122, lnagaki teaches a
`
`method of using a refrigerant fluid composition in refrigerator, heat pump, or the like,
`
`e.g. refrigeration and air-conditioning equipment (page 1). Specifically, lnagaki teaches
`
`the use of the heat transfer compositions in refrigeration and air-conditioning equipment
`
`(page 1, second column lines 20-23). lnagaki also describes that the refrigerating
`
`system comprises a compressor, a condenser and an evaporator (Figure 2).
`
`lnagaki also teaches that the refrigerant fluid composition comprises an organic
`
`compound represented by the formula C3HmF,. (m = an integer of 1 to 5, n = an integer
`
`of 1 to 5 and m + n = 6). The organic compound contains one double bond in its
`
`molecular structure (page 1). Examples of the organic compound include 1,3,3,3-
`
`tetrafluoro-l-propene (H FO-1 234ze) and 2,3,3,3-tetrafluoropropene (HFO-1234yf) (see
`
`Examples 2 and 5), which are within the scope of the claimed formula II.
`
`lnagaki further teaches that the fluid compositions comprising the above organic
`
`compound have no or fewer destructive effects against the ozone layer when they are
`
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`released to the atmosphere (page 2) and can be used to replace the conventional
`
`chlorofluorocarbon refrigerant fluids including the R—12 refrigerant fluid (page 1).
`
`lnagaki does not specify that the heat transfer composition is used in an
`
`automobile air conditioning system. However, it is well known in the art that R-12
`
`refrigerant fluid can be used in automobile air conditioning systems. Accordingly, it
`
`would have been obvious to one of ordinary skill in the art to use the refrigerant fluid
`
`composition disclosed in lnagaki to replace the conventional refrigerants (e.g. R-12)
`
`used in automotive air conditioning systems in order to reduce the destructive effects
`
`caused by the conventional refrigerants on the ozone layer.
`
`In addition, as noted above, lnagaki teaches the use of the fluid composition
`
`comprising the same refrigerants, such as HFO-1234ze and HFO-1234yf, as claimed.
`
`Accordingly, the same refrigerant compositions would also have the same claimed
`
`properties, including the toxicity, GWP, ODP, GOP, and miscibility with lubricants (e.g.,
`
`has one liquid phase at at least one temperature between about -50°C and +70°C), and
`
`would also be operable with a condenser at a temperature range that includes 150°F as
`
`claimed (see page 17 of the comments filed on 1/25/2013).
`
`Further, lnagaki discloses that the organic compounds can form a mixture with
`
`HFC compounds including R—22, R—32, R—134a, R—142b, R—143a and R—152a. The
`
`organic compound do not have any problem with respect to the general characteristics
`
`such as compatibility (miscibility) with lubricants and non-erodibility against materials
`
`(page 3), which suggests that the organic compound is miscible with lubricants and can
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`

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`Application/Control Number: 95/002,030
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`Page 13
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`Art Unit: 3991
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`form a single liquid phase with lubricants.
`
`In the alternative, lnagaki teaches that the
`
`refrigerating system comprises a compressor, a condenser, and an evaporator (Figure
`
`2).
`
`It is well known in the art that, in a typical refrigerating system, such as the one
`
`disclosed in lnagaki, a lubricant is used to circulate with the refrigerant so as to lubricate
`
`and seal compressor components. Accordingly, it would have been obvious to one of
`
`ordinary skill in the art to add the lubricants to the refrigerant fluid compositions in order
`
`to lubricate and seal the compressor in the refrigerating system.
`
`With respect to claim 9, lnagaki discloses the heat transfer fluid comprising HFO-
`
`1234ze. One skilled in the art would recognize that the term HFO-1234ze refers to both
`
`transHFO-1234ze and cisHFO—1234ze. Accordingly, lnagaki discloses the heat transfer
`
`fluid comprising transHFO—1234ze. To the extent that lnagaki does not specifically
`
`disclose the trans-isomer of HFO-1234ze, the boiling point of the HFO-1234ze
`
`disclosed by lnagaki indicates that the composition is predominately, if not entirely, the
`
`trans-isomer.
`
`It is well known in the art that the boiling point of the cisHFO—1234ze is
`
`about 9°C and the boiling point of the transHFO-1234ze is about -19°C.
`
`lnagaki
`
`discloses that the HFO-1234ze has a boiling point of -16°C (page 2). Accordingly,
`
`lnagaki clearly indicates that the HFO-1234ze is predominately trans-isomer.
`
`With respect to claims 10, 21-23, 32-33, 38, 47 and 50, lnagaki does not
`
`explicitly disclose the specific concentration range of the fluoroalkene compound
`
`present in the heat transfer composition. However, it would have been obvious to one
`
`of ordinary skill in the art to discover the optimum or workable ranges of the
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`Application/Control Number: 95/002,030
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`Page 14
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`Art Unit: 3991
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`fluoroalkene compound present in the composition by routine experimentation in order
`
`to produce a refrigerant composition with desired properties. “[W]here the general
`
`conditions of a claim are disclosed in the prior art, it is not inventive to discover the
`
`optimum or workable ranges by routine experimentation.” In re A//er, 220 F.2d 454, 456,
`
`105 USPQ 233, 235(CCPA 1955).
`
`Similarly, with respect to the amount of the lubricant recited in claim 12, it would
`
`have also been obvious to one of ordinary skill in the art to discover, through nothing
`
`more than routine experimentation, the optimum or workable ranges of the lubricant
`
`present in the refrigerant as taught by lnagaki in order to produce a refrigerant
`
`composition with desired lubrication properties.
`
`Newly added claims 53-59, 61, 65-68, 77-79, 82, 86, 88-92, 94, 96, 100-103,
`
`105-108, 114 and 117-122 contains same and similar limitations as the original
`
`patented claims. Accordingly, these claims are rejected for the same reasons as
`
`discussed above.
`
`With respect to the additional limitations recited in claims 56-57, 59, 66-68, 91-
`
`92, 94, 101-103 and 106-108, as discussed above with respect to claim 9, lnagaki
`
`discloses the heat transfer fluid comprising transHFO-1234ze and cisHFO-1234ze with
`
`the transHFO-1234ze being predominate. As to the concentration of the transHFO-
`
`1234ze present in the composition, as stated above, “where the general conditions of a
`
`claim are disclosed in the prior art, it is not inventive to discover the optimum or
`
`workable ranges by routine experimentation.” In re A//er, 220 F.2d 454, 456, 105 USPQ
`
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`

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`Application/Control Number: 95/002,030
`
`Page 15
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`Art Unit: 3991
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`233, 235(CCPA 1955). Accordingly, it would have it would have been obvious to one of
`
`ordinary skill in the art to determine the optimum or workable ranges of the transHFO-
`
`1234ze present in the composition through routine experimentation in order to produce
`
`a refrigerant composition with desired properties.
`
`III.
`
`Claims 13-15, 26, 27, 34-35, 41-46, 49, 51-52, 62-63, 69-73, 75-76, 80-81, 83-
`
`85, 87, 97-98, 104, 109-113, 115-116 and 123-136 are rejected under 35
`
`U.S.C. 103(a) as being unpatentable over lnagaki, and further in view of Bivens.
`
`The rejection of claims 13-15, 27, 34-35, 41-46, 49, 51-52, 62-63, 69, 75-76, 80-
`
`81, 97-98, 104, 109-113, 115-116 and 123-136 was proposed by the requester and is
`
`adopted for the reasons as set forth at pages 33-40 of the request filed on 8/20/2012,
`
`pages 17-19 of the comments filed on 1/25/2013, and for the reasons that follow.
`
`Claims 70-73, 83-85 and 87 are included in the above rejection since claims 70-
`
`73, 83-85 and 87 depend on claim 63.
`
`The requester also proposed claim 77 be rejected over lnagaki in view of Bivens.
`
`The proposed rejection is not adopted. As stated in II above, lnagaki alone teaches
`
`the claimed limitation recited in claim 77.
`
`lnagaki is relied upon for the reasons stated in II above.
`
`lnagaki does not disclose that the lubricant is selected from the group consisting
`
`of polyol esters, poly alkylene glycols, polyalkylene silicon oils, mineral oils, alkyl
`
`benzenes, poly(alpha-olefins) and combinations of these lubricants.
`
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`

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`Application/Control Number: 95/002,030
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`Page 16
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`Art Unit: 3991
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`Bivens teaches that polyalkylene glycol, ester oil (e.g., polyol esters or
`
`polyalkylene glycol ester) and alkyl benzene are conventional lubricants suitable for use
`
`in HFC-based refrigeration systems (col.1, lines 39-43 and 53-54).
`
`Accordingly, it would have been obvious to one having ordinary skill to include
`
`the conventional lubricants, as taught by Bivens, in the HFC-based refrigerating system
`
`disclosed in lnagaki in order to lubricate and seal the compressor in the refrigerating
`
`system.
`
`IV.
`
`Claims 12 and 28-29 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over lnagaki, and further in view of Oberle.
`
`The rejection of claims 12 and 28-29 was proposed by the requester and is
`
`adopted for the reasons as set forth at pages 41-42 of the request filed on 8/20/2012,
`
`page 19 of the comments filed on 1/25/2013, and for the reasons that follow.
`
`lnagaki is relied upon for the reasons stated in II above.
`
`To the extent that lnagaki does not explicitly disclose the particular amount of the
`
`lubricant for the heat transfer composition as recited in claim 12 and does not disclose
`
`the specific lubricants as recited in claims 28-29, Oberle teaches the use of esters (col.
`
`11, lines 15-45) and poly(alpha- olefin) oil (col. 17, line 58 — col. 18, line 9) as lubricants
`
`in HFC refrigerant systems. Oberle also teaches that the concentration of the lubricants
`
`present in the refrigerant compositions is between 2.3 — 49.5%, which overlaps the
`
`claimed range recited in claim 12 (Cols. 22-23).
`
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`

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`Application/Control Number: 95/002,030
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`Page 17
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`Art Unit: 3991
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`Accordingly, it would have been obvious to one of ordinary skill in the art to use
`
`the lubricants as taught by Oberle in lnagaki’s HFC—based refrigerating system in order
`
`to lubricate and seal the compressor in the refrigerating system.
`
`In addition, one skilled
`
`in the art would have been able to determine, through nothing more than routine
`
`experimentation, the optimum or workable ranges of the lubricant present in the
`
`refrigerant composition in order to produce a refrigerant composition with desired
`
`properties.
`
`V.
`
`Claims 25-26, 64 and 99 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over lnagaki, and further in view of Nimitz.
`
`The rejection of claims 25-26, 64 and 99 was proposed by the requester and is
`
`adopted for the reasons as set forth at pages 42-43 of the request filed on 8/20/2012,
`
`page 19 of the comments filed on 1/25/2013, and for the reasons that follow.
`
`lnagaki is relied upon for the reasons stated in II above.
`
`lnagaki does not disclose that the heat transfer composition further comprises a
`
`flammability suppressant as claimed.
`
`However, it is known in the art to use flammability suppressants in refrigerant
`
`compositions. For example, Nimitz teaches that fluoroiodocarbons, such as CF3l (see
`
`Table 3), are highly effective flame suppression agents and can be used in HFC
`
`refrigerant compositions. Nimitz also teaches that fluoroiodocarbons not only provide
`
`chemical extinguishment, but also provide significant physical extinguishment through
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`

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`Application/Control Number: 95/002,030
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`Page 18
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`Art Unit: 3991
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`heat removal by molecular vibrations. Nimitz further teaches that addition of a sufficient
`
`concentration of a fluoroiodocarbon to an otherwise flammable liquid or vapor (such as
`
`a hydrocarbon) renders the material self-extinguishing (col. 9, lines 47-55).
`
`Accordingly, it would have been obvious to one of ordinary skill in the art to use
`
`the fluoroiodocarbons as flammability suppressants in lnagaki’s heat transfer
`
`compositions in order to provide chemical and physical extinguishment to the
`
`compositions. One skilled in the art would have selected the fluoroiodocarbons as the
`
`flammability suppressants since fluoroiodocarbons exhibit low toxicity and do not
`
`contribute to ozone depletion or substantially to global warming (Nimitz, col. 8, lines 18-
`
`22 and 50-52).
`
`VI.
`
`Claims 1 and 6 are rejected under 35 U.S.C. 103(a) as being unpatentable
`
`over the combination of Novak and lnagaki.
`
`The rejection o

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