IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Allorncy Docket No. 28298/0003
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`Applicant
`
`: Singh ct al.
`
`Patent No.
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`I 7,534,366 B2
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`lssucd
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`: May 19, 2009
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`For
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`: COMPOSITIONS CONTAINING FLUORINE SUBSTITUTED OLEFINS
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`Control No.
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`: To Be Assigned
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`RE UEST FOR INTER PARTES REEXAMINATION OF U.S. PATENT NO. 7 534 366
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`Arkema Exhibit 1065
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`Arkema Exhibit 1065
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`

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`Attorney Docket No. 2829870003
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`Mail Stop “Inter Partes Reexam”
`Attn: Central Reexamination Unit
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`Commissioner for Patents
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`P.O. Box 1450
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`Alexandria, VA 22313-1450
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`Sir:
`
`This is yet another request for reexamination in a family of patents that has been
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`successfully challenged in this Office. United States Patent No. 7,534,366 B2 (“the ‘366
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`Patent”), which is the subject of this Request, claims a heat transfer composition, for use in an air
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`conditioning system comprising the combination of a refrigerant and a lubricant. The refrigerant
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`compound has the formula C H2=CF—C F3, which is a multi-fluorinated propene, and is given the
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`name “HFO-l234yf'.” The lubricant is a polyoxypropylene polymer, commercially known as
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`ND-8.
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`The ‘366 Patent is one of a number of patents issued to Honeywell lntemational, lnc.
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`(“Honeywell”) relating to this combination of a refrigerant and lubricant. Successful
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`reexamination requests were filed with this Office on six of Honeywell’s patents, including
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`reexamination of U.S. Patent No. 7,279,451, assigned Control No. 95f000,576 (“the ‘451
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`Reexamination”). The original claims of the ‘451 Patent, as well as the claims amended or
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`added during reexamination, are Very similar to those of the ‘366 Patent. The Examiner in the
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`‘45l Reexamination has twice rejected those claims based on prior art that taught the claimed
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`combination of HFO-l234yf refrigerant and a lubricant.
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`Similarly, both the claimed HFO-l234yf refrigerant and the polyoxypropylene polymer
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`lubricant of the ‘366 Patent were known in the prior art. First, there is no question, including by
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`virtue of the ‘45l Reexamination and other related reexamination proceedings, that the claimed
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`refrigerant of the ‘366 Patent, HFO-1234yf, was disclosed in the prior art Japanese Patent
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`Application Publication No. H04-1 10388 by lnagaki et al. (“Inagaki”'). Indeed, Inagaki has been
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`the foundation of the successfiil reexamination requests for the relevant Honeywell patents.
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`Second, during prosecution of the ‘366 Patent, Honeywell admitted that the claimed lubricant,
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`commercially sold as ND—8, was well known in the prior art for use in air conditioning systems.
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`Thus, the heat transfer compositions of the ‘366 Patent are clearly disclosed in the prior art.
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`Accordingly, Daikin Industries, Ltd. (“Requester”) respectfully requests inter partes
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`reexamination of all Claims 1-25 of the ‘366 Patent, because there is a reasonable likelihood that
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`Attorney Docket No. 28298l0003
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`Requester will prevail with respect to at least one of Claims 1-25 of the ‘366 Patent challenged in
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`this Request. This Request is made pursuant to 35 U.S.C. §§ 3| 1-3 I 8 as amended by Public
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`Law 112-29 (the Leahy-Smith America Invents Act, signed into law on September 16, 2011) and
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`37 C.F.R. §§ 1.902 etseq. as amended by Federal Register Notice Vol. 76, No. 185, 59055
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`(published September 23, 2011).
`
`I.
`
`THE ‘366 PATENT
`
`In accordance with 37 C.F.R. § 1.9l5(b)(5), a copy ofthe ’366 Patent is submitted
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`herewith as Exhibit A. The ‘366 Patent is assigned on its face to Honeywell International Inc.
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`(“Honeywell” or “I-"atentee”). Data obtained on September 12, 2012, from the “Assigmnents on
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`the Web” services provided by the Office is attached as Exhibit B. It indicates that Honeywell is
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`the current assignee of the ‘366 Patent.
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`The ‘366 Patent was the subject of a patent litigation in the United States District Court
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`for the Eastern District of Pennsylvania, A rkema Inc. v. Honeywell International Inc., Case No.
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`2:10-cv-02886-WY. The case was terminated on March 12, 2012, on procedural grounds and is
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`currently on appeal to the United States Court of Appeals for the Federal Circuit under Docket
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`No. 12-1308.
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`II.
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`RE UIRED FEE
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`The Requester hereby authorizes the Commissioner to deduct the amount of $8,800.00
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`from Amster, Rothstein & Ebenstein, LLP Account No.: 01-1785 to cover the fee specified in 37
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`C.F.R. §§ l.20(c)(2) and l.9l5(a). lfthis amount is insufficient or excessive, the Commissioner
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`is authorized to deduct any underpayment from or credit any overpayment to this account.
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`III.
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`IDENTIFICATION OF CLAIMS FOR WHICH REEXAMINATION IS
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`RE§ QUESTED
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`In accordance with 35 U.S.C. § 311 and 3? C.F.R. § 1.915(b)(1)-(b)(2), interpartes
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`reexamination of Claims 1-25 of the ‘366 Patent is requested in view of the following prior art
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`references:
`
`A.
`
`B.
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`Japanese Patent Application Publication No. H04-1 10388 by lnagaki et al.
`(“Inagaki”), a copy of which is submitted herewith as Exhibit C. An English-
`language translation of Inagaki is attached as Exhibit D, which was submitted to
`this Office in connection with the ‘45l Reexamination.
`
`Patentee’s admissions (“Patentee’s Admissions”) made in the ‘366 Patent and
`during prosecution of the ‘366 Patent, including:
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`Attorney Docket No. 28298;’0003
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`a.
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`b.
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`“Supplemental Amendment and Remarks” submitted by Patentee to the
`Office during prosecution of the ‘366 Patent on November 10, 2008, a
`copy of which is submitted herewith as Exhibit E.
`
`Rule 132 declaration executed on December 5, 2008 by the first-named
`inventor of the ‘366 Patent, Dr. Rajiv Singh, filed December 1 1, 2008, a
`copy of which is submitted herewith as Exhibit F.
`
`Acura Service Bulletin No. 92-027 (“Acura Bulletin”) dated September 29, 1992,
`a copy of which is submitted herewith as Exhibit G.
`
`United States Patent No. 4,755,316 to Magid et al. (“Magid”), a copy of which is
`submitted herewith as Exhibit H.
`
`United States Patent No. 6,991,744 to Mahler et al. (“Mahler”), a copy of which is
`submitted herewith as Exhibit I.
`
`World Intellectual Property Organization International Publication No. W0
`02x’46328 to Minor et al. (“Minor”), a copy of which is submitted herewith as
`Exhibit J.
`
`United States Patent No. 6,374,629 to Oberle et al. (“Oberle”), a copy of which is
`submitted herewith as Exhibit K.
`
`United States Patent No. 6,640,841 to Thomas et al. (“Thomas”), a copy of which
`is submitted herewith as Exhibit L.
`
`United States Patent No. 6,013,609 to Katafuchi (“Katafilchi”), a copy of which is
`submitted herewith as Exhibit M.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
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`H.
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`1.
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`An Information Disclosure Statement listing the above references is submitted herewith.
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`Reexamination of Claims 1-25 is requested in view of the above prior art, as set forth in the
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`proposed rejections in the following section. As discussed frgfira in Section VI.B, the earliest
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`effective filing date of the claims of the ‘366 Patent is the U.S. filing date of the ‘366 Patent
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`itself, which is October 2?, 2003. As such, Inagaki, the Acura Bulletin, Magid, Minor, Oberle,
`
`Thomas, and Katafuchi are prior art printed publications under 35 U.S.C. § ]02(b), while Mahler
`
`is prior art under 35 U.S.C. § 102(e).'
`
`1 Even ifthc ‘3 66 Patent is entitled to its provisional ['1 ling dates ol‘Oetober 25, 2002. which it is not, lnagaki, the
`Aeura Bulletin, Magid, and Katafuehi would still be prior art printed publications under 35 U.S.C. § 102(b); Minor,
`Oberle. and Thomas would be prior art under 35 U.S.C. § l02(a); and Mahler would be prior art under 35 U.S.C. §
`l'U2{€).
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`Allorncy Docket No. 28298;’0003
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`IV.
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`PROPOSED REJECTIONS AND STATEMENT POINTING OUT WHY THERE
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`IS A REASONABLE LIKELIHOOD THAT REQUESTER WILL PREVAIL
`
`A.
`
`Proposed Rejections
`
`The Re
`
`A.
`
`quester proposes the following rejections of Claims 1-25 of the ‘366 Patent:
`
`Claims 1-2, 4-12, 15-17, and 19-25 are unpatentable under 35 U.S.C. § l03(a)
`because they are obvious over Inagaki in view of the Patentee’s Admissions.
`
`Claims 1-2, 4-12, 15-17, and 19-25 are unpatentable under 35 U.S.C. § 103(a)
`because they are obvious over lnagaki in view of the Acura Bulletin.
`
`Claims 1-2, 4-12, 15-17, and 19-25 are unpatentable under 35 U.S.C. § 103(a)
`because they are obvious over lnagaki in VlCW of Magid.
`
`Claims 3 and 13-14 are unpatentable under 35 U.S.C. § 103(a) because they are
`obvious over Inagaki in view of the Patentee’s Admissions and fiirther in view of
`Mahler.
`
`Claims 3 and 13-14 are unpatentable under 35 U.S.C. § 103(a) because they are
`obvious over Inagaki in view of the Aeura Bulletin and further in view of Mahler.
`
`Claims 3 and 13-14 are unpatentable under 35 U.S.C. § l03(a) because they are
`obvious over Inagaki in view of Magid and further in view of Mahler.
`
`Claims 3 and 13- 14 are unpatentable under 35 U.S.C. § 103(a) because they are
`obvious over lnagaki in V1CW of the Patentee’s Admissions and fi.lI’tl1CI' in view of
`Minor.
`
`Claims 3 and 13-14 are unpatentable under 35 U.S.C. § l03(a) because they are
`obvious over lnagaki in view of the Acura Bulletin and further in view of Minor.
`
`Claims 3 and 13-14 are unpatentable under 35 U.S.C. § 103(a) because they are
`obvious over lnagaki in VlCW of Magid and further in V1CW of Minor.
`
`Claims 4-7, 12, and 17 are unpatentable under 35 U.S.C. § 103(a) because they
`are obvious over Inagaki in view of the Patentee’s Admissions and further in view
`of Oberle.
`
`Claims 4-7, 12, and 17 are unpatentable under 35 U.S.C. § 103(a) because they
`are obvious over Inagaki in view of the Acura Bulletin and further in view of
`Oberle.
`
`Claims 4-7*‘, 12, and 17 are unpatentable under 35 U.S.C. § 103(a) because they
`are obvious over Inagaki in view of Magid and further in view of Oberle.
`
`Claim 18 is unpatentable under 35 U.S.C. § lU3(a) because it is obvious over
`Inagaki in view of the Patentee’s Admissions and further in view of Thomas.
`
`Claim 18 is unpatentable under 35 U.S.C. § 103(a) because it is obvious over
`lnagaki in View of the Acura Bulletin and fl.lI’tl1CI' in view of Thomas.
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`Attorney Docket No. 28298;’0003
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`Claim 18 is unpatentable under 35 U.S.C. § l03(a) because it is obvious over
`lnagaki in View of Magid and further in View of Thomas.
`
`Claim 19 is unpatentable under 35 U.S.C. § 103(a) because it is obvious over
`lnagaki in View of the Patentee‘s Admissions and further in view of Katafiichi.
`
`Claim 19 is unpatentable under 35 U.S.C. § 103(a) because it is obvious over
`Inagaki in view of the Acura Bulletin and further in view of Katafuchi.
`
`Claim 19 is unpatentable under 35 U.S.C. § 1U3(a) because it is obvious over
`Inagaki in view of Magid and further in view of Katafuchi.
`
`Statements Explaining Whv There is a Reasonable Likelihood That
`Reguester Will Prevail
`
`Pursuant to 35 U.S.C. § 312 as amended by the America Invents Act and to 37 C.F.R.
`
`§ 1.923 as amended by Federal Register Notice Vol. 76, No. 185, 59055, Requester identifies the
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`following reasons why there is a reasonable likelihood that Requester will prevail (“RLP”) with
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`respect to at least one of Claims 1-25 of the ‘366 Patent which are challenged in this Request.
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`Specifically, there is a reasonable likelihood that Requester will prevail in showing that at
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`least one of Claims 1-25 ofthe ‘366 Patent is:
`
`A.
`
`Obvious over lnagaki in view of the Patentee’s Admissions under 35 U.S.C. §
`l03(a);
`
`Obvious over lnagaki in view of the Acura Bulletin under 35 U.S.C. § 103(a);
`
`Obvious over lnagaki in view of Magid under 35 U.S.C. § l03(a);
`
`Obvious over lnagaki in view of the Patentee’s Admissions and further in View of
`Mahler under 35 U.S.C. § 103(a);
`
`Obvious over lnagaki in view of the Acura Bulletin and further in VlCW of Mahler
`under 35 U.S.C. § 103(a)_;
`
`Obvious over lnagaki in view of Magid and further in view of Mahler under 35
`U.S.C. § l03(a);
`
`Obvious over lnagaki in view of the Patentee’s Admissions and further in View of
`Minor under 35 U.S.C. § l03(a);
`
`Obvious over lnagaki in view of the Acura Bulletin and further in view of Minor
`under 35 U.S.C. § l03(a);
`
`Obvious over lnagaki in view of Magid and further in view of Minor under 35
`U.S.C.§ 103(a);
`
`Obvious over lnagaki in view of the Patentee’s Admissions and further in view of
`Oberle under 35 U.S.C. § l03(a);
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`Attorney Docket No. 28298;’0003
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`K.
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`L.
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`M.
`
`N.
`
`O.
`
`P.
`
`Q.
`
`R.
`
`Obvious over lnagaki in view of the Acura Bulletin and further in VlCW of Oberle
`under 35 U.S.C. § l03(a);
`
`Obvious over Inagaki in view of Magid and fuither in view of Oberle under 35
`U.S.C.§ l03(a);
`
`Obvious over Inagaki in view of the Patentee’s Admissions and further in view of
`Thomas under 35 U.S.C. § 103(a);
`
`Obvious over Inagaki in view of the Acura Bulletin and further in View of
`Thomas under 35 U.S.C. § 103(a)_;
`
`Obvious over Inagaki in view of Magid and further in View of Thomas under 35
`U.S.C.§ l03(a);
`
`Obvious over Inagaki in view of the Patentee’s Admissions and further in view of
`Katafuchi under 35 U.S.C. § l[}3(a)',
`
`Obvious over lnagaki in view of the Acura Bulletin and further in view of
`Katafuchi under 35 U.S.C. § 103(a); and
`
`Obvious over lnagaki in view of Magid and further in view of Katafuchi under 35
`U.S.C. § 103(a).
`
`Claim I of the ‘366 Patent, the only independent claim, requires the combination of a
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`refrigerant, HFO-l234yf, and a polyoxypropylene polymer lubricant, commercially known as
`
`ND-8. lnagaki teaches the use of HFO-1234yf as a refrigerant in a cooling system. The
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`Patentee’s Admissions establish that the lubricant of Claim 1, ND-8, was well known in the prior
`
`art to the ‘366 Patent for use with a refrigerant in cooling systems. In fact, Honeywell stated that
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`ND-8 was one of the most widely used lubricants at the time the present invention was made.
`
`Thus, one of ordinary skill in the art would be motivated to combine lnagaki with the Patentee’s
`
`Admissions to arrive at the combination ofthe refrigerant and the lubricant of Claim 1 .
`
`Similarly, the Acura Bulletin discloses an automotive cooling system with a refrigerant in
`
`combination with ND-8. Thus, one of ordinary skill in the art would be motivated to combine
`
`lnagaki with the Acura Bulletin to arrive at the combination of the refrigerant and the lubricant
`
`of Claim 1.
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`Magid also discloses a cooling system with a refrigerant in combination with the
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`lubricant of Claim 1. Thus, one of ordinary skill in the art would also be motivated to combine
`
`Inagaki with Magid to arrive at the combination of the refiigerant and the lubricant of Claim 1.
`
`Claims 2 and 9-] 1 specify a value or range of values for the Claim 1 composition as it
`
`relates to Global Warming Potential (GWP) and Ozone Depletion Potential (ODP). Claims 15,
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`Attorney Docket No. 28298;’0003
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`I6, and 20 specify the capacity and coefficient of performance (COP) of the Claim I
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`composition relative to HFC-134a (a prior art refrigerant). These limitations are all inherent
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`properties of the Claim 1 composition. Since the Claim 1 composition is disclosed in the
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`combinations of Inagaki and the I-"atentee’s Admissions, Inagaki and the Acura Bulletin, and
`
`Inagaki and Magid, Claims 2, 9-11, 15-16, and 20 are obvious over these prior art combinations.
`
`Claims 3 and 13-14 depend from Claim 1 and fiirther require a compatibilizer, including
`
`propane, butane, and pentane. Such compatibilizers are disclosed separately in Mahler and
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`Minor. Further, the Examiner in the ‘45I Reexamination concluded that Mahler discloses such
`
`compatibilizers. Accordingly, Claims 3 and 13-14 are obvious based on the Claim I prior art
`
`combinations further in view of Mahler, as well the Claim 1 combinations further in view of
`
`Minor.
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`Claims 4-7, 12, and I’? depend from Claim 1 and further specify percent weights for the
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`lubricant or refrigerant of Claim 1. As stated by the Examiner in the ‘451 Reexamination, one of
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`ordinary skill in the art would arrive at these percent weights based on a known
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`refrigerantflubricant combination. Since the Claim 1 composition is disclosed in Inagaki and the
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`Patentee’s Admissions, in Inagaki and the Acura Bulletin, and in Inagaki and Magid, Claims 4-7,
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`I2, and I? are obvious over these prior combinations that invalidate Claim 1. Furthermore, as
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`also recognized by the Examiner in the ‘45l Reexamination, Oberle discloses various percent
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`weights for lubricantfrefrigerant combinations. Thus, Claims 4-7, 12, and 17 are also obvious
`
`over the Claim 1 prior combinations further in view of Oberle.
`
`Claim 8 states that the Claim 1 composition is non-flammable. One of ordinary skill in
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`the art would clearly make the Claim 1 composition non-flammable since it is to be used in
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`various environments, including an automobile. Thus, Claim 8 is obvious over the same prior art
`
`combinations that render Claim I unpatentable.
`
`Claim I8 further requires a surfactant and solubilizing agent, which are disclosed in
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`Thomas. In fact, the Examiner in the ‘45l Reexamination concluded that Thomas discloses such
`
`a surfactant and solubilizing agent. Accordingly, C laiml 8 is obvious based on the Claim 1 prior
`
`art combinations further in view of Thomas.
`
`Claim 19 further requires at least one polyol ester lubricant, which were known in the
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`prior art, as admitted in the specification of the ‘366 Patent. Thus, Claim 19 is obvious over the
`
`same prior art combinations that render Claim 1 unpatentable. Further, polyol ester lubricants
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`Allorncy Docket No. 28298;’0003
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`are disclosed in Katafuchi. Accordingly, Claim 19 is obvious based on the Claim I prior art
`
`combinations further in view of Katafuchi.
`
`Claim 2] requires the composition of Claim 1 be in a liquid form, while Claim 22 states
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`that the Claim 1 composition is stable when i11 contact with aluminum, steel, or copper. These
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`are inherent features of the Claim I composition and therefore are rendered unpatentable by the
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`Claim 1 prior art combinations recited above.
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`Finally, Claims 23 and 25 contain “consisting essentially of” limitations ofthe Claim I
`
`elements, while Claim 24 contains a narrower limitation on the Viscosity ofthe Claim I
`
`lubricant. Since Claim 1 is unpatentable based on the prior art combinations recited above,
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`Claims 23-25 are unpatentable based on these same combinations.
`
`V.
`
`Reexaminations Involving The Honevwell Patents
`
`Excluding the ‘366 Patent, there have been a total of 6 interpartes reexamination
`
`requests filed for the following Honeywell patents, all relating to the same type of refrigerant
`
`compositions at issue in the ‘366 Patent:
`
`U.S. Patent l\o. 7,279,451, Control No. 95r’000,5?'6 (“the ‘45l Reexamination”);
`
`U.S. Patent Ixo. 8,033,120, Control No. 95f001,783 (“the ‘120 Reexamination”);
`
`U.S. Patent l\o. 8,053,404, Control No. 95!'00l,920 (“the ‘404 Reexamination”);
`
`U.S. Patent Ixo. 7,524,805, Control No. 95f000,574;
`
`U.S. Patent l\o. 7,825,081, Control No. 95;’000,630; and
`
`U.S. Patent Ixo. 8,065,882, Control No. 95f002,030.
`
`A.
`
`B C D
`
`.
`
`E.
`
`F.
`
`All of the reexamination requests for these patents have been granted and the
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`reexaminations are proceeding at various stages. Below is a summary of the pertinent portions
`
`of the ‘45] Reexamination, the ‘ 120 Reexamination, and the ‘404 Reexamination, as they relate
`
`to the patentability of the claims of the ‘366 Patent.
`
`A.
`
`The ‘45l Reexamination
`
`1.
`
`The First Offiee Action
`
`On November 5, 2010, an inrerparres reexamination request was filed for U.S. Patent
`
`No. 7,279,451 (“the ‘45I Patent”). As ofthe filing of this Request relating to the ‘366 Patent, all
`
`claims pending in the ‘45I Reexamination have been rejected and an Action Closing Prosecution
`
`was issued on May 25, 2012.
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`Attorney Docket No. 28298;’0003
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`The ‘45l Patent issued with 50 claims, which were amended by Honeywell during
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`reexamination. Honeywell also added new claims during the reexamination. The originally
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`issued claims of the ‘45l Patent, as well as the amended or new claims, contain many elements
`
`that are either identical or similar to the claim elements of the ‘366 Patent, including the
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`following limitations:
`
`0 HFO-1234yf as the claimed refrigerant;
`
`0 A lubricant, including a polyalkylene glycol lubricant (“PAG”);
`
`0 % weight of the lubricant or refrigerant;
`
`0 Low level of toxicity;
`
`0 A surfactant andfor solubilizing agent;
`
`0 A compatibilizer, including propane or butane;
`
`0 Values or ranges for Global Warming Potential (“GWP”) andfor Ozone Depletion
`Potential (“ODP”);
`
`0
`
`Flammability;
`
`0 A liquid phase for the heat transfer composition;
`
`0
`
`Stability when in contact with aluminum, steel, or copper.
`
`The Patent Office granted the request for reexamination and issued an Office Action on
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`December 22, 2010. All of the originally issued claims of the ‘45l Patent were rejected based on
`
`lnagaki. According to the Examiner, Jerry D. Johnson:
`
`Inagaki teaches compositions useful for “use in a refrigerator, heat pump or the
`like” comprising an organic compound represented by the formula C3H,.,F,, (m =
`an integer of 1 to 5, n = an integer of l to 5, and m + n = 6) and containing one
`double bond in its molecular structure (page 1).
`lnagaki specifically discloses a
`heat transfer fluid of the instant claims.
`
`(Dec. 22, 2010 Office Action, p. 6).
`
`In particular, the claims directed to HFO-1234yf as a refrigerant or a Formula II
`
`refrigerant in combination with a lubricant were rejected under 35 U.S.C. §103(a) as being
`
`unpatentable over Inagaki alone. Likewise, claims directed to certain ranges or values of GWP
`
`or ODP were rejected as obvious in light of Inagaki alone. Also, claims requiring that the
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`claimed heat transfer composition be in a liquid phase over some temperature range or be stable
`
`when in contact with aluminum, steel, or copper were rejected as obvious based solely on
`
`lnagaki.
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`Attorney Docket No. 28298;’0003
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`As to the specifically claimed heat transfer fluid concentration ranges, the Examiner
`
`stated:
`
`[I]t is well known that compression heat transfers systems require a lubricant to
`be circulated with the heat transfer composition so as to lubricate and seal
`compressor components. A person having ordinary skill in the art would have
`determined, through nothing more that routine experimentation, the range of
`concentrations of heat transfer fluid(s) a11d lubricant in a heat transfer composition
`as taught by Inagaki so as to produce a heat transfer composition having the
`desired properties.
`
`(1.51, p. 7).
`
`The Examiner rejected the claims directed to the claimed refrigerant and particular
`
`lubricants under 35 U.S.C. §l03(a) as being unpatentable over Inagaki in view of U.S. Patent
`
`No. 6,783,691 to Bivens, et al. (“Bivens”).
`
`(Ia'., pp. 7-8). According to the Examiner, Bivens
`
`taught the claimed lubricants, including polyalkylene glycols (PAGs) and polyol esters, used for
`
`hydrofluorocarbon refrigerants. (Id.).
`
`As to the claims relating to the amount of lubricant present by weight, the Examiner
`
`rejected those claims based on lnagaki in VlCW of Oberle. ([d., pp. 8-9'). The Examiner adopted
`
`the reasoning set forth in the request that Oberle discloses the claimed amount of lubricants by
`
`percent weight. (Id.).
`
`Dependent claims adding a compatibilizer, including propane or butane, were rejected
`
`based on Inagaki in view of Mahler. Dependent claims adding a surfactant andfor a solubilizer
`
`were also rejected based on Inagaki in View of Thomas.
`
`2.
`
`Honeywell’s Response
`
`Honeywell filed a response on March 22, 2011 amending Claims 1-50 and adding new
`
`Claims 5] and 52. Claim 1 was amended to recite at least one lubricant in an amount of at least
`
`about 5% by weight of the heat transfer composition and to specify that the lubricant has one
`
`liquid phase at at least one temperature between -50°C and +7U°C measured at 5% by weight.
`
`New Claims 5] and S2 recited the combination of HFO— I 234yf and a lubricant, along
`
`with GWP, Coefficient of Performance (“COP”), and capacity properties of the claimed
`
`compositions:
`
`51.
`
`(New) A heat transfer composition comprising:
`
`(a) at least one lubricant; and
`
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`Attorney Docket No. 28298;’0003
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`(b) a refrigerant comprising HFO-l234yf present in the composition in an amount
`of from about 5 % by weight to about 99 % by weight wherein (1) said lubricant and said
`HFO-1234yf have one liquid phase at at least one temperature between about -50°C and
`+ ';'0°C measured at 5% by weight of lubricant based on the weight of HFO- l234yf and
`lubricant and (2) said refrigerant has a Global Warming Potential (GWP) of not greater
`than about ?'5.
`
`52.
`
`(New) A heat transfer composition for conditioning air comprising:
`
`(a) a polyalkylene glycol lubricant; and
`
`(b) a refrigerant consisting essentially of HFO-l234yf in an amount of from about
`5% by weight to about 99% by weight, and wherein (1) said lubricant and said HFO-
`l234yf have one liquid phase at least one temperature between about - 50°C and + 70°C
`measured at 5% by weight of lubricant based on the weight of HF0- 1 234yf and lubricant;
`(2) said refrigerant has a Coefficient of Performance (COP) relative to HFC-134a of
`about 1; (3) said refrigerant has a capacity relative to HFC-134a of about 1; and (4) said
`refrigerant has a Global Warming Potential (GWP) of not greater than about 1000.
`
`(Mar. 22, 2011 Patent Owner’s Response, Exhibit A Claim Listing, pp. 7-8).
`
`Honeywell argued that the combination of HFO-l234yf with the claimed lubricants
`
`resulted in unexpected low toxicity, miscibility, and a GWP advantage. Like it did during
`
`prosecution of the ‘366 Patent, Honeywell submitted a Declaration from Rajiv Ratna Singh to
`
`support its arguments regarding toxicity. Specifically, Honeywell, relying upon the Singh
`
`Declaration, cited to a DuPont study regarding the allegedly high toxicity level of HFO-1225zc.
`
`According to Honeywell, since HFO- l225zc is within the class of compositions disclosed by
`
`Inagaki, this would teach away from using HFO-1234yf as a refrigerant.
`
`3.
`
`The Action Closing Prosecution
`
`On May 25, 2012, the Examiner issued an Action Closing Prosecution (“ACP”) rejecting
`
`the pending claims. The Examiner maintained his prior positions in rejecting amended Claims 1-
`
`50 and applied the same reasoning in rejecting new Claim 51, relating to HFO-l234yf and a
`
`lubricant, based on Inagaki alone. The Examiner rejected new Claim 52, which requires HFO-
`
`l234yf and a PAG lubricant, based on Inagaki in view of Bivens (which teaches a PAG
`
`lubricant).
`
`Further, the Examiner rejected Honeywell’s arguments on toxicity, stating:
`
`Inagaki, which discloses the claimed compound R-1234yf and its use as a fluid
`for heat transfer, not DuPont, is the closest prior art. Not only is DuPont not the
`closest Qrior art, but the comgound HFO-l225zc discussed therein is not even
`one of the five compounds specifically taught by Inagaki. Nor does DuPont
`contain a general teaching that all fluorinated olefins having at least four fluorine
`
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`Attorney Docket No. 2829870003
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`substituents, a -CF3 terminal portion, and at least one additional fluorine
`substituent on an unsaturated non-terminal carbon have a severe toxicity as
`argued. Rather, the teachings of DuPont are limited to the single compound
`HFO—l225zc.
`
`(May 25, 2012 Action Closing Prosecution, p. 24) (emphasis added).
`
`The Examiner also stated that the claimed characteristics, such as low toxicity or low
`
`GWP, were inherent characteristics of HFO-1234-yf and therefore disclosed in Inagaki:
`
`Furthermore, it is well established that the discovery of a new property or use of
`an old product does not render the old product patentable. See In re Spada, 9] 1
`F.2d 705, 708, 15 USPQ 2d 1655, 1657 (Fed. Cir. 1990); Titamluiz Metals Corp.
`V. Banner, 778 F.2d 775, 780-782, 227 USPQ2d 773, 777-78 (Fed. Cir. 1985) as
`cited in Harr1'.s' Corp. v. IXYS Corp, 43 USPQ 1018, 1021 (CAFC 1997). Inagaki,
`as relied on above, teaches that the claimed compositions are for "use in a
`refrigerator, heat pump or the like''. Inagaki teaches that the disclosed fluids "do
`not have any problem with respect to their general characteristics (e.g.,
`compatibility with lubricants, non-erodibility against materials etc.)."
`Embodiment 5 of Inagaki specifically discloses a heat transfer fluid comprising
`HFO-l234yf refrigerant. Accordingly, where, as here, the prior art teaches the
`same com osition and the same use discover = of a “new"
`ro er
`e.
`.
`low
`
`toxici
`
`does not render the old roduct atentable.
`
`(M., p. 32) (emphasis added).
`
`The Examiner also found that, even though lnagaki does not disclose a specific lubricant,
`
`combining HFO-1234yf with known lubricants would be within the knowledge of a person of
`
`ordinary skill in the art:
`
`Furthermore, given that Inagaki does not disclose the specific lubricant fluids to
`use with the compounds disclosed therein for heat transfer, there is reasonable
`basis to infer that persons of ordinary skill in the art knew how to routinely
`choose lubricantfrefrigerant mixtures to make a heat transfer composition having
`sufficient compatibility.
`
`=l=$=l=
`
`Accordingly, it would have been obvious to one having ordinary skill in the art at
`the time the invention was made to have formed a working fluid as taught by
`Inagaki wherein said working fluid has a low GWP.
`
`(Id., p. 26, 28) (emphasis in original).
`
`The Examiner also rejected Honeywell’s arguments that the patentability of the claimed
`
`heat transfer composition is supported by secondary considerations.
`
`(151, pp. 31-32).
`
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`Attorney Docket No. 28298;’0003
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`In summary, the claims at issue in the ‘45l Reexamination contain nearly identical or
`
`similar claim elements to the ‘366 Patent, as reflected in the chart below. Moreover, many ofthe
`
`same arguments Honeywell made to obtain allowance of the ‘366 Patent were rejected by the
`
`Examiner in the ‘451 Reexamination. Therefore, this Request should be granted.
`
`HFO- 1 234yf as the claimed refrigerant
`
`4-6, 51
`
`1, 23, 25
`
`Inagaki
`
`1’ 19’ 23-25
`
`1’ 4-?’ 12’ l7
`
`A lubricant, including polyalkylene
`glycol
`
`% Weight of lubricant or refrigerant
`
`Low level of toxicity
`
`Heat transfer composition has a liquid
`phase
`
`Global Warming Potential
`
`7-1 I, 2?-29,
`40, 51, 52
`
`1, 8, 21-23,
`37, 51, 52
`
`48
`
`l’ 30’ 51’ 52
`
`I, 16- I 7, 45-
`4?‘, 51
`
`Ozone Depletion Potential
`
`18-20, 45-47
`
`Capacity and COP
`
`52
`
`15-16, 20
`
`lnagaki alone or
`lnagaki + Bivens
`
`Obvious in view
`oflnagaki
`
`Inherent property
`based on magaki
`
`Inherent property
`based on Inagaki
`
`Inherent property
`based on Inagaki
`
`Inherent property
`based on Inagaki
`
`Inherent property
`based on Inagaki
`
`Surfactant andfor solubilizing agent
`
`I2, 33-34
`
`18
`
`Thomas
`
`Compatibilizer, including propane or
`butane
`
`Flammability
`
`Stability when in contact with aluminum,
`steel, or copper
`
`B.
`
`The ‘[20 Reexamination
`
`* hl
`Md Cr
`
`Nimitz
`
`Inherent property
`based on Inagaki
`
`The ‘ 120 Patent is directed to a method of cooling air with a heat transfer fluid
`
`comprising a refrigerant and a lubricant, including the combination of HFO- l234yf and a PAG.
`
`A request for reexamination was granted and an Office Action was issued on January 1, 2012,
`
`rejecting all claims of the ‘ 120 Patent. The Examiner, Ling Xu (who was not involved in the
`
`‘45l Reexamination), rejected the claims based on Inagaki.
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`Attorney Docket No. 28298;’0003
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`The Examiner found that Inagaki discloses the claimed refrigerants, including HFO-
`
`l234yf, and that these “same refrigerants would inherently have the same properties, including
`
`the GWP, miscibility with lubricants, and toxicity, as claimed.” (Jan. 30, 2012 Office Action, p.
`
`5). In addition, the Examiner found that Inagaki discloses the claimed combination of HFO-
`
`l234yf and a lubricant:
`
`Accordingly, it would have been obvious to one of ordinary skill in the art to
`select the lubricants which are compatible with the refrigerants, as suggested by
`Inagaki, in order to lubricate and seal the compressor in the refrigerating system.
`
`(M., p. 6).
`
`As to the claimed PAG lubricant, the Examiner found that such a lubricant was
`
`commonly known in the prior art:
`
`[l]t is known in the art that poly alkylene glycol can be used as a lubricant in a
`refrigeration system. For example, the ‘I20 patent describes that poly alkylene
`glycol is a commonly used lubricant in refrigeration machinery with
`hydrofluorocarbon (HFC) refrigerants (col. 6, lines 13-17). Accordingly, it would
`have been obvious to o