UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PhO1 Box I450
`Alexandria. Virginia 22313-I450
`www.uspIo.gov
`
`APPLICATION NO.
`
`95/002,204
`
`FILING DATE
`
`09/I 2/201 2
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`7,534,366 B2
`
`28298-0003
`
`IOSI
`
`1 I6637
`7590
`‘
`05/27/2014
`HONEYWELL/FOX/BANNER
`Patent Services
`
`I01 Columbia Rd.
`Morristown, NJ 07962
`
`I
`
`xu. LING X
`
`_
`
`399!
`
`PAPER NUMBER
`
`MAIL DATE
`
`DELIVERY MODE
`
`05/27/2014 '
`
`_
`
`4
`
`. PAPER
`
`Please find below and/or attached an Office communication concerning this application of proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`A
`
`PTOL-90A (Rev. 04/07)
`
`1 of 73
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`Arkema Exhibit 1158
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`Arkema Exhibit 1158
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`1 of 73
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`

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`Page I ofi
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Commissioner for Patents
`United States Patents and Trademark Oflice
`P,O.Box I450
`I Alexandria, VA 22313-1450
`www.uspto.gov
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`
`‘
`
`Date:
`
`
`
`MAllLED___ A
`
`
` MAY 2 72014
`
`
`
`
`CENTRAL REEXAMINATION umr
`
`AMSTER, ROTHSTEIN & EBENSTEIN LLP
`
`I
`
`90 PARK AVENUE
`
`NEW YORK, NY 10016
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION- CONTROL NO.- : 95002204 ¢% ‘i$'0°2’3 7
`
`PATENT NO. : 7534366
`ART UNIT 5 3991
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above—identified reexamination proceeding. 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 inter partes 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.
`
`2of73
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`2 of 73
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`Page 1 of 1
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`.
`
`Commissioner for Patents
`United States Patents and Trademark Office
`.
`P..O.Box I450
`Alexandria, VA 22313-I450
`www.uspto.gov
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`
`Date:
`
`Patrick J. Fleis
`P.O. BOX 26618
`
`Milwaukee, WI 53226 _
`
`CENTRAL REEXAMINATION-UNIT
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NO. 2 95002189 -6
`PATENT NO. : 7534366
`
`'
`
`002205’
`
`I
`
`ART UNIT : 3991
`
`' Enclosed is-a copy of the latest communication from the United States Patent and Trademark
`Office in the above—identified reexamination proceeding. 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 inter partes 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.
`
`3of73
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`3 of 73
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`
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` 95/002,204 & 95/002,189
`
`
`
`Transmittal of Communication to
`
`Third Party Requester
`Inter Partes Reexamination
`
`Examiner
`
`Lin Xu
`
`
`7,534,366 B2
`Art Unit
`
`3991
`
`
`,———- (THIRD PARTY REQUESTER’S CORRESPONDENCE ADDRESS) --1
`
` AMSTER, ROTHSTEIN & EBENSTEIN LLP
`NEW YORK, NY 10016
`
`
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`90 PARK AVENUE
`
`
`
`
`
`
`
`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 inter. partes reexamination, no responsive
`submission by any ex pan‘e third party requester is permitted.
`
`All correspondencerelating 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)
`
`'
`
`Paper N°- 20140327
`
`40f73
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`4 of 73
`
`

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`
`
`
`
`7534365
`
`95/002,189 8: 95'/002,204
`
`Art Unit -
`
`3991
`
`1
`
`Transmittal of Communication to
`
`
`
`' Third Party Requester
`Inter Partes Reexamination
`
`
`
`No.
`Examiner’ I
`
`Lin Xu
`
`
`
`-- The MAILING DA TE of this communication appears on the cover_sheet with the correspondence address. --
`
` [——-—— (THIRD PARTY REQUESTER‘S CORRESPONDENCE ADDRESS) ———-I
`
`Patrick J. Fleis
`P.O.BOX 26618
`Milwaukee, WI 53266
`
`
`
`
`
`in the above—identified reexamination prceeding. 37 CFR 1.903.
`
` Enclosed is ‘a copy of the latest communication from the United States Patent and Trademark Office
`
` 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 inter partes 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)
`
`50f73
`
`"
`
`Paper No. 20140411
`
`5 of 73
`
`

`
`
`
`-
`
`»
`
`(37 CFR 1.949)
`
`Control No.
`
`Patent Under Reexamination
`
`95/002,189 & 95/002,204
`’ Examiner
`
`7534366
`Art Unit
`
`Lin Xu
`
`3991
`
`
`
` ACTION CLOSING PROSECUTION
`
`
`-- 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 01 April, 2013
`Third Party(ies) on 01 May 2013
`
`
`
`Patent owner may once file a submission under 37 CFR 1.951(a) within 1 month(s) from the mailing dateof 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 II. SUMMARY OF ACTION:
`
`1a. [XI Claims 1-81 are subject to reexamination.
`1b. I:l Claims ___ are not subject to reexamination.
`2. D Claims ___ have been canceled.
`
`
`
`1. El Notice of References Cited by Examiner, PTO-892
`2. E] Information Disclosure Citation, PTO/SB/O8
`
`3. El
`
`
`
`
`
`
`
`
`
`
`3.
`4.
`
`5.
`
`I:] Claims __ are confirmed. [Unamended patent claims]
`|:] Claims
`are patentable. [Amended or new claims]
`
`[Z Claims E1 are rejected.
`
`‘
`
` PART I. THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`
`
`
`
`
`
`are objected to.
`6. D Claims
`
`[:1 are not acceptable.
`D are acceptable
`7.
`[j'The drawings filed on
`-
`8 CI The drawing correction request filed on
`is:
`I] approved.
`I:] disapproved.
`
`9 CI Acknowledgment is made of the claim for priority under’35 U.S.C. 119 (a)-(d). The certified copy has.:
`
`[:1 been received.
`_
`[:1 not been received.
`[:I been filed in Application/Control No
`
`10. C] Other
`
`U.S. Patent and Trademark Office
`PTOL—2065 (O8/06)
`
`60f73
`
`'
`
`Paper No. 20140411
`
`6 of 73
`
`

`
`Application/Control Number: 95/002,189 & 95/002,204 '
`
`Page 2*
`
`Art Unit: 3991
`
`September 12, 2012:
`
`Status of Proceedings 3
`
`A request for inter partes reexamination of claims 1-25 of
`' United States Patent Number 7,534,366 (hereinafter “the
`‘366 patent”) was filed by a third party requester and was
`assigned Control No. 95/002,189 ("the '189 proceeding"). A
`second request for inter pan‘es reexamination of claims 1-25
`of the ‘366 patent was filed by a second third party requester
`on the same date and was assigned Control No. 95/002,204
`(5'the '204 proceeding").
`
`' November 26,2012:
`
`An "Order granting the request for inter partes reexamination
`of claims 1-25 of the ‘366 patent in the '189 proceeding was
`mailed.
`
`November 28, 2012:
`
`An Order granting the request for inter parfes reexamination
`ofclaims 1-25 of the ‘366 patent in the '204 proceeding was
`mailed.
`
`December 13, 2012:
`
`A decision merging the '189 proceeding and the '204
`proceeding was mailed.
`'
`
`January 30, 2013:
`
`A non—fina| Office action on the merits in the merged
`proceeding was mailed.
`
`April 1,2013:
`
`May 1, 2013:
`
`The patent ownerfiled a response to the non—final Office
`action including an amendment adding claims 26-81.
`
`The requesters of the ‘189 proceeding and the ‘204
`proceeding filed separate comments to the patent owner's.
`response filed on April 1, 2013.
`
`Scope of claims
`
`\
`
`ln 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 ‘366 patent contains
`
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`7 of 73
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`Application/Control Number: 95/002,189 & 95/002,204
`Art Unit: 3991
`’
`
`Page 3
`
`claimsI1—81 directed to a heat transfer composition for use in an air conditioning system.
`
`Independent claim 1 is representative:
`
`1. (Amended) A heat transfer composition for use in an air
`conditioning system comprising:
`(a) a refrigerant comprising at least about 50% by weight of 1,1 ,1,2—
`tetrafluoropropene (HFO—1234yf), said refrigerant having no
`substantial acute toxicity; and
`'
`(b) at least one poly alkylene glycol lubricant in the form of a
`homopolymer or co—polymer consisting of 2 or more oxypropylene
`groups and having a viscosity of from about 10 to about 200
`centistokes at about 37°C.
`-
`
`While claim 1 recites that the polyalkylene glycol lubricant is "in the form of a
`
`homopolymer or copolymer," claim 1 also recites that the polyalkylene glycol lubricant
`
`"consists of 2 or more oxypropylene groups" (emphasis added). Accordingly, claims 1-
`
`81 are directed to a heat transfer composition containing a polyalkyleneglycol
`
`homopolymer consisting of 2 or more oxypropylene groups, i.e., a polyoxypropylene
`
`ether containing terminal OH groups.
`
`Claim 8 submitted by the patent owner on 4/1/2013) contains a typographical
`
`error. Claim 8 improperly depends from claim 54 as opposed to claim 1 as originally
`
`patented. Since claim 8 does not contain any of the required markings to indicate
`
`changes made, claim 8 is hereby treatedas if it depends from claim 1.
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`Application/Control Number: 95/002,189 & 95/002,204
`
`Page 4
`
`Art Unit: 3991
`
`.Reguester's Proposed Rejections in the ‘189 Proceeding
`
`Duplicate Claims
`
`The requester of the ‘189 proceeding proposes new claims 27-30 be
`
`rejected as being substantial duplicates of claims 4-7 (see page 15 of the
`
`comments filed 5/1/2013).
`
`The above proposed rejection is not adopted since claim duplication is a matter
`
`of form, not substance. Thus, a claim rejection is not proper. See MPEP 706.01 and
`
`706.03(k).
`
`‘
`
`However, the patent owner is advised thatshould claims 4-7 be found allowable,
`
`claims 27-30, respectively, will be objected to under 37 CFR 1.75 as being substantial
`
`duplicates thereof. Claims 4-7 and 27-30 depend on claim 1 and recite the composition
`comprising certain amount of thelubricant. Claims 4-7 refer to the lubricant recited in
`claim 1 as “said lubricant" while claims 27-30 recite “said said alkylene glycol lubricant.”
`
`However, since the only lubricant recited in claim 1 is the alkylene glycol lubricant, both
`
`“said said alkylene glycol lubricant" recited in claims 27-30 and "said |ubricant" recited in
`
`claims 4-7 refer to the same lubricant recited in claim 1. "When two claims in an
`
`_ application are duplicates or else are so ‘close in content that they both cover the same
`
`thing, despite a slight difference in wording, it is proper after allowing one claim to object
`
`to the other as being a substantial duplicate of the allowed claim.” See MPEP
`
`§706.03(k).
`
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`9 of 73
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`Application/Control Number: 95/002,189 & 95/002,204
`Art Unit: 3991
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`'
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`Page 5
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of pre—AlA 55 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.
`
`' Claims 1-2, 4-12, 15-17 and 20-81 are rejected under pre-AIA 35 U.S.C. §
`
`103(a) as being unpatentable over JP-4-110388 to lnagaki et al. (hereafter
`
`"|nagaki") in view of U.S. Patent 4,755,316 to Magid et al. (hereafter "Magid").
`The above rejection was proposed by the requester of the ‘189 proceeding and
`is adopted for the reasons as set forth in the request, in the comments filed on
`
`5/1/2013 (pages 6-1 1)'and for the reasonsthat follow.
`
`|nagal<i teaches a fluid for heat transfer comprising an organic compound of the
`
`formula C3HmFn (wherein m is an integer of 1 to 5; n is an integer of 1 to
`
`the sum of
`
`m and n is equal to 6) and containing one double bond in its molecular structure (page
`
`1, lines 1-10). The compounds of the formula C3HmFn excel in characteristics as fluids
`
`for heat transfer and their coefficient of performance, freezing capacity, condensation
`
`pressure, and discharge temperature are well balanced. Moreover, sincethe boiling
`
`points of these compounds are similar to those of widely used R—12, R—22, R-114 and
`
`R-502, they are suitable for use at evaporating temperatures of -20 to 10 degrees C,
`
`and condensation temperatures of 30 to 60 degrees C (page 2,_ lines 62-76). The
`
`compounds "do not have any problem with respect to their general characteristics (eg.,
`
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`Application/Control Number: 95/002,189 & 95/002,204
`Art Unit: 3991
`
`I
`
`Page 6
`
`compatibility with lubricants, non—erodibility against materials etc.)" (page 3, lines 1-9).
`
`The 1,1,1,2—tetrafluoropropene (HFO—1234yf) compound of the claims is specifically
`disclosed in Embodiment 5 of lnagarki!
`
`While lnagaki broadly teaches that the heat transfer compounds are compatible
`
`with lubricants, lnagaki differs from the instant claims in not teaching a polyalkylene
`glycol lubricant consisting of 2. or more oxypropylene groups and having a viscosity of
`from about 10 to about 200 centistokes at about 37°C as claimed.
`
`Magid teaches that refrigeration equipment usingtetrafluoroethane as a working
`
`fluid may employ polyoxyalkylene. glycols as lubricating oils.‘ The glycols may be
`
`polyoxypropylene glycols.which should contain at least 80% oxypropylene units relative
`
`to the total (column 3, lines 34-40). The viscosity will be about 25-150"centistokes at
`
`37°C (column 3, lines 4849). The weight ratio of refrigerant to the glycol lubricant will
`
`be in the range 99/1 to 1/99, preferably 99/1 to 70/30 (column 3, lines 46-54).
`/
`
`It would have been obvious to one having ordinary skill in the art at the time the
`
`A
`
`invention was made to form a heat transfer composition comprising HFO—1234yf and a
`
`lubricant for use in an air conditioning system as taught by lnagaki wherein the lubricant
`
`is a polyoxyalkylene glycol lubricating oil as taught by Magid, including a polyalkylene
`glycol lubricant consisting of 2 or more oxypropylene groups and having a viscosity of
`from about 10 to about 200 centistokes at about 37°C as claimed, with the reasonable
`
`expectation of forming a heat transfer composition wherein the refrigerant is compatible
`
`with the lubricant as taught by lnagaki.
`
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`Application/Control Number: 95/002,189 & 95/002,204
`
`Page 7
`
`Art Unit:.43991
`
`Regarding claims 4-7, 12 and 17, it has long been an axiom of patent law that it
`
`is not inventive to discover the optimum or workable ranges of result-effective variables
`
`by routine experimentation. Peterson, 315 F.3d at 1330 ("The normal desire of scientists
`
`or artisans to improve upon what is already generally known provides the motivation to ‘
`
`determine where in a disclosed set of percentage ranges is theloptimum combination of
`percentages."); Aller, 220 F.2d at 456 ("[W]here the general conditions of a claim are I
`disclosed in the prior art, it is not inventive to discover the optimum or workable ranges
`
`by routine experimentat_ion."). A person. having ordinary skill in the art would have
`
`determined, through nothing more than routine experimentation, the range of
`
`concentrations of heat transfer fluid and lubricant in a heat transfer composition as
`
`taught by lnagaki in view of Magidso as to produce a heat transfer composition having
`
`the desired_properties. Accordingly, claims 4-7, 12 and 17 would have been obvious.to
`
`one having ordinary skill in the art.
`
`0
`
`With respect to newly added claims 31, 56, 69-70 and 74, lnagaki discloses that
`
`mixtures of the organic compound (C3HmFn) and at least one compound including HFC—
`
`32 and HFC-152a can be used in the heat transfer composition (page 2, lines 77-84).
`
`Newly added claims 26-30, 32-35, 51, 57 and 72-73 recite the same/similar
`
`limitations as original claims 4-7. Accordingly, these claims are rejected for the same
`
`reasons as stated above with respect to claims 4-7.
`
`0
`
`Newly added claims 36-45, 47-50, 52, 55-56, 58, 60-71 and 75-81 rec_ite the
`
`properties of the composition including flammability, relative capacity, stability when
`
`contacting aluminum, steel and copper, miscibility with lubricants, toxicity, COP and
`
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`

`
`Application/Control Number: 95/002,189 &.95/002,204
`
`Page 8
`
`Art Unit: 3991
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`(§WP. As stated above, Inagaki in view of Magid discloses the same composition as
`
`claimed. Accordingly, the same composition would also have the same properties as
`
`claimed.
`
`In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), also
`
`see MPEP 2112,01.
`
`Additionally, with respect to newly added claims 61, 65 and 71 ,' as stated above,
`
`Inagaki discloses that the refrigerants such as HFO—1234yf can be mixed with at least
`
`one compound including R—134a and the mixtures “do not have any problem with
`
`respect to their general characteristics” including “compatibility with lubricants.” Magid
`teaches that refrigeration equipment using tetrafluoroethane (R—134a) as a working fluid
`can employ PAGs as lubricating oils. Accordingly, the combination of Inagaki and
`
`Magid_ teaches the miscibility of the refrigerant with the lubricant as claimed.
`
`Further, with respect to newly added claims 46, 53-54, 59, 65 and 71, lnagaki
`
`_ discloses that the refrigerants which contain the organic compounds (e.g. HFO-1234yf)
`
`for heat transfer can be used in a refrigerator, heat pump or the like (page 1) and that
`
`the refrigerants "do not have any problem with respect to their general characteristics”
`
`including “non—erodibi|ity against materials” (page 3, lines 1-9). Accordingly, the
`
`refrigerants disclosed in Inagaki are expected to be non-erodible (stable) when in
`
`contact with commonly used metal materials such as aluminum, steel and copper under
`
`the conditions of use in the air conditioning system.
`
`ll.
`
`Claims 3, 13 and 14 are rejected under pre-AIA 35 U.S.C. 103(a) asbeing
`
`unpatentable over Inagaki in view of Magid as applied to claims 1-2, 4-12, 15-17
`
`13 of 73
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`13 of 73
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`

`
`Application/Control Number: 95/002189 & 95/002,204
`Art Unit: 3991
`‘
`
`in
`
`Page 9
`
`,
`
`and 20-81 above, and further in view of U.S. Patent 6,991,744 to Mahler et al.
`
`(hereafter "Mahler").
`
`The above rejection was proposed by the requester of the ‘189 proceeding and
`
`is adopted for the reasons as set forth in the request, in the comments filed on
`
`5/1/2013 (page 11) and for the reasons that follow.
`
`lnagaki in" view of Magid, as relied on above, differs from the instant claims in not
`
`teaching that the heat transfer composition contains a compatabilizer.
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`Mahler teaches lubricant and refrigerant compositions containing a
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`compatabilizer that satisfies the refrigeration and air—conditioning industries problem of
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`insolubility between conventional non—polar compression refrigeration lubricants and
`polar hydrofluorocarbon and/or hydrochlorofluorocarbon refrigerants (column 2, lines
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`’
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`44-49). The halogenated hydrocarbons may optionally further comprise up to 10 weight
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`percent of dimethyl ether, or at least one C3 to C5 hydrocarbon, e.g., propane,
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`propylene, cyclopropane, n—butane, i—butane and n—pentane (column 8, lines 56-60).
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`Compatabilizers may comprise from about O.5to about 50 weight percent of a linear or
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`cyclic aliphatic or aromatic hydrocarbon containing from 5 to 15 carbon atoms (column
`14, lines 32-36).
`V
`2
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`It would have been obvious to one having ordinary skill in_the art at the time the
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`invention was made to include a compatabilizer as taught by Mahler. in a heat transfer
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`composition as taught by lnagaki and Magid to improve the compatibility between the
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`refrigerant and lubricant as taught by Mahler.
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`Application/Control Number: 95/002,189 & 95/002,204
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`Page 10
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`Art Unit: 3991
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`III.
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`C.laims 4-7, 12, 17, 26-30, 32-37, 41-49, 51-54, 57-59, 61-64 and 72-73 are
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`rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over lnagaki in
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`view of Magid as applied to claims 1-2, 4-12, 15-17 and 20-81 above, and further in
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`view of U.S. Patent 6,374,629 to Oberle et al. (hereafter "Oberle").
`
`The requester of the ‘189 proceeding proposes claims 4-7, 12, 17, 26-30, 32-37,
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`41-49, 51, 56-64 and 72-73 be rejected as obvious over lnagaki in view of ‘Magid and
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`Oberle in the comments filed on 5/1/2013 (page 11). The proposed rejection of claims
`4-7, 12, 17, 26-30, 32-37, 41-49, 51,057-59, 61-64 and 72-73 is adopted for the‘
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`reasons as set forth in the request, in the comments (page 11) and for the reasons that
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`follow. Claims 52-54 are included because claims 52-54 depend on claim 51 and
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`‘contain the same lubricant concentration limitations as recited in claim 51. The
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`proposed rejection of claims 56 and 60 is not adopted since claims 56 and 60 do not 4_
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`recite any lubricant concentration in the composition.
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`J
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`lnagaki in view of Magid is relied upon for the reasons stated above. To the
`extent that lnagaki in view of Magid differs. from the instant claims in not specifically
`
`teaching the claimed concentration of lubricant in the heat transfer composition, Oberle
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`is relied on as teaching those limitations.
`
`Oberle teaches a lubricant—refrigerant composition comprising at least one
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`fluorine—containing hydrocarbon refrigerant containing 1 to 3 carbon atoms and at least
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`one lubricant comprising (1) a hydrocarbyl substituted arene, (2) a phosphate ester, (3)
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`an organic ester of a carboxylic acid and an alcohol, (4) a perfluoropolyethylene, (5) an
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`ether, (6) a polyether, (7) a polyalphaolefin, or (8) a mineral oil (abstract). Forthe
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`Application/Control Number: 95/002,189 &_95/002,204
`Art Unit: 3991
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`Page 11
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`lubricant/refrigerant pair, generally the_lubricant is present at from 0.1-80% by weight of
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`the pair, preferably at from 0.5-50% by weight of the pair and most preferably at from 1-
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`25% by weight of the pair (column 22, lines 1-4).
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`_ It would have been obvious to one having ordinary skill in the art at the time the
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`_ invention was made to form a heat transfer composition as taught by lnagaki in view of
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`Magid wherein the lubricant concentration is from 0.1-80% by weight as taught by
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`Oberle because Oberle teaches that in lubricant-refrigerant compositions the lubricant is
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`generally present at from 0.1-80% by weight of the pair, preferably at from 0.5-50% by
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`weight of the pair and most preferably at from 1-25% by weight of the pair.
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`IV.
`
`Claim 18 is rejected under pre-AIA T35 U.S.C. 103(a) as being unpatentable
`
`over lnagaki in view of Magid as applied to claims 1, 2, 4-12, 15-17 and 20-81
`
`above, and further in view of U.S. Patent 6,640,841 to Thomas et al. (hereafter
`
`"Thomas").- ‘
`
`The above rejection was proposed by the requester of the ‘189 proceeding and
`
`is adopted for the reasons as set forth in the request, in the comments filed on
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`5/1/2013 (page 11) and for the reasons that follow.
`
`lnagaki in view of Magid, as relied on above, differs from the instant claim in not
`
`teaching that the heat transfer composition contains a surfactant and a solubilizing
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`agent.
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`Thomas teaches a refrigerant composition comprising a hydrofluorocarbon
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`refrigerant, surfactant, and a solubilizing agent (abstract; column 3, lines 32-41). The
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`Application/Control Number: 95/002,189 & 95/002,204
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`Page 12
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`Art Unit: 3991
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`‘
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`surfactant, when added to a composition comprising a hydrocarbon-based lubricant and
`a non—chlorine containing refrigerant, increases the solubility or dispersibility of one
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`component in the other (column 3, lines 42-48). The solubilizing agents act as carriers ,
`for the surfactant and aid in enhancing the miscibility of hydrocarbon-based lubricants
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`and refrigerants (column 4, lines 34-38).
`
`It would have been obvious to one having ordinary skill in the art at the time the
`.
`invention was made to include a surfactant and a solubilizing agent as taught by
`
`Thomas in a ‘heat transfer composition as taught by lnagaki and Magid in order to
`
`improve the solubility, dispersibility and -miscibility between the refrigerant and lubricant
`
`as taught by Thomas.‘
`
`V.
`
`1 Claims 1, 2, 4-12, 15-17 and 19-81 are rejected under pre-AIA 35 U.S.C. §
`
`103(a) as beingunpatentable over lnagaki in view of the ACURA Service Bulletin
`
`No. 92-027,_pages 1-8, dated September 29, 1992 (hereafter "Acura") and
`
`Patentee's Admissions.
`
`‘
`
`The above rejection was proposed by the requester of the ‘189 proceeding and
`
`is adopted for the reasons as set forth in the request, in the comments filed on
`
`5/1/2013 (page 12) and for the reasons that follow.
`
`lnagaki as relied on above differs from the instant claims in not teaching a .
`
`'
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`polyalkylene glycol lubricant consisting of 2 or more oxypropylene groups and having a
`
`viscosity of from about 10 to about 200 centistokes at about 37°C as claimed.
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`Application/Control Number: 95/002,189 & 95/002,204
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`Page 13
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`Art Unit: 3991
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`‘
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`Acura discloses the polyalkylene glycol lubricant"ND—8 and its use with R-134 in an
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`automotive air conditioning system.
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`As stated on page 28 of the request,
`
`[a]ccording to the patent owner's own admission, particularly in the
`Remarks _made in the Supplemental Response dated November 10, 2008,
`ND-8 is one of the most widely used lubricants for automotive air
`.
`conditioning systems and it is a PAG lubricant that falls within the lubricant"
`‘ requirements of the present claims. See..Supplemental Response,
`,
`,
`'
`November 10, 2008 at page 20. As such, the Applicant admits that its
`claimed heat transfer composition would read on ND-8 in combination with
`an HFC compound, which was known prior to Applicant's filing, as shown
`in Service Bulletin that specifically teaches ND-8 for use as a lubricant
`with HFC compositions.
`
`It would have been obvious to one having ordinary skill in the art at the time the
`
`invention was made to form a heat transfer composition comprising HFO-1234y'f and a
`lubricant for use in an air conditioning system as taught by lnagaki wherein the lubricant
`
`is the polyoxyalkylene glycol lubricant ND-8 as taught by Acura and Patentee's
`
`Admissions with the reasonable expectation_of forming a heat transfer composition
`
`wherein the refrigerant is compatible with the lubricant as taught by lnagaki.
`
`Regarding claims 4-7, 12 and 17, a person having ordinary skill in the art would
`
`have determined, through nothing more than routine experimentation, the range of
`
`' concentrations of heat transfer fluid and lubricant in a heat transfer composition as
`
`taught by lnagaki in view of Acura and Patentee's Admissions so as to produce a heat
`
`transfer composition having the desired properties. Accordingly, claims 4-7, 12 and 17
`
`would have been obvious to one having ordinary skill in the art.
`
`Regarding claim 19, the '366 patent admits "[c]ommon|y used refrigerant
`
`lubricants such as Polyol Esters (POES) and Poly Alkylene Glycol (PAGs) that are used
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`1
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`Page 14
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`in refrigeration machinery with hydrofluorocarbon (HFC) refrigerants may be used with
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`the refrigerant compositions of the present invention" (column 6, lines 5-9).
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`Accordingly, it would have been obvious to one having ordinary skill in the art at
`
`the time the invention was made to include an admitted, commonly used refrigerant
`
`lubricant such as a polyol ester in a heat transfer composition comprising the
`hydrofluorocarbon HFO—1234yf as taught by lnagaki because lnagaki teaches the
`
`compounds,"do not have any problem with respect to their general characteristics (e.g.,
`
`compatibility with lubricants, non—erodibility against materials etc.)" (page 3, lines 1-9).
`
`1
`
`With respect to newly added claims 31, 56, 69-70 and 74, lnagaki discloses that
`
`mixtures of the organic compound (C3HmFn) and at least one compound including HFC-
`
`32 and HFC-152a can be used in the heat transfer composition (page 2, lines 77-84).
`
`Newly added claims 26-30, 32-35, 51, 57 and 72-73 recite the same/similar
`
`limitations as original claims 4-7. Accordingly, these claims are rejected for the same
`
`reasons as stated above with respect to claims 4-7.
`
`Newly added claims 36-45, 47-50, 52, 55-56, 58, 60-71 and 75-81 recite the
`
`properties of the composition including flammability, relative capacity, stability when
`
`contacting aluminum, steel and copper, miscibility with lubricants, toxicity, COP and
`
`GWP. As stated above, lnagaki in view of Magid discloses the same composition as
`
`claimed. Accordingly, the same composition would also have the same properties as
`claimed.
`/In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)., also
`
`see MPEP 2112.01.
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`Application/Control Number: 95/002,189 & 95/002,204
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`Page 15
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`Art Unit: 3991
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`Additionally, with respect to newly added claims 61, 65 and 71, as stated above,
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`lnagaki discloses that the refrigerants such as HFO-1234yf can be mixed with at least
`
`one compound including R—134a and the mixtures “do not have any problem with
`
`‘respect to their general characteristics” including “compatibility with lubricants.’-’ Magid
`
`teaches that refrigeration equipment using tetrafluoroethane (R-134a) as a working fluid
`can employ PAGs as lubricating oils. Accordingly, the combination of lnagaki and
`
`Magid teaches the miscibility of the refrigerant with the lubricant as claimed.
`Further, with respect to newly addednclaims 46, 53-54, 59, 65 and 71, lnagaki
`
`discloses that the refrigerants which contain the organic compounds (e.g. HFO-1234yf)
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`for heat transfer can