HONEYWELL INTERNATIONAL INC. (OWNER) et al.

Patent Trials and Appeals Board

May 1, 2020

2020000937 (P.T.A.B. May. 1, 2020)

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. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/002,189 09/12/2012 7534366 9404.21831-REX 1271
116637 7590 05/01/2020
HONEYWELL/FOX/BANNER
Patent Services
115 Tabor Road
PO Box 249
MORRIS PLAINS, NJ 07950
EXAMINER
XU, LING X
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
05/01/2020 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)
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. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/002,204 09/12/2012 7,534,366 B2 28298-0003 1051
116637 7590 05/01/2020
HONEYWELL/FOX/BANNER
Patent Services
115 Tabor Road
PO Box 249
MORRIS PLAINS, NJ 07950
EXAMINER
XU, LING X
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
05/01/2020 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)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MEXICHEM AMANCO HOLDING S.A. de C.V. and
DAIKIN INDUSTRIES, LTD.
Requesters and Respondents

v.

HONEYWELL INTERNATIONAL INC.
Patent Owner and Appellant
____________

Appeal 2020-000937
Reexamination Control 95/002,189 and 95/002,204
Patent US 7,534,366 B21
Technology Center 3900
____________

Before JEFFREY B. ROBERTSON, RAE LYNN P. GUEST, and
JANE E. INGLESE, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION UNDER 37 C.F.R. § 41.77(f)

1 US Patent 7,534,366 B2 issued on May 19, 2009 to Rajiv R. Singh, et al.
(hereinafter “the ’366 patent”).
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This is a decision under 37 C.F.R. § 41.77(f). In a Decision on
Remand from the Court of Appeals for the Federal Circuit entered March 22,
2019 (“Remand Decision”), the Board entered a new ground of rejection
under 37 C.F.R. § 41.77(b) for claims 1–26, 31–37, 46–49, 58, 59, 61–68,
70–75, 80, and 81. Remand Decision 6–8, 41.
In response to the Remand Decision, Patent Owner Honeywell
International Inc. (“Patent Owner”) requested reopening of prosecution
under 37 C.F.R. § 41.77(b)(1). RESPONSE UNDER 37 C.F.R.
§ 41.77(b)(1) REQUESTING REOPENING OF PROSECUTION filed May
21, 2019 (hereinafter “Request to Reopen” or “Req. to Reopen”). The
Request to Reopen presented a Declaration of Dr. Darryl DesMarteau with
exhibits dated May 17, 2019 (hereinafter “DesMarteau Declaration”) as
evidence in response to the new grounds of rejection. (Req. to Reopen 2–
30.)
Third Party Requester Mexichem Amanco Holding S.A. de C.V.
(“Mexichem”) filed THIRD PARTY RESPONDENT’S COMMENTS ON
PATENT OWNER’S RESPONSE REQUESTING REOPENING OF
PROSECUTION on June 21, 2019 (hereinafter “Mexichem 41.77(c)
Comments” or “Mexichem 41.77(c) Comm.”) and Third Party Requester
Daikin Industries, Ltd. (hereinafter “Daikin”) filed “REQUESTER DAIKIN
INSTURIES, LTD.’S COMMENTS UNDER 37 C.F.R. § 41.77(c) ON
PATENT OWNER’S RESPONSE REQUESTING REOPENING OF
PROSECUTION” on June 21, 2019 (hereinafter “Daikin 41.77(c)
Comments” or “Daikin 41.77(c) Comm.”) in response to the Patent Owner’s
Request to Reopen.
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In an order remanding the case to the Examiner, Patent Owner’s
Request to Reopen including the exhibits thereto were entered for
consideration by the Examiner. (ORDER REMANDING INTER PARTES
REEXAMINATION UNDER 37 C.F.R. § 41.77(d) to the EXAMINER
mailed July 18, 2019.) In addition, Requesters’ comments and
accompanying exhibits were also entered for consideration by the Examiner.
An Examiner’s Determination under 37 C.F.R. § 41.77(d) was issued
on September 12, 2019 (hereinafter, “Ex. Det.”) in which the Examiner
determined that Patent Owner’s Response was insufficient to overcome the
new rejections set forth in the Decision. (Ex. Det. 3.)
Patent Owner filed a response to the Examiner’s Determination.
(Response to the Examiner’s Determination Under 37 C.F.R. § 41.77(e)
filed October 11, 2019, hereinafter, “PO 41.77(e) Resp.”) Requester
Mexichem filed a reply to Patent Owner’s 37 C.F.R. § 41.77(e) Response.
(Third Party Requester’s Comments on Patent Owner’s Response to
Examiner’s Determination Under 37 C.F.R. § 41.77(e) filed November 12,
2019, hereinafter “Mexichem 41.77(e) Rep.”). Likewise, Requester Daikin
filed a reply to Patent Owner’s 37 C.F.R. § 41.77(e) Response. (Requester
Daikin Industries, LTD.’s Reply to Patent Owner’s Response to the
Examiner’s Determination Under 37 C.F.R. § 41.77(e) filed November 12,
2019, hereinafter “Daikin 41.77(e) Rep.”).
Pursuant to 37 C.F.R. § 41.77(f) the proceeding has been returned to
the Board in order to “reconsider the matter and issue a new decision.” Also
pursuant to 37 C.F.R. § 41.77(f), this decision is deemed to incorporate the
earlier decision, except as for those portions specifically withdrawn.
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DISCUSSION
Reasonable Expectation of Success
In its Request to Reopen, Patent Owner contends the Remand
Decision does not cure any of the errors identified by the Federal Circuit.
Req. to Reopen 3. As to whether there would have been a reasonable
expectation of success in combining HFO-1234yf2 and polyalkylene glycol
(PAG) lubricant, Patent Owner contends the DesMarteau Declaration
provides evidence that hydrofluorinated olefins (HFOs) were understood to
be more reactive than saturated fluorinated hydrocarbons, and that PAG
lubricants were also known to have issues with reactivity. Id. at 4–5. In
particular, Patent Owner relies on the DesMarteau Declaration in order to
expand upon the explanations provided by Dr. Chambers3 on potential
reactivity between HFOs and PAG. Id. at 5, 8, 11–14 (citing DesMarteau
Dec. ¶¶ 13–15, 30–40, and 43–47). Further, Patent Owner argues Omure,4
cited in the new ground of rejection, does not provide evidence that a one of
ordinary skill in the art would have had a reasonable expectation of success
in combining HFO-1234yf and PAG. Id. at 15–18 (citing DesMarteau Decl.
¶¶ 66–80).

2 HFO-1234yf has the structure (F3C)(F)C=CH2. Although claim 1 refers to
HFO-1234yf as 1,1,1,2-tetrafluoropropene, the specification of the ’366
patent refers to HFO-1234yf as it is more often named as 2,3,3,3-
tetrafluoropropene. See, e.g., the ’366 patent, col. 4, ll. 47–48.
3 Declaration of Richard D. Chambers executed March 27, 2013 (Ex. B,
Appeal Br. 45; hereinafter “Chambers Decl.”) and attached exhibits.
4 JP H5-85970A, published April 6, 1993 and naming Yukio Omure et al. as
inventors.
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We have considered Patent Owner’s new evidence and arguments
submitted with the Request to Reopen and agree with the Examiner, that
such are insufficient to demonstrate that one of ordinary skill in the art
would not have had a reasonable expectation of success in combining HFO-
1234yf with PAG lubricants.5 In this regard, and contrary to Patent Owner’s
argument that the Examiner did not meaningfully consider the new evidence
(PO 41.77(e) Resp. 1), the Examiner referred to the DesMarteau Declaration
in discussing reasonable expectation of success, and pointed to portions of
the Remand Decision to determine that Patent Owner’s evidence was
unpersuasive. Ex. Det. 3–6.
We point out that the Remand Decision stated that the evidence, when
weighed, favored a reasonable expectation of success in combining HFO-
1234yf and PAG. Remand Decision 15–19, 21, 41. As the Board
emphasized in the Remand Decision, some degree of unpredictability is not
fatal to a finding of a reasonable expectation of success.6 Remand Decision

5 As to Patent Owner’s citation to evidence already of record relied on
throughout the PO 41.77(b)(1) Response and attached to the DesMarteau
Declaration as Exhibits (see Req. to Reopen 4, 6–7, 9, 19, 24–25, 27–30, and
PO 41.77(e) Resp. 9–10, 22–25), the Board has already considered such
evidence throughout the course of this proceeding and as such, we focus on
the new evidence submitted by Patent Owner and its persuasiveness in light
of the record as a whole.
6 In this regard, we are not persuaded by Patent Owner’s arguments that the
Board misinterpreted the claims or discounted certain claims. Req. to
Reopen 6–7. That is, stating “the claims do not require any particular degree
of stability or reactivity,” does not mean that the claims do not require any
degree of stability or reactivity. Rather, the Board recognized the claims
require some level of stability or reactivity to be operable in an air
conditioning system. See Remand Decision 13; 16 (finding that Inagaki (JP
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13; see Mexichem 41.77(e) Rep. 10 (quoting In re O’Farrell, 853 F.2d 894,
903 (Fed. Cir. 1988) “Obviousness does not require absolute predictability
of success.”).
Also in the Remand Decision, the Board found Inagaki expressly
discloses HFO-1234yf as a refrigerant that is compatible with lubricants, and
the ’366 Patent does not address any unexpected compatibility of HFO-
1234yf with PAG lubricant. Remand Decision 10, 21, citing Inagaki 4
(Embodiment 5), 2, col. 2, 3, col. 1; ’366 Patent, col. 6, ll. 5–9. The Board
found that the ’366 patent, the prior art, namely Bivens, Magid, Mahler,
Acura, and Omure, as well as the testimonial evidence of record, all suggest
that the skilled artisan would have recognized PAG was a well-known and
commonly-used lubricant for air conditioning systems at the time of the
invention. Remand Decision 17–19 (citing the Board’s 2016 Decision on
Appeal, 2016 WL 1254603 *9, 10, Bivens, col. 1, ll. 17–18, 36–50; Magid,
col. 4, l. 26 to col. 5, l. 41; Acura 1, col. 1, last two ¶¶; Mahler, col. 1, ll.
39–45; Thomas Decl. ¶ 8). The Board additionally found Omure, in
disclosing a combination of an HFO compound (hexafluoroisobutylene or
HFIB) with PAG, provides evidence that at the time of the invention one of
ordinary skill in the art would have, and did, consider using at least one HFO
in combination with PAG, contrary to Patent Owner’s arguments.7 Remand
Decision 11, citing Omure ¶ 14.

H04-110388, published April 10, 1992 and naming Sadayasu Inagaki et al.
as inventors) expressly demonstrates HFOs are useful as air-cooling
refrigerants).
7 In this regard, Patent Owner’s citation to IPR2015-01309 in order to
support the position that the Board “has recognized on numerous occasions”
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We acknowledge the opinions of Dr. DesMarteau,8 and in particular,
that he personally would have expected the combination of HFO-1234yf and
PAG to be too reactive and unstable. See DesMarteau Decl. ¶ 12. Dr.
DesMarteau explained that due to the presence of a double bond in HFO-
1234yf, one of ordinary skill in the art would have expected it to dimerize,
react with peroxides, and participate in other chemical reactions
(nucleophilic addition, free-radical polymerization, HF elimination, and
electrophilic addition), either alone or when combined with PAG lubricants,

that Omure does not demonstrate a reasonable expectation of success in
combining HFO-1234yf with PAG (Req. to Reopen 16, citing Paper No. 8,
at 17, Institution Decision December 9, 2015) is not persuasive. The
primary basis for finding a reasonable expectation of success in combining
HFO-1234yf with PAG has always been the express teachings of Inagaki
that HFO-1234yf was compatible with lubricants and that the art at the time
of the invention recognized PAG as a common lubricant for HFC-based
refrigerants. Importantly, as Mexichem points out, the claims in IPR2015-
01309 including PAG lubricants were found unpatentable even without
Petitioner making a sufficient argument as to the relevance of Omure.
Mexichem 41.77(e) Rep. 13–14 citing Final Written Decision, December 9,
2016 at 31–32.
8 We do not consider Dr. DesMarteau’s discussion of art published after the
filing date of the ’366 Patent. DesMarteau Decl. ¶¶ 45, 49–51; Ex. 5, 29,
and 33, 34, 39, 47, and 48. The references cited provide evidence that, even
as late as 2011, the art sought to improve the stability of HFO-1234yf and
PAG, calling into question whether the combination is as stable as alleged
by Patent Owner, particularly in light of the lack of relevant stability
analysis or examples specifically combining HFO-1234yf and PAG in the
’366 patent. See DesMarteau Decl. Ex. 29 (Tsuchiya et al. “Tsuchiya”
US2011/0312101 A1, published December 22, 2011), ¶¶ 6, 7; see also Van
Horn (US 2012/0292556 A1, published November 22, 2012, DesMarteau
Decl., Ex. 5) ¶ 8.
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such that the combination would be too unstable for the use in air
conditioning systems. DesMarteau Decl. ¶¶ 20, 29–47.
The Examiner did not find this evidence persuasive. Ex. Det. 8–9.
Although we appreciate the detailed explanations given by Dr. DesMarteau,
the Board previously considered similar arguments with respect to the
stability of HFO-1234yf in the Remand Decision as provided, for example,
in the Chambers Declaration. Remand Decision 15–17. In this regard, we
do not disagree with the description of general chemical reactions in the
DesMarteau Declaration. See Mexichem 41.77(c) Comm., Second Corr
Declaration, ¶¶ 11, 12; Sandford Declaration, ¶¶ 18, 19, and 33. However,
we remain of the view that one of ordinary skill in the art would have had a
reasonable expectation of success in combining HFO-1234yf and PAG.9
That is, Dr. DesMarteau stated that before 2002, he would not have
considered using unsaturated fluorocarbons as refrigerants, due to the
aforementioned concerns (DesMarteau Decl. ¶ 20), yet, as discussed above,
Inagaki and Omure provide evidence that unsaturated fluorocarbons at the
time were used as refrigerants. In addition, regarding the use of unsaturated
fluorinated hydrocarbons, Daikin has cited evidence to show that
unsaturated fluoropropenes (all HFOs) were indeed considered to be
refrigerants. Daikin 41.77(c) Comm., Declaration of Steven J. Brown ¶ 13,

9 We are not persuaded that the Board improperly discounted claims 22, 46,
59, 65, and 71 as argued by Patent Owner. Req. to Reopen 7, citing Remand
Decision 13, FN17 (citing Patent Owner Appeal Br. 32–33). Despite Patent
Owner’s arguments to the contrary, the arguments based on reactivity of the
double bond in HFO-1234yf with metals, are based on general arguments
regarding HFO reactivity. Id.; Ex. Det. 7.
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Ex. 2, Butler, U.S. 3,733,318, issued March 27, 1973, col. 2, ll. 7–12; Ex. 3,
Sakyu et al., U.S. 6,111,150, issued August 29, 2000, col. 1, ll. 47–51.
Mexichem submitted Declaration evidence to support the findings reported
in Inagaki that HFO-1234yf had been identified previously as a good
refrigerant that would work well with lubricants. Second Corr Decl. ¶ 20;
Sandford Decl. ¶¶ 53, 54.
Moreover, we, like the Examiner, are also not persuaded by Patent
Owner’s arguments that one of ordinary skill in the art would not have had a
reasonable expectation of success in combining HFO-1234yf with PAG
because the hexafluoroisobutylene (HFIB) disclosed in Omure is not
indicative of the properties of HFO-1234yf. Ex. Det. 9–13; Req. to Reopen
15–16, citing DesMarteau Decl. ¶¶ 73, 80. In this regard, we emphasize that
Omure was cited to rebut Patent Owner’s general arguments and evidence
that no skilled artisan would have used an HFO with a PAG lubricant prior
to the ’366 Patent, despite the teachings of Inagaki of compatibility, and the
recognition in the art of PAG as a common lubricant for HFC-based
refrigerants. See Remand Decision 15. In addition, we agree with
Mexichem that Patent Owner’s arguments relate to the general relative
reactivity of HFIB versus HFO-1234yf and do not speak to the expectation
of HFO-1234yf in combination with PAG. Mexichem 41.77(e) Rep. 4; see
2nd Corr Decl. ¶¶ 32, 45.
Further, Mexichem and Daikin have provided evidence that part of the
consideration of one of ordinary skill in the field of refrigerants is potential
reactivity of the refrigerant and lubricant, including utilization of different
techniques known at the time of the invention to mitigate or eliminate such
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reactivity. Mexichem 41.77(c) Comm., 2nd Corr Decl. ¶¶28–35, Sandford
Decl. ¶¶ 22, 26–28; Daikin 41.77(c) Comm., Brown Decl. ¶¶ 26–29, 45, and
46. In particular, the Second Corr Declaration provides evidence that at the
time of the invention PAG lubricant properties, such as hygroscopic and
oxidation properties were adjusted by controlling the nature of the
polyalkylene backbone, capping the hydroxyl end groups, and adding
antioxidants. 2nd Corr Decl., ¶ 29, Ex. C, p. 246; Brown Decl. ¶ 46, Ex. 13,
p. 170. Thus, even accepting the statements in the DesMarteau Declaration
that one of ordinary skill in the art would have expected HFO-1234yf to be
more reactive relative to saturated hydrofluorocarbons, the DesMarteau
Declaration does not account for the known techniques available to one of
ordinary skill in the art to manage this reactivity. Accordingly, we are of the
view that the potential for HFO-1234yf and PAG lubricant to react via the
different mechanisms detailed by the DesMarteau Declaration would not
have led one of ordinary skill in the art to lack a reasonable expectation of
success in combining HFO-1234yf and PAG at the time of the invention.
See Ex. Det. 9.
After considering the evidence as a whole, we assign greater weight to
the express disclosures of the prior art in Inagaki, Bivens, Acura, Magid, and
Omure, which is supported by the Second Corr Declaration and Sandford
Declaration and is more reflective of the understanding of one of ordinary
skill in the art at the time of the invention, over the testimony and evidence
in the DesMarteau Declaration.

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Unexpected Results
Patent Owner also contends that the Board misunderstood the results
of testing described in the Thomas Declaration10 demonstrating that the
combination of HFO-1234yf and PAG are unexpectedly stable. Req. to
Reopen 19–23 (citing DesMarteau Decl. ¶¶ 31–34, 56–58, 60–67). Patent
Owner argues that, when all the tested properties of the refrigerant PAG
combinations discussed in the Thomas Declaration, namely formation of
dimers, total acid number (TAN), and fluoride ion content, are properly
considered, the combination of HFO-1234yf and PAG is unexpectedly
stable. In particular, Patent Owner contends that the Board placed more
weight on the fluoride and TAN values than the formation of dimers, and as
such, ignored a holistic approach to stability, where a variety of tests must be
analyzed together to determine stability. Id. at 19. Patent Owner contends
that dimerization is important because of the high boiling point of dimers as
compared to their constituent monomers, which means the dimerized
refrigerants would not transfer heat effectively. Id. at 20, citing DesMarteau
Dec. ¶ 63. Accordingly, Patent Owner argues that when the test results are
viewed in combination, the HFO-1234yf/PAG combination demonstrates
unexpected stability as compared to the other tested combinations. Id. at 22,
citing DesMarteau Decl. ¶¶ 60–67. In addition, Patent Owner contends that
the unexpected results were demonstrated relative to the closest prior art,
which is HFO-1234ze, the closest structural isomer to HFO-1234yf. Id. at
22–23, citing DesMarteau Decl. ¶ 64.

10 Declaration of Raymond H. Thomas executed March 29, 2013 (Ex. F,
Appeal Br. 49; hereinafter “First Thomas Decl.”) and attached exhibits.
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Daikin contends that Patent Owner itself has not adhered to a holistic
approach by taking the position that the presence of dimers amounts to a
“pass/fail” criterion. Daikin 41.77(c) Comm. 4–5, 16–17. In this regard,
Daikin argues that Patent Owner emphasizes the presence of an unqualified
amount of dimers to characterize HFO-1243zf as insufficiently stable,
without having to consider the superior fluoride and TAN numbers as
compared to the other refrigerants listed in Table 3 of the Thomas
Declaration. Id. at 17. Daikin also contends that Dr. Thomas tested the
stability of refrigerant-lubricant pairs according to procedures outlined in
ANSI/ASHRAE Standard 97, which was the industry standard at the time,
and which states that the method of analysis “‘is not a specification with
pass/fail criteria.’” Id., citing Brown Decl. ¶¶ 48, 49. Daikin contends that
Patent Owner has incorrectly treated HFO-1234ze as the closest prior art
because the claims of the ’366 Patent are directed to a heat transfer
composition, not to a refrigerant alone. Id. at 19–20. Thus, Daikin contends
that the Board fully considered all three of the tests in Table 3 of the Thomas
Declaration in its Remand Decision. Id. at 5, 17.
Mexichem contends that the results in the Thomas Declaration are
irrelevant because the tests do not compare the closest prior art, which is
Inagaki, and the tests merely confirm the teachings of Inagaki that HFO-
1234yf is compatible with known lubricants and the prior art. Mexichem
41.77(c) Comm. 13.
We have considered the additional arguments and new evidence
presented by Patent Owner and agree with the Examiner that the evidence of
record is insufficient to support Patent Owner’s position that the
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combination of HFO-1234yf and PAG produced unexpected results. Ex.
Det. 14–15. Although Dr. DesMarteau emphasizes the importance of dimer
formation in the tests performed by Dr. Thomas, we remain of the view that
when the results are considered as a whole, they are insufficient to
demonstrate that the properties imparted by the combination of HFO-1234yf
and PAG amount to a difference in kind rather than a difference in degree, as
argued by Patent Owner. That is, taking into account Patent Owner’s
contention that TAN value, dimer formation, and fluoride-ion content are all
properties that must be considered, we are not persuaded that we did not
consider all properties.
Setting aside the issue of whether the Thomas Declaration compares
the closest prior art, the ’366 Patent discloses testing of the compatibility
between HFOs, including HFO-1234ze and HFO-1243zf, and PAG oil,
which were also combinations tested in the Thomas Declaration. ’366
Patent, col. 12, l. 57 – col. 13, l. 20; Thomas Decl., Ex. G, Table 3. The
’366 Patent tests the combinations at 350°C in the presence of aluminum,
copper, and steel coupons for one week. Id. The ’366 Patent states that
“[i]n all cases, there is minimal change in the appearance of the contents of
the tube. This indicates that the refrigerant compounds and compositions of
the present invention are stable in contact with aluminum, steel and copper
found in refrigeration and air conditioning systems.” Id. at col. 13, ll. 5–19.
Notably, the ’366 Patent does not provide any stability data for HFO-1234yf
with PAG oil for comparison and, at best, groups the stability of HFO-
1234yf with the specifically tested HFOs disclosed in the ’366 Patent,
including HFO-1234ze and HFO-1243zf. Id. Thus, although Dr.
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DesMarteau discusses the results in the Thomas Declaration as indicating
that HFO-1243zf “exhibits a serious stability problem” when combined with
PAG “as a result of the formation of dimers” (¶ 62), the ’366 Patent itself
contradicts the Declaration results describing that HFO-1243zf and PAG
indeed is considered stable. Accordingly, we assign little weight to the
DesMarteau Declaration in this regard, and find the DesMarteau Declaration
insufficient to support Patent Owner’s position that the evidence in the
Thomas Declaration demonstrates unexpected results in the combination of
HFO-1234yf and PAG.

Inherency
Patent Owner argues that the Board improperly relies on inherency
with respect to properties of the composition including toxicity,
flammability, and miscibility.11 Req. to Reopen 23–24, 26–28 (citing
DesMarteau Decl. ¶¶ 29, 78–80.)
Toxicity and Flammability
Patent Owner contends that the Board misconstrues Patent Owner’s
arguments with respect to toxicity and flammability, because one of ordinary
skill in the art would have expected that HFOs would likely be toxic and
flammable, such that one of ordinary skill in the art would not have used

11 We do not address Patent Owner’s arguments regarding Groups VI and X,
claims 36, 37, 46–49, 70, and 75. Req. to Reopen 25–26. Patent Owner
does not rely on the DesMarteau Declaration, and as a result, such
arguments amount to a request for rehearing, which is not proper in a request
to reopen prosecution. See MPEP § 2682(II).

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HFO-1234yf for air conditioning. Id. at 23–25, citing DesMarteau Decl.
¶¶ 29, 78, and 79.
Daikin argues that the Remand Decision is not based on inherency,
but on specific teachings in the prior art. Daikin 41.77(c) Comm. 22.
Regarding flammability, Daikin argues that the presence of a carbon-carbon
double bond by itself would not signal any expectation regarding
flammability, and that one of ordinary skill in the art would have expected
HFO-1234yf to be only mildly flammable, which would not deter one of
ordinary skill in the art from using HFO-1234yf with PAG lubricant. Id. at
23, citing Brown Decl. ¶¶ 52–56.
Mexichem argues the toxicity and flammability characteristics of
HFO-1234yf as claimed are identical to those characteristics of HFO-1234yf
disclosed in Inagaki, and Patent Owner has not provided any evidence that
such characteristics were improved by the addition of the PAG lubricant.
Mexichem 41.77(c) Comm. 15.
The Examiner determined Patent Owner’s arguments and evidence
were not persuasive in view of the Remand Decision’s findings that the
teachings of the prior art were sufficient to provide a reason to use HFO-
1234yf in conjunction with a PAG lubricant. Ex. Det. 15–18.
We are not persuaded by Patent Owner’s arguments. Rather, we
agree with the Examiner that the opinions in the DesMarteau Declaration are
not sufficient to outweigh the Board’s findings and conclusions in the
Decision on Remand regarding toxicity and flammability properties HFO-
1234yf/PAG combination. That is, the DesMarteau Declaration, similar to
the Chambers Declaration, relies on the alleged general expectation that
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unsaturated fluorocarbons were more reactive than saturated fluorocarbons
in order to support the position that the “no substantial acute toxicity” and
flammability properties of HFO-1234yf would have been unexpected.
DesMarteau Decl. ¶ 29. As discussed in the Remand Decision, the toxicity
property of HFO-1234yf is described in the ’366 Patent as belonging to the
particular refrigerant, and the Board determined it was appropriate to rely on
the inseparable properties possessed by HFO-1234yf, disclosed expressly as
a refrigerant in Inagaki, in considering whether the claims would have been
obvious over the prior art of record. Remand Decision 27–30, citing In re
Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011); In re Kubin, 561 F.3d 1351,
1357 (Fed. Cir. 2009); Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362,
1369 (Fed. Cir. 2012). The DesMarteau Declaration’s reliance on the
general reactivity of HFOs is insufficient to outweigh the express teaching of
the HFO-1234yf compound by Inagaki relied upon in the Decision.
We are also unpersuaded by the position in the DesMarteau
Declaration that HFIB disclosed in Omure was known to be acutely toxic
and unsafe such that one of ordinary skill in the art would have been
deterred from pursuing other HFOs, including HFO-1234yf, for use in air
conditioning, where toxicity is a concern. DesMarteau Decl. ¶¶ 78, 79,
citing Ex. 15, at 5, 10. Again, we emphasize that Inagaki expressly discloses
the same compound, HFO-1234yf, which has excellent refrigerant
properties. Remand Decision 29. Thus, whether HFIB is acutely toxic does
not change the express disclosure of Inagaki of the identical refrigerant
compound.
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Patent Owner contends, “the same argument applies to flammability”
relying on the same paragraph in the DesMarteau Declaration discussed
above. Req. to Reopen 24, citing DesMarteau Decl. ¶ 29. We are not
persuaded by this argument for similar reasons as discussed above with
respect to toxicity.
Miscibility
Patent Owner contends miscibility is an unpredictable property and
contends that simply because HFO-1234yf and PAG are polar compounds
“does not necessitate that they would be miscible in one another.” Req. to
Reopen 26–28, citing DesMarteau Dec. ¶ 80. In particular, Patent Owner
contends that miscibility is not binary, but rather, a spectrum, which is
unpredictable. Id. Patent Owner points out that one polar
hydrofluorocarbon, R-143a (a saturated fluorocarbon), was found to be
immiscible with PAG lubricants. DesMarteau Decl. ¶ 80, Ex. 49 at ¶ 12.
Daikin contends the Board explained why Patent Owner’s arguments
with respect to miscibility were not persuasive, and Omure, in disclosing
that the HFO disclosed therein as superior intersolubility with PAG, would
provide a reasonable expectation of success in combining HFO-1234yf with
PAG. Daikin 41.77(c) Comm. 25–28. Daikin contends that one clear outlier
(R-143a), does not disturb the general expectation that HFCs were miscible
with PAG lubricants. Id. at 26, citing Brown Decl. ¶ 66.
In the Remand Decision, the Board considered miscibility as a
property of the combination of HFO-1234yf and PAG, and that in view of
the knowledge possessed by one of ordinary skill in the art that polar
lubricants such as PAG and POE were used with generally polar
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hydrofluorocarbon refrigerants, while non-polar lubricants (mineral oil and
alkylbenzene) were used with generally non-polar hydrofluorocarbon
refrigerants, one of ordinary skill in the art would have had a reasonable
expectation of success in producing miscible combination between HFO-
1234yf and PAG. Remand Decision 34–38.
The Examiner did not find Patent Owner’s arguments and evidence
persuasive in view of the Remand Decision, and in view of the additional
disclosure in Omure that the HFO has “superior intersolubility to PAG-
based (polyalkylene glycol-based) oil, polyester-based oil, polyester-based
oil, etc.” Ex. Det. 22, quoting Omure ¶ 14. In addition, the Examiner did
not find Patent Owner’s evidence that one hydrofluorocarbon was not
miscible with PAG persuasive, and determined that the prior art relied on by
the Board supported a reasonable expectation of success that the
combination of HFO-1234yf and PAG would be miscible. Id. at 23–24.
We agree with the Examiner. Although we acknowledge that
miscibility may not be “binary” as argued by Patent Owner, the question is
whether, given the knowledge possessed by one of ordinary skill in the art,
there would be a reasonable (not absolute) expectation of success that HFO-
1234yf would be miscible with PAG oils. We are of the view that the prior
art discussed in the Remand Decision (Remand Decision 35–36, citing
Bivens, col. 1, ll. 36–42; Magid, col. 4, l. 26 to col. 5, l. 41; ACURA 1, col.
1, last two ¶¶; Mahler, col. 1, ll. 39–45, col. 2, ll. 7–17) outweighs Patent
Owner’s evidence such that one of ordinary skill in the art would have had a
reasonable expectation that HFO-1234yf would be miscible with PAG oils.

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Secondary Considerations
Patent Owner disagrees with the Board’s conclusion that the evidence
of long-felt need, skepticism of others, industry praise, and commercial
success was not sufficient to outweigh the evidence in favor of obviousness.
Req. to Reopen 28–30. Although Patent Owner mostly refers to evidence
already of record, Patent Owner does cite to Tsuchiya, a later patent
application by Daikin (DesMarteau Declaration Ex. 29, ¶ 7) in order to argue
that Dr. Shibanuma’s statements12 that HFO-1234yf was abandoned for
economic reasons are not accurate, but rather due to stability problems with
HFO-1234yf. Req. to Reopen 29. We are not persuaded by this argument in
light of the evidence of record viewed as a whole because such evidence
does not reflect the state of the art at the time of the invention as discussed
above (FN10, supra), and therefore does not necessarily reflect an
inconsistency in Dr. Shibanuma’s position. See Daikin 41.77(c) Comm. 29,
citing Shibanuma Decl. ¶¶ 10–15.
The remainder of Patent Owner’s arguments relate to evidence
already of record, which are not appropriate in a request to reopen
prosecution. See FN13, supra.

CONCLUSION
In view of the discussion above, we find Patent Owner’s evidence and
argument to be insufficient to overcome the new grounds of rejection under
37 C.F.R. § 41.77(b) of claims 1–26, 31–37, 46–49, 58, 59, 61–68, 70–75,

12 Declaration of Takashi Shibanuma executed July 28, 2014 (Ex. 4, Req.
Mex. Br. 11; Ex. 17, Req. Dai. Br., Exhibit App’x 2) and attached exhibits.
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80, and 81 under 35 U.S.C. § 103(a) as unpatentable over Inagaki in view of
Magid, Mahler, Minor, Bivens, Oberle, Thomas, ACURA, Patentee’s
Admissions, Katafuchi, and Omure set forth in the Remand Decision.
Outcome of Decision:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–26, 31–
37, 46–49,
58, 59, 61–
68, 70–75,
80, 81
103(a) Magid, Mahler,
Minor, Bivens,
Oberle, Thomas,
ACURA,
Patentee’s
Admissions,
Katafuchi, Omure
1–26, 31–
37, 46–49,
58, 59, 61–
68, 70–75,
80, 81

In accordance with 37 C.F.R. § 41.79(a)(4), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he new decision of the Board under § 41.77(f).” A request
for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments
in opposition to the request and additional requests for rehearing must be in
accordance with 37 C.F.R. § 41.79(c)–(d), respectively. Under 37 C.F.R.
§ 41.79(e), the times for requesting rehearing under paragraph (a) of this
section, for requesting further rehearing under paragraph (c) of this section,
and for submitting comments under paragraph (b) of this section may not be
extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
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been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED; 37 C.F.R. § 41.77(f)

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PATENT OWNER:

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