Ex Parte 8,033,120 et al

Patent Trial and Appeal Board

Mar 29, 2016

95001783 (P.T.A.B. Mar. 29, 2016)

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.
95/001,783 11/08/2011 8,033,120 9404.21592-REX 8580
116637 7590 03/30/2016
HONEYWELL/FOX/BANNER
Patent Services
115 Tabor Road - PO Box 377
MORRIS PLAINS, NJ 07950
EXAMINER
XU, LING X
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
03/30/2016 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.
Requester and Respondent

v.

HONEYWELL INTERNATIONAL INC.
Patent Owner and Appellant
____________

Appeal 2015-000616
Reexamination Control 95/001,783
Patent US 8,033,120 B21
Technology Center 3900
____________

Before MARK NAGUMO, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL

1 US Patent 8,033,120 B2 issued on October 11, 2011 to Rajiv R. Singh, et
al. (hereinafter “the ’120 patent”).
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Patent Owner Honeywell International Inc. (“Patent Owner”) appeals
under 35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to reject
claims 1–19 and 22–68. We have jurisdiction under 35 U.S.C. §§ 134(b)
and 315(a).
Patent Owner identifies that related U.S. Patent 7,534,366 is the
subject of merged reexaminations 95/002,189 and 95/002,204, which are
currently on appeal (Appeal No. 2015-006430).
Related U.S. Patent 7,279,451 B2 (hereinafter “the ’451 patent”) is the
subject of reexamination control 95/000,576, is also currently on appeal
(Appeal 2015-000615), decided concurrently.
Related U.S. Patent 8,444,874 (hereinafter “the ’874 patent”) was
subject to Inter Partes Review IPR2013-00576, for which a final decision
was entered on February 26, 2015. The decision in IPR2013-00576
cancelled all of the claims of the ’874 patent except for claim 2, which
recited a heat transfer composition comprising “at least about 90% by
weight” of the trans-isomer of 1,3,3,3-tetrafluoropropene.
Because there are overlapping issues regarding the appeal of the ’451
patent and the present appeal of the ’120 patent, we heard oral arguments
simultaneously for both cases on May 6, 2015, a written transcript of which
was entered into the electronic record for each reexamination proceeding on
June 2, 2015.
We AFFIRM-IN-PART and enter a new ground of rejection.

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STATEMENT OF THE CASE
The ’120 patent relates to the use of compositions comprising
tetrafluoropropene (e.g., HFO-1234) in a variety of applications, including:
vapor compression heating and cooling systems; blowing agents; aerosol
propellants; solvent compositions; and fire suppressing agents. ’120 patent,
col. 3, ll. 32-54. Claim 1, which is illustrative of the appealed subject
matter, reads as follows (with underlining showing added text and brackets
showing deleted text relative to the original patent claims):
1. A method of cooling air comprising:
(a) providing a [heat transfer fluid] heat transfer
composition comprising at least one lubricant and a refrigerant
comprising at least one [a] fluoroalkene of Formula II[I]:
[XCFzRz-3 (I)]

where
R' is (CR2)nY,
Y is CF3
n is 0 or 1, and
[X is a C2 or a C3 unsaturated, substituted alkyl radical,
each substituent and] each R is independently F or H, provided
that at least one of said Rs is an F on an unsaturated carbon, and
further [and z is 1 to 3] provided that (i) said fluoroalkene of
Formula II [I] has at least four fluorine substituents [has a
terminal unsaturated carbon atom] and has at least one H on the
[said] unsaturated terminal carbon, (ii) said lubricant and said
refrigerant have one liquid phase at at least one temperature
between about -50°C and +70°C measured at 5% by weight of
lubricant based on the weight of the refrigerant and lubricant,
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and (iii) said refrigerant has a Global Warming Potential
(GWP) of not greater than about 75; and
(b) cooling said air by vaporizing said refrigerant by
causing heat to be transferred from the air being cooled to said
[heat transfer fluid] heat transfer composition.
PO App. Br. 38, Claims App’x.
Patent Owner contests the Examiner’s decision to reject the claims as
follows:
I. Claims 1–7, 14–19, 22, 35, 42–45, 55, 60, 61, and 67 stand
rejected under 35 U.S.C. § 102(b) as anticipated by or, in the
alternative, under 35 U.S.C. § 103(a) as obvious over Inagaki.2
RAN 9.
II. Claims 8–13, 23–34, 36–41, 46–54, 56–59, 62–66, and 68 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Inagaki in view Patent Owner’s own admission at col. 6, ll. 13–17
of the ’120 patent. RAN 12–13.
III. Claims 8–13, 23–34, 36–41, 46–54, 56–59, 62–66, and 68 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Inagaki in view Thomas.3 RAN 15.
IV. Claims 8–13, 23–34, 36–41, 46–54, 56–59, 62–66, and 68 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Inagaki in view Bivens.4 RAN 18.

2 JP H04-110388, published April 10, 1992, and naming Sadayasu Inagaki et
al. as inventors. All references to “Inagaki” are to the translation (certified
September 8, 2010) that was filed on November 8, 2011 with Requester’s
original Request for Inter Partes Reexamination.
3 U.S. Patent 5,254,280, issued October 19, 1993 to Raymond H. P. Thomas,
et al.
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V. Claims 22–41 and 45–54 stand rejected as being indefinite under
35 U.S.C. § 112, second paragraph, for failing to particularly point
out and distinctly claim the subject matter which applicant regards
as their invention. RAN 7.
Third Party Requester, Mexichem Amanco Holding S.A. de C.V.
(“Requester”),5 further relies on the following testimonial evidence in
support of the Examiner’s maintained rejections:
Declaration of Stuart Corr executed July 16, 2012 (Ex. 2, Res. Br. 16;
hereinafter “Corr Decl.”) and Attachments A-D.
Patent Owner relies on the following rebuttal testimonial evidence:
Declaration of Rajiv Ratna Singh executed April 30, 2012 (Ex. 1,
App. Br. 46; hereinafter “Singh Decl.”) and attached exhibits A-Z and AA.

REJECTIONS I–IV BASED ON INAGAKI
The Rejections
Claims 1–7, 14–19, 22, 35, 42–45, 55, 60, 61, and 67 stand rejected
under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35
U.S.C. § 103(a) as obvious over Inagaki. Claims 8–13, 23–34, 36–41, 46–
54, 56–59, 62–66, and 68 stand rejected as obvious under 35 U.S.C. § 103(a)
in view of Inagaki either alone or further in view of Patent Owner’s admitted
prior art, Thomas, or Bivens. The Examiner applied similar findings and
analyses to the teachings of Inagaki in all of these rejections.

4 U.S. Patent 6,783,691 B1, issued August 31, 2004 to Donald Bernard
Bivens, et al.
5 Requester’s Respondent Brief 1, filed June 9, 2014 (hereinafter “Res.
Br.”).
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Patent Owner does not dispute that Inagaki teaches HFO-1234ze6 and
HFO-1234yf,7 refrigerants which fall within the scope of Formula II, and are
specifically recited in claims on appeal. See PO App. Br. 13 (“Inagaki
discloses some of the C3 compounds within Appellant’s defined class of
C3-C4 fluorinated olefins”), Claim App’x; Inagaki 4–5 (Embodiments 2 and
5, respectively). The Examiner found that Inagaki describes that “the
organic compound (as a refrigerant) is compatible (miscible) with lubricants
(page 3), implying that the organic compound forms a single liquid phase
with lubricants at a certain temperature of the operating temperature range -
50°C and +70°C) within the scope as claimed.” RAN 10–11 (citing Inagaki
3).
In the alternative, the Examiner also found that “[i]t is well known
that refrigerating systems, such as those disclosed in Inagaki, require
lubricants to be circulated with the refrigerants so as to lubricate and seal
compressor components.” Id. at 11. Thus, the Examiner concluded that “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.” Id.

6 The ’120 patent uses HFO-1234ze as a common name for 1,3,3,3-
tetrafluoro-1-propene, which has the structure F3C–CH=CHF. ’120 patent,
col. 4, ll. 53-54.
7 The ’120 patent uses HFO-1234yf as a common name for 2,3,3,3-
tetrafluoropropene, which has the structure F3C–CF=CH2. ’120 patent, col.
4, ll. 54-55.
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Discussion
Claims 1, 2, 4–6, and 35–40
Issue
Initially we observe that, although dependent claims 36–40 are
separately rejected over Inagaki in combination with several other
references, Patent Owner argues claims 1, 2, 4–6, and 35–40 as a group
based on the Examiner’s similar reliance on the teachings of Inagaki. PO
App. Br. 6. Accordingly, we address claim 1 as representative of the
rejection of the claims based on Inagaki alone, with the understanding that
our comments apply equally to the rejections of dependent claims 36-40.
Patent Owner argues that, because some of the compounds taught by
Inagaki are toxic or flammable, Inagaki is not directed towards heat pump
applications that would be used to cool air, but rather towards heat pumps
used for other purposes for which toxicity is not a concern. Id. at 8–11. In
particular, Patent Owner directs us to Figure 2 of Inagaki, which is said to be
directed to a system for cooling water, not air. Id. 8–9 (citing the Singh
Decl. ¶¶ 15, 19, and 20). Patent Owner further contends that Inagaki does
not teach which of its compounds would have been useful for cooling air,
i.e., which are non-toxic. Id. at 8, 13.
Patent Owner contends that Inagaki fails to disclose an embodiment of
a heat transfer composition comprising a refrigerant and a lubricant,
particularly a composition having the “one liquid phase” requirement of the
present claims. PO App. Br. 7–8; see also PO App. Br. 25–28 (argument
made against Inagaki in response to rejections based upon Inagaki in view of
admitted prior art, Thomas or Bivens).
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Patent Owner contends that the claimed refrigerant having “at least
one H on the unsaturated terminal carbon” exhibits unrecited and
unexpected advantages in low toxicity. PO App. Br. 15–18. Patent Owner
argues that the present invention addresses the long-felt-but-unmet need for
a heat transfer composition having environmental properties, such as low
ozone depleting potential (ODP) and low global warming potential (GWP).
Id. at 11–13, 18–20. In particular, Patent Owner presents evidence of
skepticism that such a composition existed, particularly with the other
desired properties of low toxicity, stability, reactivity, and effectiveness. Id.
at 12–13, 18–20.
The issue with respect to these claims is:
Did the Examiner err in determining that a method of cooling air
comprising a heat transfer composition having the properties of claim 1
would have been obvious from the teachings of Inagaki, particularly in light
of the evidence of secondary consideration, namely unexpected results, long-
felt-but-unmet need, and skepticism?

Analysis
Although Inagaki discloses that the refrigerants disclosed therein are
compatible with lubricants (Inagaki 3), we agree with the Patent Owner that
Inagaki does not teach a method of cooling air that includes any particular
lubricant and refrigerant pairs (PO App. Br. 26), such that Inagaki does not
expressly teach a heat transfer composition with the lubricant and refrigerant
having the “at least one liquid phase” requirement as recited in claim 1.
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Accordingly, we agree with the Patent Owner that Inagaki does not
anticipate the claimed invention.
For this reason, and this reason alone, we reverse the Examiner’s
anticipation rejection of the claims.
However, the Examiner alternatively relied on obviousness rejections
of the claims with respect to Inagaki. Inagaki teaches a generic refrigerant
having the formula C3HmFn, wherein m and n are integers from 1–5 and the
sum of m and n is equal to 6, which has no destructive effects on the ozone
layer, because it contains no chlorine or bromine atoms. Inagaki 2. More
critically, Inagaki exemplifies the refrigerants F3C–CH=CHF, also known in
the art as HFO-1234ze, and F3C-CF=CH2, also known in the art as HFO-
1234yf, which as noted above, are refrigerants falling within the scope of
claim 1. Id. at 2 and 4 (Embodiments 2 and 5, respectively). Inagaki
teaches that the coefficient of performance (COP) and freezing effect results
for HFO-1234ze were similar to that obtained for R-22, R-12 and R-502, all
commonly used refrigerants. Id. at 4. Inagaki also teaches that COP and
freezing capacity for HFO-1234yf were similar to those obtained for
embodiment 1 (id.), for which Inagaki shows “excellent” COP values and
“higher” freezing capacity than control refrigerant (R-12). Id. at 3.
Accordingly, Inagaki evinces that at the time of the invention HFO-1234ze
and HFO-1234yf would have been known to those of skill in the art to be
refrigerants with good COP and good freezing effect with no destructive
effects on the ozone layer. We find it of no moment that Inagaki also
discloses other refrigerants that are less desirable due to toxicity or
flammability. See Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed.
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Cir. 1989) (“That the [prior art] discloses a multitude of effective
combinations does not render any particular formulation less obvious. This
is especially true because the claimed composition is used for the identical
purpose.”).
We disagree with the Patent Owner’s premise that Inagaki fails to
teach a method of cooling air using the refrigerants described therein.
Inagaki expressly teaches the regulation of heat transfer media (refrigerants)
in “refrigerators and air conditioning equipment” led to finding good
refrigerants without the risk of destroying the ozone layer. Inagaki 1. Thus,
the skilled artisan would immediately understand the use of the refrigerants
described in Inagaki would not have been limited to only the exemplified
heat pumps. Rather, the skilled artisan would have considered the use of the
described refrigerants in any typical refrigerant cooling application,
including use in air conditioning equipment. Although cooling water is an
exemplified application, Inagaki further acknowledges the use of refrigerants
in other applications, such as in air conditioning equipment. Inagaki 1.
Prior to the date of the invention, HFO-1234yf was identified as a
refrigerant having good cooling characteristics by Inagaki. If Inagaki taught
only the broader genus of the compound represented by the formula C3HmFn,
a determination that the particularly claimed subset thereof, namely those
compounds with at least one H on the terminal unsaturated carbon, was not
obvious might follow. However, Inagaki further teaches specific
compounds within the claimed subset, e.g., HFO-1234yf and HFO-1234ze.
Because Inagaki describes refrigerants within the scope of the claims
explicitly, it is of no moment that Inagaki does not identify each member of
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the subset of compounds recited in the claims having at least one H on the
terminal unsaturated carbon.
In addition to good cooling characteristics, Inagaki describes that
HFO-1234yf and HFO-1234ze are ozone-friendly compounds. Thus,
despite the fact that HFO-1234yf possessed attributes (e.g., non-toxicity)
that were yet to be recognized in the art, the use of HFO-1234yf, for
example, as a known refrigerant for use in air conditioning equipment,
which is also taught by Inagaki, was known at the time of the invention.8
Patent Owner argues that the Examiner’s reasoning is contrary to law
because an obvious analysis that relies on an inherent disclosure is “legally
improper and cannot be a basis for this rejection.” See PO App. Br. 13
(quoting In re Newell, 891 F.2d 899 (Fed. Cir. 1989)). The Patent Owner’s
reliance on Newell is misplaced. The teaching, suggestion, or motivation
(TSM) test9 was found not to be satisfied in Newell because the prior art did
not provide a sound basis for the inherency position relied upon by the

8 Moreover, evidence of record suggests that the particular concerns with
stability, toxicity, and reactivity were known in the art at the time of the
invention and the testing of prospective refrigerants for these properties was
routine in the art at the time of the invention. See Singh Decl. ¶¶ 6–7 (citing
a Declaration of George Rusch (attached as Exhibit B to the Singh Decl.),
which discusses testing of HFO-1225zc performed by Dupont that is dated
April 17, 2000), ¶¶ 8–9 (citing Exhibit C to the Singh Decl., which reports
“various [toxicity in fluorocarbon products] results from 1961-1995”); ¶ 26
(citing to Exhibit F, a 1992 NASA JPL tech brief identifying potential
refrigerant candidates as toxic).
9 Newell was decided prior to KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398(2007). KSR rejected the notion that the TSM test was the only test to
combine prior art references. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007).
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Examiner. However, Newell does not suggest that inherent properties
cannot be considered in an obviousness analysis where there is a sound basis
for determining that using a composition is otherwise obvious. Here, the
Examiner’s reasoning that a skilled artisan would use HFO-1234yf or
HFO-1234ze due to the good COP and capacity and ozone friendly
properties described in Inagaki is sound and based on the teachings of the
prior art.
Moreover, the properties of the particular refrigerants are inherent to
the refrigerant, whether specifically disclosed or not. Such inherent
properties of refrigerants include their specific toxicity, miscibility, GWP,
and ODP, whether or not these properties are predictable. One cannot obtain
a patent for a composition of matter based on the inherent properties of an
otherwise known refrigerant. “Inherency is not necessarily coterminous
with the knowledge of those of ordinary skill in the art. Artisans of ordinary
skill may not recognize the inherent characteristics or functioning of the
prior art.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002). Even though those in the art may not have recognized that
HFO-1234yf was non-toxic, it nonetheless is inherently so. The new
realization alone does not render that prior art patentable. “From the
standpoint of patent law, a compound and all of its properties are
inseparable; they are one and the same thing.” In re Papesch, 315 F.2d 381,
391 (CCPA 1963). “[T]he discovery of a previously unappreciated property
of a prior art composition, or of a scientific explanation for the prior art’s
functioning, does not render the old composition patentably new to the
discoverer.” Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1347 (Fed.
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Cir. 1999). See also In re Skoner, 517 F.2d 947, 950 (CCPA 1975)
(“Appellants have chosen to describe their invention in terms of certain
physical characteristics . . . . Merely choosing to describe their invention in
this manner does not render patentable their method.”).
We are not persuaded that any expected difficulties or problems
associated with the use of HFO-1234yf, such as toxicity, would have
deterred an ordinary artisan from using HFO-1234yf as a refrigerant in
known refrigerant applications, as evidenced by Inagaki. Cf. PO App. Br. 20
(describing expected, although not realized, concerns regarding toxicity and
reactivity). In other words, based on Inagaki, an ordinary artisan would have
had reason to predict that Inagaki’s refrigerants would have worked as
intended, i.e., by vaporizing the refrigerant by causing heat to be transferred
to the heat transfer composition, as recited in the claims. Even if expected to
be toxic, the skilled artisan would have recognized the tradeoff of toxicity
for the benefits of good cooling with little effect on the ozone layer and
would have used Inagaki’s refrigerants in air conditioning equipment
accordingly, as taught by Inagaki. See Singh Decl. ¶ 36 (discussing
Exhibit N to the Singh Decl., which is a 1997 article entitled “Trade-Offs in
Refrigerant Selections.”).
Moreover, the Examiner found that “[i]t is well known that
refrigerating systems, such as those disclosed in Inagaki, require lubricants
to be circulated with the refrigerants so as to lubricate and seal compressor
components.” RAN 11. While the Examiner did not cite to any particular
evidence to support this finding, the record includes evidence that the use of
lubricants with refrigerants was known at the time of the invention. See e.g.,
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Singh Decl. ¶ 24; Oberle,10 col. 1, ll. 18–29 (“Compression heat transfer
system designers must consider lubricant circulation and return of the
lubricant to a sump or reservoir . . . to lubricate and seal compressor
components.”); ’120 patent, col. 2, ll. 17–27 (“It is generally considered
important, however, that any potential substitute refrigerant must also
possess . . . lubricant compatibility. . . . [I]t is highly desirable for
refrigeration fluids to be compatible with the lubricant utilized in the
compressor unit, used in most refrigeration systems.”). Moreover, the
teaching of an oil separator in Inagaki (Inagaki, Figure 2) further supports
our above finding that Inagaki describes the use of refrigerants with known
lubricants.
We agree with Patent Owner that Inagaki does not describe any
particular cooling machine oil. See PO App. Br. 25. However, using
cooling machine oils known to those of ordinary skill in the art at the time of
the invention would have been obvious based on the teachings of Inagaki.
Again, the preponderance of the evidence of record indicates that poly
alkylene glycol (PAG) and polyol ester (POE) were known in the art as
conventional lubricants in refrigerant systems, i.e., “cooling machine oils,”
at the time of the invention. See Singh Decl. ¶ 25 (“I am aware that prior to
our invention substantially miscible pairs of certain hydrofluorocarbons
(HFCs) and poly alkylene glycol (PAG) and/or polyolester (POE) lubricants
were in commercial use.”); Bivens, col. 1, ll. 37–50 (identifying PAG and
POE as known alternative lubricants for HFC-based refrigeration systems).

10 U.S. Patent 6,374,629 B1, issued April 23, 2002 to Jill Ellen Oberle et al.
(cited in concurrent reexamination of the ’451 patent, Reexamination
95/000,576).
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Even the ’120 patent identifies that certain lubricants were well-known in
the art at the time of the invention. ’120 patent, col. 2, ll. 29–32 (“the types
of lubricants used traditionally with CFC’s and HFC’s, including, for
example, mineral oils, alkylbenzenes or poly(alpha-olefins).”) (emphasis
added); col. 6, ll. 13–17 (“Commonly used refrigeration lubricants such as
Polyol Esters (POEs) and Poly Alkylene Glycols (PAGs) that are used in
refrigeration machinery with hydrofluorocarbon (HFC) refrigerants may be
used with the refrigerant compositions of the present invention.”) (emphasis
added). Since Inagaki evinces that it would have been obvious to one of
ordinary skill in the art at the time of the invention to have used HFO-
1234ze or HFO-1234yf in combination with known lubricants, Inagaki
would have also suggested the use of HFO-1234ze or HFO-1234yf with, for
example, PAG in a refrigerant composition.
Patent Owner introduced evidence that PAG and POE were miscible
at every tested parameter (regardless of tested HFO, weight percentage, or
temperature). Singh Decl. ¶ 31; ’120 patent, col. 12, ll. 23–32. Because the
preponderance of the evidence shows HFO-1234yf and HFO-1234ze are
miscible with PAG and POE over the entire range of temperatures recited in
claim 1, at least one composition suggested by Inagaki inherently and
necessarily meets the requirements of claim 1. We need not have a direct
teaching in Inagaki of the miscibility recited in the claims if an otherwise
obvious composition inherently has these properties.11

11 A preponderance of the evidence supports a finding that HFO-1234yf and
HFO-1234ze are refrigerants that inherently have a GWP within the ranges
recited in the claims. Specifically, Requester contends that the GWP of
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Further, we note that Patent Owner’s argument that the skilled artisan
would not have understood that “compatibility” includes “miscibility” (PO
App. Br. 27) is inconsistent with the language used in the ’120 patent, which
interchanges the terms “compatibility” and “miscibility” throughout. See
e.g., ’120 patent, col. 2, ll. 23–42; see also Corr Decl. ¶¶ 12–15
(“compatible” generally means having a “satisfactory degree of chemical
stability and sufficient miscibility/solubility and lubricity to enable it to be
used under conditions appropriate to the envisaged application”).
We do not agree with the Patent Owner’s argument that Inagaki’s
teaching of combining the disclosed refrigerants with cooling machine oil in
the presence of the other HFC refrigerants to “improve solubility” equates to
a teaching that the lubricant/refrigerant suggested therein were immiscible.
See PO App. Br. 19.12 The appealed claims of the ’120 patent use open
“comprising” language and thus do not exclude the presence of other HFC
materials. Further, Inagaki does not disparage the use of HFO-1234yf as
being incapable of working as a refrigerant without the presence of the other
HFCs. In fact, to the contrary, Inagaki specifically discloses that
HFO-1234yf has excellent COP and freezing effect, even without the
addition of other refrigerants, in the Embodiment 5 example. See KSR, 550

HFO-1234yf and HFO-1234ze are 4 and 6, respectively, a fact unchallenged
by the Patent Owner. See Req. Res. Br. 12.
12 While these arguments directed to the application of Inagaki alone were
discussed in the Patent Owner’s Appeal Brief with respect to the rejection of
certain claims base on Inagaki in combination with additional prior art, we
incorporate those arguments here with respect to the rejections based on
Inagaki alone, as they are inapplicable to the rejections that incorporate
additional prior art.
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U.S. at 416 (“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.”). Likewise, while Inagaki suggests that solubility can be
“improved” with lubricants in the presence of other refrigerants, Inagaki
does not indicate that solubility with lubricants of HFO-1234yf without the
addition of the other refrigerants is anyway compromised or ineffective for
the refrigerants use.
Further, because there is evidence that acceptable heat transfer
systems do not require miscibility between the refrigerant and the lubricant
(see Singh Decl. ¶ 18), a composition comprising a lubricant and
HFO-1234yf would have been suggested by the prior art even without any
express teachings as to miscibility. “[T]he law does not require that the
references be combined for the reasons contemplated by the inventor.” In re
Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); see In re Dillon, 919 F.2d
688, 693 (Fed. Cir. 1990) (en banc) (“In particular, the statement that a
prima facie obviousness rejection is not supported if no reference shows or
suggests the newly-discovered properties and results of a claimed structure
is not the . . . law.”). It is enough that the prior art reference describes
excellent COP and freezing effect as a sufficient reason for the skilled
artisan to use HFO-1234yf as a refrigerant. HFO-1234yf is miscible in
lubricants whether it is used for exploiting that property or the cooling and
ozone-friendly properties described in Inagaki.
Patent Owner also contends that the use of the oil separator shown in
Figure 2 of Inagaki indicates that the skilled artisan would have expected
“the lubricant and refrigerant have substantial immiscibility.” PO App. Br.
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27 (citing Singh Decl. ¶¶ 21–22). In addition, Patent Owner contends that
an ordinary artisan could not have predicted whether any particular
refrigerant/lubricant combination was miscible. Id. (citing Singh Decl.
¶ 23).
We are not persuaded by Patent Owner’s contentions regarding the
depiction in Figure 2 of Inagaki of an oil separator, which is not otherwise
discussed in Inagaki. Inagaki expressly teaches that compatibility and
solubility with machine oils is a desirable property. Moreover, Requester
points us to evidence indicating that an oil separator was a common
component in refrigerant systems, including ones using refrigerant/lubricants
that were miscible. Req. Res. Br. 7 (citing Corr Decl. ¶¶ 17–25). Thus, the
incidental disclosure of an oil separator does not teach away from miscible
combinations of refrigerants and lubricants.
Secondary Considerations
Patent Owner contends that the Examiner has not properly considered
Appellants’ evidence of non-obviousness. PO App. Br. 15. Specifically,
Patent Owner contends that there is evidence of unexpected results and
industry praise. PO App. Br. 17–20. Patent Owner also argues that there
was a long-felt need in the art for “a safe, effective and environmentally-
acceptable method to cool air” and substantial skepticism that such a
refrigerant could be discovered. Id. at 18–20.
Patent Owner presents evidence that the low toxicity of HFO-1234yf
was “a classic case of unexpected results” because
[t]he prior art as a whole would []have lead[sic] a person skilled
in the art away from using fluorinated propenes and butenes
that have the minimum level of fluorine substitution as required
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by the claims because of the known toxicity of several of such
compounds which are similar to, but outside the scope of, the
claimed molecules,
including HFO-1225zc which is taught by Inagaki. PO App. Br. 17–18
(citing Singh Decl. ¶¶ 6–7 and 11–13).
Patent Owner argues that even after Inagaki was published, “industry
participants expressed frustration, and even pessimism, at finding a
commercially acceptable solution.” Id. at 12 (citing Singh Decl. ¶¶ 35–37).
Thus, according to Patent Owner, “[i]n light of this pessimistic outlook,
Honeywell’s announcement of its commercial HFO, e.g., HFO-1234yf
product in 2007, which could be used with PAG and POE lubricants, was
met with excitement, wide recognition and praise.” Id. at 18 (citing Singh
Decl. ¶¶ 39–41 and Exhibits AA, R-T). Patent Owner contends that
“HFO-1234yf has gained widespread acceptance by the automobile industry
for use in a method for cooling air (automobile air conditioning).” Id. at 19.
The burden rests with Patent Owner to establish that the alleged
unexpected results presented as being associated with the claimed invention
are, in fact, unexpected, the comparisons are with the closest prior art, and
that the supplied evidentiary showing is commensurate in scope with the
claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). “[W]hen unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior
art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
After careful review of Patent Owner’s evidence, we nonetheless
determine that such evidence is unpersuasive as to the legal conclusion that
the use of HFO-1234yf or HFO-1234ze as refrigerants would not have been
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obvious to one of ordinary skill in the art. Patent Owner’s evidence is
directed to the fact that a particular refrigerant having all of the desirable
properties looked for in the particular art, namely environmentally friendly,
non-toxic, miscible with lubricants, and good cooling characteristics (i.e.,
good COP) was elusive to those in the art for a long time. Yet, such a
refrigerant existed and was known as a good refrigerant at the time, as
described in Inagaki.13
Patent Owner’s evidence of initial skepticism and long-felt need are
likewise unpersuasive. Patent Owner’s evidence of long-felt need is also
directly related to the selection of a desirable refrigerant for use in common
air cooling systems. A known refrigerant inherently having the desired
properties, i.e., HFO-1234yf, was already identified in the art as a suitable
refrigerant for cooling systems in Inagaki. Accordingly, a solution to the
need was taught or suggested, if not realized, in the art well before the Patent
Owner’s identification of all the properties of HFO-1234yf and
HFO-1234ze. Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed.
Cir. 2008) (“[T]here was no evidence that the success of the commercial
embodiment . . . was attributable to the . . . only material difference between
[the prior art] and the patented invention.”) (citation omitted, emphasis

13 As stated above, if Inagaki taught only the broader genus of the compound
represented by the formula C3HmFn, a determination that the particular
unexpected properties of those compounds with at least one H on the
terminal unsaturated carbon render the specific subset not obvious might
follow. However, Inagaki further teaches specific compounds within the
claimed subset, e.g., HFO-1234yf and HFO-1234ze. Thus, to the extent the
skilled artisan would have used HFO-1234yf or HFO-1234ze as taught by
Inagaki, these properties would inherently have been present.
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added); In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“Where the
offered secondary consideration actually results from something other than
what is both claimed and novel in the claim, there is no nexus to the merits
of the claimed invention”). Here, the difference between the closest prior art
and the claims is not the selection of HFO-1234yf or HFO-1234ze as a
refrigerant because the use of these compounds as refrigerant is taught
expressly by Inagaki for common refrigerant purposes, such as cooling air.
We determine that a composition comprising HFO-1234yf and any
known lubricant, such as PAG or POE, would have been obvious over the
teachings of Inagaki.
Accordingly, we affirm the Examiner’s rejection of claims 1, 2, 4–6,
and 35–40 under 35 U.S.C. § 103(a) as obvious over Inagaki alone or further
in view of admitted prior art, Thomas or Bivens.

Claims 14, 16–18, and 55–57
Issues
Patent Owner presents separate arguments with respect to claims 14,
16–18, and 55–57. See PO App. Br. 20. Claims 14, 16–18, and 55–57 recite
a step of “ensuring that said refrigerant does not include a fluoroalkene of
Formula II which has no H substituent on an unsaturated terminal carbon
. . . .” Claims 14, 16–18, and 55 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by or, in the alternative under 35 U.S.C. § 103(a) as
obvious over Inagaki alone. Claims 56–57 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over Inagaki in view of admitted prior art,
Thomas, or Bivens. Patent Owner argues claims 14, 16–18, and 55–57 as a
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group, for which we select claim 14 as a representative claim. See PO App.
Br. 20–22.
Patent Owner contends that the “ensuring step in Group II provides
the additional advantage of excluding those compounds with a high degree
of toxicity.” PO App. Br. 20. Patent Owner further argues that Inagaki does
disclose or render obvious this step because “Inagaki does not draw any
distinction between the molecules it discloses” and instead “teaches that all
of these compounds are equally acceptable.” Id. at 21.
The issue with respect to claims 14, 16–18, and 55–57 is:
Did the Examiner err in determining that a method of cooling air that
includes a step of “ensuring that said refrigerant does not include a
fluoroalkene of Formula II which has no H substituent on an unsaturated
terminal carbon” would have been obvious to one of ordinary skill in the art
from the teachings of Inagaki?
Analysis
For the reasons discussed above with respect to claim 1, the use of
HFO-1234yf or HFO-1234ze as a refrigerant would have been obvious in
view of the teachings of Inagaki. Further, Inagaki specifically teaches the
use of these refrigerants alone in Embodiments 2 and 5. Thus, Inagaki
expressly teaches embodiments with a step of “ensuring that said refrigerant
does not include a fluoroalkene of Formula II which has no H substituent on
an unsaturated terminal carbon” because the refrigerants in those
embodiments have no additional fluoroalkenes other than HFO-1234ze and
HFO-1234yf, respectively. Further, Inagaki teaches that these embodiments
have good COP and cooling capacity. Inagaki 2-4 (discussing results of
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Embodiments 2 and 5, respectively). Additionally, for the reasons discussed
above, we find Patent Owner’s evidence of secondary considerations to be
unpersuasive of non-obviousness over the prior art.
It is of no moment that Inagaki teaches separate embodiments that use
refrigerants without an H substituent on an unsaturated terminal carbon or
that Inagaki does not expressly teach the exclusion of these refrigerants. As
discussed above, Embodiments 2 and 5 disclose only HFO-1234ze and
HFO-1234yf, respectively, and thus do not include other refrigerants.
Accordingly, we affirm the Examiner’s rejections of claim 14, 16–18,
and 55–57 under 35 U.S.C. § 103(a) as obvious over Inagaki alone or further
in view of admitted prior art, Thomas, or Bivens.

Claims 3 and 15
Issues
Patent Owner presents separate arguments with respect to claims 3
and 15. See PO App. Br. 22. Claims 3 and 15 recite a step of cooling air
suing a fluoroalkene that “has no substantial acute toxicity as measured by
inhalation exposure to mice and rats.” Claims 3 and 15 stand rejected under
35 U.S.C. § 102(b) as being anticipated by or, in the alternative under 35
U.S.C. § 103(a) as obvious over Inagaki alone. Patent Owner argues claims
3 and 15 as a group, for which we select claim 3 as a representative claim.
See PO App. Br. 22–23.
Patent Owner argues that Inagaki does not disclose or render obvious
the “no substantial acute toxicity” limitation of claim 3 because Inagaki
teaches compounds that have been found to have a high level of acute
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toxicity, and thus expresses “no disapproval for compounds having
substantial acute toxicity.” PO App. Br. 23. Specifically, Patent Owner
contends that Inagaki discloses “HFO-1225zc –which is a compound . . .
found to have a high level of acute toxicity, rendering it unacceptable for
most cooling air applications.” Id. at 23 (citing Singh Decl. ¶¶ 7–13).
The issue with respect to claims 3 and 15 is:
Did the Examiner err in determining that a method of cooling air that
includes using a refrigerant having “no substantial acute toxicity,” as recited
in claim 3, would have been obvious to one of ordinary skill in the art from
the teachings of Inagaki?
Analysis
For the reasons discussed above with respect to claim 1, the use of
HFO-1234yf or HFO-1234ze as a refrigerant would have been obvious in
view of the teachings of Inagaki. Further, Inagaki specifically teaches the
use of these refrigerants alone in Embodiments 2 and 5. Thus, Inagaki
inherently teaches embodiments of processes using refrigerants that have no
substantial acute toxicity, because those embodiments have no additional
refrigerants other than HFO-1234yf or HFO-1234ze. HFO-1234yf and
HFO-1234ze inherently have no acute toxicity, a fact which is not disputed
by Patent Owner. Further, Inagaki teaches that these embodiments have
good COP and cooling capacity. Inagaki 2-4 (discussing results of
Embodiments 2 and 5, respectively). Additionally, for the reasons discussed
above, we find Patent Owner’s evidence of secondary considerations to be
unpersuasive of non-obviousness over the prior art.
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As we discussed above, Patent Owner’s reliance on Newell is
misplaced when, as here, the Examiner relied on inherent properties of
composition that are obvious based on sound reasoning supported by the
prior art. It is of no moment that Inagaki teaches separate embodiments that
use toxic refrigerants or that Inagaki does not expressly teach the exclusion
of such refrigerants. Embodiments 2 and 5 necessarily use refrigerants that
are non-toxic by reciting only HFO-1234ze and HFO-1234yf, respectively.
Accordingly, we affirm the Examiner’s rejections of claim 3 and 15
under 35 U.S.C. § 103(a) as obvious over Inagaki alone or further in view of
admitted prior art, Thomas, or Bivens.

Claims 7–9 and 19
Issues
Patent Owner presents separate arguments with respect to claims 7–9
and 19. See PO App. Br. 22. Claims 7–9 and 19 recite a step of providing a
“system having . . . at least one condenser . . . , wherein . . . said condenser
is operated in a temperature range that includes about 150° F.” Claims 7 and
19 stand rejected under 35 U.S.C. § 102(b) as being anticipated by or, in the
alternative under 35 U.S.C. § 103(a) as obvious over Inagaki alone. Claims
8 and 9 stand rejected under 35 U.S.C. § 103(a) as being obvious over
Inagaki in view of admitted prior art, Thomas, or Bivens. Patent Owner
argues claims 7–9 and 19 as a group, for which we select claim 7 as a
representative claim. See PO App. Br. 23–24.
Patent Owner argues that “Inagaki limits the suitable condenser
temperature range for the compounds he discloses between 30°C (86°F) and
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60°C (140°F)” and exemplifies a condenser at only 50°C (122°F). Id. at 24
(citing Inagaki 2). Patent Owner further argues that neither Inagaki nor the
additionally cited prior art would have suggested a condenser operating
outside this range. Id.
The issue with respect to claims 7–9 and 19 is:
Did the Examiner err in determining that a method of cooling air that
includes a system having a condenser operating at a temperature range that
includes 150°F, as recited in claim 7, would have been obvious to one of
ordinary skill in the art from the teachings of Inagaki?

Analysis
The Examiner makes no finding with respect to this limitation but
nonetheless adopts Requester’s proposed rejections. In doing so, the
Examiner adopted Requester’s initial arguments with respect to this
limitation in the Request, which reads as follows:
With respect to “a temperature range that includes about
150°F”, this is understood in the specification of the ’120
Patent to be referencing testing of the disclosed compounds
using standard refrigeration cycle analysis techniques. That
is, the claim term is in reference to the particular compounds
being tested at 150°F, i.e. the same compounds as disclosed in
Inagaki. No particularity is given to the testing processes,
other than they were carried out according to standard
procedures. The compounds of Inagaki, being the identical
compounds as those of the ’120 Patent, would also be operable
in methods that include 150°F, as stated in the claims, or any
other temperature range put forth by the Patent Owner.
Request 27–28 (emphases added). In Response, Requester further associates
the condenser temperature recited in the claims with the fact that Inagaki
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“does not limit the use of those refrigerants to those temperature ranges.”
Req. Res. Br. 10. We agree with Requester that whether or not a particular
refrigerant would be capable of being used in a condenser operating at 150°F
is an inherent property of the refrigerant, as demonstrated by the ’120 patent.
However, the claims at issue are directed to a method of cooling air
using a condenser that is operated in a temperature range that includes about
150° F. As discussed above, Inagaki renders obvious the use of Inagaki’s
refrigerants for the purpose of cooling air. There appears to be no question
that using a condenser is how such a refrigerant functions in a heat transfer
method (see Inagaki, 2 and Figure 2; ’120 patent, col. 1, ll. 44–53), and thus
using a condenser is expressly taught by and obvious in view of Inagaki.
Inagaki describes that “since the 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 the use under the conditions of the evaporating temperature of
−20 to 10 degrees C., and condensation temperature of 30 to 60 degrees C.”
Inagaki 2. Thus, on the present record, Inagaki does not teach or suggest
that air cooling systems were known in the art at the time of the invention to
condense vapor at temperatures greater than 60°C (140°F), nor does it teach
or suggest the use of conventional refrigerants R-12, R-22, R-114 and R-502
were used at temperatures greater than 60°C (140°F).
We note that there is no suggestion in the ’120 patent that a method of
using a condenser at a temperature of 150°F is a novel or inventive aspect of
the present invention. For example, the background of the invention and
summary of the invention of the ’120 patent are silent as to the invention
being directed to a heat transfer condenser capable of working at a higher
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temperature than would have been conventional at the time of the invention.
To the contrary, these sections are directed to heat transfer compositions
(refrigerants) and “methods and systems which utilize the compositions of
the present invention, including methods and systems for heat transfer.”
’120 patent, col. 3, ll. 32–54.
Written descriptive support for a condenser operated at 150°F in the
’120 patent is limited to the discussion of testing the recited refrigerants for
COP “using standard refrigeration cycle analysis techniques (see for
example, R.C. Downing, FLUOROCARBON REFRIGERANTS
HANDBOOK, Chapter 3, Prentice-Hall, 1988).” Id. at col. 11, ll. 28–34.
Yet, the Examiner has provided insufficient evidence to suggest that
operation of a condenser in a heat pump at 150°F was described or
conventional in the art.
However, the teachings of Magid14 were applied in the related
reexamination cited at 2, supra, on appeal (Appeal 2015-006430). Magid is
directed to the use of PAG as a lubricant for R134a in compression
refrigeration systems as an alternative to mineral oils. Of relevance with
respect to claims 7-9 and 19, Magid teaches that “[i]n a typical automotive
air conditioning system, the temperatures at which the refrigerant is
condensed originally will be about 50°–70°C. [122°–158° F] but may reach
90°C. [194°F] in high ambient temperature operation.” Magid, col. 4, ll. 55-
59.
Thus, Magid is evidence that it was known in the art at the time of the
invention to cool air using refrigeration system comprising a condenser that

14 U.S. Patent 4,755,316, issued July 5, 1988 to Hillel Magid et al.
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is operated in a temperature range that includes about 150°F. Based on the
teachings of Magid, operating a condenser at even higher temperatures was
common in the art at the time of the invention.
Accordingly, it would have been obvious to one of ordinary skill in
the art at the time of the invention to cool air using an air conditioning
equipment comprising a condenser, as taught by Inagaki, where the
condenser is operated at temperatures between 122°F and 158° F as taught
by Magid.
Because Patent Owner argues claims 7-9 and 19 as a group, Patent
Owner does not directly disputed that the additional limitations of claims 8,
9 and 19, respectively, do not affect patentability over the applied prior art.
Accordingly, we reverse the Examiner’s rejections of claims 7–9 and
19 under 35 U.S.C. § 103(a) as obvious over Inagaki alone or further in view
of admitted prior art, Thomas, or Bivens. We enter a new ground of
rejection of claim 7 and 19 under 35 U.S.C. § 103(a) as obvious over Inagaki
in view of Magid. We also enter a new ground of rejection of claims 8 and 9
under 35 U.S.C. § 103(a) as obvious over Inagaki in view of admitted prior
art, Thomas, or Bivens, and further in view of Magid.

Claims 10–12, 58, and 59
Issues
Patent Owner presents separate arguments with respect to claims 10–
12, 58, and 59. See PO App. Br. 25. Claims 10–12, 58, and 59 further recite
that the lubricant is poly alkylene glycol (PAG) and the fluoroalkene is
HFO-1234yf. Claims 10–12, 58, and 59 stand rejected under 35 U.S.C.
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§ 103(a) as being obvious over Inagaki in view of admitted prior art,
Thomas, or Bivens. Patent Owner argues claims 10–12, 58, and 59 as a
group, for which we select claim 10 as a representative claim. See PO App.
Br. 25.
The Examiner finds that “the ’120 patent describes that poly alkylene
glycols and polyol esters are commonly used lubricants in refrigeration
machinery with hydrofluorocarbon (HFC) refrigerants (col. 6, lines 13–17).”
RAN 13–14. The Examiner finds that Thomas and Bivens describe the use
of poly alkylene glycols and polyol esters along with hydrofluorocarbon
refrigerants. RAN 16 (citing Thomas, col. 2, lines 55–65 and col. 6, lines
38–45) and RAN 19 (citing Bivens, col.1, lines 39–43). The Examiner
determined that it would have been obvious to use these known alternative
lubricants with the hydrofluorocarbon refrigerants of Inagaki in compression
refrigeration systems. See RAN 14, 16, and 19.
Patent Owner contends that the statements in the ’120 patent relied
upon by the Examiner as an admission are directed towards using PAG and
POE for “other uses,” namely for use with only “saturated compounds,” and
that the statements in question “simply informs a person of skill in the art
that a component of the invention (here PAGs and POEs) were
commercially available or manufacturable.” PO App. Br. 28–29. Patent
Owner further contends that Thomas and Bivens are only directed to
saturated hydrofluorocarbons, and that there is no basis to conclude that the
results would have been predictable with the particular unsaturated
hydrofluorocarbons described in Inagaki. Id. at 29.
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The issue with respect to claims 10–12, 58, and 59 is:
Did the Examiner err in determining that a heat transfer composition
comprising HFO-1234yf and PAG would have been obvious to one of
ordinary skill in the art from the teachings of Inagaki and Bivens?

Analysis
Patent Owner’s arguments are not persuasive. While Thomas and
Bivens are directed to saturated hydrofluorocarbons, a reason a skilled
artisan would have combined Inagaki’s unsaturated HFO-based refrigerants
can be found in Inagaki itself. Inagaki teaches that HFO-1234yf has good
COP and freezing effect, is ozone friendly, and is compatible with
lubricants. Any of these properties would have led the skilled artisan to use
HFO-1234yf with known lubricants. Thomas and Bivens are only relied
upon for demonstrating that PAG was a known lubricant for use in “air
conditioning equipment,” as described in Inagaki. Thus, it is of no moment
that Thomas and Bivens do not describe the use of PAG with unsaturated
HFO-based refrigerants, because the combination of lubricants and
unsaturated HFO-based refrigerants is described in Inagaki. One cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986).
Dr. Singh testifies that miscibility with respect to saturated HFC
compounds would be unpredictable with respect to unsaturated HFO
compounds, as taught by Inagaki, because a double bond has “a substantial
impact on the properties and characteristics of those molecules, especially
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compared to similar molecules which have no double bonds.” Singh Decl. ¶
28. As discussed above, Inagaki provides evidence that HFO-1234yf is a
good and ozone friendly refrigerant and can be used with a lubricant. The
miscibility of HFO-1234yf with PAG is an inherent characteristic of
HFO-1234yf, and the record provides sufficient evidence that the skilled
artisan would have used HFO-1234yf with known lubricants, such as PAG.
Patent Owner has not provided any evidence to the contrary. See PO App.
Br. 25; Singh Decl. ¶ 31 (“[W]e have found that HFO-1234yf satisfies the
miscibility requirement of the claims with certain lubricants.”).
Moreover, Dr. Singh’s testimony that miscibility is unpredictable is
not persuasive of non-obviousness. Thomas, Bivens, and statements in the
’120 patent support a finding that, generally, PAG and POE were used as a
replacement lubricants with certain saturated HFC compounds that were
known to be immiscible with mineral oil or alkylbenzene. See Thomas, col.
1, ll. 33-37 and 62-64; Bivens, col. 1, ll. 36-42; ’120 patent, col. 2, ll. 27-32
and col. 6, ll. 13-17; see also Magid, col. 4, l. 26 to col. 5, l. 41; Mahler,15
col. 1, ll. 39-45; Nimitz, col. 5, ll. 33-36; Singh Decl. ¶ 25. Thus, despite the
unpredictable nature of miscibility, the art recognized that, for HFC
compounds that were not miscible in mineral oil, alternative miscible
lubricants were available in the art, namely PAG and POE. Thus, with
routine testing, the skilled artisan would have had a reasonable expectation
that Inagaki’s unsaturated HFO compounds were miscible either with
mineral oils and alkylbenzenes or alternatively with PAG and POE. In re

15 U.S. Patent 6,991,744, issued January 31, 2006 to Walter Mahler et al.
See Req. Res. Br. 16, Evidence App’x, Ex. 4.
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O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For obviousness under
§103, all that is required is a reasonable expectation of success.”) (citations
omitted). Although there are no doubt differences between the properties of
various hydrofluorocarbons as identified by Dr. Singh, including between
saturated and unsaturated hydrofluorocarbons (e.g., reactivity (Singh Decl. ¶
28)), Patent Owner has not provided persuasive evidence that the different
characteristics (e.g., reactivity) would have undermined a reasonable
expectation of success in combining the unsaturated HFO compounds
described in Inagaki with known lubricants conventionally used with
saturated HFC compounds.
Accordingly, we affirm the Examiner’s rejection of claims 10–12, 58,
and 59 under 35 U.S.C. § 103(a) as obvious over Inagaki in view of any of
admitted prior art, Thomas, or Bivens.

Claim 13
Issue
Patent Owner presents separate arguments for claim 13. PO App. Br.
41. Claim 13 recites, inter alia, that a heat transfer composition comprising
HFO-1234yf and PAG and that the refrigerant has “a capacity relative to
HFC-134a of about 1, and a Coefficient of Performance (COP) relative to
HFC-134a of about 1.” Claim 13 is rejected under 35 U.S.C. § 103(a) as
being obvious over Inagaki in view of admitted prior art, Thomas, or Bivens.
Patent Owner contends that “[t]he Examiner does not provide any
rational for the position that Inagaki renders obvious a method of cooling air
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in which the heat transfer composition achieves such a desirable
combination of capacity and COP relative to HFC-134a.” PO App. Br. 31.
The issue with respect to claim 13 is:
Did the Examiner err in determining that a heat transfer composition
having a refrigerant with a capacity and COP about the same as HFC-134a
would have been obvious to one of ordinary skill in the art from the
teachings of Inagaki and admitted prior art, Thomas or Bivens?

Analysis
Patent Owner’s arguments are not persuasive. The COP and capacity
relative to HFC-134a would be one of the inherent properties referred to by
the Requester. See Req. Res. Br. 5. HFO-1234yf, which is expressly
described in Inagaki, inherently has a capacity and COP equivalent to that of
HFC-134a, as admitted by the Patent Owner. See Singh Decl. ¶ 32; ’120
patent, Table 1. It is of no moment that the similarity between these two
refrigerants with respect to COP and capacity had not been recognized by
the prior art because the prior art fully recognized the good COP, freezing
effect, and ozone friendliness of HFO-1234yf. See Inagaki, Embodiment 5.
“[M]ere recitation of a newly discovered function or property, inherently
possessed by things in the prior art, does not distinguish a claim drawn to
those things from the prior art.” In re Oelrich, 666 F.2d 578, 581 (C.C.P.A.
1981); PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195 (Fed.
Cir. 2014); In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009); Ansonia
Brass & Copper Co. v. Elec. Supply Co., 144 U.S. 11, 12 S.Ct. 601, 36 L.Ed.
327 (1892) (“[N]othing is better settled in this court than that the application
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of an old process to a new and analogous purpose does not involve
invention, even if the new result had not before been contemplated.”); see
also Skoner, 517 F.2d at 950–51.
Accordingly, we affirm the Examiner’s rejection of claim 13 under 35
U.S.C. § 103(a) as obvious over Inagaki in view of admitted prior art,
Thomas or Bivens.

Claims 22–31, 33, 34, 42–54, and 60–67
Issue
Patent Owner presents separate arguments for claims 22–31, 33, 34,
42–54, and 60–67. See PO App. Br. 32. These claims recite that the
refrigerant further comprises one or more of HFC-32, HFC-152a, propane,
hexane, or octane. Moreover, these claims depend from either claim 1,
which recites that the refrigerant “has a Global Warming Potential (GWP) of
not greater than about 75” in the case of claims 22–31, 33, 34, and 42–54, or
claim 14, which recites that the refrigerant “has a Global Warming Potential
(GWP) of not greater than about 150” in the case of claims 60, 61, and 67.
Claims 22, 42–45, 60, 61, and 67 stand rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being
obvious over Inagaki alone. Claims 23–31, 33, 34, 46–54, and 62–66 stand
rejected under 35 U.S.C. § 103(a) as being obvious over Inagaki in view of
admitted prior art, Thomas, or Bivens. Patent Owner argues claims 22–31,
33, 34, 42–54, and 60–67 as a group, for which we select claim 22 as a
representative claim. See PO App. Br. 32–34.
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Patent Owner contends that Inagaki does not support a conclusion that
a composition using a refrigerant with a GWP of less than 75 would have
been obvious because (1) there is no express disclosure of this requirement,
(2) not all heat transfer media within Inagaki necessarily produce a GWP as
low as required by the claims, and thus a finding of inherency is in error, and
(3) Inagaki teaches improving solubility by adding saturated HFCs or
HCFCs that have a GWP “at least ten times (10 X) greater than the GWPs
of the compounds within the scope of the present claims”. PO App. Br. 32–
33 (citing Singh Decl. ¶ 30).
Patent Owner further contends that, because some of the compounds
taught by Inagaki are flammable, namely HFO-1243zf, Inagaki is not
directed towards refrigerants for “safety-sensitive” applications, such as
cooling air. Id. at 33–34. Patent Owner further contends that Inagaki does
not teach which of its compounds would be useful for cooling air, i.e., are
not flammable. Id.
The issue with respect to claims 22–31, 33, 34, 42–54, and 60–67 is:
Did the Examiner err in determining that one of ordinary skill in the
art would have formulated a heat transfer composition having a refrigerant
comprising HFC-32, HFC-152a, propane, hexane, or oxtane, and further
maintain the low GWP property recited in the claims from the teachings of
Inagaki, particularly in light of the further teaching of flammable refrigerants
in Inagaki?
Analysis
Because Inagaki expressly teaches the use of HFO-1234yf as a
refrigerant, the use thereof, and of all the properties associated therewith,
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would have been obvious, including the refrigerant’s low GWP.16 See Atlas
Powder, 190 F.3d at 1347; see also Corr Decl. ¶ 38. Inagaki further
expressly teaches that HFO-1234yf can be combined with other known
refrigerants including “R-32 (CH2F2),” “R-152 (CHF2CH3),” and “R-152a.”
Inagaki 2 and 3.
Inagaki recognizes that because HFO-1234yf contains “neither
chlorine atm[sic] nor bromine atom, [it has] no hazardous nature to destruct
the ozone layer.” Inagaki 2. Thus, Inagaki would have instructed the skilled
artisan to take advantage of the environmentally friendly aspects of the
refrigerants described by Inagaki. Although it would have been obvious to
the skilled artisan to have combined the low GWP HFO-1234yf refrigerant
with other known refrigerants that have substantially higher GWP, the
skilled artisan would have a reason and the skill to optimize the
concentrations of each material to take advantage of the environmentally
friendly aspects of Inagaki’s refrigerants, particularly in light of national and
international regulations, that limit the use of refrigerants with a high GWP,
such as the Kyoto Protocol. See Singh Decl. ¶35 and Exhibit M; Corr Decl.
¶ 48.
Inagaki evinces that at the time of the invention HFO-1234ze and
HFO-1234yf would have been known to those of skill in the art to be
refrigerants with good COP and good freezing effect with no destructive
effects on the ozone layer. We find it of no moment that Inagaki also

16 There is evidence of record that HFO-1234yf has a GWP of 4. See Singh
Decl. ¶ 40; Req. Res. Br. 12. See also RAN 24 (Examiner reasoned that
identical fluoroalkene compounds would have the same low GWP as
claimed).
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discloses other refrigerants that are less desirable due to toxicity or
flammability. See Merck, 874 F.2d at 807.
As discussed above with respect to toxicity, HFO-1234yf also exhibits
the desirable property of low flammability. Thus, despite the fact that
HFO-1234yf, a known refrigerant, possessed attributes (e.g., low
flammability) that were yet to be recognized in the art, the compound would
have been recognized as suitable for use in air conditioning equipment, an
application for refrigerants which is also taught by Inagaki.17
The properties of the particular refrigerants are inherent to the
refrigerant, whether specifically disclosed or not. Such inherent properties
of refrigerants include flammability. One cannot obtain patentability based
on these inherent properties of an otherwise known refrigerant. Even though
those in the art may not have recognized that HFO-1234yf was non-
flammable, it nonetheless is inherently so. The new realization alone does
not render that prior art patentable.
Also as discussed above, we are not persuaded that any of the cited
potential difficulties or problems associated with the use of HFO-1234yf,
such as flammability, would have deterred an ordinary artisan from using
HFO-1234yf as a refrigerant in known refrigerant applications, as evidenced
by Inagaki. In other words, based on Inagaki, an ordinary artisan would
have had reason to predict that Inagaki’s refrigerants would have worked as

17 Moreover, there is evidence of record to suggest that the particular issues
with respect to flammability were known in the art at the time of the
invention and the testing of prospective refrigerants for these properties was
routine in the art at the time of the invention. See Singh Decl. ¶ 36 (citing
Exhibit N to the Singh Decl., describing flammability as one of the tradeoffs
of selecting refrigerants).
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intended, i.e., causing heat to be transferred from the air being cooled to the
heat transfer composition by vaporizing the refrigerant, as recited in the
claims. Even if HFO-1234yf had been expected to be flammable, the skilled
artisan would have recognized the tradeoff of flammability for the benefits
of good cooling with little effect on the ozone and would have had reason to
use Inagaki’s refrigerants in air conditioning equipment accordingly, as
taught by Inagaki. See Singh Decl. ¶ 36 (discussing Exhibit N to the Singh
Decl., which is a 1997 article entitled “Trade-Offs in Refrigerant
Selections.”).
The skilled artisan would have optimized the concentrations of
HFO-1234yf and other known refrigerants because concern for flammability
was known in the art at the time of the invention, as discussed above.
Accordingly, we affirm the Examiner’s rejection of claims 22–31, 33,
34, 42–54, and 60–67 under 35 U.S.C. § 103(a) as obvious over Inagaki
alone or further in combination with admitted prior art, Thomas, or Bivens.

Claims 32 and 41
Issue
Patent Owner presents separate but substantially identical arguments
for claims 32 and 41. PO App. Br. 31 and 34. Claims 32 and 41 specifically
recite that the “heat transfer composition comprises at least about 50% by
weight trans-1,3,3,3-tetrafluoropropene (transHFO-1234ze).” Claims 32 and
41 are rejected under 35 U.S.C. § 103(a) as being obvious over Inagaki in
view of admitted prior art, Thomas, or Bivens.
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The Examiner found that Inagaki’s disclosure of HFO-1234ze would
necessarily include both transHFO-1234ze and cisHFO-1234ze. RAN 14.
The Examiner further found that
the boiling point of the HFO-1234ze disclosed by Inagaki
indicates that the composition is predominately, if not entirely,
the trans-isomer. It is well known in the art that the boiling
point of the cisHFO-1234ze is about 9°C and the boiling point
of the transHFO-1234ze is about -19°C. Inagaki discloses that
the HFO-1234ze has a boiling point of -16°C (page 2).
Accordingly, Inagaki clearly indicates that the HFO-1234ze is
predominately trans-isomer.
RAN 15, 18, and 21.
Patent Owner contends that the Examiner “cites no direct evidence in
support” of the reasoning quoted above. PO App. Br. 31. Patent Owner
further contends that Inagaki is silent as to any differences between the
trans- and cis-isomers of HFO-1234ze or any preference for the trans-isomer
over the cis-isomer. Id. at 32.
The issue with respect to claims 32 and 41 is:
Did the Examiner err in determining that a heat transfer composition
comprising at least 50% transHFO-1234ze would have been obvious to one
of ordinary skill in the art from the teachings of Inagaki?
Analysis
While we agree with Patent Owner that the Examiner did not cite to
any support for his findings regarding the boiling points of cis- and trans-
isomers of HFO-1234ze, Patent Owner also does not dispute these findings,
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and rather concurs that “the actual boiling point of trans-HFO-1234ze
is -19°C.” PO App. Br. 32.18
Inagaki does not describe expressly the trans-isomer, as recited in the
claims. The record before us, however, indicates that an ordinary artisan
would have understood that Embodiment II, constituted a mixture of the cis-
and trans-isomers. We agree with the Examiner that the boiling point of the
stated compound would have been understood as evidence that the
HFO-1234ze product discussed therein included substantially more trans-
isomer than the cis-isomer because the recorded boiling point was
substantially closer to the trans-isomer boiling point than to the cis-isomer
boiling point. Thus, we find that that Inagaki inherently discloses a relevant
HFO isomer mixture, i.e., Embodiment II comprising more than 50% trans-
HFO-1234ze, as recited in the claims. Accordingly, the burden properly
shifted to Patent Owner to demonstrate error in the Examiner’s sound
reasoning. No such demonstration was provided by Patent Owner.
Accordingly, we affirm the Examiner’s rejection of claims 32 and 41
under 35 U.S.C. § 103(a) as obvious over Inagaki in view of admitted prior
art, Thomas, or Bivens.

Claim 68
Issue
Patent Owner presents separate arguments for claim 68. PO App. Br.
34. Claim 68 specifically recites that the “fluoroalkene consists essentially

18 Moreover, these boiling points are particularly recited in Patent Owner’s
related patents, such as the ’451 patent, the reexamination of which is
concurrently decided herewith. See ’451 patent, col. 5, ll. 4–19.
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of trans-1,3,3,3-tetrafluoropropene (transHFO-1234ze).” Claim 68 is
rejected under 35 U.S.C. § 103(a) as being obvious over Inagaki in view of
admitted prior art, Thomas, or Bivens.
The Examiner found that Inagaki’s disclosure of HFO-1234ze would
necessarily include both transHFO-1234ze and cisHFO-1234ze. RAN 14.
The Examiner further determined that “there is no evidence on the record to
show that the presence of other compounds including the cisHFO-1234ze in
the heat transfer composition as disclosed in Inagaki would materially affect
the basic and novel characteristic of the claimed invention (i.e. providing
heat transfer function).” RAN 15, 17–18, and 20–21.
Patent Owner contends that the Examiner has ignored evidence in the
’120 patent that the trans-isomer has a capacity relative to HFO-134a that is
approximately double that of the cis-isomer, and that an “efficient and
effective heat transfer performance” is another novel feature of the ’120
patent. PO App. Br. 35.
The issue with respect to claim 68 is:
Did the Examiner err in determining that a heat transfer composition
comprising cisHFO-1234ze in addition to transHFO-1234ze would have
affected the basic and novel characteristics of the claimed invention, such
that the phrase “consisting essentially of” excludes a refrigerant comprising
both isomers?
Analysis
Patent Owner’s arguments are not persuasive. While the ’120 patent
identifies differences between the capacities of the trans- and cis-isomers of
HFO-1234ze, the ’120 patent does not exclude either isomer from being an
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effective and efficient refrigerant. To the contrary, the ’120 patent describes
the refrigerant HFO-1234ze generically throughout the patent, which
suggests a refrigerant comprising both isomers, and that the cis-isomer is
also a “preferred compound.” See ’120 patent, col. 4, ll. 53–54, col. 11, ll.
55–58, col. 11, l. 46, col. 12, ll. 50 and 52. Thus, Patent Owner has not
shown that the presence of a cis-isomer, to the extent the cis-isomer is
present in the generic disclosure of Inagaki or in the examples, would have
materially affected the basic and novel characteristics of the invention and
thus would have been excluded by the “consisting essentially of” language
in claim 68.
Accordingly, we affirm the Examiner’s rejection of claim 68 under 35
U.S.C. § 103(a) as obvious over Inagaki in view of admitted prior art,
Thomas, or Bivens.

35 U.S.C. § 112 2nd PARAGRAPH REJECTION
Claims 22–41 and 45–54
Discussion
The Examiner found that claims 22 and 35, and the claims that depend
therefrom, are indefinite due to a lack of antecedent basis for the limitation
“heat transfer method of claim 1” when claim 1 is directed to a “method of
cooling air” and not a “heat transfer method.” RAN 6–7. Similarly, the
Examiner found that claim 45’s recitation of “heat transfer method of claim
7” is indefinite because claim 7 depends from claim 1 and, as such, is also
directed to a “method of cooling air.” RAN 7.
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Patent Owner contends that “a person skilled in the art would
certainly understand that the method of cooling air of claim 1 is the ‘heat
transfer method’ being referred to in each of these claims” and that no more
is required under 35 U.S.C. § 112. PO App. Br. 36.
35 U.S.C. § 112, second paragraph, “puts the burden of precise claim
drafting squarely on the applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed.
Cir. 1997) (“The problem in this case is that the appellants failed to make
their intended meaning explicitly clear.”). However, “[t]he test for
definiteness is whether one skilled in the art would understand the bounds of
the claim when read in light of the specification. If the claims read in light
of the specification reasonably apprise those skilled in the art of the scope of
the invention, § 112 demands no more.” Miles Lab., Inc. v. Shandon, Inc.,
997 F.2d 870, 875 (Fed. Cir. 1993) (internal citations omitted); see Geneva
Pharms., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1384 (Fed. Cir.
2003) (“[a] claim is indefinite if its legal scope is not clear enough that a
person of ordinary skill in the art could determine whether a particular
[product or method] infringes or not.”). Further, “[w]hether this claim,
despite lack of explicit antecedent basis . . . nonetheless has a reasonably
ascertainable meaning must be decided in context.” Energizer Holdings,
Inc. v. Intl. Trade Com’n., 435 F.3d 1366, 1371 (Fed. Cir. 2006). An
antecedent basis can be present by implication. See Cross Medical Products
v. Medtronic Sofamor Danek, 424 F.3d 1293, 1319 (Fed. Cir. 2005);
Slimfold Manufacturing Co. v. Kinkead Industries, Inc., 810 F.2d 1113,
1117 (Fed. Cir. 1987) (noting this principle in dicta).
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We do not find the language of claim 68 to be unclear or to render the
scope of claim 68 indefinite. Although the ’120 patent describes several
“heat transfer” methods, the dependency upon claim 1 limits the scope of
heat transfer methods to only those for cooling air. Thus, the scope of the
claim is clear on its face when read in light of the claims from which it
depends. We fail to see how a proper interpretation of the phrase “heat
transfer method of claim 1” could reasonably include heat transfer methods
from the ’120 patent that fall outside of the scope clearly recited in claim 1,
namely methods for cooling air.
Accordingly, we reverse the Examiner’s rejection of claims 22–41 and
45–54 as failing to comply with 35 U.S.C. § 112, second paragraph.

DECISION
In sum, we affirm the Examiner’s decision to reject:
Claims 1–6, 14–18, 22, 35, 42–45, 55, 60, 61, and 67 under 35 U.S.C.
§ 103(a) as unpatentable over Inagaki; and
Claims 10–13, 23–34, 36–41, 46–54, 56–59, 62–66, and 68 as obvious
under 35 U.S.C. § 103(a) over Inagaki in view Patent Owner’s own
admissions, Thomas, or Bivens.

We reverse the following Examiner’s rejections:
Claims 1–7, 14–19, 22, 35, 42–45, 55, 60, 61, and 67 under 35 U.S.C.
§ 102(b) as anticipated by Inagaki;
Claims 7–9 and 19 under 35 U.S.C. § 103(a) as obvious over Inagaki
alone or further in view of admitted prior art, Thomas, or Bivens; and
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Claims 22–41 and 45–54 under 35 U.S.C. § 112, 2nd paragraph, as
being indefinite for a lack of proper antecedent basis.

We enter the following new grounds of rejection:
Claim 7 and 19 under 35 U.S.C. § 103(a) as obvious over Inagaki in
view of Magid.
Claims 8 and 9 under 35 U.S.C. § 103(a) as obvious over Inagaki in
view of admitted prior art, Thomas, or Bivens, and further in view of Magid.

NEW GROUND OF REJECTION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that “[a]ny decision which includes a new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.” Correspondingly, no portion of the decision is final for
purposes of judicial review. A requester may also request rehearing under
37 C.F.R. § 41.79, if appropriate; however, the Board may elect to defer
issuing any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)–(g). The decision may become final after it has returned to the
Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. . . .
Any request to reopen prosecution before the examiner under
37 C.F.R. § 41.77(b)(1) shall be limited in scope to the “claims so rejected.”
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the patent owner seek to
substitute claims, there is a presumption that only one substitute claim would
be needed to replace a cancelled claim.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall
be limited in scope to the issues raised by the Board’s opinion reflecting its
decision to reject the claims and the patent owner’s response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence
properly submitted by the patent owner, and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
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Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all patent owner responses and requester comments, is required.
The examiner, after the Board’s entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board’s rejection is maintained or has been overcome.
The proceeding will then be returned to the Board together with any
comments and reply submitted by the owner and/or requester under
37 C.F.R. § 41.77(e) for reconsideration and issuance of a new decision by
the Board as provided by 37 C.F.R. § 41.77(f).

AFFIRMED-IN-PART; NEW GROUNDS OF REJECTION

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PATENT OWNER:
HONEYWELL/FOX/BANNER
PATENT SERVICES
115 TABOR ROAD - PO BOX 377
MORRIS PLAINS NJ 07950

THIRD-PARTY REQUESTER:

JOSEPH A. KROMHOLZ, ESQ.
PATRICK J. FLEIS, ESQ.
Ryan Kromholz & Manion, S.C.
P.O. Box 26618
Milwaukee, WI 53226-0618