HONEYWELL INTERNATIONAL INC. (OWNER) et al.

Patent Trials and Appeals Board

May 1, 2020

2020000936 (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.
95/001,783 11/08/2011 8,033,120 9404.21592-REX 8580
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.
Requester and Respondent

v.

HONEYWELL INTERNATIONAL INC.
Patent Owner and Appellant
____________

Appeal 2020-000936
Reexamination Control 95/001,783
Patent US 8,033,120 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 8,033,120 B2 issued on October 11, 2011 to Rajiv R. Singh, et
al. (hereinafter “the ’120 patent”).
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This is a decision under 37 C.F.R. § 41.77(f). In a Decision on
Request for Rehearing entered March 21, 2019 (“Rehearing Decision”), the
Board entered new grounds of rejection under 37 C.F.R. § 41.77(b) for
claims 1–19 and 22–68 by designating several rejections from the FINAL
DECISION ON APPEAL UNDER 37 C.F.R. § 41.77(f) mailed January 2,
2018 (“2018 Decision”) as new grounds of rejection. Rehearing Decision
16–17.
In response to the Rehearing Decision, Patent Owner Honeywell
International Inc. (“Patent Owner”) requested reopening of prosecution
under 37 C.F.R. § 41.77(b)(1) in its 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 proposed amendments to claims 1, 8, 14, and 19;
canceled claims 4, 6, 16, and 18; and also presented a Declaration of Dr.
Darryl DesMarteau with exhibits dated May 17, 2019 (hereinafter
“DesMarteau Declaration”) and a Declaration of Dr. Thomas J. Leck with
exhibits dated May 20, 2019 (hereinafter “Leck Declaration”) as evidence in
response to the new grounds of rejection. Req. to Reopen ii-v, 1–37.
Third Party Requester Mexichem Amanco Holding S.A. de C.V.
(“Mexichem”) filed a RESPONSE TO REQUEST TO REOPEN on
June 21, 2019 (hereinafter “Requester’s Comments” or “Req. Comm.”) in
response to the Patent Owner’s Request to Reopen (see generally Req.
Comm.) under 37 C.F.R. § 41.77(c).
In an order remanding the case to the Examiner, Patent Owner’s
Request to Reopen including the amendments to the claims, evidence, and
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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,
Requester’s comments and accompanying exhibits related to the entered
portions of Patent Owner’s response were also entered for consideration by
the Examiner.
An Examiner’s Determination under 37 C.F.R. § 41.77(d) was issued
on September 13, 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. 6.
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 “Req. 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
Claim Amendments
Patent Owner explains that claims 1 and 14 have been amended to be
directed to methods of cooling air using a tetrafluoropropene compound
having a –CF3 terminal group and at least one H on an unsaturated terminal
carbon. Req. to Reopen 6. Patent Owner explains further that claim 8 has
been amended to depend from claim 3, and to “focus on the combination
wherein the refrigerant ‘consists of’ HFO-1234yf and the lubricant ‘consists
essentially of’ poly alkylene glycol lubricant.” Id. Patent Owner explains
that claim 19 has been further amended to depend from claims 8 and 13 “to
thereby focus on the stability achieved by the present invention when the
condenser is operated over a temperature range that includes 150°F when the
lubricant includes poly alkylene glycol used in combination with a
refrigerant comprising HFO-1234yf.” Id. at 6–7.
The Examiner has also summarized the claim amendments in the
Examiner’s Determination, finding the amendments insufficient to overcome
the new grounds of rejection. Ex. Det. 3–6. We agree with the Examiner in
this regard that the prior art renders obvious the combination of HFO-1234yf
and PAG still encompassed by the amended claims as set forth in the
Rehearing Decision, and for the reasons that follow.

Reasonable Expectation of Success
In its Request to Reopen prosecution, Patent Owner contends the
Board’s analysis of a reasonable expectation of success in combining an
unsaturated refrigerant compound (a hydrofluoroolefin (HFO)) with a
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lubricant and including additional claimed features such as operability at
150°F and no substantial acute toxicity is flawed. Req. to Reopen 8.
Patent Owner contends the DesMarteau Declaration provides
evidence that HFOs were understood to be more reactive than saturated
fluorinated saturated hydrocarbons, that polyalkylene glycol (PAG)
lubricants were also known to have issues with reactivity such that a person
of ordinary skill in the art would expect that HFOs would react with PAGs,
and all pending claims are limited to method of cooling or conditioning air,
which can involve high temperatures and extreme conditions, as well as
specialized equipment in the case of automobile air conditioners (AAC).
Req. to Reopen 8–9. In particular, Patent Owner relies on the DesMarteau
Declaration in order to expand upon the explanation provided by Dr.
Chambers2 regarding how HFOs and PAGs would have been expected to
react. Id. at 8–9, 13–14 (citing DesMarteau Decl. ¶¶ 13–17, 25–40, 43–45,
53). Patent Owner argues that the Leck Declaration provides evidence that
the Board improperly relied on proposed teachings of stabilizers in the prior
art as a teaching of a reasonable expectation of success. Id. at 11, (citing
Leck Decl. ¶¶ 13–24, 33). Further, Patent Owner argues Omure3 does not
provide a reasonable expectation of success in combining HFO-1234yf and
PAG. Id. at 21–24 (citing DesMarteau Decl. ¶¶ 59, 62, 63, 66, 67, 73–79,
88; Leck Decl. ¶ 33).

2 Declaration of Richard D. Chambers executed March 27, 2013 and
attached exhibits (submitted with Patent Owner’s Request to Reopen under
37 C.F.R. § 41.77(b)(1) filed May 2, 2016).
3 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 amendments, new evidence, and
arguments 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.4 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 and Leck Declarations in
discussing reasonable expectation of success and pointed to portions of the
Remand Decision to determine that Patent Owner’s evidence was
unpersuasive. See, e.g., Ex. Det. 3, 6–7, 11–12.
We point out that the 2018 Decision and the Rehearing Decision
stated that the evidence, when weighed, favored a reasonable expectation of
success in combining HFO-1234yf and PAG. Rehearing Decision 10,
(citing 2018 Decision 19–22); see also Rehearing Decision 16. As the
Board emphasized in the Rehearing Decision, some degree of
unpredictability is not fatal to a finding of a reasonable expectation of
success. Rehearing Decision 7; see Req. 41.77(e) Rep., 13 (quoting In re
O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988) “Obviousness does not
require absolute predictability of success.”).

4 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
and Leck Declarations as Exhibits (see Req. to Reopen 8–10, 12, 29, 31–34,
and PO 41.77(e) Resp. 10–13, 21, 27), 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.
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The Board found Inagaki5 expressly discloses HFO-1234yf as a
refrigerant that is compatible with lubricants, and the ’120 Patent does not
address any unexpected compatibility of HFO-1234yf with PAG lubricant.
Rehearing Decision 4–5, 8–10; 2018 Decision 15, citing Inagaki 2, col. 2, 3,
col. 1; ’120 Patent, col. 6, ll. 14–17. The Board found that the ’120 patent,
the prior art, namely Bivens, Magid, Mahler, 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. Rehearing Decision 6–8 (citing the
Board’s 2018 Decision 21 and the Board’s 2016 Decision 32–33, Bivens,
col. 1, ll. 36–42; Magid, col. 4, l. 26 to col. 5, l. 41; Mahler, col. 1, ll. 39–45,
col. 2, ll. 7–17; Singh Decl. ¶¶ 25, 31). The Board additionally found
Omure, in disclosing a combination of an HFO compound
(hexafluoroisobutylene or HFIB) with PAG, provides evidence, contrary to
Patent Owner’s arguments, 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 in air-conditioning environments under severe
operating conditions.6 Rehearing Decision 9–10, (citing 2018 Decision 14,
Omure ¶ 12, Bivens, col. 4, ll. 45–53, and Magid, col. 9, ll. 61–67).

5 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.
6 In this regard, Patent Owner’s citation to IPR2015-01309 in order to
support the position that the Board “has recognized on numerous occasions”
that Omure does not demonstrate a reasonable expectation of success in
combining HFO-1234yf with PAG (PO 41.77(e) Resp. 5–6, citing Paper No.
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We acknowledge the opinions of Dr. DesMarteau,7 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,
such that the combination would be too unstable for use in air conditioning
systems. DesMarteau Decl. ¶¶ 20, 29–47.

8, at 17, Institution Decision December 9, 2015) is not persuasive.
Rehearing Decision 22. 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. Req. 41.77(e) Resp. 16, citing Final Written
Decision, December 9, 2016 at 31–32.
7 We do not consider Dr. DesMarteau’s discussion of art published after the
filing date of the ’120 Patent. DesMarteau Decl. ¶¶ 45, 49–51; Ex. 5, 29, 33,
34, 39, 47, 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 ’120 patent.
See DesMarteau Decl. Ex. 29 (Tsuchiya et al. “Tsuchiya” US 2011/0312101
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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The Examiner did not find this evidence persuasive. Ex. Det. 6–10,
12–15. Although we appreciate the detailed explanations given by Dr.
DesMarteau, we are not persuaded by Patent Owner’s arguments with
respect to the stability of HFO-1234yf. In this regard, we do not disagree
with the description of general chemical reactions in the DesMarteau
Declaration. See Req. Comm., Second Corr Decl. ¶¶ 11, 12; Sandford Decl.
¶¶ 18, 19, 33. However, we remain of the view that one of ordinary skill in
the art at the time of the invention would have had a reasonable expectation
of success in combining HFO-1234yf and PAG.
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. ¶ 22), yet, as discussed above,
Inagaki and Omure provide evidence that at that time unsaturated
fluorocarbons were used as refrigerants, and were combined with stabilizers
when used in severe operating conditions. Inagaki, 2–3; Omure, ¶ 12. In
addition, 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 in air conditioning
applications. Second Corr Decl. ¶¶ 20, 26–29, 32; Sandford Decl. ¶¶ 53, 54.
Moreover, we, like the Examiner, are also not persuaded by Patent
Owner’s arguments that Omure’s disclosure of hexafluoroisobutylene
(HFIB) means that HFIB is not indicative of the properties of HFO-1234yf.
Ex. Det. 18–21; Req. to Reopen 23–24. 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
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to the ’120 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 Rehearing Decision 7, 15–16; 2018 Decision 20–21. In
addition, we agree with Requester that Patent Owner’s arguments relate to
the general relative reactivity of HFIB versus HFO-1234yf and does not
speak to the expectation of HFO-1234yf in combination with PAG. Req.
41.77(e) Resp. 3–4; see 2nd Corr Decl. ¶¶ 32, 45.
Further, Mexichem has 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
reactivity. Req. Comm., 2nd Corr Decl. ¶¶ 28–35; Sandford Decl. ¶¶ 22, 26–
28. 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. 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
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art to lack a reasonable expectation of success in combining HFO-1234yf
and PAG at the time of the invention. See Ex. Det. 14–15.
As to the Leck Declaration, we are not persuaded by the statements
therein regarding the number of stabilizers and complexity of the chemistry
as providing a lack of predictability of combining unsaturated
fluorochemical refrigerants and stabilizers. In particular, as the Examiner
points out, Omure provides guidance as to the use of stabilizers with HFOs
(Ex. Det. 12, citing Omure ¶ 12), such that the statements made in the Leck
Declaration are not consistent with what one of ordinary skill in the art at the
time of the invention would have understood about the use of stabilizers
with HFOs. See Req. Comm., Sandford Decl. ¶¶ 18, 19, 21–24, 26, 29.
Although the Leck Declaration acknowledged Omure discloses a
hydrofluoroolefin and the addition of a stabilizer, the Leck Declaration
merely states “there is no indication what type or degree of stability would
result.” Leck Decl. ¶ 33.
After considering the evidence as a whole, we assign greater weight to
the express disclosures of the prior art in Inagaki, Bivens, 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 in the
DesMarteau Declaration and the Leck Declaration.

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Unexpected Results
Patent Owner also contends that the Board misunderstood the results
of testing described in the Thomas Declaration8 demonstrating that the
combination of HFO-1234yf and PAG is unexpectedly stable. Req. to
Reopen 25–28 (citing DesMarteau Decl. ¶¶ 31–34, 56–58, 60–67). Patent
Owner argues that, when all the 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 27. 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 25, citing DesMarteau
Decl. ¶ 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 27,
citing DesMarteau Decl. ¶¶ 60–67. In addition, Patent Owner contends that

8 Declaration of Raymond H. Thomas executed March 29, 2013 (filed with
Patent Owner’s “RESPONSE UNDER RULE 41.77(b)(1) TO REOPEN
PROSECUTION” on May 2, 2016, and entered in the “ORDER
REMANDING INTER PARTES REEXAMINATION UNDER 37 C.F.R.
§ 41.77(d) TO THE EXAMINER” entered March 8, 2017; hereinafter
“Thomas Decl.”) and attached exhibits.
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the unexpected results were demonstrated relative to the closest prior art,
which is HFO-1234ze, the closest structural isomer to HFO-1234yf. Id. at
27–28, citing DesMarteau Decl. ¶ 64.
Requester 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. Req. Comm.
4–5.
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
combination of HFO-1234yf and PAG produced unexpected results. Ex.
Det. 21–22. 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 ’120 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. ’120
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Patent, col. 12, ll. 35–62; Thomas Decl., Ex. G, Table 3; see also Req.
Comm. 11–12. The ’120 Patent tests the combinations at 350°C in the
presence of aluminum, copper, and steel coupons for one week. Id. The
’120 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. 12, ll. 48–62. Notably, the ’120 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 ’120 Patent, including HFO-1234ze and HFO-1243zf. Id.
Thus, although Dr. 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 ’120 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 miscibility, toxicity,
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flammability, condenser operating at 150 °F, and GWP.9 Req. to Reopen
28–36 (citing DesMarteau Decl. ¶¶ 29, 78–80).

Miscibility
Patent Owner contends miscibility is an unpredictable property and
contends that simply because HFO-1234yf and PAG are polar compounds
“[i]t is not necessarily true . . . that they will be miscible in one another.”
Req. to Reopen 29–31, citing DesMarteau Decl. ¶ 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. Req. to Reopen 29–30; DesMarteau Decl.
¶ 80, Ex. 49 ¶ 12.
In the Rehearing 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
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

9 We do not address Patent Owner’s arguments regarding global warming
potential (GWP). Req. to Reopen 35–36. Patent Owner does not rely on the
DesMarteau Declaration or the Leck 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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expectation of success in producing miscible combination between HFO-
1234yf and PAG. Rehearing Decision 5–8.
The Examiner did not find Patent Owner’s arguments and evidence
persuasive in view of the Decision on Remand and in view of the additional
disclosure in Omure that the HFO has “superior intersolubility to PAG-
based (poly alkylene glycol-based) oil, polyester-based oil, etc.” Ex. Det.
25, citing Omure ¶ 14. In addition, the Examiner did not find Patent
Owner’s evidence that one HFC 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 27–28.
We agree with the Examiner. That is, while 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 have been 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 Rehearing Decision (Rehearing Decision 6–7,
citing 2016 Decision 32–33, citing Thomas,10 col. 1, ll. 33–37; Bivens,11 col.
1, ll. 36–42; Magid,12 col. 4, l. 26 to col. 5, l. 41; Mahler,13 col. 1, ll. 39–45,
col. 2, ll. 7–17) outweighs Patent Owner’s evidence such that one of

10 US Patent 5,254,280, issued October 19, 1993 to Raymond H. P. Thomas
et al.
11 US Patent 6,783,691 B1, issued August 31, 2004 to Donald Bernard
Bivens et al.
12 US Patent 4,755,316, issued July 5, 1988 to Hillel Magid et al.
13 US Patent 6,991,744 B2, issued January 31, 2006 to Walter Mahler et al.
See Req. Res. Br. 16, Evidence App’x, Ex. 4.
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ordinary skill in the art would have had a reasonable expectation that HFO-
1234yf would be miscible with PAG oils.

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 likely would be toxic and
flammable, such that one of ordinary skill in the art would not have used
HFO-1234yf for air conditioning. Req. to Reopen 31–33, citing DesMarteau
Decl. ¶¶ 29, 78, 79.
Requester 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.
Req. Comm. 15.
The Examiner determined Patent Owner’s arguments and evidence
were not persuasive in view of the Rehearing 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. 28–29.
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
Rehearing Decision, 2018 Decision, and 2016 Decision regarding toxicity
and flammability properties HFO-1234yf/PAG combination. That is, the
DesMarteau Declaration, similar to the Chambers Declaration, relies on the
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alleged general expectation that 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
Rehearing Decision, the toxicity property of HFO-1234yf is described in the
’120 Patent as belonging to the particular refrigerant, and in this case 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. Rehearing Decision 13–15, 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. Rehearing Decision 4–5, 8–10; 2018 Decision 15. 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 makes a similar argument with respect to flammability,
arguing that because HFO-1234yf contains a double bond, one of ordinary
skill in the art would have expected relatively high flammability. Req. to
Reopen 32–33, citing DesMarteau Decl. ¶ 29. Patent Owner argues that a
person of ordinary skill in the art would not have been motivated to use
HFO-1234yf in a method, which generally requires low flammability,
arguing also that HFO-1234yf has exceptionally low flammability. Id. at 33.
Patent Owner contends that flammability (and toxicity) are not simply
tradeoffs, but disqualifying characteristics for methods of cooling air. Id.
Requester contends that the flammability (and toxicity) properties of
HFO-1234yf are identical to those in the HFO-1234yf compound disclosed
in Inagaki. Req. Comm. 15.
The Examiner determined Patent Owner’s arguments were
unpersuasive, and that the Board’s obviousness analysis is not based on
inherent flammability, but rather the teachings of the prior art. Ex. Det.
28–29. We agree with the Examiner for essentially the same reasons as
discussed above with respect to toxicity.
We are of the view also that in contrast to Patent Owner’s arguments,
the use of refrigerants in air conditioning equipment does involve certain
trade-offs in relation to refrigerant properties depending on what is
acceptable for the particular refrigerant application. See 2016 Decision 13,
citing Ex. N to the Singh Decl.,14 “Trade-Offs in Refrigerant Selections:
Past, Present, and Future”; see “Trade-Offs in Refrigerant Selections: Past,

14 Declaration of Rajiv Ratna Singh executed April 30, 2012, Ex. 1 to PO
Appeal Brief, April 21, 2014.
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Present, and Future” 11–17. See also ’120 Patent, col. 4, ll. 4–67, discussing
that all refrigerants in accordance with Formulas I and II, with varying
toxicities, are generally effective and exhibit utility in refrigerant
compositions. In this regard, we observe also that although Patent Owner
argues automobile air conditioning environments, none of the claims are
limited to methods of cooling air in automobiles.

150°F Condenser Operability
Patent Owner contends the methods of claims 7, 14, and 19 all require
a heat transfer composition comprising an unsaturated fluoropropene and a
condenser operating in a temperature range that includes about 150°F. Req.
to Reopen 33–35. Patent Owner contends that the Board’s Decision relying
on Inagaki’s disclosure of fluoropropenes with critical temperatures above
150°F is misplaced. Id. Patent Owner contends that the Leck Declaration
provides evidence that one of ordinary skill in the art would not have known
the critical temperature of HFO-1234yf and would have understood that
critical temperatures do not indicate anything about properties a
refrigerant/lubricant combination must possess in order to be suitable for air
conditioning operations. Id. at 34–35, citing Leck Decl. ¶¶ 34, 35.
The Examiner determined that Inagaki in view of Magid provide a
reasonable expectation of success that HFO-1234yf in combination with
PAG would be operable at 150°F. Ex. Det. 31–32.
Initially, as pointed out by Requester and contrary to the statements
made in the Leck Declaration that the critical temperature of HFO-1234yf
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was unknown at the time of the invention, Podchernjaev,15 which is also
prior art to the ’120 patent, discloses the critical temperature of HFO-
1234yf. Req. Comm. 6, citing Podchernjaev, Table 1. As we have stated
previously herein and throughout the course of this proceeding, we assign
more weight to the express disclosures in the prior art over the general
opinion statements made by the Declarants, particularly where such
statements are plainly inconsistent with the prior art. In addition, although
Patent Owner criticizes the Examiner for application of an incorrect standard
for reasonable expectation of success, we are of the view that Patent
Owner’s Declarations themselves apply a standard that is well above what
would be considered a “reasonable” expectation of success, and agree with
Requester that Patent Owner’s evidence applies a standard that approaches
an “absolute” expectation of success. Req. Comm. 8; Req. 41.77(e) Rep. 13.
Here, we are of the view that Patent Owner’s contentions regarding
the specific environment of an automobile air conditioning system and any
potential lack of absolute expectation of success for the HFO-1234yf/PAG
combination based on potential reactivity concerns, and if the combination
would “perform well” at temperatures of 150°F (Req. to Reopen 35), does
not mean the combination would have been unexpected, considering the
express disclosure in Inagaki of the suitability of HFO-1234yf for use as a
refrigerant, and the express disclosure of compatibility with lubricants.
Again, none of the claims are limited to automobile air conditioning
systems.

15 RU 2073508, published February 10, 1997, and English Translation,
submitted with Requester’s Comments as an exhibit.
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Thus, we agree with the Examiner, that Inagaki in view of Magid
provide a reasonable expectation of success that HFO-1234yf in
combination with PAG would be operable at 150°F. Ex. Det. 31–32.

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 36–37. Patent Owner contends that the Leck Declaration
provides evidence that there was skepticism as to the combination of HFOs
and stabilizers for use in automobile air conditioning, and Patent Owner had
extraordinary commercial success. Id., citing Leck Decl. ¶¶ 12–32. Patent
Owner contends that Daikin abandoned the Inagaki Patent disclosing HFO-
1234yf, indicating a long-felt need and failure of others to solve the specific
problem Honeywell was attempting to solve. Id. at 37. Patent Owner cites
Tsuchiya, a later patent application by Daikin (DesMarteau Decl. Ex. 29,
¶ 7) in order to argue that HFO-1234yf was abandoned due to stability
problems with HFO-1234yf. Id.
The Examiner determined Omure teaches the use of stabilizers to
improve the stability of HFOs, Inagaki teaches HFO-1234yf and HFO-
1234ze as known refrigerants, are expected to be suitable for systems up to
140°F because of their boiling points such that Inagaki provides sufficient
reason to use HFO-1234yf and HFO-1234ze with a lubricant in a heat
transfer composition. Ex. Det. 34–36. The Examiner determined that the
Leck Declaration’s statements regarding extraordinary commercial success
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are based on the Winick Declaration,16 and Patent Owner has not presented
sufficient evidence to support the statements made in the Leck Declaration
that Patent Owner expected to sell twenty million pounds of HFO-1234yf to
its customers, and those customers intended to use HFO-1234yf with PAG.
Id. at 36.
We agree with the Examiner that the new evidence submitted by
Patent Owner does not change the Board’s determination that the secondary
considerations are insufficient to outweigh the evidence in favor of
obviousness. 2016 Decision 18–21. That is, when Patent Owner’s evidence
is weighed against the express disclosure of Inagaki of HFO-1234yf and
HFO-1234ze in combination of lubricants, and Omure’s disclosure of
stabilizers with HFOs, we are unpersuaded that such evidence is sufficient to
overcome the evidence in favor of obviousness. As to Patent Owner’s
argument with respect to the later published Daikin Application, 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 (FN8, supra).

Requester’s Proposed 112 Rejection
Requester proposed a rejection for amended claims 8, 14, and 19,
which were amended to be directed to systems that consist of HFO-1234yf
and a PAG lubricant. Req. Comm. 20–21. Requester contends the ’120
Patent lacks written description support for the claims as amended because

16 Declaration of Richard Winick dated December 24, 2012, “Winick
Declaration.” Leck Decl., Ex. H.
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the ’120 Patent does not disclose HFO-1234yf in conjunction with any
lubricant and does not test HFO-1234yf with lubricants for stability with
metals. Id. at 21. Requester argues that because of Patent Owner’s repeated
arguments that it is impossible to know whether or not a refrigerant will
work with a particular lubricant without testing it, the claims as amended
lack written description support for a system that consists of HFO-1234yf
with PAG. Id.
The Examiner did not adopt Requester’s proposed rejection because
the Examiner found the ’120 Patent describes heat transfer compositions
including at least one fluoroalkene and a lubricant, and lists HFO-1234yf as
a fluoroalkene and PAG as a commonly used refrigeration lubricant. Ex.
Det. 37, citing ’120 Patent col. 3, ll. 60–62; col. 4, ll. 50–55; col. 6, ll. 1–4
and 13–17.
We agree with the Examiner that the proposed rejection by Requester
is not appropriate in this proceeding. First, in inter partes reexamination, the
original claim language is subject only to rejections based on patents and
printed publications. 35 U.S.C. §§ 301, 311 (pre-AIA). See In re NTP, Inc.,
654 F.3d 1268, 1275–76 (Fed. Cir. 2011) (“[O]ther challenges to the
patentability of original claims—such as qualification as patentable subject
matter under § 101 or satisfaction of the written description and enablement
requirements of § 112—may not be raised in reexamination proceedings.).
With respect to new language added to a claim by amendment in
reexamination, it is appropriate for the Examiner to consider whether such
new language has written description support in the claims under 35 U.S.C.
§ 112, first paragraph. Id. at 1276, n.6; see 37 C.F.R. § 1.552(a) (indicating
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that only “subject matter added or deleted in the reexamination proceeding”
will be examined under 35 U.S.C. § 112). Nonetheless, Requester’s
arguments regarding written descriptive support do not address added claim
language and are directed to language that was present in the originally
patented claims instead. Indeed, the original claims recited the use of HFO-
1234yf and PAG in a method of cooling air (see e.g. claim 10 of the ’120
Patent). Thus, we agree with the Examiner that the proposed rejection by
the Requester is not warranted. See MPEP § 2658(II); MPEP § 2258(II).

CONCLUSION
In view of the discussion above, we find Patent Owner’s amendments
and evidence and argument to be insufficient to overcome the new grounds
of rejection under 37 C.F.R. § 41.77(b) set forth in the Rehearing Decision
of:
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 Omure;
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 at col. 6, ll. 13–17 of the ’120 patent, Thomas, or Bivens, and
Omure;
Claims 7 and 19 under 35 U.S.C. § 103(a) as obvious over Inagaki
and Omure, in view of Magid; and
Claims 8 and 9 under 35 U.S.C. § 103(a) as obvious over Inagaki in
view of admitted prior art, Thomas, or Bivens, Omure, and further in view of
Magid.
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Outcome of Decision:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 14–
18, 22, 35,
42–45, 55,
60, 61, 67
103(a) Inagaki, Omure 1–6, 14–18,
22, 35, 42–
45, 55, 60,
61, 67

10–13, 23–
34, 36–41,
46–54, 56–
59, 62–66,
68
103(a) Inagaki, Patentee’s
Admissions,
Thomas, Bivens,
Omure
10–13, 23–
34, 36–41,
46–54, 56–
59, 62–66,
68

7, 19 103(a) Inagaki, Omure,
Magid
7, 19
8, 9 103(a) Inagaki, Patentee’s
Admissions,
Thomas, Bivens,
Omure, Magid
8, 9
Overall
Outcome
1–19, 22–68

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.
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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
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:

HONEYWELL/FOX/BANNER
Patent Services
115 Tabor Road - PO Box 249
Morris Plains, NJ 07950

THIRD-PARTY REQUESTER:

RYAN KROMHOLZ & MANION, S.C.
PO Box 26618
Milwaukee, WI 53226

cdc