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 2231371450
`www.uspto.gov
`
`14/668,974
`
`03/25/2015
`
`Susumu KOBAYASHI
`
`095306-0013
`
`4302
`
`02/15/2019
`759°
`20277
`MCDERMOTT WILL & EMERY LLP
`
`The MeDermott Building
`500 North Capitol Street, NW.
`WASHINGTON Dc 20001
`
`TANENBAUM' TZVI SAMUEL
`
`3763
`
`PAPERNUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/15/2019
`
`ELECTRONIC
`
`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.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`
`following e—mail address(es):
`
`ipdoeketmwe @ mwe. com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`PO. Box 1450
`Alexandria, VA 22313-1450
`www,uspto,gov
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Application Number: 14/668,974
`
`Filing Date: 25 Mar 2015
`
`Appellant(s): KOBAYASHI et a1.
`
`Takashi Saito
`
`For Appellant
`
`EXAMINER’S ANSWER
`
`This is in response to the appeal brief filed 12/17/2018.
`
`

`

`Application/Control Number: 14/668,974
`Art Unit: 3763
`
`Page 3
`
`(1) Grounds of Rejection to be Reviewed on Appeal
`
`Every ground of rejection set forth in the Office action dated 7/23/2018 from which the appeal
`
`is taken is being maintained by the examiner except for the grounds of rejection (if any) listed under the
`
`subheading ”WITHDRAWN REJECTIONS.” New grounds of rejection (if any) are provided under the
`
`subheading ”NEW GROUNDS OF REJECTION.”
`
`WITHDRAWN REJECTIONS
`
`The following grounds of rejection are not presented for review on appeal because they have
`
`been withdrawn by the examiner. The alternative rejection of claim 1 under pre-AIA 35 USC 103(a) as
`
`being unpatentable over Takasugi (US 2004/0118145) as evidenced by van Wijngaarden (US
`
`2008/0184735) in view of Takemasa (US 5351499) has been withdrawn (see pars. 21-31 of the Office
`
`action dated 7/23/2018).
`
`(2) Response to Argument
`
`|. Appellant argues on page 4 of the Brief that in the Advisory Action the Examiner erroneously
`
`asserted that claim 1 contains new matter, claim 1 was interpreted such that the amount of the oil
`
`return agent (e.g. n-pentane) is contained in an amount with respect to the refrigerant. However, the
`
`specification supports that the oil return agent is contained in a specific amount with respect to the
`
`ethane; thus the Examiner’s rejection based on the erroneous interpretation to the specification has no
`
`merit.
`
`However, the Advisory Action of 10/02/2018 does not assert that claim 1 contains new matter.
`
`Indeed, claim 1 has been interpreted such that the amount of the oil return agent is contained in a
`
`specific amount with respect to the ethane (e.g. the hydrocarbon of the refrigerant; see pars. 13-16 of
`
`the Office action dated 7/23/2018).
`
`Appellant further argues on page 4 of the Brief that Yuzawa does not disclose the claimed
`
`feature of claim 1 (e.g. the oil return agent contained in an amount from 0.1 to 14 mass% with respect
`
`

`

`Application/Control Number: 14/668,974
`Art Unit: 3763
`
`Page 4
`
`to the ethane in the refrigerant in the low temperature refrigeration cycle). Yuzawa at most discloses
`
`that the oil return agent (e.g. n-pentane) is contained at 0.1-12 wt% with respect to a fluorocarbon
`
`based refrigerant; Yuzawa does not teach the amount of the oil return agent with respect to the ethane.
`
`Similarly, Appellant argues on page 8 of the Brief that the working fluids disclosed by Yuzawa is
`
`mixed while the present subject matter uses a single refrigerant. Accordingly, one of ordinary skill in the
`
`art would not have been motivated to look to Yuzawa which discloses a mixed working fluid, to
`
`determine an appropriate amount of oil return agent with respect to a single working fluid.
`
`In response to Appellant’s argument on page 4 of the Brief that Yuzawa does not disclose the
`
`claimed feature of claim 1 (e.g. the oil return agent contained in an amount from 0.1 to 14 mass% with
`
`respect to the ethane in the refrigerant in the low temperature refrigeration cycle), it is admitted that
`
`Yuzawa does not specifically teach the amount of the oil return agent with respect to ethane. However,
`
`Yuzawa, like Takasugi, is directed to an ultralow refrigeration circuit that produces an ultralow
`
`temperature of -80 degrees Celsius or lower in an evaporator (see Takasugi pars. 40, 64; Yuzawa col 1
`
`lines 8-11, col 3 lines 53-57). Similarly, in response to Appellant’s argument on page 8 of the Brief that
`
`the working fluids disclosed by Yuzawa is mixed while the present subject matter uses a single
`
`refrigerant, the working fluid of the refrigerant compositions of both Yuzawa and Takasugi both include
`
`known materials with boiling points of -80 degrees Celsius or lower (see par. 9 of the Office action dated
`
`7/23/2018, Yuzawa col 2 lines 58-59, col 4 lines 23-26). Accordingly, one of ordinary skill in the art would
`
`recognize that the device of Yuzawa is comparable to the device of Yuzawa. Just as the device of Yuzawa
`
`was improved by adding an oil return agent in an amount of 0.1 to 12 wt% with respect to some working
`
`fluid of a refrigerant composition (e.g. a fluorocarbon based composition) for an ultralow refrigeration
`
`circuit (see par. 15 of the Office action dated 7/23/2018; Yuzawa col 4 lines 20-22) one of ordinary skill
`
`in the art would recognize that the device of Takasugi would likewise likely be improved by adding an oil
`
`

`

`Application/Control Number: 14/668,974
`Art Unit: 3763
`
`Page 5
`
`return agent in an amount of 0.1 to 14 mass% with respect to a different working fluid of a refrigerant
`
`composition (e.g. ethane) for an ultralow refrigeration circuit.
`
`Further, there is no suggestion in the prior art, and even Appellant has not argued, that the oil
`
`return agent of Yuzawa would not improve the recovery of oil in a refrigerant including a hydrocarbon
`
`consisting of ethane, or would not be met with a reasonable expectation of success. To the contrary,
`
`Yuzawa suggests that the addition of an oil return agent into a composition of an ultralow refrigeration
`
`circuit would likely improve the recovery of oil (see Yuzawa col 4 lines 20-22); the likely results, with a
`
`reasonable expectation of success, of applying the teachings of Yuzawa to the prior art device of
`
`Takasugi would therefore have been predictable to one of ordinary skill in the art as Yuzawa specifically
`
`teaches that the use of an oil return agent further improves recovery of oil (see par. 16 of the Office
`
`action dated 7/32/2018; Yuzawa col 4, lines 20-22).
`
`Appellant further argues on page 4 of the Brief that there is no motivation or suggestion to
`
`arrive at the claimed configuration based on the disclosures of the cited reference without referring to
`
`the present application.
`
`However, Yuzawa teaches that the addition of an oil return agent in some amount with respect
`
`to a working fluid of a refrigerant composition further improves the recovery of oil (see par. 15 of the
`
`Office action dated 7/23/2018; see also Yuzawa col 4, lines 20-22). Accordingly, Yuzawa provides a
`
`motivation or suggestion (e.g. improve the recovery of oil) to modify Takasugi and thereby arrive at the
`
`claimed configuration. Therefore, there is a motivation or suggestion to arrive at the claimed
`
`configuration based on the disclosures of the cited reference (e.g. Takasugi in view of Yuzawa) without
`
`referring to the present application.
`
`Appellant argues on page 5 of the Brief that none of the cited references disclose or suggest that
`
`the hydrocarbon having a boiling point of -80 degrees Celsius or lower consists of ethane. Takasugi
`
`discloses the use of mixtures of various hydrocarbons; Takasugi fails to disclose a single use of ethane.
`
`

`

`Application/Control Number: 14/668,974
`Art Unit: 3763
`
`Page 6
`
`Appellant refers to par. 47 Takasugi and argues that Takasugi fails to disclose that the hydrocarbon
`
`consists of ethane; Takasugi discloses that R508 (a mixed working fluid not consisting of ethane) is
`
`sealed in a low-temperature side refrigerant circuit L (see Takasugi par. 55).
`
`However, the most natural reading of par. 47 of Takasugi is that Takasugi teaches that the
`
`working fluid which fills the low-temperature side refrigerant circuit is:
`
`a.
`
`b.
`
`c.
`
`d.
`
`R744A; (or)
`
`R170 (ethane); (or)
`
`A mixed working fluid of R740, R50, R14, and R23; or
`
`the like
`
`as Takasugi only uses the word ”mixed” after R170 (ethane) is suggested. Using ”mixed” only after the
`
`suggestion to use R170 (ethane) shows that R170 (ethane) is to be excluded from any type of working
`
`fluid mixture. Accordingly, one of ordinary skill in the art reading Takasugi would understand that as
`
`R170 (ethane) is to be excluded from any type of working fluid mixture and therefore the working fluid
`
`which fills the low-temperature side refrigerant circuit is to consist of ethane. Appellant further refers to
`
`par. 55, but said paragraph further bolsters that Takasugi teaches that only refrigerants listed after the
`
`word ”mixed” are to comprise a blend (see par. 55 wherein R508A is defined as a mixed refrigerant of
`
`R23 and R116; R23 and R116 are listed after the word ”mixed”). Although a different working fluid may
`
`be suggested in par. 55, Takasugi nonetheless teaches in par. 47 that the working fluid which fills the
`
`low-temperature side refrigerant circuit can consist of ethane.
`
`Appellant further argues on pages 6-7 of the Brief that there is no motivation or suggestion to
`
`combine the cited references to arrive at the subject matter of claim 2; in Yuzawa it appears that an oil
`
`separator is an essential or important element for a low temperature refrigeration cycle. Although
`
`Yuzawa does not mention an oil separator, one of ordinary skill in the art would readily understand that
`
`when alkylbenzene is used as an oil together with the refrigerant disclosed by Yuzawa, a compatibly
`
`

`

`Application/Control Number: 14/668,974
`Art Unit: 3763
`
`Page 7
`
`problem between the refrigerant and oil occurs and an oil separator would be necessary. Accordingly,
`
`Takasugi in view of Yuzawa would likely motivate one of ordinary skill in the art to use an oil separator
`
`to solve the compatibly problem expected from Yuzawa.
`
`However, as Appellant admits on page 7 of the Brief, Yuzawa does not mention an oil separator.
`
`Indeed, Yuzawa impliedly teaches that no oil separator is necessary (See Yuzawa col 4, lines 4-6).
`
`Further, Appellant asserts that when alkylbenzene is used as an oil together with the refrigerant
`
`disclosed by Yuzawa (emphasis added), a compatibly problem between the refrigerant and oil occurs
`
`and an oil separator would be necessary; however, claim 1 is rejected as being unpatentable over the
`
`refrigerant disclosed by Takasugi (emphasis added) as modified by Yuzawa to comprise an oil return
`
`agent. Further, it is known in the art that a refrigerant comprising an oil return agent (e.g. n-pentane) is
`
`capable of dissolving in a refrigerator oil comprising alkylbenzene, and this property may allow the
`
`refrigerant to transport such a lubricant around a heat transfer device and return it to the compressor
`
`(see the advisory Office action mailed 10/02/2018; see also Morrison [US 6214252] col 2, lines 37-46).
`
`Accordingly, there is no alleged compatibility problem between the oil and return agent of Takasugi as
`
`modified by Yuzawa. More specifically, one of ordinary skill in the art would not be motivated to use an
`
`oil separator to solve the alleged compatibility problem expected from Yuzawa as n-pentane is capable
`
`of dissolving in an oil comprising alkylbenzene.
`
`For the above reasons, it is believed that the rejections should be sustained.
`
`Respectfully submitted,
`
`/S.T./
`Examiner, Art Unit 3763
`
`Conferees:
`
`/FRANTZ F JULES/
`
`Supervisory Patent Examiner, Art Unit 3763
`
`/Michael Hayes/
`TQAS, TC 3700
`
`

`

`Application/Control Number: 14/668,974
`Art Unit: 3763
`
`Page 8
`
`Requirement to pay appeal forwarding fee.
`
`In order to avoid dismissal of the instant appeal in any
`
`application or ex parte reexamination proceeding, 37 CFR 41.45 requires payment of an appeal
`
`forwarding fee within the time permitted by 37 CFR 41.45(a), unless appellant had timely paid the fee
`
`for filing a brief required by 37 CFR 41.20(b) in effect on March 18, 2013.
`
`