ARKEMA FRANCEDownload PDFPatent Trials and Appeals BoardNov 12, 202015297569 - (D) (P.T.A.B. Nov. 12, 2020) Copy Citation 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. 15/297,569 10/19/2016 Wissam RACHED 0078840-000204 5994 21839 7590 11/12/2020 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 EXAMINER HARDEE, JOHN R ART UNIT PAPER NUMBER 1761 NOTIFICATION DATE DELIVERY MODE 11/12/2020 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): ADIPDOC1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WISSAM RACHED and BEATRICE BOUSSAND ____________ Appeal 2020-001769 Application 15/297,569 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, GEORGE C. BEST, and JEFFREY R. SNAY, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 8, 12–14, 18, 19, 21–24, and 26–28 of Application 15/297,569. Final Act. (June 17, 2019). We have jurisdiction under 35 U.S.C. § 6. A telephonic hearing was held in this appeal on October 28, 2020. For the reasons set forth below, we affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Arkema France as the real party in interest. Appeal Br. 2. Appeal 2020-001769 Application 15/297,569 2 I. BACKGROUND The ’569 Application describes a composition that can be used as a refrigerant. Spec. 1. The composition comprises 2,3,3,3-tetrafluoropropene, trans-1,3,3,3-tetrafluoropropene and at least one lubricant. Id. The composition is said to have a lower Global Warming Potential than the hydrofluorocarbon refrigerant HC-134a, which is commonly used in motor vehicle air conditioning systems. Id. at 1–2. Claim 8 is representative of the ’569 Application’s claims and is reproduced below from the Appeal Brief’s Claims Appendix. 8. A composition comprising a lubricant comprising at least one polyol ester and a refrigerant comprising: from 1 to 25% by weight of 2,3,3,3-tetrafluoropropene (HFO-1234yf); and from 1 to 30% by weight of trans-1,3,3,3- tetrafluoropropene (trans-HFO-1234ze), wherein said composition exhibits a Hazen color of about 200 or less as measured by ASHRAE test 97-2007 after a sealed glass tube comprising the composition is welded closed and placed in an oven at 200° C for 14 days, and wherein the polyol ester is selected from the group consisting of a pentaerythritol ester and a polyol ester obtained from a linear or branched carboxylic acid containing from 2 to 15 carbon atoms. Appeal Br. Claims App. 1 (indentation added). Appeal 2020-001769 Application 15/297,569 3 II. REJECTIONS On appeal, the Examiner maintains2 the following rejections: 1. Claims 8, 12–14, 18, 19, 21–24, and 26–28 are rejected under 35 U.S.C. § 112, ¶ 1 as failing to comply with the written description requirement. Final Act. 2; Ans. 3. 2. Claims 8, 12–14, 18, 19, 21–24, and 26–28 are rejected under 35 U.S.C. § 103(a) as unpatentable over Shimomura.3 Final Act. 2; Ans. 4. III. DISCUSSION A. Rejection of claims 8, 12–14, 18, 19, 21–24, and 26–28 as lacking written description support The Examiner rejected the claims on appeal for lack of written description support, finding that the claim limitations reciting the amounts of HFO-1234yf and trans-HFO-1234ze in the refrigerant lack support in the Specification. Ans. 3. Appellant argues for reversal of this rejection with respect to claims 8, 18, and 19. Appeal Br. 5–8. These are the claims which contain limitations reciting specific amounts of HFO-1234yf and trans-HFO-1234ze. Appellant’s arguments are presented with the most detail with respect to claim 8. Id. Thus, we begin by discussing that claim before turning to the remaining claims on appeal. 2 The Examiner has withdrawn the rejection of claims 8, 12–14, 18, 19, 21– 24, and 26–28 as indefinite under 35 U.S.C. § 112, ¶ 2. Ans. 5. 3 US 2010/0038583 A1, published February 18, 2010. Appeal 2020-001769 Application 15/297,569 4 1. Claim 8 First, Appellant argues that the Examiner has not met his burden of explaining why claim 8 is not supported by the written description. Appeal Br. 5–6. The Examiner originally explained the basis for this rejection as follows: Applicant has claimed a refrigerant comprising 1–30% by weight of each of 1234yf and trans-1234ze. The Examiner has not found basis for this in the specification. In addition, there is no disclosure of what the other 40–98% of the refrigerant can be. It can’t be the lubricant, as that is part of the recited composition which comprises the refrigerant. What is the other 40–98% of the refrigerant? Non-Final Act. 3 (February 11, 2019) (incorporated by reference, Final Act. 2). We agree with Appellant that the statement falls short of meeting “‘the initial burden of presenting by a preponderance of evidence why a person skilled in the art would not recognize in an applicant’s disclosure a description of the invention defined by the claims.’” Appeal Br. 5 (quoting MPEP § 2163.04). The Examiner’s Answer, however, contains a much more detailed explanation of the basis for the rejection, albeit in the form of a response to Appellant’s argument that the claims are adequately supported by the written description. See Ans. 6–7. Appellant’s Reply Brief addresses this explanation. Reply Br. 3–4. In view of the foregoing, we determine that the Examiner ultimately set forth an adequate explanation of the basis for the written description rejection and that Appellant had an adequate opportunity to respond to the Examiner’s finding. We, therefore, discern no reversible error in the Appeal 2020-001769 Application 15/297,569 5 Examiner’s initial failure to present by a preponderance of evidence why a person of ordinary skill in the art would not recognize a description of the claimed invention in the ’569 Application’s Specification. Second, Appellant argues that claim 8 is adequately supported by the original disclosure. Appeal Br. 6–8. In particular, Appellant argues that the Examiner failed to take into account which ranges a person having ordinary skill in the art would have considered inherently supported by the ’569 Application’s original disclosure. Id. at 6 (citing MPEP § 2163.05 (III); In re Wertheim, 541 F.2d 257 (CCPA 1976)). In making this argument, Appellant argues that all four of the end points of the ranges recited in claim 8 are specifically described in the Specification. Id. at 6–8 (citing Spec. 3, 10, 11). Appellant urges that “[t]he currently recited claim percentages are at least analogous to the written description supported ranges in In re Wertheim.” Id. at 7. The written description requirement is met when an application’s disclosure reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Although the written description as originally filed does not have to provide in haec verba support for the claimed subject matter, see Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir. 1996), one skilled in the art, reading the original disclosure, must immediately discern the limitation at issue in the claims, Waldemar Link GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 558 (Fed. Cir. 1994). Compliance with the written description requirement is a question of fact. Ariad Pharm., 598 F.3d at 1351. Appeal 2020-001769 Application 15/297,569 6 In this case, we are not persuaded that the ’569 Application’s originally filed Specification provides written description support for the subject matter of claim 8. Claim 8 recites that the refrigerant portion of the claimed composition comprises “from 1 to 25% by weight” HFO-1234yf. The Specification describes the refrigerant as comprising from 1 to 99% by weight HFO- 1234yf, with preferred embodiments comprising 5 to 70% by weight and 25 to 55% by weight HFO-1234yf. Spec. 3. The Specification also describes examples in which the refrigerant comprises 5%, 15%, 25%, 35%, 45%, 55%, and 65% by weight HFO-1234yf. Id. at 10–11. According to Appellant, the lower end of the claimed range is supported by the description of the refrigerant as comprising from 1 to 99% by weight HFO-1234yf. Appeal Br. 7. Appellant asserts that the example comprising 25 weight percent HFO-1234yf describes the upper end of the recited range. Id. Similarly, claim 8 recites that the refrigerant portion of the claimed composition comprises “from 1 to 30% by weight” trans-HFO-1234ze. The Specification describes the refrigerant as comprising from 1 to 99% by weight trans-HFO-1234ze, with preferred embodiments comprising 30 to 95% and 45 to 75% by weight trans-HFO-1234ze. Spec. 3. The Specification also describes examples in which the refrigerant comprises 35%, 45%, 55%, 65%, 75%, 85%, and 95% by weight trans-HFO-1234ze. Id. at 10–11. According to Appellant, the lower end of the claimed range is supported by the description of the refrigerant as comprising from 1 to 99% by weight trans-HFO-1234ze. Appeal Br. 8. Appellant asserts that the upper Appeal 2020-001769 Application 15/297,569 7 end of the range is described by the disclosure of a preferred embodiment comprising from 30 to 95% by weight trans-HFO-1234ze. Id. We are not persuaded that the Examiner reversibly erred by finding that the ’569 Application’s Specification does not provide written description support for claim 8 as currently written. Appellant correctly states that each of the numbers defining the end points of the claimed ranges for HFO-1234yf and trans-HFO-1234ze appear in the Specification. This, however, is not sufficient. In particular, we determine that the Examiner did not reversibly err by finding that the Specification does not contain written descriptive support for the maximum amounts of HFO-1234yf and trans-HFO-1234ze recited in claim 8. As the Examiner explains, one preferred embodiment discussed in the Specification has 25% as the minimum amount of HFO-1234yf. See Ans. 6 (discussing Spec. 3). A different preferred embodiment comprises a minimum of 30% by weight trans-HFO-1234ze. Id. These disclosures are insufficient to support claim reciting ranges in which 25% by weight HFO- 1234yf and 30% by weight trans-HFO-1234ze are the maximum amounts of these compounds. As the Examiner explained, “[t]he mere appearance of these numbers in the specification, shorn of their context, does not provide adequate support for the ranges claimed.” Id. Similarly, the tables on pages 10 and 11 of the Specification do not provide support for the claimed ranges. The compositions described in these tables consist of mixtures of HFO-1234yf and trans-HFO-1234ze in ratios ranging from 5:95 to 65:35. Spec. 10. There is no specific example comprising 30% by weight trans-HFO-1234ze. Id. While there is an example comprising 25% HFO-1234yf and 75% trans-HFO-1234ze, it is one of seven such examples and there is no indication that Appellant at the time of the Appeal 2020-001769 Application 15/297,569 8 application regarded 25% HFO-1234yf as a maximum amount present in an embodiment of the invention described in the Specification. As the Federal Circuit’s predecessor court explained, [i]t is an old custom in the woods to mark trails by making blaze marks on the trees. It is [of] no help in finding a trail or in finding one’s way through the woods where the trails have disappeared—or have not yet been made, which is more like the case here—to be confronted simply by a large number of unmarked trees. . . . We are looking for blaze marks which single out particular trees. We see none. In re Ruschig, 379 F.2d 990, 994–95 (CCPA 1967). The Federal Circuit later explained that, [a]s Ruschig makes clear, one cannot disclose a forest in the original application, and then later pick a tree out of the forest and say here is my invention. In order to satisfy the written description requirement, the blaze marks directing the skilled artisan to that tree must be in the originally filed disclosure. Purdue Pharma L.P. v. Faulding Inc., 230 F.2d 1320, 1326–27 (Fed. Cir. 2000). Nor are we persuaded that this situation is closely analogous to the ranges found to be supported by the written description in Wertheim. See Appeal Br. 7. In Wertheim, the Federal Circuit’s predecessor determined that, in view of the description of the invention as employing solids contents within the range of 25-60% along with specific embodiments of 36% and 50%, we are of the opinion that, as a factual matter, persons skilled in the art would consider processes employing a 35-60% solids content range to be part of appellants’ invention and would be led by the Swiss disclosure so to conclude. 541 F.2d at 265. Appeal 2020-001769 Application 15/297,569 9 Thus, in Wertheim, the disclosed example with the lowest amount of solids contents was close to the lower end of point of the range found to be supported by the written description. Rather, we are of the opinion that this case is more closely analogous to the Federal Circuit’s more recent decision in General Hospital Corp. In that case, the Federal Circuit held that the disclosure of a range of values that overlapped with the claimed range of values did not support the claimed range. Gen. Hosp. Corp. v. Sienna Biopharms., Inc., 888 F.3d 1368, 1372– 73 (Fed. Cir. 2018); see also Eiselstein v. Frank, 52 F.3d 1035, 1040 (Fed. Cir. 1995) (holding that a range of “about 45–55%[] is not the same as a very different 10% range, viz., 50–60%”). As the Federal Circuit explained, [t]he disclosure of a broad range of values does not by itself provide written description support for a particular value within that range. Instead, where a specification discloses a broad range of values and a value within that range is claimed, the disclosure must allow one skilled in the art to immediately discern the limitation at issue in the claims. Gen. Hosp. Corp., 888 F.3d at 1372 (internal quotation omitted). For the reasons set forth above we affirm the rejection of claim 8 as lacking written description support. 2. Claims 18 and 19 Claims 18 and 19 depend from claim 8 and recite narrower ranges for the amount of HFO-1234yf present in the refrigerant portion of the claimed composition. Compare claim 8 (1–25% by weight HFO-1234yf) with claim 18 (5–25% by weight HFO-1234yf), claim 19 (15–25% by weight HFO- 1234yf). With respect to these claims, Appellant argues that “[t]he narrower ranges recited in claims 18 and 19 are also supported, for at least the same Appeal 2020-001769 Application 15/297,569 10 reasons [as the ranges recited in claim 8], by the disclosures in the application as filed at p. 3, ll. 15-26 and pp. 10, 11.” Appeal Br. 8. We are not persuaded that the Examiner reversibly erred by finding these claims unsupported by the written description for essentially the same reasons we have discussed above. Thus we also affirm the rejection of claims 18 and 19. 3. Claims 12–14, 21–24, and 26–28 These claims depend from claim 8. Furthermore, claims 21–24, 27, and 28 also depend from either claim 18 or claim 19. Because we affirmed the rejection of claims 8, 18, and 19 as lacking written description support, we also affirm the rejection of dependent claims 12–14, 21–24, and 26–28. B. Rejection of claims 8, 12–14, 18, 19, 21–24, and 26–28 as obvious over Shimomura The Examiner rejected the claims on appeal as unpatentable over Shimomura. Ans. 4–5. Appellant presents specific arguments for reversal of the rejection of claim 8—the sole independent claim on appeal. Appeal Br. 10–16. We, therefore, begin by addressing claim 8. 1. Claim 8 The Examiner found that Shimomura describes a composition comprising a polyol ester and a refrigerant. Ans. 4. Shimomura’s refrigerant is described as comprising one or more fluoropropenes and a saturated hydrofluorocarbon. Id. (citing Shimomura ¶ 14). HFO-1234yf and HFO- 1234ze are identified as particularly preferred components of the refrigerant. Id. (citing Shimomura ¶ 67). Shimomura does not describe whether one isomer of HFO-1234ze is preferred relative to the other. The Examiner Appeal 2020-001769 Application 15/297,569 11 further found that Shimomura teaches that its polyol ester can be the pentaerythritol ester of a C5-C9 fatty acid. Id. (citing Shimomura ¶ 29). The Examiner also found that a person having ordinary skill in the art would have arrived at the claimed weight percentage ranges of HFO-1234yf and trans-HFO-1234ze through routine experimentation. Id. First, Appellant argues that Shimomura “does not teach or suggest the subject matter disclosed in claim 8.” Appeal Br. 11. In particular, Appellant argues that Shimomura does not teach or suggest the Hazen color of the claimed composition. Id. This argument is not persuasive. The claimed Hazen color reflects the composition’s thermal stability, which is a property of the composition. Appeal Br. 13 (“Thermal stability is being defined in the claims using the recited Hazen color.”). As discussed above, the Examiner correctly found that Shimomura suggests a composition comprising each of the compounds recited in claim 8. As the Examiner further found, a person having ordinary skill in the art at the time of the invention would have arrived at the specific formulation recited in claim 8 through routine optimization. The formulation arrived at through this routine optimization would have the recited Hazen color. Cf. In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing.”). Second, Appellant argues that it has presented sufficient evidence of unexpected results to overcome any prima facie case of obviousness. Appeal Br. 12–16. In particular, Appellant relies upon evidence of unexpected thermal stability presented by way of inventor declarations. Id. at 13–15. This argument is not persuasive because none of the tested compositions fall within the scope of claim 8. Thus, the data presented by Appeal 2020-001769 Application 15/297,569 12 Appellant is not commensurate in scope with the claimed range and cannot establish the existence of unexpected results. See In re Peterson, 315 F.3d 1325, 1330–31 (Fed. Cir. 2003) (“[T]he applicant’s showing of unexpected results must be commensurate in scope with the claimed range.”). For the reasons set forth above, we affirm the rejection of claim 8 as obvious over Shimomura. 2. Claims 12–14, 18, 19, 21–24, and 26–28 Claims 12–14, 18, 19, 21–24, and 26–28 depend from claim 8. Appellant does not present separate arguments for the patentability of these claims. See Appeal Br. 10–16. As discussed above, we have affirmed the obviousness rejection of claim 8. Thus, we also affirm the obviousness rejection of claims 12–14, 18, 19, 21–24, and 26–28. IV. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 8, 12–14, 18, 19, 21–24, 26–28 112, first paragraph Written Description 8, 12–14, 18, 19, 21–24, 26–28 8, 12–14, 18, 19, 21–24, 26–28 103(a) Shimomura 8, 12–14, 18, 19, 21–24, 26–28 Overall Outcome 8, 12–14, 18, 19, 21–24, 26–28 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Copy with citationCopy as parenthetical citation