ARKEMA FRANCE

Patent Trials and Appeals Board

Nov 12, 2020

15297569 - (D) (P.T.A.B. Nov. 12, 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.
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.
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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).
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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.
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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
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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.
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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
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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
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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.
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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
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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
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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
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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