Ex Parte 8,033,120 et al

Patent Trial and Appeal Board

Mar 21, 2019

95001783 (P.T.A.B. Mar. 21, 2019)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,783 11/08/2011 8,033,120 9404.21592-REX 8580
116637 7590 03/21/2019
HONEYWELL/FOX/BANNER
Patent Services
115 Tabor Road - PO Box 377
MORRIS PLAINS, NJ 07950
EXAMINER
XU, LING X
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
03/21/2019 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 2017-011438
Reexamination Control 95/001,783
Patent US 8,033,120 B21
Technology Center 3900
____________

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

ROBERTSON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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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On January 31, 2018, Patent Owner, Honeywell International Inc.
(“Patent Owner”), requested rehearing under 37 C.F.R. § 41.79(a)(4)
(“Request”) of our Final Decision on Appeal under 37 C.F.R. § 41.77(f)
mailed January 2, 2018 (“41.77(f) Decision”). On February 28, 2018, Third
Party Requester Mexichem Amanco Holdings S.A. de C.V. (“Requester”)
provided Comments under 37 C.F.R. § 41.79(c) (“Comments”) in opposition
to Patent Owner’s Request. We first consider Patent Owner’s points with
respect to the Request, and then reconsider the Appeal in view of Honeywell
Int’l Inc. v. Mexichem Amanco Holding S.A. DE C.V., 865 F.3d 1348 (Fed.
Cir. 2017), an appeal to the Federal Circuit from a Board Decision in related
merged reexaminations 95/002,189 and 95/002,204 of U.S. Patent
7,534,366. As a result, we enter NEW GROUNDS OF REJECTION under
37 C.F.R. § 41.77(b) as further detailed below.
Patent Owner contends that the following points were
misapprehended or overlooked:
1. The Board erroneously interpreted the disclosure of Inagaki
without considering when Inagaki was published, and ascribed
meaning to the disclosure of Inagaki based upon how a person of
ordinary skill in the art would use those terms ten years later;
2. The Board improperly used Honeywell’s own disclosure and
declaratory evidence as proof of a reasonable expectation of
success;
3. The Board ignored the clear evidence in the record that a person of
ordinary skill in the art would have expected a difference in
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operability between the temperature of “about 150 °F” recited in
the claims and the disclosure in Inagaki of 140 °F; and
4. The Board ignored the doctrine of claim differentiation in
interpreting “consisting essentially of” as “comprising.”
Request 2.

Point 1
Patent Owner argues that the Board erred because there is no evidence
that PAG and POE, while taught by Bivens to be known lubricants at the
time of the invention, were understood to be “cooling machine oils” as
described in Inagaki, at the time of Inagaki. (Request 3–4, citing Decision
on Appeal mailed March 30, 2016 (“First Decision”), p. 14.) Patent Owner
argues that “there is no evidence in the record about how a person of skill in
the art at the time of the invention would interpret the phrase ‘cooling
machine oils,’ as used in a ten year old foreign reference.” (Id. at 4.)
Initially, we disagree with Patent Owner that the relevant issue is how
the skilled artisan would have understood the scope of the term “cooling
machine oils” at the time of Inagaki. None of the case law cited by Patent
Owner supports such a legal interpretation. To the contrary, the case law is
clear that the relevant inquiry in an obvious determination is what a skilled
artisan would have understood from the prior art as a whole at the time of the
invention. See 35 U.S.C. § 103(a)(pre-AIA) (“A patent may not be obtained
though the invention is not identically disclosed or described as set forth in
section 102, if the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole would
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have been obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”) (emphasis
added); Bristol-Myers Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967,
974 (Fed. Cir. 2014) (finding obviousness when “at the time of entecavir’s
invention, the Price reference showed that 2′–CDG was generally
understood to be safe and nontoxic, and other researchers were already using
it as a lead compound” despite the fact that it was later discovered to be
toxic), reh’g denied and en banc reh’g denied, Bristol-Myers Squibb Co. v.
Teva Pharms. USA, Inc., 769 F.3d 1339, 1341 (Fed. Cir. 2014) (“[T]he
pertinent knowledge is that possessed at the time of the invention.”) (J. Dyk,
concurring).
The First Decision finds and discusses, with citation to evidence, that
PAG and POE were known to be cooling machine oils at the time of the
invention. (First Decision 14–15; see 41.77(f) Decision 20–21.) By
improperly focusing only on the Decision’s discussion of Inagaki, Patent
Owner has not shown that the Decision misapprehended or overlooked that
PAG and POE were considered as conventional cooling machine oils at the
time of the invention. In addition, Patent Owner does not dispute that the
skilled artisan would have recognized PAG and POE as lubricants, in
refrigerant and cooling applications, at the time of the invention, as taught
by Bivens. (See Request 3; First Decision 14–15.) The teaching in Inagaki
to use HFO-1234yf ((F3C)(F)C=CH2) with “cooling machine oils” (Inagaki
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2) and/or “lubricants” (Inagaki 3)2 would have suggested the skilled artisan
use HFO-1234yf with known “cooling machine oils” or “lubricants” at the
time of the invention, including those discovered and conventionally used as
lubricants with refrigerants after the publication of Inagaki. Patent Owner
has not distinguished any of the terminology of Inagaki from what the
skilled artisan would have understood as the refrigeration lubricant art as a
whole at the time of the invention.

Point 2
Claims 1 and 14 recite “said lubricant and said refrigerant have one
liquid phase at at least one temperature between about -50°C and +70°C
measured at 5% by weight of lubricant based on the weight of the refrigerant
and lubricant.” We emphasize the scope of the claims, which require only
that one liquid phase be present at one temperature in a wide temperature
range of -50°C to +70°C measured with only 5% by weight of lubricant
based on the weight of the refrigerant and lubricant.
Patent Owner contends that the Board “improperly used Honeywell’s
own disclosure and declaratory evidence as proof of reasonable expectation
of success.” (Request 4–5.) Patent Owner purports to provide a quotation
from the First Decision (Request 4):
The Board found that “[b]ecause the preponderance of the
evidence shows HFO-1234yf and HFO-1234ze are miscible
with PAG and POE over the entire range of temperatures
recited in claim 1 (Singh Decl. ¶ 31), such compositions

2 The alternative English translation of record, see Singh Decl., Exhibit D,
executed April 30, 2012, uses the terms “refrigeration oils” and “lubricating
oils” (id. at 6) for these two terms, respectively.
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suggested by Inagaki inherently and necessarily meet the
requirements of claim l.” [Decision at 15.]

However, the First Decision reads (p. 15):
Patent Owner introduced evidence that PAG and POE
were miscible at every tested parameter (regardless of tested
HFO, weight percentage, or temperature). Singh Decl. ¶ 31;
’120 patent, col. 12, ll. 23–32. Because the preponderance of
the evidence shows HFO-1234yf and HFO-1234ze are miscible
with PAG and POE over the entire range of temperatures
recited in claim 1, at least one composition suggested by
Inagaki inherently and necessarily meets the requirements of
claim 1.

Patent Owner contends that the Board improperly used inherency to
evaluate miscibility as an unexpected result. (Request 5–6.)
We are mindful that in Honeywell, the Federal Circuit determined that
the Board’s obviousness analysis was flawed in that the Board committed
legal error by improperly relying on inherency in obviousness and in its
analysis of motivation to combine the references, specifically with respect to
the properties of miscibility and stability, which were properties of the
purportedly obvious combination and not merely properties of HFO-1234yf,
one of the refrigerants encompassed by Formula II in independent claims 1
and 14. Honeywell, 865 F.3d at 1354.
In the First Decision, we also discussed Patent Owner’s evidence that
miscibility is unpredictable, and found such evidence to be unpersuasive in
view of the prior art of record and disclosure therein that PAG and POE
were used as replacement lubricants with certain saturated HFC compounds
that were known to be immiscible with mineral oil or alkylbenzene. (First
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Decision 32–33, discussing Singh Decl. ¶ 31; and citing, e.g., Thomas, col.
1, ll. 33–37 and 62–64; Bivens, col. 1, ll. 36–42; Magid, col. 4, 1. 26 to col.
5, 1. 41; Mahler, col. 1, ll. 39–45.)
In this regard, Magid and Bivens support a finding that, generally,
PAG and POE were used as replacement lubricants with certain relatively
polar saturated HFC compounds (e.g., R134a, F3C-CH2F) that were known
to be immiscible with relatively nonpolar mineral oil or alkylbenzene. (See
Bivens, col. 1, ll. 36–42; Magid, col. 4, l. 26 to col. 5, l. 41; see also Mahler,
col. 1, ll. 39–45.) According to Mahler, conventional lubricants (mineral oil
and alkylbenzene) are non-polar while hydrofluorocarbon refrigerants are
generally polar. (Mahler, col. 2, ll. 7–17.) Thus, the art recognized that, for
refrigerant compounds that were generally polar, and therefore not miscible
in non-polar lubricants, such as mineral oil and alkylbenzene, alternative
polar lubricants were available in the art, namely PAG and POE.
Accordingly, the skilled artisan would have had a reasonable expectation
that Inagaki’s HFO-1234yf would have been miscible with PAG and POE,
particularly in light of Inagaki’s teaching of general compatibility with
lubricants. In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988) (“For
obviousness under § 103, all that is required is a reasonable expectation of
success.”) (citations omitted).
In addition, in the 41.77(f) Decision, we observed that Omure3
provided evidence that the combination of an unsaturated HFO compound
and PAG had “‘superior intersolubility.’” (41.77(f) Decision 20–21, Omure,

3 JP H05-85970, published April 6, 1993, naming Omure, et al. as inventors
(“Omure”).
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¶ 14.) We also pointed out that the ’120 Patent itself does not describe any
particular criticality to the use of PAG lubricant with HFO refrigerants.
(41.77(f) Decision 21, citing ’120 Patent col. 6, ll. 13–17, col. 11, l. 66 – col.
12, l. 4.) The ’120 Patent also does not attribute any particular unexpected
or surprising result to producing miscible combinations of PAG with the
HFO refrigerants described therein.
The Singh Declaration discusses that prior art knowledge with respect
to one saturated fluorinated hydrocarbon(HFC) does not provide a basis for
reliably predicting miscibility with other saturated fluorinated hydrocarbons
or unsaturated fluorinated hydrocarbons (HFOs). (See, e.g., Singh Decl.
¶¶ 27–31, 44–47.) However, such a concern is not supported by the prior art
or even the ’120 Patent itself, given the lack of discussion of a miscibility
concern in Inagaki, Bivens, Magid, and Mahler with combining HFOs with
lubricants as discussed above.
Patent Owner presents evidence indicating that, because of the
carbon-carbon double bond, HFOs would not have been expected to be
miscible relative to saturated HFCs. (See, e.g., Singh Decl. ¶¶ 27–31, 44–
47.) That evidence does not, however, sufficiently show that expectations
regarding miscibility would have been affected.
We are therefore not persuaded that the miscibility requirement of
claims 1 and 14 would have been unexpected considering the evidence of
record as a whole.

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Point 3
Patent Owner contends also that we misapprehended or overlooked
that the operability at a temperature of about 150°F is not the operability of
the refrigerant alone, but the ability of the refrigerant to remain stable in
combination with the lubricant in the system. (Request 6–7.) Patent Owner
contends that even if the Board considered the combination of refrigerant
with lubricant, the evidence of record does not support the Board’s finding
because Inagaki does not identify the use of a lubricant in Embodiment 2
(HFO-1234ze) and Embodiment 5 (HFO-1234yf). (Request 7.) Patent
Owner argues that the Board overlooks evidence of record that
Embodiments 2 and 5 of Inagaki are not disclosures of an automobile air
conditioning system and evidence that it would not be possible to conclude
from Inagaki that the refrigerants disclosed therein would be operable at
150°F. (Id.) Patent Owner argues that the Board overlooked evidence
pertaining to the difference in operability at higher temperatures due to an
expected increase in rate of reaction. (Request 7–8.) Patent Owner argues
that the Board overlooked evidence that demonstrates that the combination
of HFO-1234yf and PAG would have been expected to be unstable and not
usable in automobile air-conditioning systems due to the high temperatures
encountered in such systems. (Request 8–10.)
Contrary to Patent Owner’s arguments, in the 41.77(f) decision, we
addressed the combination of HFO-1234yf and lubricant and evidence
relating thereto with respect to the evidence pertaining to an increased
reaction rate as a result of operating at a temperature of 150°F. (41.77(f)
Decision, 13–14.) In particular, we pointed to evidence in the prior art that
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stabilizers are used when a high degree of stability is required under severe
operating conditions, such that in view of these known methods to address
the stability of refrigerant/lubricant pairs, which Patent Owner’s evidence
did not address, Patent Owner’s evidence was not persuasive. (41.77(f)
Decision 14, citing Omure ¶ 12, Bivens, col. 4, ll. 45–53; and Magid, col. 9,
ll. 61–67.) As pointed out in the 41.77(f) Decision, we did not overlook the
evidence cited by Patent Owner (see Request 9), but rather we weighed that
evidence against the teachings of the prior art, and found the prior art
disclosures outweighed Patent Owner’s evidence. (41.77(f) Decision 19–
22.)
Accordingly, we are not persuaded that we misapprehended or
overlooked any points relating to the operability of the heat transfer
composition at a temperature of about 150°F.

Point 4—Claim 68
In the Request, Patent Owner argues that one point the Board made
with respect to claim 1 is inapplicable to claim 68, and thus requires
reconsideration. (Request 11–12.) In particular, Patent Owner contends that
in discussing Inagaki’s disclosure with respect to combining the disclosed
refrigerants with cooling machine oil in the presence of other HFC
refrigerants, the First Decision noted that the claims of the ’120 Patent use
open “comprising” transitional language, and as a result, do not exclude the
presence of other HFC material. (Request 11, quoting First Decision 16.)
Patent Owner argues that because claim 68 “is limited to only transHFO-
1234ze,” one of ordinary skill in the art would not have had an expectation
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that this particular refrigerant would be miscible with a polyol ester lubricant
to the extent required by the claims. (Request 11.) Patent Owner also
contends that the Board ignored the doctrine of claim differentiation,
because claim 68 depends from claim 63, which recites that “at least one
fluoroalkene comprises trans-1,3,3,3-tetrafluoropropene (transHFO-
1234ze)” such that the Board “ignores the clear intent of claim 68 to limit
the refrigerant to ‘consisting essentially of’ the transHFO-1234ze isomer.”
(Request 12.)
We first observe as does Requester (Comments 19–20), that we
expressly addressed the scope of “‘consisting essentially of’” in claim 68 in
the First Decision. (First Decision 42–43.) In the context of that discussion,
we had reasoned that the term “‘consisting essentially of’” did not exclude
the cis-isomer of HFO-1234ze, to the extent the cis-isomer is present in
Inagaki. (First Decision 43.) Patent Owner has not challenged this
interpretation substantively, and has not shown reversible error therein.
Thus, we are not persuaded by Patent Owner’s contention that we
misapprehended the “intent” of claim 68.
Second, we are not persuaded that the statement in the First Decision
that the appealed claims use “open ‘comprising’ language” requires that we
reconsider claim 68. That is, the First Decision makes clear that Inagaki
does not disparage the use of the refrigerants disclosed therein as being
incapable of working as a refrigerant without the presence of other HFCs or
that the solubility of refrigerants disclosed therein is any way compromised
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or ineffective.4 (First Decision 16–17.) Thus, the statements with respect to
the use of “comprising” language in the claims do not ultimately affect the
application of the prior art to claim 68.
Accordingly, we decline to revise our Decision with respect to
claim 68.

Reconsideration of the First Decision and 41.77(f) Decision in light of the
related Federal Circuit Decision in Reexaminations 95/002,189 and
95/002,204 of U.S. Patent 7,534,366

Points of Clarification
As a result of our review of the record for purposes of this decision on
rehearing, we take this opportunity to provide some points of clarification
from the First Decision in view of the Federal Circuit’s decision in
Honeywell discussed above.
In particular, we have already addressed that miscibility, in the
context of the claims, which are directed to combinations of HFO
refrigerants with lubricants, is not a property inherent to the refrigerant itself.
Accordingly, we expressly withdraw statements made in the First Decision
that miscibility of a particular refrigerant/lubricant composition is an
inherent property of the particular refrigerant. (First Decision 12, 15, 20.)
We have also already addressed the operability of the refrigerant in
combination with lubricant at 150°F. Thus, we withdraw statements made
in the First Decision and in the 41.77(f) Decision that operability of

4 The discussion of this portion of the First Decision is focused on HFO-
1234yf, but would apply equally to HFO-1234ze, which is also expressly
disclosed by Inagaki in Embodiment 2. (See First Decision 9, 15.)
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refrigerant at 150°F is an inherent property of the refrigerant. (First
Decision 26–27, 41.77(f) Decision 9.)
Regarding the limitations in the claims that “said at least one
fluoroalkene has no substantial acute toxicity” (claims 3, 15), we clarify that,
on the present record, the property of acute toxicity is recited in the claims as
a property of the particular fluoroalkene refrigerant. Indeed, the claims
expressly recite the property in this manner. The ’120 Patent states (col. 4,
ll. 50–59) that “the preferred compounds of the present invention are the
tetrafluoropropene and pentafluoropropene compounds in which the
unsaturated terminal carbon has not more than one F substituent” including
HFO-1234ze and HFO-1234yf, which “have a very low acute toxicity level,
as measured by inhalation exposure to mice and rats. On the other hand,
applicants have found that a relatively high degree of toxicity may be
associated with certain compounds adaptable for use with the present
compositions.” The ’120 Patent then identifies 1,1,3,3,3-pentafluoropropene
(HFO-1225zc) as exhibiting “an unacceptably high degree of toxicity, as
measured by inhalation exposure to mice and rats.” (’120 Patent, col. 4, ll.
64–67.)
Although the ’120 Patent does not provide express limits to indicate
what constitutes a “very low acute toxicity,” we interpret “no substantial
acute toxicity” limitation recited in claim 1 to mean “a very low acute
toxicity level” as measured by inhalation exposure to mice and rats.
Our determination in this regard is consistent with case law in
analogous situations applying inherency of an identically disclosed
compound, even in obviousness analyses. See In re Kao, 639 F.3d 1057,
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1070 (Fed. Cir. 2011) (“Substantial evidence supports the Board’s finding,
based upon the specification, which confirms that the claimed ‘food effect’
is an inherent property of oxymorphone itself, present both in controlled
release and immediate release formulations of that drug. . . . This is not a
case where the Board relied on an unknown property of prior art for a
teaching. Rather, Maloney’s express teachings render the claimed
controlled release oxymorphone formulation obvious, and the claimed ‘food
effect’ adds nothing of patentable consequence.”); In re Kubin, 561 F.3d
1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record explicitly
discusses the ‘wherein the polypeptide binds CD48’ aspect of claim 73, the
Kubin–Goodwin application itself instructs that CD48 binding is not an
additional requirement imposed by the claims on the NAIL protein, but
rather a property necessarily present in NAIL. See, e.g., ’859 Application at
1, 8 (describing CD48 as NAIL’s ‘counterstructure’). Because this court
sustains, under substantial evidence review, the Board’s finding that
Valiante’s p38 is the same protein as appellant’s NAIL, Valiante’s teaching
to obtain cDNA encoding p38 also necessarily teaches one to obtain cDNA
of NAIL that exhibits the CD48 binding property.”); Alcon Research, Ltd. v.
Apotex Inc., 687 F.3d 1362, 1369 (Fed. Cir. 2012) (“The parties dispute
whether stabilizing conjunctival mast cells is an inherent property of
olopatadine and whether inherency may be used in an obviousness
analysis . . . The district court’s construction of ‘stabilizing conjunctival
mast cells’ . . . restricts the claims to certain olopatadine concentrations . . .
this claim language does not impose any additional requirement because the
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’805 patent itself defines mast cell stabilization as a property that is
necessarily present at those concentrations.”)
Regarding the limitations in the claims that “said refrigerant has a
Global Warming Potential (GWP) of not greater than” 75 or 150 (claims 1
and 14, respectively), we clarify that the property of GWP is inherent to the
particular refrigerant. (See First Decision, p. 15–16, n.11.) With respect to
claims requiring a mixture of refrigerants, we stand by the analysis in the
First Decision, that it would have been obvious in view of the evidence of
record to have optimized the concentration of each material to amounts such
that the GWP limitations in the claims would have been obvious. (First
Decision 37.)

New Grounds of Rejection
The Federal Circuit held in Honeywell that the Board’s reliance on
Omure constituted a new ground of rejection and that on remand, if the
Board continues to rely on Omure, it should designate its rejection(s) as new
ground(s) of rejection. 865 F.3d at 1358.
Throughout the 41.77(f) Decision, the Board referred to Omure for its
disclosure of stabilizers (41.77(f) Decision 14) as well as providing evidence
of a reasonable expectation of success in combining PAG lubricants with
HFOs. (41.77(f) Decision, 16, 20–21.) Although we realize that
independent claims 1 and 14, while reciting a lubricant, do not recite any
particular lubricant, because we discuss Omure above, and Omure provides
evidence of a reasonable expectation of success in combining HFOs with
lubricants, and many of the dependent claims either expressly recite PAG
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lubricants or depend from claims reciting PAG lubricants (claims 8–13, 23–
27, 36–38, 46–49, and 56–59), in an abundance of caution, we are of the
view that it would be prudent to enter new grounds of rejection adding
Omure.
Thus, in accordance with the Federal Circuit’s guidance with respect
to the Board’s reliance on Omure, we add Omure to the rejections affirmed
in the First Decision and the New Grounds of Rejection maintained from the
First Decision in the 41.77(f) Decision and designate the rejections
applicable to the appealed claims as new grounds of rejection as follows:
Claims 1–6, 14–18, 22, 35, 42–45, 55, 60, 61, and 67 under 35 U.S.C.
§ 103(a) as unpatentable over Inagaki5 and Omure (see First Decision 45);
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,6 or Bivens,7 and
Omure (see First Decision 45);
Claims 7 and 19 under 35 U.S.C. § 103(a) as obvious over Inagaki
and Omure, in view of Magid 8 (see First Decision 46, 41.77(f) Decision 7–
8); and

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 US Patent 5,254,280, issued October 19, 1993 to Raymond H. P. Thomas
et al.
7 US Patent 6,783,691 B1, issued August 31, 2004 to Donald Bernard
Bivens et al.
8 US Patent 4,755,316, issued July 5, 1988 to Hillel Magid et al.
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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 (see First Decision 46, 41.77(f) Decision 7–8).
Patent Owner’s Request has been considered, but denied as to the
merits of the Request. Further, the status of the rejections is revised as
discussed above in light of the Federal Circuit Decision in Honeywell v.
Mexichem.

NEW GROUND OF REJECTION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that “[a]ny decision which includes a new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.” Correspondingly, no portion of the decision is final for
purposes of judicial review. A requester may also request rehearing under
37 C.F.R. § 41.79, if appropriate; however, the Board may elect to defer
issuing any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)–(g). The decision may become final after it has returned to the
Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. . . .
Any request to reopen prosecution before the examiner under
37 C.F.R. § 41.77(b)(1) shall be limited in scope to the “claims so rejected.”
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the patent owner seek to
substitute claims, there is a presumption that only one substitute claim would
be needed to replace a cancelled claim.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall
be limited in scope to the issues raised by the Board’s opinion reflecting its
decision to reject the claims and the patent owner’s response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence
properly submitted by the patent owner, and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
Appeal 2017-011438
Reexamination Control 95/001,783
Patent US 8,033,120 B2

19
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all patent owner responses and requester comments, is required.
The examiner, after the Board’s entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board’s rejection is maintained or has been overcome.
The proceeding will then be returned to the Board together with any
comments and reply submitted by the owner and/or requester under
37 C.F.R. § 41.77(e) for reconsideration and issuance of a new decision by
the Board as provided by 37 C.F.R. § 41.77(f).

REHEARING DENIED; NEW GROUNDS OF REJECTION UNDER
37 C.F.R. § 41.77(b)

Appeal 2017-011438
Reexamination Control 95/001,783
Patent US 8,033,120 B2

20
PATENT OWNER:
HONEYWELL/FOX/BANNER
PATENT SERVICES
115 TABOR ROAD
PO BOX 377
MORRIS PLAINS, NJ 07950

THIRD-PARTY REQUESTER:
JOSEPH A. KROMHOLZ, ESQ.
PATRICK J. FLEIS, ESQ.
RYAN KROMHOLZ & MANION, S.C.
P.O. BOX 26618
MILWAUKEE, WI 53226-0618