Ex Parte 8,033,120 et alDownload PDFPatent Trial and Appeal BoardMar 29, 201695001783 (P.T.A.B. Mar. 29, 2016) 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. 95/001,783 11/08/2011 8,033,120 9404.21592-REX 8580 116637 7590 03/30/2016 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 03/30/2016 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 2015-000616 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. GUEST, Administrative Patent Judge. DECISION ON APPEAL 1 US Patent 8,033,120 B2 issued on October 11, 2011 to Rajiv R. Singh, et al. (hereinafter “the ’120 patent”). Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 2 Patent Owner Honeywell International Inc. (“Patent Owner”) appeals under 35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to reject claims 1–19 and 22–68. We have jurisdiction under 35 U.S.C. §§ 134(b) and 315(a). Patent Owner identifies that related U.S. Patent 7,534,366 is the subject of merged reexaminations 95/002,189 and 95/002,204, which are currently on appeal (Appeal No. 2015-006430). Related U.S. Patent 7,279,451 B2 (hereinafter “the ’451 patent”) is the subject of reexamination control 95/000,576, is also currently on appeal (Appeal 2015-000615), decided concurrently. Related U.S. Patent 8,444,874 (hereinafter “the ’874 patent”) was subject to Inter Partes Review IPR2013-00576, for which a final decision was entered on February 26, 2015. The decision in IPR2013-00576 cancelled all of the claims of the ’874 patent except for claim 2, which recited a heat transfer composition comprising “at least about 90% by weight” of the trans-isomer of 1,3,3,3-tetrafluoropropene. Because there are overlapping issues regarding the appeal of the ’451 patent and the present appeal of the ’120 patent, we heard oral arguments simultaneously for both cases on May 6, 2015, a written transcript of which was entered into the electronic record for each reexamination proceeding on June 2, 2015. We AFFIRM-IN-PART and enter a new ground of rejection. Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 3 STATEMENT OF THE CASE The ’120 patent relates to the use of compositions comprising tetrafluoropropene (e.g., HFO-1234) in a variety of applications, including: vapor compression heating and cooling systems; blowing agents; aerosol propellants; solvent compositions; and fire suppressing agents. ’120 patent, col. 3, ll. 32-54. Claim 1, which is illustrative of the appealed subject matter, reads as follows (with underlining showing added text and brackets showing deleted text relative to the original patent claims): 1. A method of cooling air comprising: (a) providing a [heat transfer fluid] heat transfer composition comprising at least one lubricant and a refrigerant comprising at least one [a] fluoroalkene of Formula II[I]: [XCFzRz-3 (I)] where R' is (CR2)nY, Y is CF3 n is 0 or 1, and [X is a C2 or a C3 unsaturated, substituted alkyl radical, each substituent and] each R is independently F or H, provided that at least one of said Rs is an F on an unsaturated carbon, and further [and z is 1 to 3] provided that (i) said fluoroalkene of Formula II [I] has at least four fluorine substituents [has a terminal unsaturated carbon atom] and has at least one H on the [said] unsaturated terminal carbon, (ii) 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, Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 4 and (iii) said refrigerant has a Global Warming Potential (GWP) of not greater than about 75; and (b) cooling said air by vaporizing said refrigerant by causing heat to be transferred from the air being cooled to said [heat transfer fluid] heat transfer composition. PO App. Br. 38, Claims App’x. Patent Owner contests the Examiner’s decision to reject the claims as follows: I. Claims 1–7, 14–19, 22, 35, 42–45, 55, 60, 61, and 67 stand rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Inagaki.2 RAN 9. II. Claims 8–13, 23–34, 36–41, 46–54, 56–59, 62–66, and 68 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Inagaki in view Patent Owner’s own admission at col. 6, ll. 13–17 of the ’120 patent. RAN 12–13. III. Claims 8–13, 23–34, 36–41, 46–54, 56–59, 62–66, and 68 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Inagaki in view Thomas.3 RAN 15. IV. Claims 8–13, 23–34, 36–41, 46–54, 56–59, 62–66, and 68 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Inagaki in view Bivens.4 RAN 18. 2 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. 3 U.S. Patent 5,254,280, issued October 19, 1993 to Raymond H. P. Thomas, et al. Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 5 V. Claims 22–41 and 45–54 stand rejected as being indefinite under 35 U.S.C. § 112, second paragraph, for failing to particularly point out and distinctly claim the subject matter which applicant regards as their invention. RAN 7. Third Party Requester, Mexichem Amanco Holding S.A. de C.V. (“Requester”),5 further relies on the following testimonial evidence in support of the Examiner’s maintained rejections: Declaration of Stuart Corr executed July 16, 2012 (Ex. 2, Res. Br. 16; hereinafter “Corr Decl.”) and Attachments A-D. Patent Owner relies on the following rebuttal testimonial evidence: Declaration of Rajiv Ratna Singh executed April 30, 2012 (Ex. 1, App. Br. 46; hereinafter “Singh Decl.”) and attached exhibits A-Z and AA. REJECTIONS I–IV BASED ON INAGAKI The Rejections Claims 1–7, 14–19, 22, 35, 42–45, 55, 60, 61, and 67 stand rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Inagaki. Claims 8–13, 23–34, 36–41, 46– 54, 56–59, 62–66, and 68 stand rejected as obvious under 35 U.S.C. § 103(a) in view of Inagaki either alone or further in view of Patent Owner’s admitted prior art, Thomas, or Bivens. The Examiner applied similar findings and analyses to the teachings of Inagaki in all of these rejections. 4 U.S. Patent 6,783,691 B1, issued August 31, 2004 to Donald Bernard Bivens, et al. 5 Requester’s Respondent Brief 1, filed June 9, 2014 (hereinafter “Res. Br.”). Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 6 Patent Owner does not dispute that Inagaki teaches HFO-1234ze6 and HFO-1234yf,7 refrigerants which fall within the scope of Formula II, and are specifically recited in claims on appeal. See PO App. Br. 13 (“Inagaki discloses some of the C3 compounds within Appellant’s defined class of C3-C4 fluorinated olefins”), Claim App’x; Inagaki 4–5 (Embodiments 2 and 5, respectively). The Examiner found that Inagaki describes that “the organic compound (as a refrigerant) is compatible (miscible) with lubricants (page 3), implying that the organic compound forms a single liquid phase with lubricants at a certain temperature of the operating temperature range - 50°C and +70°C) within the scope as claimed.” RAN 10–11 (citing Inagaki 3). In the alternative, the Examiner also found that “[i]t is well known that refrigerating systems, such as those disclosed in Inagaki, require lubricants to be circulated with the refrigerants so as to lubricate and seal compressor components.” Id. at 11. Thus, the Examiner concluded that “it would have been obvious to one of ordinary skill in the art to select the lubricants which are compatible with the refrigerants, as suggested by Inagaki, in order to lubricate and seal the compressor in the refrigerating system.” Id. 6 The ’120 patent uses HFO-1234ze as a common name for 1,3,3,3- tetrafluoro-1-propene, which has the structure F3C–CH=CHF. ’120 patent, col. 4, ll. 53-54. 7 The ’120 patent uses HFO-1234yf as a common name for 2,3,3,3- tetrafluoropropene, which has the structure F3C–CF=CH2. ’120 patent, col. 4, ll. 54-55. Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 7 Discussion Claims 1, 2, 4–6, and 35–40 Issue Initially we observe that, although dependent claims 36–40 are separately rejected over Inagaki in combination with several other references, Patent Owner argues claims 1, 2, 4–6, and 35–40 as a group based on the Examiner’s similar reliance on the teachings of Inagaki. PO App. Br. 6. Accordingly, we address claim 1 as representative of the rejection of the claims based on Inagaki alone, with the understanding that our comments apply equally to the rejections of dependent claims 36-40. Patent Owner argues that, because some of the compounds taught by Inagaki are toxic or flammable, Inagaki is not directed towards heat pump applications that would be used to cool air, but rather towards heat pumps used for other purposes for which toxicity is not a concern. Id. at 8–11. In particular, Patent Owner directs us to Figure 2 of Inagaki, which is said to be directed to a system for cooling water, not air. Id. 8–9 (citing the Singh Decl. ¶¶ 15, 19, and 20). Patent Owner further contends that Inagaki does not teach which of its compounds would have been useful for cooling air, i.e., which are non-toxic. Id. at 8, 13. Patent Owner contends that Inagaki fails to disclose an embodiment of a heat transfer composition comprising a refrigerant and a lubricant, particularly a composition having the “one liquid phase” requirement of the present claims. PO App. Br. 7–8; see also PO App. Br. 25–28 (argument made against Inagaki in response to rejections based upon Inagaki in view of admitted prior art, Thomas or Bivens). Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 8 Patent Owner contends that the claimed refrigerant having “at least one H on the unsaturated terminal carbon” exhibits unrecited and unexpected advantages in low toxicity. PO App. Br. 15–18. Patent Owner argues that the present invention addresses the long-felt-but-unmet need for a heat transfer composition having environmental properties, such as low ozone depleting potential (ODP) and low global warming potential (GWP). Id. at 11–13, 18–20. In particular, Patent Owner presents evidence of skepticism that such a composition existed, particularly with the other desired properties of low toxicity, stability, reactivity, and effectiveness. Id. at 12–13, 18–20. The issue with respect to these claims is: Did the Examiner err in determining that a method of cooling air comprising a heat transfer composition having the properties of claim 1 would have been obvious from the teachings of Inagaki, particularly in light of the evidence of secondary consideration, namely unexpected results, long- felt-but-unmet need, and skepticism? Analysis Although Inagaki discloses that the refrigerants disclosed therein are compatible with lubricants (Inagaki 3), we agree with the Patent Owner that Inagaki does not teach a method of cooling air that includes any particular lubricant and refrigerant pairs (PO App. Br. 26), such that Inagaki does not expressly teach a heat transfer composition with the lubricant and refrigerant having the “at least one liquid phase” requirement as recited in claim 1. Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 9 Accordingly, we agree with the Patent Owner that Inagaki does not anticipate the claimed invention. For this reason, and this reason alone, we reverse the Examiner’s anticipation rejection of the claims. However, the Examiner alternatively relied on obviousness rejections of the claims with respect to Inagaki. Inagaki teaches a generic refrigerant having the formula C3HmFn, wherein m and n are integers from 1–5 and the sum of m and n is equal to 6, which has no destructive effects on the ozone layer, because it contains no chlorine or bromine atoms. Inagaki 2. More critically, Inagaki exemplifies the refrigerants F3C–CH=CHF, also known in the art as HFO-1234ze, and F3C-CF=CH2, also known in the art as HFO- 1234yf, which as noted above, are refrigerants falling within the scope of claim 1. Id. at 2 and 4 (Embodiments 2 and 5, respectively). Inagaki teaches that the coefficient of performance (COP) and freezing effect results for HFO-1234ze were similar to that obtained for R-22, R-12 and R-502, all commonly used refrigerants. Id. at 4. Inagaki also teaches that COP and freezing capacity for HFO-1234yf were similar to those obtained for embodiment 1 (id.), for which Inagaki shows “excellent” COP values and “higher” freezing capacity than control refrigerant (R-12). Id. at 3. Accordingly, Inagaki evinces that at the time of the invention HFO-1234ze and HFO-1234yf would have been known to those of skill in the art to be refrigerants with good COP and good freezing effect with no destructive effects on the ozone layer. We find it of no moment that Inagaki also discloses other refrigerants that are less desirable due to toxicity or flammability. See Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 10 Cir. 1989) (“That the [prior art] discloses a multitude of effective combinations does not render any particular formulation less obvious. This is especially true because the claimed composition is used for the identical purpose.”). We disagree with the Patent Owner’s premise that Inagaki fails to teach a method of cooling air using the refrigerants described therein. Inagaki expressly teaches the regulation of heat transfer media (refrigerants) in “refrigerators and air conditioning equipment” led to finding good refrigerants without the risk of destroying the ozone layer. Inagaki 1. Thus, the skilled artisan would immediately understand the use of the refrigerants described in Inagaki would not have been limited to only the exemplified heat pumps. Rather, the skilled artisan would have considered the use of the described refrigerants in any typical refrigerant cooling application, including use in air conditioning equipment. Although cooling water is an exemplified application, Inagaki further acknowledges the use of refrigerants in other applications, such as in air conditioning equipment. Inagaki 1. Prior to the date of the invention, HFO-1234yf was identified as a refrigerant having good cooling characteristics by Inagaki. If Inagaki taught only the broader genus of the compound represented by the formula C3HmFn, a determination that the particularly claimed subset thereof, namely those compounds with at least one H on the terminal unsaturated carbon, was not obvious might follow. However, Inagaki further teaches specific compounds within the claimed subset, e.g., HFO-1234yf and HFO-1234ze. Because Inagaki describes refrigerants within the scope of the claims explicitly, it is of no moment that Inagaki does not identify each member of Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 11 the subset of compounds recited in the claims having at least one H on the terminal unsaturated carbon. In addition to good cooling characteristics, Inagaki describes that HFO-1234yf and HFO-1234ze are ozone-friendly compounds. Thus, despite the fact that HFO-1234yf possessed attributes (e.g., non-toxicity) that were yet to be recognized in the art, the use of HFO-1234yf, for example, as a known refrigerant for use in air conditioning equipment, which is also taught by Inagaki, was known at the time of the invention.8 Patent Owner argues that the Examiner’s reasoning is contrary to law because an obvious analysis that relies on an inherent disclosure is “legally improper and cannot be a basis for this rejection.” See PO App. Br. 13 (quoting In re Newell, 891 F.2d 899 (Fed. Cir. 1989)). The Patent Owner’s reliance on Newell is misplaced. The teaching, suggestion, or motivation (TSM) test9 was found not to be satisfied in Newell because the prior art did not provide a sound basis for the inherency position relied upon by the 8 Moreover, evidence of record suggests that the particular concerns with stability, toxicity, and reactivity were known in the art at the time of the invention and the testing of prospective refrigerants for these properties was routine in the art at the time of the invention. See Singh Decl. ¶¶ 6–7 (citing a Declaration of George Rusch (attached as Exhibit B to the Singh Decl.), which discusses testing of HFO-1225zc performed by Dupont that is dated April 17, 2000), ¶¶ 8–9 (citing Exhibit C to the Singh Decl., which reports “various [toxicity in fluorocarbon products] results from 1961-1995”); ¶ 26 (citing to Exhibit F, a 1992 NASA JPL tech brief identifying potential refrigerant candidates as toxic). 9 Newell was decided prior to KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398(2007). KSR rejected the notion that the TSM test was the only test to combine prior art references. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 12 Examiner. However, Newell does not suggest that inherent properties cannot be considered in an obviousness analysis where there is a sound basis for determining that using a composition is otherwise obvious. Here, the Examiner’s reasoning that a skilled artisan would use HFO-1234yf or HFO-1234ze due to the good COP and capacity and ozone friendly properties described in Inagaki is sound and based on the teachings of the prior art. Moreover, the properties of the particular refrigerants are inherent to the refrigerant, whether specifically disclosed or not. Such inherent properties of refrigerants include their specific toxicity, miscibility, GWP, and ODP, whether or not these properties are predictable. One cannot obtain a patent for a composition of matter based on the inherent properties of an otherwise known refrigerant. “Inherency is not necessarily coterminous with the knowledge of those of ordinary skill in the art. Artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). Even though those in the art may not have recognized that HFO-1234yf was non-toxic, it nonetheless is inherently so. The new realization alone does not render that prior art patentable. “From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing.” In re Papesch, 315 F.2d 381, 391 (CCPA 1963). “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1347 (Fed. Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 13 Cir. 1999). See also In re Skoner, 517 F.2d 947, 950 (CCPA 1975) (“Appellants have chosen to describe their invention in terms of certain physical characteristics . . . . Merely choosing to describe their invention in this manner does not render patentable their method.”). We are not persuaded that any expected difficulties or problems associated with the use of HFO-1234yf, such as toxicity, would have deterred an ordinary artisan from using HFO-1234yf as a refrigerant in known refrigerant applications, as evidenced by Inagaki. Cf. PO App. Br. 20 (describing expected, although not realized, concerns regarding toxicity and reactivity). In other words, based on Inagaki, an ordinary artisan would have had reason to predict that Inagaki’s refrigerants would have worked as intended, i.e., by vaporizing the refrigerant by causing heat to be transferred to the heat transfer composition, as recited in the claims. Even if expected to be toxic, the skilled artisan would have recognized the tradeoff of toxicity for the benefits of good cooling with little effect on the ozone layer and would have used Inagaki’s refrigerants in air conditioning equipment accordingly, as taught by Inagaki. See Singh Decl. ¶ 36 (discussing Exhibit N to the Singh Decl., which is a 1997 article entitled “Trade-Offs in Refrigerant Selections.”). Moreover, the Examiner found that “[i]t is well known that refrigerating systems, such as those disclosed in Inagaki, require lubricants to be circulated with the refrigerants so as to lubricate and seal compressor components.” RAN 11. While the Examiner did not cite to any particular evidence to support this finding, the record includes evidence that the use of lubricants with refrigerants was known at the time of the invention. See e.g., Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 14 Singh Decl. ¶ 24; Oberle,10 col. 1, ll. 18–29 (“Compression heat transfer system designers must consider lubricant circulation and return of the lubricant to a sump or reservoir . . . to lubricate and seal compressor components.”); ’120 patent, col. 2, ll. 17–27 (“It is generally considered important, however, that any potential substitute refrigerant must also possess . . . lubricant compatibility. . . . [I]t is highly desirable for refrigeration fluids to be compatible with the lubricant utilized in the compressor unit, used in most refrigeration systems.”). Moreover, the teaching of an oil separator in Inagaki (Inagaki, Figure 2) further supports our above finding that Inagaki describes the use of refrigerants with known lubricants. We agree with Patent Owner that Inagaki does not describe any particular cooling machine oil. See PO App. Br. 25. However, using cooling machine oils known to those of ordinary skill in the art at the time of the invention would have been obvious based on the teachings of Inagaki. Again, the preponderance of the evidence of record indicates that poly alkylene glycol (PAG) and polyol ester (POE) were known in the art as conventional lubricants in refrigerant systems, i.e., “cooling machine oils,” at the time of the invention. See Singh Decl. ¶ 25 (“I am aware that prior to our invention substantially miscible pairs of certain hydrofluorocarbons (HFCs) and poly alkylene glycol (PAG) and/or polyolester (POE) lubricants were in commercial use.”); Bivens, col. 1, ll. 37–50 (identifying PAG and POE as known alternative lubricants for HFC-based refrigeration systems). 10 U.S. Patent 6,374,629 B1, issued April 23, 2002 to Jill Ellen Oberle et al. (cited in concurrent reexamination of the ’451 patent, Reexamination 95/000,576). Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 15 Even the ’120 patent identifies that certain lubricants were well-known in the art at the time of the invention. ’120 patent, col. 2, ll. 29–32 (“the types of lubricants used traditionally with CFC’s and HFC’s, including, for example, mineral oils, alkylbenzenes or poly(alpha-olefins).”) (emphasis added); col. 6, ll. 13–17 (“Commonly used refrigeration lubricants such as Polyol Esters (POEs) and Poly Alkylene Glycols (PAGs) that are used in refrigeration machinery with hydrofluorocarbon (HFC) refrigerants may be used with the refrigerant compositions of the present invention.”) (emphasis added). Since Inagaki evinces that it would have been obvious to one of ordinary skill in the art at the time of the invention to have used HFO- 1234ze or HFO-1234yf in combination with known lubricants, Inagaki would have also suggested the use of HFO-1234ze or HFO-1234yf with, for example, PAG in a refrigerant composition. 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. We need not have a direct teaching in Inagaki of the miscibility recited in the claims if an otherwise obvious composition inherently has these properties.11 11 A preponderance of the evidence supports a finding that HFO-1234yf and HFO-1234ze are refrigerants that inherently have a GWP within the ranges recited in the claims. Specifically, Requester contends that the GWP of Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 16 Further, we note that Patent Owner’s argument that the skilled artisan would not have understood that “compatibility” includes “miscibility” (PO App. Br. 27) is inconsistent with the language used in the ’120 patent, which interchanges the terms “compatibility” and “miscibility” throughout. See e.g., ’120 patent, col. 2, ll. 23–42; see also Corr Decl. ¶¶ 12–15 (“compatible” generally means having a “satisfactory degree of chemical stability and sufficient miscibility/solubility and lubricity to enable it to be used under conditions appropriate to the envisaged application”). We do not agree with the Patent Owner’s argument that Inagaki’s teaching of combining the disclosed refrigerants with cooling machine oil in the presence of the other HFC refrigerants to “improve solubility” equates to a teaching that the lubricant/refrigerant suggested therein were immiscible. See PO App. Br. 19.12 The appealed claims of the ’120 patent use open “comprising” language and thus do not exclude the presence of other HFC materials. Further, Inagaki does not disparage the use of HFO-1234yf as being incapable of working as a refrigerant without the presence of the other HFCs. In fact, to the contrary, Inagaki specifically discloses that HFO-1234yf has excellent COP and freezing effect, even without the addition of other refrigerants, in the Embodiment 5 example. See KSR, 550 HFO-1234yf and HFO-1234ze are 4 and 6, respectively, a fact unchallenged by the Patent Owner. See Req. Res. Br. 12. 12 While these arguments directed to the application of Inagaki alone were discussed in the Patent Owner’s Appeal Brief with respect to the rejection of certain claims base on Inagaki in combination with additional prior art, we incorporate those arguments here with respect to the rejections based on Inagaki alone, as they are inapplicable to the rejections that incorporate additional prior art. Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 17 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Likewise, while Inagaki suggests that solubility can be “improved” with lubricants in the presence of other refrigerants, Inagaki does not indicate that solubility with lubricants of HFO-1234yf without the addition of the other refrigerants is anyway compromised or ineffective for the refrigerants use. Further, because there is evidence that acceptable heat transfer systems do not require miscibility between the refrigerant and the lubricant (see Singh Decl. ¶ 18), a composition comprising a lubricant and HFO-1234yf would have been suggested by the prior art even without any express teachings as to miscibility. “[T]he law does not require that the references be combined for the reasons contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); see In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc) (“In particular, the statement that a prima facie obviousness rejection is not supported if no reference shows or suggests the newly-discovered properties and results of a claimed structure is not the . . . law.”). It is enough that the prior art reference describes excellent COP and freezing effect as a sufficient reason for the skilled artisan to use HFO-1234yf as a refrigerant. HFO-1234yf is miscible in lubricants whether it is used for exploiting that property or the cooling and ozone-friendly properties described in Inagaki. Patent Owner also contends that the use of the oil separator shown in Figure 2 of Inagaki indicates that the skilled artisan would have expected “the lubricant and refrigerant have substantial immiscibility.” PO App. Br. Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 18 27 (citing Singh Decl. ¶¶ 21–22). In addition, Patent Owner contends that an ordinary artisan could not have predicted whether any particular refrigerant/lubricant combination was miscible. Id. (citing Singh Decl. ¶ 23). We are not persuaded by Patent Owner’s contentions regarding the depiction in Figure 2 of Inagaki of an oil separator, which is not otherwise discussed in Inagaki. Inagaki expressly teaches that compatibility and solubility with machine oils is a desirable property. Moreover, Requester points us to evidence indicating that an oil separator was a common component in refrigerant systems, including ones using refrigerant/lubricants that were miscible. Req. Res. Br. 7 (citing Corr Decl. ¶¶ 17–25). Thus, the incidental disclosure of an oil separator does not teach away from miscible combinations of refrigerants and lubricants. Secondary Considerations Patent Owner contends that the Examiner has not properly considered Appellants’ evidence of non-obviousness. PO App. Br. 15. Specifically, Patent Owner contends that there is evidence of unexpected results and industry praise. PO App. Br. 17–20. Patent Owner also argues that there was a long-felt need in the art for “a safe, effective and environmentally- acceptable method to cool air” and substantial skepticism that such a refrigerant could be discovered. Id. at 18–20. Patent Owner presents evidence that the low toxicity of HFO-1234yf was “a classic case of unexpected results” because [t]he prior art as a whole would []have lead[sic] a person skilled in the art away from using fluorinated propenes and butenes that have the minimum level of fluorine substitution as required Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 19 by the claims because of the known toxicity of several of such compounds which are similar to, but outside the scope of, the claimed molecules, including HFO-1225zc which is taught by Inagaki. PO App. Br. 17–18 (citing Singh Decl. ¶¶ 6–7 and 11–13). Patent Owner argues that even after Inagaki was published, “industry participants expressed frustration, and even pessimism, at finding a commercially acceptable solution.” Id. at 12 (citing Singh Decl. ¶¶ 35–37). Thus, according to Patent Owner, “[i]n light of this pessimistic outlook, Honeywell’s announcement of its commercial HFO, e.g., HFO-1234yf product in 2007, which could be used with PAG and POE lubricants, was met with excitement, wide recognition and praise.” Id. at 18 (citing Singh Decl. ¶¶ 39–41 and Exhibits AA, R-T). Patent Owner contends that “HFO-1234yf has gained widespread acceptance by the automobile industry for use in a method for cooling air (automobile air conditioning).” Id. at 19. The burden rests with Patent Owner to establish that the alleged unexpected results presented as being associated with the claimed invention are, in fact, unexpected, the comparisons are with the closest prior art, and that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). “[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). After careful review of Patent Owner’s evidence, we nonetheless determine that such evidence is unpersuasive as to the legal conclusion that the use of HFO-1234yf or HFO-1234ze as refrigerants would not have been Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 20 obvious to one of ordinary skill in the art. Patent Owner’s evidence is directed to the fact that a particular refrigerant having all of the desirable properties looked for in the particular art, namely environmentally friendly, non-toxic, miscible with lubricants, and good cooling characteristics (i.e., good COP) was elusive to those in the art for a long time. Yet, such a refrigerant existed and was known as a good refrigerant at the time, as described in Inagaki.13 Patent Owner’s evidence of initial skepticism and long-felt need are likewise unpersuasive. Patent Owner’s evidence of long-felt need is also directly related to the selection of a desirable refrigerant for use in common air cooling systems. A known refrigerant inherently having the desired properties, i.e., HFO-1234yf, was already identified in the art as a suitable refrigerant for cooling systems in Inagaki. Accordingly, a solution to the need was taught or suggested, if not realized, in the art well before the Patent Owner’s identification of all the properties of HFO-1234yf and HFO-1234ze. Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008) (“[T]here was no evidence that the success of the commercial embodiment . . . was attributable to the . . . only material difference between [the prior art] and the patented invention.”) (citation omitted, emphasis 13 As stated above, if Inagaki taught only the broader genus of the compound represented by the formula C3HmFn, a determination that the particular unexpected properties of those compounds with at least one H on the terminal unsaturated carbon render the specific subset not obvious might follow. However, Inagaki further teaches specific compounds within the claimed subset, e.g., HFO-1234yf and HFO-1234ze. Thus, to the extent the skilled artisan would have used HFO-1234yf or HFO-1234ze as taught by Inagaki, these properties would inherently have been present. Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 21 added); In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention”). Here, the difference between the closest prior art and the claims is not the selection of HFO-1234yf or HFO-1234ze as a refrigerant because the use of these compounds as refrigerant is taught expressly by Inagaki for common refrigerant purposes, such as cooling air. We determine that a composition comprising HFO-1234yf and any known lubricant, such as PAG or POE, would have been obvious over the teachings of Inagaki. Accordingly, we affirm the Examiner’s rejection of claims 1, 2, 4–6, and 35–40 under 35 U.S.C. § 103(a) as obvious over Inagaki alone or further in view of admitted prior art, Thomas or Bivens. Claims 14, 16–18, and 55–57 Issues Patent Owner presents separate arguments with respect to claims 14, 16–18, and 55–57. See PO App. Br. 20. Claims 14, 16–18, and 55–57 recite a step of “ensuring that said refrigerant does not include a fluoroalkene of Formula II which has no H substituent on an unsaturated terminal carbon . . . .” Claims 14, 16–18, and 55 stand rejected under 35 U.S.C. § 102(b) as being anticipated by or, in the alternative under 35 U.S.C. § 103(a) as obvious over Inagaki alone. Claims 56–57 stand rejected under 35 U.S.C. § 103(a) as being obvious over Inagaki in view of admitted prior art, Thomas, or Bivens. Patent Owner argues claims 14, 16–18, and 55–57 as a Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 22 group, for which we select claim 14 as a representative claim. See PO App. Br. 20–22. Patent Owner contends that the “ensuring step in Group II provides the additional advantage of excluding those compounds with a high degree of toxicity.” PO App. Br. 20. Patent Owner further argues that Inagaki does disclose or render obvious this step because “Inagaki does not draw any distinction between the molecules it discloses” and instead “teaches that all of these compounds are equally acceptable.” Id. at 21. The issue with respect to claims 14, 16–18, and 55–57 is: Did the Examiner err in determining that a method of cooling air that includes a step of “ensuring that said refrigerant does not include a fluoroalkene of Formula II which has no H substituent on an unsaturated terminal carbon” would have been obvious to one of ordinary skill in the art from the teachings of Inagaki? Analysis For the reasons discussed above with respect to claim 1, the use of HFO-1234yf or HFO-1234ze as a refrigerant would have been obvious in view of the teachings of Inagaki. Further, Inagaki specifically teaches the use of these refrigerants alone in Embodiments 2 and 5. Thus, Inagaki expressly teaches embodiments with a step of “ensuring that said refrigerant does not include a fluoroalkene of Formula II which has no H substituent on an unsaturated terminal carbon” because the refrigerants in those embodiments have no additional fluoroalkenes other than HFO-1234ze and HFO-1234yf, respectively. Further, Inagaki teaches that these embodiments have good COP and cooling capacity. Inagaki 2-4 (discussing results of Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 23 Embodiments 2 and 5, respectively). Additionally, for the reasons discussed above, we find Patent Owner’s evidence of secondary considerations to be unpersuasive of non-obviousness over the prior art. It is of no moment that Inagaki teaches separate embodiments that use refrigerants without an H substituent on an unsaturated terminal carbon or that Inagaki does not expressly teach the exclusion of these refrigerants. As discussed above, Embodiments 2 and 5 disclose only HFO-1234ze and HFO-1234yf, respectively, and thus do not include other refrigerants. Accordingly, we affirm the Examiner’s rejections of claim 14, 16–18, and 55–57 under 35 U.S.C. § 103(a) as obvious over Inagaki alone or further in view of admitted prior art, Thomas, or Bivens. Claims 3 and 15 Issues Patent Owner presents separate arguments with respect to claims 3 and 15. See PO App. Br. 22. Claims 3 and 15 recite a step of cooling air suing a fluoroalkene that “has no substantial acute toxicity as measured by inhalation exposure to mice and rats.” Claims 3 and 15 stand rejected under 35 U.S.C. § 102(b) as being anticipated by or, in the alternative under 35 U.S.C. § 103(a) as obvious over Inagaki alone. Patent Owner argues claims 3 and 15 as a group, for which we select claim 3 as a representative claim. See PO App. Br. 22–23. Patent Owner argues that Inagaki does not disclose or render obvious the “no substantial acute toxicity” limitation of claim 3 because Inagaki teaches compounds that have been found to have a high level of acute Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 24 toxicity, and thus expresses “no disapproval for compounds having substantial acute toxicity.” PO App. Br. 23. Specifically, Patent Owner contends that Inagaki discloses “HFO-1225zc –which is a compound . . . found to have a high level of acute toxicity, rendering it unacceptable for most cooling air applications.” Id. at 23 (citing Singh Decl. ¶¶ 7–13). The issue with respect to claims 3 and 15 is: Did the Examiner err in determining that a method of cooling air that includes using a refrigerant having “no substantial acute toxicity,” as recited in claim 3, would have been obvious to one of ordinary skill in the art from the teachings of Inagaki? Analysis For the reasons discussed above with respect to claim 1, the use of HFO-1234yf or HFO-1234ze as a refrigerant would have been obvious in view of the teachings of Inagaki. Further, Inagaki specifically teaches the use of these refrigerants alone in Embodiments 2 and 5. Thus, Inagaki inherently teaches embodiments of processes using refrigerants that have no substantial acute toxicity, because those embodiments have no additional refrigerants other than HFO-1234yf or HFO-1234ze. HFO-1234yf and HFO-1234ze inherently have no acute toxicity, a fact which is not disputed by Patent Owner. Further, Inagaki teaches that these embodiments have good COP and cooling capacity. Inagaki 2-4 (discussing results of Embodiments 2 and 5, respectively). Additionally, for the reasons discussed above, we find Patent Owner’s evidence of secondary considerations to be unpersuasive of non-obviousness over the prior art. Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 25 As we discussed above, Patent Owner’s reliance on Newell is misplaced when, as here, the Examiner relied on inherent properties of composition that are obvious based on sound reasoning supported by the prior art. It is of no moment that Inagaki teaches separate embodiments that use toxic refrigerants or that Inagaki does not expressly teach the exclusion of such refrigerants. Embodiments 2 and 5 necessarily use refrigerants that are non-toxic by reciting only HFO-1234ze and HFO-1234yf, respectively. Accordingly, we affirm the Examiner’s rejections of claim 3 and 15 under 35 U.S.C. § 103(a) as obvious over Inagaki alone or further in view of admitted prior art, Thomas, or Bivens. Claims 7–9 and 19 Issues Patent Owner presents separate arguments with respect to claims 7–9 and 19. See PO App. Br. 22. Claims 7–9 and 19 recite a step of providing a “system having . . . at least one condenser . . . , wherein . . . said condenser is operated in a temperature range that includes about 150° F.” Claims 7 and 19 stand rejected under 35 U.S.C. § 102(b) as being anticipated by or, in the alternative under 35 U.S.C. § 103(a) as obvious over Inagaki alone. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as being obvious over Inagaki in view of admitted prior art, Thomas, or Bivens. Patent Owner argues claims 7–9 and 19 as a group, for which we select claim 7 as a representative claim. See PO App. Br. 23–24. Patent Owner argues that “Inagaki limits the suitable condenser temperature range for the compounds he discloses between 30°C (86°F) and Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 26 60°C (140°F)” and exemplifies a condenser at only 50°C (122°F). Id. at 24 (citing Inagaki 2). Patent Owner further argues that neither Inagaki nor the additionally cited prior art would have suggested a condenser operating outside this range. Id. The issue with respect to claims 7–9 and 19 is: Did the Examiner err in determining that a method of cooling air that includes a system having a condenser operating at a temperature range that includes 150°F, as recited in claim 7, would have been obvious to one of ordinary skill in the art from the teachings of Inagaki? Analysis The Examiner makes no finding with respect to this limitation but nonetheless adopts Requester’s proposed rejections. In doing so, the Examiner adopted Requester’s initial arguments with respect to this limitation in the Request, which reads as follows: With respect to “a temperature range that includes about 150°F”, this is understood in the specification of the ’120 Patent to be referencing testing of the disclosed compounds using standard refrigeration cycle analysis techniques. That is, the claim term is in reference to the particular compounds being tested at 150°F, i.e. the same compounds as disclosed in Inagaki. No particularity is given to the testing processes, other than they were carried out according to standard procedures. The compounds of Inagaki, being the identical compounds as those of the ’120 Patent, would also be operable in methods that include 150°F, as stated in the claims, or any other temperature range put forth by the Patent Owner. Request 27–28 (emphases added). In Response, Requester further associates the condenser temperature recited in the claims with the fact that Inagaki Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 27 “does not limit the use of those refrigerants to those temperature ranges.” Req. Res. Br. 10. We agree with Requester that whether or not a particular refrigerant would be capable of being used in a condenser operating at 150°F is an inherent property of the refrigerant, as demonstrated by the ’120 patent. However, the claims at issue are directed to a method of cooling air using a condenser that is operated in a temperature range that includes about 150° F. As discussed above, Inagaki renders obvious the use of Inagaki’s refrigerants for the purpose of cooling air. There appears to be no question that using a condenser is how such a refrigerant functions in a heat transfer method (see Inagaki, 2 and Figure 2; ’120 patent, col. 1, ll. 44–53), and thus using a condenser is expressly taught by and obvious in view of Inagaki. Inagaki describes that “since the boiling points of these compounds are similar to those of widely used R-12, R-22, R-114 and R-502, they are suitable for the use under the conditions of the evaporating temperature of −20 to 10 degrees C., and condensation temperature of 30 to 60 degrees C.” Inagaki 2. Thus, on the present record, Inagaki does not teach or suggest that air cooling systems were known in the art at the time of the invention to condense vapor at temperatures greater than 60°C (140°F), nor does it teach or suggest the use of conventional refrigerants R-12, R-22, R-114 and R-502 were used at temperatures greater than 60°C (140°F). We note that there is no suggestion in the ’120 patent that a method of using a condenser at a temperature of 150°F is a novel or inventive aspect of the present invention. For example, the background of the invention and summary of the invention of the ’120 patent are silent as to the invention being directed to a heat transfer condenser capable of working at a higher Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 28 temperature than would have been conventional at the time of the invention. To the contrary, these sections are directed to heat transfer compositions (refrigerants) and “methods and systems which utilize the compositions of the present invention, including methods and systems for heat transfer.” ’120 patent, col. 3, ll. 32–54. Written descriptive support for a condenser operated at 150°F in the ’120 patent is limited to the discussion of testing the recited refrigerants for COP “using standard refrigeration cycle analysis techniques (see for example, R.C. Downing, FLUOROCARBON REFRIGERANTS HANDBOOK, Chapter 3, Prentice-Hall, 1988).” Id. at col. 11, ll. 28–34. Yet, the Examiner has provided insufficient evidence to suggest that operation of a condenser in a heat pump at 150°F was described or conventional in the art. However, the teachings of Magid14 were applied in the related reexamination cited at 2, supra, on appeal (Appeal 2015-006430). Magid is directed to the use of PAG as a lubricant for R134a in compression refrigeration systems as an alternative to mineral oils. Of relevance with respect to claims 7-9 and 19, Magid teaches that “[i]n a typical automotive air conditioning system, the temperatures at which the refrigerant is condensed originally will be about 50°–70°C. [122°–158° F] but may reach 90°C. [194°F] in high ambient temperature operation.” Magid, col. 4, ll. 55- 59. Thus, Magid is evidence that it was known in the art at the time of the invention to cool air using refrigeration system comprising a condenser that 14 U.S. Patent 4,755,316, issued July 5, 1988 to Hillel Magid et al. Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 29 is operated in a temperature range that includes about 150°F. Based on the teachings of Magid, operating a condenser at even higher temperatures was common in the art at the time of the invention. Accordingly, it would have been obvious to one of ordinary skill in the art at the time of the invention to cool air using an air conditioning equipment comprising a condenser, as taught by Inagaki, where the condenser is operated at temperatures between 122°F and 158° F as taught by Magid. Because Patent Owner argues claims 7-9 and 19 as a group, Patent Owner does not directly disputed that the additional limitations of claims 8, 9 and 19, respectively, do not affect patentability over the applied prior art. Accordingly, we reverse the Examiner’s rejections of claims 7–9 and 19 under 35 U.S.C. § 103(a) as obvious over Inagaki alone or further in view of admitted prior art, Thomas, or Bivens. We enter a new ground of rejection of claim 7 and 19 under 35 U.S.C. § 103(a) as obvious over Inagaki in view of Magid. We also enter a new ground of rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as obvious over Inagaki in view of admitted prior art, Thomas, or Bivens, and further in view of Magid. Claims 10–12, 58, and 59 Issues Patent Owner presents separate arguments with respect to claims 10– 12, 58, and 59. See PO App. Br. 25. Claims 10–12, 58, and 59 further recite that the lubricant is poly alkylene glycol (PAG) and the fluoroalkene is HFO-1234yf. Claims 10–12, 58, and 59 stand rejected under 35 U.S.C. Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 30 § 103(a) as being obvious over Inagaki in view of admitted prior art, Thomas, or Bivens. Patent Owner argues claims 10–12, 58, and 59 as a group, for which we select claim 10 as a representative claim. See PO App. Br. 25. The Examiner finds that “the ’120 patent describes that poly alkylene glycols and polyol esters are commonly used lubricants in refrigeration machinery with hydrofluorocarbon (HFC) refrigerants (col. 6, lines 13–17).” RAN 13–14. The Examiner finds that Thomas and Bivens describe the use of poly alkylene glycols and polyol esters along with hydrofluorocarbon refrigerants. RAN 16 (citing Thomas, col. 2, lines 55–65 and col. 6, lines 38–45) and RAN 19 (citing Bivens, col.1, lines 39–43). The Examiner determined that it would have been obvious to use these known alternative lubricants with the hydrofluorocarbon refrigerants of Inagaki in compression refrigeration systems. See RAN 14, 16, and 19. Patent Owner contends that the statements in the ’120 patent relied upon by the Examiner as an admission are directed towards using PAG and POE for “other uses,” namely for use with only “saturated compounds,” and that the statements in question “simply informs a person of skill in the art that a component of the invention (here PAGs and POEs) were commercially available or manufacturable.” PO App. Br. 28–29. Patent Owner further contends that Thomas and Bivens are only directed to saturated hydrofluorocarbons, and that there is no basis to conclude that the results would have been predictable with the particular unsaturated hydrofluorocarbons described in Inagaki. Id. at 29. Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 31 The issue with respect to claims 10–12, 58, and 59 is: Did the Examiner err in determining that a heat transfer composition comprising HFO-1234yf and PAG would have been obvious to one of ordinary skill in the art from the teachings of Inagaki and Bivens? Analysis Patent Owner’s arguments are not persuasive. While Thomas and Bivens are directed to saturated hydrofluorocarbons, a reason a skilled artisan would have combined Inagaki’s unsaturated HFO-based refrigerants can be found in Inagaki itself. Inagaki teaches that HFO-1234yf has good COP and freezing effect, is ozone friendly, and is compatible with lubricants. Any of these properties would have led the skilled artisan to use HFO-1234yf with known lubricants. Thomas and Bivens are only relied upon for demonstrating that PAG was a known lubricant for use in “air conditioning equipment,” as described in Inagaki. Thus, it is of no moment that Thomas and Bivens do not describe the use of PAG with unsaturated HFO-based refrigerants, because the combination of lubricants and unsaturated HFO-based refrigerants is described in Inagaki. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). Dr. Singh testifies that miscibility with respect to saturated HFC compounds would be unpredictable with respect to unsaturated HFO compounds, as taught by Inagaki, because a double bond has “a substantial impact on the properties and characteristics of those molecules, especially Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 32 compared to similar molecules which have no double bonds.” Singh Decl. ¶ 28. As discussed above, Inagaki provides evidence that HFO-1234yf is a good and ozone friendly refrigerant and can be used with a lubricant. The miscibility of HFO-1234yf with PAG is an inherent characteristic of HFO-1234yf, and the record provides sufficient evidence that the skilled artisan would have used HFO-1234yf with known lubricants, such as PAG. Patent Owner has not provided any evidence to the contrary. See PO App. Br. 25; Singh Decl. ¶ 31 (“[W]e have found that HFO-1234yf satisfies the miscibility requirement of the claims with certain lubricants.”). Moreover, Dr. Singh’s testimony that miscibility is unpredictable is not persuasive of non-obviousness. Thomas, Bivens, and statements in the ’120 patent support a finding that, generally, PAG and POE were used as a replacement lubricants with certain saturated HFC compounds that were known to be immiscible with mineral oil or alkylbenzene. See Thomas, col. 1, ll. 33-37 and 62-64; Bivens, col. 1, ll. 36-42; ’120 patent, col. 2, ll. 27-32 and col. 6, ll. 13-17; see also Magid, col. 4, l. 26 to col. 5, l. 41; Mahler,15 col. 1, ll. 39-45; Nimitz, col. 5, ll. 33-36; Singh Decl. ¶ 25. Thus, despite the unpredictable nature of miscibility, the art recognized that, for HFC compounds that were not miscible in mineral oil, alternative miscible lubricants were available in the art, namely PAG and POE. Thus, with routine testing, the skilled artisan would have had a reasonable expectation that Inagaki’s unsaturated HFO compounds were miscible either with mineral oils and alkylbenzenes or alternatively with PAG and POE. In re 15 U.S. Patent 6,991,744, issued January 31, 2006 to Walter Mahler et al. See Req. Res. Br. 16, Evidence App’x, Ex. 4. Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 33 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). Although there are no doubt differences between the properties of various hydrofluorocarbons as identified by Dr. Singh, including between saturated and unsaturated hydrofluorocarbons (e.g., reactivity (Singh Decl. ¶ 28)), Patent Owner has not provided persuasive evidence that the different characteristics (e.g., reactivity) would have undermined a reasonable expectation of success in combining the unsaturated HFO compounds described in Inagaki with known lubricants conventionally used with saturated HFC compounds. Accordingly, we affirm the Examiner’s rejection of claims 10–12, 58, and 59 under 35 U.S.C. § 103(a) as obvious over Inagaki in view of any of admitted prior art, Thomas, or Bivens. Claim 13 Issue Patent Owner presents separate arguments for claim 13. PO App. Br. 41. Claim 13 recites, inter alia, that a heat transfer composition comprising HFO-1234yf and PAG and that the refrigerant has “a capacity relative to HFC-134a of about 1, and a Coefficient of Performance (COP) relative to HFC-134a of about 1.” Claim 13 is rejected under 35 U.S.C. § 103(a) as being obvious over Inagaki in view of admitted prior art, Thomas, or Bivens. Patent Owner contends that “[t]he Examiner does not provide any rational for the position that Inagaki renders obvious a method of cooling air Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 34 in which the heat transfer composition achieves such a desirable combination of capacity and COP relative to HFC-134a.” PO App. Br. 31. The issue with respect to claim 13 is: Did the Examiner err in determining that a heat transfer composition having a refrigerant with a capacity and COP about the same as HFC-134a would have been obvious to one of ordinary skill in the art from the teachings of Inagaki and admitted prior art, Thomas or Bivens? Analysis Patent Owner’s arguments are not persuasive. The COP and capacity relative to HFC-134a would be one of the inherent properties referred to by the Requester. See Req. Res. Br. 5. HFO-1234yf, which is expressly described in Inagaki, inherently has a capacity and COP equivalent to that of HFC-134a, as admitted by the Patent Owner. See Singh Decl. ¶ 32; ’120 patent, Table 1. It is of no moment that the similarity between these two refrigerants with respect to COP and capacity had not been recognized by the prior art because the prior art fully recognized the good COP, freezing effect, and ozone friendliness of HFO-1234yf. See Inagaki, Embodiment 5. “[M]ere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not distinguish a claim drawn to those things from the prior art.” In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981); PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014); In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009); Ansonia Brass & Copper Co. v. Elec. Supply Co., 144 U.S. 11, 12 S.Ct. 601, 36 L.Ed. 327 (1892) (“[N]othing is better settled in this court than that the application Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 35 of an old process to a new and analogous purpose does not involve invention, even if the new result had not before been contemplated.”); see also Skoner, 517 F.2d at 950–51. Accordingly, we affirm the Examiner’s rejection of claim 13 under 35 U.S.C. § 103(a) as obvious over Inagaki in view of admitted prior art, Thomas or Bivens. Claims 22–31, 33, 34, 42–54, and 60–67 Issue Patent Owner presents separate arguments for claims 22–31, 33, 34, 42–54, and 60–67. See PO App. Br. 32. These claims recite that the refrigerant further comprises one or more of HFC-32, HFC-152a, propane, hexane, or octane. Moreover, these claims depend from either claim 1, which recites that the refrigerant “has a Global Warming Potential (GWP) of not greater than about 75” in the case of claims 22–31, 33, 34, and 42–54, or claim 14, which recites that the refrigerant “has a Global Warming Potential (GWP) of not greater than about 150” in the case of claims 60, 61, and 67. Claims 22, 42–45, 60, 61, and 67 stand rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being obvious over Inagaki alone. Claims 23–31, 33, 34, 46–54, and 62–66 stand rejected under 35 U.S.C. § 103(a) as being obvious over Inagaki in view of admitted prior art, Thomas, or Bivens. Patent Owner argues claims 22–31, 33, 34, 42–54, and 60–67 as a group, for which we select claim 22 as a representative claim. See PO App. Br. 32–34. Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 36 Patent Owner contends that Inagaki does not support a conclusion that a composition using a refrigerant with a GWP of less than 75 would have been obvious because (1) there is no express disclosure of this requirement, (2) not all heat transfer media within Inagaki necessarily produce a GWP as low as required by the claims, and thus a finding of inherency is in error, and (3) Inagaki teaches improving solubility by adding saturated HFCs or HCFCs that have a GWP “at least ten times (10 X) greater than the GWPs of the compounds within the scope of the present claims”. PO App. Br. 32– 33 (citing Singh Decl. ¶ 30). Patent Owner further contends that, because some of the compounds taught by Inagaki are flammable, namely HFO-1243zf, Inagaki is not directed towards refrigerants for “safety-sensitive” applications, such as cooling air. Id. at 33–34. Patent Owner further contends that Inagaki does not teach which of its compounds would be useful for cooling air, i.e., are not flammable. Id. The issue with respect to claims 22–31, 33, 34, 42–54, and 60–67 is: Did the Examiner err in determining that one of ordinary skill in the art would have formulated a heat transfer composition having a refrigerant comprising HFC-32, HFC-152a, propane, hexane, or oxtane, and further maintain the low GWP property recited in the claims from the teachings of Inagaki, particularly in light of the further teaching of flammable refrigerants in Inagaki? Analysis Because Inagaki expressly teaches the use of HFO-1234yf as a refrigerant, the use thereof, and of all the properties associated therewith, Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 37 would have been obvious, including the refrigerant’s low GWP.16 See Atlas Powder, 190 F.3d at 1347; see also Corr Decl. ¶ 38. Inagaki further expressly teaches that HFO-1234yf can be combined with other known refrigerants including “R-32 (CH2F2),” “R-152 (CHF2CH3),” and “R-152a.” Inagaki 2 and 3. Inagaki recognizes that because HFO-1234yf contains “neither chlorine atm[sic] nor bromine atom, [it has] no hazardous nature to destruct the ozone layer.” Inagaki 2. Thus, Inagaki would have instructed the skilled artisan to take advantage of the environmentally friendly aspects of the refrigerants described by Inagaki. Although it would have been obvious to the skilled artisan to have combined the low GWP HFO-1234yf refrigerant with other known refrigerants that have substantially higher GWP, the skilled artisan would have a reason and the skill to optimize the concentrations of each material to take advantage of the environmentally friendly aspects of Inagaki’s refrigerants, particularly in light of national and international regulations, that limit the use of refrigerants with a high GWP, such as the Kyoto Protocol. See Singh Decl. ¶35 and Exhibit M; Corr Decl. ¶ 48. Inagaki evinces that at the time of the invention HFO-1234ze and HFO-1234yf would have been known to those of skill in the art to be refrigerants with good COP and good freezing effect with no destructive effects on the ozone layer. We find it of no moment that Inagaki also 16 There is evidence of record that HFO-1234yf has a GWP of 4. See Singh Decl. ¶ 40; Req. Res. Br. 12. See also RAN 24 (Examiner reasoned that identical fluoroalkene compounds would have the same low GWP as claimed). Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 38 discloses other refrigerants that are less desirable due to toxicity or flammability. See Merck, 874 F.2d at 807. As discussed above with respect to toxicity, HFO-1234yf also exhibits the desirable property of low flammability. Thus, despite the fact that HFO-1234yf, a known refrigerant, possessed attributes (e.g., low flammability) that were yet to be recognized in the art, the compound would have been recognized as suitable for use in air conditioning equipment, an application for refrigerants which is also taught by Inagaki.17 The properties of the particular refrigerants are inherent to the refrigerant, whether specifically disclosed or not. Such inherent properties of refrigerants include flammability. One cannot obtain patentability based on these inherent properties of an otherwise known refrigerant. Even though those in the art may not have recognized that HFO-1234yf was non- flammable, it nonetheless is inherently so. The new realization alone does not render that prior art patentable. Also as discussed above, we are not persuaded that any of the cited potential difficulties or problems associated with the use of HFO-1234yf, such as flammability, would have deterred an ordinary artisan from using HFO-1234yf as a refrigerant in known refrigerant applications, as evidenced by Inagaki. In other words, based on Inagaki, an ordinary artisan would have had reason to predict that Inagaki’s refrigerants would have worked as 17 Moreover, there is evidence of record to suggest that the particular issues with respect to flammability were known in the art at the time of the invention and the testing of prospective refrigerants for these properties was routine in the art at the time of the invention. See Singh Decl. ¶ 36 (citing Exhibit N to the Singh Decl., describing flammability as one of the tradeoffs of selecting refrigerants). Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 39 intended, i.e., causing heat to be transferred from the air being cooled to the heat transfer composition by vaporizing the refrigerant, as recited in the claims. Even if HFO-1234yf had been expected to be flammable, the skilled artisan would have recognized the tradeoff of flammability for the benefits of good cooling with little effect on the ozone and would have had reason to use Inagaki’s refrigerants in air conditioning equipment accordingly, as taught by Inagaki. See Singh Decl. ¶ 36 (discussing Exhibit N to the Singh Decl., which is a 1997 article entitled “Trade-Offs in Refrigerant Selections.”). The skilled artisan would have optimized the concentrations of HFO-1234yf and other known refrigerants because concern for flammability was known in the art at the time of the invention, as discussed above. Accordingly, we affirm the Examiner’s rejection of claims 22–31, 33, 34, 42–54, and 60–67 under 35 U.S.C. § 103(a) as obvious over Inagaki alone or further in combination with admitted prior art, Thomas, or Bivens. Claims 32 and 41 Issue Patent Owner presents separate but substantially identical arguments for claims 32 and 41. PO App. Br. 31 and 34. Claims 32 and 41 specifically recite that the “heat transfer composition comprises at least about 50% by weight trans-1,3,3,3-tetrafluoropropene (transHFO-1234ze).” Claims 32 and 41 are rejected under 35 U.S.C. § 103(a) as being obvious over Inagaki in view of admitted prior art, Thomas, or Bivens. Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 40 The Examiner found that Inagaki’s disclosure of HFO-1234ze would necessarily include both transHFO-1234ze and cisHFO-1234ze. RAN 14. The Examiner further found that the boiling point of the HFO-1234ze disclosed by Inagaki indicates that the composition is predominately, if not entirely, the trans-isomer. It is well known in the art that the boiling point of the cisHFO-1234ze is about 9°C and the boiling point of the transHFO-1234ze is about -19°C. Inagaki discloses that the HFO-1234ze has a boiling point of -16°C (page 2). Accordingly, Inagaki clearly indicates that the HFO-1234ze is predominately trans-isomer. RAN 15, 18, and 21. Patent Owner contends that the Examiner “cites no direct evidence in support” of the reasoning quoted above. PO App. Br. 31. Patent Owner further contends that Inagaki is silent as to any differences between the trans- and cis-isomers of HFO-1234ze or any preference for the trans-isomer over the cis-isomer. Id. at 32. The issue with respect to claims 32 and 41 is: Did the Examiner err in determining that a heat transfer composition comprising at least 50% transHFO-1234ze would have been obvious to one of ordinary skill in the art from the teachings of Inagaki? Analysis While we agree with Patent Owner that the Examiner did not cite to any support for his findings regarding the boiling points of cis- and trans- isomers of HFO-1234ze, Patent Owner also does not dispute these findings, Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 41 and rather concurs that “the actual boiling point of trans-HFO-1234ze is -19°C.” PO App. Br. 32.18 Inagaki does not describe expressly the trans-isomer, as recited in the claims. The record before us, however, indicates that an ordinary artisan would have understood that Embodiment II, constituted a mixture of the cis- and trans-isomers. We agree with the Examiner that the boiling point of the stated compound would have been understood as evidence that the HFO-1234ze product discussed therein included substantially more trans- isomer than the cis-isomer because the recorded boiling point was substantially closer to the trans-isomer boiling point than to the cis-isomer boiling point. Thus, we find that that Inagaki inherently discloses a relevant HFO isomer mixture, i.e., Embodiment II comprising more than 50% trans- HFO-1234ze, as recited in the claims. Accordingly, the burden properly shifted to Patent Owner to demonstrate error in the Examiner’s sound reasoning. No such demonstration was provided by Patent Owner. Accordingly, we affirm the Examiner’s rejection of claims 32 and 41 under 35 U.S.C. § 103(a) as obvious over Inagaki in view of admitted prior art, Thomas, or Bivens. Claim 68 Issue Patent Owner presents separate arguments for claim 68. PO App. Br. 34. Claim 68 specifically recites that the “fluoroalkene consists essentially 18 Moreover, these boiling points are particularly recited in Patent Owner’s related patents, such as the ’451 patent, the reexamination of which is concurrently decided herewith. See ’451 patent, col. 5, ll. 4–19. Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 42 of trans-1,3,3,3-tetrafluoropropene (transHFO-1234ze).” Claim 68 is rejected under 35 U.S.C. § 103(a) as being obvious over Inagaki in view of admitted prior art, Thomas, or Bivens. The Examiner found that Inagaki’s disclosure of HFO-1234ze would necessarily include both transHFO-1234ze and cisHFO-1234ze. RAN 14. The Examiner further determined that “there is no evidence on the record to show that the presence of other compounds including the cisHFO-1234ze in the heat transfer composition as disclosed in Inagaki would materially affect the basic and novel characteristic of the claimed invention (i.e. providing heat transfer function).” RAN 15, 17–18, and 20–21. Patent Owner contends that the Examiner has ignored evidence in the ’120 patent that the trans-isomer has a capacity relative to HFO-134a that is approximately double that of the cis-isomer, and that an “efficient and effective heat transfer performance” is another novel feature of the ’120 patent. PO App. Br. 35. The issue with respect to claim 68 is: Did the Examiner err in determining that a heat transfer composition comprising cisHFO-1234ze in addition to transHFO-1234ze would have affected the basic and novel characteristics of the claimed invention, such that the phrase “consisting essentially of” excludes a refrigerant comprising both isomers? Analysis Patent Owner’s arguments are not persuasive. While the ’120 patent identifies differences between the capacities of the trans- and cis-isomers of HFO-1234ze, the ’120 patent does not exclude either isomer from being an Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 43 effective and efficient refrigerant. To the contrary, the ’120 patent describes the refrigerant HFO-1234ze generically throughout the patent, which suggests a refrigerant comprising both isomers, and that the cis-isomer is also a “preferred compound.” See ’120 patent, col. 4, ll. 53–54, col. 11, ll. 55–58, col. 11, l. 46, col. 12, ll. 50 and 52. Thus, Patent Owner has not shown that the presence of a cis-isomer, to the extent the cis-isomer is present in the generic disclosure of Inagaki or in the examples, would have materially affected the basic and novel characteristics of the invention and thus would have been excluded by the “consisting essentially of” language in claim 68. Accordingly, we affirm the Examiner’s rejection of claim 68 under 35 U.S.C. § 103(a) as obvious over Inagaki in view of admitted prior art, Thomas, or Bivens. 35 U.S.C. § 112 2nd PARAGRAPH REJECTION Claims 22–41 and 45–54 Discussion The Examiner found that claims 22 and 35, and the claims that depend therefrom, are indefinite due to a lack of antecedent basis for the limitation “heat transfer method of claim 1” when claim 1 is directed to a “method of cooling air” and not a “heat transfer method.” RAN 6–7. Similarly, the Examiner found that claim 45’s recitation of “heat transfer method of claim 7” is indefinite because claim 7 depends from claim 1 and, as such, is also directed to a “method of cooling air.” RAN 7. Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 44 Patent Owner contends that “a person skilled in the art would certainly understand that the method of cooling air of claim 1 is the ‘heat transfer method’ being referred to in each of these claims” and that no more is required under 35 U.S.C. § 112. PO App. Br. 36. 35 U.S.C. § 112, second paragraph, “puts the burden of precise claim drafting squarely on the applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (“The problem in this case is that the appellants failed to make their intended meaning explicitly clear.”). However, “[t]he test for definiteness is whether one skilled in the art would understand the bounds of the claim when read in light of the specification. If the claims read in light of the specification reasonably apprise those skilled in the art of the scope of the invention, § 112 demands no more.” Miles Lab., Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993) (internal citations omitted); see Geneva Pharms., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1384 (Fed. Cir. 2003) (“[a] claim is indefinite if its legal scope is not clear enough that a person of ordinary skill in the art could determine whether a particular [product or method] infringes or not.”). Further, “[w]hether this claim, despite lack of explicit antecedent basis . . . nonetheless has a reasonably ascertainable meaning must be decided in context.” Energizer Holdings, Inc. v. Intl. Trade Com’n., 435 F.3d 1366, 1371 (Fed. Cir. 2006). An antecedent basis can be present by implication. See Cross Medical Products v. Medtronic Sofamor Danek, 424 F.3d 1293, 1319 (Fed. Cir. 2005); Slimfold Manufacturing Co. v. Kinkead Industries, Inc., 810 F.2d 1113, 1117 (Fed. Cir. 1987) (noting this principle in dicta). Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 45 We do not find the language of claim 68 to be unclear or to render the scope of claim 68 indefinite. Although the ’120 patent describes several “heat transfer” methods, the dependency upon claim 1 limits the scope of heat transfer methods to only those for cooling air. Thus, the scope of the claim is clear on its face when read in light of the claims from which it depends. We fail to see how a proper interpretation of the phrase “heat transfer method of claim 1” could reasonably include heat transfer methods from the ’120 patent that fall outside of the scope clearly recited in claim 1, namely methods for cooling air. Accordingly, we reverse the Examiner’s rejection of claims 22–41 and 45–54 as failing to comply with 35 U.S.C. § 112, second paragraph. DECISION In sum, we affirm the Examiner’s decision to reject: 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 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, Thomas, or Bivens. We reverse the following Examiner’s rejections: Claims 1–7, 14–19, 22, 35, 42–45, 55, 60, 61, and 67 under 35 U.S.C. § 102(b) as anticipated by Inagaki; Claims 7–9 and 19 under 35 U.S.C. § 103(a) as obvious over Inagaki alone or further in view of admitted prior art, Thomas, or Bivens; and Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 46 Claims 22–41 and 45–54 under 35 U.S.C. § 112, 2nd paragraph, as being indefinite for a lack of proper antecedent basis. We enter the following new grounds of rejection: Claim 7 and 19 under 35 U.S.C. § 103(a) as obvious over Inagaki in view of Magid. Claims 8 and 9 under 35 U.S.C. § 103(a) as obvious over Inagaki in view of admitted prior art, Thomas, or Bivens, and further in view of Magid. 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: Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 47 (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 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 48 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). AFFIRMED-IN-PART; NEW GROUNDS OF REJECTION Appeal 2015-000616 Reexamination Control 95/001,783 Patent US 8,033,120 B2 49 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 Copy with citationCopy as parenthetical citation