Ex Parte 8065882 et al

Patent Trial and Appeal Board

Mar 21, 2019

95002030 (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.
95/002,030 08/20/2012 8065882 9404.21591-REX 2300
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 2017-011753
Reexamination Control 95/002,030
Patent US 8,065,882 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 8,065,882 B2 issued on November 29, 2011 to Rajiv R. Singh,
et al. (hereinafter “the ’882 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 claim limitations which would exclude the
inclusion of certain compounds.
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. 33.) 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, our 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 31–32; see 41.77(f) Decision 21–23.) 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 31–32.) The teaching in Inagaki
to use HFO-1234yf ((F3C)(F)C=CH2) with “cooling machine oils”
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(Inagaki 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 35, 44, 45, 78, 81, and 125 recite “said heat transfer
composition has one liquid phase at at least one temperature between about
−50°C and +70°C.” We use the term “miscible” as a shorthand for this
limitation.
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 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

2 The alternative English translation of record, see Singh Decl. (executed
April 30, 2012), Exhibit D, uses the terms “refrigeration oils” and
“lubricating oils” (id. at 6) for these two terms, respectively.
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the properties of miscibility and stability, which were properties of the
purportedly obvious combination and not merely properties of the
refrigerant. 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
Decision 34–35, citing, e.g., Bivens, col. 1, ll. 36–42; Magid, col. 4, 1. 26 to
col. 5, 1. 41; Mahler, col. 1, ll. 39–45; Nimitz, col. 5, ll. 33–36.3)
In this regard, Magid and Bivens support a finding that, generally,
PAG and POE were used as replacement lubricants with certain saturated
relatively polar 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; 2nd Corr Decl. ¶ 21; Corr Dep. 77:14–19.) 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 be miscible
with PAG and POE, particularly in light of Inagaki’s teaching of

3 US Patent 5,611,210, issued March 18, 1997 to Jonathan S. Nimitz et al.
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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 Omure4
provided evidence that the combination of an unsaturated HFO compound
and PAG had “‘superior intersolubility.’” (41.77(f) Decision 21–22, Omure,
¶ 14.) We also pointed out that the ’882 Patent itself does not describe any
particular criticality to the use of PAG lubricant with HFO refrigerants, but
rather teaches combining with any “[c]ommonly used refrigeration
lubricant,” including mineral oil and akylbenzene as well as POEs and
PAGs. (41.77(f) Decision 22, citing ’882 Patent col. 6, ll. 54–60, col. 14, l.
40 – col. 15, l. 6.) The ’882 Patent also does not attribute any particular
unexpected or surprising result to producing miscible combinations of PAG
with the HFO refrigerants described therein.
The Chambers 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.,
Chambers Decl. ¶¶ 6, 8–14.) However, such a concern is not supported by
the prior art or even the ’882 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.

4 JP H05-85970, published April 6, 1993, naming Omure, et al. as inventors
(“Omure”).
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We are therefore not persuaded that the miscibility requirement of
claims 35, 44, 45, 78, 81, and 125 would have been unexpected considering
the evidence of record as a whole.

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 8–11.)
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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, 15–16.) In particular, we pointed to evidence in the prior art that
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 15, 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 14–
17.)
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 35
In the Request, Patent Owner argues that one point the Board made
with respect to claims 45 and 46 is inapplicable to claim 35, and thus
requires reconsideration. (Request 11.) 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
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HFC refrigerants, the First Decision noted that the claims of the ’882 Patent
use open “comprising” transitional language, and as a result, do not exclude
the presence of other HFC material. (Request 11, quoting First Decision
36.) Patent Owner argues that because claim 35, “contains a GWP
limitation which will exclude many other ‘HFC materials’” one of ordinary
skill in the art would not have had an expectation that this particular
refrigerant/lubricant combination would meet all of the limitations as
required by claim 35. (Request 11.)
Claim 35 recites that the refrigerant has “a Global Warming Potential
(GWP) of not greater than about 75.” Claim 35 also recites “said refrigerant
comprising from about 5% by weight to about 99% by weight of 1,1,1,2-
tetrafluoropropene (HFO-1234yf).” Patent Owner has not sufficiently
explained how statements made in connection with claims 45 and 46 require
consideration of the rationale set forth in the First Decision regarding one of
ordinary skill in the art optimizing GWP for claim 35 when HFO-1234yf is
combined with other known refrigerants that have substantially higher GWP.
(First Decision 40).
Thus, we do not agree with Patent Owner that we misapprehended or
overlooked the application of prior art to claim 35. 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 35. Accordingly, we decline to
revise our Decision with respect to claim 35.

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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 13, 15, 19–
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
refrigerant at 150°F is an inherent property of the refrigerant. (First
Decision 24; 41.77(f) Decision 9.)
Regarding the limitations in the claims that the fluoroalkene
refrigerant “has no substantial acute toxicity” (claims 1, 33, 35, 125), we
clarify that the property of acute toxicity is recited in the claims as a
property of the particular fluoroalkene refrigerant. Initially, we observe that
the term “substantial acute toxicity” is only mentioned in originally issued
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claim 1, where it is expressly recited as a property of the fluoroalkene. (’882
Patent, col. 17, l. 56.) Claims 33, 35, and 125 similarly recite this property
as belonging to the fluoroalkene refrigerant. Indeed, the ’882 Patent
discusses toxicity only in conjunction with the refrigerant itself. (’882
Patent, col. 4, ll. 19–54.)
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,
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
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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 ’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, 150, or 1000
(claims 16, 17, 35, 52, 79, 82), we clarify that the property of GWP is
inherent to the particular refrigerant. (See First Decision 39–41, n.14.) 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 40.)
Regarding flammability, although the record suggests that
flammability may be an issue of concern when the refrigerant is used for the
specific purpose of automobile air conditioning systems, we do not view
such concerns as determinative of whether one of ordinary skill would have
had a reasonable expectation of success in employing the refrigerants of
Inagaki in automobile air conditioning systems, but rather an issue of
acceptable tradeoffs of a particular refrigerant. (First Decision 14–15;
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41.77(f) Decision 18.) Moreover, as the Examiner set forth in the RAN, the
prior art had known techniques for dealing with potential flammability
issues in automobile air conditioning systems. (RAN 13–14, citing the use
of flame suppression agents in Nimitz, col. 9, ll. 47–55.)

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 15) as well as providing evidence
of a reasonable expectation of success in combining PAG lubricants with
HFOs. (41.77(f) Decision, 17, 21–22.) Although we realize that some
independent claims do not recite a lubricant (claims 33, 36, 39, 47), and
some claims (claims 1, 40, 50), 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 independent and dependent claims either
expressly recite PAG lubricants or depend from claims reciting PAG
lubricants (claims 14, 15, 34, 35, 41–46, 49, 51, 63, 69, 125, 127), 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
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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 1–9, 11, 12, 14–17, 21–25, 28, 30–46, 50, 53–59, 61–63, 65–
69, 76–79, 81, 82, 125, and 127 under 35 U.S.C. § 103(a) as unpatentable
over Inagaki,5 or Inagaki in view of Palinchak,6 in view of Omure either
alone or further in view of the additional prior art cited by the Examiner (see
First Decision 47);
Claims 10, 47, 48, and 86 under 35 U.S.C. § 103(a) as unpatentable
over Inagaki, or Inagaki in view of Palinchak, in view of Omure, and further
in view of Magid7 (see First Decision 47; 41.77(f) Decision 8); and
Claims 49, 51, and 52 under 35 U.S.C. § 103(a) as being unpatentable
over Inagaki, or Inagaki and Palinchak, in view of Omure, further in
combination with Bivens8 and Magid (see First Decision 47; 41.77(f)
Decision 8).
Thus, 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

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 4,842,024, issued June 27, 1989 to Stephen Palinchak.
7 US Patent 4,755,316, issued July 5, 1988 to Hillel Magid et al. The
teachings of Magid were applied in the related reexamination cited at 2,
supra, on appeal (Appeal 2015-006430), and Magid is of record in the
present reexamination.
8 US Patent 6,783,691 B1, issued August 31, 2004 to Donald Bernard
Bivens et al.
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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:
(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. . . .
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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.
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
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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)

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

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