Stephen Anthony. Kujak et al.

Patent Trials and Appeals Board

Jun 18, 2020

2019002479 (P.T.A.B. Jun. 18, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/777,337 09/15/2015 Stephen Anthony KUJAK 20424.0040USWO 3462
136306 7590 06/18/2020
Trane - HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
Minneapolis, MN 55402-1683
EXAMINER
OLADAPO, TAIWO
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
06/18/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptomail@hsml.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN ANTHONY KUJAK and JULIE ANN MAJURIN
Appeal 2019-002479
Application 14/777,337
Technology Center 1700
Before CATHERINE Q. TIMM, BRIAN D. RANGE, and LILAN REN,
Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 4–6, 10–19, and 21–25. See Final Act.
1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Trane
International, Inc. Appeal Br. 1.
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Application 14/777,337
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CLAIMED SUBJECT MATTER
The claims are directed to a method of treating a lubricant
composition of a heating, ventilation, and air conditioning (HVAC) system
(see, e.g., claim 4) and a method of servicing a HVAC system (see, e.g.,
claim 17). According to the Specification, the refrigerant of the HVAC
system often includes a lubricant to lubricate load bearing surface(s), such as
the bearings of a compressor. Spec. 1:12–21. Appellant adds a functional
composition to the lubricant to prevent or reduce lubricant breakdown and
prevent or reduce material deposits within the system. Spec. 1:24–2:4. The
composition contains about 5 to 10% functional composition by weight of
the lubricant. See, e.g., claims 4 and 17. The functional composition includes
from about 10% to about 20% by weight of an ester of a hydroxycarboxylic
acid and from about 0.001% to about 0.1% by weight benzotriazole. See,
e.g., claims 4 and 17. Claim 4, reproduced below with the limitations most at
issue highlighted, is illustrative of the claimed subject matter:
4. A method of treating a lubricant composition of a
heating, ventilation, and air conditioning (HVAC) system,
comprising:
adding a functional composition to a refrigerant that
includes the lubricant in the HVAC system, the functional
composition being from about 5 to 10% by weight of the
lubricant,
wherein the functional composition includes:
from about 10% to about 20% by weight of a
hydroxycarboxylic acid ester and
from about 0.001 % to about 0.1 % by weight of
benzotriazole; and
a base oil lubricant different from the lubricant being
treated, the base oil lubricant is at least one selected from the
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Application 14/777,337
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group consisting of alkylbenzene, an alkylated naphthenic, a
polyalkylene glycol, a polyvinylether, a polyalphaolefin,
mineral oil, and a polyol ester, and one or more of:
interfering with formation of metal carboxylates on
a load bearing surface;
coating the load bearing surface so as to reduce
deposition of metal carboxylates on the load bearing
surface;
reducing a catalytic effect of the metal
carboxylates; and
coating an expansion device or heat transfer
surface of the HVAC system so as to prevent deposition
of the lubricant breakdown.
Appeal Br. 18 (Claims Appendix) (emphasis and formatting added).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Tagawa US 2007/0275865 A1 Nov. 29, 2007
Thomas US 2008/0026977 A1 Jan. 31, 2008
Wei US 2012/0161065 A1 June 28, 2012

REJECTIONS
The Examiner maintains the following rejections:
Claims 4–6, 10–16, 18, and 22–25 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Wei in view of Tagawa.2

2 The Examiner lists claims 7–9 as rejected, but these claims have been
canceled.
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Application 14/777,337
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Claims 17, 19, and 21 are rejected under pre-AIA35 U.S.C. § 103(a)
as being unpatentable over Wei in view of Tagawa and as evidenced by, or,
further in view of, Thomas.
OPINION

The Rejection over Wei in view of Tagawa
Turning first to the rejection of claims 4–16, 18, and 22–25 as obvious
over Wei in view of Tagawa, we note that Appellant confines the arguments
to claims 4 and 22. Appeal Br. 5–11. We select claim 4 as representative for
the non-separately argued claims. We address the issues raised against the
rejection of claim 4 and claim 22, separately, below.
Claim 4
Considering the Examiner’s rejection of claim 4 and Appellant’s
arguments against it, we fashion the issue as: Has Appellant identified a
reversible error in the Examiner’s finding of a suggestion within Tagawa,
and based on the knowledge within the prior art, of using benzotriazole in
Wei’s refrigeration oil as an additive component in the concentration
required by claim 4?
Appellant has not identified such an error.
Wei teaches a refrigeration oil composition for HVAC systems that
includes an ester of hydroxycarboxylic acid and base oil such as mineral oil.
Wei ¶¶ 3, 9. Wei discloses adding “any commonly used refrigeration system
additives known in the art to enhance lubricity and/or system stability.” Wei
¶ 26. Wei lists anti-wear agents and metal surface deactivators as example
additives. Id. As to concentration, Wei states:
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Application 14/777,337
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Typically, these additives are present only in small amounts
relative to the overall lubricant composition. However, the
additives may be present at any suitable concentration. In an
embodiment, the additive components are used at
concentrations of from less than about 0.1% by weight to as
much as about 3% by weight of each additive.
Id.
There is no dispute that Wei fails to disclose selecting benzotriazole
as one of the additives. Compare Final Act. 5, with Appeal Br. 6. Tagawa,
however, teaches adding benzotriazole as an additive to a refrigeration oil.
Specifically, Tagawa discloses adding benzotriazole to enhance the anti-
wear and friction properties of a refrigeration oil that has a mineral oil base.
Tagawa ¶¶ 1, 8, 59. Tagawa provides a reason to use benzotriazole as an
additive component in the refrigeration oil of Wei to enhance its anti-wear
and friction properties.
As to concentration, Tagawa states that benzotriazole “may be
contained in any amount desired,” but further states “the amount is
preferably not less than 0.001% by mass, and more preferably not less than
0.005% by mass, with respect to the total amount of the composition.”
Tagawa ¶ 65. This is the range, according to Tagawa, that will provide the
expected enhanced anti-wear and friction properties. Id.
Appellant contends that claim 4 requires the benzotriazole
concentration be about 0.00005% to about 0.01% by weight of the lubricant
and Wei and Tagawa, or their combination, do not teach or suggest using a
concentration in this range. Appeal Br. 8–10.
Appellant’s argument is not persuasive. Tagawa’s range of 0.001% to
0.005% overlaps the 0.00005% to about 0.01% range Appellant contends is
required by claim 4. This overlap creates a presumption of obviousness. E.I.
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DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1006 (Fed. Cir.
2018).
Appellant contends that the ordinary artisan would not have selected
the concentration range of Tagawa because Wei teaches a higher range and
“there is no teaching or suggestion in Wei that would indicate that
concentrations less than about 0.1% by weight are even functional.” Appeal
Br. 9. This ignores the fact that Wei’s disclosure is only generically
discussing additive components. It also ignores the broader suggestion of
using the additive components “at any suitable concentration.” Wei ¶ 26.
Further, it ignores the skill of the ordinary artisan. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a
person of ordinary creativity, not an automaton.”); In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994) (“[A] prior art reference must be ‘considered
together with the knowledge of one of ordinary skill in the pertinent art.’”);
In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the
part of the artisan, rather than the lack thereof). The ordinary artisan would
have reasonably expected benzotriazole to provide its known anti-wear and
friction properties in Wei’s refrigeration oil and would have performed
routine experimentation to determine the workable or optimal concentration
to use in Wei’s formulation. Tagawa provides evidence that concentrations
within the range of the claim would have been expected to achieve the
desired anti-wear and friction result.
Appellant contends that Wei does not contemplate obtaining the
benefits Appellant realizes. Appeal Br. 7; Reply Br. 4. This argument is not
persuasive because “the motivation in the prior art to combine the references
does not have to be identical to that of the applicant to establish
obviousness.” In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). And it is
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Application 14/777,337
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error to look “only to the problem the patentee was trying to solve.” KSR,
550 U.S. at 420. Tagawa provides a reason to use benzotriazole as an
additive component in Wei’s refrigeration oil to obtain anti-wear and friction
properties and suggests that concentrations within the range of claim 4 will
provide the expected property.
The Examiner finds that benzotriazole is a well-known conventional
additive for refrigeration oils and was known as a metal deactivator. Final
Act. 5; Ans. 8.3 Appellant does not challenge these findings. Reply Br. 4–6.
Thus, we accept the uncontested findings as fact. Ex parte Frye, 94 USPQ2d
1072, 1075 (Fed. Cir. 2011) (BPAI 2010) (precedential), cited with approval
in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections.”); MPEP § 2144.03(C) (“To adequately traverse [a
finding based on what was well-known in the art], an applicant must
specifically point out the supposed errors in the examiner’s action, which
would include stating why the noticed fact is not considered to be common
knowledge or well-known in the art.” (citing 37 C.F.R. § 1.111(b) and In re
Chevenard, 139 F.2d 711, 713 (CCPA 1943))).
Thus, a preponderance of the evidence on this appeal record supports
the Examiner’s obviousness analysis based on the known use of
benzotriazole as a metal deactivator as well as an anti-wear and friction
property additive.

3 Citations to “Ans.” are to the Subsequent Examiner’s Answer dated
December 10, 2018.
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Claim 22
Claim 22 depends from claim 4 and narrows the range of
benzotriazole to from about 0.001% to about 0.05% by weight.
According to Appellant, the benzotriazole range recited in claim 22
requires the lubricant composition contain from about 0.00005% to about
0.005% by weight benzotriazole. Appeal Br. 11. Appellant contends that
because this range overlaps even less with Tagawa’s range of 0.001% to
0.005%, the Examiner has not established a prima facie case of obviousness.
Id.
We are not persuaded. The fact that there is less of an overlap does
not render the claimed method non-obvious. Even a range that merely
touches the range of the claim can render the claim obvious. In re Geisler,
116 F.3d 1465, 1469 (Fed. Cir. 1997) (citing In re Malagari, 499 F.2d 1297,
1303 (CCPA 1974)). A preponderance of the evidence tends to show that the
ordinary artisan would have arrived at a concentration within the
overlapping portion of the range recited in claim 22.

The rejection over Wei, Tagawa, and Thomas
The Examiner rejected claims 17, 19, and 21 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Wei in view of Tagawa and as
evidenced by, or, further in view of, Thomas. Final Act. 7. Appellant argues
claim 17 under a separate heading. Appeal Br. 11. But Appellant’s
arguments parallel those addressed above and do not address the Examiner’s
findings or conclusions with respect to Thomas. Thus, Appellant has not
identified a reversible error in the rejection of claim 17.
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CONCLUSION
The Examiner’s decision to reject claims 4–6, 10–19, and 21–25 is
AFFIRMED.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
4–16, 18,
22–25
103(a) Wei, Tagawa 4–6, 10–16,
18, 22–25

17, 19, 21 103(a) Wei, Tagawa,
Thomas
17, 19, 21
Overall
Outcome
4–6, 10–19,
21–25

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED