Ex Parte 7279451 et al

Patent Trial and Appeal Board

Feb 28, 2017

95000576 (P.T.A.B. Feb. 28, 2017)

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.
95/000,576 10/05/2010 7279451 9404.21383-REX 7075
116637 7590 02/28/2017
HONEYWELL/FOX/BANNER
Patent Services
115 Tabor Road - PO Box 377
MORRIS PLAINS, NJ 07950
EXAMINER
JOHNSON, JERRY D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
02/28/2017 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 2015-000615
Reexamination Control 95/000,576
Patent US 7,279,451 B21
Technology Center 3900
____________

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

GUEST, Administrative Patent Judge.

DECISION ON REHEARING

1 US Patent 7,279,451 B2 issued on October 9, 2007 to Rajiv R. Singh, et al.
(“the ’451 patent”).
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On May 2, 2016, Patent Owner Honeywell International Inc. (“Patent
Owner”) timely requested Rehearing under 37 C.F.R. § 41.79 (“Request”) of
our Board Decision mailed March 30, 2016 (“Decision”). Third Party
Requester Mexichem Amanco Holding S.A. de C.V., (“Requester”)
submitted timely comments under 37 C.F.R. § 41.79(c) on Patent Owner’s
Request for Rehearing on June 2, 2016 (“Comments”).
Requests for rehearing must comply with 37 C.F.R. § 41.79(b)(1)
which specifies in pertinent part that “[t]he request for rehearing must state
with particularity the points believed to have been misapprehended or
overlooked in rendering the Board’s opinion reflecting its decision.”
In the Request, Patent Owner contends that:
I. The Board legally erred by interpreting the term “cooling
machine oils” as one of ordinary skill in the art would have
understood it at the time of the invention, rather than at the time
of the publication of Inagaki. Request 3-4.
II. The Board erred in framing the inquiry regarding the miscibility
limitation in the claims as an inherency issue instead of
considering miscibility in its analysis of reasonable expectation
of success. Request 4-7.
III. Regarding the miscibility limitation of the claims, the Board
also erred in relying on hindsight by resorting to Honeywell’s
own disclosure of miscibility. Request 6-7.
IV. There is even less expectation of success in meeting the “even
stricter miscibility limitations” of claim 30. Request 7.
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V. The Board failed to address the distinction between the
“comprising” language of claim 1 and the “consisting
essentially of HFO-1234yf” language of claim 52. Request 8.

“Cooling machine oils” (Patent Owner contention I)
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. Requester 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.
Initially, we disagree with Patent Owner that the relevant issues 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 of this title, 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 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 Pharm.
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USA, Inc., 752 F.3d 967, 974 (Fed. Cir. 2014) (finding obviousness when
“[A]t 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 Pharm. 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 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.
Decision 17–18. 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; Decision 17–18. The
teaching in Inagaki to use HFO-1234yf with “cooling machine oils” (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. We agree with

2 The alternative English translation of record, see First Singh Decl., Exhibit
D, uses the terms “refrigeration oils” and “lubricating oils” (id. at 6) for
these two terms, respectively.
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Requester (see Comments 4-5) that 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.

Miscibility as an inherent feature (Patent Owner contentions II and III)
Patent Owner does not appear to set forth any particular points
misapprehended or overlooked in the Decision with respect to this issue.
Rather, Patent Owner contends that the Board legally erred in failing to
address the reasonable expectation of making a heat transfer composition in
which HFO-1234yf and a lubricant are miscible, instead finding that the
combination of HFO-1234yf and PAG or POE was obvious and the
miscibility limitation of the claim was inherent in the otherwise obvious
combination. Request 4-6. However, as explained infra, we have identified
some imprecise language in our original Opinion, and we take this
opportunity for clarification.
The claims recite a heat transfer composition comprising two
components: (1) a lubricant and (2) a refrigerant. The claims also recite that
the heat transfer composition has certain properties, namely miscibility
between the lubricant and the refrigerant components.
A reasonable expectation of success in making the claimed invention
is a question of fact. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
(Fed. Cir. 2006). The Decision discussed in detail why the skilled artisan
would have combined HFO-1234yf (for its good refrigerant properties) with
PAG or POE (for its known use as a lubricant in refrigeration systems) and
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would have had a reasonable expectation of successfully making a heat
transfer composition in doing so. Decision 15-16 and 18. In particular, the
Decision discusses that an “express teachings as to miscibility” in combining
HFO-1234yf and PAG or POE was not necessary for this conclusion
because of “evidence that acceptable heat transfer systems do not require
miscibility between the refrigerant and the lubricant.” Id. at 16 (citing
Patent Owner’s expert). On this basis alone, it is irrelevant to the issues of
expectation of success in obtaining a heat transfer composition whether the
combination of refrigerant and lubricant are miscible. The question to be
asked is whether the skilled artisan would have expected success in making
the claimed composition. For the reasons discussed in the Decision (see
Decision 17-19), Patent Owner has provided insufficient evidence that the
skilled artisan would not have expected success in combining HFO-1234yf
and PAG or POE or that such a composition would not have been expected
to function as a heat transfer composition. Both Bivens and Inagaki teach
that combining lubricants with refrigerants was not outside of the skill of the
ordinary artisan. Decision 17-18.
While the claims recite other properties of the composition, the claims
do not recite any other purposes for the composition other than as “[a] heat
transfer composition,” and, thus, successful use as a heat transfer
composition would have been expected and predictable in light of the prior
art, despite whether or not it formed “one liquid phase.” The fact that the
same obvious composition forms “one liquid phase” between the refrigerant
and the lubricant does not patently differentiate the claimed composition
from that which was obvious in light of the prior. In re Kao, 639 F.3d 1057,
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1070 (Fed. Cir. 2011) (“[The prior art’s] express teachings render the
claimed ... formulation obvious, and the claimed [inherent property] 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
[limitation], [applicants’] application itself instruct that [the limitation] is not
an additional requirement imposed by the claims on the [claimed invention],
but rather a property necessarily present in [the claimed invention]”).
It is appropriate to base a finding of a reasonable expectation of
success on whether the skilled artisan would have been capable of making
the combination and use it as a heat transfer composition. Such a finding is
consistent with the Federal Circuit’s holding in PAR Pharm., Inc. v. TWI
Pharm., Inc., 773 F.3d 1186 (Fed. Cir. 2014). In PAR, the Federal Circuit
agreed with the District Court finding that the food effect property recited in
the claims was not known in the prior art. PAR, 773 F.3d at 1198.
Nonetheless, as in our case (see Decision 16), the court held that reasons to
make nanosized megestrol could be for reasons other than identified by the
Patent Owner. Id. at 1197 (“[A]s the food effect was not known in the art at
the time of the invention, it is not clear how the food effect could have even
motivated the named inventors to attempt to nanosize megestrol. Thus, the
district court did not err in looking to motivations beyond the food effect.”).
The court held that “the district court did not err in finding that [the party
with the burden of proving invalidity] proved a reasonable likelihood of
success in combining megestrol with nanoparticle technology” despite the
fact that the food effect property was not known. Id. at 1198. Regarding the
food effect property limitation, the court held that “inherency may supply a
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missing claim limitation in an obviousness analysis” provided that “the
concept of inherency must be limited when applied to obviousness, and is
present only when the limitation at issue is the ‘natural result’ of the
combination of prior art elements.” Id. at 1194-5 (quoting, inter alia, In re
Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981) (“[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.”)).
The holding of PAR is consistent with other Federal Court precedent.
For example, in In re Pearson, 494 F.2d 1399, 1403 (CCPA 1974), the
Court found a composition unpatentable, despite the fact that recited
properties of the composition were not known in the art, where the
composition itself was otherwise obvious in the art. The Federal Circuit
held that “terms [that] merely set forth the intended use for, or a property
inherent in, an otherwise old composition . . . do not differentiate the
claimed composition from those known to the prior art.”). Id.; 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.”); Santarus, Inc. v. PAR Pharm., Inc., 694 F.3d
1344, 1354 (Fed. Cir. 2012) (“an obvious formulation cannot become
nonobvious simply by administering it to a patient and claiming the resulting
serum concentrations. To hold otherwise would allow any formulation—no
matter how obvious—to become patentable merely by testing and claiming
an inherent property.”) (internal citation omitted).
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Unlike in PAR, where the district court presented no findings as to
whether the claimed property was a “natural result” of the combination of
prior art elements (PAR, 773 F.3d at 1196), the Decision in our case relies on
Dr. Thomas’ Declaration as evidence to support our finding that HFO-
1234yf and PAG or POE necessarily are miscible as recited in the claims.
Decision 18-19. Patent Owner is incorrect that the Board relied upon Dr.
Thomas’ Declaration as evidence of a reasonable expectation of success.
Request 6. The Decision relied on Dr. Thomas’ Declaration as evidence
that, in the otherwise obvious combination of HFO-1234yf and PAG or
POE, a one phase composition is the natural result of such a combination.
Upon our review, the first sentence of the paragraph spanning pages
19-20 of our Decision may have created some confusion as to our purpose in
relying on Dr. Thomas’ Declaration, as discussed above. For clarity, we
revise this sentence as follows, with strikeout showing deleted language:
Because the preponderance of the evidence shows HFO-
1234yf is miscible with PAG and POE over the entire range of
temperatures recited in claim 1, the composition of HFO-
1234yf in combination with a lubricant suggested by Inagaki
would have been expected to inherently and necessarily meet
the requirements of claim 1.
We decline to further revise our Decision.

Claim 30 (Patent Owner contention IV)
Claim 30 recites that the refrigerant and PAG and/or POE
composition “has one liquid phase over the temperature of from about -50°C
and +70°C at a lubricant concentration of about 5% by weight.” Patent
Owner contends that claim 30 recites an “even stricter miscibility
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limitations, [and thus] there is even less of a reasonable expectation of
success in achieving the claimed miscibility.” Request 7. For the reasons
discussed above and stated in the Decision, the claimed miscibility is an
inherent property of the obvious combination of HFO-1234yf and PAG or
POE as taught by Inagaki and Bivens, respectively. See Decision 26-27.
Thus, we decline to revise our Decision with respect to claim 30.

Claim 52 (Patent Owner’s contention IV).
Claim 52 recites a heat transfer composition “comprising” PAG and
“a refrigerant consisting essentially of HFO-1234yf” in a concentration of 5-
99% by weight. Patent Owner initially argues that this claim cannot
comprise any of the other HFC refrigerants taught by Inagaki to “improve
solubility” because the claim also recites that the composition has a GWP no
greater than 1000. Request 7–8. In the Request, Patent Owner, for the first
time, argues that HFC refrigerants are excluded by the “consisting
essentially of” language of claim 52. See generally PO App. Br. 41-44; PO
Reb. Br. 6 (arguing only the limitation in claim 52 directed to the
composition having a capacity and COP relative to HFC-134a of about 1);
Decision 35-37 (addressing the separate arguments raised by Patent Owner
with respect to claim 52). A request for rehearing is an inappropriate time
for new arguments or evidence. See 37 C.F.R. § 41.79(b)(1) (“Arguments
not raised in the briefs before the Board and evidence not previously relied
upon in the briefs are not permitted in the request for rehearing except as
permitted by paragraphs (b)(2) [i.e., for good cause] and (b)(3) [i.e., when a
new ground of rejection has been entered] of this section.”).
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To establish that “consisting essentially of” excludes specific unlisted
ingredients, Patent Owner bears the burden of: (1) showing the basic and
novel characteristics of their claimed invention, and (2) establishing how
those characteristics would be materially changed by any allegedly excluded
component of an applied reference. See In re De Lajarte, 337 F.2d 870,
873-74 (CCPA 1964); PPG Industries v. Guardian Industries Corp., 156
F.3d 1351, 1355 (Fed. Cir. 1998) (“PPG could have defined the scope of the
phrase ‘consisting essentially of’ for purposes of its patent by making clear
in its specification what it regarded as constituting a material change in the
basic and novel characteristics of the invention. The question for our
decision is whether PPG did so.”). Patent Owner offers no analysis in
support of their conclusory statement that “consisting essentially of” as used
in their claim excludes the HFC compositions described by Inagaki. To the
contrary, the ’451 patent particularly indicates that “certain preferred
embodiments . . . include” one or more of the HFC components recited by
Inagaki, namely HFC-32, HFC-125, and HFC-134a, and that “[t]he relative
amount of [the HFC compounds] . . . can vary widely within the general
broad scope of the present invention . . ., and all such relative amounts are
considered to be within the scope hereof.” ’451 patent, col. 6, ll. 15-39.
Similarly, claim 24 of the ’451 patent expressly recites these HFC
compounds. Thus, it is unclear how Patent Owner can state that components
provided in any amount are “within the general broad scope of the present
invention,” but at the same time argue that these components materially
affect the basic and novel characteristics of the invention.
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Accordingly, we decline to revise our Decision with respect to
claim 52.

Based on the foregoing, we have granted Patent Owner’s Request to
the extent that we have reconsidered the Decision, but we deny Patent
Owner’s Request to alter our decision, other than as noted herein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a)(1)(iv).

DENIED

PATENT OWNER:

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

THIRD-PARTY REQUESTER:

PATRICK J. FLEIS
RYAN KROMHOLZ & MANION, S.C.
P.O. BOX 26618
MILWAUKEE, WI 53226

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