Ex Parte 8053404 et al

Patent Trial and Appeal Board

Mar 7, 2018

95001920 (P.T.A.B. Mar. 7, 2018)

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.
95/001,920 03/02/2012 8053404 9404.21569-REX 7314

116637 7590 06/16/2016
HONEYWELL/FOX/BANNER
Patent Services
115 Tabor Road - PO Box 377
MORRIS PLAINS, NJ 07950
EXAMINER
MCKANE, ELIZABETH L

ART UNIT PAPER NUMBER
3991

MAIL DATE DELIVERY MODE

03/08/2018 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 2016-006365
Reexamination Control 95/001,920
Patent US 8,053,404 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 8,053,404 B2 issued on November 8, 2011, to Rajiv R. Singh, et
al. (hereinafter “the ’404 patent”).
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On December 30, 2016,Patent Owner, Honeywell International Inc.
(“Patent Owner”), requested rehearing under 37 C.F.R. § 41.79(a)(l)
(“Request”) of our Decision on Appeal mailed November 30, 2016
(“Decision”), in which we affirmed rejections of all of the claims on appeal.
On January 30, 2017, 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.
In particular, Patent Owner contends that the Decision
misapprehended or overlooked established tenets of claim interpretation in
determining that the “comprising” transitional phrase of claim 1 renders
claim 1 open to other refrigerants, including additional refrigerants of
Formula I, notwithstanding the Markush2 limitation reciting “one or more
compounds of Formula I . . . selected from the group consisting of trans-
1,1,1,3-tetrafluoropropene (HFO-1234ze) and 1,1,1,2-tetrafluoropropene
(HFO-1234yf).” Request 2. Patent Owner further contends that the Board
further erred in the interpretation of claim 30, which depends from claim 1
and further narrows the Markush limitation to trans-HFO-1234ze. Id.
Finally, Patent Owner contends that a proper claim interpretation excludes
from claim 30 any amount of cis-HFO-1234ze and thus distinguishes the
prior art teaching of HFO-1234ze, which is understood to be a combination
of cis- and trans-HFO-1234ze. Id.

2 “A Markush group is a listing of specified alternatives of a group in a
patent claim, typically expressed in the form: a member selected from the
group consisting of A, B, and C.” Abbott Labs. v. Baxter Pharma. Prods.
Inc., 334 F.3d 1274, 1280 (Fed. Cir. 2003).
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Claim 1, which is illustrative of the appealed subject matter, reads as
follows (with brackets and underlining showing language deleted and added,
respectively, during reexamination):
1. A heat transfer composition comprising
from about 1 to about 40 percent by weight of carbon
dioxide (CO2) and
from about 60 to about 99 percent by weight of one or
more compounds of Formula I, XCFzR3-z (I)[, where X is a C2
or a C3 unsaturated, substituted or unsubstituted, radical, each R
is independently Cl, F, Br, I or H, and z is 1 to 3] selected from
the group consisting of trans-1,1,1,3-tetrafluoropropene (HFO-
1234ze) and 1,1,1,2-tetrafluoropropene (HFO-1234yf).
PO App. Br. 33, Claims App’x (indentation further added for clarity).
In the Decision, we found that
[a]t one extreme, claim 1 is met by a composition comprising
about 1 weight percent CO2, about 60 weight percent of one or
both of transHFO-1234ze and HFO-1234yf, and about 39
percent “other” substances, the identity of which we now
consider. There is no language in claim 1 that excludes non-
recited substances, including compounds that are within the
scope of Formula I from being part of the “other” substances.
Similarly, claim 30 requires the presence of a measurable amount
of the transHFO-12345ze compound.
. . .
Thus, the subordinate limitation (Markush limitation) of
claim 1 is closed to alternative Formula I compounds, but the
claim is open to the inclusion of additional compounds, including
additional Formula I compounds. In other words, an anticipating
composition (or an infringing composition) must have one of the
disclosed Formula I compounds and CO2, because the
subordinate limitation is closed to other Formula I compounds,
but the infringing (or anticipating) composition could also
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include other Formula I compounds, because the claim itself is
open to any “other” substances.
Decision 32–33.
Patent Owner argues that the Markush language reciting “one or more
compounds of Formula I, XCFzR3-z (I) selected from the group consisting
of” in claim 1 closes the claim to all other Formula I compounds other than
those expressly recited in the “Formula I” clause of claim 1. See, e.g.,
Request 4–5.
Patent Owner’s reading of the claim is inconsistent with binding case
law that considers the “comprising” transitional phrase of a claim to be open
to other components not expressly recited in the various limitations of the
claim.
As discussed in our Decision
The cases are clear, however, that an open claim transitional
phrase cannot override the specific requirements of a closed
subordinate limitation. However, when the scope of a closed
subordinate limitation is defined by reciting individual members
of a larger group, the claim must contain adequate language to
maintain the exclusion of non-recited members of the larger
group in addition to the inclusion of the recited members.
Decision 32. See Mannesmann Demag Corp. v. Engineered Metal Prods.
Co., Inc., 793 F.2d 1279, 1282 (Fed. Cir. 1986) (“[T]he phrase ‘consisting
of’ appears in clause (a), not the preamble of the claim, and thus limits only
the element set forth in clause (a). The court correctly declined to read this
usage of ‘consisting of’ as excluding all other elements from the claim as a
whole.”).
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We disagree with Patent Owner’s contention that our interpretation
does not give meaning to the Markush claim. Request 6. As the reproduced
portion of the Decision above makes clear, the Markush group in claim 1
defines at least one compound in the composition. But, without further
definition or express limitation, claim 1 does not define an exclusive class of
compounds, i.e., it does not exclude the presence of other compounds within
the scope of Formula I as long as the Markush group is satisfied.
Patent Owner directs us to case law discussing the difference between
“comprising” language and “consisting of” language and interpreting
“consisting of” language, even that of a Markush group, as closed to other
components. Request 5-8 (citing, e.g., Abbott Labs. v. Baxter Pharma.
Prods. Inc., 334 F.3d 1274, 1280-1282 (Fed. Cir. 2003); Gillette Co. v.
Energizer Holdings, Inc., 405 F.3d 1367, 1372 (Fed. Cir. 2005); Multilayer
Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350,
1357 (Fed. Cir. 2016)).3 However, the case law cited by Patent Owner does
not show error in our claim interpretation, because they do not support
narrowing an otherwise open claim based on a single closed limitation
within the claim.4 Thus, Patent Owner has not shown error in our prior
interpretation of claim 1.

3 Patent Owner also cites cases that are inapposite because they use
“consisting of” as the transitional phrase and not as part of a Markush claim.
Request 5-8 (citing See Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331
(Fed. Cir. 2004); Ex parte Davis et al., 80 USPQ 448, 1949 WL 3555, *3
(BPAI 1948)).
4 See Request 6-8 (citing Spectrum Int’l, Inc. v. Sterilite Corp., 164 F.3d
1372, 1379-80 (Fed. Cir. 1988) and Dippin' Dots, Inc. v. Mosey, 476 F.3d
1337, 1342–43 (Fed. Cir. 2007)). Patent Owner further cites non-
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Reconsideration of the Decision in light of the related Federal Circuit
Decision in Reexamination 95/000,696 of U.S. Patent 7,557,301
In Honeywell Intl. Inc. v. Mexichem Amanco Holding S.A. DE C.V.,
865 F.3d 1348 (Fed. Cir. 2017), the Federal Circuit determined that, in a
reexamination of a patent related to the ’404 patent, the Board’s obviousness
analysis was flawed in that the Board committed legal error by improperly
relying on inherency in obviousness and in its analysis of motivation to
combine the references, specifically with respect to the properties of
miscibility and stability, which were properties of the obvious combination
and not merely properties of HFO-1234yf. Id. at 1354. Specifically, the
Federal Circuit determined that the Board was inconsistent in finding that
the combination’s stability/miscibility was an inherent property of HFO-
1234yf while, at the same time, crediting the evidence of an unpredictability
and unexpected results as to stability as persuasively establishing “overall
predictability” in the art. Id. The Federal Circuit further found error in the
Board’s determination that “overall unpredictability” in the art was not
persuasive because “routine testing” would have led to its discovery (id.),
because such reasoning improperly relies on the manner in which the Patent
Owner made the invention. Id. at 1356.
Because similar language was used in the Decision in this case and
because the Federal Circuit’s Honeywell decision was issued after the filing

authoritative District Court decisions, which are both distinguishable and not
binding on our Decision. Id. (citing Dow Agrosciences LLC v. Crompton
Corp., No. 1 :03-CV-0654-SEB-JPG, 2004 WL 1087362 (S.D. Ind. May 12,
2004) and Bristol-Myers Squibb Co. v. Mylan Pharmaceuticals Inc., No. 09-
651-LPS, 2012 WL 1753670 (D. Del. May 16, 2012)).
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of the rehearing documents under 37 C.F.R. § 41.79 in this case, we revise
the Decision as follows to address the issues raised in Honeywell.
The Decision states
The evidence also supports a finding that the particular
concerns with stability, flammability, toxicity, and reactivity
were known in the art and that the testing of prospective
refrigerants for these properties was routine at the time of the
invention.

. . .

Thus, the discovery that HFO-1234yf and HFO-1234ze
(cis- and trans-) had other desirable properties for more nuanced
application, namely for automobile air conditioning systems, is
not an inventive contribution to the art of air conditioning or
refrigeration generally, but the result of routine testing at the time
of known good refrigerants for general use.
Decision 20 (citations omitted). The Decision further states “[a]s discussed
above, the particular concerns with stability, toxicity, and reactivity and the
testing of prospective refrigerants for these properties were known and
routine in the art at the time of the invention.” Decision 28. We withdraw
these portions of the Decision for the reasons explained below.5

5 We discuss the routine testing of HFO properties to address Patent
Owner’s contention that no skilled artisan would have considered any HFOs
“as a class” as a suitable refrigerant in the first instance. See Decision 18.
The evidence of record shows that the industry indeed considered HFOs and
thoroughly examined HFO properties through known testing methods, not
only as a generic “heat transfer composition,” as recited in the claims, but
also for the specific purpose of use in automobile air condition systems. See
Decision 18, n. 23.
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These portions are not necessary to the outcome of the Decision. The
Decision explains in detail the reasons for combining Inagaki and Kruse
based on the benefits expressly taught in the prior art for using HFO-1234yf
or HFO-1234ze and CO2, respectively, in a refrigerant composition in the
first instance and the expectation that such a combination would have been
successful for the non-specific “heat transfer composition” use that is recited
in the claims. See Decision 11-19. In particular, we highlight our discussion
in which we gave more evidentiary weight to the specific teachings in the art
of success using HFOs, and Inagaki’s teaching of successfully using HFO-
1324yf and HFO-1234ze, in particular, as a heat transfer composition than
we gave to general assertions that the HFOs “as a class” were too reactive
for specific purposes. See Decision 17-19. Similarly, the Decision explains
in detail why Patent Owner’s particular arguments regarding secondary
considerations were not persuasive of non-obviousness. Decision 22-28.
The Decision further states “[t]he properties of the particular
refrigerants are inherent to the refrigerant, whether specifically disclosed or
not.” Decision 20. While this is true, footnote 26, at the end of this
sentence, states
Such inherent properties of refrigerants include their specific
toxicity, flammability, miscibility with specific lubricants, 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). The new realization alone does not render that
prior art patentable.
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Decision 20, n. 26. We revise this footnote to disregard reference to
“miscibility with specific lubricants.” While toxicity, flammability, GWP
and ODP are all inherent properties of HFO-1234yf, whether or not Inagaki
describes these properties, the weight of the evidence of record suggests that
miscibility with a lubricant is specific to the miscibility/lubricant pair and
cannot merely be considered an inherent property of the refrigerant.
However, claim 1 of the ’404 patent does not recite a lubricant, particularly a
miscible lubricant. Thus, any references to miscibility with lubricants is not
relevant to claim 1. We discuss this property further below with reference to
the claims in Group VI, which specifically recite a heat transfer composition
comprising CO2, transHFO-1234ze and a polyol ester (POE) lubricant.
We note that unlike in the Honeywell case heard by the Federal
Circuit, this case did not include any arguments or evidence regarding any
particular properties of the HFO-1234yf and CO2 being unexpected.
Decision 27 (“Patent Owner produces no evidence that the combination of
HFO-1234yf or HFO-1234ze and CO2 exhibit any unexpected properties.”).
See generally Decision 22-28.
With respect to Group IV and Group V, which includes claims that
specifically recite that the HFO and CO2 composition is nonflammable and
has a capacity substantially matching that of R-404A, the Decision states
that these properties are an inherent property of the otherwise obvious
combination. See Decision 37, 39. The Decision further states “[a]s
discussed above, the particular issues with respect to flammability were
known in the art at the time of the invention and the testing of prospective
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refrigerants for these properties was routine in the art at the time of the
invention.” Decision 38.
For clarity, we emphasize that, while stability of a refrigerant may
convey a question as to whether the refrigerant in combination would have
been capable of being used as a refrigerant at all (i.e., if it is too reactive, it
could be useless in any refrigerant application, though Inagaki suggests
otherwise for HFO-1234yf and HFO-1234ze), the record reflects that
flammability does not affect operability of a general-purpose refrigerant.6
See Decision 16-17 (discussing where the record describes ammonia, which
is flammable, as a useful refrigerant). It is on this basis that “[w]e are not
persuaded that the potential, although not realized, high flammability of
HFO-1234yf or HFO-1234ze would have deterred an ordinary artisan from
using Inagaki’s refrigerants as Kruse’s partially fluorinated hydrocarbon in
combination with CO2.” Decision 38. Similarly, Inagaki teaches good
capacity, even if it does not expressly teach that the capacity is “substantially
matching that of R-404A.”
Because Kruse and Inagaki render obvious the identical combination
of HFO-1234yf or HFO-1234ze and CO2, for the reason discussed in the
Decision, the burden properly shifts to Patent Owner to show that the
combination would not have been expected to have the identical
“nonflammable” property or “a capacity substantially matching that of R-
404A,” as recited in the claims. See In re Best, 562 F.2d 1252, 1254–55

6 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, the claims do not recite any specific purpose for the
“heat transfer composition.” See Decision 19.
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(CCPA 1977) (“Whether the rejection is based on ‘inherency’ under 35
U.S.C. § 102, [or] on ‘prima facie obviousness’ under 35 U.S.C. § 103,
. . . the burden of proof is the same.”). It is the identity of the otherwise
obvious combination of HFO-1234yf or HFO-1234ze and CO2, for the
reason discussed in the Decision, that gives the additionally claimed
properties little patentable weight despite the fact they are properties not
expressly taught in the prior art.
With respect to Group VII, which specifically recites a POE lubricant
in the refrigerant composition, we highlight our discussion in which we gave
more evidentiary weight to Inagaki’s teaching that HFO-1324yf and HFO-
1234ze are “compatible with lubricants,” in particular, for use as a heat
transfer composition, than we gave to Patent Owner’s general assertions that
HFOs “as a class” were expected to be too reactive to be used as a
refrigerant with known lubricants. See Decision 42-44. Further, we
emphasize that our decision attributes more evidentiary weight to the
copious teachings in the art of successfully using POE in refrigerant
applications, than to Patent Owner’s assertion that POEs are not desirable
lubricants due to their hygroscopic properties. Decision 44-45.
On the record before us, we decline to revise the interpretations of
claim 1 and claim 30 set forth in the Decision. Patent Owner’s Request is
granted to the extent the claim interpretation is reconsidered, but denied as to
the merits of the Request. Further, the Decision is revised as discussed
above in light of the Federal Circuit Decision in Honeywell Intl. Inc. v.
Mexichem Amanco Holding S.A. DE C.V., 865 F.3d 1348 (Fed. Cir. 2017).

DENIED
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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