Ex Parte Boussand

Patent Trial and Appeal Board

Oct 29, 2018

14371118 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/371,118 07/08/2014 21839 7590 10/31/2018 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 FIRST NAMED INVENTOR Beatrice Boussand 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 0078840-000121 5870 EXAMINER HARDEE, JOHN R ART UNIT PAPER NUMBER 1761 NOTIFICATION DATE DELIVERY MODE 10/31/2018 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): ADIPDOC 1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BEATRICE BOUSSAND Appeal2017-002024 Application 14/3 71, 118 Technology Center 1700 Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and AVEL YN M. ROSS, Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1, 3-7, 9-14, 17, and 19-29. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm-in-part. 1 In our Decision we refer to the Specification filed July 8, 2014 ("Spec."), the Final Office Action appealed from dated January 22, 2016 ("Final Act."), the Appeal Brief filed August 1, 2016 ("Appeal Br."), the Examiner's Answer dated October 11, 2016 ("Ans.") and the Reply Brief filed November 16, 2016 ("Reply Br."). 2 Appellant is Applicant, Arkema France, which according to the Appeal Brief is also the real party in interest. Appeal Br. 2. Appeal2017-002024 Application 14/3 71, 118 STATEMENT OF THE CASE The subject matter on appeal relates to a "heat transfer compositions based on 2,3,3,3-tetrafluoropropene having improved miscibility with lubricating oil." Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A composition comprising 2,3,3,3-tetrafluoropropene and a lubricating oil, the lubricating oil comprising a polyalkylene glycol and a polyol ester, wherein the lubricating oil comprises about 7 5 to about 95 wt. % of polyalkylene glycol and about 5 to about 25 wt. % of polyol ester. Appeal Br. Claims Appendix 1 ("Claims App 'x). REJECTI0NS 3 The Examiner maintains the rejection of 1, 3-7, 9-14, 17, and 19-29 under 35 U.S.C I03(a) as being unpatentable over Matsumura4 in view of Thomas. 5 Final Act. 2. Appellant seeks our review of the Examiner's rejection of claims 1, 3- 7, 9-14, 17, and 19-29. Appeal Br. 5. Appellant argues claim 25 separately and claims 1, 6, and 17 together as a group. See generally id. Therefore, consistent with the provisions of 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv) (2013 ), we limit 3 Appellant overcame the Examiner's rejection of claim 20 (Final Act. 2), under 35 U.S.C. § 112, as being indefinite. Advisory Action (dated May 27, 2016) 1 ("Advisory Act."). 4 Matsumura et al., US 2007/0004305 Al, published January 4, 2007 ("Matsumura"). 5 Thomas et al., US 2009/0241562 Al, published October 1, 2009 ("Thomas"). 2 Appeal2017-002024 Application 14/3 71, 118 our discussion to claims 1 (together with claims 6 and 17) and 25, and all other claims stand or fall together with those claims. OPINION The Examiner rejects claims 1, 6, 17, and 25 (among others) as obvious over the combination of Matsumura in view of Thomas. Final Act. 2. The Examiner finds that Matsumura teaches lubricants useful for refrigeration systems where the lubricants include a polyalkylene glycol from 5-95% and a polyol ester from 5-95%. Id. The Examiner finds that Matsumura describes its lubricants as useful over a broad range of refrigerants, including hydrofluorocarbons and carbon dioxide, but acknowledges that Matsumura fails to teach use of 2,3,3,3- tetrafluoropropene. Id. at 2-3. However, the Examiner finds that Thomas teaches "that it is desirable to retrofit systems for chlorine-containing refrigerants with hydrofluorocarbons or hydrofluoroolefins because of the ozone-depleting qualities of the chlorine-containing refrigerants ... [ and o ]f these, hydrofluoroolefins (HFOs) are preferred." Id. at 3. The Examiner finds that Thomas explains HFOs are "suitable for use with polyol ester and polyalkylene glycol lubricants" and, therefore, reasons that it would have been obvious to use the lubricants taught by Matsumura/Thomas, in quantities described in Matsumura, with an HFO refrigerant of Thomas because "[i]t is primafacie obvious to combine two compositions each of which is taught by prior art to be useful for [the] same purpose in order to form [a] third composition that is to be used for [the] very same purpose." Id. 3 Appeal2017-002024 Application 14/3 71, 118 A. Claims 1, 6, and 17 Appellant first argues that a lubricating oil comprising ranges from about 7 5 to 90 wt. % polyalkylene glycol and about 5 to about 25 wt. % polyol ester, as required by each of claims 1, 6, and 17, is not taught by either of Matsumura or Thomas. Appeal Br. 11. In particular, Appellant reasons that Matsumura does not adequately specify the claimed ranges. Id. Appellant further contends that neither reference suggests combining the claimed lubricants with 2,3,3,3-tetrafluoropropene. Id. at 11-12. We are not persuaded of reversible error by the Examiner. "[T]he test [for obviousness] is what the combined teachings of the references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413,425 (CCPA 1981). "Aprimafacie case of obviousness typically exists when the ranges of the claimed composition overlap the ranges disclosed in the prior art." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); see also In re Boesch, 617 F.2d 272,275 (CCPA 1980)(same). Here, the Examiner relies on Matsumura to describe lubricants for refrigeration systems that comprise polyalkylene glycol and polyol ester in overlapping amounts of 5-95% for each of the glycol and ester. Final Act. 2. Matsumura describes these lubricants as useful with a wide range of refrigerants including hydrofluorocarbons. Id.; see also Matsumura ,r 36. While Matsumura does not expressly teach 2,3,3,3-tetrafluoropropene, Thomas prefers the use of hydrofluoroolefins (HFOs) as refrigerants, and specifically HF0-1234 yf refrigerant (i.e., 2,3 ,3 ,3-tetrafluoropropene ), due to environmental concerns. Final Act. 3; see also Thomas ,r,r 5, 44, 47. Thomas further teaches that HFOs are suitable in combination with polyol ester and polyalkylene glycol lubricants. Thomas ,r 17. Accordingly, we 4 Appeal2017-002024 Application 14/3 71, 118 determine the Examiner's findings and conclusions are sufficient to establish a prima facie case of obviousness. Appellant's argument is insufficient to rebut the Examiner's prima facie case as it fails to address what the combined teachings of Matsumura and Thomas would have suggested to the skilled artisan. Next, Appellant urges that embodiments of claims 1, 6, and 17 exhibit superior results over what would have been expected from the combination of Matsumura and Thomas. Appeal Br. 13. Appellant asserts that "adding a polyol ester to a lubricant comprising a polyalkylene glycol[,] unexpectedly increases miscibility by more than a person of ordinary skill in the art would have reason to expect." Id. at 13-14. Appellant, relying on the Declaration of Beatrice Boussand ("Boussand Deel."), explains that when creating a lubricant blend, one of ordinary skill in the art would have expected a linear relationship in the miscibility. Appeal Br. 13; Boussand Deel. ,r 8. In particular, the lubricant blend "would be expected to have a maximum temperature for miscibility approximately equal to the maximum miscibility temperature of pure polyalkylene glycol plus 15% of the difference in miscibility of pure polyol ester and pure polyalkylene glycol," and result in a linear relationship Id. ,r,r 8-9. However, Boussand explains that the blend including a polyol ester from 5 to 35 % unexpectedly resulted in a non-linear relationship and in a miscibility 2 to 12 degrees higher than the expected value. Id. ,r 11. Appellant's argument does not convince us of reversible error by the Examiner. The burden rests with Appellant to establish (1) that the alleged unexpected results presented as being associated with the claimed invention are, in fact, unexpected, (2) that the comparisons are to the disclosure of the 5 Appeal2017-002024 Application 14/3 71, 118 closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) ("the burden of showing unexpected results rests on he who asserts them"). Here, as the Examiner explains, Appellant's evidence of unexpected results is not commensurate in scope with the claims. Ans. 5. Specifically, the Examiner points out that Appellant has claimed compositions claiming some amount of 1234yf with any and all other refrigerants, in admixture with at least one of any and all polyalkylene glycols and at least one of any and all polyol esters, while presenting evidence for compositions in which the refrigerant consists of 1234yf in admixture with one specific polyol ester and one specific polyalkylene glycol. Id. at 5---6. Appellant's position, advocated during oral argument, is that while the Examiner's assessment of the scope of the examples is accurate, similar results would be expected across additional polyalkylene glycols and polyol esters in view of the Boussard Declaration. Transcript of Oral Argument, held September 25, 2018, 8-9 ("Transcript"). However, Boussard's testimony does not discuss extrapolating the experimental results to include other polyalkylene glycols or polyol esters nor does Boussard address the effect of other refrigerants, in addition HF0-1234yf, that may be included in light of the breadth of the claims. See generally Boussard Deel. Thus, Appellant's showing is insufficient to rebut the Examiner's prima facie case of obviousness. 6 Appeal2017-002024 Application 14/3 71, 118 B. Claim 25 Claim 25 is similar to claim 1 except that claim 25 additionally requires that the composition include "from 5 to 40 wt. % of a lubricating oil" and a polyol ester content of less than or equal to 25%, however, claim 25 does not recite an amount for polyalkylene glycol which makes up the balance of the lubricating oil. Compare Claims App'x 1, with 4. Further, each of claims 23-29 require a particular weight percent for the lubricating oil. Id. at 4--5. With respect to claim 25, Appellant contends that Thomas teaches away from a composition having less than 50 wt. % lubricating oil. Appeal Br. 7. Appellant explains that "Thomas describes a composition comprising 2,3,3,3-tetrafluoropropene and greater than 50 wt.% [of] a lubricating oil comprising polyalkylene glycol." Id. But, according to Appellant, Thomas further states that compositions having lubricating oil in quantities less than 50 wt. % become immiscible and, therefore, unusable. Id. at 8. Therefore, Appellant asserts that Thomas teaches away from the claimed composition having less than 50 wt.% lubricating oil. We find Appellant's argument regarding a teaching away persuasive. To teach away, a reference must discourage one of ordinary skill in the art from following the path set out in the reference, or lead that person in a direction divergent from the path taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Here, as Appellant explains, Thomas indicates that compositions having a lubricant to refrigerant ratio, where the quantity of lubricant is equal to or less than 50%, are immiscible. Appeal Br. 8; see also Thomas ,r 4 7. Thus, the ordinarily skilled artisan, in light of the teachings of Thomas, 7 Appeal2017-002024 Application 14/3 71, 118 would have expected compositions having lower levels of lubricating oil as claimed, i.e., from 5 to 40 wt. %, to undesirably result in an immiscible solution. We acknowledge the Examiner's position that Thomas does not provide the teaching that a blend of two lubricants would behave the same as the single lubricant described and that a blend of lubricants would increase the miscibility over a single lubricant. Ans. 5. However, the Examiner does not direct our attention to any teaching that suggests a blend of lubricants, in the claimed concentration (i.e., less than 40%) and ratio, would in fact provide a satisfactory and miscible solution. Said another way, while it may be true in certain instances that a blend of two lubricants will increase the miscibility over that of a single lubricant (see, e.g., Transcript 5), the prior art does not discuss the extent of that increase nor provide a reason to believe an acceptable level of miscibility would be achieved at the claimed concentration and ratio. Accordingly, we do not sustain the Examiner's rejection of claims 23-29. CONCLUSION Appellant failed to identify a reversible error in the Examiner's rejection of 1, 3-7, 9-14, 17, and 19-22 under 35 U.S.C 103(a) as unpatentable over Matsumura in view of Thomas. Appellant identified a reversible error in the Examiner's rejection of 23-29 under 35 U.S.C 103(a) as unpatentable over Matsumura in view of Thomas. 8 Appeal2017-002024 Application 14/3 71, 118 DECISION For the above reasons, the Examiner's rejection of claims 1, 3-7, 9- 14, 17, and 19-22 is affirmed and the Examiner's rejection of claims 23-29 is reversed. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED-IN-PART 9