Ex Parte Costello et al

Patent Trial and Appeal Board

Nov 30, 2018

14388301 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/388,301 09/26/2014
32692 7590 12/04/2018
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Michael G. Costello
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.
69758US005 5190
EXAMINER
ASDJODI, MOHAMMADREZA
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL G. COSTELLO, RICHARD M. FLYNN, and
MICHAEL J. BULINSKI
Appeal2018-002099
Application 14/388,301
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 filed an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 1-8, 12, 14, and 18. We have
jurisdiction under 35 U.S.C. § 6(b ).
1 Our Decision refers to the Specification filed September 26, 2014
("Spec."), Appellant's Appeal Brief filed July 31, 2017 ("Appeal Br."), the
Examiner's Answer dated October 20, 2017 ("Ans."), and the Appellant's
Reply Brief filed December 19, 2017 ("Reply Br.").
2 Appellant is Applicant, 3M Innovative Properties Company. The Appeal
Brief identifies 3M Company and 3M Innovative Properties Company as the
real parties in interest. Appeal Br. 2.
Appeal2018-002099
Application 14/388,301
We AFFIRM.
The subject matter on appeal relates to devices comprising a dielectric
fluid and dielectric compositions (see, e.g., claims 1 and 6). According to
the Inventors, dielectric gases are used in various electrical devices due to
their high dielectric strength, which permits higher power densities than air-
filled electrical devices. Spec. 1: 14--19. According to the Inventors,
conventional dielectric gases present environmental and toxicity concerns.
Id. 1:24--36. In view of this, the Inventors disclose using
heptafluoroisobutyronitrile or 2,3 ,3 ,3-tetrafluoro-2-( trifluoromethoxy)
propanenitrile as dielectric gases, which contribute less to global warming
and have a relatively low toxicity compared to conventional dielectric fluids.
Id. 4:18-23.
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief.
1. An device comprising a dielectric fluid according to the
formula: (i) (CF3) 2CFCN (heptafluoroisobutyronitrile ); or (ii)
CF3CF(OCF3)CN, wherein the device comprises an electrical
device.
REJECTIONS ON APPEAL 3
I. Claims 1-3 under 35 U.S.C. § 102(b) as being
anticipated by Thomson, 4 as evidenced by Chemical
Book. 5
3 The Examiner has indicated that claims 13, 15, and 19 include allowable
subject matter. Ans. 7.
4 Thomson-Houston, FR 1.265.731, issued May 23, 1961 ("Thomson"), as
translated.
5 Entry for chemical properties of "peifluoroisobutyronitrile, " Chemical
Book,
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Appeal2018-002099
Application 14/388,301
II. Claims 1-8, 12, 14 and 18 under 35 U.S.C. § I03(a) as
being unpatentable over Tuma6 in view of Thomson, as
evidenced by Chemical Book.
DISCUSSION
Rejection I
Claims 1-3 are rejected under 35 U.S.C. § I02(b) as being anticipated
by Thomson, as evidenced by Chemical Book.
The Examiner finds Thomson discloses electrical equipment
containing gaseous dielectric fluid, such as C3F7CN. Ans. 2. The Examiner
finds C3F7CN has two possible isomers, with the iso form corresponding to
the claimed heptafluoroisobutyronitrile. Id. at 2-3. The Examiner further
finds Thomson discloses a formula CnF2n+1CN, where n is 1, 2, or 3, and
therefore Thomson's disclosure encompasses the claimed isomer even if
Thomson prefers the linear isomer. Id. at 7-8. In addition, the Examiner
finds that the ordinary production of linear perfluorobutyronitrile would
result in a trace amount of the claimed isomer and such an amount is
encompassed by claim 1. Id. at 8.
https://www.chemicalbook.com/ProductChemicalPropertiesCB82736989_E
N.htm (last visited November 20, 2018).
6 Tuma et al., US 2013/0292614 Al, published November 7, 2013
("Tuma"). Although the Examiner identifies a different, apparently
unrelated, patent number in connection with the rejection of claims 6-8 and
14 (Ans. 5), the Examiner's explanation of the rejection (id. at 5---6) plainly
refers to Tuma. We consider the Examiner's identification of an incorrect
patent number for Tuma with regard to these claims to be inadvertent and
harmless error.
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Appeal2018-002099
Application 14/388,301
Appellant contends Thomson does not anticipate claim 1 because
Thomson discloses only the linear n- form of C3F7CN, and not the branched
iso- form relied upon by the Examiner. Appeal Br. 3-5.
Appellant's arguments are persuasive. A dispositive question for
anticipation is "whether one skilled in the art would reasonably understand
or infer" that a reference teaches or discloses all of the elements of the
claimed invention. In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed.
Cir. 1991). Thomson identifies perfluorobutyronitrile, C3F7CN, as an
example of suitable perfluoro-n-alkylnitriles. Thomson 1. There appears to
be no dispute that n-alkyl refers to normal (linear) structure rather than iso-
(branched) structure. Compare Appeal Br. 4, with Ans. 8. Thus, while the
molecular formula C3F7CN in isolation could encompass both n- and iso-
structured isomers, we are persuaded that Thomson's narrower use of that
formula to identify a subset of n-alkylnitriles encompasses only the linear n-
structure. That interpretation is consistent with Thomson's identification of
1 °C as the boiling point for the disclosed C3F7CN (Thomson 2), which
Appellant demonstrates as corresponding solely to the linear form of
perfluorobutyronitrile (Appeal Br. 4--5). Accordingly, the Examiner's
finding that Thomson describes use of the branched iso- form of
perfluorobutyronitrile is not supported by a preponderance of the evidence.
We also agree with Appellant that the Examiner has not supported the
finding that ordinary production of linear perfluorobutyronitrile necessarily
would result in a trace amount of the claimed isomer. Reply Br. 4. The
Examiner provides no evidence or persuasive technical reasoning that the
ordinary production of perfluoro-n-alkylnitrile, or the method Thomson
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Appeal2018-002099
Application 14/388,301
would have employed, would have necessarily resulted in some amount of
heptafluoroiso butyronitrile.
For the foregoing reasons, we do not sustain the Examiner's§ 102(b)
rejection of claims 1-3.
Rejection II
Appellant maintains Thomson does not disclose or suggest the
claimed dielectric material for the reasons discussed above with regard to the
§ 102 rejection over Thomson. Appeal Br. 6-8.
These arguments are unpersuasive for the § 103 rejections. Although
we agree that Thomson describes use of the linear form of C3F7CN,
Thomson's use of this isomer is sufficient to suggest use of the iso- form,
which has the same molecular formula and a similar structure (see Appeal
Br. 4), with a reasonable expectation that either isomer would function as a
dielectric fluid or composition.
Appellant asserts unexpected toxicity results for the claimed
invention. Appeal Br. 6-7; Reply Br. 5-6. Particularly, Appellant argues
that the claimed branched nitrile exhibits a decreased toxicity (LC50 15,000
ppm) compared with its linear counterpart (LC50 6,000 ppm). Appeal Br.
6-7. However, Appellant does not point to persuasive evidence to show that
such decreased toxicity was unknown, much less unexpected. "[ l]t is not
enough to shmv that results are obtained which differ from those obtained in
the prior art: that difference must be shown to be an
unexpected difference.'~ In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
For the foregoing reasons, we are not persuaded of error in the
Examiner's obviousness rejections. Accordingly, Rejection II is sustained.
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Appeal2018-002099
Application 14/388,301
DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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