Ex Parte Low et al

Patent Trial and Appeal Board

Jun 17, 2016

12308327 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/308,327 10/19/2009
26308 7590 06/21/2016
RYAN KROMHOLZ & MANION, S.C.
POST OFFICE BOX 26618
MILWAUKEE, WI 53226
FIRST NAMED INVENTOR
Robert E. Low
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.
9404.20758-PCT US 2349
EXAMINER
ZEC,FILIP
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
06/21/2016 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):
RKMIPPatent@rkmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT E. LOW and STUART CORR
Appeal2016-002663
Application 12/308,327
Technology Center 3700
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
CHARLES N. GREENHUT, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert E. Low and Stuart Corr (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 26-49. 1 We have
jurisdiction under 35 U.S.C. § 6(b ). An oral hearing in accordance with
37 C.F.R. § 41.47 was held on June 14, 2016.
We REVERSE.
1 The present appeal is taken from the Non-Final Action dated April 3, 2014
(hereinafter "Non-Final Action" or "Non-Final Act.").
Appeal2016-002663
Application 12/308,327
THE CLAIMED SUBJECT MATTER
Claim 26, reproduced below, is illustrative of the claimed subject
matter.
26. A method of drying a fluid comprising a fluoropropene and
water, the method comprises the step of:
contacting the fluid with a desiccant comprising a
molecular sieve having openings which have a size across their
largest dimension of from about 3 A to about 5 A, and removing
water from the fluoropropene when contacting the fluid with said
desiccant.
REJECTIONS
I. Claims 26-31, 41--43, 46, and 47 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Corr (US 2003/0157009 Al, pub. Aug.
21, 2003).
II. Claim 49 stands rejected under 35 U.S.C. § 102(b) as anticipated
by or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable
over Corr.2
III. Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Corr and Thomas '839 (US 2004/0089839 Al,
pub. May 13, 2004).
IV. Claims 34 and 35 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Corr and Thomas '966 (US 5,454,966, iss. Oct.
3, 1995).
2 Although the Examiner's rejection is based on anticipation under 35 U.S.C.
§ 102(b) or, in the alternative, on obviousness under 35 U.S.C. § 103(a), the
rejection does not articulate any rationale as to why the claimed subject
matter would have been obvious, if it is not anticipated. See Non-Final Act.
7.
2
Appeal2016-002663
Application 12/308,327
V. Claims 36 and 37 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Corr and Cavestri (US 5,742,066, iss. Apr. 21,
1998).
VI. Claims 38--40 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Corr and Thomas '444 (US 6,589,444 B2, iss.
July 8, 2003).
VII. Claims 44, 45, and 48 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Corr and Shankland (US 2006/0043331 Al, pub.
Mar. 2, 2006).
DISCUSSION
All of the Examiner's rejections are grounded in pertinent part on the
Examiner's finding that Corr's fluid R-134a inherently comprises water.
Non-Final Act. 4. In support of this finding, the Examiner directs our
attention to a table from an HV AC handbook3 and to an engineering material
specification for molecular sieve desiccant WSH-M99Bl 78-A from Ford
Motor Company.4 With respect to the question of whether refrigerant R-
134a inherently contains water, at best, the evidence cited by the Examiner
shows a recognition in the art that refrigerants such as R-134a may contain
3 Non-Final Act. 3, 7. The reproductions of the table on pages 3 and 7 of the
Non-Final Action contained in the electronic file for the present application
are not legible, but the table appears to set forth acceptance criteria for
moisture in various refrigeration fluids, including R-134a.
4 Ans. 12 (citing FORD WSH-M99Bl 78-A: MOLECULAR SIEVE
DESICCANT TO BE USED WITH FORD WSS-M99Pl 111-A (Ford Motor
Co. 2002), retrieved from
http://engineers.ihs.com/document/abstract/KZHFCAAAAAAAAAAA). A
copy of this reference was submitted with Appellants' Appeal Brief.
3
Appeal2016-002663
Application 12/308,327
water, as well as an interest in keeping water content at or below acceptable
limits and the use of desiccants to aid in keeping water content within
acceptable limits. However, this is not sufficient to establish, by a
preponderance of the evidence, that water is inherently present in R-13 4a. 5
"Inherency ... may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient." In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
(citations and internal quotation marks omitted). Accordingly, we do not
sustain the Examiner's rejections, all of which are grounded in part on an
unsupported finding of inherency of the presence of water in Corr's fluid R-
134a.
5 In addressing the statement in the Corr Declaration (Declaration of Stuart
Corr, dated Feb. 18, 2013, i-f 15) that a zeolite adsorbent will not necessarily
act to remove water from a fluid, the Examiner cites Fujita (US 5,910,161,
iss. June 8, 1999) as "extrinsic evidence, which teaches the use of a synthetic
zeolite [having holes extending to molecule absorbing cavities of diameter
equal to or less than 3.3 angstroms, which is smaller than a molecule of
refrigerant and larger than a molecule of water,] to remove water from the
refrigerant comprising R-134a." Ans. 13 (citing Fujita, col. 3, 11. 40-59).
We make no finding as to whether Fujita might anticipate or render obvious
the subject matter of any of the claims involved in this appeal, as the
Examiner has not rejected the claims on this basis. "The Board's primary
role is to review the adverse decision as presented by the Examiner, and not
to conduct its own separate examination of the claims. Further, since the
exercise of authority under 3 7 CPR 41. 50(b) is discretionary, no inference
should be drawn from a failure to exercise that discretion." Manual of
Patent Examining Procedure (MPEP), 9th ed., rev. 7, Nov. 2015, § 1213.02.
4
Appeal2016-002663
Application 12/308,327
DECISION
The Examiner's decision rejecting claims 26-49 is reversed.
REVERSED
5