Ex Parte Pham et al

Board of Patent Appeals and Interferences

Jan 9, 2009

10885434 (B.P.A.I. Jan. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HANG T. PHAM, GARY KNOPECK,
RONALD RIEGAL, MARY C. BOGDAN,
LESLIE BEMENT, and DAVID J. WILLIAMS
____________

Appeal 2008-6040
Application 10/885,434
Technology Center 1700
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Decided: January 9, 2009
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Before CHARLES F. WARREN, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-7. We have jurisdiction pursuant to
35 U.S.C. § 6.

Appeal 2008-6040
Application 10/885,434

Appellants’ claimed invention is directed to a composition including
either a material to be sprayed or a polyol, and a propellant/blowing agent
that comprises an azeotrope. The azeotrope additive portion that is
employed as a component part of either claimed composition consists
essentially of about 1 to about 90 weight percent of 2-chloropropane
(isopropane) and from about 10 to about 99 weight percent of HFC-245fa
(1,1,1,3,3 pentafluoropropane).
Claim 4 is illustrative and reproduced below:
4. A sprayable composition comprising a material to be sprayed
and a propellant comprising an azeotrope consisting essentially of
form about 1 to about 90 weight percent 2-chloropropane and from
about 10 to about 99 weight percent HFC-245fa.

The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Nyberg US 6,646,020 Nov. 11, 2003

The Examiner maintains the following rejections:
Claims 1-7 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Nyberg. Claims 4-7 stand provisionally rejected under 35
U.S.C. § 101 as being unpatentable for double patenting as claiming the
same invention as that of claims 10-13 of previously copending U.S. Patent
Application No. 10/885,359. Also, claims 1-3 stand provisionally rejected
under the judicially created doctrine of obviousness-type double patenting as
being unpatentable over claims 1-9 of previously copending U.S. Patent
Application No. 10/885,359.
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Application 10/885,434

We affirm the Examiner’s anticipation rejection. As for the
Examiner’s provisional double patenting and provisional obviousness-type
double patenting rejections, these latter rejections are moot given the current
abandoned status of Application No. 10/885,359.

Rejection under § 102(e)
Appellants argue the rejected claims as a group. Thus, we select
claim 4 as the representative claim on which we shall decide this appeal as
to the anticipation rejection.
Appellants do not argue the Examiner’s anticipation rejection on the
basis that Nyberg lacks a description of a sprayable composition comprising
a propellant (see the Appeal Brief in its entirety). Moreover, Appellants do
not argue that Nyberg fails to teach a propellant/blowing agent that can
include 2-chloropropane and 1,1,1,3,3-pentafluoropropane. Rather,
Appellants contend that Nyberg does not disclose an azeotropic mixture of
2-chloropropane and 1,1,1,3,3-pentafluoropropane (Br. 8).
On the other hand, the Examiner essentially maintains that Appellants
have not established that the claim 4 product retains an azeotropic
characteristic that distinguishes the claimed product over Nyberg’s sprayable
product containing 2-chloropropane and 1,1,1,3,3-pentafluoropropane (Ans.
6).
ISSUE
The principal issue before us raised by Appellants’ arguments in the
Appeal Brief is: Have Appellants’ established reversible error in the
Examiner’s anticipation rejection of the sprayable product required by
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Application 10/885,434

representative claim 4 based on the argument that Nyberg does not disclose
an azeotrope of 2-chloropropane and 1,1,1,3,3-pentafluoropropane?
We answer this question in the negative and we affirm the Examiner’s
anticipation rejection, on this record.

PRINCIPLES OF LAW
During examination, claims terms must be given “their broadest
reasonable construction consistent with the specification.” In re Icon Health
and Fitness, Inc., 496 F.3d 1374, 1378-79 (Fed. Cir. 2007). In this regard,
during examination proceedings, claims are given their broadest reasonable
interpretation consistent with the Specification as they would have been
understood by one of ordinary skill in the art. See In re Graves, 69 F.3d
1147, 1152 (Fed. Cir. 1995).
Under 35 U.S.C. § 102, anticipation is established only when a single
prior art reference describes, either expressly or under the principle of
inherency, each and every element of a claimed invention. In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990).
However, anticipation by a prior art reference does not require that the
reference recognize either the inventive concept of the claimed subject
matter or the inherent properties that may be possessed by the prior art
reference. See Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 633
(Fed. Cir.), cert. denied, 484 U.S. 827 (1987).
Anticipation under this section is a factual determination. See In re
Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing In re
Bond, 910 F.2d 831, 833 (Fed. Cir. 1990).
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Application 10/885,434

FACT FINDINGS AND ANALYSIS
The Specification provides that “there is a range of compositions
containing the same components in varying proportions that are azeotrope-
like [or constant boiling]” and “[a]ll such compositions are intended to be
covered by the terms “azeotrope-like” [and “constant boiling]”” (see
paragraph bridging Spec. pp. 4-5). Appellants state that preferred inventive
compositions “are characterized by a boiling point of about 14.54°C ± 4
°C…” (Spec. 5). All of the 2-chloropropane/HFC 245fa binary mixtures
presented in Table 4 of the subject Specification handily meet such a loosely
defined “constant boiling point” boiling point criteria (Spec. 6).
Nyberg discloses a a blowing agent/propellant for use in an aerosol
composition that can include 2-chloropropane and HFC-245fa in admixture,
including amounts of each that fall within the broad range encompassed by
representative claim 4 for these constituents (see, e.g., col. 1, ll. 47-51; col.
4, ll. 29-30; col. 6, l. 8; and Fig. 1).
In this regard and in giving representative claim 4 its broadest
reasonable construction as it would be understood by one of ordinary skill in
the art when read light of the subject Specification, we determine that claim
4 requires the addition of a propellant component including any amount,
however small, of a loosely defined azeotrope of 2-chloropropane and HFC-
245fa (1,1,1,3,3-pentafluoropropane) as set forth in the subject Specification.
Moreover, the claim 4 product does not require that this azeotrope is the
only propellant found in the claimed sprayable composition. Also, claim 4
calls for a sprayable product and employs the transition term “comprising”
in listing the components of the recited product, which transitional term
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Application 10/885,434

leaves the product required by claim 4 open to the inclusion of other
ingredients, including other propellants, such as a 2-chlorpropane propellant
in addition to the called for azeotrope additive component of 2-
chloropropane and 1,1,1,3,3-pentafluoropropane. Nor does Claim 4 require
that the product composition thereof meet the loosely defined boiling point
parameters for a binary azeotrope of 2-chloropropane and HFC-245fa, as set
forth in Appellants’ Specification, for an overall composition product within
the scope of claim 4.
Thus, Nyberg discloses a sprayable composition using a propellant
(blowing agent) that includes 2-chloropropane and HFC-245fa in admixture
that falls within the scope of the claim 4 requirements therefor as set forth by
the Examiner in the Answer.
In light of our claim construction above and the teachings of Nyberg,
it is appropriate that Appellants bear the burden to establish that
representative claim 4 requires a product spray which patentably
distinguishes over the sprays made according to Nyberg based on
Appellants’ loosely defined azeotrope criteria. After all, the Patent and
Trademark Office is not equipped to make and compare products. On this
record, Appellants have not discharged this burden. See, e.g., Spada, 911
F.2d at 708-09; In re Best, 562 F.2d 1252, 1255-56 (CCPA 1977).
In view of the above, we are not persuaded of any reversible error in
the Examiner’s anticipation rejection of representative claim 4 based on the
arguments presented in the Appeal Brief.1 In particular, we note that the

1 In the Evidence Appendix to the Brief, Appellants do not identify any
evidence being relied upon and state “No additional evidence presented.”
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Application 10/885,434

arguments presented in the Appeal Brief with respect to the lack of a
description of an azeotropic propellant/blowing agent comprising 2-
chloropropane and HFC-245fa in Nyberg is not persuasive because
Appellants have not established an actual product distinction for the
sprayable product of representative claim 4. In this regard, Appellants’
assertions with respect to the lack of a recognition of such an azeotropic
binary propellant/blowing agent in Nyberg are not persuasive for the reasons
discussed above. As such, we affirm the Examiner’s anticipation rejection
of claims 1-7 over Nyberg.
CONCLUSION
Appellants have not established reversible error in the Examiner’s
anticipation rejection of the sprayable product required by representative
claim 4 based on the argument that Nyberg does not disclose an azeotrope of
2-chloropropane and 1,1,1,3,3-pentafluoropropane.

ORDER
The decision of the Examiner to reject claims 1-7 under 35 U.S.C. §
102(e) as being anticipated by Nyberg 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)(1)(iv).

AFFIRMED

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Appeal 2008-6040
Application 10/885,434

PL Initial:
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