Ex Parte Ponder et al

Board of Patent Appeals and Interferences

Apr 29, 2010

10937736 - (D) (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH M. PONDER
and STEFFAN THOMAS, JR.
__________

Appeal 2009-0122291
Application 10/937,736
Technology Center 1700
____________

Decided: April 29, 2010
____________

Before MICHAEL P. COLAIANNI, LINDA M. GAUDETTE, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-10, 21-25, 27, 29-31, 33-35, and 37-40. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).

1 Oral arguments were heard in the appeal on April 14, 2010.
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We AFFIRM.
Appellants disclose a refrigerant replacement for refrigerant R-22
(chlorodifluoromethane) composed of a blend of refrigerant that is less
damaging to the ozone layer and a method and apparatus for refrigeration
(Spec. 1: 10-22).
Claim 21 is illustrative:
21. A refrigerant composition comprising a combination of
refrigerant gases and non-refrigerant gas components,

(a) the refrigerant gases consisting of:

about 40% to about 45% by weight tetrafluoroethane; and

about 55% to about 60% by weight pentafluoroethane; and

(b) the non-refrigerant gas components including about 0.5% up to
about 20% by weight of the refrigerant gases of a lubricating oil, wherein the
lubricating oil is selected from the group consisting of napthenic based
lubricants, paraffinic based lubricants, and mixtures thereof, mineral oil,
polyol ester, synthetic alkyl aromatic lubricants, synthetic alkyl aromatic
lubricants mixed with mineral oil, and synthetic alkyl aromatic lubricants
mixed with polyol ester.

Appellants appeal the following rejection:

Claims 1-10, 21-25, 27, 29-31, 33-35, and 37-40 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Takigawa (U.S. Patent
6,207,071 B1, March 27, 2001).
Appellants argue the claims as a group (App. Br. 5). Appellants’
mere statement of the subject matter of dependent claims 4, 9, and 25 (App.
Br. 10) do not amount to a separate argument of those claims. 37 C.F.R.
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§ 41.37(c)(1)(vii). Therefore, we select claim 21, the broadest independent
claim on appeal, as representative of the group. Id.

ISSUE
Did the Examiner err in concluding that Takigawa would have
suggested the subject matter of claim 21? We decide this issue in the
negative.
PRINCIPLES OF LAW
Applicants' reason for making the modification does not control the
obviousness analysis; rather, “any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007).
A compound and all of its properties are inseparable. In re Papesch,
315 F.2d 381, 391 (CCPA 1963).
A declarant’s or affiant’s opinion evidence as to an ultimate legal
conclusion is afforded no weight, though the underlying reasons for the
opinion may be considered. In re Lindell, 385 F.2d 453, 456 (CCPA 1967).

FACTUAL FINDINGS (FF)
We adopt the Examiner’s findings in the Answer and Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows. We add the following factual
findings:
1. Takigawa discloses a refrigerant oil and a fluid composition for a
refrigerator containing the oil and an HFC (hydrofluorocarbon)
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refrigerant blend containing 1,1,1,2-tetrafluoroethane (HFC-134a)
and/or pentafluoroethane (HFC-125) (col. 1, ll. 13-19).
2. Takigawa discloses that the HFC refrigerant contains HFC-134a
and/or HFC-125 (col. 2, ll. 15-17; 23-24; 40-41).
3. Takigawa discloses that the HFC-134a and/or HFC-125 blend may
include additional HFC refrigerants such as alkane fluorides
having 1 to 3 carbon atoms (col. 8, ll. 20-28). Takigawa places
“no restriction” on the kind of HFC to be mixed with HFC- 134a
and/or HFC-125 and exemplifies various suitable HFC
combinations (col. 8, ll. 29-55).
4. Takigawa claims that the HFC refrigerant used in the fluid
composition contains “at least one of HFC-134a and/or HFC-125”
(claim 1).
5. Takigawa discloses that HFC-134a is present in the refrigerant
composition in an amount of 40 weight percent or greater and that
HFC-125 is present in a most preferable amount of 40 weight
percent or greater (col. 8, ll. 20-28).

Additional findings of fact may appear in the Analysis that follows.

ANALYSIS
Appellants argue that Takigawa fails to teach or suggest a refrigerant
composition “consisting of” about 40% to about 45% HFC-134a (i.e.,
tetrafluoroethane) and about 55% to about 60% HFC-125 (i.e.,
pentafluoroethane) (App. Br. 8). Appellants contend that the claim phrase
“consisting of” excludes additional HFC refrigerants from the blend, which
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Takigawa teaches to mix with the HFC-134a and HFC-125 blend (App. Br.
9). Appellants argue that the Examiner has not provided a reason to select
the claimed narrower range (i.e., 40-45% HFC-134a and 55-60% HFC-125)
from Takigawa’s broader ranges (i.e., 40-100% HFC-134a and 20-100%
HFC-125) (App. Br. 9). Appellants contend that the Examiner’s stated case
lacks articulated reasoning for modifying Takigawa’s teachings to arrive at
the claimed invention (App. Br. 6-7).
Appellants’ argument that “consisting of” excludes additional HFC
refrigerants fails to address the Examiner’s position that Takigawa’s
unrestricted disclosure of HFCs that may be mixed with the refrigerant
means that no additional HFC need be added to the HFC-134a and HFC-125
blend (Ans. 3, 5). In other words, Takigawa’s alkane fluoride that is to be
mixed with the HFC-134a and HFC-125 blend may be an additional amount
of HFC-134a or HFC-125, rather than a different HFC. Though Takigawa
exemplifies different HFCs being mixed with the HFC-134a and HFC-125
blend, Takigawa’s claim 1 recites that that the refrigerant includes “at least
one of HFC-134a and HFC-125”, which underscores that the simplest
refrigerant composition mixture claimed by Takigawa includes the binary
mixture of HFC-134a and HFC-125.
Similarly, Appellants’ argument regarding the claimed percentages of
the refrigerant gases is not persuasive because it fails to address the
Examiner’s finding that Takigawa’s simplest binary refrigerant composition
is HFC-134a and HFC-125. As the simplest binary mixture, the Examiner
correctly determines, based on Takigawa’s disclosure (FF 5), that HFC-134a
would have been present in an amount of 40 to 60% by weight and HFC-125
correspondingly would be present in a range of 60 to 40% by weight (Ans.
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3, 5). Therefore, Takigawa’s disclosure would have suggested that at least
two of the end points of Appellants’ claimed ranges (i.e., 40% HFC-134a
and 60% HFC-125) and thus further narrowed Takigawa’s range.
Accordingly, we agree with the Examiner that given the guidance provided
by Takigawa, determining acceptable refrigerant gas concentration ranges
would have been a matter of routine experimentation.
We are unpersuaded by Appellants’ argument that there is no rationale
provided that Takigawa would have led one of ordinary skill the art to the
claimed refrigerant composition. In light of the reasons noted above, the
Examiner correctly determined that Takigawa would have suggested
Appellants’ claimed refrigerant composition.
Appellants further argue that Takigawa is directed to solving a
different problem (i.e., finding a suitable lubricant) than Appellants’ claimed
invention such that there would be no reasonable expectation of successfully
solving Appellants’ problems (i.e., high temperature application refrigerant
for replacing R-22 refrigerant) (App. Br. 11).
However, this argument is unpersuasive because the Examiner’s
reason for modifying the prior art to arrive at the claimed invention need not
be the same as Appellants’ reason for making the claimed invention. KSR,
550 U.S. at 420. Instead, any need or problem in the field of endeavor may
provide the reason for modifying the prior art. Id. Accordingly, Takigawa’s
disclosure of solving a different problem than Appellants’ problem is not
determinative.
As noted by the Examiner (Ans. 3, 5-6), Takigawa would have
suggested the claimed refrigerant composition, such that there is a
reasonable expectation of successfully achieving the claimed refrigerant
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composition, which would necessarily have the same properties as
Appellants’ claimed composition. Papesch, 315 F.2d at 391.
Appellants contend that the claimed composition possesses a superior
high temperature property not possessed or taught by Takigawa (App. Br.
12-14).2 Appellants rely on the Ponder and Gbur Declarations as evidence
that refrigerant gas compositions with different gas proportions have
different properties (App. Br. 12-14). Declarants Gbur and Ponder opine
that the claimed invention would not have been obvious from Takigawa
(App. Br. 13; Reply Br. 11).
Appellants’ evidence of unexpected results is not persuasive because
it fails to compare the claimed invention to the closest prior art (i.e.,
Takigawa) as noted by the Examiner (Ans. 7). Instead, the Ponder and Gbur
Declarations compare the claimed invention to the refrigerant R421B (85%
pentafluoroethane and 15% tetrafluoroethane), a refrigerant composition not
disclosed by Takigawa. Though the declarations may establish that different
combinations of refrigerant gases produce refrigerant compositions with
different properties, the comparison of R421A to R421B fails to account for
Takigawa’s disclosure of a binary refrigerant composition having 40% or
greater tetrafluoroethane content (i.e., HFC-134a) and preferably 40% or
greater pentafluoroethane content (i.e., HFC-125).
While Declarants Ponder’s and Gbur’s views that the claimed
invention would not have been obvious over Takigawa are not afforded any

2 Appellants argue long-felt need for the first time on pages 10-11 of the
Reply Brief. Because this argument is being raised for the first time in the
Reply Brief and there is no reason provided why this argument was not
raised in the Appeal Brief, we shall not consider the argument. Ex parte
Nakashima, 2010 WL 191183 *3-*5 (BPAI 2010).
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consideration as they are directed to the ultimate legal conclusion, the
underlying analyses that led to their conclusions in the declarations have
been considered. Lindell, 385 F.2d at 456. Specifically, the Ponder
Declaration merely states that the declarant found no teaching or suggestion
in Takigawa to make a refrigerant composition consisting of
tetrafluoroethane and pentafluoroethane as claimed (Ponder Dec. 8). The
Gbur Declaration filed October 30, 2007 does not address Takigawa but
rather discusses errors and analysis of Appellants’
Specification data. The Gbur Declaration filed May 16, 2008, like the
Ponder Declaration, rests its conclusion of non-obviousness on Takigawa’s
failure to exemplify a blend of only HFC-134a and HFC-125 (Gbur Dec. 2).
However, the Ponder and Gbur Declarations analyses are not
persuasive in view of Takigawa’s disclosures and our analysis of these
disclosures supra which determine that Takigawa would have suggested the
claimed refrigerant composition.
For the above reasons, we affirm the Examiner’s § 103 rejection of
claims 1-10, 21-25, 27, 29-31, 33-35, and 37-40 over Takigawa.

DECISION
The Examiner’s decision 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).

AFFIRMED

cam

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