Ex Parte Rached

Patent Trial and Appeal Board

Jun 25, 2018

13146721 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/146,721 07/28/2011
21839 7590 06/27/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Wissam Rached
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.
0078840-000058 6733
EXAMINER
STANLEY, JANEL
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
06/27/2018 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 WISSAM RACHED
Appeal2017-000227
Application 13/146, 721
Technology Center 1700
Before TERRY J. OWENS, JENNIFERR. GUPTA, and
JANEE. INGLESE, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-3and14--18. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellant claims a composition which, the Appellant states, is
useful as a coolant in a motor vehicle air conditioning system (Spec. 1:4--19;
2:30-3:8). Claim 1 is illustrative:
Appeal2017-000227
Application 13/146, 721
1. A composition comprising 5 to 80% by weight of
2,3,3,3-tetrafluoropropene, 5 to 25% by weight of
1, 1, 1,2-tetrafluoroethane and 2 to 50% by weight of propane.
Minor
The Reference
US 2006/0243944 Al
The Rejections
Nov. 2, 2006
The claims stand rejected over Minor as follows: claims 1, 14, 17,
and 18 under 35 U.S.C. § 102(b), and claims 2, 3, 15, and 16 under
35 U.S.C. § 103.
OPINION
We reverse the rejection under 35 U.S.C. § 102(b), affirm the
rejection under 35 U.S.C. § 103, and enter a new ground of rejection of
claims 1, 14, 17, and 18 under 35 U.S.C. § 103.
Rejection under 35 US.C. § 102(b)
The Examiner has the initial burden of establishing a prima facie case
of anticipation by pointing out where all of the claim limitations appear in a
single reference. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re
King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). The Appellant's claims 1, 14,
1 7, and 18 require 5-25 wt% 1, 1, 1,2-tetrafluoroethane.
Minor discloses a preferred refrigerant composition comprising 1-
80 wt% HFC-1234yf (2,3,3,3-tetrafluoropropane) (more preferably 10-
80 wt%), 1-80 wt% HFC-134a (1,1,1,2-tetrafluoroethane) (more preferably
10-80 wt%), and 19-98 wt% propane (more preferably 19-50 wt%)
(Table 2), and exemplifies a composition consisting of 24.5 wt%
HFC-1234yf, 31.1 wt% HFC-134a and 44.5 wt% propane (Table 4). The
31.1 wt% HFC-134a is not within the Appellant's 5-25 wt% range.
2
Appeal2017-000227
Application 13/146, 721
The Examiner finds that "while the range of 10-80 wt% HFC-134a
taught by Minor may be broader than and fully encompass the claimed range
of 5-25 wt[%], Minor directs one of ordinary skill to the lower end of the
10-80 wt% range with sufficient specificity to anticipate (see Table 4)"
(Ans. 6), and "Minor substantially overlaps with the claimed range of 5 to
25 wt% and the example of Table 4 of 31.1 wt% provides sufficient
direction to one of ordinary skill to look to the lower end of the broader
ranges taught, thus rendering the claimed range anticipated" (Ans. 7).
The Examiner provides no support for those findings. The
Examiner's bald assertions are insufficient to establish that Minor discloses
a composition containing 5-25 wt% HFC-134a. Accordingly, we reverse
the rejection under 35 U.S.C. § 102(b).
New ground of rejection
In accord with 37 C.F.R. § 41.50(b), claims 1, 14, 17, and 18 are
rejected under 35 U.S.C. § 103 as obvious over Minor.
Establishing a prima facie case of obviousness requires showing that
one of ordinary skill in the art would have had both an apparent reason or
suggestion to modify the prior art and predictability or a reasonable
expectation of success in doing so. See KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007); In re Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991).
Minor's disclosure of refrigerant composition component amounts of
1-80 wt% HFC-1234yf, 1-80 wt% HFC-134a, and 19-98 wt% propane
(Table 2) would have provided one of ordinary skill in the art with a
motivation or apparent reason to use any amounts within those ranges,
including the Appellant's amounts of 5-80 wt% HFC-1234yf, 5-
3
Appeal2017-000227
Application 13/146, 721
25 wt% HFC-134a, and 19--50 wt% propane (claims 1 and 14). As stated in
In re Peterson, 315 F.3d 1325, 1329--30 (Fed. Cir. 2003):
In cases involving overlapping ranges, we and our predecessor
court have consistently held that even a slight overlap in range
establishes a prima facie case of obviousness ....
Selecting a narrow range from within a somewhat broader range
disclosed in a prior art reference is no less obvious than
identifying a range that simply overlaps a disclosed range. In
fact, when as here, the claimed ranges are completely
encompassed by the prior art, the conclusion is even more
compelling than in cases of mere overlap. [(Citations omitted.)]
Minor's indication that all amounts within those ranges are suitable (Table 2;
claim 15) would have provided one of ordinary skill in the art with
predictability or a reasonable expectation of success in using any amounts
within those ranges. The GWP (global warming potential) values in
claims 17 and 18 are properties of Minor's compositions within the
Appellant's claims 1 and 14 from which, respectively, claims 17 and 18
depend. See In re Papesch, 315 F.2d 381, 391(CCPA1963) ("From the
standpoint of patent law, a compound and all of its properties are
inseparable; they are one and the same thing"). Consequently, the
compositions claimed in the Appellant's claims 1, 14, 17, and 18 would have
been prima facie obvious to one of ordinary skill in the art over Minor.
The Appellant asserts that "Minor does not describe a narrower range
than what appears in Table 2" (App. Br. 11 ).
The Appellant's narrower ranges would have been prima facie
obvious to one of ordinary skill in the art as set forth above.
The Appellant argues (App. Br. 12):
4
Appeal2017-000227
Application 13/146, 721
The Appellant has discovered that embodiments of the
composition falling within the scope of the appealed claims
provide an unexpected result of improved %COP [coefficient of
performance] and %CAP [volumetric capacity] in comparison
to compositions outside the scope of the appealed claims, but
within the scope of the "more preferred" ranges of Minor. See
1.132 Declaration of Wissam Rached.
For example, compositions within the claimed range
achieved a %COP between 104 and 106, and a %CAP ranging
from 98 to 109, exceeding the performance of a composition
containing 26 wt.% ofHFC-134a (%COP of only 103%; CAP
of only 94 ). See 1.13 2 Declaration of Wiss am Rached at
paragraph 5.
The totality of the evidence of record, including the Declaration
evidence, supports a conclusion of obviousness of the Appellant's claimed
composition for the following reasons.
First, it is not enough for the Appellant to show that the results for the
Appellant's composition and the comparative examples differ. The
difference must be shown to be an unexpected difference. See In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077,
1080 (CCPA 1972). The Declaration does not state that the results would
have been unexpected by one of ordinary skill in the art. The Appellant has
provided mere attorney argument to that effect, and such argument by
counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984).
Second, the evidence is not commensurate in scope with the claims.
See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622
F.2d 1029, 1035 (CCPA 1980). The Declaration compares the HFC-134a
content (26 wt%) outside the Appellant's range to HFC-134a contents of 5-
5
Appeal2017-000227
Application 13/146, 721
15 wt%, but not to the closest value (25 wt%) within the Appellant's range
(5-25 wt%).
The Appellant asserts that "HFC-134a has a GWP of 1,430, while the
GWP ofHF0-1234yf [sic] is 4 and the GWP of propane is 3.3. Thus, the
claimed composition exhibits improved performance along with a lower
environmental burden due to a lower proportion of HFC-134a"
(App. Br. 12).
The Appellant does not establish that one of ordinary skill in the art
would not have expected that lowering the concentration of a high-GWP
component relative to lower-GWP components would reduce the
composition's GWP.
The Appellant asserts (App. Br. 13): "That Minor prefers a range
excluding less than 10 wt. % of HFC-134a provides further evidence that the
prior art, including Minor, did not expect improved performance with lower
levels ofHFC-134a."
The Appellant's claims do not require a HFC-134a content less than
10 wt%. Moreover, Minor is not limited to its more preferred embodiment.
See In re Kohler, 475 F.2d 651, 653 (CCPA 1973); In re Mills, 470 F.2d
649, 651(CCPA1972); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969).
Instead, all disclosures in the reference must be evaluated for what they
would have fairly suggested to one of ordinary skill in the art. See In re Boe,
355 F.2d 961, 965 (CCPA 1966). Minor would have suggested the entire 1-
80 wt% HFC-134a range (Table 2) to one of ordinary skill in the art.
For the above reasons the Appellant's claimed composition would
have been obvious to one of ordinary skill in the art over Minor.
6
Appeal2017-000227
Application 13/146, 721
Rejection of claims 2, 3, 15, and 16 under 35 USC§ 103
The Appellant's arguments regarding claims 2, 3, 15, and 16
(App. Br. 11-13) are addressed above in the explanation of the new
rejection. Accordingly, we are not persuaded of reversible error in the
rejection of those claims.
DECISION
The rejection of claims 1, 14, 17, and 18 under 35 U.S.C. § 102(b)
over Minor is reversed. The rejection of claims 2, 3, 15, and 16 under
35 U.S.C. § 103 over Minor is affirmed. Under 37 C.F.R. § 41.50(b) a new
ground of rejection of claims 1, 14, 17, and 18 has been entered.
The Examiner's decision is affirmed-in-part.
In addition to affirming the examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) which provides that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
7
Appeal2017-000227
Application 13/146, 721
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-IN-PART; 37 C.F.R. § 41.50(b)
8