Ex Parte Rached

Patent Trial and Appeal Board

Oct 31, 2018

13128996 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/128,996 05/12/2011
21839 7590 11/02/2018
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.
0078840-000069 5089
EXAMINER
ARANT, HARRY E
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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
Appeal2017-001886
Application 13/128,996
Technology Center 3700
Heard: October 23, 2018 1
Before MICHAEL C. ASTORINO, JAMES C. HOUSEL, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 2
1 A copy of the hearing transcript will be made of record when available.
2 Our Decision refers to the certified English-language translation of the
Specification ("Spec.") filed May 12, 2011, Appellant's Appeal Brief
("Appeal Br.") filed March 4, 2016, the Examiner's Answer ("Ans.") dated
September 23, 2016, Appellant's Reply Brief ("Reply Br.") filed November
21, 2016, a Declaration ofWissam Rached under 37 C.F.R. § 1.132 ("First
Deel.") filed September 27, 2013, and a Second Declaration of Wissam
Rached under 37 C.F.R. § 1.132 ("Second Deel.") filed July 28, 2014.
Appeal2017-001886
Application 13/128,996
Appellant3 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1-10 and 14--25. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to a heat transfer fluid and its use as a refrigerant
in a refrigeration loop, wherein the heat transfer fluid is a composition
containing 5-80 wt% 2,3,3,3-tetrafluoropropene ("HFC-1234yf'), 5--45 wt%
difluoromethane ("HFC-32"), and 2-50 wt% of at least one group-C
compound selected from propane, propylene, and ethylene (Spec. 3:7-18).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal.
1. A composition containing 5 to 80 wt% of 2,3,3,3-
tetrafluoropropene, 5 to 45 wt% of difluoromethane and 2 to
50 wt% of at least one group-C compound selected from the
group consisting of propane, propylene and ethylene.
Independent claims 4 and 14 recite a method and system, respectively,
of heating and/or air conditioning a cabin of a motor vehicle using a
composition as recited in claim 1.
REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection under 35 U.S.C. § 103(a):
3 ARKEMA FRANCE is identified as the real party in interest (Appeal
Br. 2).
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1. Claims 1-3, 15, 18, and 19 as unpatentable over Minor4 in view
of Shimomura; 5
2. Claims 16 and 17 as unpatentable over Minor in view of
Shimomura, and further in view of Takigawa; 6
3. Claims 4, 5, 7, 10, 14, 20, and 23 as unpatentable over Waldorf7
in view of Minor and Shimomura;
4. Claim 6 as unpatentable over Waldorf in view of Minor and
Shimomura, and further in view of Amaral; 8
5. Claims 8 and 9 as unpatentable over Waldorf in view of Minor
and Shimomura, and further in view of Burk; 9 and
6. Claims 21, 22, 24, and 25 as unpatentable over Waldorf in view
of Minor and Shimomura, and further in view of Takigawa.
ANALYSIS
Appellant argues claims 16, 1 7, 21, 22, 24, and 25 as a group
separately from claim 1 and does not argue claims 2-10, 14, 15, 18-20, and
23. Therefore, we address claim 1 and claims 16, 17, 21, 22, 24, and 25
separately. Claims 2-10, 14, 15, 18-20, and 23 stand or fall with claim 1.
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
4 Minor et al., US 2008/0230738 Al, published September 25, 2008
("Minor").
5 Shimomura et al., CA 2678661 Al, published September 04, 2008
("Shimomura").
6 Takigawa et al., JP 2008-208261 A, published September 11, 2008. The
Examiner relies, without objection, on a machine-translated English
language version produced January 31, 2014 ("Takigawa").
7 Waldorf, US 4,688,394, issued August 25, 1987.
8 Amaral et al., US 6,915,649 B2, issued July 12, 2005 ("Amaral").
9 Burk et al., US 6,843,312 B2, issued January 18, 2005 ("Burk").
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thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
("[I]t has long been the Board's practice to require an applicant to identify
the alleged error in the examiner's rejections."). After review of the
opposing positions articulated by Appellant and the Examiner and the
evidence of obviousness adduced by the Examiner in light of the
countervailing Declaration evidence proffered by Appellant, we are not
persuaded that Appellant identifies reversible error. In addition, we
determine that Appellant's arguments and evidence are insufficient to
outweigh the evidence of obviousness marshalled by the Examiner and that a
preponderance of the evidence supports the Examiner's findings of fact and
conclusions of law with respect to the prima facie case of obviousness.
Thus, we affirm the Examiner's rejections for the reasons expressed in the
Final Office Action and the Answer. We add the following primarily for
emphasis.
Claim 1
The Examiner finds Minor discloses a composition containing 1-80
wt% HFC-1234yf, 1-70 wt% HFC-134a, and 19-90 wt% propane (Ans. 2-
3, citing Minor ,r 30, Table 6). However, the Examiner finds Minor does not
teach the specific combination ofHFC-1234yf, HFC-32, and propane (id. at
3). The Examiner finds Shimomura teaches a composition containing HFC-
1234yf with a saturated hydrofluorocarbon such as HFC-134a or HFC-32
may be mixed with an oil to create a refrigerant with a high level of
compatibility and stability (id. at 3, citing Shimomura ,r,r 7-10, 14, 15). The
Examiner, therefore, concludes that it would have been obvious to have
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substituted HFC-32 for HFC-134a in Minor's refrigerant composition with a
reasonable expectation of success because these two compounds are art-
recognized equivalents for creating similarly compatible and stable
refrigerants (id.). In addition, the Examiner finds that the ordinary artisan
would have expected a higher heat capacity for a mixture containing HFC-
32 as compared to one containing HFC-134a because HFC-32 itself has a
higher heat capacity than HFC-134a (id. at 15).
Appellant presents three primary arguments against the Examiner's
obviousness rejection based on the combination of Minor and Shimomura:
1) HFC-32 and HFC-134a are not equivalents; 2) due to unpredictable
azeotropic chemistry, there is no reasonable expectation that substitution of
HFC-32 for HFC-134a in Minor's composition would be azeotropic or near-
azeotropic as Minor desires; and 3) the Examiner fails to rebut Appellant's
evidence of unexpected results.
With regard to the first argument, Appellant contends that in relying
on equivalence as a rationale supporting an obviousness rejection,
equivalency must be recognized in the prior art, and cannot be based either
on applicant's disclosure or the mere fact that the components are functional
or mechanical equivalents (Appeal Br. 7, citing In re Ruff, 256 F.2d 590
(CCPA 1958)). Though Appellant asserts that the Examiner's finding of
equivalence is based on their inclusion in a Markush group in Shimomura,
Appellant argues, quoting from Ruff, that the mere fact that components are
claimed as members of a Markush group cannot be relied upon to establish
equivalence (Appeal Br. 7; see also, Reply Br. 2). Appellant also asserts
that HFC-32 and HFC-134a are not equivalents based on evidence that
ternary mixtures containing either HFC-32 or HFC-134a have substantially
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different volumetric capacities (Appeal Br. 7-8, citing First Deel.), as well
as higher pressure (Reply Br. 2, citing Second Deel.).
As to the second argument, Appellant contends that Minor's stated
goal of a refrigerant composition is to be near azeotropic (Appeal Br. 8).
Appellant, therefore, asserts that a skilled artisan would only have reason to
substitute HFC32 for HFC-134a in Minor if there was an expectation that
HFC-32 would result in a near azeotropic composition (id.). However,
according to Appellant, no such expectation exists and, thus, no reason
exists for the substitution (id.). Further, because no expectation exists,
Appellant contends that Minor teaches away from the substitution (id.).
Appellant also contends that it is "unknown" why the skilled artisan would
attempt to modify one of the 129 mixtures disclosed in Minor's Table 6,
rather than any of the other 128 mixtures, given that azeotropic chemistry is
simply too unpredictable (id. at 9).
In support of Appellant's third argument, Appellant contends that the
Examiner's finding that the higher heat capacity for a ternary mixture
containing HFC-32 as compared to one containing HFC-134a would have
been expected ignores the complexity and unpredictability of the art (Reply
Br. 3). In this regard, Appellant directs attention to the Second Declaration
ofWissam Rached under 37 C.F.R. § 1.132 and notes that this declaration
presents results comparing a composition as claimed including HFC-32 to a
single composition from Minor including HFC-134a (Reply Br. 3).
Appellant urges that the declaration demonstrates unexpected results (id.).
As indicated above, Appellant's arguments are not persuasive of
reversible error, nor has Appellant established that the claimed invention
provides unexpected results. We begin by noting that Appellant appears to
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correctly state that reliance on equivalence as a basis for the obviousness of
substituting one compound for another in a composition requires that the
recognition of equivalence must be found in the prior art, not in Appellant's
disclosure. However, Appellant fails to appreciate that both Minor and
Shimomura recognize the equivalence, for purposes of obviousness, between
HFC-32 and HFC-134a. Indeed, both references teach a composition
including HFC-1234yf and may include one or more of a number of listed
alternative refrigerant compounds including, among others, HFC-32 and
HFC-134a (Minor ,r 19; Shimomura ,r,r 13-15).
In addition, Appellant appears to confuse equivalence as a
mathematical concept requiring identity from equivalence as a basis for
obviousness which merely requires that two compounds are recognized in
the prior art to be alternatives for use in the same environment. As
explained above, both Minor and Shimomura disclose that HFC-32 and
HFC-134a are known alternatives of each other for use in compositions also
including HFC-1234yf. There is no requirement that equivalents for
purposes of obviousness must perform identically when substituted, though
we recognize that unexpected differences in results using art recognized
equivalents may negate the apparent obvious substitution of one alternative
for another.
Further, the fact that both references disclose this recognition in a
Markush-like description is consistent with the Ruff decision cited by
Appellant. In Ruff, the applicant had disclosed and claimed, in a Markush
expression, a compound including a radical selected from the group
consisting of mercapto and amino radicals (Ruff, 256 F .2d at 591 ). Though
Ruff amended the application and claims to remove all reference to amino
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radicals, the PTO rejected claims limited to mercapto radicals based on a
reference teaching compounds including the amino radicals and Ruff's
teaching, via Markush language, that mercapto and amino radicals are
equivalents (256 F.2d at 592). The Ruff court reversed this rejection, not
because the equivalence was set forth in a Markush expression, but that the
Markush teaching was set forth in Ruff's application only, and not in the
prior art (id. at 596). As explained above, such is not the case here because
the teaching of equivalence relied on by the Examiner is in the prior art.
We also note that Minor teaches HFC-1234yf may be combined with
at least one compound selected from the group consisting of HFC-32 and
propane, among others (Minor ,r,r 10, 19). Likewise, Shimomura also
teaches HFC-1234yf may be combined with at least one component selected
from among saturated hydrofluorocarbons including HFC-32 and saturated
hydrocarbons including propane (Shimomura ,r,r 13-15). Although Minor
lists 129 possible azeotropic compositions in Table 6, none of which
combine both HFC-32 and propane with HFC-1234yf, such a combination is
nonetheless encompassed by both Minor and Shimomura' s disclosures.
Indeed, the fact that Minor teaches a multitude of effective
combinations ofHFC-1234yf, hydrofluorocarbons, and hydrocarbons does
not render any particular combination, including the claimed combination,
less obvious, especially where the claimed composition is used for the same
purpose disclosed in Minor. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) ("That the '813 patent discloses a multitude of
effective combinations does not render any particular formulation less
obvious. This is especially true because the claimed composition is used for
the identical purpose."); see also, In re Susi, 440 F.2d 442, 445 (CCPA
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1971) ( obviousness rejection affirmed where the disclosure of the prior art
was "huge, but it undeniably include[ d] at least some of the compounds
recited in appellant's generic claims and [was] of a class of chemicals to be
used for the same purpose as appellant's additives"); In re Kubin, 561 F .3d
1351, 1359 (Fed. Cir. 2009) ("Where a skilled artisan merely pursues
'known options' from a 'finite number of identified, predictable solutions,'
obviousness under § 103 arises." ( quoting KSR Int 'l. Co. v. Teleflex Inc., 550
U.S. 398,421 (2007)).
Turning next to Appellant's second argument, as the Examiner finds
(Ans. 16), Minor teaches that the disclosed compositions "may be azeotropic
or near-azeotropic," but does not require them to have that property
(compare Minor ,r 25 with ,r 32). In addition, although contending that the
azeotropic chemistry art is unpredictable, Appellant fails to direct our
attention to any evidentiary support in the record for this contention.
Appellant alleged at oral hearing that two decisions, In re Orfeo, 440 F .2d
439 (CCPA 1971) and In re Broadley, 404 F.2d 616 (CCPA 1968), support
Appellant's contention that azeotropic chemistry is unpredictable (see also,
Reply Br. 4--5, discussing Orfeo only). Appellant, however, did not explain
why these citations were omitted from both the Appeal Brief and the Reply
Brief.
Nonetheless, in Orfeo, the invention was directed to a low temperature
refrigeration process utilizing an azeotropic mixture of trifluoromethane
("CHF3"; boiling point of -82.0°C.) and monochlorotrifluoromethane
("CClF3; boiling point of -8I.4°C) (Orfeo, 440 F.2d at 440). Orfeo
disclosed that mixtures of CHF3 and CClF3 substantially in the range of
about 20% to about 75% CHF3 have boiling points within about 1 °C of the
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azeotropic boiling point, i.e., such mixtures are azeotropic or near-
azeotropic. In addition, absent evidence of unexpected results, Orfeo
admitted that the combination of known refrigerants in a conventional
refrigeration process would have been obvious to those skilled in the
refrigeration art (id. at 440-441 ). Yet, Orfeo asserted evidence of a new,
unexpected result in power requirement, which the court found persuasive
because Orfeo demonstrated that azeotropic mixtures of CHF3 and CC1F3,
contrary to all expectations, exhibits a power requirement lower than the
power requirements of the separate components, CHF3 or CC1F3, and that
for all other known azeotropes, the power requirement is higher than at least
one of the components of the mixture (id. at 441--442). Appellant fails to
direct our attention to any finding of the Orfeo court indicating that
azeotropic chemistry, generally, is unpredictable, nor do we find any.
In Broadley, the invention related to high capacity, low boiling,
azeotropic and substantially azeotropic refrigerant compositions consisting
of difluoromethane ("HFC-32") and 13---65 mol%
monochloropentafluoroethane ("C2ClFs") (Broadley, 404 F.2d at 616). The
court found that the PTO's obviousness rejection was based on the
homologous relationship between HFC-32 and CHF2CH3 ("HFC152a")
which would be sufficient in and of itself to enable the ordinary artisan to
predict that HFC-32 and C2ClF5, like the known HFC-152a and C2ClF5,
would form a useful azeotropic refrigerant composition ( 404 F .2d at 617).
The court also found that the PTO apparently accepted evidence submitted
by Broadley documenting the unpredictable nature of determining
azeotropic pairs of compounds, but failed to give this evidence weight in the
obviousness analysis (id. at 618). Therefore, the court held that, when
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properly weighed, Broadley's evidence adequately rebutted the ability to
predict the results provided by mixtures of HFC-32 and C2ClFs from known
mixtures of HFC-152a and C2ClF s and the homologous relationship between
HFC-32 and HFC-152a (id. at 619).
We note that Orfeo and Broadley involved azeotropic mixtures of
known refrigerants invented in the late 1960's, more than 40 years before
this application was filed. Even if either or both decisions found that, at that
time, that azeotropic chemistry was unpredictable, Appellant fails to direct
our attention to any evidence that, at the time of filing here, azeotropic
chemistry remained unpredictable. In addition, unlike Orfeo and Broadley,
the evidence supporting obviousness here includes the express teaching in
both Minor and Shimomura that HFC-32 and propane may be combined
with HFC-1234yfto produce acceptable azeotropic, near azeotropic, and
non-azeotropic refrigerant compositions. We also note that, although Minor
does not expressly teach the specific near-azeotropic combination of HFC-
1234yf, HFC-32, and propane, Minor expressly teaches numerous specific
near-azeotropic combinations ofHFC-1234yfwith HFC-32 or propane
(Minor ,r 29, Table 5, and ,r 30, Table 6). Therefore, even were we to accept
Appellant's contention that azeotropic chemistry is unpredictable, Minor
provides strong evidence that near-azeotropic combinations ofHFC-1234yf,
HFC-32, and propane exist and would have been obvious to one of ordinary
skill in the art.
Appellant's third argument is that the Examiner failed to rebut
Appellant's evidence of unexpected results. Whether an invention has
produced unexpected results is a question of fact. In re Mayne, 104 F.3d
1339, 1343 (Fed. Cir. 1997). "[T]here is no hard-and-fast rule for
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determining whether evidence of unexpected results is sufficient to rebut a
prima facie case of obviousness." Kao Corp. v. Unilever U.S., Inc., 441
F.3d 963, 970 (Fed. Cir. 2006); see also In re Dillon, 919 F.2d 688, 692-93
(Fed. Cir.1990) ("[e]ach situation must be considered on its own facts").
However, a party asserting unexpected results as evidence of
nonobviousness has the burden of proving that the results are unexpected. In
re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). "[I]t is not enough to
show 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). The extent of the showing
relied upon by Appellants also must reasonably support the entire scope of
the claims at issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
Here, Appellant fails to direct our attention to any evidence that the
results set forth in either Rached Declaration would have been unexpected to
one of ordinary skill in the art. Neither declaration states that the results
were unexpected, nor did Appellant assert in the Specification that such
results were unexpected. See Geisler, 116 F.3d at 1471 ("Geisler made no
such assertion [that results were unexpected] in his application. Nor did
Geisler submit any such statement through other evidentiary submissions,
such as an affidavit or declaration under Rule 132 .... Instead, the only
reference to unexpected results was a statement by Geisler' s counsel ... that
Geisler' s results were 'surprising.'"). Thus, Appellant's arguments to that
effect cannot take the place of evidence. In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978);
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
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Appellant did not even raise the issue of unexpected results in the
principal brief, though both Rached Declarations were included in the
Evidence Appendix and the different heat capacity between HFC-32 and
HFC-134a was asserted to be evidence that these two compounds are not
equivalents as discussed above (Appeal Br. 8 and Evidence App'x). In
addition, the Examiner's finds that the higher heat capacity for a ternary
mixture containing HFC-32 as compared to one containing HFC-134a would
have been expected because HFC-32 itself has a higher heat capacity than
HFC-134a (Ans. 15). Though Appellant contends that the Examiner ignores
the complexity and unpredictability of the art (Reply Br. 3), as discussed
above, Appellant fails to support the view that this art is unpredictable, much
less that the heat capacity itself would have been unpredictable. Thus,
Appellant fails to establish that the higher heat capacity results set forth in
the Rached Declarations would have been unexpected to one of ordinary
skill in the art.
Accordingly, we sustain the Examiner's obviousness rejection of
claim 1, as well as the obviousness rejections of claims 2-10, 14, 15, 18-20,
and 23.
Claims 16, 17, 21, 22, 24, and 25
Each of these dependent claims include in the ternary composition
either propylene or ethylene instead of propane as the at least one group-C
compound. The Examiner acknowledges that neither Minor nor Shimomura
teach propylene or ethylene instead of propane in a ternary mixture
including HFC-1234yf and HFC-32 (Ans. 12-14). However, the Examiner
finds Takagawa discloses a refrigerant composition similar to those of Minor
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in which a tetrafluoropropane may be mixed with a hydrofluorocarbon and a
hydrocarbon, wherein the hydrocarbon is preferably propane, but also
teaches that propylene or ethylene may be used (id.). Therefore, the
Examiner concludes that it would have been obvious to substitute either
propylene or ethylene for propane in the composition of Minor with a
reasonable expectation of success because these compounds are art-
recognized equivalents used for the same purpose as taught by Takagawa
(id.).
Appellant argues that there is no reason for one skilled in the art to
substitute propylene for propane in other mixtures, such as those in Minor,
because there is no apparent reason and no predictability that the resultant
mixture will also be near-azeotropic (Appeal Br. 12). This argument is not
persuasive of reversible error because Minor's disclosed compositions cover
azeotropic, near-azeotropic, and non-azeotropic compositions, as discussed
above. In addition, we note that the ranges of compound amounts in
Minor's near-azeotropic compositions for binary mixtures ofHFC-1234yf
and either HFC-32 or propane are broad (1-57/99--43 wt% HFC-
1234yf/HFC-32 and 1-80/99-20 wt% HFC-1234yf/HFC-32) (Minor i-f29,
Table 5). Minor's near-azeotropic ternary compositions including HFC-
1234yf and either HFC-32 or propane similarly allow broad ranges for these
compounds (Minor ,r 30, Table 6). Minor's data suggests that broad ranges
of these compounds may be combined to yield near-azeotropic compositions
thereby providing a reasonable expectation of achieving near-azeotropy, as
the Examiner finds, when substituting known alternatives for propane, such
as propylene and ethylene.
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Accordingly, we sustain the Examiner's obviousness rejections of
claims 16, 17, 21, 22, 24, and 25.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Examiner's Answer, the decision of the Examiner rejecting claims 1-
10 and 14--25 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)(l).
AFFIRMED
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