Ex Parte Santrock et al

Patent Trial and Appeal Board

Apr 28, 2017

13715353 (P.T.A.B. Apr. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
P023310-GMVE-DPH 1034
EXAMINER
MC GINTY, DOUGLAS J
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
13/715,353 12/14/2012
104102 7590
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
Jeffrey Santrock
04/28/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY SANTROCK, TODD J. GORDON,
JEFFREY A. BOZEMAN, and BRYAN M. STYLES
Applicant: GM Global Technology Operations LLC
Appeal 2016-004358
Application 13/715,3531
Technology Center 1700
Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL2
1 Appellant identifies General Motors LLC as the real party in interest.
Appeal Br. 3.
2 In this Opinion, we refer to the Specification filed December 14, 2012
(“Spec.”); the Final Action mailed February 4, 2015 (“Final Act.”); the
Advisory Action mailed May 11, 2015 (“Adv. Act.”); the Appeal Brief filed
September 3, 2015 (“Appeal Br.”); the Examiner’s Answer mailed January
20, 2016 (“Ans.”); and the Reply Brief filed March 18, 2016 (“Reply Br.”).
Appeal 2016-004358
Application 13/715,353
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1—23. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to refrigeration compositions, refrigeration
systems and methods of making, operating, and using the same. Claims 1,
12, and 21. Independent claims 1, 12, 20, and 21, reproduced below, are
illustrative of the claimed subject matter:
1. A product comprising:
a vehicle having an engine compartment, a combustion
engine and exhaust gas system connected to the combustion
engine constructed and arranged to discharge exhaust gas
therefrom, wherein the combustion engine and at least a portion
of the exhaust gas system are in the engine compartment;
a refrigeration system in the engine compartment
positioned such that venting of the refrigerant results in the
refrigerant coming in contact with components at high
temperatures, and wherein the refrigeration system includes a
refrigerant including CF3CF=CH2, the refrigeration system
including a lubricating oil or grease, the refrigerant including
CF3CF=CH2 ignites with oxygen at a first temperature, is
combined with the lubricating oil or grease, which ignites with
oxygen at a second temperature, so that a resultant mixture is
provided that ignites with oxygen at a third temperature greater
than the first temperature.
12. A product comprising:
a mixture comprising including CF3CF=CH2 and a
lubricating oil or grease, the CF3CF=CH2 ignites with oxygen
at a first temperature, is combined with the lubricating oil or
grease which ignites with oxygen at a second temperature, so
that the mixture ignites with oxygen at a third temperature
greater than the first temperature.
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20. A product comprising a refrigerant including
CF3CF=CH2 and a lubricating or grease including a fluorinated
component.
21. A method comprising:
providing a vehicle having an engine compartment, a
combustion engine and exhaust gas system connected to the
combustion engine constructed and arranged to discharge
exhaust gas therefrom, wherein the combustion engine and at
least a portion of the exhaust gas system are in the engine
compartment;
a refrigeration system in the engine compartment
positioned such that venting of the refrigerant results in the
refrigerant coming in contact with components at high
temperatures, and wherein the refrigeration system includes a
refrigerant including CF3CF=CH2 and the refrigerant carrying
a lubricating oil or grease, wherein the refrigerant including
CF3CF=CH2 ignites with oxygen at a first temperature, is
combined with the lubricating oil or grease, which ignites with
oxygen at a second temperature, so that a resultant mixture is
provided that ignites with oxygen at a third temperature greater
than the first temperature.
Appeal Br. 16, 18, 20 (Claims App’x).
REFERENCES
The Examiner maintains the rejections of the claims on appeal over
the following prior art:
Leek et al. US 2007/0187639 A1 Aug. 16, 2007
(Hereinafter “Leek”)
DuPont™ Krytox® Performance Lubricants Product Overview
(“DuPont”), copyright 2010
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Application 13/715,353
REJECTIONS3
The Examiner rejects the claims as follows: (1) claims 12—16 and 20
are rejected under 35 U.S.C. § 102(b) over Leek (Final Act. 4); (2) claims 1—
5, 9—16, and 20-234 are rejected under 35 U.S.C. § 103(a) as obvious over
Leek in view of admission and documentation of well-known facts (Final
Act. 5); and (3) claims 1—23 are rejected under 35 U.S.C. § 103(a) as
obvious over Leek in view of admission and documentation of well-known
facts and further in view of DuPont (id. at 6).
OPINION
Rejection of claims 12 16 and 20 as anticipated by Leek
Appellant argues for patentability of claim 12, but does not separately
address its dependent claims 13—16. Therefore, claims 13—16 will stand or
fall with claim 12.
Claim 12 requires “a mixture comprising including [CF3CF=CH2] and
a lubricating oil or grease.” Appeal Br. 18 (Claims App’x). The
Specification states that the refrigerant of the invention “may include
2,3,3,3-tetrafhioroprop-l-ene [(CF3CF=CH2)]” and that “suitable
refrigerants including CF3CF=CH2 [are] commonly known as R1234yr or
HF01234yf and are available from Honeywell and DuPont.” Spec. 114.
The Specification also states that “[s]uitable lubricating oils and grease for
3 The Examiner’s rejections of claims 1—19 and 21 under 35 U.S.C. § 112,
first and second paragraphs, were withdrawn in the Advisory Action. Adv.
Act. 1.
4 The Examiner notes in the Answer (3) that claims 22 and 23 (added after
the Final Action) are rejected in the Advisory Action (1).
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Application 13/715,353
numerous variations of the invention are available from DuPont under the
tradename KRYTOX.” Id. at 24.
The Examiner finds that Leek discloses a refrigeration system
comprising a refrigerant such as 2,3,3,3-tetrafhioro-l-propene, which is also
known as 2,3,3,3-tetrafluoroprop-l-ene and CF3CF=CH2, and a
perfluoropolyether. Final Act. 4 (citing Feck 110). The Examiner further
finds that Feck explicitly discloses KRYTOX, a perfluropolyether having 2—
100 repeating units {id. (citing Feck 115)), as being a suitable
perfluoropolyether, and that the Specification likewise discloses that
“[s]uitable lubricating oils and grease for numerous variations of the
invention are available from DuPont under the tradename KRYTOX” (Spec.
124; see id.). The Examiner therefore finds that Feck discloses a mixture
comprising CF3CF=CH2 and a lubricating oil or grease identified in the
Specification. Id. The Examiner acknowledges that, with respect to claims
12—16, Feck does not expressly teach that ‘“the refrigerant. . . ignites (with
oxygen) at (a) first temperature,’ ‘the lubricating oil or grease . . . ignites
(with oxygen) at (a) second temperature,’ and that a resultant mixture ignites
at a higher third temperature.”5 Id. at 4—5. However, because Feck
discloses CF3CF=CH2 and one of the same lubricating oils identified in the
Specification, the Examiner finds that Feck anticipates claims 12—16
because “compositions with the same ingredients would be expected to have
the same properties.” Id. at 5. In other words, the Examiner finds that Feck
5 As indicated supra, Appellant followed the Examiner’s recommendation
and amended the claims to recite “with oxygen” at “a” temperature in the
Amendment After Final.
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Application 13/715,353
describes a mixture that inherently possesses the characteristics of the
claimed mixture.
Appellant points out that Leek discloses over 100 possible refrigerants
and over 100 possible additives. Appeal Br. 10. Appellant contends that
Leek contains no teaching that would have led a person of ordinary skill in
the art at the time of the invention to “select the correct combination of
constituents from all the possible combination[s] of constituents” that would
result in a mixture that ignites with oxygen at a temperature greater than the
temperature at which CF3CF=CH2 ignites with oxygen. Id.
Appellant’s argument is persuasive. See In re Arkley, 455 F.2d 586,
587-88 (CCPA 1972) (“[F]or the instant rejection under 35 U.S.C. 102(e) to
have been proper, the . . . reference must clearly and unequivocally disclose
the claimed compound or direct those skilled in the art to the compound
without any need for picking, choosing, and combining various disclosures
not directly related to each other by the teachings of the cited reference.”)
Such clear and unequivocal disclosure is lacking here, given the lack of any
teaching in Leek to select CF3CF=CH2 over some 100+ other disclosed
refrigerants.
We therefore do not sustain the Examiner’s rejection of claim 12 as
anticipated by Leek. We also do not sustain the rejection of its dependent
claims 13—16.
Although the Examiner includes claim 20 in the anticipation rejection,
the claim is not further addressed in the Final Action. See Final Act. 4—5. In
the Answer, the Examiner finds that CF3CF=CH2, as recited in claim 20, is
the same as the 2,3,3,3-tetrafluoro-l-propene in Leek, and the “fluorinated
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component” of claim 20 encompasses the perfluoropolyether in Leek. Ans.
6.
Appellant does not dispute the Examiner’s finding that Leek describes
a mixture of CF3CF=CH2, and a lubricant including a fluorinated
component. See Reply Br. 6. Rather, Appellant contends that the Examiner
has not shown that Feck discloses a “refrigerant including [CF3CF=CFb].”
Reply Br. 6. In other words, Appellant argues that the claim language
requires that the refrigerant contain additional components, and the
Examiner therefore has not shown the presence of compositions with the
same ingredients.
We disagree. Non-conventional transitional phrases (i.e., other than
“comprising,” “consisting essentially of,” and “consisting”) are interpreted
in light of the specification to determine whether open or closed claim
language is intended. See, e.g., Lampi Corp. v. American Power Prods. Inc.,
228 F.3d 1365, 1376 (Fed. Cir. 2000) (interpreting “having” as open
terminology, allowing the inclusion of other components in addition to those
recited); Mars Inc. v. ILL Heim Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004)
(“| L |ike the term “comprising,’ the terms “containing’ and ‘mixture’ are
open-ended.”).
We find nothing in the Specification to suggest that “including” was
intended as other than open claim language, allowing but not requiring
additional, unrecited elements. Therefore, the refrigerant of claim 20
requires the presence of CF3CF=CH2, and may, but need not necessarily,
include additional elements.
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Leek discloses a product comprising 2,3,3,3-tetrafluoro-l-propene
(CF3CF=CH2) and a perfluoropolyether, which is a lubricating oil including
a fluorinated component, which meets the claim limitations.
Appellant has not shown that the Examiner reversibly erred in
rejecting claim 20 as anticipated by Leek.
We sustain the Examiner’s rejection of clam 20 as anticipated.
Rejection of claims 1—5, 9 16, and 20—23 as obvious over Leek in
view of admission and documentation of well-known facts
The Examiner finds claims 1—5, 9—16, and 20-23 obvious over Leek
in view of well-known facts. Final Act. 5; Adv. Act. 1. Appellant only
addresses independent claims 1, 12, and 21, and dependent claims 4 and 15.
Appeal Br. 11—12; Reply Br. 6—7. The remaining dependent claims stand or
fall with their independent claims.
Claim 1 recites “a product comprising a vehicle having an engine
compartment, a combustion engine and exhaust gas system connected to the
combustion engine constructed and arranged to discharge exhaust gas
therefrom, wherein the combustion engine and at least a portion of the
exhaust gas system are in the engine compartment.” Similarly, claim 21
recites “a method comprising providing a vehicle having an engine
compartment. . . Appeal Br. 16, 20 (Claims App’x).
The Examiner finds that Leek does not “specifically teach a vehicle
with an engine compartment, combustion engine, exhaust gas system, and
refrigeration (air conditioning) system,” but that the Specification admits
and documents the well-known facts that those systems are commonly found
in motor vehicles. Final Act. 5.
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Application 13/715,353
Appellant contends that the rejection is based on reversible error for
relying on paragraph 3 of the Specification. Appeal Br. 12. This argument
is not persuasive because, as explained by the Examiner, the Specification
was relied on merely as evidentiary support for the Examiner’s findings with
respect to the knowledge and common sense of the ordinary artisan at the
time of the invention, e.g., that “a motor vehicle commonly has an engine
compartment, combusting engine, exhaust gas system, and refrigeration (air
conditioning) system.” Adv. Act. 2; see Ans. 8. Appellant has not provided
persuasive evidence to refute these findings. See Reply Br. 7.
Appellant also contends that “claims 1, 12, and 21 recite limitations
not suggested byC..-0 -J
known facts.”’ A
Leek in view of ‘admission and documentation of well-
teal Br. 12. Appellant argues that Leek discloses over
100 possible refrigerants and over 100 possible additives. Id. According to
Appellant, neither Leek nor other prior art teaches that a specific refrigerant
should be selected from all the possibilities disclosed in Leek or that a
specific oil or grease should be selected from all of Leek’s possibilities. Id.
The Examiner finds that Leek teaches refrigerants such as
CF3CF=CH2 (Leek 110) and lubricant oils or greases such as
perfluoropolyether. Ans. 6—7. The Examiner finds that Leek discloses
KRYTOX perfluoropolyether, which is “a suitable lubricating oil[] or
grease,” per the Specification. Final Act. 6. The Examiner also finds that
Leek provides direction to select KRYTOX. Ans. 9. The Examiner finds
Leek discloses any of the refrigerants listed in paragraph 10 may be
combined with KRYTOX. Moreover, Leek explicitly describes an
embodiment comprising a perfluoropolyether in combination with an
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Application 13/715,353
unsaturated fluorocarbon in a limited list that includes 2,3,3,3-tetrafluoro-l-
propene. Leck| 38, claim 13.
For purposes of § 103, a reference is prior art for all that it discloses.
Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991).
The fact that a reference “discloses a multitude of effective combinations
does not render any particular formulation less obvious.” See Merck & Co.,
Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); see also In
re Cor kill, 111 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness rejection of
claims affirmed in light of prior art teaching that “hydrated zeolites will
work” in detergent formulations, even though “the inventors selected the
zeolites of the claims from among ‘thousands’ of compounds”); In re Susi,
440 F.2d 442, 445 (CCPA 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”).
Therefore, Appellant’s argument for non-obviousness based on Leek’s
disclosure of multiple refrigerants and additives is unpersuasive, since
Appellant has not shown persuasively that the Examiner’s finding that Leek
provides direction to select a refrigerant and a lubricating component that
would meet the claim limitations is erroneous or unreasonable.
In the Reply Brief, Appellant argues that “the rejection [of claims 1,
12, and 21] is in error because the Examiner has not shown that Leek
discloses a ‘refrigerant including CF3CF=CH2.’” Reply Br. 7 (emphasis in
original). As addressed above with respect to claim 20, Appellant argues
that the claim language requires that the refrigerant contain additional
components, and the Examiner therefore has not shown the presence of
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Application 13/715,353
compositions with the same ingredients. For the reasons given above, we
determine that the word “including” is open claim language, like
“comprising.” Appellant’s argument otherwise is unavailing.
With respect to claims 4 and 15, which each require that a fiuorinated
lubricating oil comprises a low molecular weight fluorine homopolymer of
hexafluoride propylene epoxide (Appeal Br. 17, 19 (Claims App’x)), the
Examiner finds that Leek teaches perfluoropolyethers having 2..100
repeating units. Ans. 8. Appellant does not dispute the Examiner’s finding.
See generally Reply Br.
Appellant incorrectly states that claim 20 is a dependent claim and is
allowable for the same reasons as independent claims 1, 12, and 21. Reply
Based on the foregoing, Appellant has not persuaded us of reversible
error in the Examiner’s determination that claims 1—5, 9—16, and 20—23
would have been obvious over Leek in view of the admission and
documentation of well-known facts.
Rejection of claims 1—23 as obvious over Leek in view of admission
and documentation of well-known facts and further in view of
DuPont™ Krytox Performance Lubricants
The Examiner finds that Leek teaches refrigerants and lubricant
additives such as KRYTOX, and well-known facts establish the use of
refrigeration (air conditioning) systems in a vehicle. Final Act. 5—6. The
Examiner finds DuPont likewise describes “the underhood of an automobile
(engine compartment), an engine with spark plugs (combustion engine), and
emission (exhaust gas) system. Id. at 6. The Examiner further finds that
DuPont teaches that KRYTOX is nonflammable due to the lack of hydrogen,
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with no ignition at temperatures of up to 482°C (900°F) in oxygen and at
pressures of up to 350 bar. Ans. 9 (citing DuPont 5 and 12). The Examiner
determines that one skilled in the art would have had a reasonable
expectation of success in combining the teachings, and that the resultant
composition with the same ingredients would have been expected to have
the same properties. Id. Therefore, the Examiner concludes that it would
have been obvious to combine the teachings of Leek, and DuPont with well-
known facts to reach the claimed invention because one of ordinary skill in
the art at the time of the invention would have wanted minimal flammability
in an automobile air conditioning system as a matter of common sense. Id.
Appellant argues that the disclosures fail to suggest that a combination
of Leek’s possible refrigerants and DuPont’s fluorinated oils and greases
would still be effective as a refrigerant mixture or that the resultant mixture
would have an ignition temperature higher than the refrigerant. Appeal Br.
13. Appellant also argues that the combined references do not suggest the
properties recited in claims 1, 12, and 21. Id. at 14. Finally, Appellant
argues that “the reason for the proposed combination of references lack[s]
rationale underpinning because the Examiner has failed to articulate where
in the references it is taught that [KRYTOX] has ‘minimal flammability’ as
stated in the Final Office Action.” Id.
“The combination of familiar [elements] according to known methods
is likely to be obvious when it does no more than yield predictable results,”
as is the case here. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007).
“[W]hen the prior art evidence reasonably allows the PTO to conclude that a
claimed feature is present in the prior art, the evidence ‘compels such a
conclusion if the applicant produces no evidence or argument to rebut it.’” In
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re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004) (quoting In re Spada, 911
F.2d 705, 708 n.3 (Fed. Cir. 1990)).
Appellant’s arguments are not persuasive because they have not
provided persuasive evidence to show that the Examiner erred in finding the
prior art discloses or suggests a mixture that would inherently possess the
characteristics of the claimed mixture. Moreover, Appellant has not
explained why the reasons articulated by the Examiner for combining the
references is erroneous or unreasonable.. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006). On this basis, we sustain the Examiner’s rejection of
claims 1—23.
DECISION
For the above reasons, the Examiner’s rejection of claims 1—23 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)(iv).
AFFIRMED
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