95000574 (P.T.A.B. Mar. 11, 2016)

Ex Parte 7,524,805 et al

Patent Trial and Appeal BoardMar 11, 2016

95000574 (P.T.A.B. Mar. 11, 2016)

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. 95/000,574 10/05/2010 7,524,805 9404.21384-REX 8163 116637 7590 03/14/2016 HONEYWELL/FOX/BANNER Patent Services 115 Tabor Road - PO Box 377 MORRIS PLAINS, NJ 07950 EXAMINER JOHNSON, JERRY D ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 03/14/2016 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 ____________ Mexichem Amanco Holding S.A. de C.V. Requester and Respondent v. Patent of Honeywell International Inc. Patent Owner and Appellant ____________ Appeal 2014-007990 Reexamination Control 95/000,574 Patent 7,524,805 B2 Technology Center 3900 ____________ Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and JEFFREY B. ROBERTSON, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON REHEARING In a Decision on Appeal issued June 25, 2015 (“Decision”), the panel reversed the Examiner’s rejections of claims 1–11, 13, 15–25, and 30–32 of U.S. Patent 7,524,805 B2 (hereinafter, “the ’805 Patent”). Requester requests rehearing of this decision under 37 C.F.R. § 41.79. Request for Rehearing (“Request” or “Req. Reh’g”) dated July 24, 2015. Patent Owner submitted comments on Patent Owner’s Request for Rehearing on August 21, 2015 (hereinafter “PO Comments”). Appeal 2014-007990 Reexamination Control 95/000,574 Patent 7,524,805 B2 Requests for rehearing are governed by the standard set forth in 37 C.F.R. § 41.79(b), which reads: (b)(1) The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked in rendering the Board’s opinion reflecting its decision. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs are not permitted in the request for rehearing except as permitted by paragraphs (b)(2) and (b)(3) of this section. (2) Upon a showing of good cause, appellant and/or respondent may present a new argument based upon a recent relevant decision of either the Board or a Federal Court. (3) New arguments responding to a new ground of rejection made pursuant to § 41.77(b) are permitted. We have reviewed the Request, and we agree with Patent Owner that Requester has not “state[d] with particularity the points believed to have been misapprehended or overlooked in rendering the Board’s opinion reflecting its decision” as required by 37 C.F.R. § 41.79(b)(1). (See PO Comments 2, 7, and 8.) However, because Requester has mischaracterized aspects of the Decision, we provide the following discussion in order to clarify the record. Requester states, in the “Reasons for Rehearing” section of the Request that “[t]he reversal is based on an incorrect statement that ‘essentially constant boiling’ is distinguishable from ‘azeotrope-like’.” (Req. Reh’g 1.) This is an incorrect statement. In the Decision, we stated: “Therefore, according to the Specification, an ‘azeotrope-like’ composition is defined as a composition that is constant boiling or essentially constant boiling.” (Decision 5.) In doing so, we quoted from the Specification of the Appeal 2014-007990 Reexamination Control 95/000,574 Patent 7,524,805 B2 ’805 Patent for support. (Decision 4–5.) Thus, contrary to Requester’s statements, the Decision does not distinguish azeotrope-like compositions from essentially constant boiling compositions, but rather includes essentially constant boiling compositions as part of the definition of azeotrope-like compositions. (See PO Comments 2.) In addition, Requester does not point out any aspect misapprehended or overlooked, which does not satisfy the standard set forth in 37 C.F.R. § 41.79(b)(1). Requester also misinterprets our discussion of In re Broadly, 404 F.2d 616, 619 (CCPA 1968) in suggesting that in the Decision, we stated that “azeotropes are per se patentable because they are unpredictable” such that an identical combination of compounds would be patentable in the future if an azeotrope was found between those compounds. (Req. Reh’g 2.) The Decision made no such statement. We point to the Decision, page 9, in which we stated: “Here, we observe as does Patent Owner, that the formation of azeotropic compositions has been recognized previously as unpredictable. In re Broadly, 404 F.2d 616, 619 (CCPA 1968) (a homologous relationship between hydrofluorocarbons was insufficient to predict the formation of an azeotrope).” Thus, the Decision expressly recognized the holding in the factual context expressed in Broadly. The Decision then analyzes, with a discussion of the evidence of record, why the claimed azeotrope-like compositions would have been unpredictable in view of the disclosures in the cited prior art. (Decision 9–13; see PO Comments 3.) The Request alleges also that “the Board and the Patent Owner state the claim language should be directed to binary compounds.” (Req. Reh’g Appeal 2014-007990 Reexamination Control 95/000,574 Patent 7,524,805 B2 11.) This is incorrect. The Decision does not make such a statement. Requester did not direct us to where such a statement was made in the Decision. As to the remaining arguments set forth by Requester in the Request, Requester reiterates many of the same arguments it had made previously, and which were considered in the course of rendering the Decision, without discussing points specifically misapprehended or overlooked by the Decision. Thus, Requester’s arguments regarding the difference between azeotrope and azeotrope-like compositions (Req. Reh’g 5, 8–9; Req. Resp’t Br. 2, 5; Decision 8–9), the data presented by Patent Owner (Req. Reh’g 5– 7; Req. Resp’t Br. 5–6; Decision 10–12), the nature of Inagaki’s disclosure related to the combinations of compounds (Req. Reh’g 8; Req. Resp’t Br. 9; Decision 12–13), and the interpretation of the claims (Req. Reh’g 9–13; Req. Resp’t Br. 6–9; Decision 4–6) are improper in a request for rehearing. Further we observe that any additional citations to evidence not previously relied upon in the briefs are improper as stated in 37 C.F.R. § 41.79(b)(1) and decline to consider them at this juncture. (See Req. Reh’g 3; PO Comments 5.) Therefore, we decline to make any changes in the Decision mailed June 25, 2015. Accordingly, the Request for Rehearing is denied. DENIED Appeal 2014-007990 Reexamination Control 95/000,574 Patent 7,524,805 B2 PATENT OWNER: HONEYWELL/FOX/BANNER Patent Services 101 Columbia Road Morristown, NJ 07962 THIRD-PARTY REQUESTER: RYAN KROMHOLZ & MANION, S.C. PO Box 26618 Milwaukee, WI 53226