Ex Parte 8,033,120 et alDownload PDFPatent Trials and Appeals BoardMar 21, 201995001783 - (R) (P.T.A.B. Mar. 21, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/001,783 11/08/2011 8,033,120 9404.21592-REX 8580 116637 7590 03/21/2019 HONEYWELL/FOX/BANNER Patent Services 115 Tabor Road - PO Box 377 MORRIS PLAINS, NJ 07950 EXAMINER XU, LING X ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 03/21/2019 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. HONEYWELL INTERNATIONAL INC. Patent Owner and Appellant ____________ Appeal 2017-011438 Reexamination Control 95/001,783 Patent US 8,033,120 B21 Technology Center 3900 ____________ Before MARK NAGUMO, JEFFREY B. ROBERTSON, and RAE LYNN P. GUEST, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 1 US Patent 8,033,120 B2 issued on October 11, 2011 to Rajiv R. Singh, et al. (hereinafter âthe â120 patentâ). Appeal 2017-011438 Reexamination Control 95/001,783 Patent US 8,033,120 B2 2 On January 31, 2018, Patent Owner, Honeywell International Inc. (âPatent Ownerâ), requested rehearing under 37 C.F.R. § 41.79(a)(4) (âRequestâ) of our Final Decision on Appeal under 37 C.F.R. § 41.77(f) mailed January 2, 2018 (â41.77(f) Decisionâ). On February 28, 2018, Third Party Requester Mexichem Amanco Holdings S.A. de C.V. (âRequesterâ) provided Comments under 37 C.F.R. § 41.79(c) (âCommentsâ) in opposition to Patent Ownerâs Request. We first consider Patent Ownerâs points with respect to the Request, and then reconsider the Appeal in view of Honeywell Intâl Inc. v. Mexichem Amanco Holding S.A. DE C.V., 865 F.3d 1348 (Fed. Cir. 2017), an appeal to the Federal Circuit from a Board Decision in related merged reexaminations 95/002,189 and 95/002,204 of U.S. Patent 7,534,366. As a result, we enter NEW GROUNDS OF REJECTION under 37 C.F.R. § 41.77(b) as further detailed below. Patent Owner contends that the following points were misapprehended or overlooked: 1. The Board erroneously interpreted the disclosure of Inagaki without considering when Inagaki was published, and ascribed meaning to the disclosure of Inagaki based upon how a person of ordinary skill in the art would use those terms ten years later; 2. The Board improperly used Honeywellâs own disclosure and declaratory evidence as proof of a reasonable expectation of success; 3. The Board ignored the clear evidence in the record that a person of ordinary skill in the art would have expected a difference in Appeal 2017-011438 Reexamination Control 95/001,783 Patent US 8,033,120 B2 3 operability between the temperature of âabout 150 °Fâ recited in the claims and the disclosure in Inagaki of 140 °F; and 4. The Board ignored the doctrine of claim differentiation in interpreting âconsisting essentially ofâ as âcomprising.â Request 2. Point 1 Patent Owner argues that the Board erred because there is no evidence that PAG and POE, while taught by Bivens to be known lubricants at the time of the invention, were understood to be âcooling machine oilsâ as described in Inagaki, at the time of Inagaki. (Request 3â4, citing Decision on Appeal mailed March 30, 2016 (âFirst Decisionâ), p. 14.) Patent Owner argues that âthere is no evidence in the record about how a person of skill in the art at the time of the invention would interpret the phrase âcooling machine oils,â as used in a ten year old foreign reference.â (Id. at 4.) Initially, we disagree with Patent Owner that the relevant issue is how the skilled artisan would have understood the scope of the term âcooling machine oilsâ at the time of Inagaki. None of the case law cited by Patent Owner supports such a legal interpretation. To the contrary, the case law is clear that the relevant inquiry in an obvious determination is what a skilled artisan would have understood from the prior art as a whole at the time of the invention. See 35 U.S.C. § 103(a)(pre-AIA) (âA patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would Appeal 2017-011438 Reexamination Control 95/001,783 Patent US 8,033,120 B2 4 have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.â) (emphasis added); Bristol-Myers Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 974 (Fed. Cir. 2014) (finding obviousness when âat the time of entecavirâs invention, the Price reference showed that 2âČâCDG was generally understood to be safe and nontoxic, and other researchers were already using it as a lead compoundâ despite the fact that it was later discovered to be toxic), rehâg denied and en banc rehâg denied, Bristol-Myers Squibb Co. v. Teva Pharms. USA, Inc., 769 F.3d 1339, 1341 (Fed. Cir. 2014) (â[T]he pertinent knowledge is that possessed at the time of the invention.â) (J. Dyk, concurring). The First Decision finds and discusses, with citation to evidence, that PAG and POE were known to be cooling machine oils at the time of the invention. (First Decision 14â15; see 41.77(f) Decision 20â21.) By improperly focusing only on the Decisionâs discussion of Inagaki, Patent Owner has not shown that the Decision misapprehended or overlooked that PAG and POE were considered as conventional cooling machine oils at the time of the invention. In addition, Patent Owner does not dispute that the skilled artisan would have recognized PAG and POE as lubricants, in refrigerant and cooling applications, at the time of the invention, as taught by Bivens. (See Request 3; First Decision 14â15.) The teaching in Inagaki to use HFO-1234yf ((F3C)(F)C=CH2) with âcooling machine oilsâ (Inagaki Appeal 2017-011438 Reexamination Control 95/001,783 Patent US 8,033,120 B2 5 2) and/or âlubricantsâ (Inagaki 3)2 would have suggested the skilled artisan use HFO-1234yf with known âcooling machine oilsâ or âlubricantsâ at the time of the invention, including those discovered and conventionally used as lubricants with refrigerants after the publication of Inagaki. Patent Owner has not distinguished any of the terminology of Inagaki from what the skilled artisan would have understood as the refrigeration lubricant art as a whole at the time of the invention. Point 2 Claims 1 and 14 recite âsaid lubricant and said refrigerant have one liquid phase at at least one temperature between about -50°C and +70°C measured at 5% by weight of lubricant based on the weight of the refrigerant and lubricant.â We emphasize the scope of the claims, which require only that one liquid phase be present at one temperature in a wide temperature range of -50°C to +70°C measured with only 5% by weight of lubricant based on the weight of the refrigerant and lubricant. Patent Owner contends that the Board âimproperly used Honeywellâs own disclosure and declaratory evidence as proof of reasonable expectation of success.â (Request 4â5.) Patent Owner purports to provide a quotation from the First Decision (Request 4): The Board found that â[b]ecause the preponderance of the evidence shows HFO-1234yf and HFO-1234ze are miscible with PAG and POE over the entire range of temperatures recited in claim 1 (Singh Decl. ¶ 31), such compositions 2 The alternative English translation of record, see Singh Decl., Exhibit D, executed April 30, 2012, uses the terms ârefrigeration oilsâ and âlubricating oilsâ (id. at 6) for these two terms, respectively. Appeal 2017-011438 Reexamination Control 95/001,783 Patent US 8,033,120 B2 6 suggested by Inagaki inherently and necessarily meet the requirements of claim l.â [Decision at 15.] However, the First Decision reads (p. 15): Patent Owner introduced evidence that PAG and POE were miscible at every tested parameter (regardless of tested HFO, weight percentage, or temperature). Singh Decl. ¶ 31; â120 patent, col. 12, ll. 23â32. Because the preponderance of the evidence shows HFO-1234yf and HFO-1234ze are miscible with PAG and POE over the entire range of temperatures recited in claim 1, at least one composition suggested by Inagaki inherently and necessarily meets the requirements of claim 1. Patent Owner contends that the Board improperly used inherency to evaluate miscibility as an unexpected result. (Request 5â6.) We are mindful that in Honeywell, the Federal Circuit determined that the Boardâs obviousness analysis was flawed in that the Board committed legal error by improperly relying on inherency in obviousness and in its analysis of motivation to combine the references, specifically with respect to the properties of miscibility and stability, which were properties of the purportedly obvious combination and not merely properties of HFO-1234yf, one of the refrigerants encompassed by Formula II in independent claims 1 and 14. Honeywell, 865 F.3d at 1354. In the First Decision, we also discussed Patent Ownerâs evidence that miscibility is unpredictable, and found such evidence to be unpersuasive in view of the prior art of record and disclosure therein that PAG and POE were used as replacement lubricants with certain saturated HFC compounds that were known to be immiscible with mineral oil or alkylbenzene. (First Appeal 2017-011438 Reexamination Control 95/001,783 Patent US 8,033,120 B2 7 Decision 32â33, discussing Singh Decl. ¶ 31; and citing, e.g., Thomas, col. 1, ll. 33â37 and 62â64; Bivens, col. 1, ll. 36â42; Magid, col. 4, 1. 26 to col. 5, 1. 41; Mahler, col. 1, ll. 39â45.) In this regard, Magid and Bivens support a finding that, generally, PAG and POE were used as replacement lubricants with certain relatively polar saturated HFC compounds (e.g., R134a, F3C-CH2F) that were known to be immiscible with relatively nonpolar mineral oil or alkylbenzene. (See Bivens, col. 1, ll. 36â42; Magid, col. 4, l. 26 to col. 5, l. 41; see also Mahler, col. 1, ll. 39â45.) According to Mahler, conventional lubricants (mineral oil and alkylbenzene) are non-polar while hydrofluorocarbon refrigerants are generally polar. (Mahler, col. 2, ll. 7â17.) Thus, the art recognized that, for refrigerant compounds that were generally polar, and therefore not miscible in non-polar lubricants, such as mineral oil and alkylbenzene, alternative polar lubricants were available in the art, namely PAG and POE. Accordingly, the skilled artisan would have had a reasonable expectation that Inagakiâs HFO-1234yf would have been miscible with PAG and POE, particularly in light of Inagakiâs teaching of general compatibility with lubricants. In re OâFarrell, 853 F.2d 894, 903â04 (Fed. Cir. 1988) (âFor obviousness under § 103, all that is required is a reasonable expectation of success.â) (citations omitted). In addition, in the 41.77(f) Decision, we observed that Omure3 provided evidence that the combination of an unsaturated HFO compound and PAG had ââsuperior intersolubility.ââ (41.77(f) Decision 20â21, Omure, 3 JP H05-85970, published April 6, 1993, naming Omure, et al. as inventors (âOmureâ). Appeal 2017-011438 Reexamination Control 95/001,783 Patent US 8,033,120 B2 8 ¶ 14.) We also pointed out that the â120 Patent itself does not describe any particular criticality to the use of PAG lubricant with HFO refrigerants. (41.77(f) Decision 21, citing â120 Patent col. 6, ll. 13â17, col. 11, l. 66 â col. 12, l. 4.) The â120 Patent also does not attribute any particular unexpected or surprising result to producing miscible combinations of PAG with the HFO refrigerants described therein. The Singh Declaration discusses that prior art knowledge with respect to one saturated fluorinated hydrocarbon(HFC) does not provide a basis for reliably predicting miscibility with other saturated fluorinated hydrocarbons or unsaturated fluorinated hydrocarbons (HFOs). (See, e.g., Singh Decl. ¶¶ 27â31, 44â47.) However, such a concern is not supported by the prior art or even the â120 Patent itself, given the lack of discussion of a miscibility concern in Inagaki, Bivens, Magid, and Mahler with combining HFOs with lubricants as discussed above. Patent Owner presents evidence indicating that, because of the carbon-carbon double bond, HFOs would not have been expected to be miscible relative to saturated HFCs. (See, e.g., Singh Decl. ¶¶ 27â31, 44â 47.) That evidence does not, however, sufficiently show that expectations regarding miscibility would have been affected. We are therefore not persuaded that the miscibility requirement of claims 1 and 14 would have been unexpected considering the evidence of record as a whole. Appeal 2017-011438 Reexamination Control 95/001,783 Patent US 8,033,120 B2 9 Point 3 Patent Owner contends also that we misapprehended or overlooked that the operability at a temperature of about 150°F is not the operability of the refrigerant alone, but the ability of the refrigerant to remain stable in combination with the lubricant in the system. (Request 6â7.) Patent Owner contends that even if the Board considered the combination of refrigerant with lubricant, the evidence of record does not support the Boardâs finding because Inagaki does not identify the use of a lubricant in Embodiment 2 (HFO-1234ze) and Embodiment 5 (HFO-1234yf). (Request 7.) Patent Owner argues that the Board overlooks evidence of record that Embodiments 2 and 5 of Inagaki are not disclosures of an automobile air conditioning system and evidence that it would not be possible to conclude from Inagaki that the refrigerants disclosed therein would be operable at 150°F. (Id.) Patent Owner argues that the Board overlooked evidence pertaining to the difference in operability at higher temperatures due to an expected increase in rate of reaction. (Request 7â8.) Patent Owner argues that the Board overlooked evidence that demonstrates that the combination of HFO-1234yf and PAG would have been expected to be unstable and not usable in automobile air-conditioning systems due to the high temperatures encountered in such systems. (Request 8â10.) Contrary to Patent Ownerâs arguments, in the 41.77(f) decision, we addressed the combination of HFO-1234yf and lubricant and evidence relating thereto with respect to the evidence pertaining to an increased reaction rate as a result of operating at a temperature of 150°F. (41.77(f) Decision, 13â14.) In particular, we pointed to evidence in the prior art that Appeal 2017-011438 Reexamination Control 95/001,783 Patent US 8,033,120 B2 10 stabilizers are used when a high degree of stability is required under severe operating conditions, such that in view of these known methods to address the stability of refrigerant/lubricant pairs, which Patent Ownerâs evidence did not address, Patent Ownerâs evidence was not persuasive. (41.77(f) Decision 14, citing Omure ¶ 12, Bivens, col. 4, ll. 45â53; and Magid, col. 9, ll. 61â67.) As pointed out in the 41.77(f) Decision, we did not overlook the evidence cited by Patent Owner (see Request 9), but rather we weighed that evidence against the teachings of the prior art, and found the prior art disclosures outweighed Patent Ownerâs evidence. (41.77(f) Decision 19â 22.) Accordingly, we are not persuaded that we misapprehended or overlooked any points relating to the operability of the heat transfer composition at a temperature of about 150°F. Point 4âClaim 68 In the Request, Patent Owner argues that one point the Board made with respect to claim 1 is inapplicable to claim 68, and thus requires reconsideration. (Request 11â12.) In particular, Patent Owner contends that in discussing Inagakiâs disclosure with respect to combining the disclosed refrigerants with cooling machine oil in the presence of other HFC refrigerants, the First Decision noted that the claims of the â120 Patent use open âcomprisingâ transitional language, and as a result, do not exclude the presence of other HFC material. (Request 11, quoting First Decision 16.) Patent Owner argues that because claim 68 âis limited to only transHFO- 1234ze,â one of ordinary skill in the art would not have had an expectation Appeal 2017-011438 Reexamination Control 95/001,783 Patent US 8,033,120 B2 11 that this particular refrigerant would be miscible with a polyol ester lubricant to the extent required by the claims. (Request 11.) Patent Owner also contends that the Board ignored the doctrine of claim differentiation, because claim 68 depends from claim 63, which recites that âat least one fluoroalkene comprises trans-1,3,3,3-tetrafluoropropene (transHFO- 1234ze)â such that the Board âignores the clear intent of claim 68 to limit the refrigerant to âconsisting essentially ofâ the transHFO-1234ze isomer.â (Request 12.) We first observe as does Requester (Comments 19â20), that we expressly addressed the scope of ââconsisting essentially ofââ in claim 68 in the First Decision. (First Decision 42â43.) In the context of that discussion, we had reasoned that the term ââconsisting essentially ofââ did not exclude the cis-isomer of HFO-1234ze, to the extent the cis-isomer is present in Inagaki. (First Decision 43.) Patent Owner has not challenged this interpretation substantively, and has not shown reversible error therein. Thus, we are not persuaded by Patent Ownerâs contention that we misapprehended the âintentâ of claim 68. Second, we are not persuaded that the statement in the First Decision that the appealed claims use âopen âcomprisingâ languageâ requires that we reconsider claim 68. That is, the First Decision makes clear that Inagaki does not disparage the use of the refrigerants disclosed therein as being incapable of working as a refrigerant without the presence of other HFCs or that the solubility of refrigerants disclosed therein is any way compromised Appeal 2017-011438 Reexamination Control 95/001,783 Patent US 8,033,120 B2 12 or ineffective.4 (First Decision 16â17.) Thus, the statements with respect to the use of âcomprisingâ language in the claims do not ultimately affect the application of the prior art to claim 68. Accordingly, we decline to revise our Decision with respect to claim 68. Reconsideration of the First Decision and 41.77(f) Decision in light of the related Federal Circuit Decision in Reexaminations 95/002,189 and 95/002,204 of U.S. Patent 7,534,366 Points of Clarification As a result of our review of the record for purposes of this decision on rehearing, we take this opportunity to provide some points of clarification from the First Decision in view of the Federal Circuitâs decision in Honeywell discussed above. In particular, we have already addressed that miscibility, in the context of the claims, which are directed to combinations of HFO refrigerants with lubricants, is not a property inherent to the refrigerant itself. Accordingly, we expressly withdraw statements made in the First Decision that miscibility of a particular refrigerant/lubricant composition is an inherent property of the particular refrigerant. (First Decision 12, 15, 20.) We have also already addressed the operability of the refrigerant in combination with lubricant at 150°F. Thus, we withdraw statements made in the First Decision and in the 41.77(f) Decision that operability of 4 The discussion of this portion of the First Decision is focused on HFO- 1234yf, but would apply equally to HFO-1234ze, which is also expressly disclosed by Inagaki in Embodiment 2. (See First Decision 9, 15.) Appeal 2017-011438 Reexamination Control 95/001,783 Patent US 8,033,120 B2 13 refrigerant at 150°F is an inherent property of the refrigerant. (First Decision 26â27, 41.77(f) Decision 9.) Regarding the limitations in the claims that âsaid at least one fluoroalkene has no substantial acute toxicityâ (claims 3, 15), we clarify that, on the present record, the property of acute toxicity is recited in the claims as a property of the particular fluoroalkene refrigerant. Indeed, the claims expressly recite the property in this manner. The â120 Patent states (col. 4, ll. 50â59) that âthe preferred compounds of the present invention are the tetrafluoropropene and pentafluoropropene compounds in which the unsaturated terminal carbon has not more than one F substituentâ including HFO-1234ze and HFO-1234yf, which âhave a very low acute toxicity level, as measured by inhalation exposure to mice and rats. On the other hand, applicants have found that a relatively high degree of toxicity may be associated with certain compounds adaptable for use with the present compositions.â The â120 Patent then identifies 1,1,3,3,3-pentafluoropropene (HFO-1225zc) as exhibiting âan unacceptably high degree of toxicity, as measured by inhalation exposure to mice and rats.â (â120 Patent, col. 4, ll. 64â67.) Although the â120 Patent does not provide express limits to indicate what constitutes a âvery low acute toxicity,â we interpret âno substantial acute toxicityâ limitation recited in claim 1 to mean âa very low acute toxicity levelâ as measured by inhalation exposure to mice and rats. Our determination in this regard is consistent with case law in analogous situations applying inherency of an identically disclosed compound, even in obviousness analyses. See In re Kao, 639 F.3d 1057, Appeal 2017-011438 Reexamination Control 95/001,783 Patent US 8,033,120 B2 14 1070 (Fed. Cir. 2011) (âSubstantial evidence supports the Boardâs finding, based upon the specification, which confirms that the claimed âfood effectâ is an inherent property of oxymorphone itself, present both in controlled release and immediate release formulations of that drug. . . . This is not a case where the Board relied on an unknown property of prior art for a teaching. Rather, Maloneyâs express teachings render the claimed controlled release oxymorphone formulation obvious, and the claimed âfood effectâ adds nothing of patentable consequence.â); In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (âEven if no prior art of record explicitly discusses the âwherein the polypeptide binds CD48â aspect of claim 73, the KubinâGoodwin application itself instructs that CD48 binding is not an additional requirement imposed by the claims on the NAIL protein, but rather a property necessarily present in NAIL. See, e.g., â859 Application at 1, 8 (describing CD48 as NAILâs âcounterstructureâ). Because this court sustains, under substantial evidence review, the Boardâs finding that Valianteâs p38 is the same protein as appellantâs NAIL, Valianteâs teaching to obtain cDNA encoding p38 also necessarily teaches one to obtain cDNA of NAIL that exhibits the CD48 binding property.â); Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1369 (Fed. Cir. 2012) (âThe parties dispute whether stabilizing conjunctival mast cells is an inherent property of olopatadine and whether inherency may be used in an obviousness analysis . . . The district courtâs construction of âstabilizing conjunctival mast cellsâ . . . restricts the claims to certain olopatadine concentrations . . . this claim language does not impose any additional requirement because the Appeal 2017-011438 Reexamination Control 95/001,783 Patent US 8,033,120 B2 15 â805 patent itself defines mast cell stabilization as a property that is necessarily present at those concentrations.â) Regarding the limitations in the claims that âsaid refrigerant has a Global Warming Potential (GWP) of not greater thanâ 75 or 150 (claims 1 and 14, respectively), we clarify that the property of GWP is inherent to the particular refrigerant. (See First Decision, p. 15â16, n.11.) With respect to claims requiring a mixture of refrigerants, we stand by the analysis in the First Decision, that it would have been obvious in view of the evidence of record to have optimized the concentration of each material to amounts such that the GWP limitations in the claims would have been obvious. (First Decision 37.) New Grounds of Rejection The Federal Circuit held in Honeywell that the Boardâs reliance on Omure constituted a new ground of rejection and that on remand, if the Board continues to rely on Omure, it should designate its rejection(s) as new ground(s) of rejection. 865 F.3d at 1358. Throughout the 41.77(f) Decision, the Board referred to Omure for its disclosure of stabilizers (41.77(f) Decision 14) as well as providing evidence of a reasonable expectation of success in combining PAG lubricants with HFOs. (41.77(f) Decision, 16, 20â21.) Although we realize that independent claims 1 and 14, while reciting a lubricant, do not recite any particular lubricant, because we discuss Omure above, and Omure provides evidence of a reasonable expectation of success in combining HFOs with lubricants, and many of the dependent claims either expressly recite PAG Appeal 2017-011438 Reexamination Control 95/001,783 Patent US 8,033,120 B2 16 lubricants or depend from claims reciting PAG lubricants (claims 8â13, 23â 27, 36â38, 46â49, and 56â59), in an abundance of caution, we are of the view that it would be prudent to enter new grounds of rejection adding Omure. Thus, in accordance with the Federal Circuitâs guidance with respect to the Boardâs reliance on Omure, we add Omure to the rejections affirmed in the First Decision and the New Grounds of Rejection maintained from the First Decision in the 41.77(f) Decision and designate the rejections applicable to the appealed claims as new grounds of rejection as follows: Claims 1â6, 14â18, 22, 35, 42â45, 55, 60, 61, and 67 under 35 U.S.C. § 103(a) as unpatentable over Inagaki5 and Omure (see First Decision 45); Claims 10â13, 23â34, 36â41, 46â54, 56â59, 62â66, and 68 as obvious under 35 U.S.C. § 103(a) over Inagaki in view Patent Ownerâs own admissions at col. 6, ll. 13â17 of the â120 patent, Thomas,6 or Bivens,7 and Omure (see First Decision 45); Claims 7 and 19 under 35 U.S.C. § 103(a) as obvious over Inagaki and Omure, in view of Magid 8 (see First Decision 46, 41.77(f) Decision 7â 8); and 5 JP H04-110388, published April 10, 1992, and naming Sadayasu Inagaki et al. as inventors. All references to âInagakiâ are to the translation (certified September 8, 2010) that was filed on November 8, 2011 with Requesterâs original Request for Inter Partes Reexamination. 6 US Patent 5,254,280, issued October 19, 1993 to Raymond H. P. Thomas et al. 7 US Patent 6,783,691 B1, issued August 31, 2004 to Donald Bernard Bivens et al. 8 US Patent 4,755,316, issued July 5, 1988 to Hillel Magid et al. Appeal 2017-011438 Reexamination Control 95/001,783 Patent US 8,033,120 B2 17 Claims 8 and 9 under 35 U.S.C. § 103(a) as obvious over Inagaki in view of admitted prior art, Thomas, or Bivens, Omure, and further in view of Magid (see First Decision 46, 41.77(f) Decision 7â8). Patent Ownerâs Request has been considered, but denied as to the merits of the Request. Further, the status of the rejections is revised as discussed above in light of the Federal Circuit Decision in Honeywell v. Mexichem. NEW GROUND OF REJECTION This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.77(b) which provides that â[a]ny decision which includes a new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.â Correspondingly, no portion of the decision is final for purposes of judicial review. A requester may also request rehearing under 37 C.F.R. § 41.79, if appropriate; however, the Board may elect to defer issuing any decision on such request for rehearing until such time that a final decision on appeal has been issued by the Board. For further guidance on new grounds of rejection, see 37 C.F.R. § 41.77(b)â(g). The decision may become final after it has returned to the Board. 37 C.F.R. § 41.77(f). 37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2017-011438 Reexamination Control 95/001,783 Patent US 8,033,120 B2 18 (1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both. (2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record. . . . Any request to reopen prosecution before the examiner under 37 C.F.R. § 41.77(b)(1) shall be limited in scope to the âclaims so rejected.â Accordingly, a request to reopen prosecution is limited to issues raised by the new ground(s) of rejection entered by the Board. A request to reopen prosecution that includes issues other than those raised by the new ground(s) is unlikely to be granted. Furthermore, should the patent owner seek to substitute claims, there is a presumption that only one substitute claim would be needed to replace a cancelled claim. A requester may file comments in reply to a patent owner response. 37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be limited in scope to the issues raised by the Boardâs opinion reflecting its decision to reject the claims and the patent ownerâs response under paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not permitted as a matter of right. A newly proposed rejection may be appropriate if it is presented to address an amendment and/or new evidence properly submitted by the patent owner, and is presented with a brief explanation as to why the newly proposed rejection is now necessary and why it could not have been presented earlier. Appeal 2017-011438 Reexamination Control 95/001,783 Patent US 8,033,120 B2 19 Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for all patent owner responses and requester comments, is required. The examiner, after the Boardâs entry of a patent owner response and requester comments, will issue a determination under 37 C.F.R. § 41.77(d) as to whether the Boardâs rejection is maintained or has been overcome. The proceeding will then be returned to the Board together with any comments and reply submitted by the owner and/or requester under 37 C.F.R. § 41.77(e) for reconsideration and issuance of a new decision by the Board as provided by 37 C.F.R. § 41.77(f). REHEARING DENIED; NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.77(b) Appeal 2017-011438 Reexamination Control 95/001,783 Patent US 8,033,120 B2 20 PATENT OWNER: HONEYWELL/FOX/BANNER PATENT SERVICES 115 TABOR ROAD PO BOX 377 MORRIS PLAINS, NJ 07950 THIRD-PARTY REQUESTER: JOSEPH A. KROMHOLZ, ESQ. PATRICK J. FLEIS, ESQ. RYAN KROMHOLZ & MANION, S.C. P.O. BOX 26618 MILWAUKEE, WI 53226-0618 Copy with citationCopy as parenthetical citation