Ex Parte 8148317 et al

Patent Trial and Appeal Board

Aug 17, 2016

95002188 (P.T.A.B. Aug. 17, 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.
95/002,188 09/12/2012 8148317 9404.21780-REX 4324
116637 7590 08/17/2016
HONEYWELL/FOX/BANNER
Patent Services
115 Tabor Road - PO Box 377
MORRIS PLAINS, NJ 07950
EXAMINER
MCKANE, ELIZABETH L
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
08/17/2016 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 2016-001568
Reexamination Control 95/002,188
Patent 8,148,317 B2
Technology Center 3900
____________

Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2016-001568
Reexamination Control 95/002,188
Patent 8,148,317 B2

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Honeywell International Inc. (“Patent Owner”) appeals under
35 U.S.C. §§ 134(b) and 315(a) (Pre-AIA) the Examiner’s decision to reject
claims 1, 2, 4, 5, 7, 9, 12, 13, 16, 17, 20, 26-28, 30, 31, 35, 36, 40-44, 46,
47.1 Third-Party Requester Mexichem Amanco Holding S.A. de C.V.
(hereinafter “Requester”) urges that the Examiner’s decision must be
affirmed.2 We have jurisdiction under 35 U.S.C. §§ 134(b) and 315(a)
(Pre-AIA).
We reverse the Examiner’s decision to reject claims 1, 2, 4, 5, 7, 9,
12, 13, 16, 17, 20, 26-28, 30, 31, 35, 36, 40-44, 46, and 47.

STATEMENT OF THE CASE
United States Patent 8,148,317 B2 (hereinafter the “’317 Patent”),
which is the subject of the current inter partes reexamination, issued to Rajiv
R. Singh et al. on April 3, 2012. The ’317 Patent is related to U.S. Patent
7,524,805 B2, which is the subject of Reexamination Control. No.
95/000,574, and U.S. Patent 7,825,081 B2, which is the subject of
Reexamination Control. No. 95/000,630. (App. Br. 2.) The Examiner’s
rejections in both reexaminations were appealed to the Patent Trial and
Appeal Board. Decisions on Appeal were rendered in 95/000,574 (Appeal
No. 2014-007990) and 95/000,630 (Appeal No. 2015-001235) on June 25,

1 See Patent Owner’s Appeal Brief 1 (filed September 2, 2014) (hereinafter
“App. Br.”) Examiner’s Answer (mailed June 15, 2015) (hereinafter
“Ans.”); Right of Appeal Notice (mailed May 16, 2014) (hereinafter
“RAN.”).
2 See Requester’s Respondent Brief (filed October 2, 2014) (hereinafter
“Resp’t Br.”).
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2015, reversing the Examiner’s rejections over the prior art, and requests for
rehearing filed by Requester in both cases were denied by the Board on
March 14, 2016. Requester has appealed both of the Board’s Decisions to
the Court of Appeals for the Federal Circuit.
Requester also informs us of other patents undergoing inter partes
reexamination or inter partes review including similar subject matter: U.S.
Patent 8,053,404 B2, which is the subject of Reexamination Control. No.
95/001,920 (Appealed to PTAB, Appeal No. 2016-006365); U.S. Patent
8,033,120 B2, which is the subject of Reexamination Control. No.
95/001,783 (Decision in Appeal No. 2015-000616 rendered March 30, 2016,
affirming-in-part the Examiner’s rejection of the claims, Patent Owner
Request for Rehearing pending); U.S. Patent 8,065,882 B2, which is the
subject of Reexamination Control. No. 95/002,030 (Decision in Appeal No.
2015-007833 rendered March 30, 2016, affirming-in-part the Examiner’s
rejection of the claims, Patent Owner Request for Rehearing pending); and
U.S. Patent 8,444,874 B2, which is the subject of Inter Partes Review
IPR2013-00576 (Final Written Decision, February 26, 2015, Paper No. 50,
claims 1 and 3-15 held unpatentable). (Resp’t Br. 1-2.)
We heard oral arguments from both the Patent Owner and Requester
on April 13, 2016, a transcript of which was entered into the electronic
record on May 12, 2016.
The claims of the ’317 Patent relates to “azeotrope-like” compositions
containing a mixture of trans-1,3,3,3-tetrafluoropropene (transHFO-1234ze)
and a specific hydrofluorocarbon (HFC), 1,1,1,2-tetrafluoroethane
(HFC-134a). (Col. 1, l. 64 - col. 2, l. 11; col. 3, ll. 51-61.)
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Claim 1, which is illustrative of the appealed subject matter and the
only independent claim on appeal, reads as follows (with underlining and
bracketing show additions and deletions, respectively, relative to the
originally issued claims):
1. An azeotrope-like composition comprising from
greater than zero to about 60 weight percent [effective amounts
of] trans-1,3,3,3-tetrafluoropropene (transHFO-1234ze) and not
less than about 40 weight percent of 1,1,1,2-tetrafluoroethane
(HFC-134a).
(PO App. Br. 41, Claims App’x.)

Patent Owner appeals from the Examiner’s decision to reject the
claims as follows:
I. Claims 1, 2, 4, 5, 7, 9, 12 ,13, 16, 17, 20, 26-28, 30, 31, 35, 36,
40, 41, 43, 44, 46, and 47 under 35 U.S.C. § 103(a) as obvious
over Inagaki;3
II. Claim 42 under 35 U.S.C. § 103(a) as obvious over Inagaki in
view of Patent Owner’s Admission (Col. 7, l. 51+, col. 8, ll.
41-44 of the ’317 Patent); and
III. Claim 9 under 35 U.S.C. § 103(a) as obvious over Inagaki in
view of Smits.4
(App. Br. 4.)

3 Japanese Unexamined Patent Application Laid Open H4-l l 0388 to Inagaki
et al., published April 10, 1992. Citations to English translation of record.
4 European Patent Application EP 398147 to Smits, published November 22,
1990.
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CLAIM CONSTRUCTION
As with the appeals in 95/000,574 (Appeal No. 2014-007990) and
95/000,630 (Appeal No. 2015-001235) noted above, the interpretation of the
term “azeotrope-like” composition recited in independent claim 1 is at issue
in this appeal. The Examiner interpreted the term “azeotrope-like” as “a
composition containing transHFO-1234ze and one or more of HFC-152a,
HFC-227ea, HFC-134a or HFC-125.”5 (RAN 5.)
“During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification.” In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir.
2010) (quoting In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007)). Thus, although the PTO construes claim terms under the
“broadest reasonable interpretation” standard, our reviewing court has
repeatedly “instructed that any such construction [must] be ‘consistent with
the specification, . . . and that claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.’”
Id. at 1260 (quoting In re Bond, 910 F.2d 831, 833 (Fed.Cir.1990)).
The ’317 Patent states:
As used herein, the term “azeotrope-like” is intended in
its broad sense to include both compositions that are strictly
azeotropic and compositions that behave like azeotropic
mixtures. . . .
Azeotrope-like compositions are constant boiling or
essentially constant boiling. In other words, for azeotrope-like
compositions, the composition of the vapor formed during
boiling or evaporation is identical, or substantially identical, to

5 In this case, claim 1 recites HFC-134a in combination with
transHFO-1234ze.
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the original liquid composition. Thus, with boiling or
evaporation, the liquid composition changes, if at all, only to a
minimal or negligible extent. This is to be contrasted with non-
azeotrope-like compositions in which, during boiling or
evaporation, the liquid composition changes to a substantial
degree. All azeotrope-like compositions of the invention within
the indicated ranges as well as certain compositions outside
these ranges are azeotrope-like.

(Col. 3, ll. 51- col. 4, l. 6.)
Therefore, according to the Specification, an “azeotrope-like”
composition is defined as a composition that is constant boiling or
essentially constant boiling. Compositions including the recited components
must exhibit such behavior in order to meet the claims. We do not subscribe
to the Examiner’s and the Requester’s view that the claims include any
composition containing a mixture of the recited components. (RAN 5, 17;
Resp’t Br. 6-9.) To do so would read the term “azeotrope-like,” as expressly
defined in the Specification, out of the claims.
Even though claim 1 recites ranges of from greater than zero to about
60 weight percent transHFO-1234ze and not less than 40 weight percent
HFC-134a, the claim is still limited by the requirement that the composition
be “azeotrope-like.” In this regard, we do not interpret the disclosure of
amounts in the ’317 Patent to be a definition as to what constitutes an
“azeotrope-like” composition as is the position of the Requester. (Resp’t Br.
3, 6-7.) Rather, we look to the express definition of “azeotrope-like”
composition discussed above, with the broad amounts disclosed in the ’317
Patent as providing general guidance in producing an “azeotrope-like”
composition with a constant or substantially constant boiling point.
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Contrary to Requester’s position, we do not view the definition of
“azeotrope-like” to cover the recited combinations in any amount (Resp’t Br.
7-8), but instead we find the “self-defined” definition to relate to the
amounts necessary to result in the identified properties of an
“azeotrope-like” composition.
Regarding the specific amounts of transHFO-1234ze and HFC-134a
recited in the claims, the ’317 Patent expressly discloses the combination in
the amounts recited in the claims. (’317 Patent, col. 5, ll. 64-66.) Thus,
Requester’s arguments that the claims do not include the preferred
embodiments are unpersuasive. (Resp’t Br. 7-9.)
Accordingly, we interpret claim 1 to be directed to composition
comprising from greater than zero to about 60 weight percent
transHFO-1234ze and not less than 40 weight percent HFC-134a, with a
constant or substantially constant boiling point.

PRIOR ART REJECTIONS
Rejection I- Inagaki
The Examiner’s position is that Inagaki discloses an “azeotrope-like”
composition. (RAN 7-8.) The Examiner stated:
While Inagaki does not specifically teach that mixtures of
C3HmFn with at least one compound of the selected group are
azeotrope-like, having the claimed component concentration,
boiling points, or are azeotrope, Inagaki nevertheless teaches
compositions comprising the claimed components . . . .
As to the concentration of components, a person having
ordinary skill in the art would have been able to determine,
through routine experimentation, the range of concentrations in
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the composition of Inagaki so as to produce a composition
having the desired properties-including azeotrope compositions.

(RAN 8, see also RAN 14-15.) Requester agrees with the Examiner.
(Resp’t Br. 9-10.)
Patent Owner contends that Inagaki fails to disclose an
“azeotrope-like” composition because, inter alia, Inagaki only discusses
azeotropes in the background section and not in the context of the invention
disclosed in Inagaki. (App. Br. 20-21.) Patent Owner argues that the
compositions disclosed in Inagaki are not inherently “azeotrope-like.” (App.
Br. 21, 22.) Patent Owner argues also that because Inagaki does not provide
any teaching or suggestion that the compositions disclosed therein would
result in “azeotrope-like” compositions and because the formation of
“azeotrope-like” compositions is not predictable, there would have been no
reasonable expectation of success in forming the “azeotrope-like”
compositions recited in the claims based on the disclosure of Inagaki. (App.
Br. 22-24.)

ISSUE
The dispositive issue on appeal is: Does Inagaki disclose or render
obvious the “azeotrope-like” composition recited in the claims?
We answer this question in the negative.

FINDINGS OF FACT (“FF”)
1. Inagaki discloses: “Conventionally, chlofluorohydrocarbon,
fluorohydrocarbon, azeotropic composition of said
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chlofluorohydrocarbon and said fluorohydrocarbon and their
homologues have been known as heat media (cooling media)
used for a heat pump.” (Inagaki, p. 1, col. 1, “Background of
Invention.”)
2. Inagaki discloses fluids for heat transfer of the formula and
specifically discloses F3C-CH=CHF,
(1,3,3,3-tetrafluoro-1-propene), which has a boiling point -16.0
degrees Celsius. (Inagaki, p. 2, cols. 1-2.)
3. Inagaki discloses mixtures of C3HmFn with R-22 (CHClF2),
R-32 (CH2F2), R-124 (CF3CHClF), R-125 (CF3CF2H), R-134a
(CF3CFH2), R-142b (CH3CClF2), 143a (CF3CH3) and R-152
(CHF2CH3). (Inagaki, p. 2, col. 2.)
4. Inagaki is silent as to whether the compositions disclosed
therein form azeotrope or “azeotrope-like” compositions.

ANALYSIS
After considering the arguments and evidence submitted by the Patent
Owner and Requester, we reverse the Examiner’s rejections of the claims
because we agree with Patent Owner that Inagaki does not disclose or render
obvious the “azeotrope-like” compositions recited in the claims.
The Examiner’s rejection relies on an interpretation of
“azeotrope-like” composition, which we did not adopt as discussed above.
That is, the Examiner relies on Inagaki’s disclosure of all the components
recited in the claims in order to support the position that Inagaki discloses
the claimed “azeotrope-like” compositions. (RAN 6-7.) However, as
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explained above, the claims require the compositions comprising the recited
components to be constant boiling or essentially constant boiling. We have
not been direct to sufficient evidence in this record that the compositions
disclosed in Inagaki would necessarily exhibit this property or that Inagaki
reasonably suggests the production of an “azeotrope-like” composition.
In reaching this conclusion, we recognize that as long as the Examiner
has a reasonable basis to believe that the compositions of the prior art would
be expected to possess the same or similar properties as the compositions
recited in the claims, the Examiner may shift the burden to the Patent Owner
to prove otherwise. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (citing
In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986); In re Ludtke, 441 F.2d
660, 664 (CCPA 1971). (“[W]hen the PTO shows sound basis for believing
that the products of the applicant and the prior art are the same, the applicant
has the burden of showing that they are not.”) However, in this case, there is
insufficient evidence to support such a belief as explained further below.
Here, we observe that the formation of azeotropic compositions has
been recognized previously as unpredictable. In re Broadley, 404 F.2d 616,
619 (CCPA 1968) (a homologous relationship between hydrofluorocarbons
was insufficient to predict the formation of an azeotrope). (See App. Br. 3,
15, 23, declaration of Robert Elliott Low executed on March 4, 2011 (the
“Low Declaration”), para. 12(a)(i).) In addition, Patent Owner relies on
Declarations of Rajiv Ratna Singh, 6 executed on February 11, 2013 (“First

6 Dr. Singh is a co-inventor of the ’317 Patent. (First Singh Declaration
para. 1.) Dr. Singh has a Ph.D. in physical chemistry and is a
Senior/Corporate Fellow and Leader in the Fluorine Chemistry Group.
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Singh Declaration”), October 31 2013 (“Second Singh Declaration”), and
September 2, 2014 (“Third Singh Declaration”),7 as well as a Declaration of
Mark W. Spatz executed on February 11, 2013 (“Spatz Declaration”), to
establish that “azeotrope-like” compositions having the claimed composition
would have been unpredictable. (First Singh Decl. paras. 6-9, 11-12.)
Although the claims are directed to “azeotrope-like” compositions,
which include azeotropes, but are not limited necessarily to “true”
azeotropes, in light of the definition of “azeotrope-like” discussed above, we
credit Dr. Singh’s testimony that forming an “azeotrope-like” composition
would be unpredictable. That is, because “azeotrope-like” compositions are
“constant boiling or essentially constant boiling,” one of ordinary skill in the
art would have expected that the formation of an “azeotrope-like”
composition would have been equally unpredictable because their properties
are not the same as they are for mixtures of pure compounds, which do not
exhibit a constant or substantially constant boiling point. (First Singh Decl.
paras. 6-9, 11.)
We are not persuaded by Requester’s contention that the ’317 Patent
does not support the formation of an azeotrope. (Resp’t Br. 5-6.)
Specifically, Requester argues that the boiling point temperatures relied on
for the “pure” components such as R-134a are not consistent with the values
reported in the Singh Declarations. (Resp’t Br. 5.) Requester relies on the
Low Declaration, which declares that the discrepancy in boiling points

(First Singh Declaration, paras. 2 and 3.) We find Dr. Singh to be qualified
to opine on azeotrope-like compositions.
7 Entered as indicated in the Examiner’s Answer, p. 2.
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“casts doubt” over the results reported in the ’317 Patent.8 (Resp’t Br. 5;
Low Declaration, para. 31.) Requester also argues that Patent Owner’s data
is not credible because it was not reproduced, i.e., the graphical curves
between the ’317 Patent and the Singh Declarations have different slopes.
(Resp’t Br. 6.)
However, Patent Owner argues that the alleged variation in boiling
point is irrelevant and that the measured boiling point of the compositions in
the examples disclosed in the ’317 Patent changes very little with changes in
concentration of components, and thus shows essentially no change in
boiling point as required by an azeotropic composition. (Patent Owner
Rebuttal Brief filed July 15, 2015; “Reb. Br.” 6-7.) We find that the
evidence pointed to by the Patent Owner and Requester in the briefs weighs
in favor of the Patent Owner. (Reb. Br. 2-6.) Specifically, we agree with
Patent Owner that the behavior of the compositions with respect to the
change in temperature of the boiling points as discussed in the ’317 Patent
supports Patent Owner’s position that azeotrope-like compositions
containing the claimed components would be unpredictable. (Reb. Br. 3-7.)
Indeed, the results in the Singh Declaration, particularly for the components
in the specific amounts recited in claim 1, show the formation of a
composition having a negative or very small rate of change in boiling point
(referred to as “glide”) as the percentage of the components of the

8 Dr. Low, who is employed by Mexichem, earned a Doctorate in Chemical
Engineering with experience in azeoptropic and nonazeotropic refrigerants.
(Low Declaration, paras. 1-4.) We find Dr. Low qualified to opine on
azetropic compositions. Dr. Low references U.S. Patent No. 7,825,805, but
Table 1 of the ’805 Patent is identical to Table 1 of the ’317 Patent.
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composition are varied. (First Singh Decl. paras. 7-9, Ex. C; Spatz Decl.,
paras. 6-7, 12-17.)
Although Inagaki discloses compounds and combinations of
compounds that may include the compounds recited in the claims (FF2,
FF3), Inagaki is silent as to whether azeotrope or “azeotrope-like”
compositions are formed. (FF4.) Inagaki does mention azeotropic
compositions, but only in the background section of the disclosure, and not
in conjunction with the disclosure of their invention. (FF1, FF4.) The
Examiner did not provide a reason as to why one of ordinary skill in the art
would have been guided to select an azeotrope from Inagaki’s broadly
disclosed compositions. In view of the above discussion, insufficient basis
exists to support the Examiner’s position that Inagaki discloses or renders
obvious “azeotrope-like” compositions as recited in independent claim 1.
Accordingly, we reverse the Examiner’s rejection of the claims as obvious
over Inagaki.

Rejections II and III
The remaining prior art rejections on appeal all rely on Inagaki for the
disclosure of an “azeotrope-like” composition. (RAN 9, 10.) Therefore, we
reverse the Examiner’s rejections (Rejections II-III) for the same reasons.

CONCLUSION
On this record, the Examiner erred in determining that Inagaki
discloses or renders obvious the “azeotrope-like” composition recited in the
claims.
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DECISION
The Examiner’s decision to reject claims 1, 2, 4, 5, 7, 9, 12, 13, 16,
17, 20, 26-28, 30, 31, 35, 36, 40-44, 46, and 47 is reversed.
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
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timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

REVERSED

PATENT OWNER:

HONEYWELL/FOX/BANNER
Patent Services
115 Tabor Road - PO Box 377
Morris Plains, NJ 07950

THIRD-PARTY REQUESTER:

RYAN KROMHOLZ & MANION, S.C.
PO Box 26618
Milwaukee, WI 53226