Ex Parte Boussand

Patent Trial and Appeal Board

Aug 23, 2018

13808326 (P.T.A.B. Aug. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/808,326 01/04/2013
21839 7590 08/27/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Beatrice Boussand
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.
0078840-000135 1841
EXAMINER
HARDEE, JOHN R
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
08/27/2018 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 BEATRICE BOUSSAND
Appeal2017-000798
Application 13/808,326
Technology Center 1700
Before JEFFREY T. SMITH, MICHAEL G. McMANUS,
and SHELDON M. McGEE, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 8, 9, and 27-32 of
Application 13/808,326 under 35 U.S.C. § 103. Final Act. (Feb 10, 2016)
2-3. Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
BACKGROUND
The present application generally relates to a composition for use as a
heat transfer agent in refrigeration and air conditioning systems. Spec. 1.
1 Arkema France is identified as the real party in interest. Appeal Br. 2.
Appeal2017-000798
Application 13/808,326
The composition includes a refrigerant consisting mostly of 2,3,3,3-
tetrafluoropropene ( also referred to as "HF0-1234 yf'). The refrigerant may
further include a small amount of another hydrofluoroolefin. Id. at 2--4. In
addition to the refrigerant, the composition may additionally include a
lubricant. Id. at 5.
Representative claim 1 is reproduced below:
1. A composition comprising a refrigerant consisting of
from 99.85 to 99.98% by weight of 2,3,3,3-tetrafluoropropene,
and from 0.02 to 0.15% by weight of the E isomer of 1,3,3,3-
tetrafluoropropene.
Appeal Br. (Claims App. 1 ).
REJECTION
The Examiner maintains the following rejection:
1. Claims 1, 8, 9, and 27-32 are rejected under 35 U.S.C. § I03(a)
(pre-AIA) as obvious over WO 2009/137656 Al, published Nov.
12, 2009 ("Mahler"). Final Act. 2-3.
DISCUSSION
The Examiner rejected claims 1, 8, 9, and 27-32 as obvious over
Mahler. Id. at 2-3. In support of the rejection, the Examiner found that
Mahler teaches a composition including HFO-I234yf as the principal
component and at least one other additional compound as a minor
component. Id. Mahler indicates that the minor component may be selected
from a group that includes HFO-I234ze. 2 Mahler 1 :30-2: 1. Mahler further
2 Mahler defines HFOI234ze as "E- or Z-1,3,3,3-tetrafluoropropene."
Mahler 5, Table 1. See also Spec. 2.
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Appeal2017-000798
Application 13/808,326
teaches that the composition "contains less than about 1 weight percent of
the at least one additional compound." Mahler 2. Mahler similarly teaches
that "[i]n one embodiment, the total amount of additional compound(s) in
the composition comprising HF0-1234yfranges from greater than zero
weight percent to less than 1 weight percent." Id. at 3.
The Examiner further determined that "it would have been obvious ..
. to make 1234yf of higher purity, because further distillation to achieve
greater purity would be an obvious expedient." Final Act. 2.
Appellant argues that the rejection is in error on several bases.
Appeal Br. 5-10. First Appellant argues that HF0-1234ze is just one
compound among twenty-three others listed as impurities and "there is no
basis for selecting a particular impurity as preferable." Id. at 5. With regard
to the minor component being an "impurity," Mahler teaches that
"compositions comprising HF0-1234yf and at least one additional
compound selected from the group consisting ofHF0-1234ze .... are
useful as heat transfer compositions for use in refrigeration, air-conditioning
and heat pump systems." Mahler, Abst. Thus, while HF0-1234ze may be
present as an impurity or reaction byproduct, Mahler teaches that
compositions including HF0-1234ze are useful as heat transfer
compositions. Referring to HF0-1234ze as an impurity does not defeat
Mahler's explicit teaching of compositions including such compound as
useful.
Second, Appellant argues that Mahler does not teach the specific
content of the E isomer of 1,3,3,3-tetrafluoropropene (one of the two forms
ofHF0-1234ze) required by the claims. Appeal Br. 5---6. Claim 1 requires
"0.02 to 0.15% by weight of the E isomer of 1,3,3,3-tetrafluoropropene."
Appeal Br. (Claims App. 1).
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Appeal2017-000798
Application 13/808,326
As above, Mahler teaches a composition including a "total amount of
additional compound( s) ... from greater than zero weight percent to less
than 1 weight percent." Mahler 3. "A prima facie case of obviousness
typically exists when the ranges of a claimed composition overlap the ranges
disclosed in the prior art." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003). Indeed, where "the claimed ranges are completely encompassed by
the prior art, the [obviousness] conclusion is even more compelling than in
cases of mere overlap." Id. at 1330. Here, the claimed range ("0.02 to 0.15
% by weight") is completely encompassed by the prior art range ("greater
than zero weight percent to less than 1 weight percent"), and is therefore
prima facie obvious.
Appellant further argues that, even if the claims are prima facie
obvious, such claims should be allowed because the prima facie case is
rebutted by evidence of unexpected results. Appeal Br. 5-9. In support of
such argument, Appellant relies upon the Expert Declaration of Beatrice
Boussand ("Boussand Declaration"), a named inventor.
The Boussand Declaration presents certain test results described as
indicative of the thermal stability characteristics of four separate
compositions. Each of the compositions included 2.2g of fluid and 5g of
lubricant. Boussand Declaration ,r 3. The four fluids are described as
follows: 1) essentially pure HF0-1234yf (2,3,3,3-tetrafluoropropene ); 2)
HF0-1234yf and 300 ppm ofHF0-1243zf (3,3,3-trifluoropropene); 3) HF0-
1234yf and 500 ppm ofE HF0-1234ze (1,3,3,3-tetrafluoropropene); and 4)
HF0-1234yf, 300 ppm ofHF0-1243zf, and 500 ppm E HF0-1234ze. Id.
,r 5. The test results are stated to be as follows:
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Appeal2017-000798
Application 13/808,326
Pure HFO-
1234yf
Color 10 Gardner
Water 300 ppm
Content
Acid 5.2 mg
Number KOH/g
HF0-1234yf
and 300 ppm
ofHF0-1243zf
9 Gardner
300 ppm
5.2 mg
KOH/g
HF0-1234yf HF0-1234yf,
and 500 ppm 300 ppm of
ofE HFO- HF0-1243zf,
1234ze and 500 ppmE
HF0-1234ze
8.5 Gardner 9 Gardner
250 ppm 300 ppm
4.5 mg 5.2 mg
KOH/g KOH/g
Id. ,r 7 (same results set forth in Spec. at 7-8). Of the four compositions,
only the third embodies the claims of the application.
Appellant argues that such results show an unexpected increase in
thermal stability for the third composition as indicated by the low Gardner
number, low water content, and low acid number. Appeal Br. 7.
The Examiner determined that Appellant has shown that "some effect
is observed at 500 ppm of 1234ze" but has not shown unexpected results
commensurate with the scope of the claims. Answer 4. According to the
Examiner, Appellant has not shown sufficient effect for compositions at the
low end of the range of claimed HF0-1234ze. Id.
The Examiner further determined that Appellant's evidence in support
of the claimed unexpected results is inadequate because the tested
composition included a lubricant. Id. at 4 ("Appellant's arguments of
unexpected results are based on improved stability of the lubricant.")
( emphasis omitted).
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Appeal2017-000798
Application 13/808,326
Evidence of unexpected results must be commensurate with the scope
of the rejected claims. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003) ("the applicant's showing must be commensurate in scope with the
claimed range"); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980) ("In
order to establish unexpected results for a claimed invention, objective
evidence of non-obviousness must be commensurate in scope with the
claims which the evidence is offered to support."). In re Patel, 566 F. App'x
1005, 1011 (Fed. Cir. 2014).
Here, Appellant supplies a single data point falling within the scope of
the claims. Appellant has not adequately explained why this single data
point is sufficient to show any trend in the data. Nor has Appellant explained
that the evidence showing that the lower end of the claimed range of the
minor component (approaching 0.02%) will yield results similar to those
presented (for 0.05% E HF0-1234ze ). The transition word "comprising"
found in claim 1 permits the composition to include a lubricant but does not
require one. See Appeal Br. (Claims App. 1) (Compare claim 1 with
dependent claim 8 requiring that the composition include a lubricant).
Appellant, however, presents no test results for a composition that lacks a
lubricant.
In view of the foregoing, we determine that Appellant has not shown
error in the Examiner's determination that the test results shown in the
Boussand Declaration are not commensurate in scope with the claims at
issue. Accordingly, Appellant has not shown adequate evidence of
unexpected results and the prima facie case of obviousness has not been
rebutted.
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Appeal2017-000798
Application 13/808,326
CONCLUSION
The rejection of claims 1, 8, 9, and 27-32 as obvious over Mahler 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).
AFFIRMED
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