Ex Parte Boutier et al

Patent Trial and Appeal Board

May 21, 2018

13991193 (P.T.A.B. May. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/991,193 06/03/2013
21839 7590 05/23/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Jean-Christophe Boutier
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.
0078840-000108 5153
EXAMINER
HARDEE, JOHN R
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
05/23/2018 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 JEAN-CHRISTOPHE BOUTIER and WISSAM RACHED 1
Appeal 2016-007048
Application 13/991,193
Technology Center 1700
Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
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Appeal2016-007048
Application 13/991,193
Appellants request our review under 35 U.S.C. § 134 of the
Examiner's decision rejecting claims 1, 4--10, 17, and 20-24. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below:
A composition consisting of:
from 10% to 60% of trans- I, 1, 1,4,4,4-hexafluorobut-2-ene;
from 40% to 90% of 3,3,4,4,4-pentafluorobut-1-ene; and
optionally one or more additives selected from the group
consisting of lubricants, stabilizers, surfactants, tracers, fluorescent
agents, odorous agents solubilizing agents, and mixtures thereof,
wherein the composition is azeotropic or azeotrope-like.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Leck et al. US 2007/0187639 Al Aug. 16, 2007
(hereinafter "Leck")
Kim et al., A Study to Determine the Existence of an Azeotropic R-22
"Drop-In" Substitute, NISTIR 5784, Department of Commerce (1996)
(hereinafter "Kim")
THE REJECTION
Claims 1, 4--10, 17, and 20-24 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Leck in view of Kim.
2
Appeal2016-007048
Application 13/991,193
ANALYSIS
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports Appellants' position, and we reverse for the reasons discussed
below.
The dispositive issue in this case is whether azeotrope-like properties
are "more likely than not" in the claimed composition of the present
application. Ans. 3.
It is the Examiner's position that Kim indicates that azeotrope-like
properties are more likely than not, and therefore such properties cannot be
unexpected. 2 Ans. 3--4. On page 4 of the Answer, the Examiner also states
that "[ d]etermination of the position and composition of azeotropes and
azeotrope-like compositions is routine experimentation: [f]inding the
position and composition of the ethanol-water azeotrope is a mainstay of
first-year organic chemistry lab." However, the Examiner has not provided
adequate evidence to support this assertion. In this context, we refer to the
case of In re Broadley, 404 F.2d 616, 619 (CCPA 1968), wherein the court
held that a homologous relationship between hydrofluorocarbons was
insufficient to predict the formation of an azeotrope. 3
2 It is Appellants' position that Kim does not indicate that azeotrope-like
properties are more likely than not. Appellants refer to page 3 of Kim in this
regard. Reply Br. 8. Appellants state that Kim teaches that only some
mixtures are azeotropes, and therefore it cannot be said that azeotrope
formation occurs more often than not. Reply Br. 8.
3 This case was mentioned by Appellants during the oral hearing held on
May 2, 2018. Therein, Appellants state that this case is discussed in Board
Decision 2016--001568 of Application S.N. 95/002, 188 (mailed August 17,
2016). Oral Hrg. Trans. p. 11-13.
3
Appeal2016-007048
Application 13/991,193
Within the aforementioned context of the unsupported assertion that
azeotrope properties are predictable, picking and choosing from among the
selection taught in Leck, and then choosing the particularly claimed amounts
for each selection, leads us to conclude that the only teaching or suggestion
to achieve the here claimed invention derives from Appellants' own
Specification rather than the applied prior art. Therefore we conclude that
the Examiner's rejection is improperly based upon impermissible hindsight
reasoning. See W.L. Gore & Assocs. v. Garlock, Inc., 721F.2d1551, 1553
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) ("To imbue one of
ordinary skill in the art with knowledge of the invention in suit, when no
prior art reference or references of record convey or suggest that knowledge,
is to fall victim to the insidious effect of a hindsight syndrome wherein that
which only the inventor taught is used against its teacher.").
In view of the above, we thus are persuaded by Appellants' position in
this regard, and reverse the rejection.
The rejection is reversed.
DECISION
ORDER
REVERSED
4