Ex parte Kamakura et al.

Board of Patent Appeals and Interferences

Mar 15, 2000

07992177 (B.P.A.I. Mar. 15, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TAMIJI KAMAKURA, NORIYOSHI TANAKA, YUJI BABA,
KIMIYOSHI NAMIWA, YUKIO TATSUMI and MASATO NAMIKI
____________
Appeal No. 1997-0042
Application No. 07/992,177
____________
HEARD: February 24, 2000
____________
Before PAK, WALTZ, and KRATZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 3 through 5, 8 and 9,
which are the only claims remaining in this application.
According to appellants, the invention is directed to a
refrigerant composition comprising a fluorocarbon coolant and
a lubricant compound which is a specified polyoxyalkylene
Appeal No. 1997-0042
Application No. 07/992,177
2
glycol monomethylether (Brief, page 2). Claim 3 is
illustrative of the subject matter on appeal and a copy of
this claim is attached as an Appendix to this decision.
The examiner has relied upon the following reference as
evidence of obviousness:
Sasaki et al. (Sasaki) 4,948,525 Aug. 14,
1990
Claims 3-5, 8 and 9 stand rejected under 35 U.S.C. § 103
as unpatentable over Sasaki (Answer, page 3). We reverse the
examiner’s rejection for reasons which follow.
OPINION
The examiner finds that Sasaki discloses a lubricating
oil composition for a refrigerator using 1,1,1,2-
tetrafluoroethane coolant where the base oil is a
polyoxyalkylene glycol with the formula R -(OR ) -OH (Answer,1 2 m
page 3). The examiner further finds that Sasaki does not
specifically teach two limitations from claim 3 on appeal,
namely, that R is methyl and that an ethylene oxide group is1
always next to the hydroxyl [hydrogen] terminal (Id.). The
examiner concludes that it would have been obvious to one of
Appeal No. 1997-0042
Application No. 07/992,177
As discussed infra, Sasaki also discloses a monomethyl1
ether base oil in Example 15, Table 1, columns 9-10.
3
ordinary skill in the art to choose R as methyl since Sasaki1
teaches this selection at column 3, line 50 (Id.). The
examiner also concludes that it would have been obvious to one
of ordinary skill in the art that the ethylene oxide group
“may be next to the hydroxyl [hydrogen] group” because Sasaki
teaches that the 2-4 carbon alkylene group is either random or
block copolymerized (Answer, sentence bridging pages 3-4).
Appellants argue that the claimed compositions are not
sufficiently similar to those specifically disclosed by Sasaki
to render the claimed subject matter prima facie obvious
(Brief, page 10).
Sasaki discloses base oils for refrigerator oil
compositions where R of the specified polyoxyalkylene glycol1
monoethers formula may be an alkyl group having 1-18 carbon
atoms (column 3, lines 40-48). Sasaki specifically lists
eighteen alkyl groups included in R (including methyl), with1
eight groups listed as preferred (also including methyl, see
column 3, lines 50-55). Of the eight values listed for R ,1 2
Sasaki teaches that four values are preferred (including
Appeal No. 1997-0042
Application No. 07/992,177
4
ethylene and propylene, see column 3, line 56-column 4, line
15). Sasaki also teaches that the -OR - group may be derived2
from a random or block copolymer prepared from oxyalkylene
groups having different numbers of carbon atoms and that a
ratio “"” (number of -OR - groups where R is an ethylene2 2
group/m in the molecule) be in the range of 0 to 0.8 (column
4, lines 15-24).
The examiner has found that Sasaki does not “specifically
teach ... that an ethylene oxide group is always next to the
hydroxyl terminal.” (Answer, page 3). The composition recited
in claim 3 on appeal requires that “the end group at the
hydrogen terminal is an oxyethylene group” (see claim 3 on
appeal). The examiner has not provided any factual support
for the conclusion that “[i]t would have been obvious ... to
choose the ethylene oxide be [sic] next to the hydroxyl
[hydrogen] terminal as the reference teaches that the 2-4
carbon atom alkylene group is either random or block
copolymerized and thus the ethylene oxide group may be next to
the hydroxyl group.” (Answer, sentence bridging pages 3-4,
emphasis added). The examiner has not provided evidence or
convincing reasons why the random or block copolymerization of
Appeal No. 1997-0042
Application No. 07/992,177
5
the alkylene oxide group would have rendered the claimed
limitation obvious to one of ordinary skill in the art. If
the examiner is relying on a theory of “inherency,” the
examiner must provide basis in fact and/or technical reasoning
to reasonably support the determination that the allegedly
inherent characteristic necessarily flows from the teachings
of the prior art. “The mere fact that a certain thing may
result from a given set of circumstances is not sufficient.”
In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA
1981). See also In re Robertson, 169 F.3d 743, 745, 49 USPQ2d
1949, 1950-51 (Fed. Cir. 1999).
Appellants have also presented evidence to show that the
claimed subject matter possesses unexpectedly improved
properties (Brief, pages 11-18, discussing the Declarations
under 37 CFR
§ 1.132 filed by Tatsumi, executed on Oct. 8, 1993, and filed
by Namiki et al. (Namiki), executed on Oct. 26, 1994).
Contrary to the examiner’s assertion on page 6 of the Answer,
the Namiki Declaration compares the closest prior art (see
Example 15 of Sasaki, the only example with a monomethyl
Appeal No. 1997-0042
Application No. 07/992,177
6
ether, corresponding to Sample 10 of the Namiki Declaration).
The examiner states that the Namiki Declaration does not
compare the effect that the ethylene oxide group being next to
the hydrogen terminal has on the physical properties of the
lubricant (Answer, pages 5-6). However, as discussed above,
the examiner has not established that this claimed limitation
is suggested by the applied prior art.
The examiner has also stated that the Tatsumi Declaration
is not commensurate in scope with the claimed subject matter
(Answer, page 5). However, the examiner has not addressed the
sufficiency of the combined showing of representative examples
presented in both the Tatsumi and Namiki Declarations.
We determine, based on the totality of the record,
considering the arguments and evidence presented by appellants
and the examiner, that the preponderance of evidence weighs in
favor of unobviousness of the claimed subject matter. See In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992); In re Merchant, 575 F.2d 865, 868, 197 USPQ 785,
787 (CCPA 1978). Accordingly, the rejection of the claims on
appeal under 35 U.S.C. § 103 is reversed.
Appeal No. 1997-0042
Application No. 07/992,177
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The decision of the examiner is reversed.
REVERSED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
Appeal No. 1997-0042
Application No. 07/992,177
8
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
lp
Appeal No. 1997-0042
Application No. 07/992,177
9
OLSON & HIERL
20 NORTH WACKER DRIVE
STE. 3000
CHICAGO, IL 60606
Appeal No. 1997-0042
Application No. 07/992,177
10
APPENDIX
Claim 3. A refrigerant composition comprising a
fluorinated hydrocarbon coolant and at least one lubricant
compound of the formua:
CH O(AO) (CH CH O) H3 m 2 2 n
wherein
AO is individually selected from the group consisting of
oxyethylene and oxypropylene,
m is a positive number in the range of 1 through 50
inclusive, provided that when m is 1, AO is oxypropylene and
when m is greater than 1, (AO)m is a polymeric difunctional
grouping selected from among members of the class consisting
of (a) polymeric groupings of oxypropylene groups and
(b)polymeric groupings each consisting of both at least one
oxyethylene group and at least one oxypropylene group,
n is a positive number in the range of 1 through 10
inclusive,
the end group at the hydrogen terminal is an oxyethylene
group, and
the total content of oxyethylene groups is in the range
of 5 through 60 weight percent based on total compound weight,
the weight ratio of said coolant to said lubricant
compound ranging from 1:99 to 99:1.
Leticia
Appeal No. 1997-0042
Application No. 07/992,177
APJ WALTZ
APJ KRATZ
APJ PAK
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: May 9, 2001
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT