Ex Parte Paonessa et al

Board of Patent Appeals and Interferences

Feb 23, 2010

11190574 (B.P.A.I. Feb. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARTIN PAONESSA, RAJIV SINGH, DAVID WILSON,
MARK SPATZ, SAMUEL YANA MOTTA
____________

Appeal 2009-012359
Application 11/190,574
Technology Center 1700
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Decided: February 23, 2010
____________

Before LINDA M. GAUDETTE, MICHAEL P. COLAIANNI, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-012359
Application 11/190,574

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 4-7, 9, 14, and 17-19.1 (App. Br. 2.) We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellants describe a composition including hydrofluorocarbon
(HFC) and secondary alcohol that is said to improve the miscibility of the
HFC with conventional lubricants. (Spec. 2:6-9.) Claim 1, reproduced
below from the Claim Appendix of Appellants’ Appeal Brief, is
representative of the subject matter on appeal.
1. A composition comprising:
(a) from about 80 weight percent to about 99.9 weight
percent of at least one C1 – C5 hydrofluorocarbon;
and
(b) from about 0.1 weight percent to about 20 weight
percent of at least one alcohol selected from the
group consisting of 2-propanol, 2-butanol, 2-
pentanol, 2-hexanol, and 2-heptanol.

4. The composition of claim 1 wherein said alcohol is 2-
pentanol.

The Examiner rejected claims 1, 4-7, 9, 14, and 17-19 under 35
U.S.C. § 103(a) as being unpatentable over Flowers (U.S. 6,669,862 B1
(issued Dec. 30, 2003).)

1 Claims 2, 3, 8, and 20-36 have been canceled and claims 10-13, 15, and 16
have been withdrawn from consideration. (Appeal Brief filed March 2, 2009
(hereinafter “App. Br.”) 2.)
Appeal 2009-012359
Application 11/190,574

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The Examiner found that Flowers discloses compositions of HFC’s
and lower alkyl alcohols, where the lower alkyl alcohols improve solubility
with lubricants. (Examiner’s Answer entered April 1, 2009 (hereinafter
“Ans.”) 3.) The Examiner found that “‘lower alcohol’ is defined as straight
or branched alkyl chains of 1-6 carbons.” (Id., citing col. 2, lines 60+ of
Flowers.) The Examiner determined that,
the compositional limitations are met, and that there are few
enough alcohols of 1-6 carbons that it would have been obvious
at the time that the invention was made to make compositions
as presently recited, because the reference discloses the use of
all of the ingredients recited by appellants in amounts which
meet those recited. . . . As improved solubility with mineral oil
is disclosed as desirable, determination of which of the lower
alkyl alcohols confers the most solubility with mineral oil
amounts to routine optimization, which is motivated by the
reference.
(Ans. 3-4.)
Appellants acknowledge that Flowers discloses alcohols that
generically include secondary alcohols, but contend that Flowers does not
suggest the recited composition because Flowers does not suggest the
superior miscibility imparted to HFCs in conventional refrigerant lubricants
as a result of the recited secondary alcohols. (App. Br. 7.) Appellants also
argue that the Specification provides evidence of unexpected results of
secondary alcohols over primary alcohols. (App. Br. 7-8; Reply Brief filed
June 1, 2009 (hereinafter “Rep. Br.”) 2-4.)

ISSUE
Have Appellants identified error in the Examiner’s conclusion that
Flowers suggests the secondary alcohols as recited in the claims; and if not,
Appeal 2009-012359
Application 11/190,574

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have Appellants provided sufficient evidence of secondary considerations in
the form of unexpected results such that Appellants’ evidence of non-
obviousness outweighs the Examiner’s evidence of obviousness? We
answer these questions in the negative.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Flowers describes a mixture of HFC refrigerant components and an
alcohol, where the “function of the alcohol is to improve
miscibility with lubricants typically found in refrigerating
devices.” (Col. 2, ll. 16-25.)
2. Flowers discloses that the alcohol is “[p]referably a lower alkyl or
branched alkyl alcohol including methanol or ethanol.” (Col. 2, ll.
19-20.)
3. Flowers states that in connection with an additional lower alkyl
hydrocarbon: “‘[l]ower alkyl’ means a straight or branched chain
C1-C6.” (Col. 2, ll. 58-61.)
4. Appellants’ Specification provides examples where a blend of
HFC R-407C - a blend of C1-C3 HFC and one of either 2-pentanol,
1-pentanol, or 1-butanol - is mixed with white mineral oil, and
placed in a glass tube. The mixture is placed in a glass tube and
the distance from the meniscus to the bottom of the tube is
measured. (Spec. 10, exs. 1-3, tbl. 1.)

Appeal 2009-012359
Application 11/190,574

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PRINCIPLES OF LAW
The Examiner bears the initial burden, on review of prior art or on any
other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“On appeal to the Board, an applicant can overcome a rejection [under
§ 103] by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.” In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
A showing of unexpected results may be sufficient to overcome a
prima facie case of obviousness. In re Dillon, 919 F.2d 688, 692-93 (Fed.
Cir. 1990) (internal citations omitted). Such a showing must be based on
evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-
44 (Fed. Cir. 1997); In re Schulze, 346 F.2d 600, 602 (CCPA 1965). The
evidence must also be reasonably commensurate in scope with the claimed
invention. In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978).

ANALYSIS
We confine our discussion to appealed claims 1 and 4, which contain
claim limitations representative of the arguments made by Appellants
pursuant to 37 C.F.R. § 41.37(c)(1)(vii).2
Appellants argue that the Examiner has not established a prima facie
case of obviousness. However, Appellants have not specifically addressed

2 Only those arguments actually made by Appellants have been considered in
this decision. Arguments which Appellants could have made but chose not
to make have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2009).
Appeal 2009-012359
Application 11/190,574

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the Examiner’s rationale that because the number of alcohols within the
disclosed genus of Flowers is limited and all are disclosed as improving
miscibility, it would have been obvious to select the alcohols recited in the
claims. Indeed, Appellants acknowledge that the alcohols disclosed in
Flowers include secondary alcohols.3 (App. Br. 7.) Accordingly, Appellants
have not identified error in the Examiner’s prima facie case of obviousness.
Appellants’ arguments focus on the asserted unexpected improvement
in miscibility by employing secondary alcohols over primary alcohols and
the asserted failure of Flowers to recognize such an improvement. As
evidence of unexpected results, Appellants point to the data disclosed in the
Specification of 2-pentanol compared to 1-pentanol and 1-butanol. (App.
Br. 8-9; Rep. Br. 6-7.) However, as pointed out by the Examiner, claims 1
and 4 generally recite C1to C5 hydrofluorocarbons (Ans. 5) and claim 1
recites 2-propanol, 2-butanol, 2-pentanol, 2-hexanol, and 2-heptanol as
alcohols. Yet, the Specification only provides experimental evidence for 2-
pentanol in combination with HFC blend R-407C, which the Specification
identifies as a blend of C1-C3 HFC. (FF 4.) While Appellants argue that the
comparison made in the Specification amounts to alcohols closer than the
alcohols disclosed in Flowers (Rep. Br. 6-7), Appellants have failed to
address the Examiner’s position regarding the recited genus of HFCs with
respect to claims 1 and 4 and the number of alcohols with respect to claim 1.

3 The Examiner and Appellants argue as to whether the term “branched”
encompasses secondary alcohols. (Ans. 3 and 4; App. Br. 6, 8, 10; Rep. Br.
4 and 5.) Both the Examiner and Appellants failed to offer any objective
evidence to support their respective positions. However, we view resolution
of this point as unnecessary in view of the Examiner’s uncontested position
that Flowers discloses a limited number of alcohols that include the recited
alcohols.
Appeal 2009-012359
Application 11/190,574

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Accordingly, we agree with the Examiner that the data presented is not
commensurate in scope with claims 1 and 4 with respect to the HFCs and
additionally claim 1, with respect to the alcohols claimed. (Ans. 5.)

CONCLUSION
Appellants have failed to identify error in the Examiner’s conclusion
that Flowers suggests the secondary alcohols as recited in the claims.
Appellants have also not provided sufficient evidence of secondary
considerations in the form of unexpected results to outweigh the Examiner’s
evidence of obviousness.

ORDER
We affirm the Examiner’s decision rejecting claims 1, 4-7, 9, 14, and
17-19 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a)(1)(v).
AFFIRMED

KMF

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