Ex Parte Rached

Patent Trial and Appeal Board

Feb 25, 2016

13393626 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/393,626 03/01/2012
21839 7590 02/29/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Wissam Rached
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.
0078840-000094 1223
EXAMINER
HARDEE, JOHN R
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
02/29/2016 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 WIS SAM RACHED
Appeal2014-009631
Application 13/393,626
Technology Center 1700
Before BRADLEY R. GARRIS, TERRY J. OWENS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-009631
Application 13/393,626
Appellant1 appeals under 35 U.S.C. § 134 from the Examiner's
decision2 finally rejecting claims 2, 3, and 5-14. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The appealed claims are directed to a heat transfer system. Claim 6 is
illustrative:
6. A heat transfer system comprising a compression-
type refrigeration system with exchangers operating in
countercurrent mode or in crossed-current mode with
countercurrent tendency and a refrigerant comprising a ternary
composition of 2,3 ,3 ,3-tetrafluoropropene, 1, 1-difluoroethane
and difluoromethane.
App. Br. 11 (Claims Appendix).
The claims stand rejected as follows: (1) claims 2, 3, and 5-14 on the
ground of non-statutory double patenting over claims 1-8 of U.S. Patent
No. 8,246,850 B2; (2) claims 2, 3, and 5-14 provisionally on the ground of
non-statutory double patenting over claims 2; 3; and 5-17 of co-pending
Application No. 13/391,417 (issued as U.S. Patent No. 9,011,711 B2 on
April 21, 2015), and over claims 4--10 of co-pending Application
No. 13/122,606 (now abandoned); and (3) claims 2, 3, and 5-14 under
35 U.S.C. § 103(a) as obvious over Minor et al. ("Minor")
(WO 2006/094303 A2, published September 8, 2006) in view of Sienel et al.
("Sienel") (U.S. Patent Application Publication No. 2008/0184731 Al,
published August 7, 2008). Final 2.
1 Appellant identifies the real party in interest as Arkema France. Appeal
Brief filed June 26, 2014 ("App. Br."), 1.
2 Final Office Action mailed February 10, 2014 ("Final").
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Application 13/393,626
Obviousness-type double patenting rejections
Appellant does not challenge the obviousness-type double patenting
rejections. Therefore, we summarily affirm the rejections based on U.S.
Patent No. 8,246,850 B2, and Application No. 13/391,417.
The rejection over Application No. 13/122,606 is moot because that
application has been abandoned.
Rejection under 35 U.S.C. § 103(a)
Minor discloses compositions comprising HFC-1234yf (2,3,3,3-
tetrafluoropropene ), and at least one compound selected from a Markush
group that contains HFC-152a (1,1-difluoroethane) and HFC-32
(difluoromethane). Minor 2, 11. 29-35. Minor teaches that each ofHFC-
1234yf, HFC-152a, HFC-32 may be present in the composition in an
amount of about 1 weight percent to about 99 weight percent, about 20 to
about 99 weight percent, about 40 weight percent to about 99 weight
percent, or about 50 weight percent to about 99 weight. Id. at 14, 11. 25-30,
and 14--15, Table 2.
Appellant argues that the Examiner has not established a prima facie
case of obviousness because Minor discloses "276 possible ternary
compositions ... [t]here is no motivation to arrive at the claimed[] ternary
mixture based on ... Minor." App. Br. 7. The Examiner explains that
although Minor does not explicitly disclose compositions containing HFC-
1234 yf, HFC-152a, and HFC-32, "the passage at p.2, lines 9+ [of Minor]
would motivate the formulation of such, and substitution of one of R-32 and
R-152a for some amount of the other in compositions comprising the
percentages disclosed on p.15." Final 3. The key to supporting a prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
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Appeal2014-009631
Application 13/393,626
articulation of an apparent reason why the claimed invention would have
been obvious. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
The Examiner has provided such a reason and the Appellant has not
persuaded us of a reversible error therein. Minor teaches a composition
comprising HFC-1234 yf and at least one compound selected from a
Markush group. Minor 2, 11. 29-35. That disclosure would have indicated
to one of ordinary skill in the art that any combination of those compounds,
including the combination recited in Appellant's claims, is suitable. Thus,
each of those combinations would have been prima facie obvious to one of
ordinary skill in the art.
Appellant further argues that "[ o ]ne cannot say for certain how the
refrigerants [of Minor] will interact ... [ t ]hus, one skilled in the art would
not expect to simply mix two known binary compositions ... and obtain ...
predictable results." App. Br. 4--5; see also Reply Brief 2. There is no
indication in Minor that the disclosed refrigerants would interact negatively
when mixed together, thereby making their combination undesirable.
Accordingly, we do not find Appellant's argument to be persuasive.
Appellant argues that Minor fails to teach or suggest a heat transfer
system that is operating with exchangers in countercurrent or crossed-current
mode with countercurrent tendency. Reply Br. 1. We do not find this
argument to be persuasive because Appellant is attacking Minor individually
when the rejection is based on a combination of references. See In re Keller,
642 F.2d 413, 426 (CCPA 1981) ("one cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references."). The Examiner relies on Sienel, not Minor,
for teaching exchangers that operate in countercurrent or crossed-current
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Appeal2014-009631
Application 13/393,626
mode. Final 3. Paragraph 17 of Sienel teaches that heat exchange systems
"operate most efficiently with counter-current flow of refrigerant versus heat
exchange medium."
Appellant asserts that dependent claims 2, 3, 7, and 12-14 are
separately patentable over the cited references without presenting any
substantive arguments as to why that is the case. App. Br. 7; see also Reply
Br. 3. "A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim." See
37 C.F.R. § 41.37(c)(l)(vii) (2010); see also In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (holding that "the Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art"). Accordingly,
dependent claims 2, 3, 5, and 7-14 stand or fall with independent claim 6.
For the reasons above, we are not persuaded of reversible error in the
Examiner's rejection under 35 U.S.C. § 103(a).
CONCLUSION
We AFFIRM the rejection of claims 2, 3, and 5-14 on the ground of
non-statutory double patenting over claims 1-8 of U.S. Patent
No. 8,246,850 B2.
We AFFIRM the provisional rejection of claims 2, 3, and 5-14 on the
ground of non-statutory double patenting over claims 2, 3, and 5-17 of co-
pending Application No. 13/391,417.
We AFFIRM the rejection of claims 2, 3, and 5-14 under
35 U.S.C. § 103(a) as obvious over Minor and Sienel.
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Appeal2014-009631
Application 13/393,626
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv) (2012).
AFFIRMED
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