Ex Parte Rached

Patent Trial and Appeal Board

Sep 30, 2016

13127144 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/127,144 06/03/2011
21839 7590 10/04/2016
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.
0078840-000081 9584
EXAMINER
FEBLES, ANTONIO R
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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
Appeal2015-000410
Application 13/127,144
Technology Center 3700
Before BRETT C. MARTIN, MICHELLE R. OSINSKI, and
JEREMY M. PLENZLER, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
The Appellant appeals under 35 U.S.C. § 134 of the Examiner's
rejection of claims 1, 3-7, 9-11, and 13-19. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal2015-000410
Application 13/127,144
THE INVENTION
The Appellant's claims are directed generally to "a device for heating
and/or air conditioning the passenger compartment of an automobile." Spec.
1, 11. 3-5. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A heating and/ or air conditioning system for a passenger
compartment of an automobile having a thermal engine and/or
an electrical battery, the system comprising a reversible cooling
loop in which a coolant flows, said reversible cooling loop
comprising a first heat exchanger, an expansion valve, a second
heat exchanger, a compressor and means for reversing the
direction of flow of the coolant, wherein the coolant comprises
2,3,3,3-tetrafluoropropene.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Honda
Amaral
Minor
Olivier
US 2003/0037562 Al Feb. 27, 2003
US 2004/0050089 A 1 Mar. 18, 2004
US 2006/0243944 Al Nov. 2, 2006
WO 2008/107623 A2 Sept. 12, 2008
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Application 13/127,144
REJECTIONS
The Examiner made the following rejections:
Claims 1, 3, 4, 7, 9-11, and 14--19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Honda and Minor. Final Act. 3.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Honda, Minor, and Amaral. Final Act. 5.
Claims 6 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Honda, Minor, and Olivier. Final Act. 6.
ANALYSIS
The Appellant argues all three independent claims, 1, 9, and 19,
together based upon the language of claim 1. App. Br. 5-12. Additionally,
the Appellant relies on the arguments made with regard to the independent
claims for all dependent claims as well as the additional rejections adding
Amaral and Olivier. Id. at 12-13. Accordingly, all pending claims stand or
fall with our disposition of claim 1.
In rejecting the claims, the Examiner essentially uses Honda to teach
all the specifics of the reversible loop air conditioning system of claim 1
except for the specific refrigerant used. Final Act. 3. The Examiner notes
that Honda fails to teach the claimed refrigerant, but that Minor discloses the
use ofR-1234yf (also known as HFC-1234yf1), the claimed refrigerant, as a
substitute for the conventional refrigerant R-134a (also known as HFC-134a)
in a vehicle's air conditioning system. Id. The Examiner then concludes
that the combination of Honda and Minor would have been obvious "in
order to advantageously decrease the cycles [sic] ozone depletion and global
1 HFC-1234yf and R-1234yf are simply other names for the claimed
chemical compound 2,3,3,3-tetrafluoropropene.
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Application 13/127,144
warming potential," which is the reasoning stated in Minor for replacing
HFC-134a with another refrigerant. Id.
The Appellant argues that the Examiner has improperly used an
obvious to try rationale because "[t]here are not a finite number of
predictable solutions in Minor." App. Br. 6. The Examiner, however, notes
that this is not a case of choosing from an indefinite number, but on the
contrary that "Minor discloses eight such coolant combinations and pairings
to be substituted for existing refrigerant compositions." Ans. 4.
Accordingly, we disagree that the Examiner has set forth an improper
obvious to try rationale without a finite set of solutions. We do not agree
that choosing among a mere eight refrigerants amounts to too many choices
so as to negate obviousness.
Furthermore, as the Examiner states, the obvious to try rationale was
simply a secondary rationale. Id. In this particular instance, Minor is not
simply suggesting alternative chemical compounds based on chemical
structure similarities with no guidance as to how they might be used, as is
usually the case with chemical compounds. Minor specifically deals with
the case of replacing HFC-134a in automobile air conditioning systems, i.e.,
the same issue involved in the present application. See, e.g., Minor, ,-r 6.
Given that disclosure, any of the disclosed compounds, regardless of how
many, would be presumed successful as replacements for HFC-134a in an
air conditioning system. There is no issue with unpredictability of the
compounds listed in Minor because Minor specifically states that all
compounds disclosed therein would be suitable for use as replacement
refrigerants in air conditioning systems, including mobile air-conditioning
systems, for the purpose of reducing ozone depletion.
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Application 13/127,144
The Appellant further argues that neither Minor nor Honda
contemplates the problem solved by the claimed invention, namely the
issues attendant to operating in conditions below -15QC. App. Br. 7. While
this may be true, it is inapposite to our decision. Minor discloses an entirely
different basis for substituting the claimed refrigerant for HFC-134a, and it
is this basis the Examiner uses for the rationale to combine Minor with
Honda. The fact that the Appellant has discovered an additional advantage
not contemplated in the applied art does not negate obviousness. See also In
re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (citing In re Dillon, 919 F.2d
688, 693 (Fed. Cir. 1990) (en bane) ("Although the motivation to combine
here differs from that of the applicant, the motivation in the prior art to
combine the references does not have to be identical to that of the applicant
to establish obviousness."); In re Linter, 458 F.2d 1013, 1016 (CCPA 1972)
("The fact that [A ]ppellant uses [a claimed feature] for a different purpose
does not alter the conclusion that its use in a prior art composition would be
prima facie obvious from the purpose disclosed in the references.").
The Appellant additionally asserts that the Examiner's rationale for
combining is a mere "conclusory statement" and "is insufficient to support
an obviousness rejection." App. Br. 11. On the contrary, the Examiner's
basis is not merely conclusory, it is the exact basis set forth in Minor for
making the proposed replacement. This is not the Examiner's conclusion, it
is the rationale clearly set forth in the prior art for substituting HFC-1234yf
for HFC-134a.
Lastly, the Appellant argues that the Examiner erred because Honda
fails to teach the specific "conventional" refrigerant used in its system and
Minor does not explicitly state what a conventional refrigerant used in a
reversible cooling loop system would be because Minor is silent regarding
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Application 13/127,144
reversible loops. This argument, however, overlooks the teachings as a
whole of the combined references as well as what is admitted in the
Appellant's own Specification. Honda uses a conventional refrigerant and
one of ordinary skill in the art would be apprised as to what refrigerant( s)
is/are usable in that system. If not, Honda would not be an enabling
disclosure and we do not think the Appellant intends to assert that Honda is
not enabling because it fails to specifically state what conventional
refrigerant is used. Additionally, the Appellant makes clear in the
Specification that HFC-134a is the conventional refrigerant used in
reversible cooling loop systems. Spec. p. 2.
Furthermore, while not specifically discussing reversible cooling loop
systems, Minor does state that the purpose disclosed therein is to replace
conventional refrigerants, such as the specifically named HFC-134a, with
refrigerants that "meet the demands of low or zero ozone depletion potential
and lower global warming potential." Minor i-f 8. Minor also specifically
discloses that this is an issue due to regulations in the automobile industry.
Minor i-f 6. As such, it is clear that the combination of Minor and Honda
teaches that a conventional refrigerant, such as HFC-134a, which is
commonly used in the automobile industry and admitted by the Appellant as
that used in reversible loop systems, could be replaced based upon the
reasons stated in Minor. Accordingly, we are not persuaded of error and
sustain the Examiner' rejection of claim 1. As such, we also sustain the
Examiner's rejection of claims 3-7, 9-11, and 13-19.
DECISION
For the above reasons, we AFFIRM the Examiner's decision to reject
claims 1, 3-7, 9-11, and 13-19.
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Application 13/127,144
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) (2009).
AFFIRMED
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