HONEYWELL INTERNATIONAL INC.(OWNER) et al.Download PDFPatent Trials and Appeals BoardMay 1, 202095002030 - (D) (P.T.A.B. May. 1, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/002,030 08/20/2012 8065882 9404.21591-REX 2300 116637 7590 05/01/2020 HONEYWELL/FOX/BANNER Patent Services 115 Tabor Road PO Box 249 MORRIS PLAINS, NJ 07950 EXAMINER XU, LING X ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 05/01/2020 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ MEXICHEM AMANCO HOLDING S.A. de C.V. Requester and Respondent v. HONEYWELL INTERNATIONAL INC. Patent Owner and Appellant ____________ Appeal 2020-001222 Reexamination Control 95/002,030 Patent US 8,065,882 B21 Technology Center 3900 ____________ Before JEFFREY B. ROBERTSON, RAE LYNN P. GUEST, and JANE E. INGLESE, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION UNDER 37 C.F.R. § 41.77(f) 1 US Patent 8,065,882 B2 issued on November 29, 2011 to Rajiv R. Singh, et al. (hereinafter “the ’882 patent”). Appeal 2020-001222 Reexamination Control 95/002,030 Patent US 8,065,882 B2 2 This is a decision under 37 C.F.R. § 41.77(f). In a Decision on Request for Rehearing entered March 21, 2019 (“Rehearing Decision”), the Board entered a new ground of rejection under 37 C.F.R. § 41.77(b) for claims 1–12, 14–17, 21–25, 28, 30–59, 61–63, 65–69, 76–79, 81, 82, 86, 125, and 127 by designating several rejections from the FINAL DECISION ON APPEAL UNDER 37 C.F.R. § 41.77(f) mailed January 2, 2018 (“2018 Decision”) as new grounds. Rehearing Decision 15. Pursuant to 37 C.F.R. § 41.77(f), this decision is deemed to incorporate the earlier decision, except as indicated. In response to the Rehearing Decision, Patent Owner Honeywell International Inc. (“Patent Owner”) requested reopening of prosecution under 37 C.F.R. § 41.77(b)(1) in its RESPONSE UNDER 37 C.F.R. § 41.77(b)(1) REQUESTING REOPENING OF PROSECUTION filed May 21, 2019 (hereinafter “Request to Reopen” or “Req. to Reopen”). The Request to Reopen proposed amendments to claims 1, 4, 31, and 35, and proposed to cancel claims 3 and 18, and also presented a Declaration of Dr. Darryl DesMarteau with exhibits dated May 17, 2019 (hereinafter “DesMarteau Declaration”) and a Declaration of Dr. Thomas J. Leck with exhibits dated May 20, 2019 (hereinafter “Leck Declaration”) as evidence in response to the new grounds of rejection. (Req. to Reopen i–iv, 1–39.) Third Party Requester Mexichem Amanco Holding S.A. de C.V. (“Mexichem”) filed RESPONSE TO REQUEST TO REOPEN on June 21, 2019 (hereinafter “Requester’s Comments” or “Req. Comm.”) in response to the Patent Owner’s Request to Reopen (see generally Req. Comm.) under 37 C.F.R. § 41.77(c). Appeal 2020-001222 Reexamination Control 95/002,030 Patent US 8,065,882 B2 3 In an Order remanding the case to the Examiner, Patent Owner’s Request to Reopen including the amendments to the claims, evidence, and exhibits thereto were entered for consideration by the Examiner. (ORDER REMANDING INTER PARTES REEXAMINATION UNDER 37 C.F.R. § 41.77(d) TO THE EXAMINER mailed July 19, 2019.) In addition, Requester’s comments and accompanying exhibits were also entered for consideration by the Examiner. An Examiner’s Determination under 37 C.F.R. § 41.77(d) was issued on September 16, 2019 (hereinafter, “Ex. Det.”) in which the Examiner determined that Patent Owner’s Response was insufficient to overcome the new rejections set forth in the Decision. Ex. Det. 6. Patent Owner filed a response to the Examiner’s Determination. (RESPONSE TO THE EXAMINER’S DETERMINATION UNDER 37 C.F.R. § 41.77(e) filed October 16, 2019, hereinafter, “PO 41.77(e) Resp.”) Requester Mexichem filed a reply to Patent Owner’s 37 C.F.R. § 41.77(e) response. (THIRD PARTY REQUESTER’S COMMENTS ON PATENT OWNER’S RESPONSE TO EXAMINER’S DETERMINATION UNDER 37 C.F.R. § 41.77(e) filed November 18, 2019, hereinafter “Req. 41.77(e) Rep.”). For the reasons that follow, we REVERSE the rejections of the claims. Appeal 2020-001222 Reexamination Control 95/002,030 Patent US 8,065,882 B2 4 DISCUSSION Claim Amendments Patent Owner explains that by virtue of the amendment to claim 1, all pending claims require a refrigerant that is an unsaturated, three-carbon compound having a –CF3 terminal group. Req. to Reopen 6. Patent Owner explains further that claims 31 and 35 have been amended “to focus on the stability achieved by the present invention when the condenser is operated over a temperature range that includes 150°F (see claim 31), especially when the lubricant is a polyalkylene glycol lubricant used in combination with a refrigerant consisting of 1234yf (see claim 35).” Id. Reasonable Expectation of Success In its Request to Reopen prosecution, Patent Owner contends the Board’s analysis of a reasonable expectation of success in combining an unsaturated refrigerant compound (a hydrofluoroolefin (HFO)) with a lubricant in a method of cooling air in an automobile is flawed. Req. to Reopen 7–8. In particular, Patent Owner argues all pending claims are limited to methods of cooling or conditioning air in an automobile, which involve extreme conditions, and that automobile air conditioners (AAC) involve specialized equipment. Id. at 8–9. Patent Owner contends that because of extreme conditions and distinct differences in design and in the materials used in AAC systems, it is even more difficult to achieve acceptable levels of stability for AAC than in other heat transfer applications, which makes the need to avoid reactive refrigerants and reactive lubricants uniquely important. Id. at 9–10. Appeal 2020-001222 Reexamination Control 95/002,030 Patent US 8,065,882 B2 5 Patent Owner relies on the DesMarteau Declaration in order to expand upon the explanation provided by Dr. Chambers2 regarding how HFOs and PAGs would have been expected to react and to contend that Inagaki’s disclosure does not suggest HFO-1234yf is stable enough for air conditioning applications, or AAC specifically. Id. at 10–11, 13–21 (citing DesMarteau Dec. ¶¶ 13–17, 31–47, 49–51, 60, 79). Patent Owner argues that the Leck Declaration provides evidence that the Board improperly relied on proposed teachings of stabilizers in the prior art as a teaching of a reasonable expectation of success in applying the claimed combination of refrigerant and lubricant in an method for cooling air in an automobile. Id. at 12–13, (citing Leck Decl. ¶¶ 13–24, 27, 33). Patent Owner contends that the Board misinterpreted the claims as not requiring any degree of stability or reactivity in the recited methods for cooling air in an automobile. Id. at 13–14. Further, Patent Owner argues Omure does not provide a reasonable expectation of success in combining HFO-1234yf and PAG in AAC applications. Id. at 22–25 (citing DesMarteau Decl. ¶¶ 59, 62, 63, 66, 67, 73–79, 88; Leck Decl. ¶ 33). Opinion We have reconsidered the evidence of record, as well as Patent Owner’s new evidence and arguments, and find them persuasive that one of ordinary skill in the art would not have had a reasonable expectation of 2 Declaration of Richard D. Chambers executed March 27, 2013 and attached exhibits (see Exhibit I to Patent Owner’s Appeal Brief filed March 30, 2015). Appeal 2020-001222 Reexamination Control 95/002,030 Patent US 8,065,882 B2 6 success in combining HFO-1234yf with PAG lubricants disclosed in the prior art in a method of providing the cooling of air in an automobile. In particular, we credit the new evidence submitted by Patent Owner, as well as evidence already of record in this reexamination proceeding, which establishes that the application of refrigerants in automobile air conditioning requires special consideration of the confined and moving space environment of an automobile. Such considerations include the amount of vibration an automobile air conditioning system must endure; the use of flexible rubber/elastomeric hoses and seals common in automobile air conditioning systems, but uncommon in other types of air conditioning; and the high rate of leakage in automobile air conditioning systems relative to residential air conditioning systems.3 Leck Decl. ¶ 24; First Bivens Decl. ¶ 17; Second Bivens Decl. ¶¶ 5, 9; see Req. to Reopen 9–10, 17, 32 (citing First Bivens Decl. ¶ 9; Fourth Bivens Decl. ¶¶ 3, 6; Winick Decl. ¶ 4). Our reasoning is not inconsistent with the Board’s determination in the Rehearing Decision (pages 8–9; see also 2018 Decision 15) that with respect to condenser operation temperature ranges recited in some of the claims on appeal, the use of stabilizers was a known method of stabilizing refrigerant compositions. Upon reconsideration of the evidence of record submitted by Patent Owner, we are of the view that all extreme aspects of 3 Our determination in this regard is consistent with the Board’s determination in a related AIA proceeding that AAC is a distinct field from the general field of heating and cooling applications and that as of April 29, 2004, was an unpredictable art. Arkema Inc. v. Honeywell International Inc., PGR2016-00011, PGR2016-00012, Paper No. 54 at 20, 33 (PTAB August 31, 2017) (Final Written Decision). Appeal 2020-001222 Reexamination Control 95/002,030 Patent US 8,065,882 B2 7 the AAC environment, and not temperature alone, reflect on whether one of ordinary skill in the art would not have had a reasonable expectation of success that such a combination would be suitable in the AAC environment. See Leck Declaration ¶¶ 24, 34, 36. That is, even though HFO-1234yf possesses a high critical temperature as disclosed in Podchernjaev4 (Req. Comm. 4, Req. 41.77(e) Rep. 12–13 citing Podchernjaev, Table 1), which is desirable for AAC systems, we are of the view that high critical temperature alone, while indicating a desirable characteristic for AAC systems and providing a reason to use HFO-1234yf, is insufficient to provide a reasonable expectation of success that HFO-1234yf combined with a lubricant would have been suitable for the AAC environment. Requester pointed out that there is evidence that AAC systems function much the same way as in other types of air conditioning systems (RESPONSE TO REQUEST FOR REHEARING filed February 28, 2018, citing Langley, Heating, Ventilating, Air Conditioning and Refrigeration, Prentice Hall (1993) (“Langley”), p. 660; see 2018 Decision 10–11, 14). That same evidence, however, indicates that there are “major differences” between AAC systems and residential and commercial air conditioning systems, including: “(1) the manner used to combine the different components, (2) the manner used to drive the compressor, (3) the fast temperature change inside the automobile, and (4) the complex system of air control dampers used on an automobile.” Langley, p. 660. Therefore, although the Board cited Magid as evidence that AAC systems operate at 4 RU 2073508, published February 10, 1997, and English Translation, submitted with Requester’s 41.77(c) Resp. as an exhibit. Appeal 2020-001222 Reexamination Control 95/002,030 Patent US 8,065,882 B2 8 condenser temperatures of 122 °C to 158 °C (2016 Dec. 25–26; 2018 Decision 9–14), upon reconsideration, we are of the view that a refrigerant’s high critical temperature does not provide a reasonable expectation of success for a combination of refrigerant and lubricant in a method of cooling in AAC systems when weighed in light of the general teaching of the unique environment of AAC systems. Upon reconsideration, we are also not persuaded by Requester’s arguments regarding the known use of PAG in AAC systems and known mitigation of PAG stability concerns in such systems. Req. Resp. 5–6, Corr 2019 Decl. ¶¶28–35, Sandford Decl. ¶¶ 22, 26–28. In particular, Requester relies on the Corr 2019 Declaration and Sandford Declaration as evidence that PAG lubricant properties, such as hygroscopic and oxidation properties, can be adjusted by controlling the nature of polyalkylene backbone, capping the hydroxyl end groups, and adding antioxidants, a type of stabilizer. Corr 2019 Declaration, ¶ 29, Ex. C, p. 238–239; Req. Comm. 1, 3, 5, 14; Corr Decl. ¶ 26, 28-32; Sandford Decl. ¶ 25. Such techniques only address the lubricant element of the claim and not Patent Owner’s evidence directed to the skilled artisan’s expectations of using a combination of HFO-1234yf and PAG in the unique environment of AAC systems. Requester argues that the Board found previously Inagaki discloses HFO-1234yf as a refrigerant that is compatible with lubricants and the ’882 Patent does not assign any unexpected compatibility of HFO-1234yf with PAG lubricant in AAC environments. Rehearing Decision 4–5, 7; 2018 Decision 16, 21–22, citing Inagaki 2, col. 2, 3, col. 2; Omure ¶¶ 12, 14; ’882 Patent, col. 6, ll. 54–60, col. 14, l. 40 – col. 15, l. 6; THIRD PARTY Appeal 2020-001222 Reexamination Control 95/002,030 Patent US 8,065,882 B2 9 RESPONDENT’S BRIEF TO PATENT OWNER/APPELLANT’S BRIEF, filed April 30, 2015, “Resp’t Br.” 3–5; Req. Comm. 16–17. Upon reconsideration, we are of the view that such evidence does not address what one of ordinary skill in the art would have expected in providing such a combination in the field of automobile air conditioning. In this regard, we first note that a lack of a reasonable expectation of success need not be expressly disclosed in the ’882 Patent, but rather may be established through other evidence. Further, Inagaki discloses HFO-1234yf and HFO-1234ze as substitutes for refrigerants such as R-12 in air cooling systems generally, but does not specifically disclose or suggest use in AAC systems specifically. While Palinchak’s disclosure of using R-12 in AAC systems with PAG may provide a reason for one of ordinary skill in the art to explore the combination of HFO-1234yf and HFO-1234ze of Inagaki with PAG lubricants in AAC systems, as argued by Requester (see e.g. Requester’s Respondent Brief 5, filed April 30, 2015), we are of the view that given the special considerations enumerated above with respect to AAC systems, one of ordinary skill in the art would not have had a reasonable expectation of success in such combinations in such systems. Thus, while Inagaki demonstrates a reasonable expectation would have existed in combining HFO-1234yf or HFO-1234ze with PAG lubricants for other air cooling applications generally, i.e., those without the additional requirement of the AAC systems, there is a lack of reasonable expectation of success in AAC systems. Requester’s mere citation that AAC systems may contain heating pumps is insufficient to address the particular issues raised with respect to AAC systems discussed above as opposed to other air cooling Appeal 2020-001222 Reexamination Control 95/002,030 Patent US 8,065,882 B2 10 systems in general. Resp’t Br. 6, citing Burk et al. (US 6,843,312 B2, issued January 18, 2005). Moreover, we are not persuaded by Requester’s arguments that Tsuchiya discloses that with respect to stability of HFOs in being exposed to oxygen, in mobile air conditioners “there is little possibility of an air (oxygen) entrapment problem.” Req. Comm. 11–12, citing Tsuchiya et al. “Tsuchiya” US2011/0312101 A1, published December 22, 2011), ¶ 8, see also Tsuchiya, ¶ 7. Initially, Tsuchiya published after the filing date of the invention and thus is not probative of the skilled artisan’s understanding at the time of the invention. Moreover, Requester does not address the other concerns associated with AAC systems noted above, i.e., the use of flexible rubber/elastomeric hoses and seals common in automobile air conditioning systems but uncommon in other types of air conditioning; and the high rate of leakage in automobile air conditioning systems relative to residential air conditioning systems. Although Requester references other proceedings involving combinations of HFOs and lubricants where claims have been cancelled, Requester does not adequately explain why such cases are relevant to the claims in this case, which recite a method of cooling in AAC systems, and, as discussed above, present specific problems that are different than general uses of such a refrigerant combinations. See, e.g., Req. 41.77(e) Rep. 3 (FN1), 16–18. Therefore, after reconsidering the evidence as a whole, we are persuaded that one of ordinary skill in the art would not have had a reasonable expectation of success in employing a combination of Appeal 2020-001222 Reexamination Control 95/002,030 Patent US 8,065,882 B2 11 fluoroalkenes and lubricant as recited in the claims in a method of cooling air in an automobile. Thus, we have reconsidered Patent Owner’s arguments previously acknowledged, but found to be unpersuasive (DECISION ON APPEAL mailed March 30, 2016, “2016 Decision” 10–16). Accordingly, we reverse the rejections of claims 1–12, 14–17, 21–25, 28, 30–59, 61–63, 65–69, 76–79, 81, 82, 86, 125, and 127 as obvious over the prior art as summarized below. Requester’s Proposed 112 Rejection Requester proposed a rejection for amended claims 1, 4, 31, and 35, which were amended to be directed to a method of using HFO-1234yf in automobile air conditioning system (AAC) with a lubricant. Req. Comm. 18–20. Requester contends the ’882 Patent lacks written description support for the claims as amended because the ’882 Patent does not disclose HFO- 1234yf in conjunction with any lubricant, is not tested for stability with metals, and is mentioned in the ’882 Patent as having worse energy efficiency than all other compounds disclosed. Id. at 20. Requester argues that because of Patent Owner’s repeated arguments that it is impossible to know whether or not a refrigerant will work with a particular lubricant without testing it, the claims as amended lack written description support for a system that consists of HFO-1234yf with PAG. Id. The Examiner did not adopt Requester’s proposed rejection because the Examiner found the ’882 Patent describes compositions including at least one fluoroalkene and a lubricant that can be used in connection with automotive air conditioning systems and devices, and lists HFO-1234yf as a Appeal 2020-001222 Reexamination Control 95/002,030 Patent US 8,065,882 B2 12 fluoroalkene and PAG as a commonly used refrigeration lubricant. Ex. Det. 38, citing ’882 Patent col. 4, ll. 1–18; col. 6, ll. 41–45 and 54–60, col. 7, ll. 29–34; and col. 16, ll. 60–65. We agree with the Examiner that the proposed rejection by Requester is not appropriate in this proceeding. First, in inter partes reexamination, the original claim language is subject only to rejections based on patents and printed publications. 35 U.S.C. §§ 301, 311 (pre-AIA). See In re NTP, Inc., 654 F.3d 1268, 1275–76 (Fed. Cir. 2011) (“[O]ther challenges to the patentability of original claims—such as qualification as patentable subject matter under § 101 or satisfaction of the written description and enablement requirements of § 112—may not be raised in reexamination proceedings.). With respect to new language added to a claim by amendment in reexamination, it is appropriate for the Examiner to consider whether such new language has written description support in the claims under 35 U.S.C. § 112, first paragraph. Id. at 1276, n.6; see 37 C.F.R. § 1.552(a) (indicating that only “subject matter added or deleted in the reexamination proceeding” will be examined under 35 U.S.C. § 112). Nonetheless, Requester’s arguments regarding written descriptive support do not address added claim language and are directed to language that was present in the originally patented claims instead. Indeed, the original claims recited the use of HFO- 1234yf and PAG in an automobile air cooling system (see e.g. claim 34 of the ’882 Patent). Thus, we agree with the Examiner that the proposed rejection by the Requester is not warranted. See MPEP § 2658(II); MPEP § 2258(II). Appeal 2020-001222 Reexamination Control 95/002,030 Patent US 8,065,882 B2 13 CONCLUSION In view of the discussion above, we reverse the grounds of rejection of: Claims 1–9, 11, 12, 14–17, 21–25, 28, 30–46, 50, 53–59, 61–63, 65– 69, 76–79, 81, 82, 125, and 127 under 35 U.S.C. § 103(a) as unpatentable over Inagaki,5 or Inagaki in view of Palinchak,6 in view of Omure either alone or further in view of the additional prior art cited by the Examiner (see First Decision 47); Claims 10, 47, 48, and 86 under 35 U.S.C. § 103(a) as unpatentable over Inagaki, or Inagaki in view of Palinchak, in view of Omure, and further in view of Magid7 (see First Decision 47; 41.77(f) Decision 8); and Claims 49, 51, and 52 under 35 U.S.C. § 103(a) as being unpatentable over Inagaki, or Inagaki and Palinchak, in view of Omure, further in combination with Bivens8 and Magid (see First Decision 47; 41.77(f) Decision 8). 5 JP H04-110388, published April 10, 1992, and naming Sadayasu Inagaki et al. as inventors. All references to “Inagaki” are to the translation (certified September 8, 2010) that was filed on November 8, 2011 with Requester’s original Request for Inter Partes Reexamination. 6 US Patent 4,842,024, issued June 27, 1989 to Stephen Palinchak. 7 US Patent 4,755,316, issued July 5, 1988 to Hillel Magid et al. The teachings of Magid were applied in the related reexamination cited at 2, supra, on appeal (Appeal 2015-006430), and Magid is of record in the present reexamination. 8 US Patent 6,783,691 B1, issued August 31, 2004 to Donald Bernard Bivens et al. Appeal 2020-001222 Reexamination Control 95/002,030 Patent US 8,065,882 B2 14 Outcome of Decision: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–9, 11, 12, 14–17, 21–25, 28, 30–46, 50, 53–59, 61– 63, 65–69, 76–79, 81, 82, 125, 127 103(a) Inagaki or Inagaki, Palinchak in view of Omure either alone or further in view of the additional prior art 1–9, 11, 12, 14–17, 21– 25, 28, 30– 46, 50, 53– 59, 61–63, 65–69, 76– 79, 81, 82, 125, 127 10, 47, 48, 86 103(a) Inagaki or Inagaki Palinchak, in view of Omure, Magid 10, 47, 48, 86 49, 51, 52 103(a) Inagaki or Inagaki Palinchak, in view of Omure, Bivens, Magid 49, 51, 52 Overall Outcome 1–12, 14– 17, 21–25, 28, 30–59, 61–63, 65– 69, 76–79, 81, 82, 86, 125, 127 In accordance with 37 C.F.R. § 41.79(a)(4), the “[p]arties to the appeal may file a request for rehearing of the decision within one month of the date of: . . . [t]he new decision of the Board under § 41.77(f).” A request for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the request and additional requests for rehearing must be in accordance with 37 C.F.R. § 41.79(c)–(d), respectively. Under 37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a) of this Appeal 2020-001222 Reexamination Control 95/002,030 Patent US 8,065,882 B2 15 section, for requesting further rehearing under paragraph (c) of this section, and for submitting comments under paragraph (b) of this section may not be extended. An appeal to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an inter partes reexamination proceeding “commenced” on or after November 2, 2002 may not be taken “until all parties’ rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See also MPEP § 2682 (8th ed., Rev. 8, July 2010). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. REVERSED; 37 C.F.R. § 41.77(f) Appeal 2020-001222 Reexamination Control 95/002,030 Patent US 8,065,882 B2 16 PATENT OWNER: HONEYWELL/FOX/BANNER Patent Services 115 Tabor Road - PO Box 377 MORRIS PLAINS, NJ 07950 THIRD-PARTY REQUESTER: RYAN KROMHOLZ & MANION, S.C. Post Office Box 26618 Milwaukee, WI 53226 Copy with citationCopy as parenthetical citation