Docket No. 2016-1996
LOURIE, REYNA, WALLACH
August 1, 2017
Brief summary: Board affirmance of obviousness rejections vacated and remanded because, e.g., it erred “in dismissing properties of the claimed invention as merely inherent, without further consideration as to unpredictability and unexpectedness.”
Summary: Honeywell appealed PTAB in a merged inter partes reexamination of Honeywell’s US 7,534,366 relating to a heat transfer equipment (e.g., air conditioner) fluid (“at least about 50% by weight of 1,1,1,2-tetrafluoropropene (HFO-1234yf) [an unsaturated hydrofluorocarbon (“HFC”) compound] having no substantial acute toxicity” and “at least one polyalkylene glycol lubricant” (“PAF”)). Durign the reexamination, the Examiner rejected the claims as obvious under § 103 in view of three references (“Inagaki” (for expressly disclosing HFO-1234yf), and “Magid” and “Acura” (for teaching the use of PAG lubricants with HFC refrigerants). In its appeal to the Board, Honeywell argued Inagaki does not teach HFO-1234yf and a PAG lubricant (only “disfavored” immiscible lubricants), and that the secondary references only refer to “saturated HFC refrigerants, not unsaturated (i.e., HFO) refrigerants” and that the “stability of HFO-1234yf in combination with PAG over other similar refrigerants with PAGs” was unexpected, there was a long-felt need for the claimed combination, and “skepticism that such an environmentally-friendly composition existed”. The Board, however, affirmed the Examiner’s rejection because, e.g., “the stability and miscibility of HFO-1234yf with a PAG lubricant are ‘inherent properties of an otherwise known refrigerant’ that could not confer patentable weight to the claimed mixture” and Honeywell did not show a nexus between the secondary considerations evidence and the claimed composition. “The Board acknowledged that ‘[e]ven inherent properties, to the extent that they demonstrate results beyond what would have been expected…particularly superior results that demonstrate more than a mere improvement in a property, are evidence that the invention is non-obvious and must be considered accordingly” (In re Geisler, FC 1997) but “found Honeywell’s evidence to be unpersuasive because Omure” (a reference presented by Mexichem but not addressed by the Examiner) shows the skilled artisan “would no more have expected failure…than would have expected success.” The Board also “found that, due to the ‘overall unpredictability as to stability in the art,’ one of ordinary skill would have arrived at the claimed combination by mere routine testing.” Thus, the Board affirmed the Examiner’s finding of obviousness.
The FC panel reviewed the Board’s legal determinations de novo (In re Elsner, FC 2004) and its factual findings underlying those conclusions for substantial evidence (In re Gartside, FC 2000; Consol. Edison (“substantial evidence if a reasonable mind might accept” it)). And obviousness, it explained, “is a question of law, based on underlying factual findings, including what a reference teaches, whether a person of ordinary skill in the art would have been motivated to combine references, and any relevant objective indicia of nonobviousness” (Apple, FC 2016, en banc). The FC panel found “[t]he Board committed legal error by improperly relying on inherency to find obviousness” (an “internally inconsistent analysis”) and erred “in its analysis of the motivation to combine references.” Regarding inherency, the FC panel explained “that the use of inherency in the context of obviousness must be carefully circumscribed because ‘[t]hat which may be inherent is not necessarily known’ and that which is unknown cannot be obvious” (In re Rijckaert, FC 1993; PAR Pharm., FC 2014 (distinguishing a prior case finding obviousness based on inherency because, in that case, ‘neither party disputed that the [claimed features] were expected in light of the dosages disclosed in the prior art’”)). Further, “[w]hat is important regarding properties that may be inherent, but unknown, is whether they are unexpected”; “unexpected properties may cause what may appear to be an obvious composition to be nonobvious” (In re Papesch, CCPA 1963). It found that “the Board here, in dismissing properties of the claimed invention as merely inherent, without further consideration as to unpredictability and unexpectedness, erred as a matter of law.” It also found error with the Board’s “burden-shifting argument that Honeywell did not persuasively establish that one of ordinary skill in the art would have expected failure” since in an inter partes reexamination “the burden is on the Examiner to show…a motivation to combine the references with a reasonable expectation of success” (Redline Detection, FC 2015; Rambus, FC 2013; Leo Pharm., FC 2013). The FC panel also disagreed with the Board’s position on “routine testing” since, e.g., “patentability shall not be negatived by the manner in which the invention was made” (In re Fay, CCPA 1965). Thus, the motivation question was remanded to the Board. The FC panel also found the Board improperly raised a new ground of rejection with its reliance on the Omure reference (Judge Wallach’s dissent disagreed with this point). The Board decision was therefore vacated and remanded.