Docket No. 2016-2084, -2085, 2017-1050
PROST, DYK, CHEN
November 17, 2017
Brief summary: PTAB decisions reversing Examiner’s definition of “azeotrope-like” affirmed as the term is explicitly defined by the specifications and the Examiner’s definition would have read the term out of the claim.
Summary: Mexichem appealed three PTAB final inter partes reexamination decisions regarding Honeywell’s US 7,524,805; 7,825,081; and 8,148,317. “The sole question” considered here is “the Board’s construction of the term ‘azeotrope-like’”. “According to the patents, combining ‘effective amounts’” of Honeywell’s heat transfer equipment (e.g., air conditioner) fluid HFO-1234 “with a component selected from the group consisting of HFC-152a, HFC-227ea, HFC-134a, and HFC-125” “results in the formation of an azeotrope-like composition.” “After granting Mexichem’s Requests for Reexamination, the Examiner construed the term ‘azeotrope-like’ to mean ‘a composition containing a mixture of trans-HFO-1234ez and one or more of HFC-152a, HFC-227ea, HFC-134a or HFC-125” and rejected the claims as anticipated or obvious. The PTAB disagreed and construed “azeotrope-like” as “constant boiling or essentially constant boiling”, and reversed the Examiner’s rejections. The FC panel agreed with the PTAB, finding its “construction [to be] consistent with the definition provided by the patentee in the patents’ specification” (Martek Biosciences, FC 2009 (“When a patentee explicitly defines a claim term in the patent specification, the patentee’s definition controls.”)) The FC panel also explained that the Examiner’s construction “would read the term ‘azeotrope-like’ out of the claims entirely, rendering the term meaningless” (Dell, FC 2016). Thus, the PTAB decisions were affirmed.