3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals BoardAug 30, 2021

2020005683 (P.T.A.B. Aug. 30, 2021)

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. 14/388,301 09/26/2014 Michael G. Costello 69758US005 5190 32692 7590 08/30/2021 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER ASDJODI, MOHAMMADREZA ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 08/30/2021 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MICHAEL G. COSTELLO, RICHARD M. FLYNN, and MICHAEL J. BULINSKI __________________ Appeal 2020-005683 Application 14/388,301 Technology Center 1700 ____________________ Before KAREN M. HASTINGS, JAMES C. HOUSEL, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 filed an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 2, 4–8, 12, 14, 18, and 20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies 3M Company and 3M Innovative Properties Company as the real parties in interest. Appeal Br. 2. Appeal 2020-005683 Application 14/388,301 2 The subject matter on appeal relates to use of perfluorinated nitrile dielectric fluids in electrical devices. Spec. 1; Claims 1, 6. Claim 1 reads as follows: 1. A device comprising a dielectric fluid according to the formula: (i) (CF3)2CFCN (heptafluoroisobutyronitrile); or (ii) CF3CF(OCF3)CN, wherein the device comprises an electrical device, wherein the electrical device is selected from the group consisting of: gas-insulated circuit breakers, current- interruption equipment, gas-insulated transmission lines, gas- insulated transformers, and gas-insulated substations. Claim 6 similarly recites a device comprising a dielectric fluid according to formula (i) or formula (ii). Each remaining claim on appeal depends from claim 1 or 6. REJECTIONS ON APPEAL2 I. Claims 1, 4–6, 8, 12, 14, 18, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Thomson3 and Oxenrider.4 II. Claims 2 and 7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Thomson, Oxenrider, and Tuma.5 DISCUSSION Appellant solely argues against Rejection I as applied to claim 1, and contends the remaining claims are patentable for the reasons presented in connection with claim 1. See Appeal Br. 3–11. We address Appellant’s 2 The Examiner states claims 13, 15, and 19 include allowable subject matter. Final Act. 6. 3 FR 1.265.731, issued May 23, 1961 (“Thomson”), as translated. 4 US 3,752,840, issued August 14, 1973 (“Oxenrider”). 5 US 2013/0292614 A1, published November 7, 2013 (“Tuma”). Appeal 2020-005683 Application 14/388,301 3 arguments regarding claim 1 below. Claims 2, 4–8, 12, 14, 18, and 20 stand or fall with claim 1. In support of the Examiner’s rejection of claim 1, the Examiner finds Thomson discloses use of perfluorobutyronitrile (C3F7CN) as dielectric fluid in electrical equipment. Final Act. 3. According to the Examiner, perfluorobutyronitrile exists in either of only two isomeric forms—a linear n- form and a branched iso- form, the latter corresponding to Appellant’s formula (i) in claim 1. Id. (“[T]he general formula C3F7CN has only two possible isomers, that of perfluoroalkylbutyronitrile and perfluoroisobutyro- nitrile (i.e. heptafluoroisobutyronitrile).).” Thomson identifies the linear n- form (Thomson at 1 (characterizing the disclosed perfluorobutyronitrile as an example of a “perfluoro-n-alkynitrile”)),6 but does not expressly teach use of the iso- form. The Examiner finds one of ordinary skill in the art would have had a reason to select the iso-form, perfluoroisobutyronitrile, such as that taught by Oxenrider, for use as Thomson’s dielectric fluid because either isomer would have been expected to exhibit similar dielectric properties. Final Act. 3. Appellant argues submitted evidence demonstrates unexpected results sufficient to overcome the Examiner’s obviousness determination. Appeal Br. 3–4; Reply Br. 4–6. Particularly, according to Appellant, “the branched isomer . . . exhibits surprisingly lower toxicity than its linear isomer counterpart.” Id. at 4. Whether an invention has produced unexpected results is a question of fact. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). “[T]here is no 6 We addressed Thomson’s teaching of the linear n- isomer in our December 4, 2018 Decision in this application. Appeal 2020-005683 Application 14/388,301 4 hard-and-fast rule for determining whether evidence of unexpected results is sufficient to rebut a prima facie case of obviousness.” Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also In re Dillon, 919 F.2d 688, 692–93 (Fed. Cir. 1990) (“Each situation must be considered on its own facts.”). However, a party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected. In re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997). Such burden requires Appellant to proffer factual evidence that actually shows unexpected results relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). “[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appellant presents toxicity values for four fluorinated nitrile compounds and their corresponding non-fluorinated analogs. Appeal Br. 6, Table 1. According to Appellant, the values in Table 1 show decreasing toxicity with increasing carbon number for the fluorinated compounds, whereas “the hydrocarbon nitrile analogs have as least toxic the lowest carbon number nitrile.” Id. at 5. Appellant also contends the values in Table 1 demonstrate that the branched fluorinated compound of formula (i) in claim 1 exhibits a lower toxicity than that of its linear isomer. Id. Appellant further presents toxicity values for certain alcohols and olefins. Id. at 6–7. Viewing the evidence presented, including Appellant’s reported toxicity information, we are not persuaded of reversible error in the Examiner’s rejection. Appeal 2020-005683 Application 14/388,301 5 We note, initially, Appellant does not identify a source for the presented toxicity values. Thus, Appellant’s evidence does not reveal whether the relative toxicity values associated with the branched and linear isomers at issue in this case were previously known to others and, therefore, not unexpected to one of ordinary skill in the art. Appellant also does not present persuasive explanation why toxicity values for different materials, such as the reported alcohols and olefins, are probative as to unexpectedness of the toxicity associated with the claimed compound. Regardless, the evidence in support of the Examiner’s obviousness determination is particularly strong. There is no dispute that Thomson discloses use of the n- form isomer of the compound recited as formula (i) in claim 1. Thomson emphasizes a number of advantages associated with the disclosed compound relative to a conventionally used SF6 dielectric gas. E.g., Thomson 2 (“It can be seen that the perfluoroalkylnitriles are superior to SF6.”); id. (“[T]he perfluoro-alkylnitriles are far more resistant than SF6 used so frequently until now.”); id., right column (characterizing the disclosed perfluoroalkylnitriles as exhibiting “clear superiority . . . compared to SF6”); id. at 3 (“[N]o corrosion effect is observed after more than five months, which constitutes a marked improvement compared to other dielectrics such as SF6.”). The foregoing teachings in Thomson would have provided strong motivation to use the disclosed perfluorobutyronitrile as dielectric fluid in electrical equipment. As Appellant acknowledges, “it is generally expected in the chemical arts that isomers will have the same/similar properties.” Appeal Br. 7. Thus, one of ordinary skill reasonably would have attributed the foregoing advantages specified in Thomson to either perfluorobutyronitrile isomer. Appeal 2020-005683 Application 14/388,301 6 Where the evidence of prima facie obviousness is particularly strong, evidence regarding unexpected results may be insufficient to overcome the evidence of prima facie obviousness. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007). For the foregoing reasons, Appellant’s arguments are not persuasive of reversible error. The Examiner’s rejections are sustained. CONCLUSION The Examiner’s decision rejecting claims 1, 2, 4–8, 12, 14, 18, and 20 is affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4–6, 8, 12, 14, 18, 20 103(a) Thomson, Oxenrider 1, 4–6, 8, 12, 14, 18, 20 2, 7 103(a) Thomson, Oxenrider, Tuma 2, 7 Overall Outcome 1, 2, 4–8, 12, 14, 18, 20 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED