Ex Parte 7,534,366 B2 et al

Patent Trial and Appeal BoardMar 29, 2016

95002204 (P.T.A.B. Mar. 29, 2016)

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. 95/002,189 09/12/2012 7534366 9404.21831-REX 1271 116637 7590 03/30/2016 HONEYWELL/FOX/BANNER Patent Services 115 Tabor Road - PO Box 377 MORRIS PLAINS, NJ 07950 EXAMINER XU, LING X ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 03/30/2016 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. and DAIKIN INDUSTRIES, LTD. Requesters and Respondents v. HONEYWELL INTERNATIONAL INC. Patent Owner and Appellant ____________ Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B21 Technology Center 3900 ____________ Before MARK NAGUMO, JEFFREY B. ROBERTSON, and RAE LYNN P. GUEST, Administrative Patent Judges. GUEST, Administrative Patent Judge. DECISION ON APPEAL 1 US Patent 7,534,366 B2 issued on October 9, 2007 to Rajiv R. Singh, et al. (hereinafter “the ’366 patent”). Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 2 Patent Owner Honeywell International Inc. (“Patent Owner”) appeals under 35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to reject claims 1-26, 31-37, 46-49, 58, 59, 61-68, 70-75, 80 and 81. Patent Owner Appeal Brief 2, filed December 22, 2014 (hereinafter “PO App. Br.”). We have jurisdiction under 35 U.S.C. §§ 134(b) and 315(a). This proceeding is the merged reexamination of Reexamination Control 95/002,189, filed September 12, 2012 by Third Party Requester Mexichem Amanco Holdings S.A. de C.V. (hereinafter “Requester Mexichem”) and Reexamination Control 95/002,204, also filed September 12, 2012 by Third Party Requester Daikin Industries, Ltd. (hereinafter “Requester Daikin”). Requester Mexichem and Requester Daikin are herein collectively referred to as “Requesters.” We heard oral arguments in this case on November 23, 2015, a written transcript of which was entered into the record on January 12, 2016. Related U.S. Patent 8,033,120 (hereinafter “the ’120 patent”) is the subject of reexamination control 95/001,783 and related U.S. Patent 7,279,451 (hereinafter “the ’451 patent) is the subject of reexamination control 95/000,576, which are also currently on appeal (Appeal 2015- 000616 and Appeal 2015-000615, respectively). Requester Mexichem’s Respondent Brief 1, filed January 22, 2015 (hereinafter “Req. Mex. Br.”); Requester Daiken’s Respondent Brief 1, filed February 23, 2015 (hereinafter Req. Dia. Br.”). Decisions on appeal for both cases are being issued concurrently herewith. Requesters further identify related U.S. Patent 8,065,882 (hereinafter “the ’882 patent”) as the subject of reexamination control 95/002,030 and Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 3 related U.S. Patent 8,053,404 (hereinafter “the ’404 patent) as the subject of reexamination control 95/001,920, which are also currently on appeal.2 Related U.S. Patent 8,444,874 (hereinafter “the ’874 patent”) was subject to Inter Partes Review IPR2013-00576, in which a final decision was entered on February 26, 2015. The decision in IPR2013-00576 cancelled all of the claims of the ’874 patent except for claim 2, which recited a heat transfer composition comprising “at least about 90% by weight” of the trans-isomer of 1,3,3,3-tetrafluoropropene. The ’451, ’366, ’120, and ’882 patents are also the subject of a litigation in the United States District Court for the Eastern District of Pennsylvania styled Arkema, Inc. and Arkema France v. Honeywell International Inc., Civil Action No. 10-2886 (E.D. Pa.), which has been stayed pending the outcome of reexaminations of each of the involved patents. We AFFIRM. STATEMENT OF THE CASE The ’366 patent relates to the use of heat transfer compositions comprising tetrafluoropropene (e.g., HFO-1234) in a variety of applications, including: vapor compression heating and cooling systems; blowing agents; aerosol propellants; solvent compositions; and fire suppressing agents. ’366 2 Reexamination of the ’882 patent has been assigned Appeal 2015-007833, and oral hearing regarding this reexamination was heard on January 20, 2016. A decision on appeal for this case is being issued concurrently. No appeal number has yet been assigned to the appeal of the reexamination of the ’404 patent, which is still in the briefing stage. Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 4 patent, col. 3, l. 26 to col. 4, l. 42. The claimed compositions are said to have low ozone depletion potential (“ODP”) and to have other advantages such as lower global warming potential (“GWP”). ’366 patent, col. 5, ll. 18- 46. Claim 1, which is illustrative of the appealed subject matter, has not been amended during reexamination and reads as follows: 1. A heat transfer composition for use in an air conditioning system comprising: (a) at least about 50% by weight of 1,1,1,2- tetrafluoropropene (HFO-1234yf)[3] having no substantial acute toxicity; and (b) at least one poly alkylene glycol [PAG] lubricant in the form of a homopolymer or copolymer consisting of 2 or more oxypropylene groups and having a viscosity of from about 10 to about 200 centistokes at about 37°C. PO App. Br. 38, Claims App’x. Patent Owner contests the Examiner’s decision to reject the claims as follows: I. Claims 1, 2, 4–12, 15–17, 20–26, 31–37, 46–49, 58, 59, 61–68, 70–75, 80, and 81 stand rejected under 35 U.S.C. § 103(a) as 3 HFO-1234yf has the structure F3C–CF=CH2. Although claim 1 refers to HFO-1234yf as 1,1,1,2-tetrafluoropropene, the specification of the ’366 patent refers to HFO-1234yf as it is more often identified as 2,3,3,3- tetrafluoropropene. See e.g., the ’366 patent, col. 4, ll. 47-48 and the ’120 patent, col. 4, ll. 54-55. However, the ’882 patent refers to HFO-1234yf as “1,1,1,2-tetrafluoropropene.” ’882 patent, col. 17, ll. 65-67, claim 7. The three names all refer to the same chemical compound. Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 5 unpatentable over Inagaki4 in view of Magid.5 RAN 4 and 24 (Rejection I and XV). II. Claims 3, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Inagaki in view of Magid and Mahler.6 RAN 8 and 25 (Rejections II and XVIII). III. Claims 4–7, 12, 17, 26, 32–37, 46–49, 58, 59, 61–64, 72, and 73 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Inagaki in view of Magid and Oberle.7 RAN 9 and 28 (Rejections III and XXIII). IV. Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Inagaki in view of Magid and Thomas.8 RAN 10 and 29 (Rejections IV and XXVI). V. Claims 1, 2, 4–12, 15–17, 19–26, 31–37, 46–49, 58, 59, 61-68, 70–75, 80, and 81 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Inagaki in view of ACURA9 and Patentee’s Admissions.10 RAN 11 and 24 (Rejection V, XIII, and XIV). 4 JP H04-110388, published April 10, 1992 and naming Sadayasu Inagaki et al. as inventors. 5 U.S. Patent 4,755,316, issued July 5, 1988 to Hillel Magid et al. 6 U.S. Patent 6,991,744, issued January 31, 2006 to Walter Mahler et al. 7 U.S. Patent 6,374,629 B1, issued April 23, 2002 to Jill Ellen Oberle et al. 8 U.S. Patent 5,254,280, issued October 19, 1993 to Raymond H. P. Thomas et al. 9 Acura Service Bulletin No. 92-027, issued September 29, 1992, regarding 1993 Model NSX Legend. 10 As evidenced by remarks made in the original prosecution of U.S. Application 10/694,273 (now the ’366 patent) in the Supplemental Response, filed November 10, 2008 at page 20, and the ’366 Patent, col. 6, ll. 5-9. RAN 12. Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 6 VI. Claims 3, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Inagaki in view of Acura/Patentee’s Admissions and Mahler. RAN 15 and 25 (Rejections VI, XVI, and XVII). VII. Claims 4–7, 12, 17, 26, 32–37, 46–49, 58, 59, 61–64, 72, and 73 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Inagaki in view of Acura/Patentee’s Admissions and Oberle. RAN 16 and 28 (Rejections VII, XXI, and XXII). VIII. Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Inagaki in view of Acura/Patentee’s Admissions and Thomas. RAN 17, 28 and 29 (Rejections VIII, XXIV, and XXV). IX. Claims 1, 2, 4-12, 15-17, 19-26, 31-37, 46-49, 58, 59, 61-68, 70-75, 80, and 81 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Inagaki in view of Bivens.11 RAN 18 (Rejection IX). X. Claim 3, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Inagaki in view of Bivens and Mahler. RAN 20 (Rejection X). XI. Claims 4-7, 12, 17, 26, 32-37, 46-49, 58, 59, 61-64, 72, and 73 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Inagaki in view of Bivens and Oberle. RAN 21 (Rejection XI). 11 U.S. Patent 6,783,691 B1, issued August 31, 2004 to Donald Bernard Bivens, et al. Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 7 XII. Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Inagaki in view of Bivens and Thomas. RAN 23 (Rejection XII). XIII. Claims 3, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Inagaki in view of Acura/Patentee’s Admissions or Magid and Minor.12 RAN 25 and 27 (Rejections XIX and XX). XIV. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Inagaki in view of Acura/Patentee’s Admissions or Magid and Katafuchi.13 RAN 29 and 31 (Rejections XXVII and XXVIII). Requesters rely on the following evidence in support of the Examiner’s maintained rejections: Declaration of Stuart Corr executed May 1, 2013 (Ex. 2, Req. Mex. Br. 11; hereinafter “Corr Decl.”) and attached exhibits. Declaration of Takashi Shibanuma executed July 28, 2014 (Ex. 4, Req. Mex. Br. 11; Ex. 17, Req. Dai. Br., Exhibit App’x 2; hereinafter “Shibanuma Decl.”) and attached exhibits. JP H5-85970A, published April 6, 1993 and naming Yukio Omure et al. as inventors, and certified English language translation submitted therewith, dated April 30, 2013. 14 12 WO 02/46328 A2, published June 13, 2002 and naming Barbara Minor et al. as inventors. 13 U.S. Patent 6,013,609, issued January 11, 2000 to Tadashi Katafuchi. 14 Requesters identify the teachings of Omure in Requesters’ Comments after the Patent Owner’s Response to the Examiner’s non-final office action, filed May 1, 2013, and in Requester’s Comments filed after the Action Closing Prosecution, filed July 28, 2014. Accordingly, Patent Owner was Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 8 Patent Owner relies on the following rebuttal evidence: 1. Declaration of Donald B. Bivens executed March 29, 2013 (Ex. A, App. Br. 45; hereinafter “First Bivens Decl.”) and attached exhibits. 2. Declaration of Richard D. Chambers executed March 27, 2013 (Ex. B, App. Br. 45; hereinafter “Chambers Decl.”) and attached exhibits. 3. Declaration of Michael B. Pate executed March 29, 2013 (Ex. C, App. Br. 46; hereinafter “Pate Decl.”) and attached exhibits. 4. Declaration of Joseph F. Posillico executed June 27, 2014 (Ex. D, App. Br. 47; hereinafter “Posillico Decl.”). 5. Declaration of Rajiv Ratna Singh executed March 30, 2013 (Ex. E, App. Br. 47; hereinafter “Singh Decl.”) and attached exhibits. 6. Declaration of Raymond H. Thomas executed March 29, 2013 (Ex. F, App. Br. 49; hereinafter “First Thomas Decl.”) and attached exhibits. 7. Declaration of Richard Winick executed March 29, 2013 (Ex. G, App. Br. 49; hereinafter “Winick Decl.”). 8. Second Declaration of Donald B. Bivens executed June 27, 2014 (Ex. H, App. Br. 49; hereinafter “Second Bivens Decl.”) and attached exhibits. 9. Second Declaration of Raymond H. Thomas executed June 27, 2014 (Ex. I, App. Br. 49; hereinafter “Second Thomas Decl.”) and attached exhibit. on notice prior to briefing in this appeal as to Omure’s teachings as evidence of the state of the art at the time of the invention. Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 9 OBVIOUSNESS REJECTIONS BASED ON INAGAKI The Rejections Sole independent claim 1 stands rejected over Inagaki in view of (a) Magid, (b) Acura and Patentee’s Admissions, or (c) Bivens. Dependent claims stand rejected based on these references either with or without additional prior art. The Examiner found, and Patent Owner does not dispute, that Inagaki teaches HFO-1234yf, the same refrigerant recited in claim 1. See RAN 5; PO App. Br. 15-16, Claim App’x; Inagaki 4–5 (Embodiment 5). The Examiner further found that Inagaki describes that the disclosed refrigerants ‘“do not have any problem with respect to their general characteristics (e.g., compatibility with lubricants, non-erodibility against materials, etc.).’” RAN 7-8 and 40 (quoting Inagaki 3). Thus, the Examiner found that Inagaki “broadly teaches that the heat transfer compounds are compatible with lubricants” but does not teach the particular polyalkylene glycol (PAG) lubricant of claim 1. RAN 5. The Examiner found that Magid teaches the use of polyoxypropylene glycols meeting the requirements of claim 1 for use with tetrafluoroethane in refrigeration equipment. RAN 6 (citing Magid, col. 3, ll. 34-54). The Examiner also found that Acura describes the use of a PAG lubricant, referred to as ND-8, which meets the requirements of claim 1, for use with R-134 in an automotive air conditioning system. RAN 12. The Examiner relied on Patent Owner’s admission from page 20 of the Remarks made during the original prosecution in the Supplemental Response dated Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 10 November 10, 2008, which states that ND-8 was “one of the most widely used lubricants by OEMs for automotive air conditioning systems.” See RAN 12 (quoting Requester Mexichem’s Request for Inter Partes Reexamination 28, filed September 12, 2012). Additionally, the Examiner found that Bivens teaches “that lubricants for HFC-based refrigeration systems are polyalkylene glycols and polyol esters.” RAN 18. Accordingly, the Examiner determined that a heat transfer composition comprising HFO-1234yf and PAG (namely ND-8) in an air conditioning system would have been obvious to one having ordinary skill in the art at the time the invention with a reasonable expectation of success because the refrigerant is compatible with lubricants in view of the prior art of record. RAN 6, 12, and 18-19. Discussion Claims 1, 3, 5, 6, 8, 11-16, 18-20, 23-25 and 31-33 Issue Although some claims stand rejected separately, Patent Owner argues claims 1, 3, 5, 6, 8, 11-16, 18-20, 23-25 and 31-33 as a group based on the Examiner’s similar reliance on the teachings of Inagaki in view of Magid, Acura/Patentee’s Admissions, or Bivens. PO App. Br. 13. Accordingly, we address claim 1 as representative of the rejection of the claims, with the understanding that our comments apply equally to the rejections of dependent claims 3, 5, 6, 8, 11-16, 18-20, 23-25 and 31-33. Patent Owner contends that the Examiner has not established a prima facie case of obviousness because Inagaki fails to disclose an embodiment of Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 11 a heat transfer composition comprising HFO-1234yf and polyalkylene glycol (PAG), and that such a combination would not have been obvious to the skilled artisan. PO App. Br. 16 and 24-30. Patent Owner argues that Inagaki is silent as to combining the described hydrofluoroolefins, including HFO-1234yf, with any particular lubricant. Id. at 16. In particular, Patent Owner contends that, although Inagaki describes “compatibility” with lubricants, Inagaki does not explain what it means by “compatibility,” and does not discuss any reason to expect that the combination of HFO-1234yf and PAG would have been miscible or stable with any particular lubricant, particularly with PAG. PO App. Br. 16-17. Patent Owner further argues that Inagaki does not suggest combining with PAG because it specifically states combining HFOs with known HCFCs and CFCs to “improve solubility” and demonstrates an operational embodiment that includes an oil separator, and thus an expectation that the hydrofluoroolefins would have been combined with immiscible lubricants. Id. (citing Bivens Decl. ¶ 22 and Thomas Decl. ¶¶ 4-7). Patent Owner also argues that Inagaki does not disclose or render obvious the “no substantial acute toxicity” limitation of claim 1 because Inagaki teaches additional compounds found to have a high level of acute toxicity, and thus does not describe HFO-1234yf as “having any advantage over any other compounds.” PO App. Br. 16 and 21-22. Specifically, Patent Owner contends that Inagaki discloses HFO-1225zc and HFO-1243zf as having unacceptable toxicity and flammability for most air conditioning applications. Id. (citing Singh Decl. ¶¶ 5-9 and 28). Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 12 Patent Owner further contends that Magid, Acura, and Bivens are directed only to saturated hydrofluorocarbons (“HFC”), and that there is no basis to conclude that the results would have been predictable with HFO- 1234yf, as described in Inagaki, which is an unsaturated compound. Id. at 17-21 and 23-24. Rather, Patent Owner argues that these references show the unpredictability of combining refrigerants and lubricants, even between similar compounds such as R-134a and R-12. Id. (citing Bivens Decl. ¶¶ 7, 26-29; Thomas Decl. ¶ 27; Pate Decl. ¶ 12). Patent Owner contends that the statements relied upon by the Examiner as an admission are only directed towards confirmation that ND-8 was a known PAG lubricant at the time of the invention. PO App. Br. 21. Patent Owner argues that Bivens and other patents confirm problems with using PAG as a lubricant and a preference for mineral oils and akylbenzenes due to problems with moisture and the formation of sludges. Id. at 21 and 25. Patent Owner argues that, because some of the compounds taught by Inagaki would have been understood to be reactive or unstable, as hydrofluoroolefins in general were understood to be at the time of the invention, one of ordinary skill in the art would not have been led by Inagaki to combine HFO-1234yf with PAG, which was also understood to be an unstable compound. Id. at 10-11 and 25-27. In particular, Patent Owner contends that peroxide formation would have been expected to lead to degradation reactions of HFO compounds that are not possible with HFC compounds. Id. at 25 (citing Thomas Decl. ¶ 5; Chambers Decl. ¶¶ 5-14). Patent Owner contends that Inagaki fails to disclose an embodiment of a heat transfer composition comprising a refrigerant and a lubricant, Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 13 particularly a composition with the desired miscibility of the claims. PO App. Br. 14-17; see also PO App. Br. 27-28. Patent Owner contends that HFO-1234yf exhibits unexpected stability in combination with PAG over other similar refrigerants in combination with PAG. PO App. Br. 25-27. Further, Patent Owner argues that the present invention addresses the long-felt-but-unmet need for a heat transfer composition having necessary environmental properties, such as low ozone depleting potential (ODP) and low global warming potential (GWP). Id. at 6-12. In particular, Patent Owner presents evidence of skepticism that such a composition existed, particularly with the other desired properties of low toxicity, stability, reactivity, and effectiveness. Id. The issue with respect to these claims is: Did the Examiner err in determining that one of ordinary skill in the art would have formulated a heat transfer composition comprising HFO- 1234yf and PAG from the teachings of Inagaki, Magid, Bivens, or Acura and Patentee’s Admissions, and in light of the evidence of secondary consideration, namely unexpected results, long-felt-but-unmet need, and skepticism? Analysis Although Inagaki discloses that the refrigerants disclosed therein are compatible with lubricants (Inagaki 3), we agree with the Patent Owner that Inagaki does not teach any particular lubricant and refrigerant pairs, such that Inagaki does not expressly teach a heat transfer composition with HFO- 1234yf and PAG, as recited in claim 1. However, the Examiner’s rejection is not an anticipation rejection, but an obviousness rejection under 35 U.S.C. Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 14 § 103(a) that includes references that expressly teach that PAG was a well- known class of lubricant and ND-8, a PAG, was the most commonly used lubricant at the time of the invention. Inagaki teaches a generic refrigerant having the formula C3HmFn, wherein m and n are integers from 1–5 and the sum of m and n is equal to 6, which has no destructive effects on the ozone layer, because it contains no chlorine or bromine atoms. Inagaki 2. More critically, Inagaki exemplifies the refrigerant F3C–CF=CH2, also known in the art as HFO-1234yf or (2,3,3,3-tetrafluoropropene), which is the refrigerant recited in the claims. Id. at 4 (Embodiment 5). Inagaki teaches that the coefficient of performance (COP) and freezing effect results for HFO-1234yf were similar to those obtained for embodiment 1 (id.), for which Inagaki shows “excellent” COP values and “higher” freezing capacity than the control refrigerant (R-12). Id. at 3. Accordingly, Inagaki evinces that at the time of the invention HFO-1234yf would have been known to those of skill in the art to be a refrigerant with good COP and good freezing effect with no destructive effects on the ozone layer. We find it of no moment that Inagaki also discloses other refrigerants. See Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] discloses a multitude of effective combinations does not render any particular formulation less obvious. This is especially true because the claimed composition is used for the identical purpose.”). In addition to good cooling characteristics, Inagaki describes that HFO-1234yf is an ozone-friendly compound. Thus, despite the fact that HFO-1234yf possesses attributes (e.g., non-toxicity, stability, etc.) that were Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 15 yet to be recognized in the art, Inagaki teaches using HFO-1234yf, for example, as a known refrigerant at the time of the invention.15 Here, the Examiner’s reasoning that a skilled artisan would have used HFO-1234yf due to the good COP and capacity and ozone friendly properties described in Inagaki is supported by the preponderance of the teachings of the prior art. Moreover, the properties of the particular refrigerants are inherent to the refrigerant, whether specifically disclosed or not. Such inherent properties of refrigerants include their specific toxicity, miscibility, GWP, and ODP, whether or not these properties are predictable. One cannot obtain a patent for a composition of matter based on the inherent properties of an otherwise known refrigerant. “Inherency is not necessarily coterminous with the knowledge of those of ordinary skill in the art. Artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). The new realization alone does not render that prior art patentable. “From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing.” In re Papesch, 315 F.2d 381, 391 (CCPA 1963). “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific 15 Moreover, evidence of record suggests that the particular concerns with stability, toxicity, and reactivity were known in the art at the time of the invention and the testing of prospective refrigerants for these properties was routine in the art at the time of the invention. See Second Singh Decl. ¶¶ 6– 7 (citing a Declaration of George Rusch (attached as Exhibit B to the Second Singh Decl.), which discusses testing of HFO-1225zc performed by Dupont that is dated April 17, 2000); Bivens Decl. ¶ 9, n. 4 (citing Exhibit G, a 1992 NASA JPL tech brief identifying potential refrigerant candidates as toxic). Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 16 explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). See also In re Skoner, 517 F.2d 947, 950 (CCPA 1975) (“Appellants have chosen to describe their invention in terms of certain physical characteristics . . . . Merely choosing to describe their invention in this manner does not render patentable their method.”). We are not persuaded that any expected difficulties or problems associated with the use of HFO-1234yf, such as toxicity, would have deterred an ordinary artisan from using HFO-1234yf as a refrigerant in known refrigerant applications, as evidenced by Inagaki. Cf. PO App. Br. 21-24 (describing expected, although not realized, concerns regarding toxicity and reactivity). Even if expected to be toxic, flammable, reactive, etc., the skilled artisan would have recognized the tradeoff of these properties for the benefits of good cooling with little effect on the ozone layer and would have used Inagaki’s refrigerants in air conditioning equipment accordingly, as taught by Inagaki. See Singh Decl. ¶ 14 (citing Exhibit K, which is a 1997 article entitled “Trade-Offs in Refrigerant Selections.”); Singh Decl. ¶ 13, Exhibit G and First Bivens Decl. ¶ 9, n. 4, Exhibit F (a 1987 article entitled “Quest for Alternatives: A Molecular Approach Demonstrates Tradeoffs and Limitations Are Inevitable in Seeking Refrigerants”). It is enough that the prior art reference describes excellent COP, freezing effect, and low ODP to provide sufficient reasons for the skilled artisan to use HFO-1234yf as a refrigerant as required by claim 1. HFO-1234yf is non-toxic, non-flammable, miscible and stable in lubricants, Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 17 and has low GWP whether it is used for exploiting these properties or for the cooling and ozone-friendly properties described in Inagaki. “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR Int’l v. Teleflex, Inc., 550 US 398, 420 (2007). We agree with Patent Owner that Inagaki does not describe any particular cooling machine oil. However, using cooling machine oils known to those of ordinary skill in the art at the time of the invention would have been obvious based on the teachings of Inagaki. Again, the preponderance of the evidence of record indicates that PAG and polyol ester (POE) were known in the art as conventional lubricants in refrigerant systems, i.e., “cooling machine oils,” at the time of the invention. See Singh Decl. ¶ 7 (“One of the most widely used PAG lubricants at the time the present invention was made, and continuing through to the present time, is the PAG lubricant manufacture by Idemitsu Kosan and sold under the trade designation ND-8.”); Bivens, col. 1, ll. 37–50 (identifying PAG and POE as known alternative lubricants for HFC-based refrigeration systems). Even the ’366 patent describes that certain lubricants were well known in the art at the time of the invention. ’366 patent, col. 2, ll. 22-25 (“the types of lubricants used traditionally with CFC’s and HFC’s, including, for example, mineral oils, alkylbenzenes or poly (alpha-olefins).”) (emphasis added); col. 6, ll. 5-9 (“Commonly used refrigeration lubricants such as Polyol Esters (POEs) and Poly Alkylene Glycols (PAGs), silicone oil, mineral oil, alkyl benzenes (ABs) and poly (alpha-olefin) (PAO) that are used in refrigeration machinery with hydrofluorocarbon (HFC) refrigerants may be used with the Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 18 refrigerant compositions of the present invention.”) (emphasis added). Since Inagaki evinces that it would have been obvious to one of ordinary skill in the art at the time of the invention to have used HFO-1234yf in combination with known lubricants, Inagaki would have also suggested the use of HFO- 1234yf with, for example, PAG in a refrigerant composition. Moreover, the combination of HFO-1234yf and PAG specifically would have been suggested by the teachings of Inagaki in view of Magid, Acura and Patent Owner’s admissions, and Bivens, which particularly recite PAG as a known lubricant in systems that use refrigerants and ND-8 as the most commonly used lubricant. Known drawbacks associated with the use of PAG as a lubricant discussed in the prior art do not outweigh this suggestion, since there is no dispute that the prior art specifically teaches that PAG and POE have been used and are known “suitable lubricants for HFC-based refrigeration systems,” even despite these known drawbacks. Bivens, col. 1, ll. 17–18. Thus, the skilled artisan would have recognized PAG as a conventional lubricant in refrigerant cooling systems. “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 553-4 (Fed. Cir. 1994). Although the secondary references disclosing lubricants are directed to saturated hydrofluorocarbons, the secondary references are only relied upon for demonstrating that PAG, particularly ND-8, was a known lubricant for use with refrigerant systems as described in Inagaki. Inagaki itself would have suggested combining unsaturated HFO-based refrigerants with the lubricants disclosed in the secondary references, because Inagaki teaches Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 19 that HFO-1234yf has good COP and freezing effect, is ozone friendly, and is compatible with lubricants. Any of these properties would have led the skilled artisan to use HFO-1234yf with known lubricants. Thus, it is of no moment that the secondary references do not describe the use of PAG with unsaturated HFO-based refrigerants, because the combination of lubricants and unsaturated HFO-based refrigerants is described in Inagaki. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). Dr. Bivens testifies that miscibility and stability with respect to saturated HFC compounds would have been unpredictable with respect to unsaturated HFO compounds, as taught by Inagaki, because a double bond “significantly impacts the chemical and physical properties of the refrigerant such as, for example, toxicity, thermal and chemical stability, flammability, miscibility with lubricants, and compatibility of refrigerant/lubricant mixtures with system materials of construction.” First Bivens Decl. ¶ 7. As discussed above, Inagaki provides evidence that HFO-1234yf is a good and ozone friendly refrigerant and can be used with a lubricant. The properties discussed by Dr. Bivens, including miscibility and stability of HFO-1234yf with PAG, are inherent characteristics of HFO-1234yf, and the record provides sufficient evidence that the skilled artisan would have used HFO-1234yf with known lubricants, such as PAG. “[O]bviousness cannot be avoided simply by a showing of some degree of unpredictability in the art so long as there was a reasonable probability of success.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 20 (Fed. Cir. 2007). Thus, if the properties of refrigerants were all recognized as being unpredictable, and yet routinely tested in order to determine whether a particular compound would be suitable for a given application, identification of these properties for known refrigerants would have been obvious unless the needed testing was outside of the skill of the ordinary artisan. Patent Owner has not shown that testing for miscibility and stability of a refrigerant/lubricant pair was anything other than routine in the art. Moreover, Patent Owner’s argument that miscibility is unpredictable is not persuasive of non-obviousness. Magid, Acura, Bivens, and statements in the ’366 patent support a finding that, generally, PAG and POE were used as replacement lubricants with certain saturated HFC compounds that were known to be immiscible with mineral oil or alkylbenzene. See Bivens, col. 1, ll. 36-42; ’366 patent, col. 2, ll. 20-25 and col. 6, ll. 5-9; Magid, col. 4, l. 26 to col. 5, l. 41; Acura 1, col. 1, last two ¶¶; see also Mahler, col. 1, ll. 39- 45; Thomas Decl. ¶ 8 (describing three classes of lubricants – mineral oil, polyol ester oil (POE), and polyalkylene glycol (PAG)). Thus, despite the unpredictable nature of miscibility and stability, the art recognized that, for refrigerant compounds that were not miscible in mineral oil, alternative miscible lubricants were available in the art, namely PAG and POE. Thus, the skilled artisan would have had a reasonable expectation that Inagaki’s HFO-1234yf was miscible either with mineral oils and alkylbenzenes or alternatively with PAG and POE, particularly in light of Inagaki’s teaching of compatibility with lubricants. In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For obviousness under §103, all that is required is a reasonable expectation of success.”) (citations omitted). Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 21 We are not persuaded by Patent Owner’s contentions regarding the depiction in Figure 2 of Inagaki of an oil separator, which is not otherwise discussed in Inagaki. App. Br. 16. Inagaki expressly teaches that compatibility and solubility with machine oils is a desirable property. Thus, the incidental disclosure of an oil separator in a general purpose testing apparatus does not teach away from miscible combinations of refrigerants and lubricants. Further, we note that Patent Owner’s argument that the skilled artisan would not have understood that “compatibility” includes “miscibility” (PO App. Br. 16) is inconsistent with the language used in the ’366 patent, which interchanges the terms “compatibility” and “miscibility” throughout. See e.g., ’366 patent, col. 2, ll. 16–35; see also Corr Decl. ¶¶ 40–41 (“compatible” generally means having a “satisfactory degree of chemical stability and sufficient miscibility/solubility and lubricity to enable it to be used under conditions appropriate to the envisaged application”). Cf. Bivens Decl. ¶¶ 23-24; Pate Decl. ¶ 19. Secondary Considerations Patent Owner contends that the Examiner has not properly considered Appellants’ evidence of non-obviousness. PO App. Br. 12. Specifically, Patent Owner contends that there is evidence of unexpected results and industry praise. PO App. Br. 11-12. Patent Owner also argues that there was a long-felt need in the art for a refrigerant that possessed “not only these properties (low ODP and low GWP), but also must possess the properties of many of the widely-used compositions, such as excellent heat transfer, Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 22 chemical stability, low toxicity, non-flammability, and acceptable refrigerant/lubricant miscibility, among other properties” and skepticism that the combination of all such properties could be met. Id. at 3 and 12. After careful review of the evidence as a whole, we determine that Patent Owner’s evidence is unpersuasive as to the legal conclusion that the use of HFO-1234yf as a refrigerant in combination with PAG as a lubricant would not have been obvious to one of ordinary skill in the art. In order for evidence of secondary considerations to be persuasive, the Patent Owner has the burden to show a “nexus” or link between what is claimed and the evidence of secondary considerations. See In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). Secondary considerations are generally not persuasive when the prior art possesses the same characteristics relied upon by the patent owner in the evidence of the secondary consideration. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); J.T. Eaton & Co., Inc. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997). For a secondary consideration to be persuasive evidence of nonobviousness, it must be connected directly to claimed features of the claimed invention, and provide properties beyond what would have been expected based on the prior art. Baxter, 952 F.2d at 392 (“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.”). Most of Patent Owner’s evidence is introduced to show that a particular refrigerant having all of the desirable properties sought after in the particular art, namely environmentally friendly, non-toxic, miscible and Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 23 stable with lubricants, and good cooling characteristics (i.e., good COP) was elusive to those in the art for a long time. Yet, such a refrigerant existed and was known as a good refrigerant at the time, as described in Inagaki. Accordingly, a solution to the need for a refrigerant was taught or suggested in the art well before the Patent Owner’s identification of the additional beneficial properties of HFO-1234yf and HFO-1234ze. Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008) (“[T]here was no evidence that the success of the commercial embodiment . . . was attributable to the . . . only material difference between [the prior art] and the patented invention.”) (citation omitted, emphasis added); In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention”). Here, the difference between the closest prior art and the claims is not the selection of HFO-1234yf as a refrigerant, because the use of this compound as a refrigerant is taught expressly by Inagaki for common refrigerant purposes. Rather, we need only consider evidence related to the specific properties of the combination of HFO-1234yf and PAG, since it is arguably the only combination that is novel in the prior art. Patent Owner argues that the particular combination of HFO-1234yf and PAG exhibits “surprising stability even under extreme conditions.” PO App. Br. 26; PO Reb. Br. 5–7. Patent Owner includes stability data that demonstrates that “no tested fluorinated propene except HFO-1234yf exhibited acceptable stability with all three [stability] tests.” PO App. Br. 26-27. Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 24 Dr. Thomas testified to conducting three different stability tests, in which the stability is characterized by: the “Fluoride value,” which represents the amount of free fluorine ions available, the “Total Acid Number (TAN),” and whether or not dimerization of the fluorinated olefin in the presence of the lubricant occurs for PAG in combination with five HFO compounds, including HFO-1234yf. First Thomas Decl. ¶ 23–26. The results of the stability test are found in Table 3 of Exhibit G, of Dr. Thomas’s First Declaration, which is reproduced below. Table 3 shows that 1234yf has relatively low “Fluoride value,” relatively low TAN, and no dimerization. According to Dr. Thomas, the results demonstrate “dramatically and unexpectedly superior” stability of the combination as compared to “the structurally similar compound HFO- 1234ze.” Id. Dr. Chambers explains that there are “reactive tendencies” between PAG and HFO-1234yf that were “possible and potential problems” anticipated by the skilled artisan upon combining HFO-1234yf and PAG. Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 25 Chambers Decl. ¶ 14 and ¶¶ 11-13. The reactions identified by Dr. Chambers all involve hydroxyl groups or peroxides that may or may not be present in PAG (see Chambers Decl. ¶¶ 8, 9 and 10) and the reactive nature of fluoroalkenes because of the presence of a double bond and reactive fluorine atoms. See Chambers Decl. ¶¶ 11-13. Dr. Chambers testifies that “it would have been quite surprising and unexpected to a person of ordinary skill in the art at the time of Honeywell’s invention to find that the combination of HFO-1234yf and PAG (as discussed in the declaration of Mr. Thomas) exhibits such an improved level of stability compared to the combination of PAG lubricants with other fluorinated propenes.” Id., ¶ 5, 14, and 15 (“it would have been surprising and unexpected to a person of ordinary skill in the art to find that this combination of HFO-1234yf and PAG is more stable than the combination of PAG lubricants with other fluorinated propenes (see Thomas declaration).”). The Examiner determined that the stability data “do not contradict the fact that the stability is an inherent property of the refrigerant/lubricant pair.” RAN 34. We disagree. Even inherent properties, to the extent that they demonstrate results beyond what would have been expected to one of ordinary skill in the art, 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, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Requester Mexichem contends that neither the stability of HFO- 1234yf alone nor the stability of PAG alone is improved by the combination. Req. Mex. Br. 3, 5 and 6. Mexichem’s argument is not persuasive because Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 26 Patent Owner is not suggesting an unexpected improvement over the stability of HFO-1234yf and PAG independently. Rather, Patent Owner is arguing that the particular combination of HFO-1234yf and PAG demonstrate superior stability over other combinations of HFO compounds in PAG. Both Requesters contend that a person skilled in the art would have expected that the claimed combination of HFO-1234yf and PAG would have excellent stability based on the teachings of Omure, which states that a different unsaturated propene HFO compound, 2-trifluoromethyl-3,3,3- trifluoropropene (hexafluoroisobutylene or HFIB), 16 has “relatively superior thermal stability” when used as a refrigerant. Omure, ¶ 14; see Req. Mex. Br. 6, Req. Dia. Br. 13. We agree with the Patent Owner that similar stability of HFO-1234yf in PAG would not have been expected (see PO Reb. Br. 6) because the evidence taken as a whole shows individual refrigerants are not predictable as to their properties under the same or similar conditions, and thus, the benefits of one hydrofluoropropene would not have been predictive of the stability of other hydrofluoropropenes. See e.g. Patent Owner’s Rebuttal Brief 6, filed April 23, 2015; Chambers Decl. ¶¶ 5-14; 16 HFIB is a isobutylene compound having the structure CH2=C(CF3)2. Omure’s refrigerant compound is a hydrofluoroolefin, in that it comprises hydrogen, carbon and fluorine atoms and an unsaturated double bond. HFIB falls within the scope of general formula I of the ’366 patent (col. 3, ll. 39- 44), which is not limited to X being a primary alkyl radicals. HFIB does not fall within the scope of formula II of the ’366 patent (col. 4, ll. 1-12), which is limited to straight chain propenes and butenes. HFIB also does not fall within the general formula described in Inagaki, because it has 4 carbon atoms, and Inagaki is limited to compounds with 3 carbon atoms. Inagaki 1, first full ¶. Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 27 Thomas Decl. ¶ 21; 2nd Thomas Decl. ¶ 4 (which describes known stability problems with PAG and saturated HFC, which is contrary to Dr. Chamber’s testimony in ¶ 10 that stability problems would not have been expected with saturated HFCs). Patent Owner has the burden of showing by at least a preponderance of the evidence that the results presented would have been unexpected to render combined teachings non-obvious. However, Omure’s statement that another HFO compound, also having a double bond and highly reactive fluorine atoms, shows superior thermal stability is a fact that we weigh against Dr. Chamber’s assertion that the results of HFO-1234yf in PAG were necessarily unexpected. Rather, the evidence presented by Patent Owner as a whole shows the unpredictability of how various refrigerants would have reacted with various lubricants. Thus, as evidenced by Omure, the skilled artisan would no more have expected failure with respect to the stability of combining hydrofluoroolefins with PAG than would have expected success. Additionally, Dr. Thomas’ testimony suggests that the stability tests performed by him were routine in the art, and common, or even required, when considering any particular refrigerant/lubricant combination. See Thomas Decl. ¶ 23 (“The procedure described herein and the test results reported below are known and accepted as being indicative of the stability of such compositions for use in refrigeration systems.”) and ¶¶ 24-25 and Exhibits E and F (describing that tests were performed by American Society of Heating, Refrigerating, and Air-Conditioning Engineers (ASHRE) or American Society for Testing Materials (ASTM) standards). Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 28 Moreover, we agree with the Examiner that not all the stability data shown in Table 3 of the Thomas Declaration shows that the claimed combination is more stable when compared to the combination of other fluorinated propenes with PAG lubricants. RAN 35; Thomas Decl. ¶¶23-26, Ex. G. Rather, Table 3 shows HFO-1243zf having a lower “Fluoride value” and lower “TAN” value over that of HFO-1234yf. Patent Owner argues that we should credit the lack of dimerization shown in HFO-1234yf as constituting a more stable combination than a combination that has much lower Fluoride value and TAN value. PO app. Br. 26 (citing Thomas Decl. ¶ 26). Patent Owner cites Dr. Thomas’ explanation that dimerization is also indicative of “its potential to create components that may have a deleterious effect on the operation of many air conditioning systems.” Id. (citing Thomas Decl. ¶ 26). While this may be an additional disadvantage of dimerization, Dr. Thomas’ statement does not suggest that dimerization is a more critical factor when measuring stability than the other stability factors measured by Dr. Thomas. Moreover, HFO-1225yez also has no dimerization and has a lower TAN value than that of HFO-1234yf, suggesting that lack of dimerization is not a critical factor. Patent Owner has not explained why we should credit the improvement in Fluroide value shown in HFO-1234yf over a lower TAN value and equivalent dimerization of HFO-1225yez. Merely an increase in some stability metrics for the combination of HFO-1234yf and PAG alone over some refrigerant/PAG pairs, when weighed in light of the evidence of routine testing and overall unpredictability as to stability in the art, is not persuasive as evidence of Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 29 unexpected results. See In re Chupp, 816 F.2d 643, 646 (Fed. Cir. 1987) (“[T]he mere submission of some evidence that a new compound possesses some unpredictable properties does not require an automatic conclusion of nonobviousness in every case.”); In re Merck, 800 F.2d at 1099 (“In the absence of evidence to show that the properties of the compounds differed in such an appreciable degree that the difference was really unexpected, we do not think that the Board erred in its determination.”); In re Merz, 97 F.2d 599, 601 (C.C.P.A. 1938) (applicant “is not entitled to a patent on [an] article which after being produced has a greater degree of purity than the product produced by former methods” unless the “properties and characteristics which were different in kind from those of the known product rather than in degree”); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Further, even if the data of Table 3 shows an improvement in stability of HFO-1234yf in PAG over the other tested HFO compounds in PAG because good (if not the best) results were achieved in all (rather than just some) metrics, such is not by itself sufficient to demonstrate unexpected results. That is, the data are insufficient to support the testimony of Dr. Thomas and Dr. Chambers that this improvement would have been unexpected and that the results of combining HFO-1234yf in PAG would not have been obvious. The data is particularly unpersuasive when weighed in light of the overall unpredictability in the art and other HFO compounds in the art having “superior thermal stability” in PAG, as evidenced by Omure. Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 30 Accordingly, we do not find that Patent Owner’s evidence of secondary consideration persuasively supports a determination of non- obviousness over the combination of Inagaki and Magid, Acura and Patentee’s admission, or Bivens. Claims 2, 9, 10, 58, and 59 Issue Patent Owner presents separate arguments for claims 2, 9, 10, 58, and 59. See PO App. Br. 30. These claims recite variously that the composition has a maximum GWP of 150, 100, or 75. Claims 2, 9, 10, 58, and 59 stand rejected under 35 U.S.C. § 103(a) as being obvious over Inagaki in view of Magid, Acura and Patentee’s admission, or Bivens. We select claim 2 (reciting a maximum GWP of 75) as a representative claim. In addition to the arguments discussed above for claim 1, Patent Owner contends that Inagaki does not support a conclusion that a composition using a refrigerant with a GWP of less than 75 would have been obvious because: (1) there is no express disclosure of this requirement; (2) not all heat transfer media within Inagaki necessarily produce a GWP as low as required by the claims and thus a finding of inherency is in error; and (3) Inagaki teaches improving solubility by adding saturated HFCs or HCFCs that are known to have a high GWP. PO App. Br. 30-31 (citing Singh Decl. ¶¶ 12-13 and Bivens Decl. ¶¶ 7-9). The issue with respect to claims 2, 9, 10, 58, and 59 is: Did the Examiner err in determining that one of ordinary skill in the art would have formulated a heat transfer composition having a refrigerant Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 31 with the low GWP property recited in the claims from the teachings of Inagaki? Analysis Because Inagaki expressly teaches the use of HFO-1234yf as a refrigerant, the use thereof, and of all the properties associated with the refrigerant, would have been obvious, including the refrigerant’s low GWP.17 See Atlas Powder, 190 F.3d at 1347; see also Corr Decl. ¶ 65. Although it would have been obvious to the skilled artisan to have combined the low GWP HFO-1234yf refrigerant with other known refrigerants that have substantially higher GWP, Inagaki specifically teaches the use of HFO-1234yf alone in Embodiments 5. Thus, Inagaki teaches embodiments of processes using refrigerants that inherently have a GWP within the recited range, because those embodiments have no additional refrigerants other than HFO-1234yf.18 One cannot obtain patentability based on these inherent properties of an otherwise known refrigerant. The new realization alone does not render that prior art patentable. Additionally, for the reasons discussed above, we find Patent Owner’s evidence of secondary considerations to be unpersuasive of non-obviousness over the prior art. 17 There is evidence of record that HFO-1234yf has a GWP of 4. See Singh Decl. ¶ 19 and Exhibit P; Req. Mex. Br. 6-7. See also RAN 55 (Examiner reasoned that identical fluoroalkene compounds would have the same low GWP as claimed). 18 It is our understanding that heat transfer composition components other than refrigerants need not be considered as significant contributors to GWP. For example, the evidence describes only the regulation of refrigerant components of known heat transfer compositions. See e.g., Singh Decl. ¶ 13 and Exhibits E-J. That is, conventional lubricants and non-refrigerant additives appear to make negligible contributions to GWP. Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 32 Accordingly, we affirm the Examiner’s rejection of claims 2, 9, 10, 58, and 59 under 35 U.S.C. § 103(a) as obvious over Inagaki in view of Magid, Acura and Patentee’s admission, or Bivens. Claim 21 Issue Patent Owner presents separate arguments for claim 21. See PO App. Br. 30. Claim 21 depends from claim 1 and further recites that the composition “has one liquid phase at at least one temperature between about -50°C and +70°C.” Claim 21 stands rejected under 35 U.S.C. § 103(a) as being obvious over Inagaki in view of Magid, Acura and Patentee’s admission, or Bivens. The Examiner finds that “the ’366 patent describes that polyalkylene glycols and polyol esters are commonly used lubricants in refrigeration machinery with hydrofluorocarbon (HFC) refrigerants (col. 6, lines 5-9).” RAN 13. In fact, the Examiner cites to an admission by Patent Owner that “ND-8 [a PAG lubricant] is one of the most widely used lubricants for automotive air conditioning systems.” RAN 12 (citing Patent Owner’s Supplemental Response dated November 10, 2008). The Examiner also finds that Magid and Bivens describe the use of poly alkylene glycols along with hydrofluorocarbon refrigerants. RAN 6 (citing Magid, col. 3, lines 34- 40) and RAN 18 (citing Bivens, col. 1, lines 40–43). The Examiner determined that a heat transfer composition for use in air conditioning systems comprising HFO-1234yf and PAG would have been obvious to one skilled in the art because Inagaki describes the use of its refrigerants with Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 33 lubricants and PAG is a well-known lubricant in the art. See RAN 6, 12, 18- 19. Patent Owner contends that Inagaki is silent as to the use of any particular lubricant, and particularly not the use of miscible lubricants such as PAG. PO App. Br. 31-32. Patent Owner argues that miscibility with any particular lubricant is not a predictable property. Patent Owner also argues that Inagaki’s reference to “compatibility with lubricants” is insufficient and Inagaki’s references to an oil separator and improving solubility with the addition of HCFCs and HFCs teaches away from using HFO-1234yf with a miscible lubricant. Id. Accepting the recited “one liquid phase” as requiring complete miscibility between two liquids, the issue with respect to claim 21 is: Did the Examiner err in determining that one of ordinary skill in the art would have formulated a heat transfer composition having a refrigerant and lubricant pair having the miscibility recited in claim 21 from the teachings of Inagaki and Magid, Acura and Patentee’s admissions or Bivens? Analysis Patent Owner’s arguments are not persuasive for the reasons discussed above with respect to claims 1, 3, 5, 6, 8, 11-16, 18-20, 23-25 and 31-33. Inagaki provides evidence that HFO-1234yf is a good refrigerant, an ozone friendly refrigerant, and can be used with a lubricant. Magid, Acura, and Bivens are relied upon for demonstrating that PAG was a known lubricant for use in “air conditioning equipment,” as described in Inagaki. Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 34 The miscibility of HFO-1234yf with PAG is an inherent characteristic of HFO-1234yf, and the record provides sufficient evidence that the skilled artisan would have used HFO-1234yf with known lubricants, such as PAG. With routine testing, the skilled artisan would have had a reasonable expectation that Inagaki’s unsaturated HFO compounds were miscible either with mineral oils and alkylbenzenes or alternatively with PAG and POE. We do not agree with the Patent Owner’s argument that Inagaki’s teaching of combining the disclosed refrigerants with cooling machine oil in the presence of the other HFC refrigerants to “improve solubility” equates to a teaching that the combinations of lubricant and refrigerant suggested therein were immiscible. See PO App. Br. 32. The appealed claims use open “comprising” language and thus do not exclude the presence of other HFC materials. Thus, combinations of HFO-1234yf with other refrigerants are not excluded by the one-phase limitation. In this regard, Inagaki teaches that HFO-1234yf is capable of working as a refrigerant without the presence of the other HFCs. In fact, to the contrary, Inagaki specifically discloses that HFO-1234yf has excellent COP and freezing effect, even without the addition of other refrigerants, in the Embodiment 5 example. See KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Likewise, while Inagaki suggests that solubility can be “improved” with lubricants in the presence of other refrigerants, Inagaki does not indicate that solubility with lubricants of HFO-1234yf without the addition of the other refrigerants is in any way compromised or ineffective for the refrigerants use. Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 35 Accordingly, we affirm the Examiner’s rejection of claim 21 under 35 U.S.C. § 103(a) as obvious over Inagaki in view of any of Magid, Bivens, or Acura and Patentee’s admission. Claim 22 Patent Owner presents separate arguments for claim 22. See PO App. Br. 32-33. Claim 22 depends from claim 1 and further recites that the composition is “stable when in contact with aluminum, steel and copper under the conditions of use in refrigeration and air conditioning systems.” Claim 22 stands rejected under 35 U.S.C. § 103(a) as being obvious over Inagaki in view of Magid, Acura and Patentee’s admission, or Bivens. Patent Owner contends that Inagaki is silent as to the stability of HFO-1234yf in the presence of certain metals. PO App. Br. 33. Patent Owner argues that stability is not a predictable property and would not have been expected for the reasons discussed above with respect to claims 1, 3, 5, 6, 8, 11-16, 18-20, 23-25 and 31-33. Patent Owner also relies on the evidence of secondary considerations of non-obviousness discussed above as they apply to the stability of HFO-1234yf. Id. The issues presented with respect to claim 22 are substantially identical to those found unpersuasive for the reasons discussed above with respect to claims 1, 3, 5, 6, 8, 11-16, 18-20, 23-25 and 31-33. The use of HFO-1234yf as a refrigerant in air conditioning systems, and all the properties associated with the refrigerant, would have been obvious to one of ordinary skill in the art, including its compatibility with aluminum, steel and copper under the conditions of use in air conditioning systems. Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 36 Accordingly, we affirm the rejections of claim 22 for the reasons discussed above in further detail. Claims 36, 37, 46-49 and 75 Issue Patent Owner presents separate arguments for claims 36, 37, 46-49 and 75. See PO App. Br. 34. These claims depend from claim 1 and recite that the refrigerant further comprises one or more of HFC-32, HFC-152a, propane, hexane, or octane. Moreover, these claims recite that the refrigerant “has a Global Warming Potential (GWP) of not greater than about 75” in the case of claims 37, or “has a Global Warming Potential (GWP) of not greater than about 150” in the case of claims 36, 46-49 and 75. Claims 36, 37, 46-49 and 75 stand rejected under 35 U.S.C. § 103(a) as being obvious over Inagaki in view of Magid, Acura and Patentee’s admission, or Bivens. Patent Owner argues claims 36, 37, 46-49 and 75 as a group, for which we select claim 36 as a representative claim. See PO App. Br. 34. Patent Owner contends that Inagaki does not support a conclusion that a composition using a refrigerant with a GWP of less than 75 would have been obvious because there is no express disclosure of low GWP especially when considering adding saturated HFCs or HCFCs that have a high GWP. PO App. Br. 34. The issue with respect to claims 36, 37, 46-49 and 75 is: Did the Examiner err in determining that one of ordinary skill in the art would have formulated a heat transfer composition having a refrigerant Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 37 comprising HFC-32, HFC-152a, propane, hexane, or octane, and further maintain the low GWP property recited in the claims from the teachings of Inagaki? Analysis As discussed above with respect to claims 2, 9, 10, 58 and 59, Inagaki expressly teaches the use of HFO-1234yf as a refrigerant, the use thereof, and of all the properties associated therewith, would have been obvious, including the refrigerant’s low GWP. See Atlas Powder, 190 F.3d at 1347; RAN 55. Inagaki further expressly teaches that HFO-1234yf can be combined with other known refrigerants including “R-32 (CH2F2),” “R-152 (CHF2CH3),” and “R-152a.” Inagaki 2 and 3. Inagaki recognizes that because HFO-1234yf contains “neither chlorine atm[sic] nor bromine atom, [it has] no hazardous nature to destruct the ozone layer.” Inagaki 2. Thus, Inagaki would have instructed the skilled artisan to take advantage of the environmentally friendly aspects of the refrigerants described by Inagaki. Although it would have been obvious to the skilled artisan to have combined the low GWP HFO-1234yf refrigerant with other known refrigerants that have substantially higher GWP, the skilled artisan would have had a reason and the skill to optimize the concentrations of each material to take advantage of the environmentally friendly aspects of Inagaki’s refrigerants, particularly in light of national and international regulations at the time of the invention that limit the use of refrigerants with a high GWP, such as the Kyoto Protocol. See Singh Decl. ¶ 13 and Exhibits J and N (a 1999 conference paper stating “The regulations to come associated with the Kyoto Protocol thus create uncertainties in the Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 38 mid to long term concerning currant refrigerants, if their GWP is high.”); Corr Decl. ¶ 36. The skilled artisan would have optimized the concentrations of HFO-1234yf and other known refrigerants because concern for low GWP was known in the art at the time of the invention. Accordingly, we affirm the Examiner’s rejection of claims 36, 37, 46- 49 and 75 under 35 U.S.C. § 103(a) as obvious over Inagaki in view of Magid, Acura and Patentee’s admission, or Bivens. Claims 61-68 Patent Owner presents separate arguments for claims 61-68. See PO App. Br. 34 and 35. Each of claims 61-68 depends from claim 1 and further recites the “one liquid phase” limitation discussed above, the GWP of “not greater than 150” limitation discussed above, and the “stable when in contact with aluminum, steel and copper” limitation discussed above. See claims 58 and 59, from which each of claims 61-64 depend, and claim 65. Claims 61- 68 stand rejected under 35 U.S.C. § 103(a) as being obvious over Inagaki in view of Magid, Acura and Patentee’s admission, or Bivens. Claims 61-64 also stand rejected under 35 U.S.C. § 103(a) as being obvious over these reference further in view of Oberle. Patent Owner relies on the arguments discussed above for each of these limitations separately. PO App. Br. 34 and 35. We discuss in detail above why each of these separate arguments are unpersuasive. Accordingly, we affirm the rejections of claims 61-68 for the reasons discussed above in further detail. Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 39 Claims 4, 7, 17, 26, 34, and 35 Issue Patent Owner presents separate arguments for claims 4, 7, 17, 26, 34, and 35. See PO App. Br. 35-36. These claims recite that PAG is present in an amount of “at least about 30% to 50% by weight, depending on the claim.” Id. at 35 Claims 4, 7, 17, 26, 34, and 35 stand rejected under 35 U.S.C. § 103(a) as being obvious over Inagaki in view of Magid, Acura and Patentee’s admission, or Bivens. Claims 4, 7, 17, 26, 34, and 35 also stand rejected under 35 U.S.C. § 103(a) as being obvious over these reference further in view of Oberle. Patent Owner argues claims 4, 7, 17, 26, 34, and 35 as a group, for which we select claim 4 as a representative claim. See PO App. Br. 35-36. Patent Owner finds that Inagaki does not describe a particular amount of any particular lubricant. Id. at 35. Thus, according to Patent Owner the skilled artisan would have had no reason to form a refrigerant composition having the recited PAG concentration. Patent Owner further contends that the evidence teaches away from a finding that the recited PAG concentrations would have been obvious at the time of the invention. PO App. Br. 35-36. The issue with respect to claims 4, 7, 17, 26, 34, and 35 is: Did the Examiner err in determining that one of ordinary skill in the art would have had a reason to formulate a heat transfer composition having a refrigerant and PAG in the concentration ranges recited in the claims from the teachings of Inagaki, Magid, Acura and Patentee’s admissions, Biven or Oberle? Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 40 Analysis The Examiner determines that it would have been obvious for one of ordinary skill in the art to have discovered the optimum or workable ranges for PAG concentration by routine experimentation. See RAN 6-7, 13, 19 (citing Peterson, 315 F.3d at 1330 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); Aller, 220 F.2d at 456 (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”)). Moreover, the Examiner indicates that, to the extent the claimed concentration of lubricant is not specifically taught, Oberle teaches a refrigerant lubricant pair in which a lubricant, including PAG, is provided preferably within a range of 0.3-50% by weight. RAN 9-10, 16- 17, and 22 (citing Oberle, col. 22, ll. 1-4; see also col. 12, ll. 16-23). The Examiner thus determines that it would have been obvious for the skilled artisan to have used the HFO-1234yf/PAG composition in the lubricant concentrations described in Oberle, as representative of the known range of lubricant concentrations in refrigerant/lubricant compositions. Id. For the reasons discussed above, we agree with the Examiner that it would have been obvious to the skilled artisan to combine HFO-1234yf as taught by Inagaki with PAG, particularly ND-8, as taught by Magid, Bivens, and Acura and Patentee’s admissions. We further find that determining optimal concentration ranges of these two components was within the skill of the ordinary artisan. Optimization of a variable which is recognized in Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 41 the prior art to be a result effective variable would ordinarily be within the skill in the art. In re Boesch, 617 F.2d 272, 276 (CCPA 1980); see also In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”). An improvement in the art is obvious if “it is likely the product not of innovation but of ordinary skill and common sense.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 402-403 (2007). Patent Owner has not shown that such optimization is outside of the skill of the ordinary artisan or that the claimed concentration range of 30% to 50% by weight is critical or exhibits unexpected or superior properties over the improvement that would have been expected due to routine optimization. See Boesch, 617 F.2d at 276; In re Woodruff, 919 F.2d at 1578; Aller, 220 F.2d at 456. Further, Oberle describes lubricants used in a concentration range that encompasses the recited concentration range. It has been often said that when a claimed range overlaps, is close to, or within a broader range disclosed in the prior art, the claimed range is prima facie obvious. Iron Grip Barbell v USA Sports, Inc., 392 F.3d 1317, 1321-22 (Fed. Cir. 2004). When “‘the difference between the claimed invention and the prior art is the range or value of a particular variable,’ then a patent should not issue if ‘the difference in range or value is minor.’ Haynes Int'l v. Jessop Steel Co., 8 F.3d 1573, 1577 n.3 (Fed. Cir. 1993); see also Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985).” Iron Grip, 392 F.3d at 1322. Patent Owner has not persuasively shown that the narrower concentration teaching of Oberle would not have suggested a concentration Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 42 range for PAG to be used with HFO-1234yf, as taught by Inagaki and Magid, Bivens, and Acura and Patentee’s admissions. Additionally, we are not persuaded by Patent Owner’s argument that the statements of Dr. Corr in his deposition teach away from the obviousness of the claimed concentration range. The relevant portion of Dr. Corr’s testimony is as follows: A. I wouldn’t think it was obvious to add 50 percent of oil to a refrigerant composition and have it -- have it working well of 30 to 50 percent. Q. So you wouldn’t think it was obvious to 30 to 50 percent lubricant and having it working well, correct? A. In terms of that as a heat transfer medium, no. Q. Okay. Okay. That’s it on your declaration. A. Just to make it clear, when I'm talking about obvious and saying I don’t think it’s obvious from claims 5, for instance, to add 50 percent, that’s from a skilled person’s point of view. There’s no any kind of taint from any kind of legal reading. Corr Deposition, from IPR2013-00576, taken April 24, 2014, 269:14-270:4 We have considered Dr. Corr’s testimony. However, without an explanation of the reasoning behind this conclusion vis-à-vis the teaching of Oberle, which teaches that it was known in the art to use PAG within the recited range, we find Dr. Corr’s testimony insufficient to outweigh the disclosures of the prior art. See Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the rules or in our jurisprudence requires the fact finder to credit the unsupported assertions of an expert witness.”); In re Thompson, 545 F.2d 1290, 1295 (CCPA 1980) Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 43 (affidavit “sets forth no specifics and falls far short of constituting probative evidence.”). Accordingly, we affirm the Examiner’s rejection of claims 4, 7, 17, 26, 34, and 35 under 35 U.S.C. § 103(a) as obvious over Inagaki in view of Magid, Acura and Patentee’s admission, or Bivens or under U.S.C. § 103(a) as obvious over these references further in view of Oberle. Claim 70 Issue Patent Owner presents separate arguments for claim 70. See PO App. Br. 36. Claim 70 recites that the refrigerant further comprises one or more of HFC-32, HFC-152a, propane, hexane, or octane. Moreover, these claims recite that the composition is “nonflammable.” Claim 70 stands rejected under 35 U.S.C. § 103(a) as being obvious over Inagaki in view of Magid, Acura and Patentee’s admission, or Bivens. Patent Owner contends that Inagaki, which is silent as to flammability, does not support a conclusion that a nonflammable composition would have been obvious, particularly when considering adding highly flammable alkanes, because flammability of combinations of refrigerants is unpredictable. PO App. Br. 34. The issue with respect to claim 70 is: Did the Examiner err in determining that one of ordinary skill in the art would have formulated a heat transfer composition having a refrigerant comprising HFC-32, HFC-152a, propane, hexane, or octane, and further Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 44 have maintained the “nonflammable” property recited in the claims from the teachings of Inagaki? Analysis Inagaki evinces that at the time of the invention HFO-1234yf would have been known to those of skill in the art to be a refrigerant with good COP and good freezing effect with no destructive effects on the ozone layer. We find it of no moment that Inagaki also discloses other refrigerants that are less desirable due to flammability. See Merck, 874 F.2d at 807. As discussed above with respect to toxicity, HFO-1234yf also exhibits the desirable property of low flammability. Thus, despite the fact that HFO-1234yf, a known refrigerant, possessed attributes (e.g., low flammability) that were yet to be recognized in the art, the compound would have been recognized as suitable for use in air conditioning equipment, an application for refrigerants which is also taught by Inagaki. The properties of the particular refrigerants are inherent to the refrigerant, whether specifically disclosed or not. Such inherent properties of refrigerants include flammability. One cannot obtain patentability based on these inherent properties of an otherwise known refrigerant. The new realization alone does not render that prior art patentable. Also as discussed above, we are not persuaded that any of the cited potential difficulties or problems associated with the use of HFO-1234yf, such as flammability, would have deterred an ordinary artisan from using HFO-1234yf as a refrigerant, as evidenced by Inagaki. In other words, based on Inagaki, an ordinary artisan would have had reason to predict that Inagaki’s refrigerants would have worked as intended, i.e., causing heat to Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 45 be transferred from the air being cooled to the heat transfer composition by vaporizing the refrigerant, as recited in the claims. Even if HFO-1234yf had been expected to be flammable, the skilled artisan would have recognized the tradeoff of some flammability for the benefits of good cooling with little effect on the ozone, and would have had reason to use Inagaki’s refrigerants in air conditioning equipment accordingly, as taught by Inagaki. See Singh Decl. ¶ 14 (citing Exhibit K, which is a 1997 ASHRE conference paper entitled “Trade-Offs in Refrigerant Selections.”); Singh Decl. ¶ 13, Exhibit G and First Bivens Decl. ¶ 9, n. 4, Exhibit F (a 1987 ASHRE journal article entitled “Quest for Alternatives: A Molecular Approach Demonstrates Tradeoffs and Limitations Are Inevitable in Seeking Refrigerants”). Although it would have been obvious to the skilled artisan to have combined the HFO-1234yf refrigerant with other known refrigerants that have substantially higher flammability, the skilled artisan would have a reason and the skill to optimize the concentrations of each material to minimize the flammability, particularly because the particular issues with respect to flammability were known in the art at the time of the invention and the testing of prospective refrigerants for these properties was routine in the art at the time of the invention. Id. Accordingly, we affirm the Examiner’s rejection of claim 70 under 35 U.S.C. § 103(a) as obvious over Inagaki in view of Magid, Acura and Patentee’s admission, or Bivens. DECISION In sum, we affirm all of the Examiner’s rejections on appeal. Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 46 TIME PERIOD FOR RESPONSE In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the appeal may file a request for rehearing of the decision within one month of the date of: . . . [t]he original decision of the Board under § 41.77(a).” 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 section, for requesting further rehearing under paragraph (d) of this section, and for submitting comments under paragraph (c) 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. 7, July 2008). AFFIRMED Appeal 2015-006430 Reexamination Control 95/002,189 and 95/002,204 Patent US 7,534,366 B2 47 PATENT OWNER: HONEYWELL/FOX/BANNER PATENT SERVICES 115 TABOR ROAD – PO BOX 377 MORRIS PLAINS, NJ 07950 THIRD-PARTY REQUESTERS: PATRICK J. FLEIS RYAN KROMHOLZ & MANION, S.C. P.O. BOX 26618 MILWAUKEE, WI 53226 MARION P. METELSKI AMSTER, ROTHSTEIN & EBENSTEIN, LLP 90 PARK AVENUE 21ST FLOOR NEW YORK, NY 10016 cc