Federal Circuit vacates PTAB Honeywell decision
The US Court of Appeals for the Federal Circuit has vacated a decision by the Patent Trial and Appeal Board (PTAB) because of the board’s “flawed” analysis.
In a majority decision, handed down yesterday, August 1, the Federal Circuit vacated and remanded a ruling which invalidated a patent owned by multinational Honeywell.
The patent concerned is US number 7,534,366, called “Compositions containing fluorine substituted olefins”.
It covers a heat transfer composition that is used as a refrigerant in air conditioning systems and is directed to the use of 1,1,1,2-tetrafluoropropene (HFO-1234yf)—an unsaturated hydrofluorocarbon (HFC) compound.
Chemical company Mexichem Amanco and air conditioning manufacturer Daikin Industries had filed requests for inter partes reexamination of the ‘366 patent, which the US Patent and Trademark Office granted and merged into a consolidated proceeding.
The examiner rejected a number of claims of the ‘366 patent as obvious over Japanese patent number H04-110388 (Inagaki), in view of either US patent number 4,755,316 (Magid), or US patent number 6,783,691 (Bivens), or Acura Service Bulletin number 92-027 (Acura) plus Honeywell’s admissions.
During original prosecution of the ‘366 patent, Honeywell had stated that a well-known lubricant, ND-8, meets the structural requirements of the claimed lubricant.
The examiner relied on this statement by Honeywell in combination with Acura, which teaches the use of ND-8 with saturated HFC refrigerants.
Honeywell appealed against the examiner’s rejection decision, claiming that Inagaki doesn’t “teach the use of HFO-1234yf with any particular lubricant, much less a PAG lubricant, and that such a combination would not have been obvious to one of ordinary skill in the art”.
But the board affirmed the examiner’s findings, so Honeywell appealed to the Federal Circuit.
Circuit Judge Alan Lourie, on behalf of the court, said: “The board committed legal error by improperly relying on inherency to find obviousness and in its analysis of motivation to combine the references.”
According to the Federal Circuit, the PTAB’s analysis was “internally inconsistent”.
The board had dismissed Honeywell’s evidence regarding the “unpredictability and unexpected properties” of the claimed combination by calling them “inherent” and saying they were of non-patentable weight, while crediting the same evidence later on and “conceding that it persuasively established the ‘overall unpredictability’ in the art”.
The PTAB then dismissed it for other reasons.
“We have previously stated 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,” said Lourie.
The case was vacated and remanded.
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