Trials@uspto.gov
`571.272.7822
`
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`
`
`
`
` Paper No. 13
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` Entered: September 2, 2016
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARKEMA INC. and ARKEMA FRANCE,
`Petitioner,
`
`v.
`
`HONEYWELL INTERNATIONAL INC.,
`Patent Owner.
`____________
`
`Case PGR2016-00011
`Patent 9,157,017 B2
`____________
`
`
`Before MICHAEL P. TIERNEY, GRACE KARAFFA OBERMANN, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`TIERNEY, Administrative Patent Judge.
`
`
`DECISION
`Institution of Post Grant Review
`37 C.F.R. § 42.208
`
`
`
`
`
`

`
`PGR2016-00011
`Patent 9,157,017 B2
`I.
`INTRODUCTION
`Arkema, Inc. and Arkema France (“Petitioner”), filed a Petition
`
`requesting an post grant review of claims 1–20 of U.S. Patent 9,157,017 B2
`(Ex. 1001, “the ’017 patent”). Paper 3 (“Pet.”). Patent Owner, Honeywell
`International, (“Patent Owner”) timely filed a Preliminary Response
`(Paper 12, “Prelim. Resp.”) to the Petition. We have jurisdiction under
`35 U.S.C. § 324.
`
`To institute a post grant review, we must determine that the
`information presented in the Petition, “if such information is not rebutted,
`would demonstrate that it is more likely than not that at least 1 of the claims
`challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the
`reasons set forth below, upon considering the Petition and the Preliminary
`Response, we conclude that the information presented in the Petition
`establishes that it is more likely than not that Petitioner will prevail in
`challenging claims 1–20 of the ’017 patent. We authorize a post grant
`review to be instituted as to those claims.
`
`Our factual findings and conclusions at this stage of the proceeding are
`based on the evidentiary record developed thus far. This decision to institute
`trial is not a final decision as to patentability of claims for which post grant
`review is instituted. Our final decision will be based on the full record
`developed during trial.
`
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`PGR2016-00011
`Patent 9,157,017 B2
`A. Related Proceedings
`The ’017 patent claims the benefit of a series of applications, the
`earliest of which was filed on October 25, 2002. Ex. 1001, 1:5–25. The
`’017 patent priority chain is depicted below:
`
`Id.; Prelim. Resp. 14. Although Patent Owner has not asserted the ’017
`patent in any currently pending proceedings, several applications in the
`
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`PGR2016-00011
`Patent 9,157,017 B2
`priority chain have been asserted and undergone reexamination. Patent
`Owner Mandatory Notices, Paper 11, 1–3.
`The ’017 patent also has been challenged in PGR2016-00012 and
`IPR2016-00643. Pet. 3.
`
`
`B. The ’017 Patent
`The ’017 patent is directed to the use of fluorine substituted olefins,
`including tetra- and penta-fluoropropenes, in a variety of applications.
`Ex. 1001, Abstract. For example, the fluorine substituted olefins are
`described as having use in methods of depositing catalysts, sterilizing
`articles, cleaning methods, applying medicaments, fire extinguishing, flavor
`formulations and inflating agents. Id. Although not mentioned in the ’017
`patent abstract, the specification states that a preferred aspect of the
`invention is directed to refrigerant compositions comprising at least one
`multi-fluorinated olefin. Id. at Field of the Invention, 1:29-34.
`Preferred fluorinated substituted olefins include compounds having
`the Formula I, XCFzR3-z, “where X is a C2 or a C3 unsaturated, substituted
`or unsubstituted, alkyl radical, each R is independently Cl, F, Br, I or H, and
`z is 1 to 3.” Id. at 3:45-50. The ’017 patent also states that preferred
`compositions include compounds of Formula II, depicted below:
`
`
`“where each R is independently Cl, F, Br, I or H[,] R' is (CR2)nY, Y is CRF2
`and n is 0 or 1.” Id. at 4:10-21. The patent goes on to state that “[i]n highly
`preferred embodiments, Y is CF3, n is 0 and at least one of the remaining Rs
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`PGR2016-00011
`Patent 9,157,017 B2
`is F.” Id. at 22–23. Hence, given that R can independently be F, Cl, Br, I or
`H, with at least one R being F, even the highly preferred embodiments of the
`invention according to Formula II encompass a significant number of
`substituted fluoro-propenes. The specification goes on to state that, in
`“certain highly preferred embodiments” the compositions comprise one or
`more tetrafluoropropenes and identifies HFO-1234ze (1,3,3,3-
`tetrafluoropropene) as particularly preferred. Id. at 4:58–63. Of note, the
`specification does not clarify what is meant by “certain” highly preferred
`embodiments comprise tetrafluoropropenes, although the discussion appears
`after a discussion of “highly preferred embodiments” having low toxicity
`where n is zero.
`The compositions of the ’017 patent, “particularly those comprising
`HFO-1234ze,” are said to not have a substantial negative affect on
`atmospheric chemistry with a Global Warming Potential (GWP) of
`preferably less than 500 and an Ozone Depletion Potential (ODP) of not
`greater than 0.05. Id. at 5:38–6:4.
`Low toxicity is said to be an advantageous property and the
`specification states that it was “surprisingly and unexpectedly found that
`certain of the compounds having a structure in accordance with the formulas
`described above [formulas I and II] exhibit a highly desirable low level of
`toxicity compared to other such compounds. Id. at 4:39–43. The
`specification states that “applicants believe that a relatively low toxicity
`level is associated with compounds of Formula II, preferably wherein Y is
`CF3, wherein at least one R on the unsaturated terminal carbon is H, and at
`least one of the remaining Rs is F.” Id. at 4:48–53. The specification goes
`on to state that in highly preferred embodiments, n is zero. Id. at 4:56–58.
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`PGR2016-00011
`Patent 9,157,017 B2
`Flammability is said to be another important property to be
`considered. The ’017 specification notes that many hydrofluorocarbons,
`which might otherwise be desirable for use in refrigerant compositions, are
`not nonflammable. Id. at 2:61–63. For example, the patent notes that 1,1,1-
`trifluoropropene (HFO-1243zf) is flammable and may not be viable for use
`in many applications. Id. at 2:63–67.
`Another property of particular importance in many applications is
`lubricant compatibility. Id. at 1:23–24. The specification states that it is
`highly desirable for refrigeration fluids to be compatible with the lubricant.
`Id. at 2:25–27. Lubricants tend to become clogged in evaporator coils and
`reduce system efficiency in the absence of solubility of the lubricant in the
`refrigeration liquid over a wide range of temperatures. Id. at 2:32–42.
`The specification describes a number of potential uses for the
`fluorinated olefin compositions. Heat transfer compositions are
`contemplated and it is generally preferred that refrigerant compositions
`comprise compounds in accordance with Formula I, and more preferably
`with Formula II, and even more preferably HFO-1234ze, in an amount of at
`least 50% by weight and more preferably at least about 70% by weight of
`the composition. Id. at 6:30–40. The ’017 specification states that in “many
`embodiments, it is preferred that the heat transfer compositions of the
`present invention comprise trans-HFO-1234ze.” Id. at 6:40–42. The
`specification also states that refrigerant compositions, especially those in
`vapor compression systems, include a lubricant in an amount from about 30
`to about 50% by weight of the composition. Id. at 6:48–55. Commonly
`used refrigerant lubricants include polyol esters (POEs) and polyalkylene
`glycols (PAGs), silicone oil, mineral oil, alkyl benzenes and poly(alpha-
`olefins). Id. at 6:64-7:3. The specification states that it is believed that
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`Patent 9,157,017 B2
`compositions of the invention are adaptable for use in many existing
`refrigeration systems with or without modification. Id. at 7:4–8. In certain
`embodiments it is preferred to use compositions, particularly compositions
`comprising a substantial proportion of, and in some embodiments consisting
`essentially of trans-HFO-1234ze, as a replacement for existing refrigerants,
`such as HFC-134a. Id. at 7:16–20. The specification further states that:
`The present methods, systems and compositions are thus
`adaptable for use in connection with automotive air
`conditioning systems and devices, commercial refrigeration
`systems and devices, chillers, residential refrigerator and
`freezers, general air conditioning systems, heat pumps, and the
`like.
`
`
`Id. at 7:38–43.
`The ’017 specification contains several examples. Example 1 is
`directed to a refrigeration/air conditioning cycle where data is provided for
`four HFO refrigerant compositions (1224ye, trans- and cis-1234ze and
`1234yf). Id. at 14:25–35. The specification states that 1224ye, trans- and
`cis-1234ze had better energy efficiency than HFC-134a and the compressor
`for these three refrigerants will produce advantageous discharge
`temperatures likely to lead to reduced maintenance problems. Id. at 14:36–
`43. Patent Owner, however, acknowledged in an opposition proceeding
`before the European Patent Office that Example 1 “is not an example of an
`automobile air-conditioning system.” Ex. 1002 ¶ 171; Ex. 1068 ¶ 11.28.
`Example 2 of the ’017 specification discusses the miscibility of HFO-
`1225ye and HFO-1234ze with various refrigeration lubricants. Ex. 1001,
`14:47–48. Lubricants tested include mineral oil, an alkyl benzene (Zerol
`150), two ester oils, a polyalkylene glycol (Goodwrench Refrigeration Oil
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`PGR2016-00011
`Patent 9,157,017 B2
`for 134a systems), and a poly(alpha olefin) oil (CP-6005-100). Id. at 14:48–
`52. According to the specification:
`The polyalkylene glycol and ester oil lubricants were judged to
`be miscible in all tested proportions over the entire temperature
`range, except that for the HFO-1225ye mixtures with
`polyalkylene glycol, the refrigerant mixture was found to be
`immiscible over the temperature range of −50° C. to −30° C.
`and to be partially miscible over from −20 to 50° C.
`
`Id. at 15:4–9. As such, one HFO was miscible with the tested polyalkylene
`glycol over the tested temperature range, while one HFO was not.
`Example 3 of the ’017 specification focuses on the compatibility of
`refrigerant compounds and polyalkylene glycol lubricating oils while in
`contact with metals used in refrigeration and air conditioning systems. Id. at
`15:15–22. The example discusses the compatibility of five separate
`compositions (HFO-1234ze and HFO-1243zf with GM Goodwrench PAG
`oil and HFO-1234ze, HFO-1234zf and HFO-1225ye with MOPAR-56 PAG
`oil). The specification reports that the tested compositions were stable in
`contact with aluminum, steel and copper. Id. at 15:29–43.
`
`
`C. Illustrative Claims
`The ’017 patent contains twenty claims, all of which are challenged
`by Petitioner. All of the claimed methods and compositions require a heat
`transfer composition with a low toxicity refrigerant suitable for use in an
`automobile air conditioning system that consists essentially of 2,3,3,3-
`tetrafluorpropene (HFO-1234yf). Ex. 1049, 6. Additionally, all the claims
`require a lubricant that consists essentially of polyalkylene glycol(s) (PAG).
`Id. Additionally, each claim is directed to a specific heat transfer
`application, automobile air conditioning. Id. Independent claims 1 and 12
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`PGR2016-00011
`Patent 9,157,017 B2
`and dependent claim 13 are illustrative of the challenged claims and are
`reproduced below:
`1. A method for producing an automobile air
`conditioning system for use with 2,3,3,3-tetrafluoropropene
`(HFO-1234yf) comprising:
`(a) providing an automobile vapor compression air
`conditioning system usable with refrigerant 1,1,1,2-
`tetrafluoroethane (HFC-134a) and having at least one
`compressor and at least one condenser; and
`(b) providing a heat transfer composition in said system,
`said heat transfer composition consisting essentially of:
`(i) at least about 50% by weight of a low toxicity
`refrigerant suitable for use in automobile air conditioning
`systems, said refrigerant consisting essentially of HFO-1234yf;
`and
`
`(ii) lubricant consisting essentially of polyalkylene
`glycol(s), and
`wherein (1) said condenser is operable with said
`refrigerant in a temperature range that includes 150° F. and (2)
`said system when operating at a condenser temperature of 150°
`F. achieves a capacity relative to HFC-134a of about 1 and a
`Coefficient of Performance (COP) relative to HFC-134a of
`about 1.
`
`12. A stable heat transfer composition for use in an
`automobile air conditioning system of the type having a
`condenser operating in a temperature range that includes about
`150° F., said heat transfer composition consisting essentially of:
`(i) at least about 50% by weight of a low toxicity
`refrigerant suitable for use in automobile air conditioning
`systems, said refrigerant consisting essentially of 2,3,3,3-
`tetrafluoropropene (HFO-1234yf); and
`(ii) lubricant consisting essentially of polyalkylene
`glycol(s),
`wherein said refrigerant under the conditions of said
`condenser operating at about 150° F. in said automobile air
`conditioning system has a capacity relative to HFC-134a of
`about 1 and a Coefficient of Performance (COP) relative to
`HFC-134a of about 1, and wherein said heat transfer
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`PGR2016-00011
`Patent 9,157,017 B2
`composition is stable in contact with aluminum, steel and
`copper.
`
`13. The heat transfer composition of claim 12 wherein
`said heat transfer composition has one liquid phase over the
`temperature range of from about −30° C. to about +50° C.
`
`D. Prosecution History of the ’017 Patent
`
`Patent Owner filed the application that led to the issuance of the ’017
`patent on March 24, 2014. Ex. 1001. Concurrent with the filing of the
`application, Patent Owner filed a preliminary amendment cancelling all
`previous claims and adding claims that all relate to the use in automobile air
`conditioning of a heat transfer composition consisting essentially of HFO-
`1234yf and PAG lubricant. Ex. 1047, 3–6; Ex. 1049, 6, 14. Patent Owner,
`in response to an obviousness rejection to pending claims, informed the
`Office that the “field of automotive air conditioning is a distinct technical
`field within the broader, general field of heating and cooling applications”
`and has “specific technical requirements compared to other heating and
`cooling applications.” Ex. 1049, 7. Patent Owner identified the distinct
`requirements as including: 1) a strict prohibition on use of toxic refrigerant
`materials; 2) strict restriction on compressor size, which places a restriction
`on refrigerant capacity and COP; 3) ability to effectively operate at high
`condenser temperatures; 4) restrictions on refrigerant flammability; and 5)
`high stability. Id. at 7–8. Additionally, Patent Owner stated that the
`invention met the requirements and also provided 6) acceptable and effective
`refrigerant/lubricant miscibility for use without an oil separator; 7) superior
`Global Warming Potential; and 8) low Ozone Depletion Potential (ODP).
`Id. at 13–14. The specific technical characteristics were said to have a
`“significant impact on the properties required, and increase the difficulty and
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`PGR2016-00011
`Patent 9,157,017 B2
`unpredictability of choosing an effective heat transfer fluid for use in an
`automobile system.” Id. at 12.
`Patent Owner informed the Office that the claimed subject matter
`proceeded in a direction opposite to conventional teachings “in a very
`unpredictable art.” Id. at 13. Patent Owner contended that those skilled in
`the art had no basis for making the selections that the inventors made. Id.
`at 14. Among other things, Patent Owner stated that the claimed provided
`an unexpectedly safe air conditioning system having low toxicity, low
`flammability and superior stability. Id. at 20-24. As to flammability, Patent
`Owner stated that, “[u]npredictably and unexpectedly, HFO-1234-yf has a
`burning velocity 11.5 times below the burning velocity of HFO-1234zf,
`which is acceptable for use in automobile air conditioning.” Id. at 22.
`Patent Owner stated explicitly that the stability is something that “could not
`have been predicted or expected.” Id. at 24. Further, Patent Owner
`represented that the drop-in nature of HFO-1234yf was also unexpected and
`advantageous. Id. at 25.
`
`E. Prior Art Relied Upon and Grounds for Challenge
`
`In the ground challenging the claims, Petitioner relies on the
`following prior art:
`
`Japanese Patent App. Publication No. JP H4-110388 to Inagaki
`et al., dated April 10, 1992 (English Translation) (“Inagaki”) (Ex. 1012)
`
`S. Uemura et al., Characteristics of HFC Refrigerants, INT’L
`REFRIGERATION & AIR CONDITIONING CONF., 385 (1992)
`
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`PGR2016-00011
`Patent 9,157,017 B2
`(“Uemura”) (Ex. 1014)
`
`Robert E. Tapscott, Tropodegradable Fluorocarbon Replacements for
`Ozone-Depleting and Global-Warming Chemicals, 101 J. FLUORINE
`CHEMISTRY 209 (2000) (“Tapscott”) (Ex. 1015)
`
`U.S. Patent 4,755,316 Nov. 29, 2011 (“Magid”) (Ex. 1008)
`
`
`Petitioner contends that the challenged claims are unpatentable based
`on the following grounds (Pet. 44–77):
`References
`Basis
`
`Claims challenged
`
`Inagaki in view of Tapscott,
`Uemura and Magid
`
`
`
`§ 103
`
`1–20
`
`Level of Ordinary Skill in the Art and Field of Invention
`F.
`The challenged claims are directed to the field of automobile air
`conditioning, a field that is a distinct technical field within the
`broader, general field of heating and cooling applications. Ex. 1002,
`¶¶ 157–158, 182, 198, 217, 219, 244; Ex. 1049, 7. Based on the
`current record, we find that the field of automobile air conditioning is
`an unpredictable art. Ex. 1002, ¶ 512; Ex. 1049, 13–14; Ex. 2001,
`¶¶ 14, 59; Ex. 2021. This finding is premised, in part, on the fact that
`there are specific technical features associated with automobile air
`conditioning including 1) a strict prohibition on use of toxic
`refrigerant materials; 2) strict restriction on compressor size, which
`places a restriction on refrigerant capacity and COP; 3) ability to
`effectively operate at high condenser temperatures; 4) restrictions on
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`PGR2016-00011
`Patent 9,157,017 B2
`refrigerant flammability; and 5) high stability. Ex. 1049, 7–8 and
`Ex. 1050, 8. Additionally, one of ordinary skill in the art would have
`desired a refrigerant composition having effective refrigerant/lubricant
`miscibility and sought to provide a composition exhibiting superior
`GWP and low ODP environmental properties. Ex. 1049, 14–15.
`Petitioner’s declarant, Dr. Brown, testifies that, a person of
`ordinary skill in connection with the ’017 patent is one who evaluates,
`designs, and develops new refrigerants for use as heat transfer fluids.
`Ex. 1002, ¶ 149. Such a person would have had a Ph.D. in Chemistry,
`Chemical Engineering, Mechanical Engineering, Material Science, or
`in a related field or discipline and at least 3 to 5 years of experience or
`alternatively an M.S. degree and 5 to 10 years of experience. Id.
`Patent Owner’s declarant, Dr. Bivens, provides a similar description
`of the person of ordinary skill in the art, stating that such a person
`would have a bachelor of science, such as Chemical Engineering or
`Chemistry, and five years of work experience or a Ph.D. or masters of
`science degree and 2–3 years of experience. Ex. 2001, ¶ 23.
`The parties’ definitions of one of ordinary skill in the art are
`substantially the same and neither party states how any difference in
`the parties’ articulated levels of skill impacts the proceeding. For
`purpose of this decision, we hold that the level of ordinary skill in the
`art is reflected by the prior art of record. Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the
`appropriate level of ordinary skill in the art).
`
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`PGR2016-00011
`Patent 9,157,017 B2
`
`II. Analysis
`
`A.
`Claim Interpretation
`In a post grant review, the Board interprets claim terms in an
`
`unexpired patent according to the broadest reasonable construction in light
`of the specification of the patent in which they appear. 37 C.F.R. § 200(b).
`Under that standard, and absent any special definitions, we give claim terms
`their ordinary and customary meaning, as would be understood by one of
`ordinary skill in the art at the time of the invention. In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for
`claim terms must be set forth with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner identifies several claim terms (usable with refrigerant R-
`134a, low toxicity refrigerant, no substantial acute toxicity, COP relative to
`HFC-134a and stable) in the challenged claims and provides definitions for
`those terms. Pet. 24–28. Patent Owner does not dispute Petitioner’s
`definitions for the terms but provides definitions for two additional terms
`(heat transfer composition consisting essentially of, one liquid phase over
`the temperature range of from about −30° C. to about +50° C). Prelim.
`Resp. 10–11.
`We determine that it is unnecessary to construe explicitly the claim
`terms for purposes of this Decision. See Wellman, Inc. v. Eastman Chem.
`Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be
`construed ‘to the extent necessary to resolve the controversy.’”) (quoting
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999)).
`
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`B.
`Post Grant Review Eligibility
`Post-grant reviews are available only for patents “described in
`section 3(n)(1)” of the Leahy-Smith America Invents Act (“AIA”), Pub L.
`No. 112-29, 125 Stat. 284 (2011). AIA § 6(f)(2)(A). These patents are
`those that issue from applications “that contain[] or contained at any time . . .
`a claim to a claimed invention that has an effective filing date as defined in
`section 100(i) of title 35, United States Code, that is on or after” “the
`expiration of the 18-month period beginning on the date of the enactment
`of” the AIA. AIA § 3(n)(1). Because the AIA was enacted on September
`16, 2011, post-grant reviews are available only for patents that issue from
`applications that at one point contained at least one claim with an effective
`filing date on or after March 16, 2013, with “effective filing date” having the
`definition given to it by 35 U.S.C. § 100(i). Our rules require that each
`petitioner for post-grant review certify that the challenged patent has an
`effective filing date that renders the patent available for post-grant review.
`37 C.F.R. § 42.204(a) (“The petitioner must certify that the patent for which
`review is sought is available for post-grant review . . . .”).
`The effective filing date of an application for a patent on an invention
`is “the filing date of the earliest application for which the . . . application is
`entitled, as to such invention, to a right of priority under section 119, 365(a),
`365(b), 386(a), or 386(b) or to the benefit of an earlier filing date under
`section 120, 121, 365(c), or 386(c).” 35 U.S.C. § 100(i)(1)(B). In the event
`that the application is not entitled to any earlier filing date or right of
`priority, the effective filing date is “the actual filing date of the . . .
`application for the patent containing a claim to the invention.” 35 U.S.C.
`§ 100(i)(1)(A).
`Petitioner contends that the ’017 patent claims are not entitled to
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`support from a pre-March 16, 2013 priority application, and thus are limited
`to an effective filing date of March 26, 2014 and available for post-grant
`review. Pet. 20. According to Petitioner, Patent Owner’s earlier filed
`priority applications do not describe the claimed subject matter of an
`automobile air conditioning refrigerant composition consisting essentially of
`HFO-1234yf in combination with a lubricant consisting essentially of PAG.
`Id. at 22–33 and 36–37. Additionally, Petitioner contends that the earlier
`applications do not enable the subject matter of the ’017 patent claims. Id.
`at 33–36. Patent Owner disagrees with Petitioner’s analysis and states that
`the earlier filed ’552 application, which issued as the ’451 patent, is
`sufficient to establish an effective filing date of April 29, 2004. Prelim.
`Resp. 12–45.
`
`
`1. Legal Principles for Written Description
`
`The purpose of the written description requirement is to ensure that
`the inventor had possession, as of the filing date of the application relied on,
`of the specific subject matter later claimed by the inventor. Vas-Cath Inc. v.
`Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991). The inventor can
`demonstrate possession by such descriptive means as words, structures,
`figures, diagrams, formulas, etc., that fully set forth the claimed invention.
`The inventor, however, needs to show that the inventor was “in possession”
`of the invention by describing the invention, with all its claimed limitations,
`not simply that which makes it obvious. Lockwood v. Am. Airlines, Inc., 107
`F.3d 1565, 1571–72 (Fed. Cir. 1997) (written description requirement is not
`satisfied for subject matter that is not disclosed but would be obvious over
`what was expressly disclosed). Nor is the written description satisfied by a
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`“mere wish or plan” for obtaining the invention. Centocor Ortho Biotech,
`Inc. v. Abbott Labs., 636 F.3d 1341, 1348 (Fed. Cir. 2011) (quoting Regents
`of the Univ. of Ca. v. Eli Lilly & Co., 119 F.3d 1559, 1566 (Fed. Cir. 1997)).
`Requiring possession of the invention, and not that which makes it obvious,
`ensures that the claimed invention does not overreach the scope of the
`inventor’s contribution to the field as described in the patent specification.
`Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir. 2000). Adequacy
`of the written description is a question of fact. Ariad Pharm., Inc. v. Eli
`Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
`
`
`2. The Earlier Filed Applications Do Not Demonstrate
`Possession of the Claimed Automobile Air
`Conditioning Composition or Methods
`Petitioner contends that each of the ’017 patent claims is confined to
`the “distinct technical field” of automobile air conditioning and that none of
`the earlier filed applications demonstrate possession of the now-claimed
`subject matter. Pet. 32. Specifically, on the same day that the application
`that led to the ’017 patent was filed, Patent Owner filed a preliminary
`amendment canceling all previous claims and adding claims that all relate to
`automobile air conditioning having a heat transfer composition consisting
`essentially of HFO-1234yf and PAG lubricant. Pet. 30, Ex. 1047, 3–6, Ex.
`1049, 6, 14. Later, in response to an obviousness rejection, Patent Owner
`added its “low-toxicity refrigerant” limitation. Pet. 31, Ex. 1050, 7.
`
`
`a. Adaptable for Use in Automobile Air
`Conditioning
`Petitioner contends that the only reference to automobile air
`conditioning in the earlier filed application is that “[t]he present methods,
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`systems and compositions are thus adaptable for use in connection with
`[AAC]” as well as other refrigeration uses. Pet. 33 (citing Ex. 1001, 7:38–
`40).1 Dr. Brown testifies that a person of ordinary skill in the art would
`understand “adaptable for use” as meaning that the compositions generally
`described could potentially be used in automobile air conditioning as well as
`several other uses, such as commercial refrigeration systems and heat
`pumps, but that “unidentified changes would need to be made to adapt them
`for such use.” Ex. 1002, ¶ 167. Dr. Brown testifies that the European Patent
`Office reached the same conclusion concerning the “adaptable for use”
`language. Id. (citing Ex. 1069 ¶ 5.1.3).
`Patent Owner disagrees with Petitioner’s analysis stating that the
`claims do not impose technically onerous requirements as to how the
`compositions are to be used in an automobile air conditioner and that the
`specification need not include well known details of how to use the
`composition. Prelim. Resp. 16. Patent Owner states that its specification
`directs the skilled artisan to use its compositions in many such systems, with
`or without system modification. Id. at 18–19. Patent Owner cites Dr.
`
`
`1 The specifications of the ’017 patent’s three immediately prior applications
`going back to the ’525 application, filed on April 29, 2004 are said to be
`identical to the ’017 patent specification. Pet. 25, n. 1. For reasons of
`convenience, Petitioner cites to the ’017 patent with the understanding that
`the same disclosure is present in the three earlier applications. Id. Similarly,
`for reasons of convenience, Patent Owner cites to the specification of the
`’451 patent, which issued from the ’525 application, rather that citing to the
`’525 application. Prelim. Resp., e.g., 14, 17. As we are unaware of any
`substantive difference between the ’017 patent specification and the three
`earlier filed applications, for reasons of convenience we cite to the ’017
`patent specification with the understanding that the citations apply to the
`earlier filed specifications going back to the ’525 application.
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`Bivens’ testimony for the proposition that one skilled in the art would
`recognize that the inventors were in possession of the compositions for use
`in automobile air conditioning. Id. at 19; Ex. 2001, ¶ 48. Dr. Bivens also
`testifies that one would have understood that, depending on the system being
`used, no adaptation would be necessary to use the claimed compositions. Id.
`¶ 47. While Dr. Bivens does testify that one skilled in the art would
`understand that the inventors were in possession of the claimed subject
`matter, Dr. Bivens also states that it was an “unexpected discovery that the
`compositions of the claimed invention can be used in automobile air
`conditioning.” Id. ¶ 48. Dr. Bivens also testifies that automobile air
`conditioning involves a complex matrix of required and unpredictable
`properties, including toxicity, flammability, stability and acceptable
`refrigerant miscibility. Id. ¶ 14.
`Patent Owner informed the Office that automobile air conditioning is
`a “distinct technical field within the broader, general field of heating and
`cooling applications” and has “specific technical requirements compared to
`other heating and cooling applications.” Ex. 1049, 7; Ex. 1050, 8–9; Ex.
`2001, ¶ 14. Patent Owner has also repeatedly informed this Office that
`certain technical requirements of automobile air conditioning were
`unpredictable and the very field of automobile air conditioning was a “very
`unpredictable art.” Id. at 13, 22; Ex. 2001, ¶¶ 14, 59. Based on the record
`presented, we find that Petitioner has demonstrated that Patent Owner’s
`single passing reference that its methods, systems and compositions were
`adaptable for use with automobile air conditioning as well as several other
`uses is insufficient to demonstrate possession of the claimed subject matter
`given Patent Owner’s representations that automobile air conditioning has
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`specific technical requirements distinct from other heat transfer methods and
`that the field of automobile air conditioning is very unpredictable.
`
`
`b. Example 1
`
`Petitioner’s witness Dr. Brown testifies that one of ordinary skill in
`the art would not have understood Example 1 as demonstrating possession of
`the claimed subject matter as Example 1 is not an example of an automobile
`air-conditioning system. Ex. 1002, ¶ 171. Further, Dr. Brown states that
`Example 1, while including data on four refrigerants including HFO-1234yf,
`only discussed the advantages of the HFO-1225ye and cis- and trans-HFO-
`1234ze. Id. Dr. Brown testifies that one of ordinary skill in the art reading
`Example 1 in the context of the specification would have understood that a
`relative COP of greater than 1 was required and that HFO-1234yf was
`intentionally excluded as it had a COP of less than 1 and would not have
`provided the “competitive advantage of an energy basis.” Id.
`Patent Owner contends that a skille