Please find below and/or attached an Office communication concerning this application or proceeding.

Transcription

1 UNITED STA TES p A TENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/308,327 10/19/2009 Robert E. Low PCT US /21/2016 RYAN KROMHOLZ & MANION, S.C. POST OFFICE BOX MILWAUKEE, WI ART UNIT 3744 EXAMINER ZEC,FILIP PAPER NUMBER NOTIFICATION DATE DELIVERY MODE 06/21/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following address( es): RKMIPPatent@rkmiplaw.com PTOL-90A (Rev. 04/07)

2 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT E. LOW and STUART CORR Appeal Technology Center 3700 Before JENNIFER D. BAHR, EDWARD A. BROWN, and CHARLES N. GREENHUT, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Robert E. Low and Stuart Corr (Appellants) appeal under 35 U.S.C. 134(a) from the Examiner's decision rejecting claims We have jurisdiction under 35 U.S.C. 6(b ). An oral hearing in accordance with 37 C.F.R was held on June 14, We REVERSE. 1 The present appeal is taken from the Non-Final Action dated April 3, 2014 (hereinafter "Non-Final Action" or "Non-Final Act.").

3 matter. THE CLAIMED SUBJECT MATTER Claim 26, reproduced below, is illustrative of the claimed subject 26. A method of drying a fluid comprising a fluoropropene and water, the method comprises the step of: contacting the fluid with a desiccant comprising a molecular sieve having openings which have a size across their largest dimension of from about 3 A to about 5 A, and removing water from the fluoropropene when contacting the fluid with said desiccant. REJECTIONS I. Claims 26-31, , 46, and 47 stand rejected under 35 U.S.C. 102(b) as anticipated by Corr (US 2003/ Al, pub. Aug. 21, 2003). II. Claim 49 stands rejected under 35 U.S.C. 102(b) as anticipated by or, in the alternative, under 35 U.S.C. 103(a) as unpatentable over Corr. 2 III. IV. Claims 32 and 33 stand rejected under 35 U.S.C. 103(a) as unpatentable over Corr and Thomas '839 (US 2004/ Al, pub. May 13, 2004). Claims 34 and 35 stand rejected under 35 U.S.C. 103(a) as unpatentable over Corr and Thomas '966 (US 5,454,966, iss. Oct. 3, 1995). 2 Although the Examiner's rejection is based on anticipation under 35 U.S.C. 102(b) or, in the alternative, on obviousness under 35 U.S.C. 103(a), the rejection does not articulate any rationale as to why the claimed subject matter would have been obvious, if it is not anticipated. See Non-Final Act. 7. 2

4 V. Claims 36 and 37 stand rejected under 35 U.S.C. 103(a) as unpatentable over Corr and Cavestri (US 5,742,066, iss. Apr. 21, 1998). VI. VII. Claims stand rejected under 35 U.S.C. 103(a) as unpatentable over Corr and Thomas '444 (US 6,589,444 B2, iss. July 8, 2003). Claims 44, 45, and 48 stand rejected under 35 U.S.C. 103(a) as unpatentable over Corr and Shankland (US 2006/ Al, pub. Mar. 2, 2006). DISCUSSION All of the Examiner's rejections are grounded in pertinent part on the Examiner's finding that Corr's fluid R-134a inherently comprises water. Non-Final Act. 4. In support of this finding, the Examiner directs our attention to a table from an HV AC handbook 3 and to an engineering material specification for molecular sieve desiccant WSH-M99Bl 78-A from Ford Motor Company. 4 With respect to the question of whether refrigerant R- 134a inherently contains water, at best, the evidence cited by the Examiner shows a recognition in the art that refrigerants such as R-134a may contain 3 Non-Final Act. 3, 7. The reproductions of the table on pages 3 and 7 of the Non-Final Action contained in the electronic file for the present application are not legible, but the table appears to set forth acceptance criteria for moisture in various refrigeration fluids, including R-134a. 4 Ans. 12 (citing FORD WSH-M99Bl 78-A: MOLECULAR SIEVE DESICCANT TO BE USED WITH FORD WSS-M99Pl 111-A (Ford Motor Co. 2002), retrieved from A copy of this reference was submitted with Appellants' Appeal Brief. 3

5 water, as well as an interest in keeping water content at or below acceptable limits and the use of desiccants to aid in keeping water content within acceptable limits. However, this is not sufficient to establish, by a preponderance of the evidence, that water is inherently present in R-13 4a. 5 "Inherency... may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotation marks omitted). Accordingly, we do not sustain the Examiner's rejections, all of which are grounded in part on an unsupported finding of inherency of the presence of water in Corr's fluid R- 134a. 5 In addressing the statement in the Corr Declaration (Declaration of Stuart Corr, dated Feb. 18, 2013, i-f 15) that a zeolite adsorbent will not necessarily act to remove water from a fluid, the Examiner cites Fujita (US 5,910,161, iss. June 8, 1999) as "extrinsic evidence, which teaches the use of a synthetic zeolite [having holes extending to molecule absorbing cavities of diameter equal to or less than 3.3 angstroms, which is smaller than a molecule of refrigerant and larger than a molecule of water,] to remove water from the refrigerant comprising R-134a." Ans. 13 (citing Fujita, col. 3, ). We make no finding as to whether Fujita might anticipate or render obvious the subject matter of any of the claims involved in this appeal, as the Examiner has not rejected the claims on this basis. "The Board's primary role is to review the adverse decision as presented by the Examiner, and not to conduct its own separate examination of the claims. Further, since the exercise of authority under 3 7 CPR (b) is discretionary, no inference should be drawn from a failure to exercise that discretion." Manual of Patent Examining Procedure (MPEP), 9th ed., rev. 7, Nov. 2015,

6 DECISION The Examiner's decision rejecting claims is reversed. REVERSED 5