Honeywell prevails in appeal to CAFC of PTAB ruling; CAFC accuses PTAB of "reverse reasoning"
In Honveywell v MEXICHEM AMANCO HOLDING S.A. , the CAFC was critical of PTAB's analysis:
Honeywell International, Inc. (“Honeywell”) appeals from a decision of the U.S. Patent and Trademark Office (“the PTO”) Patent Trial and Appeal Board (“the Board”) affirming the Examiner’s rejection, in two merged inter partes reexaminations, of claims 1–26, 31–37, 46–49, 58, 59, 61–68, 70–75, 80, and 81 of U.S. Patent 7,534,366 (“the ’366 patent”) under 35 U.S.C. § 103. See Mexichem Amanco Holding S.A. De C.V. v. Honeywell Int’l Inc., No. 2015-006430, 2016 WL 1254603 (P.T.A.B. Mar. 29, 2016) (“Decision”). Because the Board erred in its analysis, and hence its decision, we vacate and remand.
Relevant to some earlier discussion of inherency on IPBiz, the CAFC pointed to an error by the Board related to inherency:
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. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (internal quotation marks omitted) (quoting In re Spormann, 363 F.2d 444, 448 (1966)); see also PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (distinguishing a prior case finding obviousness based on inherency because, in that case, “neither party disputed that the [claimed features] were expected in light of the dosages disclosed in the prior art” (emphasis added)).
What is important regarding properties that may be inherent, but unknown, is whether they are unexpected. All properties of a composition are inherent in that composition, but unexpected properties may cause what may appear to be an obvious composition to be nonobvious. See, e.g., In re Papesch, 315 F.2d 381, 391 (C.C.P.A. 1963) (emphasizing that “[f]rom the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing,” and yet in comparing the similarity of the one compound to another, “[t]here is no basis in law for ignoring any property in making such a comparison”). Thus, the Board here, in dismissing properties of the claimed invention as merely inherent, without further consideration as to unpredictability and unexpectedness, erred as a matter of law.
IPBiz had discussed this issue in the July 2017 post Comments on inherency in the Millennium decision [ 2017 U.S. App. LEXIS 12702 ] :
As pointed out in a 2012 post in IPBiz on In re Daniels:
Appellants are correct insofar as that a retrospective (retroactive or backwards) employment of inherency by the Solicitor is incorrect in a § 103 analysis. Appellants are also correct that employment of inherency is incorrect in a § 103 analysis when it is not known in the art that the inherent part is in fact inherent. Newell, 891 F.2d at 899 quoting In re Spormann, 363 F.2d 444 (C.C.P.A. 1966), (“That which may be inherent is not necessarily known. Obviousness cannot be predicated on what is unknown.”).
See Inherency in an obviousness rejection
See also RIJCKAERT, 9 F.3d 1531
Although one can discuss "objectively obvious," the key analytical point is whether the compound and its properties were known (or reasonably foreseeable).
**The CAFC in Honeywell additionally found internal inconsistency in the Board's reasoning:
As an initial matter, we find the Board’s analysis to be internally inconsistent. Early in its analysis, the Board rejected Honeywell’s argument concerning unexpected results and its argument that the unpredictability of the art weighs against finding a motivation to combine the references with a reasonable expectation of success. The Board found that the claimed combination’s stability/miscibility is an inherent property of HFO-1234yf and thus cannot confer patentable weight to the composition. See Decision, 2016 WL 1254603, at *8. Yet, when the Examiner used similar reasoning in responding to Honeywell’s evidence of secondary considerations, the Board rejected that reasoning, acknowledging that inherent properties must be considered if they demonstrate unexpected and nonobvious results. See id. at *13.
Thus, on the one hand, the Board dismissed Honeywell’s evidence regarding the unpredictability and unexpected properties of the claimed combination by characterizing them as “inherent” and of non-patentable weight. See id. at *8. On the other hand, the Board later credited that very same evidence, conceding that it persuasively established the “overall unpredictability” in the art, but then dismissed it for other reasons—namely, that
because of the unpredictability as to stability of the claimed combination, “routine testing” would have led to its discovery. Id. at *14–15. Each part of that internally inconsistent analysis was individually flawed. First, the Board erred in relying on inherency to dismiss evidence showing unpredictability in the art—evidence which it later acknowledged did persuasively demonstrate unpredictability—in order to reject Honeywell’s argument that one of ordinary skill would not have been motivated to combine the references with a reasonable expectation of success. See Decision, 2016 WL 1254603, at *8 (“[I]nherent properties of refrigerants include their specific toxicity [and] miscibility, . . . whether or not these properties are predictable.” (emphasis added)), *15 (“[T]he evidence presented by Patent Owner as a whole shows the unpredictability of how various refrigerants would have reacted with various lubricants.” (emphasis added)).
**Of evidentiary burdens:
Second, the Board erred in dismissing Honeywell’s evidence of unpredictability in the art when it stated that one of ordinary skill would no more have expected failure than success in combining the references. The Board made what amounts to a finding that one of ordinary skill would not have had a reasonable expectation of success in combining HFO-1234yf with PAG lubricants, but then seemed to make a burden-shifting argument that Honeywell did not persuasively establish that one of ordinary skill would have expected failure. Id. at *14–15 (“[T]he evidence presented by Patent Owner as a whole shows the unpredictability of how various refrigerants would have reacted with various lubricants. Thus, . . . the skilled artisan would no more have expected failure . . . than would have expected success.” (emphases added)). The Board rejected Honeywell’s evidence, concluding that, because there would have been no reasonable expectation of success, one of ordinary skill would have arrived at the claimed combination by mere “routine testing.” Id. (finding Honeywell’s stability data to be unpersuasive “in light of the evidence of routine testing and overall unpredictability as to stability in the art” (emphases added)). Thus, the Board seems to have determined that, because stability in the art was entirely unpredictable, one of ordinary skill would have made no predictions at all, but rather would have expected to undertake efforts to find an optimal combination and thus that “routine test
ing” would have led the skilled artisan to the claimed combination. Id.
In an inter partes reexamination involving obviousness, the standard is not whether the patent owner can persuasively show that one of ordinary skill would have expected failure. Rather, the burden is on the Examiner to show that one of ordinary skill would have had a motivation to combine the references with a reasonable expectation of success. See, e.g., Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed. Cir. 2015) (“When asserting that a claimed invention would have been obvious, that party must demonstrate . . . that a skilled artisan would have had reason to combine the teaching of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so.” (emphasis added) (internal quotation marks omitted)); Rambus Inc. v. Rea, 731 F.3d 1248, 1255 (Fed. Cir. 2013) (reversing the Board’s obviousness determination where “[t]he Board erroneously placed the burden on [the Patent Owner] to prove that its claims were not obvious” and emphasizing that “[i]n reexamination proceedings, ‘a preponderance of the evidence must show nonpatentability before the PTO may reject the claims of a patent application’” (citing Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)); In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining that while “the applicant must identify to the Board what the examiner did wrong, . . . the examiner retains the burden to show invalidity”)).
The Board made what amounts to a finding that one of ordinary skill would not have expected success, because Honeywell’s evidence persuasively established the “overall unpredictability” in the art, but then glossed over that finding with a “routine testing” rationale because Honeywell did not persuasively prove an expectation of failure. See Decision, 2016 WL 1254603, at *15.
That is reverse reasoning. Unpredictability of results equates more with nonobviousness rather than obviousness, whereas that which is predictable is more likely to be obvious. Thus, reasoning that one would no more have expected failure than success is not a valid ground for holding an invention to have been obvious. The Board erred in so holding.
**Of unexpected results:
Even when presenting evidence of unexpected results to “rebut” an Examiner’s prima facie case for obviousness, a patent owner need not demonstrate that one of ordinary skill would have expected failure—rather, the patent owner need only establish that the results would have been unexpected to one of ordinary skill at the time of invention, or “much greater than would have been predicted.” Leo Pharm. Prod., Ltd. v. Rea, 726 F.3d 1346, 1358 (Fed. Cir. 2013) (“Unexpected results are useful to show the improved properties provided by the claimed compositions are much greater than would have been predicted.” (internal quotation marks omitted)); In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.”); In re De Blauwe, 736 F.2d 699, 706 n.8 (Fed. Cir. 1984) (“A proper showing of unexpected results will rebut a prima facie case of obviousness.”).
**Of routine experimentation:
A further point regarding so-called “routine testing” is that § 103 provides that “[p]atentability shall not be negated by the manner in which the invention was made.” 35 U.S.C. § 103 (2012). That provision was enacted to ensure that routine experimentation does not necessarily preclude patentability. See, e.g., In re Saether, 492 F.2d 849, 854 (C.C.P.A. 1974) (“In his argument that ‘mere routine experimentation’ was involved in determining the optimized set of characteristics, the solicitor overlooks the last sentence of 35 U.S.C. § 103. . . Here we are concerned with the question of whether the claimed invention would
have been obvious at the time it was made to a person having ordinary skill in the art—not how it was achieved.” (internal citation omitted)); In re Fay, 347 F.2d 597, 602 (C.C.P.A. 1965) (“[W]e do not agree that ‘routine experimentation’ negatives patentability. The last sentence of section 103 states that ‘patentability shall not be negatived by the manner in which the invention was made.’”).
**The bottom line: the PTAB erred on inherency:
We thus conclude that the Board’s analysis was legally erroneous in its consideration of inherency, in concluding that unpredictability indicates obviousness, and in rejecting Honeywell’s objective evidence. Because finding a motivation to combine the references and consideration of objective evidence are fact questions, we vacate and remand for the Board to make determinations consistent with this opinion.
**A separate issue:
We next consider whether the Board relied on a new ground of rejection, when it raised Omure as a basis for dismissing Honeywell’s evidence of unexpected results.
(...)
When considering whether the Board issued a new ground of rejection, the “ultimate criterion” is “whether applicants have had fair opportunity to react to the thrust of the rejection.” Id. (internal quotation marks omitted). While the Board need not “recite and agree with the examiner’s rejection in haec verba” to avoid issuing a new ground of rejection, mere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection when the Board “relies on new facts and rationales not previously raised to the applicant by the examiner.” Id. (emphasis added) (internal quotation marks omitted). A new ground of rejection, however, generally will not be found based on the Board “further explain[ing] the examiner’s rejection” or the Board’s thoroughness in responding to an applicant’s argument. See In re Jung, 637 F.3d 1356, 1364–65 (Fed. Cir. 2011). Whether the Board relied on a new ground of rejection is a legal issue that we review de novo. Rambus, 731 F.3d at 1343.
(...)
Mexichem responds that the Board relied on Omure only to explain why Honeywell’s evidence of secondary considerations did not support a determination of nonobviousness. Ultimately, Mexichem argues, “the thrust of the Board’s analysis of secondary considerations was the same as that of the Examiner.” Appellee’s Br. 25–26.
We disagree. The Board’s analysis was different from that of the Examiner. During its analysis of Honeywell’s evidence of secondary considerations, the Board expressly stated that it “disagree[d]” with the Examiner’s treatment of that evidence. See Decision, 2016 WL 1254603, at *13 (“The Examiner determined that the stability data ‘do not contradict the fact that the stability is an inherent property of the refrigerant/lubricant pair.’ 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 . . . must be considered accordingly.” (emphasis added)). The Board instead concluded that Honeywell’s evidence persuasively shows the “overall unpredictability” of the art, but that Omure is evidence that one of ordinary skill would not have expected failure in combining HFO1234yf with PAG lubricants. Id. at *14–15. Accordingly, the Board rejected the Examiner’s conclusions regarding the evidence of unexpected results and instead relied on Omure to find the evidence unpersuasive.
The bottom line, another error by PTAB:
In sum, we conclude that the Board’s reliance on Omure constituted a new ground of rejection. We therefore vacate the Board’s decision and remand with instructions to designate its rejection as a new ground of rejection, if it intends to continue relying on Omure in evaluating Honeywell’s appeal. Honeywell separately argues that the Examiner erred in rejecting dependent claims 36, 37, 46–49, 70, and 75. However, because we find the Board’s analysis of the representative independent claim legally flawed, we need not address those separate arguments.
Honeywell International, Inc. (“Honeywell”) appeals from a decision of the U.S. Patent and Trademark Office (“the PTO”) Patent Trial and Appeal Board (“the Board”) affirming the Examiner’s rejection, in two merged inter partes reexaminations, of claims 1–26, 31–37, 46–49, 58, 59, 61–68, 70–75, 80, and 81 of U.S. Patent 7,534,366 (“the ’366 patent”) under 35 U.S.C. § 103. See Mexichem Amanco Holding S.A. De C.V. v. Honeywell Int’l Inc., No. 2015-006430, 2016 WL 1254603 (P.T.A.B. Mar. 29, 2016) (“Decision”). Because the Board erred in its analysis, and hence its decision, we vacate and remand.
Relevant to some earlier discussion of inherency on IPBiz, the CAFC pointed to an error by the Board related to inherency:
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. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (internal quotation marks omitted) (quoting In re Spormann, 363 F.2d 444, 448 (1966)); see also PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (distinguishing a prior case finding obviousness based on inherency because, in that case, “neither party disputed that the [claimed features] were expected in light of the dosages disclosed in the prior art” (emphasis added)).
What is important regarding properties that may be inherent, but unknown, is whether they are unexpected. All properties of a composition are inherent in that composition, but unexpected properties may cause what may appear to be an obvious composition to be nonobvious. See, e.g., In re Papesch, 315 F.2d 381, 391 (C.C.P.A. 1963) (emphasizing that “[f]rom the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing,” and yet in comparing the similarity of the one compound to another, “[t]here is no basis in law for ignoring any property in making such a comparison”). Thus, the Board here, in dismissing properties of the claimed invention as merely inherent, without further consideration as to unpredictability and unexpectedness, erred as a matter of law.
IPBiz had discussed this issue in the July 2017 post Comments on inherency in the Millennium decision [ 2017 U.S. App. LEXIS 12702 ] :
As pointed out in a 2012 post in IPBiz on In re Daniels:
Appellants are correct insofar as that a retrospective (retroactive or backwards) employment of inherency by the Solicitor is incorrect in a § 103 analysis. Appellants are also correct that employment of inherency is incorrect in a § 103 analysis when it is not known in the art that the inherent part is in fact inherent. Newell, 891 F.2d at 899 quoting In re Spormann, 363 F.2d 444 (C.C.P.A. 1966), (“That which may be inherent is not necessarily known. Obviousness cannot be predicated on what is unknown.”).
See Inherency in an obviousness rejection
See also RIJCKAERT, 9 F.3d 1531
Although one can discuss "objectively obvious," the key analytical point is whether the compound and its properties were known (or reasonably foreseeable).
**The CAFC in Honeywell additionally found internal inconsistency in the Board's reasoning:
As an initial matter, we find the Board’s analysis to be internally inconsistent. Early in its analysis, the Board rejected Honeywell’s argument concerning unexpected results and its argument that the unpredictability of the art weighs against finding a motivation to combine the references with a reasonable expectation of success. The Board found that the claimed combination’s stability/miscibility is an inherent property of HFO-1234yf and thus cannot confer patentable weight to the composition. See Decision, 2016 WL 1254603, at *8. Yet, when the Examiner used similar reasoning in responding to Honeywell’s evidence of secondary considerations, the Board rejected that reasoning, acknowledging that inherent properties must be considered if they demonstrate unexpected and nonobvious results. See id. at *13.
Thus, on the one hand, the Board dismissed Honeywell’s evidence regarding the unpredictability and unexpected properties of the claimed combination by characterizing them as “inherent” and of non-patentable weight. See id. at *8. On the other hand, the Board later credited that very same evidence, conceding that it persuasively established the “overall unpredictability” in the art, but then dismissed it for other reasons—namely, that
because of the unpredictability as to stability of the claimed combination, “routine testing” would have led to its discovery. Id. at *14–15. Each part of that internally inconsistent analysis was individually flawed. First, the Board erred in relying on inherency to dismiss evidence showing unpredictability in the art—evidence which it later acknowledged did persuasively demonstrate unpredictability—in order to reject Honeywell’s argument that one of ordinary skill would not have been motivated to combine the references with a reasonable expectation of success. See Decision, 2016 WL 1254603, at *8 (“[I]nherent properties of refrigerants include their specific toxicity [and] miscibility, . . . whether or not these properties are predictable.” (emphasis added)), *15 (“[T]he evidence presented by Patent Owner as a whole shows the unpredictability of how various refrigerants would have reacted with various lubricants.” (emphasis added)).
**Of evidentiary burdens:
Second, the Board erred in dismissing Honeywell’s evidence of unpredictability in the art when it stated that one of ordinary skill would no more have expected failure than success in combining the references. The Board made what amounts to a finding that one of ordinary skill would not have had a reasonable expectation of success in combining HFO-1234yf with PAG lubricants, but then seemed to make a burden-shifting argument that Honeywell did not persuasively establish that one of ordinary skill would have expected failure. Id. at *14–15 (“[T]he evidence presented by Patent Owner as a whole shows the unpredictability of how various refrigerants would have reacted with various lubricants. Thus, . . . the skilled artisan would no more have expected failure . . . than would have expected success.” (emphases added)). The Board rejected Honeywell’s evidence, concluding that, because there would have been no reasonable expectation of success, one of ordinary skill would have arrived at the claimed combination by mere “routine testing.” Id. (finding Honeywell’s stability data to be unpersuasive “in light of the evidence of routine testing and overall unpredictability as to stability in the art” (emphases added)). Thus, the Board seems to have determined that, because stability in the art was entirely unpredictable, one of ordinary skill would have made no predictions at all, but rather would have expected to undertake efforts to find an optimal combination and thus that “routine test
ing” would have led the skilled artisan to the claimed combination. Id.
In an inter partes reexamination involving obviousness, the standard is not whether the patent owner can persuasively show that one of ordinary skill would have expected failure. Rather, the burden is on the Examiner to show that one of ordinary skill would have had a motivation to combine the references with a reasonable expectation of success. See, e.g., Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed. Cir. 2015) (“When asserting that a claimed invention would have been obvious, that party must demonstrate . . . that a skilled artisan would have had reason to combine the teaching of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so.” (emphasis added) (internal quotation marks omitted)); Rambus Inc. v. Rea, 731 F.3d 1248, 1255 (Fed. Cir. 2013) (reversing the Board’s obviousness determination where “[t]he Board erroneously placed the burden on [the Patent Owner] to prove that its claims were not obvious” and emphasizing that “[i]n reexamination proceedings, ‘a preponderance of the evidence must show nonpatentability before the PTO may reject the claims of a patent application’” (citing Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)); In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining that while “the applicant must identify to the Board what the examiner did wrong, . . . the examiner retains the burden to show invalidity”)).
The Board made what amounts to a finding that one of ordinary skill would not have expected success, because Honeywell’s evidence persuasively established the “overall unpredictability” in the art, but then glossed over that finding with a “routine testing” rationale because Honeywell did not persuasively prove an expectation of failure. See Decision, 2016 WL 1254603, at *15.
That is reverse reasoning. Unpredictability of results equates more with nonobviousness rather than obviousness, whereas that which is predictable is more likely to be obvious. Thus, reasoning that one would no more have expected failure than success is not a valid ground for holding an invention to have been obvious. The Board erred in so holding.
**Of unexpected results:
Even when presenting evidence of unexpected results to “rebut” an Examiner’s prima facie case for obviousness, a patent owner need not demonstrate that one of ordinary skill would have expected failure—rather, the patent owner need only establish that the results would have been unexpected to one of ordinary skill at the time of invention, or “much greater than would have been predicted.” Leo Pharm. Prod., Ltd. v. Rea, 726 F.3d 1346, 1358 (Fed. Cir. 2013) (“Unexpected results are useful to show the improved properties provided by the claimed compositions are much greater than would have been predicted.” (internal quotation marks omitted)); In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.”); In re De Blauwe, 736 F.2d 699, 706 n.8 (Fed. Cir. 1984) (“A proper showing of unexpected results will rebut a prima facie case of obviousness.”).
**Of routine experimentation:
A further point regarding so-called “routine testing” is that § 103 provides that “[p]atentability shall not be negated by the manner in which the invention was made.” 35 U.S.C. § 103 (2012). That provision was enacted to ensure that routine experimentation does not necessarily preclude patentability. See, e.g., In re Saether, 492 F.2d 849, 854 (C.C.P.A. 1974) (“In his argument that ‘mere routine experimentation’ was involved in determining the optimized set of characteristics, the solicitor overlooks the last sentence of 35 U.S.C. § 103. . . Here we are concerned with the question of whether the claimed invention would
have been obvious at the time it was made to a person having ordinary skill in the art—not how it was achieved.” (internal citation omitted)); In re Fay, 347 F.2d 597, 602 (C.C.P.A. 1965) (“[W]e do not agree that ‘routine experimentation’ negatives patentability. The last sentence of section 103 states that ‘patentability shall not be negatived by the manner in which the invention was made.’”).
**The bottom line: the PTAB erred on inherency:
We thus conclude that the Board’s analysis was legally erroneous in its consideration of inherency, in concluding that unpredictability indicates obviousness, and in rejecting Honeywell’s objective evidence. Because finding a motivation to combine the references and consideration of objective evidence are fact questions, we vacate and remand for the Board to make determinations consistent with this opinion.
**A separate issue:
We next consider whether the Board relied on a new ground of rejection, when it raised Omure as a basis for dismissing Honeywell’s evidence of unexpected results.
(...)
When considering whether the Board issued a new ground of rejection, the “ultimate criterion” is “whether applicants have had fair opportunity to react to the thrust of the rejection.” Id. (internal quotation marks omitted). While the Board need not “recite and agree with the examiner’s rejection in haec verba” to avoid issuing a new ground of rejection, mere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection when the Board “relies on new facts and rationales not previously raised to the applicant by the examiner.” Id. (emphasis added) (internal quotation marks omitted). A new ground of rejection, however, generally will not be found based on the Board “further explain[ing] the examiner’s rejection” or the Board’s thoroughness in responding to an applicant’s argument. See In re Jung, 637 F.3d 1356, 1364–65 (Fed. Cir. 2011). Whether the Board relied on a new ground of rejection is a legal issue that we review de novo. Rambus, 731 F.3d at 1343.
(...)
Mexichem responds that the Board relied on Omure only to explain why Honeywell’s evidence of secondary considerations did not support a determination of nonobviousness. Ultimately, Mexichem argues, “the thrust of the Board’s analysis of secondary considerations was the same as that of the Examiner.” Appellee’s Br. 25–26.
We disagree. The Board’s analysis was different from that of the Examiner. During its analysis of Honeywell’s evidence of secondary considerations, the Board expressly stated that it “disagree[d]” with the Examiner’s treatment of that evidence. See Decision, 2016 WL 1254603, at *13 (“The Examiner determined that the stability data ‘do not contradict the fact that the stability is an inherent property of the refrigerant/lubricant pair.’ 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 . . . must be considered accordingly.” (emphasis added)). The Board instead concluded that Honeywell’s evidence persuasively shows the “overall unpredictability” of the art, but that Omure is evidence that one of ordinary skill would not have expected failure in combining HFO1234yf with PAG lubricants. Id. at *14–15. Accordingly, the Board rejected the Examiner’s conclusions regarding the evidence of unexpected results and instead relied on Omure to find the evidence unpersuasive.
The bottom line, another error by PTAB:
In sum, we conclude that the Board’s reliance on Omure constituted a new ground of rejection. We therefore vacate the Board’s decision and remand with instructions to designate its rejection as a new ground of rejection, if it intends to continue relying on Omure in evaluating Honeywell’s appeal. Honeywell separately argues that the Examiner erred in rejecting dependent claims 36, 37, 46–49, 70, and 75. However, because we find the Board’s analysis of the representative independent claim legally flawed, we need not address those separate arguments.
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