The Federal Circuit held that inherent properties are not always obvious and that routine testing does not preclude patentability. Honeywell Int'l Inc. v. Mexichem Amanco Holding S.A., No. 2016-1996 (Fed. Cir. Aug. 1, 2017). Honeywell owns USP 7,534,366 directed to the use of an unsaturated hydrofluorcarbon compound. Mexichem and Daikin filed an inter partes reexam. During the reexam, the examiner rejected several claims as obvious over three prior art references. On appeal to the Board, Honeywell (a) argued that one the references did not teach the use of HFO-1234f with any particular lubricant; (b) submitted evidence that HFO refrigerants were disfavored at the time of invention; (c) secondary references referred to use of PAG lubricant with saturated refrigerants rather than unsaturated refrigerants; (d) submitted evidence of secondary considerations. The Board affirmed the examiner's rejections finding that (a) known disadvantages of using HFO-1234f wouldn't have deterred one of ordinary skill from choosing it; (b) HFO-1234f's stability with PAG lubricants was its inherent property; (c) even though how various refrigerants react with various lubricants is unpredictable, one of ordinary skill in the art would've found the combination by routine testing. Honeywell appealed.
The Federal Circuit reversed the Board's decision finding that the Board erred by (1) improperly relying on inherency to find obviousness because the proper analysis is not whether a property is inherent but whether unknown properties are unexpected; (2) requiring Honeywell to establish that one of ordinary skill in the art would've expected failure; instead in a reexam, the burden is on the examiner to show that one of ordinary skill would've had a motivation to combine the references with a reasonable expectation of success; (3) concluding that unpredictability indicates obviousness; and (4) in rejecting Honeywell's objective evidence of nonobviousness.
Full text of the opinion is available here.
The Federal Circuit reversed the Board's decision finding that the Board erred by (1) improperly relying on inherency to find obviousness because the proper analysis is not whether a property is inherent but whether unknown properties are unexpected; (2) requiring Honeywell to establish that one of ordinary skill in the art would've expected failure; instead in a reexam, the burden is on the examiner to show that one of ordinary skill would've had a motivation to combine the references with a reasonable expectation of success; (3) concluding that unpredictability indicates obviousness; and (4) in rejecting Honeywell's objective evidence of nonobviousness.
Full text of the opinion is available here.
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