The US Court of Appeals for the Federal Circuit vacated a
decision of the Patent Trial and Appeal Board (PTAB or Board),
finding that the PTAB erred by improperly relying on inherency to
find obviousness and also conducted an improper analysis in finding
a motivation to combine references. Honeywell Int'l Inc. v.
Mexichem Amanco Holding S.A., Case No. 16-1996 (Fed. Cir., Aug. 1,
2017) (Lourie, J) (Wallach, J, dissenting in part).
Honeywell owns a patent directed to the use of a refrigerant and
a lubricant in heat transfer systems, such as air conditioning
units. Mexichem filed two requests for inter partes re-examination
of the patent, which the US Patent and Trademark Office granted and
merged into a consolidated proceeding. During the proceeding, the
Examiner concluded that the claims would have been obvious over the
cited prior art.
