Ex Parte LIN et alDownload PDFPatent Trial and Appeal BoardMar 9, 201611947143 (P.T.A.B. Mar. 9, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111947,143 11129/2007 20995 7590 03/11/2016 KNOBBE MARTENS OLSON & BEAR LLP 2040 MAIN STREET FOURTEENTH FLOOR IRVINE, CA 92614 FIRST NAMED INVENTOR David W. LIN UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. SMARB23.002AUS 1379 EXAMINER ROBINSON, RENEE E ART UNIT PAPER NUMBER 1772 NOTIFICATION DATE DELIVERY MODE 03/11/2016 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 e-mail address( es): j ayna.cartee@knobbe.com efiling@knobbe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID W. LIN and HECTOR M. LIZAMA 1 Appeal2014-004309 Application 11/947,143 Technology Center 1700 Before TERRY J. OWENS, WESLEY B. DERRICK, and MONTE T. SQUIRE, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting as obvious claims 1, 3---6, 8-10, 12, 14-17, 19-24, and 26 over Wiwchar2 in view of Finch 3 and claims 7 and 18 over Wiwchar in view of Finch and Cleyle. 4, 5 We have jurisdiction pursuant to 35 U.S.C. § 6. We AFFIRM. 1 Fort Hills Energy L.P. is identified as the Real Party in Interest. Appeal Brief filed September 20, 2013 ("App. Br."), 3. 2 Wiwchar et al., Column Flotation in an Oilsand Application, 2004. 3 Finch et al., Column Flotation, Pergamon Press (1990). 4 Cleyle et al., Column Flotation Testing at Suncor Energy Inc., 2006. 5 The status of Wiwchar, Finch, and Cleyle as prior art is not disputed. Appeal2014-004309 Application 11/947,143 Appellants' claimed invention relates to a process for recovery of bitumen from an oil sand slurry using a flotation column. Spec. i-f 2; Abstract. Each of the independent claims on appeal---claims 1, 10, 12, and 21-are directed to the method. Claim 1, which we find representative, is reproduced below. 1. A process for the recovery of bitumen from an oil sand slurry, the oil sand slurry comprising bitumen, mineral solids and water, the process comprising: subjecting the oil sand slurry to flotation in a flotation column; and selectively controlling a column bias of the flotation column to produce flotation tailings and a flotation bitumen froth having a predetermined solids content of about 10 % by weight or less resulting from a controlled deportment of the mineral solids from the oil sand slurry to the flotation bitumen froth, the column bias being defined as a net difference of water flow between the flotation tailings and the oil sand slurry. App. Br. 12 (Claims Appendix). DISCUSSION Appellants argue the claims subject to rejection over Wiwchar in view of Finch together and offer no further substantive arguments as to claims subject to rejection over Wiwchar in view of Pinch and Cleyle. App. Br. 7- 11. With no separate arguments proffered, all claims will stand or fall together with independent claim 1, which we select as representative. 37 C.F.R. § 41.37(c)(l)(iv) (2013). 2 Appeal2014-004309 Application 11/947,143 Upon consideration of the evidence and opposing contentions of Appellants and the Examiner, we are not persuaded of reversible error in the Examiner's decision rejecting all claims as unpatentable for obviousness. 6 The Examiner relies on Wiwchar for its disclosure of a column flotation process for recovery of bitumen from an oil sand slurry that comprises bitumen, mineral solids, and water. Ans. 2 (citing Wiwchar 2, 5, 8). 7 Wiwchar teaches controlling multiple process variables-including feed flow rate, wash water flow rate, and gas flow rate-to maximize bitumen recovery and lower the percent mineral in the column froth. Ans. 2 (citing Wiwchar 5, 8). Wiwchar "explicitly suggests operating the flotation column so as to achieve a froth mineral content of 12% or lower." Ans. 2 (citing Wiwchar 8). In particular, the Examiner cites to Wiwchar's teaching that lowering the mineral content in the column froth to 12% or lower allows it to be "sent directly to the deaerator instead of being recycled back to the feed end of the separation cells" and that "wash water flow rates and temperatures were varied to optimize the column performance." Ans. 10 (quoting Wiwchar 7). The Examiner further cites to Wiwchar's Figure 10 depicting data points wherein the mineral content in the froth is less than 10%. Ans. 11 (citing Wiwchar 8, Fig. 10). The Examiner concedes that Wiwchar does not explicitly disclose selectively controlling a column bias of the flotation column to produce a bitumen froth having a predetermined solids content. Ans. 3. 6 We refer to the Final Office Action ("Final Act.") mailed February 27, 2013, the Appeal Brief filed June 20, 2013, and the Examiner's Answer ("Ans.") mailed October 25, 2013. 7 Neither Wiwchar nor Cleyle are paginated; the Examiner cites to pages as the pages are ordered in the record, as we will in our opinion. 3 Appeal2014-004309 Application 11/947,143 The Examiner finds Finch---directed to principles of column flotation---explicitly discloses controlling column bias and suggests controlling the column bias, particularly to maintain the bias below a certain value, specifically exemplified at below 0.4 cm/s, and above zero. Ans. 3 (citing Finch 2, 75, 83, 86-87, 148; Figures 1.1 & 8.13). The Examiner further finds Finch to teach that wash water serves to provide the bias water and the water necessary to overflow collected solid into the concentrate launder (Final Act. 4; Ans. 3; Finch 75) and that the column bias is affected by gas rate and wash water rate (Final Act. 4; Ans. 3). The Examiner determines that Wiwchar, Finch, and the invention set forth in the claims are analogous as they pertain to column flotation and control of parameters including feed, water, and gas flow rates for optimizing separation. Ans. 8-9. The Examiner concludes it would have been obvious to one of ordinary skill in the art at the time of the invention to control the parameters of water, feed, and gas flow to optimize the separation (Ans. 9) as a matter of "routine experimentation to obtain the desired mineral concentration in the froth ... improving overall process efficiency" (Ans. 10-11 ). The Examiner determines de facto that the routine optimization undertaken by one of ordinary skill in the art, armed with the knowledge of Wiwchar and Finch, would have led the routineer to the claimed method. Appellants proffer several general arguments. First, emphasizing differences between the column flotation of Wiwchar-a three phase system directed to bitumen- and Finch-a two phase system directed to minerals, Appellants argue the disclosure of Finch is not applicable to the claimed subject matter and the Examiner erred in 4 Appeal2014-004309 Application 11/947,143 determining that one of ordinary skill would look to the teaching of Finch to modify the method ofWiwchar or combine the teachings of Wiwchar and Finch. App. Br. 7-9. Appellants contend the teachings of Wiwchar and Finch are "incompatible" based on cited differences, particularly as to what is concentrated, i.e., partitioned to the froth rather than to the tailings. App. Br. 8-9. On these bases, Appellants argue it is not reasonable to conclude one of ordinary skill in the art would look to Finch for its teachings, find applying its teachings to bitumen recovery to be no more than routine experimentation, or that the modification would be associated with a reasonable expectation of success. App. Br. 9. The argument is not persuasive of reversible error. As set forth by the Examiner, Wiwchar discloses a column flotation process for recovery of bitumen from an oil sand slurry like that claimed except as to the recited column bias, including that it achieves in a number of tests a mineral content in the column froth of less than 10%. As highlighted by the Examiner, "Wiwchar just does not use or define the term 'column bias"' (Ans. 8), however, it "explicitly discloses and suggests controlling flow rates of feed, water, and gas" (Ans. 8, citing Wiwchar 3, 4, 7) and by controlling these flow rates, Wiwchar effects control of the column bias (Ans. 8). Finch then is relied on for limited purposes, notably to establish that column bias is known and for its definition of column bias as the net overall flow of water through the froth or its equivalent the net difference of water flow between the tailings and feed (Ans. 3, 8, citing Finch 148). The Examiner maintains that "the reliance on Finch as a modifying reference is not considered to alter the process of Wiwchar which is directed to column flotation of an oil sands slurry, but rather provides support for 5 Appeal2014-004309 Application 11/947,143 teaching fundamental principles of column flotation operation which are applicable to the Wiwchar separation process." Ans. 9. Having carefully considered the record, we find Appellants' arguments lacking persuasive merit because they fail to show one of ordinary skill in the art would not have reasonably looked to Finch for general principles of column flotation or, having done so, would not have drawn from Finch the general principles set forth above. It is well established that in evaluating references "it is proper to take into account not only the specific teachings of the references but also the inferences that one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826 (CCPA 1968). Further, Appellants' argument as to the modification requiring more than routine experimentation and that there is not a reasonable expectation of success, focusing on Finch (and Garibay) (App. Br. 9-10), lacks sufficient support because Wiwchar alone discloses optimization of its column flotation process that achieves, in a number of tests, mineral content in the column froth of less than 10%. Second, Appellants argue that the combination of Wiwchar and Finch does not teach or suggest all claim limitations because "based on teachings in Finch, a skilled person would expect the sand (i.e., the 'minerals' in Finch and Garibay) ... to deport to the concentrate (i.e. bitumen froth)" (App. Br. 9); that is, that the column froth would have higher mineral content than 10% (App. Br. 9-10). Appellants cite to particular disclosure in Wiwchar where the mineral content in froth exceeded 10%. App. Br. 9-10 (citing Wiwchar Tables 1-3). Appellants further contend that Wiwchar fails to suggest operating a floatation column to achieve a froth mineral content of 12% or less because the statement in Wiwchar 6 Appeal2014-004309 Application 11/947,143 Attempting to lower the percent mineral in the column froth was the main driver for froth quality. With a froth mineral content of 12% or lower it could be sent directly to the deaerator instead of being recycled back to the feed end of the separation cells. is merely "observing that if the froth mineral content is of 12% or less, it could be sent directly to the deaerator." App. Br. 10 (citing Wiwchar 160 [sic, 8])). On this record, we find Appellants' arguments unpersuasive because the arguments as to Finch's teaching fail to address the basis of the rejection, which is grounded on Wiwchar' s disclosure teaching column flotation to separate bitumen from an oil sand slurry. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references."). Further, as to Appellants' argument Wiwchar does not suggest minimizing the mineral content, but is rather simply an observation, it is wholly without merit where one of ordinary skill in the art would reasonably be expected to infer that reducing the froth mineral content was desirable for increased efficiency and Wiwchar in fact discloses trials in which the froth mineral content was reduced to less than 10%. Ans. 10-11 (citing Wiwchar 8, Fig. 10). Third, Appellants argue that Wiwchar is not an enabling disclosure because it shows that even if one optimizes the various parameters that "one will routinely not manage to achieve mineral concentration in the froth of 10% or less" and, attributing this failure to a failure to recognize that controlling column bias is the determinative parameter, contend that the disclosure does not enable the process. App. Br. 10-11 (citing In re Kumar, 418 F.3d 1361 (Fed. Cir. 2005)). 7 Appeal2014-004309 Application 11/947,143 We find Appellants' reliance on In re Kumar ill-founded where cited prior art is presumed enabled shifting the burden to Appellants to overcome the presumption of enablement, see, e.g., In re Antor, 689 F.3d 1282, 1288- 89 (Fed. Cir. 2012), Appellants' proffered evidence is merely that not all trials disclosed in Wiwchar meet the claimed limitation as to mineral concentration in the froth (App. Br. 10-11 ), and even a non-enabling reference qualifies as prior art for determining obviousness under § 103 for what it discloses, see, e.g., Symbol Techs., Inc. v. Opticon, Inc., 935 F .2d 1569, 1578 (Fed. Cir. 1991). On this record, we are not persuaded that it was improper to presume Wiwchar was enabled. Likewise, we are not persuaded by Appellants' limited proffer to rebut the presumption, particularly where a significant portion of trials do attain the desired level of mineral in the froth, i.e., 10% or less. Still further, even assuming Wiwchar' s disclosure was deemed not enabling to achieve a mineral content in the froth of 10% or less, Appellants' arguments would still fail to address the Examiner's relied on basis of rejection that one armed with the knowledge of Wiwchar would through routine optimization-undertaken to minimize the mineral content in the froth-have arrived at the claimed subject matter. As to Appellants' further argument raised in the Reply Brief emphasizing disagreement with the Examiner's determination that optimization of multiple process variables would lead to control of column bias (Reply Br. 2-6), we find it untimely because a basis of the rejection was the optimization of the multiple process variables-as disclosed in Wiwchar-and recognition that these variables affect the column bias-as disclosed by Finch (Final Act. 3--4). Accordingly, we find the argument 8 Appeal2014-004309 Application 11/947,143 waived because Appellants do not show good cause as to why it was not presented in the Appeal Brief. 37 C.F.R. § 41.41(b)(2). Further, we find Appellants' argument unpersuasive where the relied on ground of rejection is the routine optimization of process variables, including flow rates, and the Specification sets forth column bias as "closely approximated and calculated by" comparing flow rates. Spec. i-f 9. For the reasons above, it cannot be said that Appellants have shown reversible error in the determination that one of ordinary skill in the art, armed with the knowledge of the cited prior art, would have been led to the subject matter recited in the appealed claims. See, e.g., In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we sustain the Examiner's rejections. CONCLUSION The rejection of claims 1, 3-10, 12, 14-18, 20-24, and 26 under 35 U.S.C. § 103 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED 9 Copy with citationCopy as parenthetical citation