Ex Parte LIN et al

Patent Trial and Appeal Board

Mar 9, 2016

11947143 (P.T.A.B. Mar. 9, 2016)

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).
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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.
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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
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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
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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
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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)).
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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
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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
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