Cameron Solutions, Inc.

Patent Trials and Appeals Board

Jul 31, 2020

2019005419 (P.T.A.B. Jul. 31, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/862,400 09/23/2015 Gary W. Sams 031633-US-PCD 4485
128554 7590 07/31/2020
OneSubsea IP UK
4646 W. Sam Houston Parkway N.
Houston, TX 77041
EXAMINER
COHEN, BRIAN W
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
07/31/2020 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):
JScott19@slb.com
USDocketing@slb.com
jalverson@slb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GARY W. SAMS and S. PAVANKUMAR B. MANDEWALKAR

Appeal 2019-005419
Application 14/862,400
Technology Center 1700
____________

Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 3, 7, 8, and 11–21.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42—Cameron Solutions, Inc. (Application Data Sheet filed
September 23, 2015), which is also identified as the real party in interest
(Appeal Brief filed February 6, 2019 (“Appeal Br.”) at 3).
2 See Appeal Br. 8–13; Reply Brief filed July 9, 2019 (“Reply Br.”) at 2–5;
Final Office Action entered September 6, 2018 (“Final Act.”) at 2–20;
Examiner’s Answer entered May 9, 2019 (“Ans.”) at 3–6.
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I. BACKGROUND
The subject matter on appeal relates to a crude oil desalter/dehydrator
vessel (Specification filed September 23, 2015 (“Spec.”) 1, ll. 10–11).
Representative claim 3 is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
3. A system for removing entrained water containing
salt from an inlet crude oil stream, the system comprising:
a vessel including a lower, an upper, and a middle
electrode, said electrodes oriented in a horizontal
plane and spaced apart from one another vertically;
a first AC modulated-voltage power source that operates
at a first amplitude and a first frequency greater than
60 Hz in communication with the upper electrode;
and
a second AC modulated-voltage power source that
operates at a second amplitude and a second
frequency greater than 60 Hz and different from the
first frequency in communication with the lower
electrode, the middle electrode being grounded.
(Appeal Br. 14 (emphases added)).
II. REJECTIONS ON APPEAL
Claims 3, 7, 8, and 11–21 stand rejected under 35 U.S.C. § 103(a)
(pre-AIA) as unpatentable over: (A) Martin,3 Akdim et al.4 (“Akdim”), and
Lundgaard et al.5 (“Lundgaard”); and (B) Martin, Akdim, Lundgaard, and
Chen6 (Ans. 3–6; Final Act. 2–20).

3 US 4,149,958, issued April 17, 1979.
4 US 2011/0253539 A1, published October 20, 2011.
5 WO 2006/043819 A1, published April 27, 2006.
6 US 2009/0159426 A1, published June 25, 2009.
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III. DISCUSSION
Rejection (A). Regarding the rejection of all the claims as
unpatentable over Martin, Akdim, and Lundgaard, the Appellant does not
provide any argument in support of the separate patentability of any claim
within the meaning of 37 C.F.R. § 41.37(c)(1)(iv). Although the Appellant
refers to certain limitations in, e.g., claims 8 and 18 (Appeal Br. 8, 10–11),
the rule states that “[a] statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.” Therefore, all claims subject to this rejection stand or fall with claim
3, which we select as representative pursuant to the rule.
1. The Examiner’s Position
The Examiner finds that Martin describes a system comprising a
vessel that includes horizontally-disposed, spaced-apart lower, middle, and
upper electrodes, a first transformer in communication with the upper
electrode, and a second transformer in communication with the lower
electrode, wherein the middle electrode is grounded (Final Act. 2–3). The
Examiner states that “[a]s to the claim language that the first and second
transformers provide different electrical energies, this is [an] intended use of
the apparatus” and that “[a]s Martin discloses the structural components (i.e.
a first and second transformer[s]) [recited in claim 3,] they are capable of
being operated in any manner” (id. at 3).
The Examiner acknowledges that “Martin does not teach that each
transformer is an AC modulated transformer providing an AC electrical
energy having an amplitude and a frequency greater than 60 Hz to each
electrode” (id.). Relying on Akdim and Lundgaard, however, the Examiner
concludes:
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20. As to the claim language that each power supply operates
as an AC modulated voltage source, one of ordinary skill in the
art would be motivated to substitute . . . each independent
transformer of Martin with an AC modulated transformer as per
Akdim and Lundgaard as Akdim and Lundgaard each teach the
optimization of the electric field within the apparatus by
utilization of AC modulated electrical energy such that the AC
modulated electrical energy improves the coalescence within the
apparatus.
21. As one of ordinary skill in the art would be capable of
optimizing the AC modulated electrical energy within the
apparatus, it would be obvious to one of ordinary skill in the art
to improve the coalescence by using the best components within
the apparatus at the time of invention.
(id. at 4–5).
2. The Appellant’s Contentions
The Appellant contends that a prima facie case of obviousness has not
been established because Martin, Akdim, and Lundgaard do not teach or
suggest first and second “AC modulated-voltage power source[s]” that
operate at different frequencies greater than 60 Hz, as recited in claim 3
(Appeal Br. 8). According to the Appellant, “[t]hese power sources are a
type of power source, not a generic power source ‘to be operated as’ a
modulated-voltage power source” (id. at 9). The Appellant argues that “[i]t
is not enough for the Office merely to allege that a modulated-voltage power
source is just a transformer” because the claimed subject matter requires “a
transformer with additional hardware that makes it a modulated-voltage
power source” (id.). The Appellant also argues that neither Akdim nor
Lundgaard teaches or suggests using at least two modulated-voltage AC
power sources, as recited in claim 3, and that, with respect to Akdim, it
actually teaches passive impedance matching using a feedback loop
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connected to a power circuit to adjust the power frequency automatically to
match the resonant frequency of the system (id. at 9–10).
3. Opinion
The Appellant’s arguments fail to identify reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Martin describes an electric treater or desalter/dehydrator for
resolving oil-continuous emulsions and other emulsions and for desalting of
liquids such as crude oil (Martin Abstract; col. 1, ll. 59–64). Specifically,
Martin discloses a desalter comprising a vessel 1 in which three spaced-apart
electrodes (i.e., an upper electrode 3, a middle electrode 4, and a bottom
electrode 5) are disposed horizontally, wherein the upper electrode 3 and
bottom electrode 5 are energized and the middle electrode 4 is grounded (id.
at col. 2, ll. 43–59; Figures 1–2). According to Martin, the upper electrode 3
and the bottom electrode 5 are each energized with their own transformers
(e.g., step up transformers 35 and 36)—necessarily implying the presence of
two separate power sources—and that “[a] potential difference of about
15,000 to 33,000 volts may suitably be maintained between electrodes 3 and
4 and between electrodes 4 and 5” (id. at col. 4, ll. 19–68).
Thus, Martin’s disclosure differs from the claimed subject matter only
in terms of “a first AC modulated-voltage power source that operates at a
first amplitude and a first frequency greater than 60 Hz in communication
with the upper electrode” and “a second AC modulated-voltage power
source that operates at a second amplitude and a second frequency greater
than 60 Hz and different from the first frequency in communication with the
lower electrode.” These differences, however, do not impart patentability to
claim 3 for reasons stated below.
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Akdim teaches an electrostatic coalescer for separating, e.g., water
from a liquid hydrocarbon stream using, inter alia, an inductor and an AC
generator that maintains its output frequency at the resonant frequency of the
circuit to minimize the current needed to drive the electrostatic coalescer
(Akdim ¶¶ 28, 42). According to one embodiment, Akdim teaches an AC
generator that is an autogenerator circuit, which is generally an amplifier
with large amplification having an exit connected to the entrance (commonly
known as a positive loop including a resonant circuit that defines the
frequency of oscillation and provides passive frequency adjustment) (id.
¶ 43). Akdim teaches that “[b]ecause the inductor . . . is fixed, the frequency
adjusts according to the varying properties of the process fluid and the
resulting capacitance of the electrostatic coalescer” (emphasis added) and
“[a]s the properties of the fluid change over time, the AC generator . . .
automatically maintains its output at the varying resonant frequency, thereby
minimizing the current requirements required for driving the electrostatic
coalesce” (id.). Akdim teaches that the “frequency . . . is above 1kHz due to
the relaxation time associated with most types of crude oil” (id. ¶ 47).
As the Examiner finds (Final Act. 4), Lundgaard teaches that AC
provides certain advantages over DC in a coalescer and that the AC may be
a sinusoidal AC voltage in the range of 1 to 40 kV, depending on dimensions
(electrode separation), and frequencies in the range of 10–10,000 Hz
(Lundgaard 3, ll. 3–27; 5, ll. 12–31).
Given the collective teachings found in these references, we discern
no reversible error in the Examiner’s conclusion (Final Act. 4–5) because a
person having ordinary skill in the art would have found it obvious to
implement Akdim’s AC generator system for energizing both the upper and
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bottom electrodes 3 and 5 in Martin’s system with a reasonable expectation
of minimizing the current required for driving Martin’s coalescer
(desalter/dehydrator), as suggested by Akdim, and to realize the benefit of an
AC system over a DC system, as suggested by Lundgaard. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”).
As for the requirement in claim 3 that the first and second frequencies
are different, we observe that claim 3 does not quantify the difference in
frequency values and, therefore, reads on any difference (e.g., a difference
that is even less than 1 Hz). Moreover, we agree with the Examiner that this
requirement relates to a manner of using the claimed system rather than a
structural requirement that distinguishes the claimed system over Martin’s
system. The upper and bottom electrodes in the system resulting from the
combination of Martin, Akdim, and Lundgaard would appear to be capable
of operating at different frequencies, as required by claim 3. See, e.g., In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citing, e.g., In re Sinex,
309 F.2d 488, 492 (CCPA 1962)).
We are not persuaded by the Appellant’s argument that paragraph 22
of the published application (US 2016/0008823 A1, published January 14,
2016; Spec. 10, l. 21–11, l. 11) “demonstrates the distinctiveness of the
claimed power sources” (Appeal Br. 9). The description in the Specification
merely indicates that the transformers provide multiple frequency electrical
energy to the electrodes and that this feature “substantially improves the
electrostatic separation of the water contained in the crude oil” (Spec. 10, l.
21–11, l. 11). But neither the Inventors nor the Appellant provide an
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adequate explanation as to how the described transformers differ from those
that would have been suggested by Akdim, which teaches adjusting the
frequency according to varying properties of the process fluid (Akdim
¶ 43)—i.e., it can operate at multiple frequencies. Moreover, the Inventors’
allegation that the feature “substantially improves the electrostatic separation
of the water” is not supported by objective evidence. In re Lindner, 457
F.2d 506, 508 (CCPA 1972) (“[M]ere conclusory statements in the
specification and affidavits are entitled to little weight when the Patent
Office questions the efficacy of those statements.”).7
For these reasons, we sustain the Examiner’s rejection.
Rejection (B). With respect to Rejection (B), the Examiner further
relies on Chen primarily for its teaching that individual transformers may be
used for each electrode and that the voltages applied to each electrode may
be varied (Final Act. 13 (citing Chen ¶¶ 14–16, 19–20)). The Examiner
concludes that “one of ordinary skill in the art . . . would have been
motivated to substitute an AC modulated transformer for each transformer
within Martin as per Chen so as to gain the benefit of the AC modulated
voltage application as per Akdim and Lundgaard even when the lower
electrode is shorted out” (id.).
The Appellant relies on the same arguments offered against Rejection
(A) (Appeal Br. 11). In addition, pointing out that Chen’s teaching of
independent power sources relates to redundancy in the event that one power

7 In any event, the Inventors acknowledge that this feature was already
known in the prior art (Spec. 11 (citing US 6,860,979 B2, issued March 1,
2005, and US 7,351,320 B2, issued April 1, 2008)). Cf. In re Hedges, 783
F.2d 1038, 1039–40 (Fed. Cir. 1986).
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source fails, the Appellant argues that Chen, too, does not teach “modulated-
voltage” as recited in claim 3 (id. at 12).
We disagree with the Appellant. Like Martin, which teaches
individual transformers (and thus would have implied or suggested
individual power sources), Chen teaches connecting each electrode to its
own high voltage transformer to permit continued operation even when one
electrode is shorted out (Chen ¶ 20). As we discussed above, the
“modulated-voltage” limitation in claim 3 appears to be directed to a manner
of using the claimed system rather than a structural difference. Therefore,
we also sustain Rejection (B).

IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
3, 7, 8, 11–21 103(a)  Martin, Akdim,
Lundgaard
3, 7, 8, 11–
21

3, 7, 8, 11–21 103(a) Martin, Akdim,
Lundgaard, Chen
3, 7, 8, 11–
21

Overall
Outcome
3, 7, 8, 11–
21

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED