ConocoPhillips Company

Patent Trials and Appeals Board

Oct 20, 2020

2020000288 (P.T.A.B. Oct. 20, 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.
15/585,920 05/03/2017 Arnold JANSON 42429US02 2280
85937 7590 10/20/2020
Boulware & Valoir
Tamsen Valoir
2603 Augusta Drive
Suite 1350
Houston, TX 77057
EXAMINER
MENON, KRISHNAN S
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
10/20/2020 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):
nseigel@boulwarevaloir.com
patent@boulwarevaloir.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ARNOLD JANSON,
SAMER ADHAM, JOEL MINIER-MATAR,
ALTAF HUSSAIN, and ANA M. SANTOS
____________

Appeal 2020-000288
Application 15/585,920
Technology Center 1700
____________
Before JEFFREY B. ROBERTSON, GEORGE C. BEST, and
WESLEY B. DERRICK, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16 of Application 15/585,920. Final
Act. (February 26, 2019). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies ConocoPhillips Co. as the real party in
interest. Appeal Br. 3.
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Application 15/585,920
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I. BACKGROUND
The ’920 Application describes methods for the treatment of produced
or process water (PPW) from hydrocarbon production to reduce the volume
of PPW. Spec. ¶¶ 2, 9. Hydrocarbons extracted from the earth are often
accompanied with so-called produced water. Id. ¶ 3. Similarly, water
(“process water”) is used during the processing of the hydrocarbons after
extraction. Id. ¶ 5. Both produced water and process water often contain
impurities, yet the water must be disposed of. Id. ¶¶ 4–5. PPW is usually
disposed of by injection into deep wells. Id. ¶ 6. Reducing the volume of
PPW to be disposed of usually lowers disposal costs. Id.
According to the Specification, a separate water-related issue is
reducing the salinity of water discharged from desalinization plants. Id. ¶ 7.
The methods described in the ’920 Application are said to reduce the
volume of PPW to be disposed of while simultaneously decreasing the
salinity of a desalinization plant discharge stream. Id. ¶ 10.
Claim 1 is representative of the ’920 Application’s claims and is
reproduced below from the Appeal Brief’s Claims Appendix.
1. A method for the treatment of produced or process water
(PPW) from hydrocarbon production to reduce the volume of
the PPW, the method comprising:
a) causing a feed stream comprising PPW to flow through a
lumen of a hollow fiber osmotic membrane;
b) causing a draw solution comprising saline water of
higher salinity than the feed stream to flow past an
outside of the hollow fiber osmotic membrane;
wherein the draw solution flows in an open channel or
open tank and the hollow fiber osmotic membrane is
immersed in the draw solution; and
whereby water from the feed stream is drawn through the
hollow fiber osmotic membrane and into said draw
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solution by an osmotic pressure differential caused by
said higher salinity of said draw solution.
Appeal Br. 17 (emphasis added).
II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claim 11 is rejected under 35 U.S.C. § 112(b) as indefinite. Final
Act. 2.
2. Claims 1–16 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by, or in the alternative, under 35 U.S.C. § 103 as
obvious over McGinnis2 as evidenced by Minier-Matar.3 Final
Act. 3.
III. DISCUSSION
A. Rejection of claim 11 as indefinite
For ease of reference, we reproduce claim 11 from the Appeal Brief’s
Claims Appendix.
11. The method claimed in claim 1, further comprising
taking the feed stream from downstream of the hollow fiber
osmotic membranes and treating it further prior to disposal.
Appeal Br. 18.

2 US 2012/0267306 A1, published October 25, 2012.
3 Joel Minier-Matar et al., Application of forward osmosis for reducing
volume of produced/Process water from oil and gas operations, 376
Desalination 1 (2015). The Examiner and Appellant both refer to this
reference as Matar. We shall refer to it by the full last name of the first
author.
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The Examiner rejected claim 11 as indefinite because “[c]laim 11
recites further treating the feed stream downstream of the hollow fiber, but
does not specify what treatment. The specification also does not describe
any further treatment, and thus the claim is indefinite.” Final Act. 2.
We reverse.
We agree with Appellant that a person of ordinary skill in the art
reading the ’920 Application’s Specification would understand that the term
“treatment” in claim 11 refers to water treatment. Contrary to the
Examiner’s assertion, the Specification identifies several ways in which
PPW can be treated: addition of chemicals for pH adjustment, corrosion
control, or biocidal activity. See Spec. ¶ 6. The rejection is not well-founded
because it relies upon the Specification not describing any further treatment.
The Examiner is correct that claim 11 does not specify what particular
type of water treatment follows the osmosis procedure. While this results in
a broad claim, broad claims are not necessarily indefinite. See, e.g., In re
Miller, 441 F.2d 689, 693 (CCPA 1971) (“Breadth is not to be equated with
indefiniteness.”); In re Gardner, 427 F.2d 786, 788 (CCPA 1970) (“Breadth
is not indefiniteness.”).
B. Rejection of claims 1–16 as anticipated by McGinnis
Appellant argues for reversal of the anticipation rejection of claims 1–
16 as a group. Appeal Br. 7. We, therefore, select claim 1 as representative
of the group of claims subject to this ground of rejection. 37 C.F.R.
§ 41.37(c)(1)(iv) (2015).
Appellant argues that the Examiner has pieced together the subject
matter of claim 1 from three different desalination methods described in
McGinnis. Appeal Br. 7. According to Appellant, there can be no
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Application 15/585,920
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anticipation because McGinnis does not describe all of the elements of the
claim arranged as in the claim. Id. (citing Crown Packaging Tech., Inc. v.
Ball Metal Beverage Container Corp., 635 F.3d 1373, 1383 (Fed. Cir.
2011)).
In the Answer, the Examiner does not contest Appellant’s assertion
that the basis for the rejection is pieced together from three different
embodiments. See Answer 6–7. Instead, the Examiner states that “it would
have been obvious to one of ordinary skill in the art to piece together the
appellant’s process from figures 11 and 12 and paragraphs [0055] and 0057]
[sic] of McGinnis.” Id. at 7.
We, therefore, reverse the rejection of claim 1 as anticipated by
McGinnis. Accordingly, we also reverse the rejection of claims 2–16.
C. Rejection of claims 1–16 as unpatentable over McGinnis
Appellant argues for reversal of the obviousness rejection of claims 1–
16 as a group. Appeal Br. 7–15. We, therefore, select claim 1 as
representative of the group of claims subject to this ground of rejection. 37
C.F.R. § 41.37(c)(1)(iv).
Claim 1 recites, in relevant part, “wherein the draw solution flows in
an open channel or open tank and the hollow fiber osmotic membrane is
immersed in the draw solution.”
In rejecting claim 1, the Examiner found that this limitation is
described by McGinnis’s Figure 12. Answer 4–6. As we shall explain, this
finding is erroneous.
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For ease of reference, we reproduce Figure 12 below.

Figure 12 is a schematic diagram of the pressure
retarded osmosis (PRO) contactor. McGinnis ¶ 21.
In Figure 12, the lumen of the hollow fiber osmotic membrane is
depicted as being filled with low salinity water, i.e., the feed solution. The
hollow fiber osmotic membrane is surrounded by high salinity water, i.e., the
draw solution. As shown in Figure 12, water flows through the membrane
from the inside of the hollow fiber to the outside of the hollow fiber.
As McGinnis describes, the hollow fiber bundle shown in Figure 12 is
installed within a pressure vessel. McGinnis ¶ 57. The Examiner finds that
this pressure vessel is the open tank or open channel recited in claim 1.
Answer 5–6. The Examiner acknowledges that McGinnis describes the
hollow fiber bundle as installed within a pressure vessel and that
[t]here is an implicit teaching in this paragraph that pressure
vessel means it is capable of closing and holding a pressure
higher than that of the surrounding atmosphere, particularly, if
the operation is by pressure retarded osmosis (PRO). However,
it does not mean that is must be [sic] only operated at a pressure
higher than that of the atmosphere.
Id. at 5.
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According to the Examiner, McGinnis’s paragraph 57
clearly teaches “open” PRO – meaning there is no positive
pressure applied to the draw solution. This leaves the question
whether the tank in this case is kept open or closed. The
[E]xaminer respectfully submits that the tank in this case can be
read as “open” to the atmosphere so that there is no applied
pressure on the draw solution side.
Id. at 5–6.
This argument evidences a misunderstanding of PRO. “In PRO, water
from a low salinity solution permeates through a membrane into a
pressurized, high salinity solution; power is obtained by depressurizing the
permeate through a hydroturbine.” Andrea Achilli & Amy E. Childress,
Pressure retarded osmosis: From the vision of Sidney Loeb to the first
prototype installation—Review, 261 Desalination 205, 205 (2010).
As Appellant convincingly argues, McGinnis’s use of the phrase
“‘open’ PRO” is shorthand for open loop PRO. See Reply Br. 1. In an open
loop PRO system, the feed solution and the draw solution are not recycled.
“Open-loop systems are solar-driven processes where renewable energy is
produced from the mixing of relatively freshwater with saltwater.” Achilli &
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Application 15/585,920
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Childress 205. We reproduce Figure 1.(a) of Achilli & Childress, a
schematic diagram of an open loop PRO system below.

Figure 1.(a) from Achilli & Childress is a
schematic diagram of an open loop PRO system.
Id. at 206.
The system shown in Achilli and Childress’s Figure 1.(a) is referred to
as an open loop system because the freshwater is lost to the sea rather than
being recycled. Id.
In open-loop PRO systems, the draw solution is pressurized, and the
pressure is increased by addition of the permeate to the draw solution. See A.
Achilli & K.L. Hickenbottom, Pressure retarded osmosis: Applications, in
Sustainable Energy from Salinity Gradients 56, 59 (A. Cipollina & G.
Micale eds. 2016). Part of the diluted draw solution is then depressurized
through a hydroturbine-generator set to produce mechanical/electrical
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energy. Id. A schematic diagram of an open-loop PRO power plant, Figure
3.5 of Achilli & Hickenbottom, is reproduced below.

Figure 3.5 from Achilli & Hickenbottom is a
schematic diagram of a PRO power plant. Id. at 60.
Because an open loop system works in this manner, a person of
ordinary skill in the art would have reasonably understood that McGinnis’s
pressure vessel is not open to the atmosphere.
Thus, the Examiner’s conclusion of obviousness is based upon an
incorrect factual determination that the draw solution in McGinnis is in an
open channel or open tank, and there is no alternative basis set forth for
finding that this limitation is described or suggested by the prior art. We,
therefore, reverse the rejection of claims 1–16 as obvious over McGinnis.
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IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11 112(b) Indefiniteness 11
1–16 102 (a)(1) McGinnis, Minier-Matar 1–16
1–16 103 McGinnis, Minier-Matar 1–16
Overall Outcome 1–16
REVERSED