Edward Grave et al.

Patent Trials and Appeals Board

Aug 10, 2020

14406119 - (D) (P.T.A.B. Aug. 10, 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.
14/406,119 12/05/2014 Edward J Grave 2012EM199 1035
34477 7590 08/10/2020
ExxonMobil Upstream Research Company
22777 Springwoods Village Parkway
(EMHC-N1.4A.607)
Spring, TX 77389
EXAMINER
MCKENZIE, THOMAS B
ART UNIT PAPER NUMBER
1776
NOTIFICATION DATE DELIVERY MODE
08/10/2020 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):
urc-mail-formalities@exxonmobil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte EDWARD J. GRAVE,
ADAM S. BYMASTER, and TRACY A. FOWLER
__________

Appeal 2019-005952
Application 14/406,119
Technology Center 1700
__________

Before LINDA M. GAUDETTE, FRANCISCO C. PRATS, and
LILAN REN, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–15. 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. Appellant identifies ExxonMobil Upstream Research
Company, the assignee of record, which is a subsidiary of Exxon Mobil
Corporation, as the real party in interest. Appeal Br. 4.
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STATEMENT OF THE CASE
The Specification discloses techniques and systems for separating
gases and liquids from multiphase fluids obtained from subsea wells. See
Spec. ¶¶ 3–6. Appellant’s claim 1, the sole independent claim on appeal, is
representative and reads as follows:
l. A multiphase separation system, comprising:
an inlet line configured to feed a multiphase fluid into a
circular distribution header within the multiphase
separation system, wherein the circular distribution
header is coupled to a plurality of upper lines and a
plurality of lower lines;
each upper line configured to feed gases into a circular
gas header, wherein the circular gas header is in a
second plane that is above a plane of the circular
distribution header;
each lower line configured to feed liquids into a circular
liquid header, wherein the circular liquid header is
in a third plane that is below the plane of the
circular distribution header;
a gas outlet line that is coupled to the circular gas header
and is configured to flow the gases out of the
multiphase separation system; and
a liquid outlet line that is coupled to the circular liquid
header and is configured to flow the liquids out of
the multiphase separation system;
wherein the gas outlet line and the liquid outlet line are
coupled via a downcomer configured to allow
entrained liquids to flow from the gas outlet line to
the liquid outlet line.
Appeal Br. 20.
Appellant’s Figure 2, reproduced below with added annotations,
illustrates an embodiment of a system encompassed by claim 1:
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Appellant’s Figure 2 is a perspective view of multiphase separation
system 200, with annotations added to show the elements of the system
recited in Appellant’s claim 1, including inlet line 202, gas outlet line 214,
liquid outlet line 216, circular distribution header 204, circular gas header
210, circular liquid header 212, plurality of upper lines 206, plurality of
lower lines 208, and downcomer 218.
The following rejections are before us for review:
(1) Claims 1–10 and 13–15, under 35 U.S.C § 103(a) as being
unpatentable over Esparza2 (Final Act. 2–123; Ans. 3–13); and

2 US 2006/0162553 A1 (published July 27, 2006).
3 Final Action entered November 15, 2018.
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(2) Claims 11 and 12, under 35 U.S.C. § 103(a) as being unpatentable
over Esparza and Aarebrot4 (Final Act. 2, 10–11; Ans. 3, 11–12).

DISCUSSION
The Examiner’s Prima Facie Case
In rejecting claims 1–10 and 13–15 for obviousness over Esparza, the
Examiner found that the phase separation system shown in Figure 6 of
Esparza, reproduced below, was substantially similar to the system of
Appellant’s claims (Ans. 5–6):

Figure 6 of Esparza is a perspective view of an embodiment of a
separation system implementing arrays of upper-tier elongate conduits 102
and lower-tier elongate conduits 104, connected by a plurality of vertical
connectors 106, which allow separation of a multiphase fluid mixture into
two components with different densities. See Esparza ¶¶ 34–38.

4 US 2011/0072975 A1 (published Mar. 31, 2011).
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The Examiner found that the system of Figure 6 of Esparza only
differs from the system of Appellant’s representative claim 1 in two
respects. Ans. 5. First, the Examiner found, the system of Esparza’s Figure
6 “only comprises two tiers 204, 206. Therefore, while the upper tier 204
could correspond to the claimed ‘gas header’ with the lower tier 206
corresponding to the ‘liquid header,’ the system 200 does not contain a
middle tier which would correspond to the ‘distribution header.’” Id.
Second, the Examiner found, Esparza “does not explicitly teach the
tiers 204, 206 being ‘circular’ because fig. 6 shows the tiers 204, 206 having
a racetrack configuration.” Ans. 5.
In rejecting claims 1–10 and 13–15 for obviousness, the Examiner
also relied on Figure 5 of Esparza, reproduced below (Ans. 6):

Figure 5 of Esparza is a side elevational view of an embodiment of a
multiphase fluid separator having three tiers of elongate conduits 102, 104,
and 134, with a plurality of vertical connectors 106, 132, which allow
separation of a multiphase fluid mixture into three components with
different densities. See Esparza ¶ 33.
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The Examiner concluded that it would have been obvious to modify
the system of Esparza’s Figure 6 to have three tiers instead of two, as shown
in Figure 5 of Esparza, in view of Esparza’s teaching that the three-tier
configuration enables separation of a high-flow multi-phase fluid into three
phases. Ans. 6.
The Examiner concluded that it would have been obvious to modify
the system of Esparza’s Figure 6 to “form a circular shape, instead of the
racetrack configuration shown in fig. 6, because this shape change would
[be] a routine engineering choice due to that fact that the racetrack
configuration is not critical to the operation of the device. See MPEP
2144.04, IV(B).” Ans. 7. In particular, the Examiner reasoned, Esparza
teaches that “it is the internal volume of the device rather than its shape that
is critical to the operation of the device” and a skilled artisan therefore
“would understand that altering the device so that the outer conduits and the
headers form a circle rather than a racetrack would not alter the operation of
the device so long as the internal volume was greater than the maximum
hydrodynamic volume of the mixed fluid being treated.” Id. (citing Esparza
¶ 27).
Analysis
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant in
response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
Having carefully considered all of the arguments and evidence
advanced by Appellant and the Examiner, Appellant does not persuade us
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that a preponderance of the evidence fails to support the Examiner’s
conclusion that the system of Appellant’s representative claim 1 would have
been obvious in view of Esparza.
In particular, Appellant does not persuade us that, because Esparza
teaches that the separator shown in Figure 6 is useful in locations with
limited vertical space, a skilled artisan would not have added a third tier of
conduits to the separator shown in Figure 6. See Appeal Br. 14 (“Therefore,
Esparza teaches away from adding a third array of elongate conduits to the
embodiment shown in Figure 6 therein, and teaches away from a distribution
header, gas header, and liquid header in different planes as recited in
Appellants’ claim 1.”); see also id. (“Adding a third tier of conduits to the
separator in Fig. 6 of Esparza would further reduce the effectiveness of the
separator because gas rising from a lower tier (e.g., 206) would interfere
with liquid falling from an upper tier (e.g., 204).”).
We acknowledge Esparza’s teaching that the separator shown in its
Figure 6, with arrays of multiple conduits in an oval configuration, is
advantageous as compared to separators having a single upper conduit and a
single lower conduit, where space is limited:
One advantage to using the separation system 200 of
FIG. 6 over the separator 100 of FIG. 2 is space requirements
in some applications. When a large flow rate of a mixture is
encountered, the utilization of only a single upper-tier elongate
conduit 204 and a single lower-tier elongate conduit 206 may in
certain circumstances require exceedingly long connectors 106
to allow for efficient movement of component parts of the
mixture flow. However, there may not be enough vertical room
in certain locations where separation must take place for a very
tall device. The use of arrays of upper and lower-tier elongate
conduits 204, 206 provides the ability to use a larger number of
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conduits of a shorter length to achieve efficient mixture flow
separation.
Esparza ¶ 38.
More generally, however, Esparza teaches that with its arrays of
multiple conduits, the separator shown in Figure 6 is useful for separating
components from fluids “with increased throughput.” Esparza ¶ 34.
Moreover, contrary to Appellant’s contention that adding a third tier
to Esparza’s would reduce its effectiveness (see Appeal Br. 14), Esparza
expressly teaches that the three-tiered configuration shown in Figure 5 is
advantageous in promoting improved separation, and in allowing separation
of a fluid mixture into three components:
By having three tiers of elongate conduits, the separator 100 of
FIG. 5 provides an increased distance for lower density flow
components to move via displacement, and higher density flow
components to move via gravity, through the connectors 106,
132 to a respective tier of the elongate conduits 102, 104, 134.
Furthermore, the separator 100 of FIG. 5 is well suited for
separating a mixture flow having three component parts of
differing densities (e.g., gas, water, and petroleum) into three
component part flows through the respective outlets, with the
highest density component flow leaving the outlet 104 of the
lower-tier elongate conduit 104, the lowest density component
flow leaving the outlet 146 of the third tier elongate conduit
134, and the middle density component flow leaving the outlet
112 of the upper-tier elongate conduit 102.
Esparza ¶ 33.
Thus, while we acknowledge Esparza’s teaching that the separator of
Figure 6 is advantageous in space-limited situations, given Esparza’s
teaching that Figure 6’s separator is useful for separating components from
fluids with increased throughput, we are not persuaded that Esparza teaches
or suggests that Figure 6’s separator would be useful or applicable only in
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space-limited applications. Appellant, moreover, does not identify, nor do
we discern, any specific teaching in Esparza indicating that it would be
undesirable to modify the separator of Figure 6 to have three tiers. To the
contrary, viewing the teachings of Esparza as a whole, and given the
advantages taught in the reference of the three-tiered separator shown in
Figure 5, we agree with the Examiner that a skilled artisan would have
reasoned that it would be desirable to modify the separator of Figure 6 of
Esparza to have three tiers. See Boston Scientific Scimed, Inc v. Cordis
Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (“Combining two embodiments
disclosed adjacent to each other in a prior art patent does not require a leap
of inventiveness.”).
Appellant also does not persuade us that, because the separators of
Esparza’s Figures 5 and 6 have multiple inlets, Esparza teaches away from
the system of Appellant’s representative claim 1. See Appeal Br. 14. We
first note, as the Examiner pointed out, that representative claim 1 is open to
more than one inlet line, because it uses the transitional term “comprising”
in connection with the claimed system. See id. at 20. Esparza, moreover,
teaches that phase separation can be achieved using separators having a
single inlet line. See Esparza ¶¶ 23, 32.
We are also not persuaded that Appellant has identified a sufficient
evidentiary basis to support its contention that modifying the oval-shaped
separator of Figure 6 of Esparza, to have the similar circular shape recited in
Appellant’s representative claim 1, would render Esparza’s separator
unsatisfactory for its intended purpose. See Appeal Br. 15–17; Reply Br. 3–
5.
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We acknowledge, as Appellant contends, that all of Esparza’s
separators use upper and lower tiers of elongate conduits, with vertical
connectors extending between the conduits, allowing separation of the
different phases of the mixture based on density. See, e.g., Esparza ¶¶ 22,
25. However, contrary to Appellant’s contention that Esparza suggests that
the linear portion of the oval conduits shown in Figure 6 is critical to the
device’s function, Esparza teaches that the elongate conduits can be
configured in a variety of different ways:
The upper and lower-tier elongate conduits 102, 104 may also
be parallel with each another, and the connectors 106 may be
equally spaced from one another and orthogonally aligned with
respect to the conduits 102, 104. It should be understood,
however, that different configurations and spatial relationships
for the upper and lower-tier elongate conduits 102, 104 and the
plurality of connectors may be envisioned by those of skill in
the art depending on the desired mixture flow separation
results.
Esparza ¶ 24 (emphasis added).
As the Examiner found, moreover, rather than shape, Esparza teaches
that it is the overall size and interior volume of the conduits, in connection
with the number and volume of the vertical connectors, that are critical for
providing satisfactory separation of the different phases from the starting
fluid material:
[I]n selecting a certain number of connectors 106 for the
separator 100 necessary to achieve a desired level of mixture
flow separation under a variety of flow regimes, the maximum
hydrodynamic slug volume expected in mixture flows through
the separator is preferably taken into consideration, as
previously mentioned. Accordingly, the number of connectors
106 is an amount necessary to make the total interior volume of
the separator greater than the maximum hydrodynamic slug
volume expected. The calculation for the total interior volume
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involves summing up of the interior volumes of the upper-tier
elongate conduit 102, the lower-tier elongate conduit 104, and
the connectors 106 for the given numbers of connectors. The
interior volume of the upper and lower-tier elongate conduits
102, 104, and the connectors 106, may be determined from the
chosen length and inside diameters of each. When separating
mixture flow components under conditions where one of the
component parts is a liquid and another of the component parts
is a gas or a liquid of a different density—especially when one
of the liquids is petroleum—efficient mixture flow separation is
facilitated if one or more of the connectors 106 has a length that
is at least about five times the inside diameter thereof or greater,
or if this length to diameter ratio is not possible, then a length
of at least about five meters. This connector 106 configuration
allows a liquid component entrained in the gas component flow
G moving up one of the connectors 106 to settle out and drop
back down to the lower-tier elongate conduit 104.
Esparza ¶ 27 (emphasis added).
Thus, on the current record, Esparza teaches that the conduits of its
separators can be configured to have a variety of different spatial
configurations. Esparza also teaches that the overall size and interior
volume of the conduits, rather than their shape, is critical to satisfactory
separation of different phases from the starting fluid. Appellant does not
persuade us, therefore, that the Examiner erred in determining that a skilled
artisan would have considered it obvious to configure the oval-shaped
conduits of the separator of Esparza’s Figure 6 to have a similar circular
shape, as recited in Appellant’s representative claim 1.
We acknowledge, but are unpersuaded by, Appellant’s contention that
configuring the oval conduits of Esparza’s Figure 6 to have, instead, the
circular shape recited in representative claim 1 would change the ratio of the
length of the outer conduits to the length of the inner conduits, in an
undesirable manner. See Reply Br. 4 (“[I]f the fluid flows slow enough for
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sufficient separation time in the shorter conduits, the fluid will flow at a
much slower than optimal rate in the longer conduits; but if the fluid flows at
the optimal rate for the longer conduits, it is flowing too fast for proper
separation in the shorter conduits.”).
In particular, Appellant does not identify any specific teaching in
Esparza, or other evidence of record, suggesting that the separator of
Esparza’s Figure 6 would fail to provide adequate fluid flow if the oval-
configured conduits were converted to a similar configuration, such as the
circular configuration recited in Appellant’s representative claim 1. Absent
such a teaching, or such evidence, Appellant’s contention in that regard
amounts to unsupported attorney argument, which is entitled to little
probative weight, if any. See In re Geisler, 116 F.3d 1465 1470 (Fed. Cir.
1997) (“An assertion of what seems to follow from common experience is
just attorney argument and not the kind of factual evidence that is required to
rebut a prima facie case of obviousness.”). Indeed, Esparza’s teaching that
the conduits of its separators can be configured to have a variety of different
spatial configurations (see Esparza ¶ 24) directly undermines Appellant’s
contention that the relatively minor shape change from the oval
configuration in Figure 6 to the similarly shaped circular configuration of
Appellant’s representative claim 1, posited by the Examiner, would be
expected to render the device unsuitable for separating fluid components.
Lastly, Appellant does not persuade us that the Examiner erred in
finding that Esparza would have suggested a downcomer between the liquid
and gas outlet lines as recited in representative claim 1. See Appeal Br. 17.
In particular, Appellant contends, a skilled artisan “would not have coupled
the gas outlet line and the liquid outlet line of Esparza because the separation
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provided by such coupling is already performed by the multiple connectors
associated with the elongate conduits.” Id.
The Examiner responds that, when the fluid to be separated includes
a larger portion of gas than liquid “it is beneficial to provide a large number
of connectors so that the separator has enough volume for the liquid to
escape from the gas.” Ans. 40 (citing Esparza ¶ 28). Therefore, the
Examiner contends, “a skilled artisan would understand the benefit of
providing connectors between the [outlet] headers to increase the volume of
the separator to ensure that there is enough space for the liquid droplets to be
removed from the gas before it leave the separator.” Id.; see also id. at 42–
43 (“[A] skilled artisan would understand the benefit of providing
connectors in the pipe immediately upstream of the outlet openings 220, 222
to ensure that the entrained liquid droplets have sufficient volume to be
removed from the gas phase before it exits the device.”).
Appellant does not respond specifically to the Examiner’s
determination that Esparza would have suggested that a connector between
the upper and lower outlets of Figure 6’s separator would be beneficial for
separating entrained liquid from the gas in the upper outlet. See Reply Br.
generally. As the Examiner found, moreover, Esparza teaches that a large
number of vertical connectors is useful in situations where gas is a high
percentage of the fluid (Esparza ¶ 28), and also teaches that the conduits and
connectors of its separators can be configured to have a variety of different
spatial relationships (id. ¶ 24). We note, in addition, that the three-tier
embodiment of Esparza’s Figure 5, reproduced above, includes vertical
connectors between the uppermost and lowermost tiers, immediately
adjacent to the outlets. See Esparza, Fig. 5.
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Appellant does not persuade us, therefore, of reversible error in the
Examiner’s determination that a skilled artisan would have considered it
useful, and therefore obvious, to include a connector between the upper and
lower outlets of the separator shown in Esparza’s Figure 6. Appellant also
does not persuade us, therefore, that the Examiner erred reversibly in finding
that Esparza teaches or suggests a system that includes the downcomer
features recited in Appellant’s representative claim 1.
In sum, for the reasons discussed, Appellant does not persuade us that
a preponderance of the evidence fails to support the Examiner’s conclusion
that Esparza would have suggested a device having all of the features recited
in representative claim 1 to a skilled artisan. We therefore affirm the
Examiner’s rejection of claim 1 for obviousness over Esparza. Because they
were not argued separately, claims 2–10 and 13–15 fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).
In rejecting claims 11 and 12, both of which depend from claim 1, the
Examiner relied on Esparza for the teachings discussed above and cited
Aarebrot as evidence that the additional elements recited in claims 11 and 12
would have been obvious features of the device suggested by Esparza. See
Ans. 11–12. In traversing the rejection of claims 11 and 12, Appellant relies
on its arguments, addressed above, in relation to claim 1. We therefore
affirm this rejection as well.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–10, 13–
15
103(a) Esparza 1–10, 13–
15

11, 12 103(a) Esparza, Aarebrot 11, 12
Overall
Outcome
1–15

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED