Ex Parte Alekseev et al

Patent Trial and Appeal Board

Jul 31, 2018

14345717 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/345,717 03/19/2014
23599 7590 08/02/2018
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BL VD.
SUITE 1400
ARLINGTON, VA 22201
Alexander Alekseev
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.
LINDE-0804 1317
EXAMINER
RAYMOND, KEITH MICHAEL
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER ALEKSEEV and
DIMITRI GOLOUBEV 1
Appeal2017-010772
Application 14/345,717
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-11. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 Appellant is the Applicant, Linde Aktiengesellschaft, which, according to
the Appeal Brief, is the real party in interest. Appeal Br. 1.
Appeal2017-010772
Application 14/345,717
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method for generating two purified air substreams at
different pressures, comprising:
compressing a total air stream ( 1) to a first total air
pressure,
cooling the compressed total air stream (5) at the first
total air pressure by heat exchange ( 4, 6) with cooling water,
wherein the heat exchange with cooling water for cooling the
total air stream ( 5) is carried out at least in part as direct heat
exchange in a first direct contact cooler ( 6),
dividing the cooled total air stream (9) into a first air
substream (10) and a second air sub stream (11 ),
purifying the first air sub stream ( 10) at the first total air
pressure in a first purification appliance (18) to obtain a first
purified air substream (19),
further compressing ( 12) the second air sub stream ( 11) to
a pressure which is higher than the first total air pressure,
cooling the further compressed second air substream (14)
by heat exchange (13, 15) with cooling water, wherein the heat
exchange with cooling water for cooling the further compressed
second air substream (14) is carried out at least in part as direct
heat exchange in a second direct contact cooler (15), and the
cooling water introduced into said second direct contact cooler
( 15) is warmer than the cooling water introduced into said first
direct contact cooler ( 6),
purifying the cooled second air sub stream (17) at the
higher pressure in a second purification appliance (30) to obtain
a second purified air substream (31 ).
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Application 14/345,717
REJECTIONS 2
I. Claims 1, 3-5, 7, 9, and 11 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Agrawal et al. (US 4,662,916, iss.
May 5, 1987) ("Agrawal") and Brox3 (DE 10 2007027 073 Al,
pub. Dec. 18, 2008).
II. Claims 2, 6, 8, and 10 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Agrawal, Brox, and Kiersz et al. (US
4,806,136, iss. Feb. 21, 1989) ("Kiersz").
DISCUSSION
Rejection I
Claims 1, 3, 5, 7, 9, and 11:
Independent claim 1 recites, in relevant part, that "the cooling water
introduced into said second direct contact cooler (15) is warmer than the
cooling water introduced into said first direct contact cooler (6)." Appeal
Br. 11 (Claims App.). The Examiner finds that "Agrawal and Brox do not
explicitly disclose wherein water in a second direct contact cooler is warmer
than water being utilized in a first cooler," but determines that such a feature
would have been obvious "as an optimization of a range though routine
experimentation." Final Act. 5---6. In particular, the Examiner explains that
[t]he specific temperature of the cooling water in each direct heat
exchanger is considered a result-effective variable wherein the
temperature achieves a recognized result (in this case the feed
2 The Examiner withdrew a rejection of claims 12-14 under 35 U.S.C.
§ 112, second paragraph, as indefinite. See Ans. 2; Advisory Act dated
Nov. 16, 2016.
3 An English translation of Brox was rnade of record on July 29, 2016, and
citations to Brox refer to pages from the English translation.
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Application 14/345,717
temperature of the air feeds to the distillation columns or
downstream equipment). The optimum or workable range for
the coolant water temperature can be determined through routine
experimentation to achieve the most efficient column feed
temperatures to provide the required separated air product purity.
Id. at 6; see also Ans. 3 ( explaining that "the cooling water (refrigerant)
temperature for each aftercooler is a result[-]effective variable, i.e., a
variable which achieves a recognized result, wherein the determination of
the optimum and workable ranges of said variable can be characterized as
routine experimentation").
Appellant argues the Examiner has failed to establish that using
warmer cooling water in the second direct contact cooler would have been
obvious as optimization of a result-effective variable through routine
experimentation. See Appeal Br. 6; Reply Br. 4---6. In particular, Appellant
asserts that "a proper routine optimization analysis also requires some
recognition in the prior art of what is the goal of the optimization," and "the
rejection improperly looks to [ A Jppellants' own specification to supply this
goal." Reply Br. 5 (citing Ans. 3). We agree that a sustainable case of
obviousness has not been established.
As our reviewing court explained in In re Applied Materials, Inc., 692
F.3d 1289, 1296 (Fed. Cir. 2012):
"[W]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable
ranges by routine experimentation." [In re] Aller, 220 F.2d
[454,] 456 [(CCPA 1955)]. This rule is limited to cases in which
the optimized variable is a "result-effective variable." In re
Antonie, 559 F.2d 618, 620 (CCPA 1977); see [In re] Boesch,
617 F.2d [272,] 276 [(CCPA 1980)] ("[D]iscovery of an
optimum value of a result effective variable . . . is ordinarily
within the skill of the art."). In the present case, because the prior
art disclosed values overlapping the claimed ranges, the "general
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Application 14/345,717
conditions" of the claim are disclosed. See Aller, 220 F .2d at
456; see also Boesch, 617 F.2d at 276. The question is whether
the dimensions were known to be result-effective variables.
Here, the Examiner does not point to any evidence in the record
before us showing that the cooling water temperature for the direct contact
cooler, much less the relative temperature between cooling water streams
introduced into separate direct contact coolers, was known by those of
ordinary skill in the art at the time of the invention to be a result-effective
variable. Thus, the Examiner does not establish the requisite factual basis to
support the determination that the claimed cooling water temperature
difference (i.e., "the cooling water introduced into said second direct contact
cooler (15) is warmer than the cooling water introduced into said first direct
contact cooler ( 6)") amounts to nothing more than routine optimization of a
result-effective variable.
The Examiner also appears to take an alternative position by
explaining that
Brox provides that direct contact coolers can utilize[] warmer
and colder water so that[,] if each of the aftercoolers of Agrawal
were replaced by the direct contact cooler disclosed by Brox[,]
then one of the coolers can easily utilize warmer or colder water
than the other. Modifying the pre-coolers with the DC Cs of Brox
would result in having one stream fed to the DCC at a
temperature range of 15--45 (preferred temperature 28) degrees
Celsius and a second stream fed to the DCC at a temperature
range of 5 to 25 degrees (preferred temperature 15 degrees).
Clearly[,] since both DCCs as modified by Brox would have
water introduced at 28 degrees and at 15 degrees[,] it follows that
some of the cooling water introduced into the second DCC
(stream 10) is warmer than some of the cooling water introduced
into the first DCC (stream 20/9).
Ans. 9 (underlining omitted). This position is unavailing.
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Here, the Examiner errs by not articulating sufficient reasoning,
supported by rational underpinnings, as to why a person having ordinary
skill in the art would have been prompted to configure the method based on
the combined teachings of Agrawal and Brox to introduce cooling water into
the second direct contact cooler (i.e., for cooling the second air substream)
that is warmer than the cooling water introduced into the first direct contact
cooler (i.e., for cooling the total air stream). See KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007) (stating that "[r]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness" ( quoting In re Kahn, 441 F .3d
977, 988 (Fed. Cir. 2006))).
Although Brox discloses the use of two cooling water lines in the
direct contact cooler ( direct contact radiator 5), and that the preferred
temperature of the cooling water in line 10 is warmer than the preferred
temperature of the cooling water in line 9 (see Brox 3--4), we agree with
Appellant that, because "Brox teaches only a single direct contact cooler[,]
... any assertion as to how Brox would handle multiple direct contact
coolers is pure speculation" (Reply Br. 8). Moreover, Brox discloses that,
during normal operation of the system ("first operation mode"), cooling
water 20 flows through line 9 to direct contact radiator 5, but valves 12, 12a,
and 13 are closed. See Brox 3. In other words, because valves 12 and 12a
are closed, cooling water 22 (which is warmer than cooling water 20) does
not flow to the direct contact cooler. See id., Fig. As Appellant argues,
"[ t ]he mere possibility that if Brox included more than one direct contact
cooler it could possibly arrange it so that the second direct contact cooler
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Application 14/345,717
was fed water which is wanner than that [fed] to the first is clearly not
sufficient to support an obviousness rejection." Id.
We note that rejections based on obviousness must rest on a factual
basis; in making such a rejection, the Examiner has the initial burden of
supplying the requisite factual basis and may not, because of doubts that the
invention is patentable, resort to speculation, unfounded assumptions, or
hindsight reconstruction to supply deficiencies in the factual basis. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967). In this case, absent improper
hindsight reconstruction, we do not see a sufficient reasoned explanation,
based on a rational underpinning, as to why one of ordinary skill in the art
would have been led to modify Agrawal-based on the teachings of Brox-
such that the cooling water introduced into the second direct contact cooler
for cooling the second substream is warmer than the cooling water
introduced into the first direct contact cooler for cooling the total air stream,
and an adequate reason for such modification is not otherwise evident from
the record.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper case that independent claim 1 is
unpatentable based on the cited references. On this basis, we do not sustain
the rejection of independent claim 1 or its dependent claims 3, 5, 7, 9, and 11
under 35 U.S.C. § 103(a) as unpatentable over Agrawal and Brox.
Claim 4:
Independent claim 4 recites, in relevant part, "a first direct contact
cooler (6) for cooling the compressed total air stream (5) at the first total air
pressure by direct heat exchange (4, 6) with cooling water, ... [and] a
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Application 14/345,717
second direct contact cooler (15) for cooling the boosted second air
substream (14) by direct heat exchange (4, 6) with cooling water." Appeal
Br. 12 (Claims App.). In contrast to independent claim 1, independent claim
4 does not require that the cooling water introduced into the second direct
contact cooler is warmer than the water introduced into the first direct
contact cooler. Compare id., with id. at 11 (Claims App.). As such,
Appellant's arguments (and the supporting Declaration of Alexander
Alekseev) regarding warmer cooling water being introduced into the second
direct contact cooler that we found persuasive with respect to the rejection of
claim 1 (see Appeal Br. 3-8; Reply Br. 1-8) are not commensurate with the
scope of claim 4, and thus, are not persuasive with respect to the rejection of
claim 4. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (noting that it is
well established that limitations not appearing in the claims cannot be relied
upon for patentability).
Appellant further argues that "Brox discloses a single direct contact
cooler to cool the total air feed stream[,] ... [but] Brox make[s] no
disclosure of a [ substream] of the total air feed stream, let alone the cooling
of such an air substream." Appeal Br. 5. This argument against Brox is
unpersuasive because it attacks the reference individually, and is not
responsive to the rejection presented. "Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references." In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413,425
(CCPA 1981)).
Here, the Examiner does not rely on Brox for teaching cooling a
substream of the total air feed stream. Rather, as discussed above, the
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Application 14/345,717
Examiner finds that "Agrawal discloses a branch line for dividing the total
air stream cooled in the first cooler into a first air substream 3 50 and a
second air substream 320[,] ... [and] a second cooler for cooling the
boosted second air substream." Final Act. 7 ( citing Agrawal, col. 6, 11. 34--
38). The Examiner finds that "Agrawal does not explicitly disclose that the
coolers are direct contact coolers that cool the air streams by direct heat
exchange with cooling water," and relies on Brox for disclosing such a direct
contact cooler. Id. The Examiner determines that it would have been
obvious to modify Agrawal's device to use direct contact coolers, as taught
by Brox, "to cool the total air stream and the second air substream after
compression in order to remove the heat of compression in a more effective
way of heat transmission by avoiding having to exchange heat through tube
walls or fins and applying the cooling directly to the stream." Id. at 7-8. In
this regard, Appellant does not specifically address the Examiner's
articulated reasoning for the conclusion of obviousness. Namely, the
Examiner articulates adequate reasoning based on rational underpinnings for
modifying the device of Agrawal, and Appellant does not offer any factual
evidence or persuasive technical rationale to refute the Examiner's
articulated reasoning or explain why it would be deficient.
For the reasons discussed above, AppeUant' s arguments do not
apprise us of error in the rejection of independent claim 4. Accordingly, we
sustain the rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable
over Agrawal and Brox.
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Application 14/345,717
Re} ection II
With respect to the rejection of claims 2, 6, 8, and 10, which depend
from claim 1, the Examiner relies on Kiersz for teaching additional features,
but does not articulate any findings or reasoning that would cure the
aforementioned deficiencies in the combination of Agrawal and Brox. See
Final Act. 9--10. Accordingly, we also do not sustain the rejection of claims
2, 6, 8, and 10 as unpatentable over Agrawal, Brox, and Kiersz.
DECISION
The Examiner's decision rejecting claims 1-11 is AFFIRMED as to
claim 4, and is REVERSED as to claims 1-3 and 5-11.
AFFIRMED-IN-PART
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