Ex Parte Bouillon et al

Patent Trial and Appeal Board

Mar 17, 2016

12621825 (P.T.A.B. Mar. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/621,825 11/19/2009 Pierre Antoine BOUILLON
23599 7590 03/21/2016
MILLEN, WHITE, ZELANO & BRANIGAN, P,C
2200 CLARENDON BL VD.
SUITE 1400
ARLINGTON, VA 22201
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.
PET-2556 3205
EXAMINER
WARTALOWICZ, PAUL A
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
03/21/2016 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PIERRE A. BOUILLON,
RAPHAEL HUYGHE, RAFAEL LUGO,
and F ABRICE GIROUDIERE
Appeal2014-004676
Application 12/621,825
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1---6 and 10-19 of Application
12/621,825 under 35 U.S.C. § 103(a) as obvious. Final Act. (Nov. 8, 2012).
Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
1 IFP Energies nouvelles is identified as the real party in interest. Appeal
Br. 1.
Appeal2014-004676
Application 12/621,825
BACKGROUND
The '825 Application describes a process for the production of
hydrogen from fossil fuels with total recovery of carbon dioxide and
unconverted methane for recycling. Spec. 1. The Specification describes
the process as providing decreased greenhouse gas emissions from an initial
steam methane reforming and a subsequent water gas shift conversion. Id.
at 2.
Claim 1 is representative of the '825 Application's claims and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A process for the production of hydrogen from a
hydrocarbon feedstock and steam comprising:
producing a synthesis gas in a steam-reforming unit for the
hydrocarbon feedstock in the presence of steam and a fuel
providing heat necessary for reaction,
shift conversion of the synthesis gas that is obtained to
produce a stream containing additional hydrogen additional C02
and residual methane,
recovering carbon dioxide and methane, present in the stream
that is obtained from the shift conversion, in the form of hydrates,
in the presence of a non-water miscible solvent, separating a
stream enriched in hydrogen, carried out at 0-60°C and a
pressure of 0.2---6 MPa,
regenerating methane, at 0 to 40°C and 0.2 to 6 MPa,
regenerating carbon dioxide at a temperature of 0 to 40°C and a
pressure of 0.2 to 6 MPa,
recycling methane to said steam reforming unit.
Appeal Br. 8.
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Appeal2014-004676
Application 12/621,825
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1---6, 10-12, and 14 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Balan,2
Spencer,3 and Vanhoof. 4 Final Act. 3; Ans. 2.
2. Claims 1---6, 10-12, and 14 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination ofBalan,
Spencer, Kimura, 5 and Vanhoof. Final Act. 7; Ans. 6.
3. Claims 1---6, 10-12, and 14 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination ofBalan,
Spencer, Kimura, and Gudmundsson. 6 Final Act. 8; Ans. 8.
4. Claim 13 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Balan, Spencer, and
Huber.7 Final Act. 9; Ans. 9.
5. Claim 13 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Balan, Spencer, Kimura,
and Huber. Final Act. 10.
2 US 2005/0210881 Al, published Sept. 29, 2005.
3 US 6,352,576 Bl, issued Mar. 5, 2002.
4 US 3,923,813, issued Dec. 2, 1975.
5 US 2005/0107648 Al, published May 19, 2005.
6 US 5,536,893, issued July 16, 1996.
7 US 5,644,911, issued July 8, 1997.
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Application 12/621,825
6. Claim 13 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Balan, Spencer, Kimura,
Gudmundsson, and Huber. Id. at 11.
7. Claims 15, 18, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Balan, Spencer,
Rhinesmith,8 Saunders,9 and Haase. 1° Final Act. 12; Ans. 9.
8. Claims 15, 18, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Balan, Spencer,
Kimura, Rhinesmith, Saunders, and Haase. Final Act. 13;
Ans. 10.
9. Claims 15, 18, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Balan, Spencer,
Kimura, Gudmundsson, Rhinesmith, Saunders, and Haase.
Final Act. 14; Ans. 11.
10. Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Balan, Spencer,
DeSimone, 11 and Poovathinthodiyil. 12 Final Act. 15; Ans. 12.
11. Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Balan, Spencer,
Kimura, DeSimone, and Poovathinthodiyil. Final Act. 16;
Ans. 13.
8 US 2009/0255181 Al, published Oct. 15, 2009.
9 US 3,727,049, issued Apr. 10, 1973.
10 US 5,382,417, issued Jan. 17, 1995.
11 US 6,747,179 Bl, issued June 8, 2004.
12 US 2003/0072716 Al, published Apr. 17, 2003.
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Application 12/621,825
12. Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Balan, Spencer,
Kimura, Gudmundsson, DeSimone, and Poovathinthodiyil.
Final Act. 17; Ans. 14.
13. Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Balan, Spencer,
DeSimone, Poovathinthodiyil, and Saunders. Final Act. 18;
Ans. 15.
14. Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Balan, Spencer,
Kimura, DeSimone, Poovathinthodiyil, and Saunders. Final
Act. 19.
15. Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Balan, Spencer,
Kimura, Gudmundsson, DeSimone, Poovathinthodiyil, and
Saunders. Final Act. 20.
DISCUSSION
Appellants argue for the reversal of Rejections 1--4 and 7-13, below,
on the basis of limitations present in independent claim 1. See Appeal Br.
2-7. We, therefore, limit our analysis to claim 1. Dependent claims 2--4,
10-13, and 16-19 will stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Appellants do not present any explicit argument for reversal of
Rejections 5, 6, 14, and 15.
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Application 12/621,825
Rejection 1. The Examiner rejected claims 1-6, 10-12, and 14 as
unpatentable over the combination of Balan, Spencer, and Vanhoof. Final
Act. 3; Ans. 2.
Appellants argue that this rejection should be reversed because:
(1) the Examiner erred by finding that the combination ofBalan and Spencer
(with Vanhoof) describes or suggests the formation of a carbon dioxide
hydrate using a non-water miscible solvent and (2) Spencer only suggests
the recovery of carbon dioxide hydrates using water soluble solvents and
provides insufficient guidance for methane hydrate recovery. Appeal Br. 2-
4. We address these arguments seriatim below.
First, Appellants argue that because "Spencer teaches that hydrate
promoters are ... 'water-soluble' halogenated hydrocarbons[,] ... water
immiscible solvents are clearly not suggested to one of ordinary skill in the
art .... " Appeal Br. 3. Appellants further argue that the ordinary skilled
artisan would know that "a substance which is non-water miscible, as in the
present claim [l], would be expected to also be water insoluble to a large
degree, if not entirely." Id. For the following reasons, we are not persuaded
by this argument.
Claim 1 is directed to a process comprising "recovering carbon
dioxide and methane ... in the form of hydrates, in the presence of a non-
water miscible solvent."
We begin by interpreting the language of claim 1. In particular, we
construe the term "miscible" in relation to the phrase "water soluble."
During prosecution, the PTO gives the language of the proposed
claims "the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of definitions or otherwise that
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Application 12/621,825
may be afforded by the written description contained in the applicant's
specification." In re Morris, 127 F.3d 1048, 1054--55 (Fed. Cir. 1997).
A person of ordinary skill in the art at the time of the invention would
have understood the tenn "miscibility" to mean "the ability of a liquid or gas
to dissolve uniformly in another liquid or gas in any proportion." See
Miscibility in Hawley's Condensed Chemical Dictionary (13th ed. 1997);
Miscible I Definition of Miscible, Merriam-Webster.com,
http://www.merriam-webster.com/dictionary/miscible ("capable of being
mixed; specifically: capable of mixing in an ratio without separation of two
phases"). Appellants do not point us to any alternative definition of this
term in their Specification. We, therefore, interpret the term miscible as set
forth above.
Appellants argue that the rejection should be reversed because
Spencer describes "chloroform, ethylene chloride, carbon tetrachloride and
the like" as "water soluble halogenated hydrocarbons." Appellants argue
that
there is an error which would be manifestly apparent to one of
ordinary skill in the art on considering Spencer . . . . Thus, one
of ordinary skill in the art would disregard this manifestly
incorrect disclosure of Spencer, and instead would employ only
the water soluble halogenated hydrocarbons as taught to be
required in the reference as carbon dioxide hydrate promoters.
Appeal Br. 4 (citing In re Yale, 434 F.2d 666 (CCPA 1970).
We are not persuaded by Appellants' arguments. As the Examiner
found, chloroform is not miscible in water. Final Act. 5 (citing Vanhoof,
col. 45, 11. 19-22). Contrary to Appellants' assertions, however, a
compound can be non-water miscible and still have some degree of water
solubility. In this case, a person of ordinary skill in the art at the time of the
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Application 12/621,825
invention would have known that chloroform, ethylene chloride, and carbon
tetrachloride are not completely insoluble in water. 13 These compounds,
however, are not infinitely soluble in water and as the amount of the
halogenated hydrocarbon is increased, phase separation will occur. The
combination of Balan, Spencer, and Vanhoof, therefore, suggests the
formation of a carbon dioxide hydrate using a non-water miscible solvent.
Second, Appellants argue that "[i]t is apparent from Spencer only that
carbon dioxide can be removed as hydrates .... " Appeal Br. 4. Regarding
the Examiner's finding that Spencer suggests that methane can be removed
in similar fashion (Adv. Act. 2 (citing Spencer, col. 12, 11. 55---65)),
Appellants assert that the reference "provides little guidance" and, if any, it
only suggests use of water soluble solvents. Appeal Br. 4. For the
following reasons, we are not persuaded by this argument.
"It is well settled that a prior art reference is relevant for all that it
teaches to those of ordinary skill in the art." In re Fritch, 972 F.2d 1260,
1264 (Fed. Cir. 1992). "A person of ordinary skill is also a person of
ordinary creativity, not an automaton." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007). The Examiner found that although Spencer dedicates
a small portion of the disclosure to forming hydrates other than carbon
dioxide, Spencer teaches that hydrates of other gases can be removed,
including methane. Ans. 6. Therefore, Spencer teaches the limitation of
recovering carbon dioxide and methane, in the form of hydrates, in the
presence of a non-water miscible solvent.
13 For example, the solubility of chloroform in water is reported to be
0.809 g/100 ml at 20 °C. Chloroform, Wikipedia.com (March 14, 2016)
https ://en. wikipedia.org/wiki/Chloroform.
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Application 12/621,825
We, therefore, affirm the Examiner's rejection of claims 1---6, 10-12,
and 14 as unpatentable over the combination of Balan, Spencer, and
Vanhoof.
Rejections 2 through 15. Appellants argue that each of these
rejections should be reversed because the additionally applied references do
not cure the deficiencies of Balan, Spencer, and Vanhoof in the rejection of
claim 1. Appeal Br. 5. Having found no such deficiencies, we also affirm
each of these rejections.
CONCLUSION
For the reasons set forth above, we affirm the rejections of claims 1---6
and 10-19 of the '825 Application.
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
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