Ex Parte Buhrman et al

Patent Trial and Appeal Board

Aug 31, 2016

13149190 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/149,190 05/31/2011
7590
Richard R Taylor
c/o Shell Oil Company
P.O. Box 2463
Houston, TX 77252-2463
08/31/2016
FIRST NAMED INVENTOR
Frederik Arnold BUHRMAN
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.
TH3765(US) 1967
EXAMINER
TURNER, SONJI
ART UNIT PAPER NUMBER
1776
MAILDATE DELIVERY MODE
08/31/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDERIK ARNOLD BUHRMAN, JINGYU CUI,
MAHENDRA LADHARAM JOSHI, STANLEY NEMEC MILAM, and
SCOTT LEE WELLINGTON
Appeal2015-002812
Application 13/149, 190
Technology Center 1700
Before TERRY J. OWENS, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal the Examiner's final rejection of claims 1-7 and
21-25. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Shell Oil Company as the Real Party in Interest.
App. Br. 1.
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Application 13/149, 190
The Claimed Invention
Appellants' disclosure relates to the separation of one or more
components from a fluid stream containing a plurality of components;
particularly, to a system and method for removing one or more compressible
components from a compressible stream using a separation device and an
incompressible fluid. Spec. i-f 1; Abstract. Claim 1 is representative of the
claims on appeal and is reproduced below from the Claims Appendix to the
Appeal Brief (App. Br. 12) (emphasis added to identify disputed limitation):
1. A method comprising:
providing a compressible feed stream comprising a first
compressible component and a second compressible component;
providing an incompressible fluid stream comprising an
incompressible fluid capable of absorbing the first compressible
component or reacting with the first compressible component;
mixing the compressible feed stream and the incompressible
fluid stream to form a mixed stream, where the compressible feed
stream is provided for mixing at a first linear velocity in a first
direction and the incompressible fluid stream is provided for
mixing at a second linear velocity in a second direction, the
second linear velocity having a velocity component in the same
direction as the first direction, where the mixed stream has an
instantaneous third linear velocity in a third direction and is
comprised of the second compressible component and a
constituent selected from the group consisting of a mixture of the
first compressible component and the incompressible fluid, a
chemical compound or adduct of a reaction between the first
compressible component and the incompressible fluid, and
mixtures thereof;
imparting a rotational velocity to the mixed stream, where
the rotational velocity is tangential or skew to the direction of
the instantaneous third linear velocity of the mixed stream; and
separating an incompressible fluid product stream from the
mixed stream, where the incompressible fluid product stream
comprises at least a portion of the constituent of the mixed
stream, and where the incompressible fluid product stream is
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separated from the mixed stream as a result of the rotational
velocity imparted to the mixed stream.
The References
The Examiner relies on the following references in rejecting the
claims on appeal:
Djabbarah
Canari et al.,
(hereinafter "Canari")
Canari et al.,
us 4,605,066
US 7, 780,932 B2
PCT /IL2007/001091
The Rejections
Aug. 12, 1986
Aug.24,2010
Mar. 13, 2008
On appeal, the Examiner maintains the following rejections:
1. Claims 1--4, 6, 7, and 21-25 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Canari. 2
2. Claim 7 stands rejected under 35 U.S.C. § 102(b) as anticipated
by, or in the alternative, under 35 U.S.C. § 103(a) as obvious over Canari.
3. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Canari as applied to claim 4, and further in view of
Djabbarah.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner's
rejections for the reasons set forth in the Answer, which we adopt as our
2 The Examiner identifies Canari, "PCT /IL2007/001091" as the rejecting
prior art reference, but notes that Canari, "US 7,780,932 is used" for
purposes of examination on the merits. Ans. 2; Final Act. 2.
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own. Nevertheless, we highlight and address specific findings and
arguments for emphasis as follows.
Rejection 1
Appellants argue claims 1--4, 6, 7, and 21-25 as a group. We select
claim 1 as representative of this group, and the remaining claims stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Canari discloses all of the limitations of
claim 1 and thus, rejects claim 1 as being anticipated by the reference. Ans.
2, 3 (citing Canari, col. 1, 11. 10-30, col. 2, 11. 25-65, col. 3, 11. 5-15, col. 4,
col. 5, 11. 50-65, col. 6, 11. 5-35, col. 7, 11. 60-65, col. 8, 11. 1--45, col. 9, 1.
10, Figs. 1-3).
Appellants argue that the Examiner's rejection should be reversed
because Canari does not disclose the limitation "imparting a rotational
velocity to the mixed stream, where the rotational velocity is tangential or
skew to the direction of the instantaneous third linear velocity of the mixed
stream," as required by claim 1. App. Br. 8. In particular, Appellants argue
that in contrast to the claimed invention: (1) the "housing of Canari
completely changes the linear velocity axis"; (2) the "swirling means 24 of
Canari does not impart rotational velocity on the stream"; and (3) the
"housing and/or the 'swirling means' of Canari does not impart rotational
velocity around the axis of instantaneous linear velocity." Id. at 9. Relying
on paragraph 28 of the Specification as support, Appellants further argue
that:
the present disclosure defines "rotational velocity" as: [T]he
velocity of a stream, flow, or component about an axis in a
rotational motion, where the axis is defined by the direction of
the instantaneous linear velocity of the stream, flow, or
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Application 13/149, 190
component. The rotational velocity is tangential or skew to the
axis defined by the direction of the instantaneous linear velocity
of the stream.
Id. at 8 (quoting Spec. i128) (emphasis added).
We do not find Appellants' arguments persuasive. To serve as an
anticipatory reference, "the reference must disclose each and every element
of the claimed invention, whether it does so explicitly or inherently." In re
Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). Thus, the first step in
determining whether a particular reference anticipates a claim is claim
construction. See Oakley, Inc. v. Sunglass Hut Int 'l, 316 F.3d 1331, 1339
(Fed. Cir. 2003) (explaining that anticipation and obviousness require
comparison of the properly construed claims to the available prior art); In re
Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1997) ("[T]o properly compare [the
prior art] with the claims at issue, we must construe the term [in dispute] to
ascertain its scope and meaning.").
i~\:..s the Examiner correctly points out (i\:..ns. 7), i~\1ppellants misquote
paragraph 28 of the Specification regarding the definition of the term
"rotational velocity." Contrary to what Appellants argue at page 8 of the
Appeal Brief, paragraph 28 of the Specification actually states (emphasis
added) that:
[0028] As used herein, the term "rotational velocity"
refers to the velocity of a stream, flow, or component about an
axis in a rotational motion, where the axis may be defined by the
direction of the instantaneous linear velocity of the stream, flow,
or component. The rotational velocity may be tangential or skew
to the axis defined by the direction of the instantaneous linear
velocity of the stream.
Compare Spec. i128 with App. Br. 8 (misquoting Spec. i18).
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Moreover, based on the record before us and under either the broadest
reasonable interpretation of the term rotational velocity in light of the
Specification (which we find is stated at i-f 28 of the Specification) or
Appellants' narrower definition for the term (as argued by Appellants at p. 8
of the Appeal Brief), we are persuaded that the Examiner's finding (Ans. 2,
3) that Canari discloses all of claim 1 's limitations, including the "imparting
a rotational velocity" limitation is supported by a preponderance of the
evidence. Canari, col. 1, 11. 10-30, col. 2, 11. 25---65, col. 3, 11. 5-15, col. 4,
col. 5, 11. 50---65, col. 6, 11. 5-35, col. 7, 11. 60---65, col. 8, 11. 1--45, col. 9, 1.
10, Figs. 1-3.
As the Examiner found (Ans. 8), Canari discloses a swirling means 24
that imparts a rotational velocity to the mixed stream as claimed, i.e., where
passages 37 (openings 30 in swirling means 24) are tangent or, at a
minimum, skew to the instantaneous third linear velocity. See id. (annotated
excerpt of Canari Figure 2 illustrating a directional arrow for the mixed
stream in the outer annular space 26 located at the top of Figure 2
immediately to the left of reference character 37); see also Canari, col. 9, 1.
10. Appellants' conclusory arguments, without more, are insufficient to
rebut or otherwise establish reversible error in the Examiner's findings in
this regard. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Accordingly, we affirm the Examiner's rejection of claims 2--4, 6, 7,
and 21-25 under 35 U.S.C. § 102(b) as anticipated by Canari.
Rejection 2
Appellants do not present any separate or additional arguments in
response to Rejection 2. Instead, Appellants rely on the same arguments
presented in response to Rejection 1. App. Br. 10.
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Accordingly, based on the findings and technical reasoning provided
by the Examiner and for the same reasons discussed above for affirming
Rejection 1, we affirm Rejection 2.
Rejection 3
Claim 5 depends from claim 4 which depends from claim 1 and adds
the following limitations:
separating at least a portion of the first compressible component
from the incompressible fluid product stream to form a
compressible product stream; and injecting the compressible
product stream into a subterranean formation.
App. Br. 13 (Claims App'x). The Examiner finds that the combination of
Canari and Djabbarah suggests all of claim 5 's limitations and would have
rendered claim 5 obvious. Ans. 6, 7.
Appellants argue that the Examiner's rejection should be reversed
because "the Examiner has not established a prima facie case of obviousness
relative to Canari and ujabbarah." App. Br. 10. In particular, Appellants
argue that "Canari does not teach or suggest imparting a rotational velocity
[as required by claim 1 and] ... Djabbarah provides no additional disclosure
to remedy this deficiency." Id.
We are not persuaded by Appellants' argument because a naked
assertion that the prior art fails to teach or suggest a claim limitation is not
an argument in support of separate patentability. Cf In re Lovin, 652 F .3d
1349, 1356-57 (Fed. Cir. 2011); 37 C.F.R. § 41.37(c)(l)(iv). Moreover,
based on the record before us, we find that the Examiner's findings
regarding Canari's and Djabbarah's combined teachings and stated rationale
for why one of ordinary skill would have combined these teachings to arrive
at the claimed invention, as set forth at pages 6 and 7 of the Answer, are
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supported by a preponderance of evidence and based on sound technical
reasoning. Canari, col. 1, 11. 10-30, col. 2, 11. 25---65, col. 3, 11. 5-15, col. 4,
col. 5, 11. 50---65, col. 6, 11. 5-35, col. 7, 11. 60---65, col. 8, 11. 1--45, col. 9, 1.
10, Figs. 1-3; Djabbarah, Abstract.
Appellants' conclusory arguments, without more, are insufficient to
rebut or otherwise establish reversible error in the Examiner's findings in
this regard. De Blauwe, 736 F.2d at 705.
Accordingly, we affirm the Examiner's rejection of claim 5 under
35 U.S.C. § 103(a) as unpatentable over the combination of Canari and
Djabbarah.
DECISION/ORDER
The Examiner's rejections of claims 1-7 and 21-25 are affirmed.
It is ordered that the Examiner's decision is affirmed.
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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