Ex Parte Lourenco et al

Patent Trial and Appeal Board

Sep 11, 2017

13128603 (P.T.A.B. Sep. 11, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/128,603 05/10/2011 Jose Lourenco THAS137092 1802
26389 7590 09/21/2017
rTTRTSTRNSFN OTONNOR TOHNSON KTNDNFNN PT T C EXAMINER
1201 THIRD AVENUE ALOSH, TAREQ M
SUITE 3600
SEATTLE, WA 98101-3029 ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
09/21/2017 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):
efiling @ cojk. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSE LOURENCO and MACKENZIE MILLAR
Appeal 2016-004968
Application 13/128,6031
Technology Center 3700
Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
TARA L. HUTCHINGS, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 13, and 15.2 We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real parties in interest are “the assignees
1304338 ALBERTA LTD. and 1304342 ALBERTA LTD.” Appeal Br. 1.
2 Claim 14 is pending in the application, but withdrawn from consideration.
Final Act. 1,2.
Appeal 2016-004968
Application 13/128,603
STATEMENT OF THE CASE
Subject Matter on Appeal
The Specification describes that “[t]he present invention relates to a
method of increasing gas mass flow injection rates to gas storage caverns
using LNG [(i.e., liquid natural gas)].” Spec. 1.
Claim 11 is representative of the subject matter on appeal and
reproduced below.
11. A method for gas injection to a gas storage cavern,
comprising:
positioning at the gas storage cavern a tank of liquid
natural gas (LNG), a gas compressor, and a heat exchanger, the
heat exchanger having a first flow path and a second flow path
in thermal contact with the first flow path;
passing LNG from the tank through the first flow path of
the heat exchanger;
passing natural gas from a natural gas flow line through
the second flow path of the heat exchanger to effect a heat
transfer between the natural gas and the LNG;
passing the natural gas from the heat exchanger to the
compressor to compress the natural gas; and
discharging both the LNG and the natural gas into the gas
storage cavern.
Rejections
Claim 15 stands rejected under 35 U.S.C. § 112 (pre-AIA), first
paragraph, as failing to comply with the written description requirement.
Claims 11, 13, and 15 stand rejected under (pre-AIA) 35 U.S.C.
§ 103(a) as unpatentable over Lourenco et al. (WO 2007/140581 Al, pub.
Dec. 13, 2007) (“Lourenco”) and Pozivil et al. (WO 2005/068847 Al, pub.
July 28, 2005) (“Pozivil”).
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Appeal 2016-004968
Application 13/128,603
ANALYSIS
The Rejection of Dependent Claim 15 Under (pre-AIA) 35 U.S.C. § 112,
First Paragraph, as Failing to Comply with the Written Description
Requirement
Claim 15 recites, “[t]he method of claim 11, further comprising the
step of mixing the natural gas and the LNG immediately prior to discharging
into the gas storage cavern.” Appeal Br., Claims App. (emphasis added).
The Examiner finds that the written description provides no support
for the words “immediately prior” because the words “exclu[de] . . . any
other processes or steps occurring with respect to a stream of mixed natural
gas and LNG between a step of mixing of the aforesaid streams, and a step
of discharging of the mixed streams into the cavern.” Final Act. 2—3. The
Examiner states that the words “immediately prior” indicate an
“exclusionary provisio.” Final Act. 3; see also Ans. 4—5 n.5 (citing MPEP
§ 2173.05(i) “Negative Limitations”).
The Appellants oppose the construction of claim 15 as a negative
limitation and argue that the written description has support for the mixing
step of claim 15. See Appeal Br. 5—7; Reply Br. 2—3. The Appellants point
to Figure 1 of the Specification to demonstrate possession of the mixing step
of claim 15. Appeal Br. 6—7. The Appellants explain that support for a
claim limitation may come from the figures. Reply Br. 3 (stating “support
for a claim limitation may be found in ‘words, structures, figures, diagrams,
formulas, etc.’”) (citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572
(Fed. Cir. 1997)); see Appeal Br. 5—6; see also MPEP § 2163.02 (“Standard
for Determining Compliance With the Written Description Requirement”).
Then, the Appellants point to Figure 1 to show possession of the mixing step
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Application 13/128,603
of claim 15. The Appellants explain that Figure 1 “depicts a mixer 40 that
mixes natural gas (line 6) with LNG (line 12) immediately prior to
discharging the mixture into a gas storage cavern 33.” Reply Br. 3; see
Appeal Br. 5—6.
In response, the Examiner focuses primarily on the explicit, implicit,
and inherent disclosures in the Specification. See Ans. 2—9. However, the
Examiner fails to explain persuasively how Figure 1 ’s depiction fails to
show to one of ordinary skill in the art that the Appellants had possession of
the mixing step of claim 15 at the time of filing. We find the depiction of
Figure 1, along with the content in the Specification particular to Figure 1,
reasonably conveys to those skilled in the art, as of the filing date sought,
that the Appellants were in possession of the mixing step of claim 15. See
also AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc).
Thus, we do not sustain the Examiner’s rejection of claim 15 as
failing to comply with the written description requirement.
The Rejection of Independent Claim 11 and Dependent Claims 13 and 15
Under (pre-AIA) 35 U.S.C. § 103(a) as Unpatentable OverLourenco and
Pozivil
The Examiner finds that Lourenco teaches the method required by
claim 11, “but for heat exchanging LNG and natural gas prior to
compression.” Ans. 10; see Final Act. 4. The Examiner relies on Pozivil to
remedy the deficiency of Lourenco. See Ans. 10, Final Act. 4. The
Examiner finds that Pozivil teaches cooling natural gas 8 by LNG in a heat
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Application 13/128,603
exchanger 24 prior to compression 12 of the natural gas 8.3 Ans. 10 (citing
Pozivil, Fig. 3); see also Final Act. 4. The Examiner concludes:
it would have been obvious to one of ordinary skill in the art. . .
to provide a heat exchanger upstream the gas compressor of
Lourenco, as taught by Pozivil, such that the LNG (from
[Lourenco’s cryogenic] tank 12) provide[s] cooling of the natural
gas delivered to the gas compressor in order to provide relatively
greater compression efficiencies to the compressor and, in
addition or alternative, allow[ for] a relatively smaller sized
compressor to be employed [to] hav[e] similar compression
ratios as that expressly taught by Lourenco alone.
Final Act. 4 (citing Pozivil 1,11. 20—28). We determine that the Examiner
articulates reasoning with rational underpinning sufficient to support the
conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[Rejections on obviousness grounds . . . [require] some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398,418 (2007)).
The Appellants argue that there would be no motivation to combine
the teachings of Lourenco and Pozivil as suggested by the Examiner because
the combination would destroy Lourenco’s purpose of increasing the storage
capacity of a cavern by lowering the temperature and therefore the pressure
of the natural gas in the cavern. See Appeal Br. 9-10. The Appellants point
out that Lourenco injects LNG “directly into a cavern in order to condition
the natural gas being stored.” Appeal Br. 9. To support this argument, the
3 The Examiner explains Pozivil’s “‘boil-off’ gas is nothing more than
natural gas which has been naturally evaporated by heat ingress into an LNG
storage tank.” Ans. 10n.l0.
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Appellants contrast the purpose of Lourenco with teachings of Pozivil. See
Appeal. Br. 8—11; Reply Br. 3.
The Appellants assert that Pozivil teaches returning LNG to its source
and does not teach mixing LNG with natural gas. Appeal Br. 9, 10-11.
Although Pozivil teaches returning LNG to its source, “Pozivil also teaches
embodiments in which LNG is mixed with his compressed gas stream, and
the LNG is not returned to its source.” Ans. 13 (citing Pozivil, Fig. 5).
The Appellants assert that Pozivil teaches using “LNG to increase the
efficiency of the compression cycle” and “the LNG . . . give[s] up its ‘cold’
energy to the compression cycle, rather than to a storage cavern.” Appeal
Br. 10. The Appellants’ assertion fails to apprise us of Examiner error.
Initially, we note that the Examiner’s rejection does not rely on Pozivil’s
teaching of a compression cycle (i.e., a series of successive compression
stages). The Examiner relies on Pozivil’s teaching of cooling natural gas
prior to compression at a single compression stage 12. See Ans. 10, Final
Act 4. Also, the Examiner relies on a finding that a person of ordinary skill
in the art understands that applying this particular teaching to Lourenco’s
method would provide greater compression efficiency and/or allow a smaller
sized compressor to be employed having similar compression ratios as
expressly taught by Lourenco alone. See Final Act. 4. The Appellants fail
to explain how passing LNG through a single heat exchanger to cool natural
gas and then later providing the LNG to a storage cavern would fail to meet
Lourenco’s purpose of increasing the storage capacity of a cavern. Stated
otherwise, the Appellants fail to explain how passing LNG through a single
heat exchanger would remove all of its “cold” energy such that no “cold”
energy would pass to a cavern to increase its storage capacity.
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Application 13/128,603
The Appellants argue, “Lourenco already presents a solution to the
problem proposed by the Examiner.” Appeal Br. 10. As such, Lourenco’s
“compressor is already made more efficient by reducing the pressure in the
cavern, such that the compressor does not need to compress the natural gas
to the same pressure as would otherwise be the case.” Appeal Br. 10. The
Examiner responds:
There is no pre-defmed value of compression efficiency at which
an artisan would conclude their pursuit to improve upon prior art
methods. The provision of additional compression efficiencies
afforded by the explicit teachings of Pozivil would clearly
motivate an ordinary artisan to modify Lourenco so that even
greater compression savings could be provided to Lourenco.
Ans. 12—13. We agree with the Examiner’s response.
The Appellants assert that “Pozivil [is not] concerned with increasing
the capacity of a storage vessel.” Reply Br. 3. However, merely because
Pozivil is not concerned with increasing capacity of a storage vessel does not
destroy Lourenco’s purpose.
The Appellants assert, “a person of ordinary skill would read Pozivil
as teaching a method that produces an end temperature and pressure that is
the same as other compression cycles.” Reply Br. 4. This assertion only
suggests that a skilled artisan would be able to understand that Pozivil
includes multiple teachings. The assertion fails to explain why the Examiner
erred in finding that Pozivil teaches cooling natural gas prior to compression
at a single compression stage 12. The assertion also fails to explain why
applying this particular teaching to Lourenco’s method would not provide
greater compression efficiency and/or allow a smaller sized compressor to
be employed having similar compression ratios as expressly taught by
Lourenco alone.
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Application 13/128,603
Additionally, we note the Examiner need not show that one of
ordinary skill in the art would have combined the teachings of the cited prior
art references for precisely the same reasons disclosed by the Appellants so
long as the Examiner articulates reasoning with some rational underpinning
sufficient to support the conclusion of obviousness. See KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418-419 (2007).
We have considered the remaining points advanced by the Appellants
in the Appeal Brief and the Reply Brief, and have determined they are
unpersuasive of Examiner error.
Thus, we sustain the rejection of independent claim 11 under (pre-
AIA) 35 U.S.C. § 103(a) as unpatentable over Lourenco and Pozivil. The
Appellants do not separately argue the rejection of claims 13 and 15, which
depend from claim 11. As such, we sustain the rejection of claims 13 and
15.
DECISION
We REVERSE the Examiner’s decision rejecting claim 15 under 35
U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.
We AFFIRM the Examiner’s decision rejecting claims 11, 13, and 15
under (pre-AIA) 35 U.S.C. § 103(a) as unpatentable over Lourenco and
Pozivil.
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Application 13/128,603
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)(l)(iv).
AFFIRMED
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