Ex Parte Malik

Patent Trial and Appeal Board

Oct 30, 2018

13745037 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/745,037 01/18/2013
20411 7590 10/30/2018
The Linde Group
200 Somerset Corporate Blvd.
Suite 7000
Bridgewater, NJ 08807
FIRST NAMED INVENTOR
Zaheer I. Malik
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.
Pl3A002 4081
EXAMINER
RAYMOND, KEITH MICHAEL
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
10/30/2018 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 ZAHEER I. MALIK
Appeal2017-004545
Application 13/745,037 1
Technology Center 3700
Before LINDA E. HORNER, LISA M. GUIJT, and ERIC C. JESCHKE,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Zaheer I. Malik ("Appellant") seeks review under 35 U.S.C. § 134(a)
of the Examiner's decision, as set forth in the Final Office Action dated
January 13, 2016 ("Final Act."), and as further explained in the Advisory
Action dated July 6, 2016 ("Adv. Act."), rejecting claims 1-32. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant identifies Linde AG, Munich, Germany as the real party in
interest. Br. 3.
Appeal2017-004545
Application 13/745,037
BACKGROUND
The disclosed subject matter "relates to a method and apparatus for
the improved recovery of C2 or C3 and heavier components from
hydrocarbon gases." Spec. ,r 1.2 Claims 1, 12, 17, and 28 are independent.
Claim 1 is reproduced below:
1. In a process for separating a hydrocarbon
gas containing at least ethane and C3 and heavier
components into a fraction containing a
predominant portion of the ethane and lighter
components and a fraction containing a
predominant portion of the C3 and heavier
components in which process
(a) the hydrocarbon gas is treated in one or
more heat exchangers, and expansion steps to
provide at least one partly condensed hydrocarbon
gas, providing thereby at least one first residue
vapor and at least one C3-containing liquid which
liquid also contains lighter hydrocarbons; and
(b) at least one of the C3-containing liquids
is directed into a distillation column wherein said
liquid is separated into a second residue containing
lighter hydrocarbons and a C3-containing product;
the improvement comprising
( 1) cooling said second residue to partially
condense said second residue;
(2) intimately contacting at least part of one
of said first residue vapors with at least part of a
liquid portion of the partially condensed second
residue in at least one contacting stage and
2 Citations to the Specification refer to the version filed on April 24,
2013.
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thereafter separating vapors and liquids from said
contacting stage;
(3) supplying the liquids from said
contacting stage thereby recovered to the
distillation column as a liquid feed thereto; and
( 4) directing the vapors thereby recovered
into heat exchange relation with said second
residue from the distillation column, thereby to
supply the cooling of step (1 ), and thereafter
discharging said vapor from the contacting stage;
the improvement further comprising:
( 5) recovering a recycle gas stream from an
expander-compressor or residue gas compressor;
(6) cooling and partially condensing the
recycle stream in said one or more heat exchangers
whereby the recycle stream is heat exchanged in a
subcooler with gases from top of a light-ends
fractionation column;
(7) expanding and feeding a cold reflux
stream from the subcooler into the light ends
fractionation column, wherein colder temperatures
realized by the cold reflux stream improves the
yield of ethane and heavier components.
REJECTIONS
1. Claims 1-32 stand rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter regarded as the invention.
2. Claims 1-8, 10, 12-24, 26, and 28-32 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Foglietta (US 6,712,880 B2, issued
Mar. 30, 2004) and Finn (US 2001/0008073 Al, published July 19, 2001).
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3. Claims 9 and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Foglietta, Finn, and Campbell (US 4,171,964, issued Oct.
23, 1979).
4. Claims 11 and 27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Foglietta, Finn, and Pitman (US 9,080,810 B2, issued July
14, 2015).
DISCUSSION
Rejection I -The rejection of claims 1-32 under
35 US. C. § 112, second paragraph
In rejecting claims 1-32 under 35 U.S.C. § 112, second paragraph, the
Examiner identified (1) language in claims 1, 2, 12, 17, and 28 as lacking
antecedent basis and (2) language rendering claim 13 "unclear." See Final
Act. 2-3. The Examiner rejected the remaining claims based on their
dependence from rejected claims. Id. at 3.
Appellant states to have "proposed amendments" to claims 1, 2, 12,
13, 17, and 28 "per the Examiner's suggestions in [a] response to the Final
Office Action," and Appellant "contends that the claims would be definite if
these amendments were entered." Br. 24, 25.
Appellant has not identified error in this Rejection because, as noted
by the Examiner, the relied-on proposed amendments-filed with the Notice
of Appeal on June 13, 2016--were not entered for purposes of this Appeal.
Ans. 2; see also Adv. Act. 1 (boxes 3 and 7), 2 ("The proposed amendments
will NOT be entered because they raise new issues that would require
further search and consideration including the addition of the new limitation
'wherein the pressure of the light ends fractionation column is lower than the
heavy ends fractionation column' to claims 1 and 17.").
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To the extent Appellant requests the Patent Trial and Appeal Board to
direct the Examiner to enter the proposed amendments, we cannot grant the
requested relief. The refusal by an examiner to enter a proposed amendment
filed after a final rejection is a petitionable matter, not one for appeal. See In
re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re Mindick, 371
F.2d 892, 894 (CCPA 1967) (stating that the predecessor to the PTAB "does
not consider the issue of whether the examiner's refusal to enter the
proposed amendment after final rejection constituted an abuse of
discretion")); see also 37 C.F.R. § 1.127 (2015) ("From the refusal of the
primary examiner to admit an amendment, in whole or in part, a petition will
lie to the Director under § 1.181. "). Because Appellant has not identified
error in the Examiner's bases to reject claims 1-32 in their current form as
indefinite, we sustain this rejection.
Rejection 2 - The rejection of claims 1---8, 10, 12-2 4,
26, and 28-32 under 35 US.C. § 103(a)
Appellant argues the claims in this rejection as a group. Br. 26-36.
We select claim 1 as representative, with the remaining claims standing or
falling with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
For claim 1, the Examiner relied on Foglietta for certain limitations
(Final Act. 5-6) but stated that "Foglietta does not explicitly disclose the
improvement further comprising: steps ( 5), ( 6), and (7)" (id. at 6). The
Examiner found, however, that steps (5), (6), and (7) are "disclosed by
Finn." Id. According to the Examiner, it would have been obvious for one
of ordinary skill in the art at the time of the invention
to provide a cold column reflux stream from a residue gas as
disclosed by Finn with the absorber, residue stream, and
process of Foglietta in order to help improve recoveries of C2
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or C3 and heavier hydrocarbons by providing additional reflux
contact liquids within the absorber that can help condense a
greater proportion of the C2+ hydrocarbons from rising vapors.
Id. at 7.
First, Appellant argues that "[i]ncorporating the teachings of Finn into
[Foglietta] will not result in [the claimed] invention." Br. 34. According to
Appellant, "Foglietta takes the overhead from the fractionation column and
feeds it to an overhead condenser/ exchanger before feeding it to a separator"
and Foglietta teaches that "[t]he separated stream can either be fed back to
the fractionation column or back to the overhead condenser for feed into the
adsorber and ultimately production as a product stream." Id. at 34--35.
Appellant argues that
[ t ]aking this overhead feed from the fractionation column of
Foglietta and feeding it into the system of Finn will result in a
feed that proceeds through two heat exchangers and two
expanders before being either separated as product gas or
returned back through the heat exchangers to the top of the
fractionation column.
Id. at 35.
We are not apprised of error based on this argument because, for the
reasons stated by the Examiner (Ans. 3--4), the argument does not address
the rejection as articulated. Specifically, as noted by the Examiner, in the
proposed modification, "the overhead feed from the fractionation column of
Foglietta is not being fed into the system of Finn."3 Ans. 3; see also
Foglietta, 8:44---62 (discussing overhead stream 60 from fractionation
column 22 shown in Figure 1 ).
3 Throughout this Decision, we remove any underlining from
quotations from the Answer.
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Instead, in the Examiner's proposed modification of Foglietta based
on Finn, "Finn is merely being utilized to disclose subcooling and expanding
of a compressed residue stream which can easily be applied to residue
streams 50 or 68 [ of F oglietta] to provide reflux to absorber 18" in F oglietta.
Ans. 3; see also id. (stating that "Finn (figure 2) is merely being utilized to
disclose recovering of a recycle gas stream 52 from a residue gas
compressor ... , cooling/condensing in a subcooler against overhead
gases ... , and then expanding ... and feeding the reflux into the same
column" and that "[t]his process of recycling a subcooled and expanded
residue stream as disclosed by Finn can easily be applied to the residue gas
stream 50 from residue gas compressor 28 in Foglietta (Figure 1 )"); Final
Act. 5-7 ( addressing claim 1 ).
Second, Appellant argues that "[ t ]here is no expansion of the cold
reflux stream from the subcooler that would result from this combination."
Br. 3 5. According to Appellant, "[ w Ji th out this expansion after the
subcooler, the yield of ethane and heavier components does not improve"
and, thus, "it would not be obvious to combine these two references as there
would be no improvement as realized by the present invention." Id.
Step (7) of claim 1 recites "expanding and feeding a cold reflux
stream from the subcooler into the light ends fractionation column, wherein
colder temperatures realized by the cold reflux stream improves the yield of
ethane and heavier components." Br. 43 (Claims App.). With this
argument, Appellant contends that the prior art does not disclose this
limitation but Appellant does not adequately explain the alleged error in the
relevant findings. See 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv) ("The arguments shall
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explain why the examiner erred as to each ground of rejection contested by
appellant.").
In the Office Action, the Examiner relied on Finn to address step (7),
the Examiner stating "expanding (in valve 60) and feeding a cold reflux
stream 62 from the subcooler 20 into the same column (16)" and quoting
portions of paragraphs 30 and 71 of Finn. See Final Act. 6-7 (emphasis
omitted); see also Finn, Fig. 2. In the Answer, the Examiner states that
"clearly Finn provides the utilization of expansion ( expansion valve 60, see
figure 2) as Finn further states 'subcooled liquid 58 is expanded across valve
60 to the demethaniser pressure giving a two phase stream 62 which is fed to
the top of the demethaniser 16."' Ans. 4--5 (quoting Finn ,r 71). 4 The record
here supports the Examiner's findings that Finn discloses step (7).
Third, Appellant argues that "both Foglietta and Finn operate the light
ends fractionation column at a higher pressure than the heavy ends
fractionation column," which "is opposite of ... step (7) of the proposed
amended claims 1 and 17 made ... in ... response to the Final Office
Action." Br. 35 (emphasis added).
This argument does not apprise us of error because, as noted by the
Examiner (and as discussed above regarding Rejection 1), the proposed
amendments at issue were not entered for purposes of this Appeal. See Ans.
5; Adv. Act. 1-2. Thus, the current claims do not recite the limitations
relied on for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(rejecting arguments "not based on limitations appearing in the claims").
4 The Examiner mistakenly attributes this passage to paragraph 72 of
Finn. See Ans. 5.
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Fourth, Appellant argues that "[ n ]either F oglietta nor Finn teach[] that
the liquid product stream passes through the inlet heat exchanger for heat
integration purposes." Br. 3 6.
As noted by the Examiner, however, the feature relied on by
Appellant is not recited in the claims. See Ans. 5; see also Self, 671 F.2d at
1348 (rejecting arguments "not based on limitations appearing in the
claims"). Further, the specific language of claim 1 ( or any other claim) that
Appellant intends to rely upon for patentability is not readily apparent based
on our independent review of the claims.
Fifth, Appellant contends that based on "[c]alculations [that] were
performed," Appellant "discovered that Foglietta employs a very lean inlet
gas composition such that it is reasonable to assume that no liquids are
leaving the bottoms of the cold separator." Br. 36.
Although Appellant does not precisely identify the claim language at
issue with this argument, we understand Appellant to address step (a) of
claim 1, which recites "providing ... at least one first residue vapor and at
least one C3-containing liquid." Br. 42 (Claims App.) ( emphasis added). In
the Office Action, the Examiner stated that Foglietta teaches "providing ...
at least one first residue vapor 42 and at least one C3-containing liquid 44."5
Final Act. 5 (emphasis added); see Foglietta, Fig. 1. In the Answer, the
Examiner takes the same position, stating that "Foglietta clearly provides for
a liquid steam 44 coming from the bottom of the cold separator" 14, as
shown in Figure 1. Ans. 6.
5 Throughout this Decision, we omit any bolding of reference
numerals from prior art references.
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The record here supports the finding that stream 44 in Foglietta is
liquid. As noted by the Examiner, Foglietta expressly describes stream 44 as
"liquid." See Foglietta 7:24--27 ("The high pressure cooled inlet gas stream
40 is supplied to cold separator 14 where a first vapor stream 42 is separated
from a first liquid stream 44." (emphasis added)); see also id. at 7:31 and 8:5
(both referring to "first liquid stream 44"). Moreover, Appellant has not
provided evidence of the "[ c ]alculations" (Br. 3 6) that allegedly support the
position that Foglietta's description of stream 44 as liquid is incorrect. See
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in
a brief cannot take the place of evidence.").
Sixth, Appellant contends that "[ t ]here are further impurities in the
final product specification such as too much methane and carbon dioxide."
Br. 36.
This argument does not apprise us of error because, as noted by the
Examiner, claim 1 does not recite limits on the amount of methane or carbon
dioxide. See Ans. 6 (stating that "the features upon which [A]ppellant relies
(i.e., having too much methane and carbon dioxide) are not recited in the
rejected claim(s)"); see also Self, 671 F.2d at 1348 (rejecting arguments "not
based on limitations appearing in the claims").
For the reasons above, we sustain the rejection of claim 1 under
35 U.S.C. § 103(a). Claims 2-8, 10, 12-24, 26, and 28-32 fall with claim 1.
Rejection 3 -The rejection of claims 9 and 25
under 35 USC§ 103(a)
Claims 9 and 25 depend from claims 1 and 17, respectively, with both
claims adding the limitation: "wherein said one or more heat exchangers is a
plate-fin exchanger, shell and tube heat exchanger or coil wound heat
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exchanger." Br. 44--45 (claim 9), 50 (claim 25) (Claims App.). The
Examiner rejected claims 9 and 25 together, relying on column 21, lines 7-
17 of Campbell to address the additional limitations. See Final Act. 14--15.
According to the Examiner, it would have been obvious for one of ordinary
skill in the art at the time of the invention
to utilize a plate-fin heat exchanger as disclosed by Campbell as
the one or more heat exchangers of Finn and Foglietta in order
to have improved heat transfer characteristics which may permit
closer temperature approaches in the heat exchangers, lower
cost, and also permit flow arrangements to accommodate heat
exchange of several streams concurrently.
Id. at 15.
First, Appellant relies on the arguments for Rejection 2, contending
that the "addition of Campbell further to this teaching does not teach or
suggest the type of heat exchanger that should be employed in the process of
claims 9 and 25." Br. 37.
For the reasons above, we are not apprised of error in the rejection of
parent claims 1 and 17 based on Foglietta and Finn. Thus, this argument
does not identify error in the rejection of claims 9 and 25.
Second, Appellant argues that "[i]rrespective of the benefits that a
specially crafted heat exchanger [provide], in the absence of any teaching to
combine Foglietta and Finn, the choice of heat exchanger is purely
[Appellant's] and there is no reason to look to Campbell as to the particular
heat exchanger to choose." Br. 37.
As to the reference to an "absence of any teaching to combine
Foglietta and Finn" (id. (emphasis added)), we first note that an express
teaching, suggestion, or motivation in the prior art is not a requirement for
an obviousness determination. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S.
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398, 418-19 (2007) (holding that when the teaching-suggestion-motivation
test is applied as a rigid formula, it is incompatible with Supreme Court
precedent); see also Ans. 7 (discussing In re Fine, 837 F.2d 1071 (Fed. Cir.
1988), and KSR).
Moreover, Appellant generally contends there is no reason either to
modify Foglietta with Finn (as proposed for Rejection 2) or to further
modify Foglietta/Finn with Campbell (as proposed for Rejection 3), but
Appellant does not substantively address either reasoning statement
provided. See Final Act. 7 and Ans. 3--4 ( discussing the reason to modify
Foglietta with Finn); Final Act. 15 and Ans. 7-8 (discussing the reason to
modify Foglietta/Finn with Campbell). We determine that the Examiner's
reasoning supports a prima facie case of obviousness as to the claims at
issue. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). By not
addressing the reasoning provided, Appellant has not shown error in the
relevant findings or the conclusion as to obviousness, which we determine to
be supported by rational underpinnings. See id. (discussing how, if an
examiner presents a prima facie case, "the burden of coming forward with
evidence or argument shifts to the applicant").
For these reasons, we sustain the rejection of claims 9 and 25 under
35 U.S.C. § 103(a).
Rejection 4-The rejection of claims 11 and 27
under 35 USC§ 103(a)
Claims 11 and 27 depend from claims 1 and 17, respectively, with
both claims adding the limitation: "wherein said cold reflux stream is from a
heavy ends fractionation column." Br. 45 (claim 11), 50 (claim 27) (Claims
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App.). The Examiner rejected claims 11 and 27 together, relying on Pitman
to address the additional limitations and stating that Pitman discloses
utilizing . . . both the overhead from a light ends fractionation
column (figure 9, 38 from column 28) and the overhead from a
heavy ends fractionation column (53 from column 19) and
mixing the two streams (to form stream 50 which is then sent
through residue gas compressors, cooled, condensed, and
expanded as a reflux stream for the column 28 (reflux 51c).
Final Act. 15.
Appellant argues that, "[i]n Pit[]man, the cold reflux stream is created
from more than just the heavy ends fractionation column but also from a
light ends fractionation column" in that "[ t ]hese two streams are mixed
together to form a cold reflux stream." Br. 39. According to Appellants,
"Pit[]man does not suggest that the cold reflux stream is only from a heavy
ends fractionation column but that it is from a mixture of a heavy ends and
light ends columns." Id.
We are persuaded that the relied-on aspect of Pitman does not fall
within the scope of claims 11 and 27. We first note that the Examiner and
Appellant do not disagree on the relevant teachings of Pitman; both agree
that the identified "cold reflex stream" (beginning at stream 50 in Figure 9 of
Pitman) is formed by combining stream 38a (from identified "light ends
fractionation column" 28) and stream 43 (from identified "heavy ends
fractionation column" 19). See Final Act. 15; Br. 39.
We tum now to the construction of the additional limitations in claims
11 and 27. The Examiner proposes that these limitations "can be met by a
cold reflux that is in part from a heavy ends fractionation column combined
with other streams." Ans. 8. Appellant argues that the limitations require
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that "the only source of the cold reflux stream can be from a heavy ends
fractionation column." Br. 39.
We generally agree with Appellant's position, and we construe the
limitations at issue to require at least one point along the "cold reflux
stream" in which the entirety of the "stream" originated at (i.e., "is from") a
"heavy ends fractionation column." This construction is supported by the
claim language, which recites that "said cold reflux stream is from a heavy
ends fractionation column" rather than, for example, more broadly reciting
that merely at least part of said cold reflux stream is from a heavy ends
fractionation column.
Further, this construction is supported by the Specification, which
provides that "[t]he cold reflux stream that is fed into the light ends
fractionation column will come from the top of a heavy ends fractionation
column" (Spec. ,r 15) and also provides, in describing "recycle stream 1,"
that "a portion of the residue gas is cooled and partially liquefied in the
subcooler exchanger, 22-E3200, thus increasing the reflux in the light-ends
fractionation column, 22-T2000" (id. ,r 44). See also Spec. Fig. lB, ,r,r 44--
45 (further discussing "recycle stream 1 "). From this, we understand
Appellant to have effectively defined the "cold reflex stream" as at least
including, for example, the stream within line 36 in Figure lB, through
which "cooled hydrocarbon gases leave the subcooler" 22-E3200. Spec.
,r 35. At least at this location, the entirety of the "cold reflux stream"
originates at (i.e., "is from") heavy ends fractionation column 22-T2100.
See Spec. Fig. lB, ,r 42 ("The tops from the heavy ends fractionation column
22-T2100 will exit through line 34 and pass through a subcooler 22-E3200.
Line 3[6] exits the subcooler 22-E3200 and connects to a valve.").
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Turning back to Pitman, at no point along the identified "cold reflux
stream"-beginning at stream 50 in Figure 9 and ending at stream 51 c-
does the entirety of the "stream" originate at identified "heavy ends
fractionation column" 19. Thus, the relied-on aspect of Pitman does not fall
within the scope of claims 11 and 2 7 under the proper construction.
For these reasons, we do not sustain the rejection of claims 11 and 27
under 35 U.S.C. § 103(a).
DECISION
We affirm the decision to reject claims 1-32 under 35 U.S.C. § 112,
second paragraph, we affirm the decision to reject claims 1-10, 12-26, and
28-32 under 35 U.S.C. § 103(a), and we reverse the decision to reject claims
11 and 27 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l)(iv); 37 C.F.R. § 4I.50(f).
AFFIRMED
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