Ex Parte Meinass et al

Patent Trial and Appeal Board

Apr 29, 2013

11493963 (P.T.A.B. Apr. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte HELMUT MEINASS and ERNST MIKLOS
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Appeal 2011-003085
Application 11/493,963
Technology Center 3700
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Before EDWARD A. BROWN, RICHARD E. RICE and
CARL M. DeFRANCO, Administrative Patent Judges.

DeFRANCO, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 6, 8-11 and 13-19. App. Br. 2. Claims 1-5, 7, 12 and 20 are
cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED INVENTION
The claimed invention relates to a method and an apparatus for providing
bubble-free liquid carbon dioxide to a user device. Spec. [0002]. Claims 11 and
17 are the only independent claims. We choose claim 17 as illustrative of the
claims on appeal:
17. An apparatus for providing bubble-free liquid
carbon dioxide to a user device, comprising:
a liquid CO2 storage tank;
an evaporator coupled to the liquid CO2 storage
tank, wherein the evaporator converts liquid CO2 from
the liquid CO2 storage tank into gaseous CO2;
a gaseous CO2 supply line coupled to the
evaporator;
a condenser coupled to the gaseous CO2 supply
line, wherein the condenser liquefies the gaseous CO2
received from the gaseous CO2 supply line; and
a CO2 fluid line disposed between the condenser
and the user device, wherein the CO2 fluid line transports
the liquefied CO2 from the condenser to the user device.

EVIDENCE
The Examiner relied upon the following prior art as evidence of
unpatentability:
Messer US 1,521,385 Dec. 30, 1924
Heichberger US 4,498,303 Feb. 12, 1985
Wikstrom US 2004/0231358 A1 Nov. 25, 2004
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Cryogenic Cooling for Temperature Chambers and Thermal
Platforms Explained & Demystified, Sigma Systems Corp., pp. 1-16
(© 2000) (“Cryogenic Cooling”).

REJECTIONS
1. Claims 8-11, 13-15, 17-19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Heichberger and Messer.1 Ans. 4.
2. Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Heichberger, Messer and Cryogenic Cooling. Id. at 5.
3. Claims 10, 16 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Heichberger, Messer and Wikstrom. Id. at 6.
ANALYSIS
Claim 17 calls for an apparatus comprising, in relevant part, an evaporator
for converting liquid carbon dioxide (CO2) to gaseous CO2, a condenser for
receiving the gaseous CO2 from the evaporator and liquefying it, and a gaseous
CO2 supply line coupled between the evaporator and the condenser. App. Br.,
Claims Appx. In other words, the phase of the CO2 is transformed twice by the
claimed apparatus, first from a liquid-to-gas state and then from a gas-to-liquid
state. That the carbon dioxide undergoes two phase transformations is consistent
with Appellant's Specification, which provides that: “Figure 1 shows the upright
CO2 tank 1, in which liquid CO2 is stored. An evaporator 2 can convert this fluid
into its gaseous state. . . . The supply line 6 leads to condenser 8 in which the CO2
is liquefied and then transported to the user by way of a CO2 fluid line 9.” Spec.
[0026] (emphasis added).

1 The Examiner rejected apparatus claims 10 and 18 on alternative bases, first, as
unpatentable over Heichberger and Messer (Ans. 5), and second, as unpatentable
over the same references with the added teaching of Wikstrom (id. at 6).
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The Examiner found that Heichberger teaches a condenser for “liquefying []
gaseous CO2 gas received from [a] gaseous CO2 supply line,” but acknowledged
that it does not teach an evaporator that “converts liquid CO2 from [a] liquid CO2
storage tank into gaseous CO2.” Ans. 4. For that teaching, the Examiner relied
upon Messer, finding that it teaches “an evaporator” for “supply[ing] a liquefied
gas to a supply line.” Ans. 4. In essence, the Examiner relied upon Heichberger as
teaching the condenser for the gas-to-liquid phase change and Messer as teaching
the evaporator for the liquid-to-gas phase change. In justifying the proposed
combination, the Examiner found that “Heichberger explicitly requires a source of
CO2 gas” and “Messer explicitly teaches a well known means of providing gaseous
CO2.”2 Ans. 7. As such, the Examiner concluded that a skilled artisan would have
found it obvious to supply the gaseous CO2 required by Heichberger via the system
of Messer “for the purpose of providing the required CO2 for the operation of
Heichberger” (id.) and for the purpose of “achieving a greater purity carbon
dioxide where needed” (id. at 5; see also id. at 7).
Appellants contend that the Examiner’s combination of Heichberger and
Messer lacks rational basis because neither reference discloses or suggests the
double transformation of CO2. App. Br. 2, 4-5. Specifically, Appellants assert that
“there is no need for modifying the system of Heichberger by Messer” because
Heichberger’s system “only requires supply of gaseous CO2 at one location, i.e.,
the condenser.” App. Br. 5, 6 (emphasis omitted). Thus, according to Appellants,
modifying Heichberger to introduce an additional gaseous CO2 supply, as taught
by Messer, “would have no purpose in the system of Heichberger.” Id. at 5.

2 While Appellants make much of Messer’s focus on transformation of “liquid
oxygen” (Reply Br. 1-2), we note that it also teaches transformation of “other
liquefied gases.” See Messer, col. 2, ll. 76-77 (“The method can be applied also in
connection with other liquefied gases”).
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Likewise, Appellants contend that the Examiner’s reason of “achieving a greater
purity carbon dioxide” would be redundant because “Heichberger already supplies
higher CO2 purity to a location that requires it.” Id. at 6 (emphasis added). In
other words, Appellants assert that a skilled artisan would not look to Messer
because it would be “of no concern, or benefit to Heichberger.” Id. at 7.
We agree with Appellants that neither Heichberger nor Messer, as relied on
by the Examiner, teaches double transformation of CO2. While each reference
teaches a single transformation of CO2 (Heichberger from a gas-to-liquid state and
Messer from a liquid-to-gas state), a claimed invention “composed of several
elements is not proved obvious merely by demonstrating that each of its elements
was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). Rather, the Examiner must “identify a reason that would
have prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed [] invention does.” See id.
We agree with Appellants that the Examiner has not identified an adequate
reason that would have led a skilled artisan to look to Messer for a gaseous supply
for Heichberger. The express purpose of Heichberger’s condenser and associated
system is to selectively liquefy contaminated CO2 gas and thereby produce a
virtually pure liquid CO2 product. See, e.g., Heichberger, col. 1, ll. 5-10, & col. 2,
ll. 9-15. While Heichberger discloses a gaseous supply pipe 52 “connected to a
supply (not shown) of gaseous carbon dioxide under pressure” (id. at col. 3, ll. 22-
29), it further discloses that the gaseous CO2 supplied through pipe 52 is
contaminated with one or more other gases:
Gaseous carbon dioxide containing at least one
contaminating gas having a lower liquification
temperature than the liquid carbon dioxide, such as
oxygen and nitrogen, at a pressure of between
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approximately 70 and 1050 psig, having corresponding
condensation temperatures of approximately -69.9° and
87.8° F, respectively, preferably between approximately
225 and 300 psig is delivered to the gas distributor 54
through the pipe 52.

Id. at col. 4, ll. 21-29 (emphasis added).
Thus, Heichberger’s system does not require just any gaseous CO2, as the
Examiner suggested in making the asserted combination with Messer. Rather,
Heichberger is focused on purifying “gaseous carbon dioxide containing at least
one contaminating gas.” See, e.g., id. at col. 1, ll. 7-8, ll. 62-63, and col. 4, ll. 21-
22, ll. 51-52. Heichberger explains that “in order for the carbon dioxide to be of
maximum usefulness [for carbonating beverages], it must be as pure as possible,
i.e. free of contaminating gas such as oxygen and to a lesser extent nitrogen.” Id.
at col. 1, ll. 37-40. In other words, Heichberger’s system requires a supply of
contaminated gaseous CO2 that is in need of purification. Nowhere does Messer
teach or suggest that its gaseous CO2 output contains contaminants or requires
purification. Because Heichberger requires gaseous CO2 that contains “at least one
contaminating gas,” a skilled artisan would not have been prompted to look to
Messer, which is silent on purity and contaminants. As such, the Examiner's
reason for modifying Heichberger to use the gas supply of Messer lacks a rational
basis.
Without a persuasive articulated reason based on some rational underpinning
for modifying the reference as proposed, the Examiner’s rejection cannot stand.
See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR
Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)) (“rejections 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
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conclusion of obviousness”). Based on the record before us, we fail to see any
rational basis that would have led a skilled artisan to look to Messer for the
purpose of supplying gaseous CO2 that required greater purity, as the Examiner
proposes. The Examiner has not provided us with any findings that Heichberger
recognized a problem in its ability to accomplish this function.
Accordingly, we cannot sustain the rejection of apparatus claim 17, and its
respective dependent claims 8-10, 18 and 19, as unpatentable over Heichberger and
Messer. Likewise, we cannot sustain the rejection of method claim 11 and its
respective dependent claims 13-15, as they are directed to a method that includes
the steps of converting liquid CO2 into gaseous CO2 in an evaporator and then
liquefying the gaseous CO2 in a condenser.
Dependent claims 6, 10, 16 and 18
The Examiner rejected dependent claim 6 as being unpatentable over
Heichberger, Messer, and the additional reference of Cryogenic Cooling, and
rejected dependent claims 10, 16 and 18 as being unpatentable over Heichberger,
Messer, and the additional reference of Wikstrom. Ans. 5-6. Neither of these
additional references cures the above-noted deficiencies with the Examiner’s
proposed combination of Heichberger and Messer. Accordingly, for the reasons
given with respect to the erroneous rejection of independent claims 11 and 17, we
cannot sustain the rejection of dependent claims 6, 10, 16, and 18, which depend
from those independent claims.
DECISION
We reverse the Examiner’s decision rejecting claims 6, 8-11, and 13-19.

REVERSED
Klh