Ex Parte Neff et al

Patent Trial and Appeal Board

May 9, 2013

11045448 (P.T.A.B. May. 9, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/045,448 01/27/2005 Gerald D. Neff 21741.29002 1209
7590 05/09/2013
Martin G. Ozinga
Phillips McFall McCaffrey McVay & Murrah, P.C.
Corporate Tower 13th Floor
101 N. Robinson Ave
Oklahoma City, OK 73102
EXAMINER
SCHNEIDER, CRAIG M
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
05/09/2013 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 GERALD D. NEFF and MITCHELL MARK ORR
____________

Appeal 2011-004025
Application 11/045,448
Technology Center 3700
____________

Before GAY ANN SPAHN, BENJAMIN D.M. WOOD and
ADAM V. FLOYD, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Gerald D. Neff and Mitchell Mark Orr (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-4. Appellants
cancelled claims 5 and 6. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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Application 11/045,448

2
Claimed Subject Matter
The claimed subject matter relates to a system for “preserving and
storing all production elements from oil and gas wells” and “[m]ore
particularly, . . . [to] a storage vessel that can hold and capture under
pressure all elements produced from a well and provide a means for
separating the elements, such as but not limited to natural gas, water, oil, and
associated condensate, in a usable and environmental friendly system.”
Spec. 1, ll. 6-11. Claim 1 (the sole independent claim on appeal),
reproduced below, is illustrative of the appealed subject matter.
1. A system for recovering and storing natural gas
condensate comprising:
a marginally producing well that has already been drilled
that produces said natural gas condensate, gas, and other
liquids; and
a pressures [sic] storage vessel with separation system,
said pressure storage vessel comprising:
a natural gas condensate storage vessel having an
interior capable of holding a substantially uniform
pressure;
an access port for allowing a human into said
interior of said vessel;
a pressure relief valve that allows pressure to vent
from said interior of said vessel;
a production line inlet that allows natural gas
condensate and other liquids produced from said
marginal well to enter said interior of said vessel;
an agitator separation system in said interior of
said vessel wherein said agitator separation system is
connected to said production line inlet so as to separate
said natural gas condensate and other liquids produced
from said marginal well within said interior of said
vessel;
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a first outlet to let accumulated gas selectively
flow from said interior of said vessel to a collection
point;
a second outlet to let accumulated natural gas
condensate and other liquids be selectively drained from
said interior of said vessel; and
a wheel assembly attached to said vessel for
transporting said vessel.
App. Br., Clms. App’x.

Rejections
The following Examiner’s rejections, under 35 U.S.C. § 103(a), are
before us for review:
I. claims 1 and 2 as unpatentable over Homan (US 5,900,137,
issued May 4, 1999) and Kolpak (US 5,205,310, issued Apr. 27, 1993); and
II. claims 3 and 4 as unpatentable over Homan, Kolpak, and
Crawford (US 2,701,620, issued Feb. 8, 1955).

OPINION
Appellants only present arguments against the rejection of
independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over Homan
and Kolpak. See Ans. 4-7. Appellants offer no separate arguments for the
rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over Homan
and Kolpak or the rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as
unpatentable over Homan, Kolpak, and Crawford. Thus, dependent claims
2-4 stand or fall with independent claim 1.
The Examiner finds that Homan substantially discloses the subject
matter of independent claim 1, but “fails to disclose a marginally producing
well that has already been drilled [and] that produces the natural gas
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condensate, gas, and other liquids.” Ans. 3-4. To cure the deficiency of
Homan, the Examiner turns to Kolpak for its teaching of “a separation
system for use with a marginally producing well.” Ans. 4 (citing Kolpak,
col. 2, ll. 37-45). The Examiner concludes that it would have been obvious
to one of ordinary skill in the art “to utilize a marginally producing well as
disclosed by Kolpak . . . with the separation system of Homan, in order to
separate the fluid being discharged from a marginally producing well.” Id.
Appellants argue that the vessel 40 of Homan is not a storage vessel
and “Homan does not disclose both storage and separation means with the
interior of the vessel 40,” but rather “Homan discloses a system for the
separation of fluid and drilling cuttings received from a borehole during a
drilling procedure . . . specifically designed to cope with significantly
variable pressures and flow rates during a drilling process. . . .” Br. 4-5
(citing Homan, Fig. 2). Appellants also argue that “Homan is not a natural
gas condensation recovery and storage system nor is it intended to be such.”
Br. 5. Instead, “Homan’s invention is specifically for drilling procedures,”
and is not concerned with storing natural gas. Id. Indeed, Appellants point
out that Homan includes flare stack 64 for disposing of natural gas and along
with it any natural gas condensate that might result if the gas was held under
pressure. Id..
We are not persuaded by Appellants’ arguments that Homan’s vessel
40 is not a storage vessel. Homan discloses an “APPARATUS AND
METHOD FOR SEPARATING COMPONENTS IN WELL FLUIDS.”
Homan, Title. Homan’s separation apparatus or system 30 includes a high
pressure vessel 40 (i.e., closed horizontal cylindrical tank) which contains
separator means 43. Homan, col. 4, ll.54-55, col. 5, ll. 60-62, col. 6, ll. 1-3,
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and Figs. 1-3 and 7. The “vessel 40 is provided with an outlet means 130
which is provided with a pressure relief valve (not shown).” Homan, col. 9,
ll. 53-55 and Fig. 7. Emphasis omitted. Thus, regardless of the fact that
Homan discloses a flare stack 64 for burning off released gases, Homan’s
vessel 40 is capable of storing natural gas condensate because otherwise a
pressure relief valve would not be needed. Indeed, Homan specifically
discloses that the gases are sent to the flare stack 64 “or alternative systems”
that “collect[] the gas output of the vessel[] 40.” Homan, col. 9, l. 20 and
col. 12, ll. 27-28.
Appellants attempt to distinguish Homan by arguing that the present
invention “consists of a single pressure storage vessel which includes a
separation system,” whereas Homan’s system “requires two vessels and does
not disclose a substantially uniform pressure throughout the two vessels and
the pipes connecting such.” Br. 6. However, the Examiner responds that the
rejection of claim 1 “is not utilizing the second vessel,” and “[t]he structure
of Homan [is] capable of performing the functional limitations of
[A]pellant[s’] invention as claimed which is storing and having the contents
at a uniform pressure.” Ans. 5-6. Thus, even if Homan may disclose the use
of his “system with varying pressure levels” as suggested by Appellants, this
does not detract from the fact that Homan’s vessel 40 is capable of
performing the recited intended use of storing at substantially uniform
pressures. See Br. 6, l. 11 (citing Homan, col. 2, ll. 38-44).
Appellants also “disagree that Kolpak could be combined with
Homan,” because “Kolpak discloses a device . . . that improves accuracy of
measuring oil production from wells which produce mostly water,” and
“Homan is for high pressure drilling operation during the drilling process.”
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Br. 7. Thus, Appellants argue that “you could not use the device of Kolpak
with the device of Homan,” because there is no teaching or suggestion that
the tank is capable of storing natural gas condensate. Id. Appellants also
argue that “Homan actually teaches away from the current invention.” Id.
We are not persuaded by Appellants arguments that the Examiner’s
combination of Homan and Kolpak is improper. The Examiner relied on
Kolpak only to show that it was well known to use separation systems with
marginally producing wells. Thus, the Examiner modification to use the
marginally producing well as taught in Kolpak with Homan’s separation
system appears to be nothing more than the simple substitution of the well
32 of Homan with the marginally producing well of Kolpak. In addition, we
note that in order to “teach away” a reference must “criticize, discredit, or
otherwise discourage the solution claimed . . . .” See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). Appellants have failed to show that Homan
criticizes, discredits, or otherwise discourages the present invention’s
solution of a system for recovering and storing natural gas condensate
including, inter alia, a pressure storage vessel with separation system, the
pressure storage vessel including a natural gas condensate storage vessel
having an interior capable of holding a substantially uniform pressure.
Accordingly, as none of Appellants’ above-discussed arguments
apprise us of error in the Examiner’s rejection of independent claim 1, we
sustain the Examiner’s rejections, under 35 U.S.C. § 103(a), of: claims 1
and 2 as unpatentable over Homan and Kolpak; and claims 3 and 4 as
unpatentable over Homan, Kolpak, and Crawford.

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DECISION
We affirm the Examiner’s decision to reject claims 1-4.
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)(1)(iv).

AFFIRMED

rvb