Ex Parte Rasmussen et al

Patent Trial and Appeal Board

Nov 5, 2018

14886697 (P.T.A.B. Nov. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/886,697 10/19/2015
34477 7590 11/07/2018
ExxonMobil Upstream Research Company
22777 Springwoods Village Parkway
(EMHC-E2-4A-296)
Spring, TX 77389
FIRST NAMED INVENTOR
Chad C. Rasmussen
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.
2010EM067-3 8842
EXAMINER
ATTEY,JOELM
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
11/07/2018 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):
urc-mail-formalities@exxonmobil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHAD C. RASMUSSEN,
GARTH M. NORMAN,
MICHAEL R. MILLER, and
JUSTING. BRENNAN
Appeal2018-002051
Application 14/886,697
Technology Center 3700
Before LINDA E. HORNER, MICHAEL L. HOELTER, and
FREDERICK C. LANEY, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's Final Rejection of claims 1 and 3---6. Br. 6. We have
jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below, we
find error in the Examiner's rejections. Accordingly, we REVERSE.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter relates "to a liquefied natural gas plant
with flexible capability to provide liquefied natural gas, pipelined natural
Appeal2018-002051
Application 14/886,697
gas, or electricity to a grid." Spec. ,r 2. Method claim 1 is the sole
independent claim, is illustrative of the claims on appeal, and is reproduced
below.
1. A method for producing liquefied natural gas (LNG) in a
flexible LNG plant having first and second compression systems
arranged in parallel, comprising:
producing a base load of refrigeration capacity for LNG
production from the first compression system;
when a demand for electricity exists at an external power
grid, producing the electricity from the second compression
system and exporting the electricity to the external power grid;
and
when the demand for electricity does not exist at the
external power grid, producing a second load of refrigeration
capacity for LNG production from the second compression
system.
REFERENCES RELIED ON BY THE EXAMINER
Hawrysz et al.
Rasmussen et al.
US 2007/0193303 Al
US 7,526,926 B2
THE REJECTIONS ON APPEAL
Aug.23,2007
May 5, 2009
Claims 1, 3, and 4 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Hawrysz. Final Act. 2.
Claims 5 and 6 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Hawrysz and Rasmussen. Final Act. 3.
ANALYSIS
The rejection of claims 1, 3, and 4
as being unpatentable over Hawrysz
Sole independent method claim 1 (and hence dependent claims 3 and
4) includes the limitation "when a demand for electricity exists ... ,
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Application 14/886,697
producing the electricity .... " The Examiner relies on Paragraph 65 of
Hawrysz as teaching this limitation. Final Act. 2. Paragraph 65 states:
Any excess electrical power generated can be sold to a power
company or used in the LNG plant, and electrical power is
purchased from the power company only to the extent
necessary to supplement the amount of electrical power
produced by the cogeneration unit 41.
Hawrysz ,r 65. Thus, as understood, in Hawrysz, only "excess" electrical
power is subject to being sold-if there is no "excess" available, then there
is no sale, whether or not a demand for electricity exists. This goes to the
heart of Appellants' argument, i.e., "[i]n contrast to the supply-based
electricity generation of Hawrysz, Appellants have invented a demand-based
method for electricity generation." Br. 10-11.
Appellants' contention has merit. The Examiner attempts to restrict
"demand" to "time of sale," when, instead, claim 1 does not impose any
restrictions as to when the "demand" might occur. 1 Ans. 6. The Examiner
also states "[t]he claim language only requires a onetime sale when there is a
demand." Ans. 6. However, the Examiner does not explain how the
demand for this "onetime sale" will only occur at a time when Hawrysz has
"excess" electricity to sell. Instead, we are instructed that "[ t ]he Patent
Office has the initial duty of supplying the factual basis for its rejection. It
may not, because it may doubt that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
1 "Appellant's claims merely state when a demand exits there is a production
of electricity, but this does not limit it to a demand based method as argued
as it does not limit when or how the decision to sell is made other than at the
time of sale there must be demand and does not limit how the decision to sell
is made." Ans. 6 (emphasis added). Here, it can be seen that the Examiner
is focusing on the "time of sale," and not on the time of demand as recited.
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Application 14/886,697
deficiencies in its factual basis." In re Warner, 379 F.2d 1011, 1017 (CCPA
1967).
The Examiner also explains "that 'sold to' (para. 0065) inherently
means demand for the electricity exists" and "thus the electricity is produced
and sent externally when a 'demand' exists." Final Act. 4. Even assuming
such inherency is, indeed, the case, the Examiner still fails to indicate where
Hawrysz teaches the production of electricity "when a demand for electricity
exists," rather than only selling electricity when there happens to be an
"excess" amount generated. See Hawrysz ,r 65.
The parties also address whether law or contract can create demand.
Appellants contend "it is entirely possible that an electricity generator may
be required - by law or contract - to sell electricity to an electrical grid
regardless of demand." Br. 11. On the other hand, the Examiner states,
"[t]he office respectfully disagrees with this as law or contracts may create
demand." Ans. 7. Regardless of the compelling or enforceable nature of a
demand (or whether a sale "inherently means demand" (Final Act. 2, 4)); the
issue under investigation is whether Hawrysz teaches that "when a demand
for electricity exists," such electricity is produced.
As indicated above, in Hawrysz, a demand may exist but there is no
disclosure that the operation of Hawrysz is altered to satisfy that demand.
Instead, Hawrysz teaches that if there happens to be excess electricity
available, such electricity "can be sold" (not even "will be sold"). Thus, the
perhaps irregular or haphazard occurrence of "excess" electricity in
Hawrysz, which may or may not be sold, does not, in our view, support by a
preponderance of the evidence the Examiner's finding that Hawrysz
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Application 14/886,697
discloses the more decisive limitation of "when a demand for electricity
exists ... , producing the electricity .... "2
Appellants also contend that if Hawrysz exported electricity on
demand, this "would likely remove electricity needed to run the plant,
thereby rendering the LNG plant of Hawrysz inoperable." Br. 11. This
argument also seems to have some merit. Although it is not quite clear that
the "exported electricity" would cause the Hawrysz plant to actually become
"inoperable," the export of electricity when there is no "excess" available
would certainly exacerbate the ability to run the facility in a normal manner.
Accordingly, and based on the record presented, we do not sustain the
Examiner's rejection of independent claim 1, or dependent claims 3 and 4 as
being obvious over Hawrysz.
The rejection of claims 5 and 6
as being unpatentable over Hawrysz and Rasmussen
Claims 5 and 6 each directly depend from claim 1. The Examiner
relies on Rasmussen for the additional teaching of increasing compression.
Final Act. 3. Such teachings do not cure the defect of Hawrysz discussed
above. Accordingly, we likewise do not sustain the Examiner's rejection of
claims 5 and 6 as being unpatentable over Hawrysz and Rasmussen.
DECISION
The Examiner's rejections of claims 1 and 3--6 are reversed.
REVERSED
2 As above, the Examiner acknowledges, "Appellant's claims merely state
[that] when a demand exits there is a production of electricity." Ans. 6.
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