Ex Parte Stevens et al

Board of Patent Appeals and Interferences

Jul 30, 2012

10006876 (B.P.A.I. Jul. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/006,876 12/05/2001 James F. Stevens 00041-DV4 5220
38393 7590 07/30/2012
CHEVRON U.S.A. INC.
LAW - INTELLECTUAL PROPERTY GROUP
P.O. BOX 2100
HOUSTON, TX 77252-2100
EXAMINER
DUONG, THANH P
ART UNIT PAPER NUMBER
1774
MAIL DATE DELIVERY MODE
07/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES F. STEVENS, CURTIS L. KRAUSE, and
DOUG NAAE
____________________

Appeal 2012-000152
Application 10/006,876
Technology Center 1700
____________________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/006,876

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 9-
12, 14-18, and 20-23. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellants state that the invention relates to fuel cells that include an
apparatus with a catalyst bed, and which utilizes a porous distribution tube to
add air for carbon monoxide oxidation throughout the length of the catalyst
bed. (Spec. 2, ll. 18-30, spec. 3, ll. 5-8.)
Claim 9, reproduced below, is illustrative of the claimed subject
matter:
9. An apparatus for selectively reducing the carbon monoxide
content of a hydrogen rich gas, comprising:
an oxidation reactor having a catalyst bed;
the catalyst bed containing an oxidation catalyst;
a porous tube positioned substantially within the catalyst
bed for distributing an oxygen-containing stream throughout the
catalyst bed; and
a cooling jacket containing a circulating coolant for
maintaining the oxidation reactor operating temperature from
about 90°C to about 180°C.
(Appeal Brief, Claims Appendix
1
9.)

THE REJECTIONS
I. The Examiner rejected claims 9-12, 14-18, and 20-23 under
35 U.S.C. § 103(a) as unpatentable over Nakagawa et al.
(US 6,024,774, issued February 15, 2000). (Examiner’s
Answer, dated June 24, 2011, “Ans.” 5-7.)

1
Appeal Brief filed February 28, 2011, hereinafter “App. Br.” and Claims
App’x, respectively.
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II. The Examiner rejected claims 9, 12, 15, 16, 21, and 23 under
35 U.S.C. § 103(a) as unpatentable over Clawson et al.
(US 6,641,625 B1, issued November 4, 2003). (Ans. 7-8.)

ISSUES
Regarding Rejections I and II, Appellants argue that both Nakagawa
and Clawson do not disclose the cooling jacket recited in the claims. (App.
Br. 4-5, and 7-8, citing Spec. 3, ll. 21-23; Spec. 10, ll. 9-11; Nakagawa, Col.
4, ll. 26-34; Nakagawa, Fig. 1; Clawson, Col. 23, ll. 46-64; Clawson, Fig.
13.)
In Rejection I, the Examiner found that Nakagawa discloses a coolant
circulation pipe (Fig. 1, ref. no. 7), which corresponds to the cooling jacket
recited in claim 9. (Ans. 5.)
Appellants contend that Nakagawa’s disclosure of a much higher
reaction temperature (400°C or higher) teaches away from any temperature
range less than 400°C. (App. Br. 6, citing Nakagawa, Col. 1, ll. 43-49.)
Therefore, Appellants argue that Nakagawa fails to teach or suggest “a
cooling jacket containing a circulating coolant for maintaining the oxidation
reactor operating temperature from about 90 - 180°C.”
The Examiner responded that the limitation “a cooling jacket
containing a circulating coolant for maintaining the oxidation reactor
operating temperature from about 90 - 180°C,” does not further recite
structural limitations for the apparatus, but is directed to a manner of
operating an apparatus or the material or article worked upon. (Ans. 5-6.)
The Examiner found that while Nakagawa discloses an apparatus that
operates at a much higher temperature range than the claimed range, one of
ordinary skill in the art at the time of the invention would have expected the
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apparatus of Nakagawa to be capable of operating within the temperature
range of the claimed invention. (Ans. 5-6.)
In Rejection II, the Examiner found that Clawson discloses a
water/steam tube (Fig. 13, ref. no. 97), which also corresponds to the cooling
jacket recited in claim 9. (Ans. 7-8.) Appellants challenge this
determination. (App. Br. 7-8.)

Therefore, the dispositive issues on appeal are:
(1) Whether the Examiner erred in finding that Nakagawa and
Clawson disclose “a cooling jacket,” as recited in claim 9?
(2) Whether the Examiner erred in concluding that Nakagawa’s
coolant circulation pipe is capable of “maintaining the oxidation
reactor operating temperature from about 90°C to about 180°C,” as
recited in claim 9?

ANALYSIS
Issue One
We are not persuaded by Appellants’ arguments that neither
Nakagawa nor Clawson disclose the cooling jacket recited in claim 9.
Appellants’ arguments are conclusory in nature. Appellants have merely
cited sections of Nakagawa and Clawson and Appellants’ Specification and
then stated that neither Nakagawa nor Clawson disclose the cooling jacket
recited in claim 1. Nakagawa discloses a coolant circulation pipe, which
serves to control the temperature of a reaction site. (Col. 4, ll. 26-34; Fig. 1).
Similarly, Clawson discloses a helical steam/water tube 97 that is arranged
within and at least partially surrounds a catalyst bed of an oxidation reactor,
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forming a heat transfer relationship with the catalyst material. (Col. 23,
ll. 46-64; Fig. 13).
Appellants have not provided any substantive arguments to
sufficiently explain how the cooling structures disclosed in Nakagawa and
Clawson differ from the claimed invention. Accordingly, the Examiner had
reasonable basis to conclude that Nakagawa and Clawson both disclose the
cooling jacket recited in claim 1, which has not been rebutted by Appellants.

Issue Two
We are also not persuaded by Appellants’ argument that Nakagawa
does not disclose the recited cooling jacket because Nakagawa discloses a
higher reaction temperature. Appellants have not presented any persuasive
evidence that the term “a cooling jacket containing a circulating coolant for
maintaining the oxidation reactor operating temperature from about 90°C to
about 180°C,” imparts any structural difference between the prior art and
Appellants’ claimed invention. See In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997) (noting that patent applicant is free to recite features of an
apparatus either structurally or functionally). In this regard, Appellants have
not established that the coolant circulation pipe of Nakagawa would be
incapable of operating within the claimed temperature range or that some
additional structure would be necessary to provide an operating temperature
between 90°C to about 180°C. See In re Schreiber, 128 F.3d at 1478 (noting
that where the Patent Office has reason to believe that a functional limitation
asserted to be critical for establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the prior art, it possesses the
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authority to require the applicant to prove that the subject matter shown to be
in the prior art does not possess the characteristic relied on).
Moreover, as determined by the Examiner, it would have been
obvious to select a coolant with the desired properties because coolants were
conventional in the art, and Nakagawa taught the use of coolants to control
reaction site temperature. (Ans. 6-7; Nakagawa, Col. 4, l. 67 – Col. 5, l. 3.)
Appellants have not provided adequate evidence to rebut the Examiner’s
determination.
Accordingly, the Examiner had reasonable basis to conclude that
Nakagawa renders the claimed cooling jacket containing a circulating
coolant for maintaining the oxidation reactor operating temperature from
about 90°C to about 180°C obvious.

CONCLUSIONS
The Examiner did not err in finding that Nakagawa and Clawson
disclose “a cooling jacket,” as recited in claim 9.
The Examiner did not err in concluding that Nakagawa’s coolant
circulation pipe is capable of “maintaining the oxidation reactor operating
temperature from about 90°C to about 180°C,” as recited in claim 9.

DECISION
We affirm the Examiner’s rejection of claims 9-12, 14-18, and 20-23
under 35 U.S.C. § 103(a) as unpatentable over Nakagawa.
We affirm the Examiner’s rejection of claims 9, 12, 15, 16, 21, and 23
under 35 U.S.C. § 103(a) as unpatentable over Clawson.

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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).

AFFIRMED

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