Ex Parte STRYBOS

Patent Trial and Appeal Board

Jul 26, 2018

14753818 (P.T.A.B. Jul. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/753,818 06/29/2015 Ronald STRYBOS
40582 7590 07/30/2018
American Air Liquide, Inc.
Intellectual Property Department
9811 Katy Freeway
Suite 100
Houston, TX 77024
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.
SlOllOCNT 5045
EXAMINER
SINGH, SUNIL
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
07/30/2018 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):
IP-USOffice@airliquide.com
Neva.Dare-c@airliquide.com
J us tin.Murray@airliquide.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD STRYBOS
Appeal2017-005917
Application 14/753,818
Technology Center 3600
Before STEFAN STAICOVICI, SUSAN L. C. MITCHELL, and
BRANDON J. WARNER, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Ronald Strybos ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from
the Examiner's decision in the Final Office Action (dated Feb. 16, 2016,
hereinafter "Final Act.") rejecting claims 1---6, 12, and 13. 2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
1 Air Liquide Large Industries U.S. LP is identified as the real party in
interest in Appellant's Appeal Brief ( filed July 5, 2016, hereinafter "Appeal
Br."). Appeal Br. 3.
2 Claims 7-11 are canceled. See Appeal Br. 10 (Claims App.).
Appeal2017-005917
Application 14/753,818
INVENTION
Appellant's invention relates to a method "to increase the overall
stability of the roof of a leached salt cavern ... using an inert gas blanket."
Spec 2, 11. 32-33.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A method of solution mining a stable roof under an inert
gas blanket, comprising:
a) providing a solution mined underground salt cavern,
wherein said salt cavern has a main body with a mean diameter
of DN, and an upper portion comprising an inert gas pad,
b) providing a stream of leaching water which is injected
below the inert gas pad with a velocity V, thereby leaching an
Nth tier adjacent to the upper portion having a height HI and a
mean diameter DN+ 1 that is smaller than DN by a predetermined
ratio of between 15 and 35%,
c) raising the inert gas pad by a predetermined amount
Al,
d) providing a stream of leaching water which is injected
below the inert gas pad, thereby leaching a N+ 1th tier adjacent
to the Nth tier having a height H2 and a ... mean diameter DN+2
that is smaller than DN+ 1 by a predetermined ratio R,
e) repeating steps c and d a predetermined number of
times T, thereby forming a stable roof.
REJECTIONS
I. The Examiner rejects claims 1---6, 12, and 13 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
II. The Examiner rejects claims 1---6, 12, and 13 under 3 5 U.S. C. § 1 0 3 (a)
as being unpatentable over Trump (US 2,009,534, iss. July 30, 1935)
and French (US 4,342,911, iss. Aug. 3, 1982).
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Application 14/753,818
ANALYSIS
Rejection I
The Examiner determines that it is unclear whether the claimed
"predetermined ratio R" of step ( d) relates to the "predetermined ratio" of
step (b ). Final Act. 2. The Examiner further determines that "it is unclear
what [are] the metes and bounds of the limitation 'predetermined ratio R'
called for in step d." Id.
As Appellant does not present any substantive arguments in regard to this
rejection, we summarily sustain the indefiniteness rejection of claims 1---6, 12, and
13. See Appeal Br. 5 ("Applicant respectfully requests that this amendment be
made after the issue of obviousness ... is resolved.").
Rejection II
Appellant has not presented arguments for the patentability of claims
2---6, 12, and 13 apart from claim 1. Therefore, in accordance with 37 C.F.R.
§ 4I.37(c)(l)(iv), we select claim 1 as the representative claim to decide the
appeal of the rejection of these claims, with claims 2---6, 12, and 13 standing
or falling with claim 1.
The Examiner finds that Trump discloses most of the limitations of
independent claim 1, but "is silent about the gas being inert." Final Act. 3--4
(citing Trump, col. 1, 11. 3-55, col. 2, 1. 40-col. 3, 1. 10, Figs. 1, 5).
Nonetheless, the Examiner finds that French discloses the "use [ofJ inert gas
as the gas pad [34]." Id. at 4; see also French, col. 5, 11. 32-35. The
Examiner concludes that "[i]t would have been considered obvious to one of
ordinary skill in the art to modify Trump by using inert gas as the gas pad as
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Application 14/753,818
taught by French since such a modification would be based on the known
advantages provide[d] by inert gases." Final Act. 4.
Appellant argues that Trump fails to disclose "providing an
underground salt cavern and the formation of a stable roof," as called for by
claim 1, and that "French ... fails to remedy this deficiency." Appeal Br. 5.
According to Appellant, Trump teaches away from creating "a stable r[]oof,
which is intended to be an integral part of a stable underground salt cavern,"
because in Trump's method the roof "is allowed to cave in after the salt has
been extracted." Id. at 6.
We are not persuaded by Appellant's arguments because we agree
with the Examiner that Trump "teaches the roof is stable during its stepwise
formation as depicted in Figure 5 in an upward direction as the salt is being
mined." Examiner's Answer 5 (entered Dec. 30, 2016, hereinafter "Ans.")
(citing Trump, col. 1, 11. 20-45, col. 2, 1. 40-col. 3, 1. 10). The Examiner is
correct that Trump discloses creating an underground salt cavern by
dissolving the salt bed in stages in an upward direction, such that the
resulting cavity becomes bell-shaped with an arched roof. Id. at 3 ( citing
Trump, col. 1, 11. 22-55, col. 2, 1. 40-col. 3, 1. 10, Figs. 1, 5, and 8). The
Examiner is also correct in that, although "at the final step of extraction the
roof may cave in," nonetheless, "prior to the caving in of the roof, the roof is
stable." Id. at 4. As correctly noted by the Examiner, because Trump
explicitly discloses the use of a gas, i.e., air, for protecting the roof of the
cavity during the mining process, Trump discloses forming a "stable roof,"
as called for by claim 1. Id. at 4--5 (citing Trump, col. 1, 11. 30-35).
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Application 14/753,818
We appreciate Appellant's position that an ordinary and customary
meaning of the term "stable" is "not likely to change or fail." Reply Brief 2
(filed Feb. 21, 2017, hereinafter "Reply Br.") (citing
https://en.oxforddictionaries.com/definition/stable ). However, we do not
agree that, based on this definition, "[t]o the skilled artisan, a 'stable roof'
would make it possible to dissolve the entire bed of salt, and remain stable"
because the claims are not so limited and such limitations not appearing in
the claims cannot be relied upon for patentability. Id.; see also In re Self,
671 F.2d 1344, 1348 (CCPA 1982).
In this case, Appellant's argument is not commensurate with the scope
of the process called for in claim 1, which does not require forming a stable
roof such that the entire bed of salt is dissolved, as Appellant asserts.
Rather, claim 1 merely requires repeating steps ( c) and ( d) "a predetermined
number of times," thereby "forming a stable roof." See Appeal Br. 9
(Claims App.). As Trump's method gradually dissolves the salt bed, "step
by step, upwardly from below" and maintains a layer of air (i.e., gas) to
"protect the roof of the cavity" during the mining process, Trump, as
modified by French, discloses repeating steps ( c) and ( d) "a predetermined
number of times," thereby "forming a stable roof," as called for by claim 1.
See Trump, col. 1, 11. 30-35 and 49-50. In other words, Trump discloses a
"stable roof' during its mining of salt in stages that progress upwardly to
form a bell-shaped (domed) cavity. Even though the roof of Trump's cavity
may eventually fail, this does not mean that during the mining process,
Trump does not disclose a "stable roof," as called for by claim 1. Moreover,
we note that as the roofs of both Appellant's cavern and that of Trump's
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Application 14/753,818
cavity are bell or dome-shaped, the Examiner is on solid footing to shift the
burden to Appellant to prove Trump's roof is not stable during the mining
process. Compare Spec. Fig. 6, with Trump, Fig. 8; see also In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990) (stating "when the PTO shows sound
basis for believing that the products of the applicant and the prior art are the
same, the applicant has the burden of showing that they are not").
Lastly, Appellant argues that Trump's salt "cavity" does not constitute
an "underground salt cavern" because it does not take into account an
"intended longevity" of the "cavity." Reply Br. 2. According to Appellant,
its "underground salt cavern" "may be used for decades as a location for
storing fluids under pressure." Id.
We are not persuaded by Appellant's argument because there is
nothing in Appellant's Specification that would compel a skilled artisan to
read into the phrase "underground salt cavern" the feature of "intended
longevity." Furthermore, such a feature is not positively recited in claim 1,
and, as stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362,
13 69 (Fed. Cir. 1998), "the name of the game is the claim." In this case, an
ordinary and customary meaning of the term "cavern" is "cave," which in
tum is defined as "a natural chamber or series of chambers in the [E]arth."3
Such an interpretation is consistent with Appellant's Figure 1, in which salt
cavern 102 is illustrated as an unfilled space, that is, a chamber within the
Earth. Therefore, as Trump's "cavity" 42 is a chamber within the Earth (see
3 See https://www.merriam-webster.com/dictionary/cavem;
https://www.merriam-webster.com/dictionary/cave (last visited July 12,
2018).
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Trump, Fig. 5), Trump's "cavity" constitutes a "cavern," as called for by
claim 1.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 1 as unpatentable over Trump and French.
Claims 2-6, 12, and 13 fall with claim 1.
SUMMARY
The Examiner's decision to reject claims 1---6, 12, and 13 under
35 U.S.C. § 112, second paragraph, as indefinite is affirmed.
The Examiner's decision to reject claims 1---6, 12, and 13 under
35 U.S.C. § 103(a) as unpatentable over Trump and French is affirmed.
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 )(iv).
AFFIRMED
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