Henri Paradowski et al.

Patent Trials and Appeals Board

Mar 2, 2020

12731549 - (D) (P.T.A.B. Mar. 2, 2020)

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.
12/731,549 03/25/2010 Henri PARADOWSKI P/4393-28 (V15817) 1340
2352 7590 03/02/2020
OSTROLENK FABER LLP
845 THIRD AVENUE
8TH FLOOR
NEW YORK, NY 10022
EXAMINER
KING, BRIAN M
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
03/02/2020 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):
pat@ostrolenk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HENRI PARADOWSKI and SYLVAIN VOVARD
____________

Appeal 2018-008001
Application 12/731,549
Technology Center 3700
____________

Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–26. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Technip France.
Appeal Br. 1.
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THE CLAIMED SUBJECT MATTER
Claims 1, 12, and 26 are independent. Claim 26 is reproduced below.
26. A method of processing a dried and decarbonated feed
natural gas in order to obtain a processed natural gas intended to
be liquefied and a cut of C5+ hydrocarbons, the method
comprising the following steps:
cooling of the feed natural gas in a first heat exchanger to
form a pre-cooled feed flow;
introduction of the pre-cooled feed flow into a first
separator flask to form a pre-cooled gaseous flow;
dynamic expansion of the pre-cooled gaseous flow in an
expansion turbine and introduction of the expanded flow issuing
from the expansion turbine into a first purification column;
production at the head of the first column of a purified
head natural gas;
recovery at the bottom of the first column of a liquefied
bottom natural gas;
introduction of the liquefied bottom natural gas into a
second column for elimination of the C5+ hydrocarbons;
production, at the bottom of the second column, of the cut
of C5+ hydrocarbons;
production, at the head of the second column, of a gaseous
column head flow and introduction of the gaseous column head
flow into a second separator flask to form a liquid bottom flux
and a gaseous head flux;
introduction of a first part of the liquid bottom flux in
reflux into the second column and introduction of a second part
of the liquid bottom flux in reflux into the first column;
injection of at least a part of the gaseous head flux issuing
from the second separator flask into the purified head natural gas
to form the processed natural gas,
expansion of the liquefied bottom natural gas issuing from
the first column before its introduction into the second column,
and
compression of the gaseous column head flow in a first
compressor and cooling before its introduction into the second
separator flask,
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Application 12/731,549
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wherein during the step of dynamic expansion, the pre-
cooled gaseous flow is expanded to a pressure of more than 35
bar,
wherein the step of cooling of the feed natural gas in the
first heat exchanger is performed by exchanging heat in the first
heat exchanger exclusively with the purified head natural gas
issuing from the first column, whereby the purified head natural
gas issuing from the first column is heated in the first heat
exchanger by heat exchange with the feed natural gas,
wherein the pressure prevailing in the second column is
below 25 bar, the purified head natural gas is introduced into the
first heat exchanger without the purified head natural gas
entering into heat exchange in a heat exchanger with a flow
introduced into the first column, the purified head natural gas
enters into heat exchange in a heat exchanger exclusively with
the feed natural gas in the first heat exchanger, the feed natural
gas is cooled down exclusively by the purified head natural gas,
without being cooled down by an external refrigeration cycle,
and the molar content of C3- hydrocarbons in the cut of C5+
hydrocarbons is less than 1 %, and
wherein the method further comprises a step of tapping-
off a secondary flux in the second part of the liquid bottom flux,
before its introduction into the first column, and the introduction
of the secondary flux into the flow of purified head natural gas
issuing from the first column.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Kniel US 4,012,212 Mar. 15, 1977
Finn US 2001/0008073 A1 July 19, 2001
Wilkinson ’336 US 2002/0166336 A1 Nov. 14, 2002
Wilkinson ’722 US 2003/0005722 A1 Jan. 9, 2003
O’Brien US 2003/0177786 A1 Sept. 25, 2003
Bras ’156 US 7,041,156 B2 May 9, 2006
Bras ’395 WO 2007/144395 A2 Dec. 21, 2007
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REJECTIONS
I. Claims 1–25 stand rejected under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement. Final
Act. 2–3.2
II. Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Bras ’156, Wikinson ’722, Finn, Wilkinson ’336, Kniel, Bras ’395,
and O’Brien. Id. at 6–12.
OPINION
Rejection I
The Examiner determines that independent claims 1 and 12 fail to
comply with the written description requirement because “[t]he claim(s)
contain subject matter which was not described in the [S]pecification in such
a way as to reasonably convey to one skilled in the relevant art that . . . the
inventor(s), at the time the application was filed, had possession of the
claimed invention.” Final Act. 2. The specific subject matter contained in
the claim that is the basis for the rejection is
the purified head natural gas is introduced into the first heat
exchanger: (1) without the purified head natural gas entering
into heat exchange in a heat exchanger with a flow introduced

2 The Examiner clarifies in the Answer that “no rejection is present with
respect to claim 26 as it [is] understood that only the feed gas into the first
column is cooled exclusively as stated in the [S]pecification and as such
support is found for excluding a heat exchange with a flow entering the first
column.” Ans. 17. The Examiner continues that the broader recitation of
the purified head natural gas being introduced into the first heat exchanger
with two “conditions being excluded” (i.e., without entering into heat
exchange in a heat exchanger with (i) a flow introduced into the first
column; and (ii) a flow introduced into the second column) “is not
supported.” Id. at 17–18. According to the Examiner, “there is no
indication of exclusivity with regard to fluids entering the second column.”
Id. at 18.
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into the first column and (2) without the purified head natural
gas entering into heat exchange in a heat exchanger with a flow
introduced into the second column.
Appeal Br. 32, 34 (Claims App.). The Examiner takes the position that
although Appellant’s “drawings show[] a condition in which the purified
head gas does not exchange heat with a flow introduced into the first or
second column[,] this does not provide support to exclude such a recitation.”
Final Act. 2.
The fundamental factual inquiry for ascertaining compliance with the
written description requirement is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date. See Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). “This inquiry . . . is a question of fact,” and “the level of detail
required to satisfy the written description requirement varies depending on
the nature and scope of the claims and on the complexity and predictability
of the relevant technology.” Id. “[T]he specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed.” Id.
In this case, the drawings show the purified head natural gas being
introduced into the first heat exchanger without entering into heat exchange
in a heat exchanger with a flow introduced into either the first column or the
second column, as claimed. Spec. Fig. 1 (illustrating purified head natural
gas 70 at the head of first fractionating column 26 being introduced into first
heat exchanger 20 without undergoing any intermediate processing with the
two recited flows of any sort); Final Act. 2 (Examiner acknowledging same).
It is well established that drawings alone may provide a written description
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of the invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed.
Cir. 1991); see also In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983)
(citing In re Barker, 559 F.2d 588 (CCPA 1977) (“The content of the
drawings may also be considered in determining compliance with the written
description requirement.”).
In addition to pointing to Figures 1–3 of the Specification, Appellant
also points to the disclosure in the Specification that “after the tapping-off of
the purified head natural gas 70 at the head of the column 26, the purified
head natural gas 70 is then introduced into the first heat exchanger 20 where
it is placed in a heat exchange relationship with the feed natural gas 12.”
Appeal Br. 11 (citing Spec. 11:27–12:8). Appellant asserts that this
disclosure in the Specification
indicates that there was no intermediate heat exchange between
the time of the tapping-off of the purified head natural gas 70 at
the head of the column 26 and the time when it is placed in a
heat exchange relationship with the feed natural gas 12 and the
first heat exchanger 20.
Id.
We agree with Appellant that the present application provides support
for the limitation in question sufficient to satisfy the written description
requirement of 35 U.S.C. 112, first paragraph. Given the depiction of
purified head natural gas 70 in Figures 1–3 of the Specification and the
corresponding textual description, the present application conveys with
reasonable clarity that, as of the filing date of the present application,
Appellant was in possession of a method in which
the purified head natural gas is introduced into the first heat
exchanger: (1) without the purified head natural gas entering
into heat exchange in a heat exchanger with a flow introduced
into the first column and (2) without the purified head natural
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gas entering into heat exchange in a heat exchanger with a flow
introduced into the second column.
Appeal Br. 37 (Claims App.).
Accordingly, for the above reasons, we do not sustain the Examiner’s
rejection of claims 1–25 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
Rejection II
The Examiner finds that Bras ’156 teaches most of the limitations of
independent claim 26, including inter alia, “cooling of the feed natural gas
in a first heat exchanger to form a pre-cooled feed flow.” Final Act. 6.
More specifically, the Examiner points to “stream 1 [being] cooled in heat
exchanger 2 to form partially condensed natural gas 3.” Id. (citing Bras ’156
3:19–20); Bras ’156 Fig. 2. The Examiner also finds that Bras ’156 teaches
“production at the head of the first column of a purified head natural gas.”
Final Act. 7. Specifically, the Examiner points to “overhead stream 12
[exiting scrub column 6] which has a reduced content of natural gas liquids.”
Id. (citing Bras ’156 3:38–39).
The Examiner also finds that Bras ’156 teaches “the step of cooling of
the feed natural gas in the first heat exchanger is performed by exchanging
heat in the first heat exchanger exclusively with the purified head natural gas
issuing from the first column.” Id. Specifically, the Examiner points to
“stream 20 [being] formed of the purified head natural gas 12 . . . and
[being] heat exchanged in heat exchanger 2 against the stream 1.” Id. (citing
Bras ’156 3:40–45; 4:55–58). Thus, the Examiner identifies stream 12 as
the purified head natural gas produced at the head of first column 6 (Final
Act. 7), but the Examiner then relies on stream 20 as the purified head
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Application 12/731,549
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natural gas issuing from the first column that exchanges heat in first heat
exchanger 2 with feed natural gas 1 (id.; Bras ’156 Fig. 2).
Appellant argues that “[t]he overhead stream removed through
conduit 12 does not enter into heat exchange with the feed gas supplied by
conduit 1 to a heat exchanger 2, . . . as required by claim 26.” Appeal
Br. 14. Appellant further argues that “[a]lleged overhead stream 12 of Bras
[’156] is not equivalent to alleged stream 20.” Id. at 13. Appellant argues
that Bras ’156 “teaches that, ‘. . . overhead stream [12] is partly condensed
in heat exchanger 14, and separated in separation vessel 17 into a liquid
stream and a gaseous product stream. The gaseous product stream is
removed from the separation vessel 17 through conduit 20.’” Id.
(underlining omitted) (quoting Bras ’156 3:38–46). Appellant asserts that
“the overhead stream removed through the conduit 12 does not have the
same components as the stream passing through conduit 20.” Reply Br. 9.
In particular, Appellant asserts that “the overhead stream removed through
conduit 12 has natural gas liquids, as well as natural gas, whereas [the]
stream removed from the separation vessel 17 through conduit 20 is a
gaseous product stream.” Id. at 9–10 (underlining omitted). Appellant
additionally argues that “the gaseous product stream moving through conduit
20 originates at the separation vessel 17, not scrub column 6.” Appeal Br.
13 (underlining omitted).
The Examiner responds that
[t]he same components that make up the purified head natural
gas 12 are used to make up 20, thus 20 is a continuation of 12
and it is the stream used in cooling the feed to the system as the
part of 12 that makes up the purified head natural gas.
Ans. 18. The Examiner takes the position that “though the purified head
natural gas was produced at the top of column 6, it was continued as stream
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[20] after [separation vessel 17], [and] there is no restriction in the claims
that there is no intermediary steps to the purified head natural gas.” Id. at
18–19.
We do not agree with the Examiner that such a position, in which
stream 12 is considered equivalent to stream 20 despite there being
intermediary steps undertaken with respect to stream 12 so as to form stream
20, is reasonable. Claim 26 describes the step of “production at the head of
the first column of a purified head natural gas.” Appeal Br. 37 (Claims
App.). Claim 26 further describes “wherein the step of cooling of the feed
natural gas in the first heat exchanger is performed by exchanging heat in the
first heat exchanger exclusively with the purified head natural gas issuing
from the first column.” Id. The Specification describes and illustrates the
“purified head natural gas 70 . . . [that] is produced and tapped-off at the
head of the column 26 . . . is then introduced into the first heat exchanger 20,
where it is placed in a heat exchange relationship with the feed natural gas
12.” Spec. 11:27–35; Fig. 1. That is, the Specification illustrates and
describes the stream issuing from the head of the first column as the same
stream that enters into heat exchange with the feed natural gas, without any
intermediary steps.
In Bras ’156, rather than feed natural gas 1 being cooled in first heat
exchanger 1 by exchanging heat with the purified head natural gas issuing
from scrub column 6 (i.e., the stream in conduit 12), feed natural gas 1 is,
instead, cooled in first heat exchanger 1 by exchanging heat with a stream
(i.e., the stream in conduit 20) that has undergone several processing steps
relative to the stream in conduit 12 by virtue of this stream in conduit 12 first
having been partly condensed in heat exchanger 14 (Bras ’156 4:46–49),
having the resulting liquid components separated out in separation vessel 17
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(id. 3:40–43), having absorbed heat from gaseous overhead stream 40 in heat
exchanger 43 (id. 4:50–52), and having absorbed heat from liquid bottom
stream 10 in heat exchanger 55 (id. 4:53–55).
Gaseous product stream 20 exiting separation vessel 17 has a different
makeup than overhead stream 12 at least in that overhead stream 12 has been
partly condensed in heat exchanger 14 and liquid reflux stream 21 has been
separated therefrom. Bras ’156 1:46–51, Fig. 2. In our view, the
intermediary processing steps between stream 12 issuing from the head of
scrub column 6 prior to gaseous product stream 20 issuing from the head of
separation vessel 17 preclude a person of ordinary skill in the art from
considering stream 20 as merely being “a continuation of 12” as urged by
the Examiner. See Ans. 18–19. In view of the Specification, a person of
ordinary skill in the art would have understood the purified head natural gas
issuing from the first column to have been introduced in the first heat
exchanger for exchanging heat with the feed natural gas without the purified
head natural gas having undergone such intermediary processing steps as are
present in Bras ’156. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004) (claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art); Spec. 11:25–12:10, Fig. 1.
Accordingly, the Examiner’s finding that “the step of cooling of the
feed natural gas in the first heat exchanger is performed by exchanging heat
in the first heat exchanger exclusively with the purified head natural gas
issuing from the first column” (Final Act. 7) is not supported adequately by
Bras ’156 when the claim is given its broadest reasonable interpretation as
understood by a person of ordinary skill in the art in light of the
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Specification. Consequently, the Examiner’s conclusion of obviousness
relies on a deficient finding as to the scope and content of Bras ’156, and we
do not sustain the rejection of claim 26 under 35 U.S.C. § 103 as
unpatentable over Bras ’156, Wikinson ’722, Finn, Wilkinson ’336, Kniel,
Bras ’395, and O’Brien.3

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–25 112 Written Description 1–25
26 103 Bras ’156, Wikinson
’722, Finn, Wilkinson
’336, Kniel, Bras ’395,
O’Brien
26
Overall
Outcome
1–26

REVERSED

3 We have considered Appellant’s request that the Board remand the
application to the Examiner for further consideration of the rejection of
claims 1–25 to determine whether claims 1–25 are unpatentable over the
prior art and for the filing of a substitute Examiner’s Answer containing any
new ground of rejection of claims 1–25. Appeal Br. 29. Although the Board
has authority to remand a case to the Examiner when necessary (MPEP
§ 1211; 37 C.F.R. § 41.35(c), (e); 37 C.F.R. § 41.40(a)), we decline to
exercise our discretionary authority to remand where the rejections and their
bases are clearly stated by the Examiner.