ISOM, WENDELL W. et al.

Patent Trials and Appeals Board

Jan 2, 2020

13746020 - (D) (P.T.A.B. Jan. 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.
13/746,020 01/21/2013 WENDELL W. ISOM 13277-US 1041
27182 7590 01/02/2020
PRAXAIR, INC.
LAW DEPARTMENT
10 RIVERVIEW DRIVE
DANBURY, CT 06810-5113
EXAMINER
ALOSH, TAREQ M
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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):
LG.US.IP@linde.com
ToniAnn.Fonte@linde.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WENDELL W. ISOM, MARCELO RIBEIRO,
and ARMANDO ALEJANDRO GARCIA
____________

Appeal 2019-003823
Application 13/746,020
Technology Center 3700
____________

Before EDWARD A. BROWN, JAMES P. CALVE, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 11–21, 23, 24, and 26–31. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Praxair Technology, Inc. as the real
party in interest. Appeal Br. 3.
Appeal 2019-003823
Application 13/746,020
2
THE INVENTION
Appellant’s invention relates to methods for filling containers with
pressurized fluids. Spec. ¶¶ 2–4. Claim 11, reproduced below, is illustrative
of the subject matter on appeal.
11. A process for filling a cylinder with
cryogenic fluid in a filling system comprising:
pumping a cryogenic liquid at an initial rate
to an elevated pressure within a range of from 800
to 10,000 psia to produce an elevated pressure
cryogenic liquid;
vaporizing a first portion of the elevated
pressure cryogenic liquid to produce an elevated
pressure gas;
bypassing vaporization of a second portion
of the elevated pressure cryogenic liquid;
mixing the second portion of the elevated
pressure cryogenic liquid with the elevated
pressure gas and vaporizing the second portion of
the elevated pressure cryogenic liquid by direct
heat exchange with the elevated pressure gas to
produce a controlled temperature elevated pressure
gas having a temperature that is maintained higher
than -40°F;
passing the controlled temperature elevated
pressure gas into the cylinder to form a filled gas;
and
reducing the cryogenic liquid pumping
initial rate to a reduced pumping rate based on a
temperature rise in the cylinder to limit a
temperature of the filled gas to not more than
120°F.

Appeal 2019-003823
Application 13/746,020
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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Kooy US 5,325,894 July 5, 1994
Notaro US 5,934,081 Aug. 10, 1999
Matus US 2005/0061791 Al Mar. 24, 2005
Mercury Medical2 Technical Information Dec. 13, 2005
Turner US 2007/0107465 Al May 17, 2007
Farese US 2009/0205745 Al Aug. 20, 2009
The following rejections are before us for review:
1. Claims 11–15, 17–19, 21, 23, 24, and 26–31 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Notaro and Farese.
2. Claim 16 is rejected under 35 U.S.C. § 103 as being unpatentable
over Notaro, Farese, and Mercury Medical.
3. Claim 20 is rejected under 35 U.S.C. § 103 as being unpatentable
over Notaro, Farese, and Matus.
4. Claim 24 is rejected under 35 U.S.C. § 103 as being unpatentable
over Notaro, Farese, and Kooy.
5. Claim 26 is rejected under 35 U.S.C. § 103 as being unpatentable
over Notaro, Farese, and Turner.

2 Technical Information/Medical Gas Cylinders, Mercury Medical,
www.mercurymed.com/catalogs/BDR_TechnicalInformatoin.pdf.
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Application 13/746,020
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OPINION
Unpatentability of Claims 11–15, 17–19, 21, 23, 24, and 26–31
over Notaro and Farese
Appellant argues claims 11–15, 17–19, 21, 23, 24, and 26–31 as a
group. Appeal Br. 12–17. We select claim 11 as representative. See 37
C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Notaro discloses the invention substantially
as claimed except for reducing the pumping rate based on a temperature rise
in the cylinder, for which the Examiner relies on Farese. Final Action 3–6.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time of the invention to modify Notaro by the
teachings of Farese to achieve the claimed invention. Id. 5–6. According to
the Examiner, a person of ordinary skill in the art would have done this to
facilitate safe and expeditious filling of the cylinder. Id. 6.
Appellant argues that a person of ordinary skill would not have
combined Notaro and Farese in the manner proposed by the Examiner.
Appeal Br. 12. Appellant argues that Notaro and Farese provide redundant
and “mutually exclusive” means of controlling filling rate. Id. at 15.
Appellant cites Kinetic Concepts, Inc., v. Smith & Nephew, Inc., 688
F.3d 1342 (Fed. Cir. 2012) for the proposition that where an advantage
provided by one prior art reference is redundant with that of another prior art
reference such that no further improvement is expected to be achieved by the
combination, there is no reason for the combination other than hindsight.
Appeal Br. 12. According to Appellant,
[O]ther than the need for redundant control, the Examiner fails
to provide sufficient evidence or articulate technical reasoning
to establish that the fill method of Notaro would be further
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Application 13/746,020
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improved, enhanced or controlled by incorporating the reduced
pump rate of Farese.
Id. at 14.
In response, the Examiner explains that the base reference, Notaro,
teaches all of the features recited in claim 11 except for reducing the
pumping rate based on a temperature rise in the cylinder. Ans. 5. The
Examiner further explains that Farese is directed to filling a cylinder with a
cryogenic fluid in which a first portion of liquid is vaporized while a second
portion bypasses vaporization. Id. The two portions are then mixed and
placed into direct heat exchange with one another to provide temperature
control of the cryogenic fluid, which then fills the cylinder. Id. The
Examiner finds that Farese recognizes that prior art methods of filling
cylinders with cryogenic fluids suffer from overheating which delays the
filling process. Id. at 6 (citing Farese ¶ 4). The Examiner further finds that
Farese controls pumping rates based on temperature rise in the cylinder to
facilitate temperature control and faster filling. Id. (citing Farese ¶ 12).
In response to Appellant’s contention that the Notaro and Farese
methods are merely redundant of each other, the Examiner disputes
Appellant’s allegations as a mischaracterization of the rejection. Ans. 6.
The Examiner clarifies that the rejection relies on Notaro as teaching
vaporizing and bypassing as a means of temperature control and Farese as
teaching regulating pumping rates in addition to vaporizing and bypassing as
a means of improving on prior art methods such as Notaro. Id. 6–7. The
Examiner disputes Appellant’s allegation that Notaro and Farese teach
mutually exclusive design processes. Id. at 10. The Examiner reiterates and
clarifies that Notaro and Farese both teach vaporizing and bypassing, but
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that, in addition, Farese also controls pump rate based on temperature to
provide even greater control. Id.
The notion that these references are independently effective to
control temperature is true to the extent that Notaro is sufficient
to control temperature while Farese teaches improvements to
temperature control. Importantly, Farese expressly provides
that pump rate control enables the benefit of even greater
temperature control and more rapid filling than vaporizing and
bypassing alone (as is performed in Notaro) . . . Farese
evidences that pump rate control would improve upon the
process of Notaro.
Id.
Notaro discloses a system for filling cylinders with gas. Notaro,
Abstract. Notaro summarizes the underlying scientific principles involved
in filling gas cylinders as follows.
In the filling of cylinders, as the gas flows from a storage vessel
into the cylinder and the pressure within the cylinder increases,
owing to the fixed volume of the cylinder, the temperature of
the gas within the cylinder rises following the ideal gas law
relation. It is important that the temperature of the gas within
the cylinder not significantly exceed the ambient temperature.
If it were to exceed the ambient temperature, then less gas can
be put into any given cylinder at any given pressure and, as the
gas contents of the cylinder settle to the ambient temperature,
the cylinder becomes only partially filled and is delivered from
the filling station to the use point with significantly less gas
than could otherwise have been delivered.
Id. col. 1, ll. 32–44. Notaro then outlines one of the problems facing the art.
In order to avoid this problem of high gas temperature within
the cylinder as the cylinder is being filled with pressurizing gas,
practitioners fill cylinders at a slow rate, typically about 100 psi
per minute, such that the heat increase caused by the increasing
pressure within the cylinder roughly equals the heat dissipation
rate from the cylinder walls to the environment. In this way the
temperature of the cylinder contents does not significantly
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Application 13/746,020
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exceed the ambient temperature. This procedure effectively
addresses the cylinder partial charging problem, but it is time
consuming and therefore costly and inefficient.
Id. col. 1, ll. 45–55. Notaro addresses the forgoing problem by vaporizing
pressurized cryogenic liquid in admixture with pressurized gas to
simultaneously produce the charging gas and control the temperature of the
charging gas to enable a rapid filling rate. Id. Abstract, col. 2, ll. 1–12.
Farese is also directed to filling a vessel with compressed gas. Farese,
Abstract. Farese explicitly recognizes the overheating problem in filling gas
cylinders. Id. ¶ 4. Farese uses a variable speed pump or compressor to
adjust the flow rate of the gas based on gas temperature. Id., Fig. 2.
Appellant’s arguments in traverse of the rejection are not persuasive.
The arguments are based on the underlying premise that Notaro and Farese
teach mutually exclusive means of controlling the filling of gas cylinders.
Appeal Br. 15. In essence, Appellant contends that one would not use
Farese to improve Notaro because they each teach independently effective
control means. However, we do not accept Appellant’s underlying premise
and, therefore, Appellant’s resulting conclusion quickly falls to the ground.
Appellant’s reliance on the Kinetic Concepts case is misplaced for
several reasons. In the first instance, Kinetic Concepts involved an appeal to
the Federal Circuit of a District Court’s decision to grant a patent
challenger’s motion for judgment as a matter of law (JMOL) of invalidity of
obviousness which set aside a jury verdict upholding the validity of the
claims at issue. Kinetic Concepts, 688 F.3d at 1346. During trial, the jury
heard evidence from patentee’s expert that the prior art did not disclose all of
the features of the claim at issue and that there was no reason to combine the
references. Id. 1363–64, 1369. In reversing the District Court’s grant of
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JMOL, the Federal Circuit determined that the court had to assume that the
jury found the patentee’s expert credible and persuasive in his opinion that
the prior art reference did not disclose certain claimed features. Id.
at 1363–64.
Because the jury concluded that S & N failed to establish that
the patents were obvious, we must assume that the jury found
Wake Forest's expert to be credible and persuasive on this
point. In light of this assumption, there is substantial evidence
to support the factual finding that the [prior art] reference does
not disclose [the claimed feature].
Kinetic Concepts at 1364.
Furthermore, the Kinetic Concepts court also found that the patent
challenger, who bore the burden of proving invalidity by clear and
convincing evidence, failed to introduce evidence indicating why a person of
ordinary skill in the art would combine the references to arrive at the
claimed invention. Id. at 1366–67. In contrast, the Examiner here has
articulated a reason to combine supported by rational underpinning sufficient
to support the rejection, namely, to facilitate expeditious filling of the
cylinder. Final Action 6.
Moreover, Appellant’s redundancy theory appears to be based on the
following language from Kinetic Concepts.
[B]oth of these references independently accomplish similar
functions, namely, draining fluids. Because each device
independently operates effectively, a person having ordinary
skill in the art, who was merely seeking to create a better device
to drain fluids from a wound, would have no reason to combine
the features of both devices into a single device.
Id. at 1369. In contrast to the facts of Kinetic Concepts and consistent with
the Examiner’s findings in the instant case, Farese presents a means of
improving previous filling methods such as Notaro.
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Application 13/746,020
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Furthermore, the fact that Notaro may already perform adequately
does not preclude a skilled artisan from seeking to improve upon it. An
implicit motivation to combine exists when the improvement is technology-
independent and the combination of references results in a product or
process that is more desirable, for example, because it is faster or more
efficient. Dystar Textilfarben GmBH & Co, v. C.H. Patrick Co., 464 F.3d
1356, 1368 (Fed. Cir. 2006).
Because the desire to enhance commercial opportunities by
improving a product or process is universal—and even
common-sensical—we have held that there exists in these
situations a motivation to combine prior art references even
absent any hint of suggestion in the references themselves.
Id.
Appellant next argues that the Examiner fails to provide sufficient
evidence to establish that the fill method of Notaro would be improved by
incorporating the pump rate of Farese. Appeal Br. 14. In so doing,
Appellant misconstrues the allocation of the burden of proof in proceedings
before the PTO. The PTO bears the initial burden of showing a prima facie
case of obviousness. In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014).
However, when a prima facie case of obviousness is made, the burden then
shifts to Appellant to come forward with evidence and/or argument
supporting patentability. Id. With respect to the Examiner’s burden, the
Examiner is deemed to be a person of scientific competence and, in such
capacity, makes findings, informed by his or her scientific knowledge, as to
the meaning of prior art references to persons of ordinary skill in the art and
the motivation those references would provide to such persons. In re Berg,
320 F.3d 1310, 1315 (Fed. Cir. 2003). Absent legal error or contrary factual
evidence, those findings can establish a prima facie case of obviousness. Id.
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In the instant case, the Examiner finds that the teachings of Farese can be
used to improve Notaro and supplies articulated reasoning with rational
underpinning as to why a person of ordinary skill in the art would have made
the combination. Final Action 6; See In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)(requiring an obviousness conclusion to be based on explicit
articulated reasoning with rational underpinning) cited with approval in KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner’s
findings and reasoning is enough to shift the burden to Appellant to rebut the
Examiner’s case. Apart from unsubstantiated attorney argument, Appellant
fails to rebut the Examiner’s case with evidence or persuasive technical
reasoning. Invitrogen Corp. v. Clontech Labs, Inc., 429 F.3d 1052, 1068
(Fed. Cir. 2005) (unsubstantiated attorney argument is no substitute for
competent evidence).
Finally, Appellant argues that Notaro and Farese are incompatible
because Farese reduces the pump rate only when temperature in the vessel
exceeds 150 degrees F, whereas Notaro’s method maintains gas contents in
fill cylinders within a range of 60–90 degrees F. Appeal Br. 15. “Given that
Notaro’s filled gas contents never exceed 90F, there is no technical reason to
adopt Farese’s reduction of pump rate at higher than l50F.” Id. at 16. In
response, the Examiner points out, correctly, that the temperature ranges
recited by Appellant in the Appeal Brief relate to non-limiting examples.
Ans. 3. Appellant’s incompatible temperature range argument thus fails to
apprise us of the Examiner error.
In view of the foregoing discussion, we determine the Examiner’s
findings of fact are supported by a preponderance of the evidence and that
the Examiner’s legal conclusion of unpatentability is well-founded.
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Accordingly, we sustain the Examiner’s unpatentability rejection of
claims 11–15, 17–19, 21, 23, 24, and 26–31 over Notaro and Farese.
Unpatentability of Claims 16, 20, 24, and 26
over Combinations Based on Notaro and Farese
These claims are rejected over Notaro and Farese in combination with
various other references. Final Action 14–17. Appellant does not argue for
their separate patentability apart from arguments presented with respect to
claim 11, which we have previously considered. We sustain the Examiner’s
rejection of claims 16, 20, 24, and 26. See 37 C.F.R. § 41.37(c)(1)(iv) (not
arguing a ground of rejection results in waiver).
CONCLUSION
In summary:
Claims
Rejected
§ Reference(s)/Bases Aff’d Rev’d
11-15, 17-19,
21, 23, 24,
26–31
103 Notaro, Farese 11-15, 17-19,
21, 23, 24,
26–31

16 103 Notaro, Farese, Mercury
Medical
16
20 103 Notaro, Farese, Matus 20
24 103 Notaro, Farese, Kooy 24
26 103 Notaro, Farese, Turner 26
Overall
Outcome
11-21, 23, 24,
26-31

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED