Tony Martinez et al.

Patent Trials and Appeals Board

May 24, 2021

2020004916 (P.T.A.B. May. 24, 2021)

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.
12/869,139 08/26/2010 Tony L. Martinez H217642 7271
159954 7590 05/24/2021
HONEYWELL/PASCHALL & Associates, LLC
Intellectual Property Services Group
300 S. Tryon Street
Suite 600
Charlotte, NC 28202
EXAMINER
PETTITT, JOHN F
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
05/24/2021 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):
PatentServices-US@honeywell.com
james.paschall@paschall-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TONY L. MARTINEZ, JOHN D. WILKINSON, JOE T. LYNCH,
HANK M. HUDSON, and KYLE T. CUELLAR
Appeal 2020-004916
Application 12/869,139
Technology Center 3700
Before JENNIFER D. BAHR, MICHAEL J. FITZPATRICK, and
WILLIAM A. CAPP, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 5, and 30. We have jurisdiction
under 35 U.S.C. § 6(b).2 We AFFIRM.

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 Honeywell
International, Inc. of Charlotte, NC, which acquired assignee Ortloff
Engineers, Ltd. Appeal Br. 1.
2 On February 1, 2021, Appellant waived the oral hearing scheduled for
February 22, 2021.
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to a process “for the separation of a
gas containing hydrocarbons.” Spec. ¶ 1. Claim 1, reproduced below from
the Claims Appendix with minor formatting changes, is the only
independent claim before us in this appeal and is representative of the
claimed subject matter.
1. A process for separating a gas stream containing methane,
C2 components, C3 components, and heavier hydrocarbon
components into a volatile residue gas fraction and a
relatively less volatile fraction containing a major portion of
said C2 components, C3 components, and heavier
hydrocarbon components or said C3 components and
heavier hydrocarbon components, in which process
said gas stream is cooled under pressure to provide a
cooled stream;
said cooled stream is expanded to a lower pressure
whereby it is further cooled; and
said further cooled stream is directed into a distillation
column and fractionated at said lower pressure whereby
the components of said relatively less volatile fraction are
recovered;
an improvement wherein following cooling, said
cooled stream is divided into first and second streams; and
(1) said first stream is cooled to condense at least a
majority of said first stream, and is thereafter expanded to
said lower pressure whereby it is further cooled;
(2) said expanded cooled first stream is thereafter
supplied to said distillation column at an upper mid column
feed position;
(3) said second stream is expanded to said lower
pressure and is supplied to said distillation column at a mid
column feed position below said upper mid column feed
position;
(4) an overhead vapor stream is withdrawn from an
upper region of said distillation column and divided into at
least a first portion and a second portion;
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(5) a distillation vapor stream is withdrawn from a
region of said distillation column
above said upper mid column feed position; or
below said upper mid-column feed position and
above said mid-column feed position; or
below said mid-column feed position;
and is combined with said first portion to form a
combined vapor stream;
(6) said combined vapor stream is compressed to
higher pressure;
(7) said compressed combined vapor stream is
directed into heat exchange relation with said second
portion, whereby said second portion is heated and said
compressed combined vapor stream is cooled sufficiently to
condense at least a part of it and thereby form a condensed
stream, and thereafter discharging at least a portion of said
heated second portion as said volatile residue gas fraction;
(8) at least a portion of said condensed stream is
expanded to said lower pressure and is thereafter supplied to
said distillation column at a top feed position above the feed
positions of steps (2) and (3); wherein there are no
feed positions above said top feed position; and
(9) quantities and temperatures of said feed streams
to said distillation column are controlled to maintain the
overhead temperature of said distillation column at a
temperature whereby the major portions of the
components in said relatively less volatile fraction are
recovered.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Cuellar US 2008/0078205 A1 Apr. 3, 2008
Pitman US 2008/0190136 A1 Aug. 14, 2008
Wilkinson US 2009/0100862 A1 Apr. 23, 2009

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REJECTION
Claims 1, 3, 5, and 30 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pitman, Cuellar, and Wilkinson.
OPINION
The Examiner finds that Pitman discloses a process satisfying most of
the limitations of claim 1, but that “Pitman does not explicitly teach that
there are no feed positions above the top feed position.” Final Act. 3–4
(citing Pitman, Figs. 5 and 6). The Examiner finds that “Pitman would meet
the claim limitations if Pitman were to be operated without a recycle gas
stream.” Id.
The Examiner finds that Cuellar “teaches it is known to provide
desired reflux using a compressed side stream and to not use a lean gas
[recycle] reflux.” Final Act. 4 (citing Cuellar ¶¶ 11–14). The Examiner
determines that, in view of the teachings of Cuellar, it would have been
obvious “to modify Pitman by foregoing the lean gas recycle (48) for the
purpose of reducing the cost of operation for feed gases that require less
such reflux and for those consumer situations for which lowering cost is
more important than any gains from providing the recycle stream.” Id. The
Examiner notes “that operating the method of Pitman without the lean gas
recycle stream in situations when it is not considered to be needed is
considered plainly obvious as the prior art makes it clear that foregoing the
recycle reflux is known and provides clear benefits.” Id.
Moreover, to the extent that claim 1 requires withdrawing the vapor
distillation stream from above Pitman’s expanded stream 35b or below
expanded stream 36a, the Examiner directs our attention to Pitman’s
teaching that “the relative locations of the mid-column feeds and the
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withdrawal point of distillation vapor stream 49 may vary depending on inlet
composition or other factors such as desired recovery levels and amount of
liquid formed during inlet gas cooling.” Final Act. 4 (quoting Pitman ¶ 94).
In light of this teaching, the Examiner finds that “the relative location clearly
influences the composition of the vapor distillation stream and thereby the
recovery percentage of the components and the separation performance of
the method[,] and therefore the location of withdrawal is clearly a result
effective variable.” Id. at 4–5. The Examiner additionally finds that Cuellar
also evidences that “it is known to vary the withdrawal location of the vapor
distillation stream.” Id. at 5 (noting the different withdrawal locations of
distillation vapor stream 43 in Figures 2, 4, 6, and 7 of Cuellar).
Additionally, the Examiner finds that Wilkinson evidences “that it is known
to vary the withdrawal location of the vapor distillation stream . . . to effect
different separation performance.” Id. (citing Wilkinson, Fig. 4, ¶¶ 66–68).
In view of the combined teachings of Pitman, Cuellar, and Wilkinson,
the Examiner determines it would have been obvious “to modify Pitman to
withdraw the vapor distillation stream (49) from below stream (36a) or
above stream (35b) depending on the feed composition for the purpose of
maximizing the performance of the separation method for the natural gas on
hand.” Final Act. 5.
Appellant argues that Wilkinson is not prior art because the named
inventors are the same on the present application and on Wilkinson, and the
present application claims priority to provisional application 61/244,181
(hereinafter “the provisional application”), which was filed less than one
year after the publication of Wilkinson. Appeal Br. 29. Appellant contends
that the claims of the present application are supported by paragraph 42 and
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the figures of the present application, and by paragraph 70 and the figures of
the provisional application. Id. According to Appellant, the varied
withdrawal location of the vapor distillation stream in Figure 4 of Wilkinson
is the same as that in Figures 5 and 6 of the provisional application. Id.
Further, Appellant notes that paragraph 16 of the provisional application
references the Wilkinson application, which is reflected in Figure 3 of the
provisional application. Id.
“Claims deserve [a] provisional application’s earlier filing date so
long as that application contains adequate written description under 35
U.S.C. § 112.” Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655
F.3d 1364, 1371 (Fed. Cir. 2011) (citations omitted). To satisfy the written
description requirement, the disclosure must reasonably convey to skilled
artisans that the applicant possessed the claimed invention as of the filing
date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc).
The Examiner finds that claim 1, as well as its dependent claims 3, 5,
and 30 involved in this appeal, is not entitled to the benefit of the
September 21, 2009, filing date of the provisional application because
the provisional application does not support any of the
following claim limitations from claim 1:
(4) an overhead vapor stream is withdrawn from an upper
region of said distillation column and divided into at least a first
portion and a second portion;
(5) a distillation vapor stream is withdrawn from a region
of the distillation column above the upper-mid column feed
position;
and is combined with said first portion to form a
combined vapor stream;
(6) said combined vapor stream is compressed to higher
pressure;
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(7) said compressed combined vapor stream is directed
into heat exchange relation with said second portion, whereby
said second portion is heated and said compressed combined
vapor stream is cooled sufficiently to condense at least a part of
it and thereby form a condensed stream, and thereafter
discharging at least a portion of said heated second portion as
said volatile residue gas fraction;
(8) at least a portion of said condensed stream is
expanded to said lower pressure and is thereafter supplied to
said distillation column at a top feed position above the feed
positions of steps (2) and (3); wherein there are no feed
positions above said top feed position.
Ans. 23.
Appellant does not dispute the Examiner’s findings in this regard. We
have reviewed paragraph 70 of the provisional application, which Appellant
cites as supporting the claims, but we find therein no disclosure of the
features of claim 1 identified by the Examiner as lacking support in the
provisional application.
Appellant argues that the Examiner does not address Appellant’s
statements on page 29 of the Appeal Brief regarding the provisional
application’s disclosure of varied withdrawal locations. Reply Br. 17. This
argument is unavailing. It is not enough that the provisional application
discloses the subject matter for which the Examiner relies on Wilkinson. As
we point out above, in order for the claims before us in this appeal to be
entitled to the benefit of the filing date of the provisional application, the
provisional application must contain adequate written description of the
claimed invention, not just certain features thereof.
For the above reasons, Appellant fails to apprise us of error in the
Examiner’s application of Wilkinson as prior art against the claims involved
in this appeal.
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Appellant also argues that “‘[n]othing in Pitman and Cuellar would
suggest modifying ‘Pitman by foregoing the lean gas recycle (48) for the
purpose of reducing the cost of operation.’” Appeal Br. 8. Appellant
submits that “the Pitman process produces more ethane relative to power
expended and with higher recovery efficiency than does the Cuellar
process.” Id.
Appellant contends that the hypothetical person of ordinary skill in the
art would note the substantial overlap in inventors between Pitman and
Cuellar, as well as the fact that both Pitman and Cuellar are assigned to the
same entity, Ortloff Engineers, Ltd. Appeal Br. 16–17. Appellant adds that
the person of ordinary skill in the art would further recognize that the Pitman
application was filed after the Cuellar application. Appeal Br. 17. Appellant
also highlights the fact that Pitman’s paragraph 10 is identical to
paragraph 11 of Cuellar, except that Pitman’s paragraph 10 cites a co-
pending application and does not include the last sentence of Cuellar’s
paragraph 11 noting the problems associated with the use of recycled reflux
streams. Id. at 17.
Appellant points out that Pitman’s Table V shows that, using the
process of Pitman’s Figure 5, the ethane recovery is 97.20%, with 1,129
lb-mol/hour recovered in stream 42 using 12,167 total compression
horsepower. Appeal Br. 17. Thus, Pitman’s horsepower expenditure per
pound mole of ethane recovered is 10.78. Id. In comparison, Appellant
submits, Cuellar’s processes of Figures 2 and 4 both yield 83.06% ethane
recovery (964 lb-mol/hour). Id. at 17–18. Cuellar’s Figure 2 process
uses 11,389 total compression horsepower (Table II), and Cuellar’s Figure 4
process uses 11,044 total compression horsepower (Table III). Id. at 18. In
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other words, Cuellar’s horsepower expenditure per pound mole is 11.81 for
the Figure 2 process and 11.46 for the Figure 4 process. Id.
Based on the foregoing data, Appellant submits that “it is clear that
the utilization of the Pitman reflux resulted in higher ethane recovery than
the Cuellar process (97.20% v. 83.06%) utilizing less horsepower per pound
mole of ethane recovered (10.78 v. 11.81 and 11.46).” Appeal Br. 18.
Appellant contends that the data in Pitman’s and Cuellar’s tables
would be informative to those of ordinary skill in the art as to “why the
Ortloff inventors reintroduced a compressed recycle reflux stream in the
later filed Pitman application,” namely, because Pitman’s horsepower
expenditure per pound mole of ethane recovered is less than that of either of
Cuellar’s processes. Appeal Br. 19. According to Appellant, Pitman’s
Figure 5 embodiment is 9.1% more efficient than Cuellar’s Figure 2
embodiment and 9.4% more efficient than Cuellar’s Figure 4 embodiment.
Id. Thus, Appellant argues that “nothing in Pitman and Cuellar would
suggest modifying ‘Pitman by foregoing lean gas recycle (48) for the
purpose of reducing the cost of operation,’” as articulated in the rejection.
Id. at 20.
Appellant cites a Declaration by Hank M. Hudson (one of the
inventors named in the present application, as well as in the Pitman, Cuellar
and Wilkinson applications), executed September 19, 2018 (hereinafter
“Hudson Declaration” or “Hudson Decl.”), in support of these contentions.
See Appeal Br. 21 (stating that the Hudson “Declaration is evidence as to
how [the data in Pitman and Cuellar] would be interpreted by a skilled
artisan”); Hudson Decl. ¶ 13 (noting that Pitman’s reflux resulted in higher
ethane recovery than Cuellar’s process using less horsepower per pound
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mole of ethane recovered and averring that “nothing in the art suggested the
modification of Pitman on which the rejection is based”). Appellant
contends that the Hudson Declaration and Appellant’s argument demonstrate
“that there is nothing in the prior art to suggest the selection, modification[,]
and combination of the cited references with a reasonable expectation of
successfully achieving [Appellant’s] claimed invention.” Appeal Br. 23.
Appellant argues that it was surprising that “combining a portion of
the cold overhead vapor with the side draw vapor and then compressing the
combined stream improves the system efficiency while reducing operating
cost.” Appeal Br. 10–11 (citing Spec. ¶ 12). Appellant contends that
nothing in Pitman and Cuellar “suggests that any combination of the
disparate streams disclosed in those two references would result in
Appellant’s surprising discovery, recited in the instant claims, which
achieves improvements in the efficiency of hydrocarbon recoveries over the
prior art.” Id. at 13–14 (citing Spec. ¶¶ 38–39).
Appellant’s argument regarding the combination of the cold overhead
vapor and the side draw vapor is not persuasive. Pitman’s Figure 5
embodiment differs from those of Figures 3 and 4 in that, in the Figure 5
process, portion 44 of overhead stream 39 is combined with side draw vapor
stream 49 and then the combined stream is condensed to form reflux, which
allows the flow rate of recycle stream 48 to be reduced. See Pitman ¶ 76.
According to Pitman, this reduction in the flow rate of recycle stream 48
results in essentially the same recovery of ethane, propane, and butanes as in
the processes of Figures 3 and 4 using slightly less horsepower. Id. Thus, it
is not surprising that combining a portion of the cold overhead vapor and the
side stream and condensing the combined stream to provide reflux, while
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also further reducing the flow rate of recycle gas (even to the point of
eliminating the recycle gas stream entirely) might lead to greater
efficiencies.
In response to Appellant’s arguments that nothing in the applied prior
art would have suggested the proposed modification of Pitman, the
Examiner reiterates that “Cuellar explicitly teaches that a recycle stream
adds ‘to both the capital cost and the operating cost of the facilities’
(para. 11) and further teaches that suitable recovery performance can be
obtained (para. 14) by employing side vapor for reflux instead of a recycle
stream (para. 12-14).” Ans. 7. We agree with the Examiner that Appellant’s
assertion that “nothing in Pitman and Cuellar would suggest modifying
‘Pitman by foregoing lean gas recycle (48) for the purpose of reducing the
cost of operation’” (see, e.g., Appeal Br. 20 (emphasis added)) is incorrect
and disingenuous.
Cuellar teaches that the processes needed to supply a recycled stream
of residue gas as the reflux stream for the upper rectification section “require
the use of a large amount of compression power to provide the motive force
for recycling the reflux stream to the demethanizer, adding to both capital
cost and the operating cost of facilities using these processes.” Cuellar ¶ 11.
Instead, Cuellar teaches that a side draw of vapors rising in a lower portion
of the tower can be used to provide a suitable reflux stream to absorb C2, C3,
and C4 components, and heavier hydrocarbon components from the vapors
rising through the upper rectification section and capture these components
in the bottom liquid product from the demethanizer. Id. ¶ 12. By modestly
elevating the pressure of the side draw vapor stream, a significant quantity of
liquid can be condensed in it, often using only the cooling provided by heat
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exchange with the overhead stream of cold vapor leaving the upper
rectification section. Id. This condensed liquid, which is predominantly
liquid methane, can then be used to absorb and capture suitable quantities of
the C2, C3, and C4 components, and heavier hydrocarbon components. Id.
Thus, a person having ordinary skill in the art would glean from
Cuellar that capital cost and operating cost savings could be achieved by
eliminating Pitman’s recycle stream 48. Further, Cuellar’s teachings
regarding the cost savings associated with doing so would provide ample
incentive for a person having ordinary skill in the art to modify Pitman by
foregoing lean gas recycle stream 48 for the reason articulated by the
Examiner, namely, “for the purpose of reducing the cost of operation for
feed gases that require less such reflux and for those consumer situations for
which lowering cost is more important than any gains from providing the
recycle stream.” Final Act. 4 (emphasis added). Indeed, even the data in
Pitman’s Table V and Cuellar’s Tables II and III, which Appellant contends
would be so informative to a person of ordinary skill in the art as to why the
inventors in the Pitman application chose to reintroduce the recycle stream,
appear to lend support to the Examiner’s position regarding cost savings. In
particular, although the recovery percentages may be smaller in Cuellar, the
total compression horsepower is also lower in Cuellar. Thus, a person
having ordinary skill in the art would have a reasonable expectation of
success in lowering cost in Pitman’s process, by reducing the amount of
compression power expenditure, by foregoing residue gas recycle stream 48
and using only side draw vapor as taught by Cuellar.
Appellant’s arguments appear to presume that, in order to support a
conclusion of obviousness, the prior art must demonstrate that a person of
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ordinary skill in the art would have had a reasonable expectation of success
in achieving the type of efficiency in hydrocarbon recoveries achieved by
Appellant. This is not correct.
“The reasonable expectation of success requirement refers to the
likelihood of success in combining references to meet the limitations of the
claimed invention.” Intelligent Bio-Systems, Inc. v. Illumina Cambridge
Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). In other words, “one must have
a motivation to combine accompanied by a reasonable expectation of
achieving what is claimed in the patent-at-issue.” Id.
As the Examiner points out, claim 1 does not recite any efficiency
performance of the process. Ans. 9. Thus, in this case, there need not be a
reasonable expectation of success in achieving the particular recovery
efficiencies reported in Appellant’s Specification using the Pitman process
modified as proposed in the rejection. For the reasons discussed above, a
preponderance of the evidence supports a reasonable expectation of success
in modifying Pitman’s process in view of the teachings of Cuellar and
Wilkinson as proposed in the rejection.
Moreover, Wilkinson teaches the importance of judiciously selecting
the withdrawal locations in the absorbing section and the stripping section,
as well as the relative quantities withdrawn at each location, so that the
resulting combined vapor stream contains enough C2+ components to be
readily condensed, without impairing the effectiveness of the reflux stream
by causing it to contain too much C2+ components. Wilkinson ¶ 68. This
suggests that by carefully selecting suitable withdrawal locations for side
draw vapors in the absorbing section and the stripping section of the
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demethanizer, increased recoveries could be achieved with relatively little
increased capital cost. See id.
Appellant highlights several advantages in Appellant’s process
relative to Pitman’s process. See Appeal Br. 14–16. In particular, Appellant
notes that Appellant’s “claimed invention totally eliminates the methane
recycle stream of Pitman to yield a simpler process that nevertheless
provides the efficient recovery benefits” discussed in the Specification. Id.
at 14. Appellant also points out that omitting Pitman’s recycle stream 48c
eliminates the need for heat exchanger 22 and permits heat exchanger 12 to
be reduced from a 4-pass exchanger to one with three passes and distillation
column 17 to be reduced in size. Id. at 15 (citing Hudson Declaration); see
Hudson Decl. ¶ 9.
The noted simplifications afforded by the modification flow naturally
from the elimination of the methane recycle stream of Pitman and simply
illustrate the elimination of the added capital cost and facilities operating
cost that Cuellar attributes to the use of recycled residue gas for the reflux
stream. See Cuellar ¶ 11. Such simplifications are predictable in view of the
teachings of Cuellar.
Further, Appellant submits that, as shown in Figure 3 of the present
application, portions of the distillation vapor are withdrawn at different
locations on the distillation column, thereby allowing the composition of
stream 45 to be tailored “to optimize the production of reflux for a given set
of operating conditions.” Appeal Br. 15–16; see also Hudson Decl. ¶ 15.
Additionally, Appellant notes that
[t]he present invention enables the judicious selection of the
withdrawal locations, as well as the relative quantities
withdrawn at each location, so that the resulting stream . . .
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contains enough C2+ components to be readily condensed,
without impairing the effectiveness of [the] reflux stream . . . by
causing it to contain too much C2+ components. The increase
in recovery for the different aspects of this inventive
embodiment must be evaluated for each application relative to
the slight increase in capital cost expected when the withdrawal
is made [at a higher location] (higher recovery, but more power
expenditure to compress . . . the leaner stream) compared to
when withdrawal is made [at a lower location] (lower recovery,
but less power expenditure to compress . . . the richer stream).
Appeal Br. 16.
What Appellant notes is not unique to the present invention.
Wilkinson expressly teaches the concepts of withdrawing portions of
distillation vapor from different locations on the distillation column, thereby
allowing the composition of the vapor stream to be tailored to optimize the
production of reflux for a given set of operating conditions. Wilkinson
¶¶ 67–68. Indeed, Appellant’s statements touting the importance of
judicious selection of the withdrawal locations to increase recovery repeat
essentially verbatim Wilkinson’s discussion regarding the judicious selection
of the withdrawal locations. Id. ¶ 68. Additionally, as mentioned above,
Pitman teaches varying “[t]he relative locations of the mid-column feeds and
the withdrawal point of [the] distillation vapor stream . . . depending on inlet
composition or other factors such as desired recovery levels and amount of
liquid formed during inlet gas cooling.” Pitman ¶ 94.
Thus, a person having ordinary skill in the art, familiar with all of the
teachings of Pitman, Cuellar, and Wilkinson, would have fully appreciated
that, by judiciously selecting the withdrawal position(s) of distillation vapor
stream(s) to form a combined vapor stream having enough C2+ components
to facilitate condensing of a substantial portion of the stream into a reflux
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stream, but not so much C2+ components as to impair the absorption
capability of the reflux stream, increased recoveries of these components can
be achieved, without using a residue gas recycle stream for reflux, with only
a slight increase in power expenditure and capital cost. Consequently,
although perhaps the skilled artisan might not have predicted the particular
degree of increased recoveries disclosed in Appellant’s Specification, it is
not unexpected that increased recoveries would be achievable even without
using a residue gas recycle stream as a source of reflux, by judiciously
selecting the withdrawal location(s) of distillation vapor stream(s) for use as
reflux, when combined with first portion 44 of Pitman’s overhead vapor
stream.
Appellant also notes that Cuellar addresses the problem of carbon
dioxide, but Pitman says nothing about carbon dioxide icing. Reply Br. 12.
Thus, Appellant submits that “the reduced carbon dioxide icing feature of
Cuellar would play no role in improving the Pitman process.” Id. This
argument appears to have been raised for the first time in the Reply Brief,
and Appellant does not present any evidence or explanation to show good
cause why it should be considered by the Board at this time. See 37 C.F.R.
§ 41.41(b)(2) (“Any argument raised in the reply brief which was not raised
in the appeal brief, or is not responsive to an argument raised in the
examiner’s answer . . . will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.”). Nevertheless, this
argument is not deemed persuasive because the Examiner does not rely on
Cuellar’s discussion of carbon dioxide icing as a reason for modifying
Pitman’s process. While Cuellar cites mitigation of carbon dioxide icing as
an additional advantage of the side draw feature, this is not the primary
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reason for Cuellar’s elimination of the recycle stream in favor of relying on
side draw vapor to form reflux. See, e.g., Cuellar ¶ 13. Thus, the absence of
discussion of carbon dioxide icing in Pitman in no way undermines the
Examiner’s reasoning.
For the above reasons, after reviewing all of the evidence before us,
we determine that the evidence of obviousness outweighs the evidence of
nonobviousness. Thus, we are not apprised of error in the Examiner’s
conclusion that the subject matter of claim 1 would have been obvious.
Accordingly, we sustain the rejection of claim 1 as unpatentable over
Pitman, Cuellar, and Wilkinson. We also sustain the rejection of dependent
claims 3, 5, and 30, for which Appellant relies solely on the arguments
presented for claim 1, as unpatentable over Pitman, Cuellar, and Wilkinson.
See Appeal Br. 30 (stating “that claims 3, 5[,] and 30 are patentable for the
same reasons articulated” for independent claim 1).
CONCLUSION
The Examiner’s rejection of claims 1, 3, 5, and 30 under
35 U.S.C. § 103(a) is AFFIRMED.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 5, 30 103(a) Pitman, Cuellar,
Wilkinson
1, 3, 5, 30

TIME PERIOD FOR RESPONSE
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)(iv).
AFFIRMED