Eliot Gerber

Patent Trials and Appeals Board

Aug 16, 2019

13999746 - (D) (P.T.A.B. Aug. 16, 2019)

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.
13/999,746 03/19/2014 Eliot Gerber 4874
67242 7590 08/16/2019
ELIOT GERBER
127 DEVIN DR.
MORAGA, CA 94556
EXAMINER
MCCAIG, BRIAN A
ART UNIT PAPER NUMBER
1772
MAIL DATE DELIVERY MODE
08/16/2019 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ELIOT GERBER
____________

Appeal 2018-008866
Application 13/999,746
Technology Center 1700
____________

Before MICHELLE N. ANKENBRAND, DONNA M. PRAISS, and
JEFFREY R. SNAY, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant filed an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 1–16. We have jurisdiction under
35 U.S.C. § 6(b).1 We AFFIRM.

1 Appellant filed a first Appeal Brief on November 4, 2016, and a second
Appeal Brief on November 21, 2016. An Examiner’s Answer was entered
December 20, 2016, to which Appellant filed a Reply Brief on January 17,
2017. The Application subsequently became abandoned. While abandoned,
Appellant filed a third Appeal Brief on November 1, 2017. A grantable
petition to revive the Application was filed thereafter. In this Decision, we
cite to the last-filed Appeal Brief (“Appeal Br.”), as it appears to include all
of the arguments presented in the earlier filed Appeal Briefs. We
additionally refer to Specification filed Mar. 19, 2014 (“Spec.”), the Final
Office Action dated October 18, 2016 (“Final Act.”), the Examiner’s
Answer (“Ans.”), and the Reply Brief (“Reply Br.”).
Appeal 2018-008866
Application 13/999,746

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BACKGROUND
The subject matter on appeal relates to systems and methods for the
separation and disposal of carbon dioxide. See, e.g., claims 1, 5, and 9. The
Specification discloses the use of two cascaded membrane separator stages
to separate carbon dioxide from nitrogen. Spec. 2. The permeance of the
first stage membrane permits cost-saving low gas compression to be used.
Id. A higher pressure can be used for the membrane of the second stage,
which has a lower permeance and higher selectivity. Id.
Independent claim 1 is illustrative.2 Limitations at issue are italicized
and some indentation has been added.
1. A system for the separation and non-polluting disposal of
carbon dioxide derived from exhaust gas of burning fossil fuel,
including a gas separation system which includes:
a first stage of gas membranes CO2 separators,
means to transport the exhaust gas to the first stage, the
first stage separating CO2 from other gases in the exhaust gas,
a second stage of gas membrane CO2 separators,
means to transport permeate gas that passes through the
membranes of the first stage to the second stage,
a CO2 gas compressor, and
means to transport the permeate gas that passes through
the second stage to the compressor,
wherein: the membranes of the first stage have a
permeance greater than 800 GPU and less than 10,000 GPU and
a CO2/N2 selectivity of greater than 10 and less than 200 and
the membranes-of second stage have a permeance greater than
10 GPU and less than 1000 GPU and a CO2/N2 selectivity
greater than 30 and less than 1000.

2 We reproduce claim 1 from Appellant’s last entered Amendment, filed
October 12, 2016. Claim amendments that alter the scope of a claim are not
permitted in an Appeal Brief. 37 C.F.R. § 41.33.
Appeal 2018-008866
Application 13/999,746

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REJECTIONS ON APPEAL
I. claims 9–12 on the ground of nonstatutory double
patenting as being unpatentable over claims 9–12 of
Application 14/392,393;
II. claims 1–16 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement;
III. claims 1–16 under 35 U.S.C. § 112(b) as being
indefinite;
IV. claims 1–8 under 35 U.S.C. § 103 as being unpatentable
over Ho;3 and
V. claims 5 and 9–16 as being unpatentable under
35 U.S.C. § 103 over Ho in view of Utamura.4

DISCUSSION
Rejection I
Claims 9–12 are rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 9–12 of Application 14/392,393
(“the ’393 Application”).
The Office issued a Notice of Abandonment for the ’393 Application
on October 4, 2017. A Petition to Revive was filed October 26, 2017, but
was denied on March 6, 2018. The ’393 Application remains abandoned.
Accordingly, this rejection is moot.

3 Minh Ho et al., Reducing the Cost of CO2 Capture from Flue Gases Using
Membrane Technology, 47 Ind. Eng. Chem. Res. 1562–1568 (2008) (“Ho”).
4 Utamura et al., US 6,202,400 B1, published Mar. 20, 2001 (“Utamura”).
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Application 13/999,746

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Rejection II
Claims 1–16 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
The Examiner finds that the Specification does not support the
recitation of a CO2/N2 selectivity of greater than 10 and less than 200 for the
membranes of the first stage.
Appellant argues this is a new ground not presented prior to the Final
Office Action, the claims are like those in recently issued patents, and the
amended claims recite a selectivity of 10–100, which Appellant contends the
Specification supports. Appeal Br. 10–11.
These arguments are not persuasive of error. The § 112(a) rejection in
the Final Office Action appears to be in response to Appellant’s amendment
of October 12, 2016. See Final Act. 22 (stating Appellant’s amendment
necessitated the new grounds of rejection). An examiner may introduce a
new ground in a Final Office Action when it is necessitated by Appellant’s
amendment. Appellant does not explain, nor do we see, how claims in the
identified patents are relevant to the question whether Appellant’s
Specification supports the claim language in dispute. Lastly, Appellant’s
argument that the claims recite a selectivity range of 10–100 relates to the
above-mentioned non-entered claim amendments that were submitted with
the Appeal Brief. The claims before us recite a selectivity of greater than 10
and less than 200 for the membranes of the first stage. Appellant does not
present arguments with respect to the Examiner’s rejection as applied to
these claims. Accordingly, we sustain the Examiner’s rejection of claims 1–
16 under 35 U.S.C. § 112(a) for failure to comply with the written
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description requirement. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections . . . .”).

Rejection III
Claims 1–16 are rejected under 35 U.S.C. § 112(b) as being indefinite.
The Examiner states that the permeance and selectivity values recited
in the claims depend upon various parameters, such as the pressure
difference across a membrane, temperature, and permeability and thickness
of a membrane. Ans. 5. The Examiner concludes the claims are indefinite
for that reason. Id. at 5–6.
Appellant argues the claimed terms are conventional, citing Ho.
Appeal Br. 10–11. We agree that the Examiner reversibly erred in rejecting
claims 1–16 as indefinite. The definiteness of a claim depends on whether
one skilled in the art would have understood the bounds of the claim when
read in light of the specification. Howmedica Osteonics Corp. v. Tranquil
Prospects, Ltd., 401 F.3d 1367, 1371 (Fed. Cir. 2005). The Examiner’s
statement that permeance and selectivity values depend upon other
parameters is insufficient to establish that a skilled artisan would not
understand the permeance and selectivity values claimed. Even if a person
having ordinary skill in the art would have understood the values recited for
permeance and selectivity by to include additional parameters, such as the
pressure difference, the lack of these additional conditions in the claim
affects the breadth of the claim, rather than the definiteness. We do not
equate the breadth of a claim with indefiniteness. See, e.g., In re Miller, 441
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F.2d 689, 693 (CCPA 1971). We do not sustain the rejection of claims 1–16
as being indefinite.

Rejection IV
Claims 1–8 are rejected under 35 U.S.C. § 103 as being unpatentable
over Ho.
Appellant does not argue claims 1–8 separately. Id. at 7–8. We select
claim 1 as representative. Each of claims 2–8 stands or falls with claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds Ho teaches a system for separating carbon
dioxide from fossil fuel exhaust, which system includes a first and a second
stage of gas membranes. Ans. 6–7. The Examiner finds Ho discloses
CO2/N2 selectivity values for the membranes that fall within the claimed
ranges but does not disclose the claimed permeance values for the
membranes. Id. at 7. However, the Examiner finds Ho recognizes
permeance as a result-effective variable and Ho teaches that increasing the
permeance of a membrane will reduce a required membrane area and
decrease its capital cost. Id. The Examiner concludes it would have been
obvious to optimize the permeance values of Ho’s membranes and provide
membranes having the claimed permeance values. Id. at 7–8.
Appellant contends Ho uses the same membrane for its first and
second stages, whereas Appellant’s claims are meant to use different
membranes in the first and second stage. Appeal Br. 7–8; Reply Br. 2–4.
Appellant also argues that Ho discloses membranes that do not have the
claimed selectivity and permeance values. Id.
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Appellant’s arguments are not persuasive. Ho discloses carbon
dioxide capture from power plant flue gas (e.g., coal plant flue gas) via
membranes. Ho 1562. Ho’s system includes a first membrane and a second
membrane downstream from the first. Id. at 1564, Fig. 2. Ho discloses a
CO2/N2 selectivity value of 40 or more for membranes. Id. at 1566. Ho
discloses permeability values of 300 and greater than 800. Id. at 1567.
With regard to the use of different membranes, we are not persuaded
that claim 1 requires first and second stage membranes that have different
selectivity and permeance values. The recited ranges for these values
overlap. Moreover, even if the claims were to require different permeance
values for different membranes (e.g., claim 2), Ho teaches that, for a fixed
carbon dioxide flux across a membrane, “increasing the membranes CO2
permeability will decrease the required membrane area and thus reduce the
capital cost.” Id. at 1565.
“[D]iscovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art.” In re Boesch, 617
F.2d 272, 276 (CCPA 1980). Here, we agree with the Examiner that it
would have been obvious to modify the permeance of Ho’s membranes by
determining the workable or optimal permeance values to reduce the capital
cost of the membranes as a matter of routine experimentation and design
within the level of the ordinary skill. Appellant’s arguments are insufficient
to identify a reversible error in the Examiner’s rationale that it would have
been obvious to modify Ho’s system to achieve the claimed permeance
values. Nor does Appellant cite evidence of the claimed invention achieving
an unexpected result.
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For these reasons, and those set forth in the Examiner’s Answer, we
sustain the Examiner’s § 103 rejection of claims 1–8 over Ho.

Rejection V
Claims 5 and 9–16 are rejected as being unpatentable under 35 U.S.C.
§ 103 over Ho in view of Utamura.
Appellant does not argue claims 5 and 9–16 separately. Appeal Br. 7–
8. Claim 9 is directed to an electrical energy generation production system
that includes a separation system essentially as recited in claim 1. We select
claim 9 as representative for this rejection and, thus, claims 5 and 10–16
stand or fall with claim 9. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds Utamura discloses a method for the production of
electrical energy from natural gas. Ans. 10–11. The Examiner finds
Utamura does not disclose the claimed gas separation sub-system but finds
Ho does. Id. at 11–12. The Examiner concludes it would have been obvious
to modify Utamura to include Ho’s system to reduce the amount of
greenhouse gases introduced into the atmosphere and to modify the
permeance values of Ho’s membranes, as discussed above with regard to the
rejection of claim 1. Id. at 12–13.
Appellant asserts Utamura has nothing to do with the removal of
carbon dioxide from exhaust gas and there is no basis in Ho or Utamura for
their combination. Appeal Br. 9; Reply Br. 4.
Appellant’s arguments are not persuasive. Utamura discloses a gas
turbine power plant that includes a combustor for burning fuel and air.
Utamura 2:46–58. As discussed above with regard to the rejection of claim
1, Ho discloses a system having membranes for capturing carbon dioxide (a
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greenhouse gas) from the flue gas of power plants. Ho 1562. We agree with
the Examiner that Ho’s disclosure would have provided a reason to include
Ho’s membrane system in Utamura’s power plant—namely, to reduce the
atmospheric release of a greenhouse gas. Furthermore, the Examiner’s
combination of Utamura and Ho is an example of the well-established
principle that, for an improvement to be patentable, it must be more than the
predictable use of known elements (i.e., Utamura’s power plant and Ho’s
membrane system for a power plant) according to their established functions
(i.e., Ho’s system for capturing carbon dioxide from power plant flue gas).
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
For these reasons and those set forth in the Examiner’s Answer, we
sustain the Examiner’s § 103 rejection of claims 5 and 9–16 over Utamura
and Ho.

DECISION
The Examiner’s decision rejecting claims 1–16 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).

AFFIRMED