Ex Parte 7360367 et alDownload PDFBoard of Patent Appeals and InterferencesJan 27, 201190009380 (B.P.A.I. Jan. 27, 2011) Copy Citation 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. 90/009,380 01/07/2009 7360367 1530-00100 4269 7590 01/28/2011 GILBRETH & ASOCIATES, P.C. P.O. BOX 2428 DELLAIRE, TX 77402-2428 EXAMINER FETSUGA, ROBERT M ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 01/28/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte Mustang Engineering, L.P., Patent Owner and Appellant ____________ Appeal 2011-000465 Reexamination Control 90/009,380 Patent 7,360,367 B2 Technology Center 3900 ____________ Before MICHAEL P. TIERNEY, RICHARD M. LEBOVITZ, and JEFFREY B. ROBERTSON, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” shown on the PTOL-90A cover letter attached to this decision. Appeal 2011-000465 Reexamination Control 90/009,380 Patent 7,360,367 B2 2 Mustang Engineering, L.P. (hereinafter “Appellant”), the owner of the patent under reexamination2 (U.S. Pat. No. 7,360,367 B2, hereinafter the “‘367 Patent”), appeals under 35 U.S.C. §§ 134(b) and 306 from a final rejection of claims 1-15 (Appeal Brief filed May 3, 2010,3 hereinafter “App. Br.,” 9; Final Office Action mailed November 3, 2009). We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We AFFIRM. STATEMENT OF THE CASE This reexamination proceeding arose from a third-party request for ex parte reexamination of the ‘367 Patent filed by Todd T. Turney (Request for Ex Parte Reexamination filed January 7, 2009). The ‘367 Patent issued to Bradford S. Hubbard et al. on April 22, 2008 from Application 10/894,355, filed on July 18, 2004 which is related to United States Patent 7,318,319 B2, which issued from Application 10/971,767 filed on October 21, 2004, which is the subject of Reexamination Control 90/009,379 (Appeal No. 2011- 000464). 2 See Patent Assignment Abstract of Title, Reel 019256, Frame 0879, which was entered into the record of this proceeding as “Title Report” on January 12, 2009. However, the first page of the ‘367 Patent indicates that Wood Group Advanced Parts Manufacture is the assignee. Indeed, we are informed by Appellant that there is an unrecorded assignment to Wood Group Advanced Parts Manufacture AG. (App. Br. 2.) 3 As noted by the Examiner, the Appeal Brief contains no page numbers. Accordingly, in order to aid our discussion, we have numbered the pages of the Appeal Brief beginning with the page entitled “Appellant’s Brief under 37 CFR 41.37” numbered as page 1. Appeal 2011-000465 Reexamination Control 90/009,380 Patent 7,360,367 B2 3 The ‘367 Patent is directed to methods and apparatus for processing, transporting, and/or storing cryogenic fluids such as natural gas. (Col. 3, ll. 35-38, col. 4, ll. 330-43.) Claims, 1, 4, 6, and 11 are representative and read as follows (with underlining indicating additional subject matter relative to the original claims of the ‘319 Patent):4 1. An apparatus for transporting a gas, the apparatus comprising: a floating liquefaction unit comprising a first docking system; a floating regasification unit comprising a second docking system; and, a shuttle vessel comprising at least one liquefied gas storage tank, a third docking system, wherein the shuttle vessel may be docked with the liquefaction unit, docked with the gasification unit, or traveling between the liquefaction unit and the regasification unit, and wherein the third docking system is connectable with the first docking system to allow transfer of a liquefied gas from the liquefaction unit into the vessel gas storage tank when the vessel is docked with the liquefaction unit, and connectable with the second docking system to allow transfer of a liquefied gas from the vessel storage tank to the gasification unit when the vessel is docked with the gasification unit. 4. A method of transporting a gas, comprising; (A) receiving the gas into a floating liquefaction unit, (B) liquefying the gas to form a liquefied gas; (C) transferring the liquefied gas from the liquefaction unit into a marine vessel; (D) transferring the liquefied gas from the marine vessel into a floating regasification unit; and (E) regasifying the liquefied gas into a regasified gas. 4 The claims listed in the Claim Appendix of Appellant’s Appeal Brief appear to be the claims of the CIP application, Reexamination Control 90/009,379 (Appeal No. 2011-000464), and not the claims presently on appeal in the current reexamination proceeding. Thus, the claims listed herein have been reproduced from the Supplemental Response dated August 5, 2009. Appeal 2011-000465 Reexamination Control 90/009,380 Patent 7,360,367 B2 4 6. An apparatus for transporting a gas, the apparatus comprising: a floating liquefaction unit comprising a first docking system; a floating regasification unit comprising a second docking system and a first liquefied as storage tank; and a shuttle vessel comprising at least a second liquefied gas storage tank, and a third docking system, wherein the shuttle vessel may be docked with the liquefaction unit, docked with the gasification unit, or traveling between the liquefaction unit and the regasification unit, and wherein the third docking system is connectable with the first docking system to allow transfer of a liquefied gas from the liquefaction unit into the vessel gas storage tank when the vessel is docked with the liquefaction unit, and connectable with the second docking system to allow transfer of a liquefied gas from the vessel storage tank to the gasification unit when the vessel is docked with the gasification unit. 11. An apparatus for transporting a gas, the apparatus comprising: a floating liquefaction unit comprising a first docking system; a floating regasification unit comprising a second docking system and a regasified natural gas storage tank; and, a shuttle vessel comprising at least one liquefied gas storage tank, a third docking system, wherein the shuttle vessel may be docked with the liquefaction unit, docked with the gasification unit, or traveling between the liquefaction unit and the regasification unit, and wherein the third docking system is connectable with the first docking system to allow transfer of a liquefied gas from the liquefaction unit into the vessel gas storage tank when the vessel is docked with the liquefaction unit, and connectable with the second docking system to allow transfer of a liquefied gas from the vessel storage tank to the gasification unit when the vessel is docked with the gasification unit. (Supplemental Response dated August 5, 2009.) Appeal 2011-000465 Reexamination Control 90/009,380 Patent 7,360,367 B2 5 The Examiner rejected claims 1-15 as follows: I. Claims 4 and 5 under 35 U.S.C. § 102(b) as anticipated by Bottomley (Dr. Leslie Bottomley, FLNG key to global energy supply, Offshore, Oct. 1, 2002, 3 pgs, available at http://www.offshore- mag.com/articles/article_display.cfm?ARTICLE_ID=159805& p=9.) (Ans. 4); II. Claims 1-5 under 35 U.S.C. § 103(a) as obvious over Bottomley in view of Perkins (US 2002/0073619 A1, published Jun. 20, 2002 ) (Ans. 4-5); III. Claims 6-10 under 35 U.S.C. § 103(a) as obvious over the combined teachings of Bottomley in view of Perkins, and further in view of Han (Hans Y.S. Han, et al., Design Development of FSRU from LNG Carrier and FPSO Construction Experiences, Offshore Technology Conference, Houston Texas, May 6-9, 2002, 8 pgs.) (Ans. 5-6); and IV. Claims 11-15 under 35 U.S.C. § 103(a) as obvious over the combined teachings of Bottomley in view of Perkins, and further in view of Heylandt (US 1, 826,248, issued Oct 6, 1931) (Ans. 6). Appeal 2011-000465 Reexamination Control 90/009,380 Patent 7,360,367 B2 6 ISSUES The principal issues in this appeal are: 1. Does Bottomley disclose the method of claim 4, which includes the steps of receiving, liquefying, transferring and regasifying a liquified gas? 2. Did the Examiner err in determining that Bottomley in view of Perkins suggested the method and apparatus recited in claims 1-5? 3. Do Bottomley and Perkins teach away from storing liquid natural gas (as recited in claims 6-10) and/or storing regasified natural gas (as recited in claims 11-15) on a floating regasification unit? FINDINGS OF FACT (“FF”) 1. The ‘367 Patent discloses a floating liquefaction unit that is connected to a shuttle vessel through a “connection” which comprises a first docking system and that a third docking system is connectable with the first docking system and a second docking system, where the second and third docking systems are present on different units. (Col. 3, ll. 44-57; col. 5, ll. 25-32.) 2. The ‘367 Patent discloses: “Natural gas liquefaction units are well known in the art”; “Shuttle vessels for transporting LNG [liquefied natural gas] are well known in the art”; and “LNG regasification units are well known in the art.” (Col 4, l. 63 - col. 5, l. 22.) 3. Bottomley discloses floating liquid natural gas (FLNG) production vessels, which are liquefaction vessels and Appeal 2011-000465 Reexamination Control 90/009,380 Patent 7,360,367 B2 7 “combin[e] the requirements of a full-scale LNG manufacturing plant with cryogenic storage needs of an LNG tanker.” (Pages 1 and 2.) 4. Bottomley discloses: “Tankers could deliver LNG directly into the FRT [floating regasification terminal], which could send the gas into the pipeline. This would eliminate the need for cryogenic storage.” (P. 2.) 5. Perkins discloses an LNG ship that is attached to a gasification device on a barge through a “connection.” (Para. [0014]; Fig. 1.) 6. Perkins does not show “various compressors, pumps and other equipment necessary to move the natural gas from the LNG ship to the pipeline, as the inclusion and proper use of such devices is within the knowledge of one of ordinary skill in the art.” (Para. [0017].) 7. Han discloses floating regasification units (FRSU) containing LNG storage tanks. (Para. bridging pages 3 and 4.) 8. Heylandt discloses storage bottles for gas in liquefied form at a delivery location. (p. 2, ll. 5-16.) PRINCIPLES OF LAW “[W]hen 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.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (citing In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986); In re Ludtke, 441 Appeal 2011-000465 Reexamination Control 90/009,380 Patent 7,360,367 B2 8 F.2d 660, 664 (CCPA 1971). “‘[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. . . . Whether the rejection is based on ‘inherency’ under 35 U.S.C. s [sic] 102, on ‘prima facie obviousness’ under 35 U.S.C. s [sic] 103, jointly or alternatively, the burden of proof is the same . . . (footnote omitted).’” In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255 (CCPA 1977)). In KSR, the Supreme Court explained, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. The prior art must be considered as a whole, including non-preferred embodiments disclosed therein. See Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). In addition, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appeal 2011-000465 Reexamination Control 90/009,380 Patent 7,360,367 B2 9 ANALYSIS Issue 1-35 U.S.C. § 102 The Examiner has set forth specific findings establishing how Bottomley teaches the method of claim 4. (Ans. 4, 7.) Appellant contends that Bottomley fails to teach all the limitations of claim 4, but does not identify any particular limitation that is absent from Bottomley. (App. Br. 10-11.) We find the Examiner’s rejection to be supported by a preponderance of the evidence and therefore affirm the rejection of claim 4. Appellant contends that dependent claim 5 is not anticipated for the reasons provided with respect to claim 4. (App. Br. 11.) We affirm the Examiner’s rejection of claim 5 for the same reason we affirm the rejection of claim 4. 35 U.S.C. § 103 Rejections Issue 2 Although Appellant has grouped certain claims subject to Rejection II separately, Appellant relies on similar arguments for each group of claims. Accordingly, we confine our discussion to appealed claims 1 and 4, which contain claim limitations representative of the arguments made by Appellant, pursuant to 37 C.F.R. § 41.37(c)(1)(vii). Regarding claim 1, Appellant contends that Bottomley in view of Perkins fails to disclose the recited third docking system, because it is not clear from Perkins that the connection is connectable with the liquefaction unit or the first docking system. (App. Br. 12-13.) Regarding claim 4, Appeal 2011-000465 Reexamination Control 90/009,380 Patent 7,360,367 B2 10 Appellant contends that Perkins is silent regarding liquefaction as required by the claim. (App. Br. 13.) Regarding claim 1, we agree with the Examiner that connectable docking systems would have been required in order to accomplish the docking of the various floating units described in Bottomley and Perkins (Ans. 7-8), and would therefore be an inherent component of the cited prior art systems in order to perform the methods of transfer. Appellant has not provided persuasive evidence that the structure of the connections used in accordance with the present apparatus and methods are any different than those disclosed in Perkins. (See FF 1, 2, 5, & 6.) Fitzgerald, 619 F.2d at 70. Moreover, the Examiner’s determination that one of ordinary skill in the art would have been able to use known systems for accomplishing the docking of various floating units is supported by the evidence of record. (Ans. 8.) Indeed, as the Examiner points out, the ‘319 Patent discloses that natural gas liquefaction units, shuttle vessels for transporting liquid natural gas, and liquid natural gas regasification units were all well known in the art. (Ans. 8, FF 2.) In contrast, Appellant has failed to provide persuasive evidence that the connection of Perkins would present a compatibility issue with the docking systems disclosed in Perkins or the docking systems in Bottomley, or that even were there different connections in the cited prior art, such differences would be beyond the capabilities of one of ordinary skill in the art to have combined the cited publications to have made the claimed invention. KSR, 550 U.S. at 417, 421. Regarding claim 4, we are not persuaded by Appellant’s argument that Perkins is silent regarding liquefaction. The Examiner does not rely on Appeal 2011-000465 Reexamination Control 90/009,380 Patent 7,360,367 B2 11 Perkins for this feature. (Ans. 4-5.) Accordingly we affirm the Examiner’s rejection of claims 1-5. Issue 3 For Rejections 3 and 4, Appellant has grouped certain claims subject to each of the two grounds of rejection separately. However, Appellant relies on the same arguments for the groups of claims. Accordingly, we confine our discussion to appealed claims 6 and 11, which contain claim limitations representative of the arguments made by Appellant, pursuant to 37 C.F.R. § 41.37(c)(1)(vii). In addition, because Appellant relies on similar arguments for both Rejections 3 and 4, our comments apply equally to each rejection. For claims 6 and 11, Appellant contends that Bottomley teaches away from incorporating storage tanks for either liquid natural gas or regasified natural gas because Bottomley discloses that tankers could be used to deliver liquid natural gas to the regasification unit, which would eliminate the need for cryogenic storage. (App. Br. 14 and 17.) Appellant also argues that Perkins teaches away from the claimed invention because Perkins discloses direct connection of the containers of liquid natural gas on the liquid natural gas ship to the inputs of the gasification unit on the barge and that the output of the gasification unit is provided connected to a natural gas pipeline. (App. Br. 14-15, 16-17.) We are not persuaded by Appellant’s arguments. Though Bottomley discloses that cryogenic storage may be eliminated, Bottomley does not provide any particular criticism of cryogenic storage or suggest that they Appeal 2011-000465 Reexamination Control 90/009,380 Patent 7,360,367 B2 12 would not work. (FF 4.) Fulton, 391 F.3d at 1201. Thus, we are in agreement with the Examiner’s position that in view of Bottomley, one of ordinary skill in the art would have recognized that storage tanks are a well accepted means of gas storage that has tradeoffs including the required storage volumes, and would have been able to choose the particular method that best suits a particular application. (Ans. 9-10.) We also do not agree that Perkins teaches away from the use of storage tanks on the regasification unit. Perkins is merely silent as to the use of storage tanks. Moreover, Han and Heylandt provide evidence that such storage tanks are well known in the art. (FF 7, 8.) Accordingly, we affirm both the Examiner’s rejections of claims 6-10 and 11-15. CONCLUSION On this record, Appellant has failed to demonstrate any error in the Examiner’s factual findings and conclusions that: Bottomley discloses the method of Appellant claim 4, which includes the steps of receiving, liquefying, transferring and regasifying a liquified gas; Bottomley in view of Perkins disclose the method and apparatus recited in claims 1-5; and Bottomley and Perkins do not teach away from storing liquid natural gas (as recited in claims 6-10) and/or storing regasified natural gas (as recited in claims 11-15) on a floating regasification unit. Appeal 2011-000465 Reexamination Control 90/009,380 Patent 7,360,367 B2 13 DECISION The Examiner’s decisions to reject claims 4 and 5 under 35 U.S.C. § 102(b) and claims 1-15 under 35 U.S.C. § 103(a) are affirmed. Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED cu FOR PATENT OWNER: GILBRETH & ASSOCIATES, P.C. P.O. BOX 2428 BELLAIRE, TX 77402-2428 FOR THIRD-PARTY REQUESTER: TODD T. TUMEY P.O. BOX 22188 HOUSTON, TX 77227-2188 Copy with citationCopy as parenthetical citation