Ex Parte 7360367 et al

Board of Patent Appeals and Interferences

Jan 27, 2011

90009380 (B.P.A.I. Jan. 27, 2011)

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.
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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.
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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.)

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Patent 7,360,367 B2

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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).

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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
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“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
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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).

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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,
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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
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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
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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.

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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