Ex Parte 9109418 et al

Patent Trials and Appeals Board

Jun 26, 2019

90013913 - (R) (P.T.A.B. Jun. 26, 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.
90/013,913 05/03/2017 9109418 100790.000023 8416
40582 7590 06/27/2019
American Air Liquide
Intellectual Property Department
9811 Katy Freeway
Suite 100
Houston, TX 77024
EXAMINER
TILL, TERRENCE R
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
06/27/2019 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 AIR LIQUIDE LARGE INDUSTRIES U.S. LP,
Patent Owner and Appellant
____________

Appeal No. 2018-007273
Reexamination Control 90/013,913
Patent 9,109,418 B1
Technology Center 3900

Before: JEFFREY B. ROBERTSON, RAE LYNN P. GUEST, and
WESLEY B. DERRICK, Administrative Patent Judges.

DERRICK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
INTRODUCTION
Appellant requests rehearing under 37 C.F.R. § 41.52 of our Decision
of September 28, 2018 (“Decision”), wherein we affirmed the final rejection
of claims 1–7 and 9–17 under 35 U.S.C. § 103. See Request for Rehearing
filed November 28, 2018 (“Request”).
DISCUSSION
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked. See 37 C.F.R.
§ 41.52(a)(1).
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Appellant seeks a rehearing, contending that the Board
misapprehended the thrust of the Examiner’s rejection and relied on a
different rationale than the Examiner, and that, at a minimum, the Decision
should be designated as a new ground of rejection because Appellant was
never afforded a fair opportunity to react to the rejection grounded on the
Board’s new rationale. See generally Request. Appellant contends, in
effect, that the Board is obligated to designate the Decision as a new ground
in order to allow Appellant an opportunity to respond to the rejection. Id. at
3–4 (citing Rambus Inc. v. Rea, 731 F.3d 1248, 1255–56 (Fed. Cir. 2013)).
As explained by our reviewing court in Rambus, which vacated the Board’s
decision as to certain claims, “[t]he Board erred when it supplied its own
reasons to combine [the prior art]” where the pertinent “findings were
completely new.” Rambus, 731 F.3d at 1256. The court distinguished the
Board’s error of “essentially provid[ing] a new motivation to combine the
references” from merely “elaborat[ing] on the examiner’s findings with
‘more detail.’” Id. (citing In re Adler, 723 F.3d 1322, 1328 (Fed. Cir.
2013)).
Our reviewing court further explains that “[w]hen considering
whether the Board issued a new ground of rejection, the ‘ultimate criterion
of whether a rejection is considered ‘new’ in a decision by the Board is
whether applicants have had a fair opportunity to react to the thrust of the
rejection.’” In re Biedermann, 733 F.3d 329, 337 (Fed. Cir. 2013) (citing In
re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011)). The court explains
further that “[m]ere reliance on the same statutory basis and the same prior
art references, alone, is insufficient to avoid making a new ground of
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rejection when the Board relies on new facts and rationales not previously
raised to the applicant by the examiner.” Id. (quoting Leithem, 661 F.3d at
1319 (citations and internal quotations omitted)). Thus, the dispositive issue
on rehearing is whether the rationale relied on in the Decision was, in fact,
raised to Appellant by the Examiner during the Reexamination.
Appellant argues “that the current rejection provided by the Appeal
Board significantly altered the rejection outlined by the Examiner, since the
rationales to combine the two references differ tremendously in scope.” Id.
at 4. Appellant contends “that the Examiner’s rationale to combine the
teachings of Schwarz (i.e., remove suspended salt particles from hydrogen
gas) was to ‘prevent corrosion in the pipelines of the system.’” Id. (citing
Non-Final Office Action dated July 14, 2017 (“Non-Final Action”), 5; Final
Office Action dated October 20, 2017, 4 (“Final Action”)); see also id. at 7
(“the Examiner’s rejection was clearly based on a rationale of preventing
pipeline corrosion”). Appellant contends that the “Board’s rationale to
combine the teachings . . . [is] that Oates teaches removal of contaminants
and because Schwarz discloses that salt particles can be present in the gas, it
would be obvious to remove the salt particles because they are
‘contaminants.’” Id. at 4.
Appellant contends that it “did not ‘squarely address’ the idea of
Oates teaching removal of one or more contaminants and Schwarz
identifying that salt particles could be a contaminant . . . . [because] the
Examiner did not make this general assertion.” Id. at 4–5. Appellant relies
on “the Examiner emphatically stat[ing] that the salt particles would be
removed in order to prevent corrosion” and on the Examiner’s reasoning
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based “on the salt particles corroding metal.” Id. at 5–6 (citing Ans. 15–16,
19 (¶¶ 41–42, 49–50)).
Appellant similarly contends that the Board erred in finding that
Appellant failed “to address certain ‘findings’ made by the Examiner . . .
[because] the Examiner NEVER made the general argument.” Id. at 6–7
(citing Decision, 11). The cited portion of the Decision reproduced in the
Request highlights Appellant’s failure to address paragraphs 29–32 of the
Examiner’s Answer. Id. at 6. Appellant again argues that “in each instance
of the Examiner discussing removal of the salt particles, it was done in order
to prevent some type of corrosion” and that “[i]t was not done to improve
the purity of the gas composition ‘as required by the user.’” Id. at 7 (citing
Final Action ¶¶ 41–42).
As explained in our Decision, the Examiner’s rationale for rejecting
the claims as set forth in the Answer included the more general basis for
removing contaminants introduced by storage of gas in salt caverns relied on
in our Decision. See generally Decision. Appellant’s arguments outlined
above do not convince us to the contrary. The arguments grounded on the
Examiner’s reasoning set forth in the Non-Final Action and the Final Action
are wholly inapposite of the pertinent further findings and reasoning
included in the Answer supplementing the original rationale.1 As to
Appellant’s reliance on paragraphs 41, 42, 49, and 50 of the Answer, the

1 If, and to the extent that, the Examiner’s Answer included a new ground of
rejection, relief for the Examiner’s failure to designate it as a new ground is
by way of petition, and failure to timely file such a petition constitutes
waiver of any arguments that the rejection must be designated as a new
ground. 37 C.F.R. § 41.40(a).
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question is whether these support the contention that the Examiner’s
rationale was limited to preventing pipeline corrosion, and did not extend to
a more general rationale of removing contaminants introduced by storage of
gas in salt caverns. We find that they do not support Appellant’s argument.
While paragraph 41 references that one skilled in the art would recognize
that one of the contaminants that would need to be removed is suspended
salt particles because salt will cause corrosion, it is preceded by paragraph
40, reproduced in full below:
Both [Oates] and Schwarz teach that when gases are
stored in salt caverns, these gases can contain contaminants
from the salt caverns in which they were stored. To the
examiner, this is the same field of invention: extracting gases
from salt caverns and removing unwanted contaminants from
those gases.
Answer 15 (emphasis added). The Examiner, thus, explicitly identified the
field of invention in more general terms of removing unwanted contaminants
from gases stored in salt caverns, and explicitly found that both Oates and
Schwarz were in the same field of invention. Id. Moreover, to the extent
paragraphs 41 and 42 refer to the need to remove salt particles due to
corrosion, paragraph 43 sets forth the Examiner’s opinion that Appellant is
“not appreciating the broader teaching of the need to remove contaminants
(suspended salt particles and other contaminants) from the gas.” Id. at 15–
16. Appellant provides no cogent argument that the broader teaching is
limited to preventing corrosion. See generally Request.
The import of the broader teachings of Oates and Schwarz, as applied
in the Answer, was made sufficiently clear by the Examiner. Specifically,
the Examiner explained that both Oates and Schwarz taught “extracting
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gases from salt caverns and removing unwanted contaminants from those
gases.” Answer 15. As to salt particles being one of those unwanted
contaminants, as discussed in the Decision, the Examiner similarly made it
clear that, while not identified as such by Oates, salt particles were
specifically identified by Schwarz as being a contaminant introduced by
storage in salt caverns. See, e.g., Decision 5–6, 9–12 (citing Answer 3–4,
11–12, 15–16).
Appellant’s contention “that the Examiner NEVER made the general
argument” that Oates teaches removal of one or more contaminants
introduced by storage of hydrogen gas in salt caverns, as required by the
user, and Schwarz teaches that one of the contaminants introduced is salt
particles, is not well-founded. Request 6–7 (quoting Decision 11). While
Appellant argues that “in each instance of the Examiner discussing removal
of the salt particles, it was done in order to prevent some type of corrosion
. . . [and] not . . . to improve the purity of the gas composition ‘as required
by the user,’” Appellant does not address the explicit statements in
paragraphs 40 and 43 of the Answer discussed above that indicate a broader
application of the teachings than to prevent corrosion. See generally
Request. Further, the quoted portion of the Decision omits the citation to,
inter alia, pages 11–12 of the Answer, citing Oates, 1:60–65, 2:67–3:4,
4:38–49, 7:25–30, and provides no argument how the cited portions of Oates
do not support the Examiner’s position that Oates teaches removal of one or
more contaminants introduced by storage of hydrogen gas in salt caverns, as
required by the user. Request 6–7. In this regard, the Examiner determined,
citing Oates, 4:38–49, that “[Oates] appreciates the need to remove
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contaminants, based on customer specifications; even if [Oates] does not
specifically identify the contaminant as being suspended salt particles.”
Answer 12.
As set forth in the Decision, the procedural burden of establishing a
prima facie case is met unless “a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.” Id. at 7 (quoting In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011) (internal citations and quotations omitted)). On the record before us,
we found that Applicant was sufficiently apprised of the rejection grounded
on the broader teachings of Oates and Schwarz. Id. For the reasons set forth
above, and in the Decision itself, we are also unpersuaded that the grounds
on which the rejection were affirmed could not have been recognized.
In sum, we are not persuaded that Appellant “did not have a fair
opportunity to react to the thrust of the rejection” where we did not “rel[y]
on new facts and rationales not previously raised to the applicant by the
examiner.” See Biedermann, 733 F.3d at 337 (citing Leithem, 661 F.3d at
1319); see also Rambus, 731 F.3d at 1256 (holding that “[t]he Board erred
when it supplied its own reasons to combine [the prior art]” where the
pertinent “findings were completely new”).
Accordingly, we decline to modify our Decision, including by
designating it as a new ground as requested by Appellant.
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CONCLUSION
We have granted Appellant’s request for rehearing to the extent we
have reconsidered our Decision, but we deny Appellant’s request to
designate it a new ground or to make any changes therein.
DENIED

Appeal No. 2018-007273
Reexamination Control 90/013,913
Patent 9,109,418 B1

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FOR PATENT OWNER:

AMERICAN AIR LIQUIDE, INC.
9811 KATY FWY., SUITE 100
HOUSTON, TX 77024

FOR THIRD-PARTY REQUESTER:

BAKER & HOSTETLER LLP
CIRA CENTRE
2929 ARCH STREET, 12TH FLOOR
PHILADELPHIA, PA 19104-2891