Ex Parte Allen

Patent Trial and Appeal Board

Sep 21, 2017

13929380 (P.T.A.B. Sep. 21, 2017)

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.
13/929,380 06/27/2013 Larry R. Allen 48282/2.2 7347
32642 7590 09/25/2017
STOEL RIVES LLP - SLC
201 SOUTH MAIN STREET, SUITE 1100
ONE UTAH CENTER
SALT LAKE CITY, UT 84111
EXAMINER
DOUNIS, LAERT
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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):
slcpatent@ stoel.com
patlaw@stoel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LARRY R. ALLEN
Appeal 2016-001667
Application 13/929,380
Technology Center 3700
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
SEAN P. O’HANLON, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’
decision rejecting claims 1—12 and 14—21. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE and enter NEW GROUNDS OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).
Appeal 2016-001667
Application 13/929,380
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A system for generating on-site power at a natural gas field,
the system comprising:
a natural gas well for extracting natural gas;
one or more separators connected to the natural gas well
and configured to separate liquids from the natural gas;
a natural gas pressure turbine configured to receive the
natural gas from the one or more separators and generate
mechanical power by expanding the natural gas, wherein the
natural gas pressure turbine outputs the natural gas after
expansion;
an air compressor connected to the natural gas pressure
turbine and configured to generate compressed air from the
mechanical power; and
a distribution system connected to the air compressor,
wherein the distribution system provides the compressed air
from the air compressor to the one or more separators, and
wherein the compressed air provides power to
switches comprised by the one or more separators.
REJECTIONS
I. Claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pauli (US 4,110,628, issued Aug. 29, 1978),
Kartsounes (US 4,158,145, issued June 12, 1979), and Roks
(US 7,387,659 B2, issued June 17, 2008).
II. Claims 2 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pauli, Kartsounes, Roks, and Batho
(US 2011/0247825 Al, published Oct. 13, 2011).
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Application 13/929,380
III. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Pauli, Kartsounes, Roks, and Rouse (US 6,539,720 B2, issued
Apr. 1,2003).
IV. Claims 5—7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pauli, Kartsounes, Roks, Rouse, and Vetrovec
(US 2006/0168958 Al, published Aug. 3, 2006).
V. Claims 8—10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pauli, Kartsounes, Roks, Rouse, and Shimasaki
(US 6,019,183, issued Feb. 1, 2000).
VI. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Pauli, Kartsounes, Roks, and Schur (US 3,715,885, issued
Feb. 13, 1973).
VII. Claims 12 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pauli, Kartsounes, Roks, Batho, and Byloff
(US 3,256,244, issued June 14, 1966).
VIII. Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Pauli, Kartsounes, Roks, Batho, and Rouse.
IX. Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Pauli, Kartsounes, Roks, Batho, Rouse, and Shimasaki.
X. Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Pauli, Kartsounes, Roks, Batho, and Letarte (US 4,920,749,
issued May 1, 1990).
XI. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Pauli, Kartsounes, Roks, Batho, and Foster-Pegg
(US 3,796,045, issued Mar. 12, 1974).
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Application 13/929,380
XII. Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Pauli and Dixon (US 4,112,687, issued Sept. 12, 1978).
XIII. Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Pauli, Dixon, Rouse, Diggs (US 4,035,658, issued July 12,
1977), and Shizhou (CN 202250562 U, issued May 30, 2012).
DISCUSSION
Appellant’s arguments contesting the rejections under 35 U.S.C.
§ 103(a) focus on the limitation in each of independent claims 1 and 14 that
compressed air generated from mechanical power generated by the turbine
powers a switch (or switches) comprised by the one or more separators, and
the limitation of independent claim 20 that the distribution is configured to
deliver the electrical power from the generator to switches comprised by the
separator. See Br. 10-11, 13—14; id. at 17, 19, 21 (Claims App.). One point
of contention between Appellant and the Examiner is how closely associated
a switch must be to the separator to be “comprised by” the separator as set
forth in the claims. Compare Ans. 7 (the Examiner stating that “[b]y virtue
of powering a valve that controls flow to the separator, the switch is
comprised by the separator,” regardless of whether the switch and separator
are “within a single integral unit or even adjacent to one another”), with
Br. 14 (arguing that switches controlling valves that regulate the output from
the wellhead, and thus, the flow to the separator, are not “switches
comprised by the separator” because the valves “are quite distinct from and
unrelated to any separator” and “it is the well head that is ‘provided with’
the valves”).
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Application 13/929,380
When claim terminology is construed in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). Accordingly, we look to Appellant’s Specification for guidance as to
how to construe the claim language switch (or switches) “comprised by” the
separator.
Appellant’s Specification discloses that “the turbine output is used to
generate compressed air, which is then used on-site to power, e.g., pumps
and switches.” Spec. 13; see also id. 37, 57. The Specification states
that “the system may include an on-site pressure turbine for using some of
the available energy of the pressurized natural gas to power a compressor
and/or electric generator.” Id. 137. Further, “[t]he system 100 comprises a
power distribution grid 155 used to distribute power generated by the
pressure turbine power generator 150 to the wellhead 110, the contact tower
120, and the production unit 130.” Id. 1 51; see also Fig. 1 (depicting power
distribution grid 155 connecting pressure turbine power generator 150 to
wellhead 110, contact tower 120, and production unit 130). The
Specification also states that “[i]n some embodiments, the pressure turbine
150 power generator drives two or more of: an electrical generator, a
hydraulic pump, and an air compressor.” Id. 1 57. In discussing Figure 8,
which “is a block diagram of a system 800 for generating power from
pressurized natural gas in a flare line,” the Specification states that “[t]he
system 800 comprises a power distribution grid 855 used to distribute power
generated by the pressure turbine power generator 850 to the well 810, the
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Application 13/929,380
separation tower 820, and/or the production unit 830.” Id. 1111. As with
the description of Figure 1, the Specification also discloses that “[t]he
pressure power generator 850 may generate mechanical and/or electrical
power” and, for example, “may drive an air compressor for producing
compressed air for use in the system 800 and/or an electric generator.” Id.
1117. Contact tower 120 removes water from the natural gas extracted at
the wellhead, and production unit 130 separates condensates (liquids) from
the natural gas. Id. 1 52. Thus, contact tower 120 and production unit 130
are separators. We understand separation tower 820 and production unit 830
of system 800 to be separators as well. See id. till (describing system 800
as being similar to system 100, comprising separation tower 820 and
production unit 830).
In summary, Appellant’s Specification discloses distributing to the
contact or separation tower and to the production unit (i.e., to the separators)
power generated by the turbine, either in the form of compressed air from an
air compressor powered by the turbine or in the form of electrical power
from an electrical generator powered by the turbine. The Specification also
discloses using turbine output to generate compressed air, which is then used
on-site to power, for example, pumps and switches. However, the
Specification does not mention the contact or separation tower or the
production unit (i.e., the separator) comprising switches, much less
comprising the switches powered by the compressed air, or otherwise
indicate or describe any association between the powered switches and the
separator(s).
Given the complete absence of any description in the Specification of
switches comprised by the separator(s), a person of ordinary skill in the art
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would not be able to ascertain what relationship is required between the
separator and the switch in order for the switch to be “comprised by” the
separator as set forth in claims 1, 14, and 20. There is ambiguity, for
example, as to whether a switch controlling a valve which regulates flow to
or through the separator is sufficient to satisfy this claim limitation, as
posited by the Examiner, or whether the switch must be integrally contained
within, and directly controlling, the separator. “As the statutory language of
‘particularity]’ and ‘distinctness]’ indicates, claims are required to be cast
in clear — as opposed to ambiguous, vague, indefinite — terms.” In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (citation omitted). “[A]
claim is indefinite when it contains words or phrases whose meaning is
unclear.” Id. at 1322 (citing MPEP § 2173.05(e)); see also In re McAward,
Appeal 2015-006416, 2017 WE 3669566, *5 (PTAB Aug. 25, 2017)
(precedential). Further, “if a claim is amenable to two or more plausible
claim constructions, the USPTO is justified in requiring the applicant to
more precisely define the metes and bounds of the claimed invention by
holding the claim unpatentable under 35U.S.C. § 112, second paragraph, as
indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPA1 2008)
(precedential). Accordingly, we reject claims 1, 14, and 20, as well as
dependent claims 2—12, 15—19, and 21, which incorporate the language in
question, under 35 U.S.C. § 112, second paragraph, as indefinite. This is a
new ground of rejection pursuant to 37 C.F.R. § 41.50(b).
Appellant amended claims 1, 14, and 20 to include the switch (or
switches) “comprised by” the separator(s) language in the Amendment
submitted July 2, 2014, subsequent to the June 27, 2013, filing date of the
present application. For the reasons discussed above, the disclosure of the
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Application 13/929,380
present application does not reasonably convey to those skilled in the art that
Appellant had possession of the subject matter — specifically the limitation
that the compressed air or electrical power from the turbine provides power
to switch(es) comprised by the separators) — of claims 1, 14, and 20, or the
claims depending therefrom, as of the filing date of the present application.
Consequently, the claims fail to satisfy the written description requirement
of 35 U.S.C. § 112, first paragraph. See Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc) (stating that “the test
for sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date”).
Accordingly, we also reject claims 1—12 and 14—21 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. This is a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
Having determined that claims 1—12 and 14—21 are indefinite, we
cannot sustain the rejections of these claims under 35 U.S.C. § 103(a),
because to do so would require speculation as to the scope of the
claims. See In re Steele, 305 F.2d 859, 862—63 (CCPA 1962) (holding that
the Board erred in affirming a rejection of indefinite claims under 35 U.S.C.
§ 103(a), because the rejection was based on speculative assumptions as to
the meaning of the claims). It should be understood, however, that our
decision in this regard is based solely on the indefiniteness of the claimed
subject matter, and does not reflect on the adequacy of the prior art evidence
applied in support of the rejections.
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Application 13/929,380
DECISION
The Examiner’s decision rejecting claims 1—12 and 14—21 under
35 U.S.C. § 103(a) is REVERSED.
Pursuant to 37 C.F.R. § 41.50(b), claims 1—12 and 14—21 are rejected
under 35 U.S.C. § 112, second paragraph, as indefinite, and under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement.
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
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Application 13/929,380
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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)(l)(iv).
REVERSED; 37 C.F.R, $ 41.50(b)
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