Ex Parte Bakker et al

Patent Trial and Appeal Board

Jan 8, 2018

12118165 (P.T.A.B. Jan. 8, 2018)

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.
12/118,165 05/09/2008 Hillegonda Bakker TS8650 02 (US) 1480
23632 7590 01/10/2018
SHF! T OH miUPANY
EXAMINER
P 0 BOX 576 ALOSH, TAREQ M
HOUSTON, TX 77001-0576
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
01/10/2018 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):
USPatents@Shell.com
Shelldocketing@cpaglobal.com
shellusdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HILLEGONDA BARKER, JOANNES IGNATIUS GEIJSEL,
MARCO DICK JAGER, and MARK ANTONIUS KEVENAAR
Appeal 2016-0048071
Application 12/118,1652
Technology Center 3700
Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner’s decision to reject claims 1, 4, 5, and 7-24. We have jurisdiction
under § 6(b).
We AFFIRM.
1 Our Decision references Appellants’ Specification (“Spec.,” filed May 9,
2008) and Appeal Brief (“Br.,” filed Aug. 25, 2015), as well as the
Examiner’s Final Office Action (“Final Act.,” mailed Mar. 25, 2015) and
Answer (“Ans.,” mailed Feb. 1, 2016).
2 Appellants identify Shell Oil Company as the real party in interest. Br. 3.
Appeal 2016-004807
Application 12/118,165
SUBJECT MATTER ON APPEAL
The invention “relates to a method for liquefying a hydrocarbon
stream.” Spec. 1:4-5. Claims 1 and 21 are the independent claims on
appeal. Independent claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method of liquefying a hydrocarbon stream, the method
at least comprising the steps of:
(a) providing a feed stream;
(b) producing, from the feed stream, a first stream and a second
stream, wherein said producing of the first stream and the second
stream comprises passing the feed stream through a first cooling
stage to yield a pre-cooled stream, whereby the first stream and
second stream are produced from the pre-cooled stream;
(c) liquefying the first stream in a main liquefaction system to
provide a first liquefied stream;
(d) cooling the second stream of step (b) to provide a cooled
second stream;
(e) combining the first liquefied stream of step ( c) with the
cooled second stream of step (d) to produce a combined stream;
(f) separating the combined stream in a gas/liquid separator into
a liquefied hydrocarbon product stream and a gaseous stream;
(g) warming the gaseous stream of step (f) by heat exchanging
against the second stream of step (b) to provide at least part of
the cooling of step (d), wherein said warming comprises passing
the gaseous stream through a heat exchanger and wherein the
temperature of the gaseous stream immediately after having
passed through the heat exchanger is above -40° C.
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Application 12/118,165
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
French US 3,203,191 Aug. 31, 1965
Newton et al. (“Newton”) US 4,541,852 Sept. 17, 1985
Hawrysz et al. (“Hawrysz”) US 2007/0193303 Al Aug. 23, 2007
Buijs et al. (“FORI”) WO 2006/087330 A2 Aug. 24, 2006
REJECTIONS
The Examiner rejects the claims on appeal as follows:
I. Claims 17 and 20 under 35 U.S.C. § 112, second paragraph, as
indefinite;
II. Claims 1, 4, 5, 7-12, 16-18, 21, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Newton and FORI;3
III. Claims 13-15 under 35 U.S.C. § 103(a) as unpatentable over Newton,
FORI, and Hawrysz; and
IV. Claims 1, 4, 5, 7-10, 12, and 16-24 under 35 U.S.C. § 103(a) as
unpatentable over French.
3 The heading for this rejection lists claims 1, 4-12, and 16-22. Final Act. 3.
Claim 6 has been canceled (Appeal Br., Claims App.), and the Examiner has
withdrawn this rejection with respect to claims 19 and 20 (Ans. 2).
Accordingly, we understand this rejection includes claims 1, 4, 5, 7-12, 16-
18, 21, and 22.
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Application 12/118,165
ANALYSIS
Rejection I
Appellants do not argue the Examiner’s rejection of claims 17 and 20
under 35 U.S.C. § 112, second paragraph, as indefinite. We therefore
summarily sustain the rejection.
Rejection II
Independent claim 1 and dependent claims 4, 5, 7—72, and 16—18
In rejecting independent claim 1, the Examiner finds Newton
discloses the invention substantially as claimed. Final Act. 3. The Examiner
further finds that Newton discloses producing, from the feed stream, a first
stream and a second stream, but does not disclose “wherein said producing
of the first stream and the second stream comprises passing the feed stream
through a first cooling stage to yield a pre-cooled stream, whereby the first
stream and second stream are produced from the pre-cooled stream,” as
claimed. Id. For this, the Examiner relies on FORI and determines it would
have been obvious to combine the teachings of Newton and FORI to assist
the overall cooling/liquefying of the feed stream and thereby require less
refrigeration in the downstream process. Id. at 3—4.
The Examiner also finds that Newton does not disclose “wherein the
temperature of the gaseous stream immediately after having passed through
the heat exchanger is above -40° C,” as claimed. Id. at 4. In regard to this
limitation, the Examiner finds that the temperature of Newton’s gaseous
stream immediately after the heat exchanger is a known result effective
variable. Id. According to the Examiner, Newton discloses the general
conditions of the claim, and it is not inventive to discover an optimum
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Application 12/118,165
workable range for the result effective variable, i.e., temperature of the
gaseous stream after the heat exchanger, by routine experimentation. Id.
The Examiner further finds that, per Appellants’ Specification, the
temperature of the gaseous stream after the heat exchanger is not critical. Id.
In view of the these findings, the Examiner determines it would have been
obvious for a person of ordinary skill in the art to warm Newton’s gaseous
stream immediately after the heat exchanger to a temperature above 40°C.4
Id.
Turning to Appellants’ arguments regarding independent claim 1,
Appellants assert that the concept behind splitting the pre-cooled stream in
FORI is completely different from the present invention. Br. 5. This
assertion, however, is foreclosed by the Supreme Court’s decision KSR
International Co. v. Teleflex Inc., 550 U.S, 398, 420 (2007) (explaining
“familiar items may have obvious uses beyond their primary purposes, and
in many cases a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle”). Here, the Examiner finds
that a person of ordinary skill would have modified the teachings of Newton
to split the pre-cooled stream, as taught by FORI, “for the purpose of
assisting the overall cooling/liquefying of the feed stream, thus requiring less
refrigeration in the downstream processes.” Final Act. 4. The fact that the
Examiner’s reason for modifying the teachings of Newton to split the
4 The Examiner determines it would have been obvious to modify the
teachings of Newton so that the temperature of the gaseous stream
immediately after having passed through the heat exchanger is above 40°C,
which is above -40°C, as recited in independent claim 1. According to the
Examiner, if the narrower temperature range, i.e., above 40°C, is obvious, so
too is the broader temperature range, i.e., above -40°C, recited in
independent claim 1. Ans. 6.
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pre-cooled stream differs from the concept behind splitting the pre-cooled
stream in FORI does not apprise us of error.
Appellants also argue that even if a person of ordinary skill in the art
would find an incentive to modify the teachings of Newton to add a first
cooling stage to pre-cool the feed stream, “Newton provides clear steer to
split off the second stream upstream of the first cooling stage (or pre-cooling
stage).” Rr. 5 (citing Newton, Fig., 6:30-47). Although we agree with
Appellants that Newton discloses splitting the feed stream upstream of the
first cooling stage, Appellants do not explain how the disclosed arrangement
would discourage a person of ordinary skill in the art from considering other
arrangements of a feed stream and a first cooling stage, such as FORI’s
arrangement of splitting the feed stream downstream of the first cooling
stage. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away ... if it
merely expresses a general preference for an alternative invention but does
not ‘criticize, discredit, or otherwise discourage’ investigation into the
invention claimed.” (quoting In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004))). Accordingly, Appellants do not apprise us of error in the
Examiner’s proposed modification to Newton’s teachings to add a first
cooling stage to the feed stream and splitting the feed stream downstream of
the first cooling stage, as taught by FORI.
Appellants further contend the Examiner erred in finding that the
temperature of the gaseous stream immediately after the heat exchanger is
not critical. Br. 7. Appellants’ argument is not persuasive because, as the
Examiner finds, Appellants’ Specification expressly states that the
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temperature of stream 100, i.e., the stream immediately after the heat
exchanger, is not critical. Spec. 14:31-32, Fig. 1; Ans. 9.5
Appellants additionally argue that the prior art does not recognize the
temperature of Newton’s stream 66, i.e., the gaseous stream immediately
after having passed through the heat exchanger, as a result effective variable.
Br. 6. As such, Appellants assert the Examiner has not provided articulated
reasoning with some rational underpinning to support the legal conclusion of
obvious. Id. at 6-7. Appellants’ argument does not apprise us of error.
As set forth above, the Examiner finds, and we agree, Appellants’
Specification explains that the temperature of the gaseous stream
immediately after the heat exchanger is not critical. Spec. 14:31-32, Fig. 1;
Ans. 9. The Examiner further determines that the temperature of the
gaseous stream immediately after the heat exchanger is a result effective
variable. In doing so, the Examiner finds, and Appellants do not refute, that
Newton discloses the temperature of stream 66 affects the load on
compressors 112, 116, and 126, resulting in reduced power requirements,
smaller compressors, and power savings, i.e., a more efficient system.
Ans. 7. Indeed, Newton discloses that increasing the temperature of stream
28, which is created from stream 66, reduces the compression power load on
the closed mixed component refrigerant cycle, namely the driver load on
compressors 112, 116, 126, thereby reducing the overall power requirements
of the liquefied natural gas (LNG) plant. Newton 5:8-15, 6:5-13, Fig.
Given Newton discloses that the temperature of stream 66 can be adjusted to
affect the efficiency of the LNG plant, the temperature of stream 66 is a
5 The Examiner cites to paragraph 70 of the application publication
(US 2009/0095018 Al, pub. Apr. 16, 2009).
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Application 12/118,165
known result effective variable. Consequently, Appellants do not apprise us
of error in the Examiner’s determination that it would have been obvious to
modify Newton’s gaseous stream immediately after the heat exchanger to
the claimed temperature.
In view of the foregoing, Appellants do not apprise us of error in the
Examiner’s rejection of independent claim 1. Appellants do not present any
separate argument for claims 4, 5, 7-12, and 16-18, which depend from
independent claim 1. Accordingly, we sustain the rejection of claims 1, 4, 5,
7-12, and 16-18 under 35 U.S.C. § 103(a) as unpatentable over Newton and
FORI.
Independent claim 21 and dependent claim 22
Appellants rely on the same arguments as independent claim 1 for
independent claim 21. Br. 5-7. We find these arguments unpersuasive of
error with respect to independent claim 21 for the same reasons discussed
above in regard to independent claim 1.
Appellants further argue that the Examiner erred in rejecting
independent claim 21 because Newton’s stream 12, which has a temperature
of about 15.5°C, could not heat stream 66 to a temperature of 30°C, as
recited in independent claim 21. Br. 7. Appellants’ argument does not
apprise us of error because the Examiner’s rejection does not rely on the
temperature of Newton’s stream 12 being about 15.5°C. As the Examiner
finds, and we agree, a person of ordinary skill in the art would have had an
understanding of thermodynamics and would have appreciated that the
temperature of stream 12 would need to be adjusted to heat stream 66 to a
certain temperature. Ans. 8; see also In re Jacoby, 309 F.2d 513,516
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Application 12/118,165
(CCPA 1962) (explaining that persons skilled in the art “must be presumed
to know something” about the art “apart from what the references disclose”).
In view of the foregoing, Appellants do not apprise us of error in the
Examiner’s rejection of independent claim 21. Appellants do not present
any separate argument for claim 22, which depends from independent
claim 21. Accordingly, we sustain the rejection of claims 21 and 22 under
35 U.S.C. § 103(a) as unpatentable over Newton and FORI.
Rejection III
Claims 13-15 depend from independent claim 1, and Appellants rely
on the same arguments as independent claim 1 for these claims. Br. 8. For
the reasons discussed above in regard to independent claim 1, we find these
arguments unpersuasive of error. We therefore sustain the rejection of
claims 13-15 under 35 U.S.C. § 103(a) as unpatentable over Newton, FORI,
and Hawrysz.
Rejection IV
Appellants echo the arguments regarding the temperature of the
gaseous stream immediately after the heat exchanger being a result effective
variable. Br. 8. We do not find these arguments persuasive with respect to
this rejection for the same reasons discussed above in regard to Rejection II.
We therefore sustain the rejection of claims 1, 4, 5, 7-10, 12, and 16-24
under 35 U.S.C. § 103(a) as unpatentable over French.
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DECISION
The Examiner’s decision to reject claims 17 and 20 under 35 U.S.C.
§112, second paragraph, is affirmed.
The Examiner’s decision to reject claims 1, 4, 5, 7-12, 16-18, 21, and
22 under 35 U.S.C. § 103(a) as unpatentable over Newton and FORI is
affirmed.
The Examiner’s decision to reject claims 13-15 under 35 U.S.C.
§ 103(a) as unpatentable over Newton, FORI, and Hawrysz is affirmed.
The Examiner’s decision to reject claims 1, 4, 5, 7-10, 12, and 16-24
under 35 U.S.C. § 103(a) as unpatentable over French 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). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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