Ex Parte Currence et al

Patent Trial and Appeal Board

Nov 29, 2017

13174002 (P.T.A.B. Nov. 29, 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.
13/174,002 06/30/2011 Kevin L. Currence 42088 1135
23589 7590
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
EXAMINER
PETTITT, JOHN F
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
12/01/2017 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):
patents @ hovey williams, com
amalik @hovey williams .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN L. CURRENCE and ROBERT A. MORTKO
Appeal 2017-010615
Application 13/174,002
Technology Center 3700
Before STEFAN STAICOVICI, JAMES P. CALVE, and
WILLIAM A. CAPP, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 5, 22, and 23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Appellants identify Black & Veatch Corporation as the real-party-in-
interest. Appeal Br. 2.
Appeal 2017-010615
Application 13/174,002
THE INVENTION
Appellants’ invention relates to recovery of liquefied petroleum gas
from a hydrocarbon gas stream. Spec. 1. Claim 5, the sole independent
claim, reproduced below, is illustrative of the subject matter on appeal.
5. A process for separating a feed gas stream containing
methane, at least one C2 component, and at least one C3
component into a volatile gas stream containing a major portion
of the methane and a major portion of the at least one C2
component and a less volatile stream containing a major portion
of the at least one C3 component, the process comprising:
a) cooling the feed gas stream to a temperature sufficient to
condense the majority of the at least one C3 component in the
feed gas stream to produce a cooled feed stream;
b) separating the cooled feed stream into a first vapor
portion and a first liquid portion in a first vapor-liquid
separator;
c) expanding the first vapor portion to provide an expanded
vapor portion and introducing the expanded vapor portion into a
first fluid inlet of a fractionation column;
d) introducing the first liquid portion into a second fluid
inlet of the fractionation column;
e) withdrawing a liquid bottoms stream from an outlet
located in the lower portion of the fractionation column and
withdrawing an overhead residue gas stream from an outlet
located in the upper portion of the fractionation column,
f) withdrawing a second liquid stream from another liquid
outlet located in the lower portion of the fractionation column
and passing the second liquid stream through a reboiler to form
an at least partially vaporized reboiler stream;
g) reintroducing the at least partially vaporized reboiler
stream into the fractionation column;
h) separating the liquid bottoms stream withdrawn from the
fractionation column in a deethanizer tower thereby producing a
deethanizer bottoms liquid stream comprising a majority of the
at least one C3 component and a deethanizer overhead gas
stream;
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i) cooling and at least partially condensing the deethanizer
overhead gas stream thereby producing a deethanizer liquid
reflux stream and a deethanizer residue gas stream;
j) combining at least a portion of the deethanizer residue gas
stream with at least a portion of the overhead residue gas stream
to provide a combined residue gas stream;
k) heating at least a portion of the combined residue gas
stream to thereby provide a warmed residue gas stream,
wherein said heating is performed to carry out at least a portion
of said cooling of step a);
l) introducing at least a portion of the deethanizer liquid
reflux stream into the fractionation column;
m) compressing the warmed residue gas stream to provide a
compressed residue gas stream;
n) cooling and expanding a portion of the compressed
residue gas stream to provide a cooled, expanded recycle
stream; and
o) introducing the cooled, expanded recycle stream into an
upper portion of said fractionation column.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Aghili US 4,687,499 Aug. 18, 1987
Campbell ’737 US 5,568,737 Oct. 29, 1996
Campbell ’712 US 5,771,712 June 30, 1998
Campbell ’569 US 5,881,569 Mar. 16, 1999
Mortko US 6,405,561 B1 June 18, 2002
Patel US 6,823,692 B1 Nov. 30, 2004
The following rejections are before us for review:
1. Claims 5, 22, and 23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mortko and Aghili.
2. Claims 5 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Campbell ’712 and Aghili.
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3. Claims 5, 22, and 23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mortko and Campbell ’569.
4. Claims 5 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Campbell ’712 and Campbell ’569.
5. Claims 5, 22, and 23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mortko and Campbell ’737.
6. Claims 5 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Campbell ’712 and Campbell ’737.
7. Claims 5, 22, and 23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mortko and Patel.
8. Claims 5, 22, and 23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Patel and Mortko.
OPINION
Unpatentability of Claims 5, 22, and 23
over Mortko and Aghili.
Appellants argue claims 5, 22, and 23 as a group. Appeal Br. 6—25.
We select claim 5 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Mortko discloses the invention substantially
as claimed except for separation prior to the fractionation column (pre­
separation), reboiling, and recycle reflux as claimed and for which the
Examiner relies on Aghili. Final Action 2-4. The Examiner finds that it is
well-known and routine to pre-separate feed gas prior to a fractionation
column. Id. at 4.2 Similarly, the Examiner finds that it is well known and
2 Although the Examiner relies on Aghili for this teaching in this ground of
rejection, we note that the Examiner relies on other references, such as
Campbell ’569, for the same subject matter under alternative grounds of
rejection. Final Action 7—10.
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routine to provide reboiling and recycle reflux as taught by Aghili. Id. The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art at the time of the invention to modify Mortko’s fractionation
column with steps of pre-separation, recycle reflux, and reboiling as taught
by Aghili. Id. at 4—5. According to the Examiner, a person of ordinary skill
in the art would have done this to enhance separation in the fractionation
column. Id.
Appellants traverse the Examiner’s rejection primarily by arguing that
a person of ordinary skill in the art would not have combined and/or
modified the prior art in the manner proposed by the Examiner. Appeal
Br. 9-11.3
Appellants do not dispute that Aghili teaches pre-separation, recycle
reflux, and reboiling as found by the Examiner. Rather, Appellants argue
that a person of ordinary skill in the art would not have combined Aghili as
proposed by the Examiner because the expectation would have been that
overall propane recovery would be reduced by the modified process.
Appeal Br. 10. In support of this position, Appellants submitted two
declarations by co-inventor Kevin L. Currence during prosecution. The first
declaration (Currence I) is dated December 7, 2015. The second declaration
(Currence II) is dated May 7, 2016. Both declarations present output data
from computer simulations. Appellants argue that the computer simulation
data supports their position that the Examiner’s proposed combination would
reduce overall propane recovery. Appeal Br. 12; Reply Br. 4. Appellants
3 Mortko is an earlier work of Appellants. Essentially, Appellants argue that
the alleged improvements made to their earlier work are patentable because
such improvements require the exercise of more than mere ordinary skill.
Id.
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argue that their declaration evidence successfully rebuts the Examiner’s
prima facie case of obviousness and that, therefore, the claims should be
allowed. Appeal Br. 11—22. Appellants cite the case of In re Carleton, 599
F.2d 1021 (CCPA 1979) for the proposition that claims should be allowed
when declaration testimony establishes that a proposed combination would
result in reduced production of a chemical compound.
In response, the Examiner states that Appellants’ declaration
testimony was fully considered, but that it was not found to be persuasive.
Ans. 27—36. Without repeating the Examiner’s analysis in detail, we note
that the Examiner finds that Appellants’ simulations do not simulate the
actual modifications proposed by the Examiner in the rejection. Ans. 28—29
(“The simulations are not simulating the modification provided by the
secondary references”).
Furthermore, the Examiner explains that Appellants’ arguments create
a false narrative that the separation of natural gas is only performed in
strictly two fashions consisting of ethane recovery (only C2, C3, and heavier
in the less volatile stream) or propane recovery (only C3 and heavier in the
less volatile stream). Ans. 25. According to the Examiner, Appellants’
arguments imply that, during propane recovery, no ethane is ever recovered
and that somehow ethane recovery is exclusive to recovering propane, even
though when ethane is recovered, propane and heavier components are also
recovered. Id.
Elaborating further, the Examiner challenges the implications of
Appellants’ argument that no one would consider modifying a propane
recovery process with an operation associated with ethane recovery. Id.
The Examiner states that it is incorrect that claim 5 requires recovery of
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propane exclusive to any recovery of ethane. Id. Stating further, the
Examiner notes that Appellants’ argument implies that the claims require
that only propane is recovered in the less volatile stream to the complete
exclusion of ethane and that all of the ethane is rejected to the volatile gas
stream. Id. According to the Examiner, such an implication is not required
by the claims. Id. Instead, claim 5 merely requires that the less volatile
stream comprises a major portion (more than half) of the propane (C3) and
that the volatile gas stream comprises a major portion of the ethane (more
than half). Id. at 26.
This is an important distinction and characteristic of the
scope of the claimed invention. The claimed invention does not
require that there is no ethane in the less volatile gas stream as
implied by the Appellant’s narrative and remarks. Rather, the
claimed process includes all recovery processes that perform
the claimed steps and provide even up to 49% of the ethane in
the less volatile gas stream.
Therefore, there is no requirement in the claims that the
process must produce separation of propane in the less volatile
stream and no ethane as implied by the Appellant. All that is
required to meet the claims is 51 % of the propane in the less
volatile stream with as much as 49% of the ethane.
Id.
The Examiner reiterates that the prior art shows that providing the
steps of reboiling, recycle reflux, and pre-separation provides greater
condensation of propane and ethane and thus higher recoveries as desired.
Id. The Examiner emphasizes that the fact that Aghili shows that such
operations are capable of higher recoveries of ethane in the less volatile
stream than is required by claim 5, is not evidence that the operations are
ineffective, unknown, or unfit to produce greater condensation of propane
and improved separation in the first column. Id. Rather, “the prior art fully
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shows that these steps are known for increasing condensation of components
in the less volatile stream.” Id.
Next, Appellants argue that Aghili teaches away from the proposed
combination. Appeal Br. 22. We disagree. A reference does not teach
away if it merely discloses an alternative invention but does not “criticize,
discredit, or otherwise discourage” investigation into the invention claimed.
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). It is well settled that
“mere disclosure of alternative designs does not teach away.” In re Mouttet,
686 F.3d 1322, 1334 (Fed. Cir. 2012). Rather, teaching away requires “clear
discouragement” from implementing a technical feature. In re Ethicon, Inc.,
844 F.3d 1344, 1351 (Fed. Cir. 2017). Aghili is directed to a method for
separating light weight methane from the heavier constituents found in a
natural gas stream. Aghili, col. 1,11. 44-46. Both ethane and propane are
known to be “heavier constituents” than methane. Otherwise, Appellants
have not directed us to any language in Aghili that criticizes, discredits, or
otherwise discourages investigation into using pre-separation, reboiling,
and/or recycle reflux techniques in a propane recovery system.4
Having fully considered the evidence and arguments presented, we
find the Examiner’s position to be more persuasive. It may be true that
Aghili is primarily directed to separating methane from heavier
4 In the Reply Brief, Appellants raise a “hindsight” argument, citing the case
of Grain Processing Corp. v. American Maize-Products Co., 840 F.2d 902
(Fed. Cir. 1988), for the proposition that “care must be taken to avoid
hindsight reconstruction.” 840 F.2d at 907. However, Appellant’s hindsight
argument is of no moment where, as here, the Examiner provides a
sufficient, non-hindsight reason (“[to] enhance[] separation in the
fractionation column’'') to combine the references. Final Action 5 (emphasis
added); see In re Cree, 818 F.3d 694, 702 n.3 (Fed. Cir. 2016).
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hydrocarbons, however, it is well settled that “[a] reference may be read for
all that it teaches, including uses beyond its primary purpose.” In re
Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012) (citing KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 418—21 (2007)). Aghili teaches a method for
separating lighter gas stream constituents from heavier ones. If a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill. KSR at 417. The Examiner’s well-reasoned analysis supports a
conclusion that a person of ordinary skill in the art would have considered it
obvious to use the pre-separation, reboiling, and recycle reflux techniques of
Aghili to improve the propane separation process of Mortko. Appellants
present neither evidence nor persuasive technical reasoning that tends to
show that applying Aghili to a propane recovery system requires more than
ordinary skill.
We view Appellants’ declaration testimony as being offered to show
that a person of ordinary skill in the art would not have made the proposed
combination with a reasonable expectation of success. Essentially,
Appellants argue that the computer simulation data shows that a person of
ordinary skill in the art would not have expected success by combining
Aghili with Mortko. On the record before us, we think that it was well
within the Examiner’s province to discount the probative value of
Appellants’ declaration evidence. The usefulness of data that is output from
a computer program is no better than the quality of the data that is input into
the computer. The Examiner observes, we believe correctly, that the data
from Appellants’ computer simulation resulted from artificially manipulated
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input data with respect to gas temperatures and pressures and therefore did
not apply the teachings of the references correctly.5,6’5 6 7’8 We find the
following finding and conclusion by the Examiner persuasive and amply
supported by the record before us:
[T]he simulations were clearly operated to eliminate ethane in
the less volatile stream, even though the claims do not require
complete elimination of ethane in the less volatile stream and
therefore the simulations do not represent the full range of
recovery of ethane and operation for which the claims
encompass and for which the prior art supports.
Ans. 30.
The obviousness inquiry requires a determination that a skilled artisan
would have been motivated to combine the teachings of the prior art
references to achieve the claimed invention, and that the skilled artisan
would have had a reasonable expectation of success in doing so. Kinetic
Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir.
2012). “The reasonable expectation of success requirement refers to the
likelihood of success in combining references to meet the limitations of the
claimed invention.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
821 F.3d 1359, 1367 (Fed. Cir. 2016). In other words, “one must have a
5 “The fact that the simulations do not show any colder temperatures is
evidence that the simulations are not simulating the operations of the
secondary references.” Ans. 28.
6 “[T]he modified cases provide warmer temperatures rather than colder
temperatures as instructed by the secondary references.” Ans. 29 (emphasis
omitted).
7 Declarant did not provide the pressure ratios and temperatures of the
secondary references. Ans. 29.
8 “Declarant hardly raises the pressure ratios of the simulation of Mortko, as
modified, as outlined in the secondary references.” Ans. 29.
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motivation to combine accompanied by a reasonable expectation of
achieving what is claimed in the patent-at-issue.” Id. However, “the
expectation of success need only be reasonable, not absolute.” See Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007). “Obviousness
does not require absolute predictability of success[;] ... all that is required is
a reasonable expectation of success.” In re Droge, 695 F.3d 1334, 1338
(Fed. Cir. 2012) (alteration in original). Applying the foregoing principles
to the facts of this case, Appellants’ declaration testimony regarding the
expectation of success is insufficient to undermine or rebut the Examiner’s
conclusion that it would have been obvious to combine Mortko and Aghili to
achieve the claimed invention, particularly where Appellants’ declaration
evidence does not apply the actual teachings of the prior art accurately,
thereby reducing the probative value of those simulations as compared to the
express teachings of Aghili (and the other references) of improved recovery
of propane. See Ans. 26—27.
In view of the foregoing, we sustain the Examiner’s unpatentability
rejection of claims 5, 22, and 23 over Mortko and Aghili.
Grounds of Rejection 2—8
The Final Action enters 8 different grounds of rejection. Final
Action 2—23. Five of the grounds encompass all three pending claims (5, 22,
and 23). Id. The other three grounds encompass only claims 5 and 22. Id.
Appellants argue all eight grounds together and essentially advance the same
arguments and assert the same declaration testimony against all eight
grounds grouped together. See generally Appeal Brief.
Our decision to affirm the grounds of rejection over Mortko and
Aghili disposes of all the claims on appeal (5, 22, and 23). See 37 C.F.R.
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§ 41.50(a)(1) (“The affirmance of the rejection of a claim on any of the
grounds specified constitutes a general affirmance of the decision of the
examiner on that claim, except as to any ground specifically reversed”). In
view thereof, we do not reach the Examiner’s alternative grounds of
rejection.
DECISION
The decision of the Examiner to reject claims 5, 22, and 23 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)(l)(iv).
AFFIRMED
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