Ex Parte Dam et al

Patent Trial and Appeal Board

Aug 15, 2016

12517722 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/517,722 0610412009 Willem Dam
23632 7590 08/17/2016
SHELL OIL COMPANY
PO BOX 2463
HOUSTON, TX 77252-2463
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TS8674USAP 9404
EXAMINER
MENGESHA,WEBESHET
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
08/17/2016 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
PTOL-90A (Rev. 04/07)
L11'-~ITED STATES PATENT AND TRADE~'v1ARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLEM DAM, JOHAN JAN BAREND PEK, and
LEENDERT JOHANNES ARIE ZOETEMEIJER
Appeal2014-009215
Application 12/517,722
Technology Center 3700
Before LISA M. GUIJT, ERIC C. JESCHKE, and GORDON D. KINDER,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
decision2 rejecting claims 1-3, 6-14, 18, and 19 under 35 U.S.C. § 103(a) as
unpatentable over Malkoff (US 2,669,099; iss. Feb. 16, 1954). We have
jurisdiction under 35 U.S.C. § 6(b).
1 Appellants identify the real party in interest as Shell Oil Company. App.
Br. 2.
2 Appeal is taken from the Non-Final Office Action dated June 24, 2013
("Non-Final Act.").
Appeal2014-009215
Application 12/517,722
vVe REVERSE.
CLAIMED SUBJECT MATTER
Claims 1, 12, and 13 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter on appeal.
1. A method of passing a mixed vapour and liquid stream
between a first heat exchanger and a second heat exchanger,
comprising the steps of:
(a) outflowing the mixed vapour and liquid stream
from the first heat exchanger through two or more (number: X)
outlets;
(b) passing the mixed vapour and liquid stream in the
outlets through two or more intermediate conduits to the second
heat exchanger; and
( c) inflowing the mixed vapour and liquid stream from
the intermediate conduits into the second heat exchanger through
two or more (number: Y) inlets;
wherein X is equal to or greater than Y.
ANALYSIS
Regarding independent claims 1, 12, and 13, the Examiner finds, inter
alia, that "Malkoff does not teach ... intermediate conduits." Ans. 4. The
Examiner also finds that "it is possible to have more intermediate conduits"
in Malkoff s heat exchange system (Non-Final Act. 2), that Malkoff s
manifold "does not prohibit" more than one intermediate conduit (Ans. 6),
and that Malkoff does not suggest that having "a multiple fluid transfer
would defeat or prevent ... accomplishing the purpose of Malkoff['s]
invention" (id. at 14). The Examiner concludes that because Appellants'
Specification "does not teach any major criticality for having [] multiple
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Appeal2014-009215
Application 12/517,722
conduits other than a mere duplication of parts," it would have been obvious
"to have more intermediate conduits [in Malkoff's heat exchanger system
because] it has been held that mere duplication of essential working parts of
a device involves only routine skill in the art." Ans. 4. (citing St. Regis
Paper Co. v. Bemis Co., 549 F.2d 833 (7th Cir. 1977)). The Examiner
further reasons that such a modification would have been obvious "to
improve and better control the flow distribution of the fluid between the heat
exchangers." Id. at 4-5; see also Non-Final Act. 3; Ans. 10-11 (concluding
that "having multiple conduits would give a better flow distribution than
having a single conduit" and "[t]herefore, the modification provides []
obvious benefits"). Additionally, the Examiner determines that the
motivation to modify Malkoff as proposed by the Examiner is "implicit"
because "the desire to enhance commercial opportunities by improving a
product or process is universal." Id. at 12.
Appellants argue that the claimed feature, namely, two or more
intermediate conduits, "achieves a technical effect of avoiding an uneven
distribution of the liquid and vapor constituents over the heat exchanger
tubes in the second exchanger." App. Br. 5 (citing Spec., p. 5, 11. 9-16). In
addition, Appellants contend that the criticality of two or more intermediate
conduits is supported by the Specification, which states that "there is a
reduction in any mal-distribution of the mixed vapour and liquid stream that
has hitherto been passed between two heat exchangers through a single
conduit." Reply Br. 2 (citing Spec., p. 4, 11. 25-p. 5, 1. 8, p. 11, 1. 24-p. 12,
1. 6, p. 13, 11. 28-33, p. 15, 11. 4-10).
The case law of St. Regis relied on by the Examiner does not
demonstrate per se obviousness for duplicating intermediate conduit 30, and
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Appeal2014-009215
Application 12/517,722
the Examiner fails to support the Examiner's conclusion that the different
effect provided by two or more intermediate conduits, as indicated by the
Specification, involves only routine skill in the art.
Regarding the Examiner's alternative motivation for modifying
Malkoff s heat exchanger system, namely, "to improve and better control the
flow distribution of the fluid between the heat exchangers," as stated supra,
Appellants argue that the Examiner fails to "cite any other reference,
information, or evidence that one of ordinary skill in the art would recognize
[a problem with ineffective flow distribution of the fluid between the heat
exchangers]," and that the Examiner's "conclusion is based in impermissible
hindsight reasoning." App. Br. 6, 8-9. The Examiner responds that "it
would have been obvious to one of ordinary skill in the art to understand
[that] having multiple conduits would give a better flow distribution than
having a single conduit," and thus, "the modification provides [] obvious
benefits." Ans. 7. The Examiner maintains that the Examiner's proposed
combination "takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made[] and does not
include knowledge gleaned only from [Appellants' Specification]." Id. at 9.
On the record before us, the Examiner has failed to provide support
for the Examiner's determination that the proposed modification was within
the level of ordinary skill in the art, and therefore, the Examiner's proposed
modification appears to be the result of improper hindsight reasoning.
Accordingly, we cannot sustain the Examiner's rejection of
independent claims 1, 12, and 13, and claims 2, 3, 6-11, 14, 18, and 19
depending therefrom.
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Appeal2014-009215
Application 12/517,722
DECISION
The decision of the Examiner to reject claims 1-3, 6-14, 18, and 19 is
REVERSED.
REVERSED
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