Ex Parte Kawai et al

Patent Trial and Appeal Board

Feb 17, 2017

12096894 (P.T.A.B. Feb. 17, 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.
12/096,894 06/10/2008 Masato Kawai GPK-427-162 5936
23117 7590 02/22/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
ELVE, MARIA ALEXANDRA
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
02/22/2017 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):
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pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAS ATO KAWAI and MORIMITSU NAKAMURA
Appeal 2014-002649
Application 12/096,894
Technology Center 3700
Before EDWARD A. BROWN, JAMES P. CALVE, and
GEORGE R. HOSKINS, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Masato Kawai and Morimitsu Nakamura (Appellants)1 appeal under
35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—11. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
INVENTION
The claims are directed to a purification method and a purification
apparatus for feed air in cryogenic air separation. Claims 1 and 6 are
independent. Claim 1, reproduced below, is illustrative.
1 The Appeal Brief identifies Taiyo Nippon Sanso Corporation, as the real
party in interest. Appeal Br. 3.
Appeal 2014-002649
Application 12/096,894
1. A purification method for feed air in cryogenic air
separation, comprising:
purifying the feed air for the cryogenic air separation by
using a temperature swing adsorption method, wherein
a mass transfer zone of carbon dioxide is formed in a
whole region of a carbon dioxide adsorbent layer packed in an
adsorption column at the end of an adsorption step, and
a packed height of the carbon dioxide adsorbent layer is
set to at least a length of the mass transfer zone of the carbon
dioxide represented by the following equation (1):
Za = Nor (u / KFav) (1)
wherein Za represents the length of the mass transfer zone,
Nof represents a mass transfer unit number, u represents a gas
velocity at the entrance of an adsorption layer, and KFav
represents an overall mass transfer coefficient, and
wherein the carbon dioxide adsorbent layer does not
include an adsorption equilibrium part in which carbon dioxide
is saturated during the adsorption step of the carbon dioxide.
Appeal Br. 23 (Claims App.).
REJECTIONS
Appellants seek review of the following rejections:
Claims 1—11 under 35 U.S.C. § 112, first paragraph, written
description requirement;
Claims 1—11 under 35 U.S.C. § 112, second paragraph;
Claims 1—3, 5—8, 10, and 11 under 35 U.S.C. § 102(b) as anticipated
by Golden ’593 (US 6,106,593, issued Aug. 22, 2000);
Claims 1—3, 5—8, 10, and 11 under 35 U.S.C. § 103(a) as unpatentable
over Golden ’593 and Applicants’ Admitted Prior Art (hereinafter, “ALA”);
Claim 4 under 35 U.S.C. § 103(a) as unpatentable over Golden ’593
and Golden ’379 (US 6,093,379, issued July 25, 2000); and
Claim 9 under 35 U.S.C. § 103(a) as unpatentable over Golden ’593
and Golden ’236 (US 6,506,236 B2, issued Jan. 14, 2003).
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ANALYSIS
Claims 1—11 — 35 U.S.C. § 112, first paragraph, written description
Claim 1 recites the limitation “the carbon dioxide adsorbent layer does
not include an adsorption equilibrium part in which carbon dioxide is
saturated during the adsorption step of the carbon dioxide.’ '’ Appeal Br. 23
(Claims App., emphasis added) (hereinafter also referred to as the
“adsorption equilibrium part limitation”). Claim 6 recites a similar
limitation. Id. at 24—25 (Claims App.). Claim 1 further recites the limitation
“a mass transfer zone of carbon dioxide is formed in a whole region of a
carbon dioxide adsorbent layer packed in an adsorption column at the end of
an adsorption step.” Id. at 23 (Claims App., emphasis added) (hereinafter
also referred to as the “mass transfer zone limitation”).
The Examiner determines that the original disclosure does not provide
written description support for the adsorption equilibrium part limitation.
Final Act. 3—A. In the Answer, the Examiner acknowledges that the final
rejection mistakenly associates Figure 2, which represents a conventional
TSA method (temperature swing method), with the claimed subject matter.
Ans. 10; see Spec. 8,11. 21—23. The Examiner determines that the written
description does not state that the claimed adsorbent layer does not include
an adsorption equilibrium part. Ans. 10. According to the Examiner, the
adsorption equilibrium part limitation “is limiting the structure of an
adsorbent layer to not have an adsorption equilibrium part in which carbon
dioxide is saturated - and hence begins to breakthrough - during the
adsorption step of carbon dioxide.” Id. Continuing, the Examiner states that
“an adsorbent layer of any type will inevitably become saturated with the
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Application 12/096,894
adsorbed constituent after a certain time has elapsed, i.e., it is not possible to
provide an infinite capacity adsorbent layer.” Id.
For the written description requirement of 35 U.S.C. § 112, first
paragraph, “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.”
See AriadPharm., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc) (emphasis added). In order to show “possession,” “the
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed.”
Id. (emphasis added).
Appellants contend that one of ordinary skill would have understood
that the inventors had possession of the claimed subject matter based on
Figures 1 and 2 of the application. Appeal Br. 11. Figure 1 “is a graph
schematically representing a mass transfer zone of carbon dioxide in an
adsorbent layer in the present invention.” Spec. 8,11. 19-20 (emphasis
added). “As show[n] in FIG. 1, the state, in which a mass transfer zone of
carbon dioxide is formed in the whole region of an adsorbent layer at the
end of an adsorption step (Ti), represents an ideal embodiment of the present
invention.” Id. 137 (emphasis added). This description of Figure 1 is
closely similar to the mass transfer zone limitation in claim 1.
The Specification describes how the invention depicted in Figure 1
differs from the prior art depicted in Figure 2. Particularly, the Specification
states, “[t]he concept of the present invention in that a mass transfer zone of
carbon dioxide is formed in the whole region of a packed adsorbent layer in
a TSA method is totally different from the conventional concepts of
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Application 12/096,894
adsorption technology.” Spec. 135 (emphasis added). Figure 2 “is a graph
schematically representing an adsorption equilibrium part and a mass
transfer zone of carbon dioxide in an adsorbent layer in a conventional TSA
method.” Id. at 8,11. 21—23 (emphasis added). Figure 2 shows that “after
the elapse of time t2, an adsorbent layer region (region M), in which carbon
dioxide is saturated, is an adsorption equilibrium part, and an adsorbent
layer region (region N), in which the concentration distribution of carbon
dioxide exists, is a mass transfer zone.'1'’ Id. ]f 31 (emphasis added).
Appellants explain that claims 1 and 6 do not recite that the adsorbent
layer has “an infinite capacity,” and do not preclude regeneration of the
adsorbent layer. Reply Br. 8. Rather, the “temperature swing method”
recited in claims 1 and 6 involves alternating adsorption with regeneration.
Id. (citing Spec. Tflf 53, 57, 59). Appellants point out that the claim
requirement regarding the absence of an adsorption equilibrium part pertains
to the adsorption step, not the regeneration step. Id. at 9.
The Examiner indicates that the “only real difference” between
Figures 1 and 2 is that curve C2 (the prior art in Fig. 2) “extends more so
along the horizontal axis at ‘ 1’ for at an increased elapsed time and for a
relatively increased height in the adsorbent layer.” Ans. 10—11.
Appellants respond that claim 1 “recites that a mass transfer zone of
carbon dioxide is formed in a whole region of a carbon dioxide adsorbent
layer packed in an adsorption column at the end of an adsorption step.”
Reply Br. 4—5. Appellants explain that curve Ci in Figure 1 is formed at the
end of the adsorption step (has an endpoint at (1,0)), and curve C2 in Figure
2 is formed at the end of the adsorption step in a conventional method step
(has an endpoint at (1,0)). Id. at 4. Appellants submit that curve Ci in
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Application 12/096,894
Figure 1 would be compared to curve C2, not curve Ci, in Figure 2, because
curve Ci in Figure 2 does not illustrate the end of the adsorption step. Id.
The Examiner also states that “[t]he portion of the curve (in all C0-
C2) at ‘ 1’ [relative concentration of carbon dioxide] seems to be the part of
the adsorbent layer called ‘the adsorption equilibrium part,’” and “even from
fig. 1, the claimed invention, at least at the very beginning of the adsorption
step (top left comer of curves CO and Cl), a part of the adsorption layer is in
adsorption equilibrium.” Ans. 11.
We understand the Examiner’s position to be that, in Figure 1, the
adsorbent layer includes an adsorption equilibrium part. We are mindful
that things Appellants’ drawings show clearly should not be disregarded.
See In reMraz, 455 F.2d 1069, 1072 (CCPA 1972). However, Figure 1
does not show clearly that the adsorbent layer includes an adsorption
equilibrium part. Nor do we find any description in the Specification that
Figure 1 shows an adsorption equilibrium part. To the contrary, the
Specification explains that “[curve] Ci in FIG. 1 represents the time point
when the front end of the concentration distribution reaches the exit of air,
and at this time point, the adsorption step is finished” (Spec. 134), and that
Figure 1 shows “a mass transfer zone of carbon dioxide is formed in the
whole region of an adsorbent layer at the end of an adsorption step (Ti)” (id.
137 (emphasis added)).
Appellants explain that a value “1” of the vertical axis in Figure 1
corresponds to the relative concentration of carbon dioxide in feed air at the
very beginning of the adsorption step, corresponding to the top left comer of
curves Co and Ci. Reply Br. 7. Appellants contend that the concentration of
carbon dioxide at the entrance (point (0,1)) corresponds to the maximum
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relative concentration of carbon dioxide in the feed air, and does not mean
that the adsorbent layer, at the entrance, is saturated with carbon dioxide.
Id.
Thus, we are persuaded that the original disclosure provides written
description support for the adsorption equilibrium part limitation in claims 1
and 6. Therefore, we do not sustain the rejection of claims 1—11 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Claims 1—11 — 35 U.S.C. § 112, second paragraph
The Examiner also finds that the adsorption equilibrium part
limitation renders claims 1 and 6 indefinite “because it is not clear how the
Applicant’s invention has no adsorption equilibrium part during the
adsorption step of the carbon dioxide.” Final Act. 3 (emphasis added). The
Examiner states that Figures 1 and 2 show:
every curve (Co, Ci, C2) includes an “equilibrium part” at least at
the very beginning of adsorption, due to the curves being at a
value of “1” concentration at least at the very beginning of
adsorption (top left comers of all curves (Co, Ci, C2). As best
understood, the adsorbent bed does not include an adsorption
equilibrium part at some point in its operation.
Id. at 3^4 (emphasis added); see also Ans. 12. The Examiner explains that
“the claims are interpreted to mean that the adsorbent layer does not have an
adsorption equilibrium part, i.e., is not saturated with carbon dioxide, at
some point in its operation.'1'’ Ans. 13 (emphasis added).
Accordingly, the Examiner’s position is based on the understanding
that Figure 1 shows that the adsorbent layer includes an adsorption
equilibrium part “at least at the beginning of the adsorption step.” Id. at 12.
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The Examiner questions how, in view of what is shown in Figure 1, no
adsorption equilibrium part is achieved during the adsorption step.
During examination of a patent application, claims are to be given
their broadest reasonable interpretation consistent with the specification. In
re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The
Specification explains that curves Co, Ci, and C2 of Figure 2 represent the
concentration distribution of carbon dioxide in the feed air of a mass transfer
zone, where, specifically, “Co represents the concentration distribution of a
mass transfer zone appearing shortly after the beginning of adsorption step
(time t0),” “Ci represents the concentration distribution of a mass transfer
zone appearing after the elapse of a certain time from the beginning of
adsorption step (time ti),” and “C2 represents the concentration distribution
of a mass transfer zone appearing after the elapse of more time (time t2).”
Spec. 130. Appellants explain that the time elapses from ti (at which there
is no adsorption equilibrium part, but only a mass transfer zone and a region
having adsorbent with no adsorbed carbon dioxide) to t2 (at which there is an
adsorption equilibrium part (region M), a mass transfer zone (region N), and
no region having adsorbent with no adsorbed carbon dioxide)). Appeal Br.
14. Curve C2 represents the concentration distribution at time t2 when the
front end of a mass transfer zone reaches the exit end of the adsorbent layer.
Id. Accordingly, the time for an adsorption step is the difference between (i)
the time when feed air starts to be provided to an adsorbent layer (t0), and
(ii) the time when the front end of a mass transfer zone reaches the exit end
of the adsorbent layer (t2), that is, equals t2 — to. Id. The concentration of
carbon dioxide at time t2 is the same at the entrance of feed air to the
adsorption column as throughout region M. Id.
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Application 12/096,894
Regarding Figure 1, Appellants explain that there is no adsorption
equilibrium part at any time. Appeal Br. 14. The time for an adsorption step
is the difference between (i) the time when feed air starts to be provided to
an adsorbent layer (t0), and (ii) the time when the front end of a mass
transfer zone reaches the exit end of an adsorbent layer (//), that is, ti — to.
Id. at 14—15. Appellants point out that “ti occurs when carbon dioxide at the
entrance still equals the concentration of the feed air, such that there is no
adsorption equilibrium part.” Id. at 15.
We are persuaded that the meaning of the adsorption equilibrium part
limitation in claims 1 and 6 would be sufficiently clear to one of ordinary
skill in the art in view of the disclosure. Accordingly, we do not sustain the
rejection of claims 1—11 under 35 U.S.C. § 112, second paragraph.
Claims 1—3, 5—8, 10, and 11 — anticipation by Golden ’593
The Examiner finds that Golden ’593 discloses all limitations of
claims 1 and 6. Final Act. 5—6. As to the adsorption equilibrium part
limitation, the Examiner finds that Golden ’593 discloses “the adsorbent
materials to be regenerated,” and “thus after complete regeneration the
adsorbent materials will have a difference in concentration with respect to
the feed air, and therefore no adsorption equilibrium part will be present
during the adsorption step).” Id. at 6 (citing Golden ’593, col. 2,11. 41—46,
claim 2, emphasis added). The Examiner states that “Golden ’593 indeed
teaches that the adsorbent layer at some point is no longer saturated with
carbon dioxide, hence at some point in time in the adsorbent layer’s
operation [it] does not include an adsorbent equilibrium part.” Ans. 13
(emphasis added).
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Appellants contend that Golden ’593 does not teach the absence of an
adsorption equilibrium part. Appeal Br. 17. Rather, Appellants submit, the
disclosure cited by the Examiner merely states that adsorbents should be
regenerated {id. (citing Golden ’593, col. 2,11. 41—46, claim 2)), and
describes the advance of the concentration curve {id. at 18 (citing Golden
’593, col. 5,11. 17-42)).
We understand the Examiner’s position to be that Golden ’593’s
second adsorbent used to adsorb carbon dioxide would no longer be
saturated with carbon dioxide after regeneration. See Ans. 12—13.
Appellants contend that the Examiner’s reference to the regeneration step
fails to establish that Golden ’593 discloses the adsorption equilibrium part
limitation, because this limitation is directed to the adsorption step of the
carbon dioxide, not the regeneration step. Appeal Br. 9—10; Reply Br. 9.
We construe the adsorption equilibrium part limitation in claims 1 and
6 in view of the disclosure to mean there is no such adsorption equilibrium
part during the entire adsorption step of the carbon dioxide. As discussed
above, the duration of the adsorption step is from when feed air starts to be
provided to an adsorbent layer to when the front end of a mass transfer zone
reaches the exit end of an adsorbent layer. We agree with Appellants that, in
view of the disclosure, “it is unreasonable to construe [the claims] to read on
the absence of an adsorption equilibrium during regeneration.” Reply Br.
12 (emphasis added). Even if a part of Golden ’593’s second adsorbent is
not saturated with carbon dioxide during the regeneration step, this does not
disclose the adsorption equilibrium limitation.
We do not sustain the rejection of claims 1—3, 5—8, 10, and 11 as
anticipated by Golden ’593.
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Claims 1—3, 5—8, 10, and 11 — obviousness over Golden ’593 and AAPA
The Examiner alternatively finds that AAPA teaches that it is well
known in the art to set the packed height of an adsorbent layer to a length of
the mass transfer zone represented by relationship (1) in claims 1 and 6.
Final Act. 6 (citing Spec. ^fl[ 41 44). The Examiner concludes that it would
have been obvious to modify the packed height of the carbon dioxide
adsorbent layer in Golden ’593 to have the claimed packed height, as taught
by AAPA. Id.
Appellants contend that Golden ’593 teaches away from the mass
transfer limitation (Appeal Br. 18), and from eliminating an adsorption
equilibrium part {id. at 21). Instead, Appellants contend, Golden ’593
discloses maximization of the adsorption capacity of carbon dioxide in the
second adsorbent layer, thereby forming an adsorption equilibrium region in
the second adsorbent layer. Id. at 19 (citing Golden ’593, col. 3,11. 50-54,
col. 5,11. 39-40, col. 6,11. 5—7). Appellants submit that Golden ’593 teaches
“that the whole height of the second adsorbent layer should be an adsorption
equilibrium part during operation.” Id. at 20 (emphasis added). Appellants
assert that one of ordinary skill in the art “would have believed that
eliminating the adsorption equilibrium part would be wasteful in terms of the
adsorption of only carbon dioxide,” and “this is why Golden ’593 directs
those having ordinary skill in the art to increase or maximize the adsorption
equilibrium part.” Id. at 21.
The Examiner responds that Appellants’ “arguments imply that the
claims require for the adsorbent layer to never be saturated in carbon dioxide
during the adsorption step. However, this is not the case according to the
present claims, at least due to the ambiguity of the [adsorption equilibrium
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part limitation].” Ans. 13. The Examiner determines that by construing the
adsorption equilibrium part limitation to mean that “the adsorbent bed does
not include an adsorption equilibrium part at some point in its operation,”
Golden ’593 does not teach away from the claimed invention. Id. at 14.
The Examiner states:
[I]f the arguments and specification were read into the claims
such that the adsorbent layer is operated so that only half of the
adsorbent capacity is used (see para 51 of the present invention
publication), the Examiner asserts that the claims would then be
very obvious to a person having ordinary skill in the art based
on common knowledge alone.
Ans. 14 (underlining added).
The Examiner also states:
Golden ’593 teaches that regeneration (column 5, lines 17—42
and column 2, lines 41—46) is conducted to the absorbent [sic]
layer for the purpose of allowing the adsorbent layer to adsorb
more carbon dioxide (or any other desired constituent). It is
common knowledge that regeneration takes time and thus
regenerating an adsorbent layer that is fully saturated (i.e. at
maximum capacity) would take the relatively longest time to
regenerate. Hence, modifying Golden ’593 to operate at only
half the adsorbent capacity would have been obvious solely for
the purpose of minimizing downtime of adsorption by operating
the adsorbent at only half capacity. Examiner asserts that the
operative adsorption capacity of the adsorbent layer is really a
matter of optimization.
Ans. 14—15 (emphasis added).
Appellants respond that routine optimization is inapplicable. Reply
Br. 10. In this regard, Appellants assert that the Specification provides
evidence of counterintuitive, unexpected results from the adsorption
equilibrium part limitation. Id. at 11. Appellants also assert that the only
teaching regarding the claimed structure and associated improved properties
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come from their disclosure, which is impermissible hindsight. Id.
Appellants add that the Examiner’s “common knowledge” position is
gleaned solely from their disclosure. Id.
Appellants’ contentions are persuasive. The Examiner’s construction
of the adsorption equilibrium part limitation to mean that “the adsorbent bed
does not include an adsorption equilibrium part at some point in its
operation” (Ans. 14) is inconsistent with the disclosure. Our construction of
this limitation (i.e., no adsorption equilibrium part during the entire
adsorption step of the carbon dioxide) is consistent with the disclosure and
the claims. The Examiner fails to provide any reason to read any arguments
(presumably made by Appellants), or any part of the Specification, into the
claims. The Examiner fails to establish by a preponderance of the evidence
that Golden ’593 discloses the adsorption equilibrium part limitation, as
properly construed.
The Examiner’s application of AAPA does not cure the deficiencies
of Golden ‘’593. Claims 1 and 6 do not recite that the adsorbent layer is
operated at only half of its adsorbent capacity, and thus, the Examiner fails
to provide an adequate reason with a rational underpinning to modify
Golden ’593 to have such adsorption capacity. The Examiner fails to show
that the proposed modification of Golden ’593 in view of AAPA would have
yielded the claimed subject matter.
We do not sustain the rejection of claims 1—3, 5—8, 10, and 11 as
unpatentable over Golden ’593 and AAPA.
Claim 4 — obviousness over Golden ’593 and Golden ’3 79
Claim 4 depends from claim 1. Appeal Br. 24 (Claims App.). The
Examiner’s application of Golden ’379 to the rejection of claim 4 does not
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cure the deficiencies of the rejection of claim 1. Accordingly, we do not
sustain the rejection of claim 4 as unpatentable over Golden ’593 and
Golden ’379.
Claim 9 — obviousness over Golden ’593 and Golden ’236
Claim 9 depends from claim 6. Appeal Br. 25 (Claims App.). The
Examiner’s application of Golden ’236 to the rejection of claim 9 does not
cure the deficiencies of the rejection of claim 6. Accordingly, we do not
sustain the rejection of claim 9 as unpatentable over Golden ’593 and
Golden ’236.
DECISION
The Examiner’s decision to reject claims 1—11 is reversed.
REVERSED
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