Ex Parte Kölscheid et alDownload PDFPatent Trial and Appeal BoardSep 27, 201612310928 (P.T.A.B. Sep. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/310,928 12/08/2009 22116 7590 09/29/2016 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 3501 Quadrangle Blvd Ste 230 Orlando, FL 32817 FIRST NAMED INVENTOR Hans-Gerd Kolscheid 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. 2006P09475WOUS 3272 EXAMINER WALTHOUR, SCOTT J ART UNIT PAPER NUMBER 3741 NOTIFICATION DATE DELIVERY MODE 09/29/2016 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): IPDadmin.us@siemens.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HANS-GERD KOLSCHEID and KLAUS PETERS Appeal2014-009595 Application 12/310,928 Technology Center 3700 Before JENNIFER D. BAHR, LINDA E. HORNER, and BRANDON J. WARNER, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Hans-Gerd Kolscheid and Klaus Peters (Appellants) appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 9, 10, 12, 13, 15, 16, 18, 20, 21, 23, 24, 26, and 27 under 35 U.S.C. § 103(a) as unpatentable over Jones, Jr. (US 2004/0129019 Al, pub. July 8, 2004) in view ofVadas (US 4,321,790, iss. Mar. 30, 1982), Long (US 2004/0144078 Al, pub. July 29, 2004), and Iijima (US 2004/0221578 Al, pub. Nov. 11, 2004). We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. Appeal2014-009595 Application 12/310,928 THE CLAIMED SUBJECT MATTER Claim 9, reproduced below, is illustrative of the claimed subject matter. 9. A compression installation comprising: a gas turbine with a gas turbine compressor; a steam turbine with a steam generating installation being operated with exhaust gases of the gas turbine such that the steam generated in the steam generating installation drives the steam turbine, wherein the steam turbine comprises a high-pressure part, a medium-pressure part and a low-pressure part, a first additional compressor for compression of a process medium, the first additional compressor being connected directly to the gas turbine such that the first additional compressor is driven directly by the gas turbine; and a starter-helper motor generator associated to the gas turbine, the starter-helper motor generator being used as a helper motor or as a generator, wherein the steam turbine is directly connected to a second additional compressor such that the first and second additional compressors are respectively driven by the gas turbine and the steam turbine, and wherein the second additional compressor is arranged between the high-pressure part and the medium-pressure part or between the medium-pressure part and the low pressure-part or upstream of the high-pressure part of the steam turbine. DISCUSSION Appellants rely on the same arguments for patentability of independent claim 9 in contesting the rejection of independent claim 10. Appeal Br. 5-11. Appellants do not assert any separate arguments for patentability of dependent claims 12, 13, 15, 16, 18, 20, 21, 23, 24, 26, and 27 apart from their dependence, directly or indirectly, from one of claims 9 and 10. Id. We select claim 9 as representative, with claims 10, 12, 13, 15, 2 Appeal2014-009595 Application 12/310,928 16, 18, 20, 21, 23, 24, 26, and 27 standing or falling with claim 9. See 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that Jones, Jr. discloses a compression installation, substantially as claimed, including "gas turbine (turbine #10; para. [0014]) with a gas turbine compressor (para. [0019], 1st sentence)" and "steam turbine (turbine #30; para. [0020])." Final Act. 3. The Examiner acknowledges: Jones[, Jr.] fails to teach the steam turbine is directly connected to a second additional compressor such that the first and second additional compressors are respectively driven by the gas turbine and the steam turbine, however Jones[, Jr.] does teach a second additional compressor (compressor 14 '), with the difference [being] that the claimed first and second additional compressors, read here on Jones[, Jr. 's] 14 and 14', each are respectively driven by a gas turbine (Jones[, Jr.'s] 10) and a steam turbine (as opposed to gas turbine 10' of Jones[, Jr.]). Id. at 4. However, the Examiner finds that "Vadas teaches that it was known in the art to drive a compressor 1 with a steam turbine 3; the steam turbine being powered by steam produced by a flue-gas boiler 4, the flue-gas being produced by gas turbine 2, as in Jones[, Jr.]." Id. The Examiner determines that it would have been obvious to one of ordinary skill in the art at the time of invention "to substitute Jones[, Jr.'s] gas turbine 10' with Vadas'[s] steam turbine 3, because Jones[, Jr.'s] gas-turbine 10' and Vadas'[s] steam-turbine 3 were known equivalents in the art, in the sense that both were used to supply shaft power to external loads, such as a compressor in this case." Id. Appellants argue that the Examiner's rejection "improperly concludes that a gas turbine and a steam turbine are recognized in the art as known equivalents." Appeal Br. 7. In particular, Appellants assert that "[t]he Examiner's basis for the proposed substitution is that a gas turbine and a 3 Appeal2014-009595 Application 12/310,928 steam turbine are recognized as equivalents because of their same function (converting various forms of energy into mechanical force or to supply shaft power to external loads)." Reply Br. 3. We are not persuaded by Appellants' argument. As the Examiner explains, each of Jones, Jr. and Vadas discloses driving compressors using turbines. Ans. 2. In particular, "Vadas teaches the use of gas turbines 2 and a steam turbine 3 to drive compressor units 1." Id. at 3. The Examiner also cites Senetar (US 6,872,867 Bl, iss. Mar. 29, 2005) as "providing further evidence of the equivalence of gas turbines and steam turbines at the time of the invention." Ans. 3. Namely, Senetar discloses "a compressor that is driven by a machine for converting various forms of energy into mechanical force and motion such as an electric motor, an internal combustion engine, a steam turbine, a gas turbine and the like engines." Senetar, col. 9, 11. 7-11 (emphasis added). According to the Examiner, Senetar "explicitly discusses that steam turbines and gas turbines were known in the art, at the time of the invention, to be equivalent machines for converting various forms of energy into mechanical force and motion, and more specifically, were known equivalents for driving compressors." Ans. 3 (emphasis added). As such, the evidence set forth by the Examiner, particularly Vadas and Senetar, sufficiently demonstrates recognition in the art that gas turbines and steam turbines are known equivalents for driving compressors, and we are not persuaded by Appellants' assertion that the rejection merely relies on these components being functional or mechanical equivalents. See Appeal Br. 7; Reply Br. 3. Appellants argue that "even if a steam turbine and a gas turbine were considered equivalents (which they are not), the Final Office Action does 4 Appeal2014-009595 Application 12/310,928 not provide a rational reason[,] nor does one exist[,] why one skilled in the art would desire to substitute a steam turbine for a gas turbine in the installation of Jones, Jr." Appeal Br. 8 (emphasis omitted). In particular, Appellants assert that "the proposed modification would add substantial cost to the installation, as well as require the installation of substantial additional equipment, such as boilers and heat exchangers, for the generation of steam to operate the steam turbine." Id. We do not find Appellants' argument persuasive. We agree with the Examiner that Jones, Jr. already "teaches equipment which uses gas turbine exhaust (via line 24) to generate steam for running a steam turbine 30 (heat exchanger 26; para. [0020]), and therefore, a modification of Jones, Jr. would not appear to require substantial additional equipment." Ans. 4. Furthermore, as the Examiner correctly notes (id.), Appellants do not provide any evidence to support their assertion regarding "add[ ed] substantial cost" (Appeal Br. 2). Therefore, this assertion amounts to unsupported attorney argument, and, thus, is entitled to little weight. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Appellants argue that "the proposed modification would be expected to reduce the efficiency of the system of Jones, Jr. since steam turbines operate at significantly lower operating temperatures than gas turbines." Appeal Br. 8. This argument is not convincing because Appellants do not set forth any evidence or sufficiently persuasive explanation as to why an alleged reduction in efficiency would necessarily have dissuaded one of ordinary skill in the art from making the modification of Jones, Jr. 's system proposed by the Examiner. Moreover, even ifthe proposed modification of Jones, Jr. would reduce efficiency and/or increase cost, our reviewing court has recognized that a given course of action often has simultaneous 5 Appeal2014-009595 Application 12/310,928 advantages and disadvantages, and this does not necessarily obviate any or all reasons to combine teachings. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (if there are tradeoffs involved regarding features, such things do not necessarily prevent the proposed combination); Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another."). Appellants argue "that the purpose of Jones, Jr. to more efficiently utilize the products of gas turbines would be undermined by substituting Vadas' [ s] steam turbine 3 for at least one of Jones, Jr.' s gas turbines 10." Appeal Br. 9 (emphasis omitted) (citing Jones, Jr., para. 25). This argument is not convincing, as we find no evidence in the record before us that Jones, Jr.' s reduced carbon dioxide emission system would no longer operate satisfactorily if gas turbine I 01 were replaced with Vadas' s steam turbine 3. Namely, Jones, Jr.'s system would continue to reduce carbon dioxide emissions by recovering heat from the exhaust of gas turbine engine 10 to generate steam at heat exchanger 26 for driving each stearn turbine . .., _ _, .., _ _, .., _ _, See Jones, Jr., paras. 19, 25. Thus, we do not agree with .Appellants that the Examiner's proposed modification would undermine the purpose of Jones, Jr.' s svstem . .; Appellants argue that the modification proposed by the Examiner "would necessarily involve substituting a steam turbine for a gas turbine in Jones, Jr. such that exhaust from a steam turbine would be used for another steam turbine to generate electricity." Appeal Br. 8. In particular, 6 Appeal2014-009595 Application 12/310,928 Appellants assert that "[t]here is no rational reasoning or teaching/suggestion in any of [the] cited references that this combination would produce more desirable results with a steam turbine in place of a gas turbine" (id.) and "[t]here is no teaching or suggestion that a steam turbine would produce an exhaust stream at a temperature suitable to produce steam at a pressure sufficient to drive the electrical power generator of Jones, Jr." (id. at 9). The Examiner interpreted Appellants' argument as presuming that one having ordinary skill in the art, in making the proposed modification of Jones, Jr., would direct the exhaust from the compressor-driving steam turbine to Jones, Jr.'s steam turbine 30. To the extent that this is Appellants' argument, we agree with the Examiner that "one of ordinary skill in the art at the time of the invention would not construe a substitution of a gas turbine with a steam turbine to imply that the steam turbine exhaust would be mixed with the gas turbine exhaust for the purpose of producing steam for a separate turbine." Ans. 6. "Instead, one having ordinary skill in the art ... would have understood ... that dedicated steam lines carry steam to the steam turbine and expanded steam/condensate from the steam turbine for eventual recycling back through a heat exchanger to be converted to pressurized steam again for use in the steam turbine." Id. (citing Jones, Jr., para. 20). Additionally, Jones, Jr. discloses that "spent steam ... could be recycled for reheating in heat exchanger 26 since it will comprise low- pressure steam or water that has been suitably treated for use to produce steam." Jones, Jr., para. 20 (emphasis added). Appellants have not set forth sufficiently persuasive technical reasoning or evidence to show that, in view of this teaching by Jones, Jr., one of ordinary skill in the art would have doubted that the exhaust from a steam turbine would be sufficient to produce 7 Appeal2014-009595 Application 12/310,928 steam, by reheating in heat exchanger 26, for driving second steam turbine 30 to generate electricity. Appellants do not specifically address, much less point to any defect in, the Examiner's position that one of ordinary skill in the art would understand the proposed modification of Jones, Jr. to "involve a dedicated steam/condensate loop for the steam turbines, rather than simply wasting all of the water in the expanded steam/condensate." Ans. 6. Appellants further argue that the proposed combination of teachings from Jones, Jr. and Vadas is improper because it is based on impermissible hindsight. See Appeal Br. 9. In particular, Appellants assert that, "since the cited references do not provide any rational reasoning why one skilled in the art would make the proposed modification of Jones, Jr., Appellant[s] respectfully submit[] that the only way one skilled in the art would do so is by using the Appellant[s'] application as a roadmap, which is impermissible." Id. We do not find this argument persuasive of error because Appellants do not identify, nor do we discern, any knowledge relied upon by the Examiner that was gleaned only from Appellants' disclosure and that was not otherwise within the level of ordinary skill at the time of the invention, thereby obviating Appellants' assertion of hindsight. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971). Moreover, Appellants' argument appears to insist upon an explicit teaching, suggestion, or motivation in Jones, Jr. or Vadas to establish obviousness. The Supreme Court has stated that a rigid insistence on teaching, suggestion, or motivation is incompatible with its precedent concerning obviousness. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). The Court noted that an obviousness analysis "need not seek out precise teachings directed to the specific subject matter of the challenged 8 Appeal2014-009595 Application 12/310,928 claim, for [an examiner] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418. Instead, the relevant inquiry is whether the Examiner has set forth "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). Here, the Examiner reasoned that it would have been obvious to one of ordinary skill in the art at the time of invention to modify the system of Jones, Jr. to substitute gas turbine 10' with steam turbine 3 of Vadas to drive Jones, Jr.'s compressor 14' "because Jones[, Jr.'s] gas-turbine 10' and Vadas'[s] steam-turbine 3 were known equivalents in the art, in the sense that both were used to supply shaft power to external loads, such as a compressor in this case." Final Act. 4. Given that Jones, Jr.'s system already generates steam via heat exchanger 26 to drive steam turbine 30, and Vadas's steam turbine 3 would perform the same compressor-driving function in the system of Jones, Jr. as it did in Vadas's system, the substitution of Jones, Jr.'s gas turbine 10' with the known compressor- driving steam turbine 3 of Vadas amounts to nothing "more than the predictable use of prior art elements according to their established functions." KSR, 550 U.S. at 417. "[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." Id. at 416. To the extent that substituting Jones, Jr.' s gas turbine 1 O' with a steam turbine may require modification or redesign of Jones Jr. 's steam lines to create an additional steam loop to drive the steam turbine, Appellants do not assert, much less present any evidence 9 Appeal2014-009595 Application 12/310,928 or technical reasoning to show, that such modifications would have been beyond the technical grasp of a person having ordinary skill in the art. "A person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 420. For the above reasons, Appellants do not apprise us of error in the Examiner's conclusion that the combined teachings of Jones, Jr., Vadas, Long, and Iijima render obvious the subject matter of claim 9. Accordingly, we sustain the rejection of claims 9, 10, 12, 13, 15, 16, 18, 20, 21, 23, 24, 26, and 27 under 35 U.S.C. § 103(a) as unpatentable over Jones, Jr., Vadas, Long, and Iij ima. DECISION The Examiner's decision rejecting claims 9, 10, 12, 13, 15, 16, 18, 20, 21, 23, 24, 26, and 27 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). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation