Ex Parte Kuhn et al

Patent Trial and Appeal Board

Jan 3, 2018

14029079 (P.T.A.B. Jan. 3, 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.
14/029,079 09/17/2013 John N. Kuhn 292103-1460 5000
24504 7590 01/05/2018
THOMAS I HORSTEMEYER, LLP
3200 WINDY HILL ROAD, SE
SUITE 1600E
ATLANTA, GA 30339
EXAMINER
SEIFU, LESSANEWORK T
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
01/05/2018 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN N. KUHN, BABU JOSEPH, DEVIN WALKER, SYED ALI
GARDEZI, and TIMOTHY ROBERGE
Appeal 2017-002620
Application 14/029,079
Technology Center 1700
Before CHRISTOPHER C. KENNEDY, JULIA HEANEY, and MICHAEL
G. McMANUS, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 seek our review pursuant to 35 U.S.C. § 134(a) of a
decision of the Primary Examiner to reject claims 1 and 3-12 of Application
14/029,079 as unpatentable under 35 U.S.C. § 103(a). Final Act. 9-11.
We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth
below, we reverse.
1 This Decision refers to the Specification dated Sept. 17, 2013 (“Spec.”),
Final Rejection dated Nov. 17, 2015 (“Final Act.”), Appeal Brief dated June
23, 2016 (“App. Br.”), Examiner’s Answer dated Oct. 6, 2016 (“Ans.”), and
Reply Brief dated Dec. 5, 2016 (“Reply Br.”).
2 Appellants identify the real party in interest as the University of South
Florida. App. Br. 2.
Appeal 2017-002620
Application 14/029,079
BACKGROUND
The subject matter on appeal relates to a system for producing liquid
fuel from landfill gas. App. Br. 3. The system comprises a single tri­
reformer reactor that receives landfill gas and produces synthesis gas having
a specified TUCO ratio, and a Fischer-Tropsch synthesis reactor that
receives the synthesis gas and produces liquid fuel. Id. Claim 1, the sole
independent claim on appeal, is representative of the claimed subject matter
and reproduced below:
1. A system for producing liquid fuel from landfill gas,
the system comprising:
a single tri-reformer reactor that receives landfill gas and
performs a tri-reforming process on the landfill gas, the tri-
reforming process combining carbon dioxide reforming,
steam reforming, water-gas shifting, and methane oxidation,
wherein the tri-reforming process produces synthesis gas
having a Fb:CO ratio of approximately 2:1; and
a Fischer-Tropsch synthesis (FTS) reactor that receives
the synthesis gas from the tri-reformer reactor and produces
liquid fuel;
wherein the system comprises no other reactors that
assist in generating the liquid fuel from the landfill gas.
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Appeal 2017-002620
Application 14/029,079
REJECTIONS
On appeal, the Examiner maintains the following rejections:3
1. Claims 1 and 3-8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Gunness4 and Walker.5 Ans. 2.
2. Claims 9-11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Gunness, Walker, and Litwin.6 Ans. 4.
3. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Gunness, Walker, and Tarman.7 Ans. 5.
DISCUSSION
The Examiner finds that Gunness discloses an apparatus for
production of liquid hydrocarbons from a mixture of gaseous light
hydrocarbons such as natural gas. Ans. 2, providing citations to Gunness.
The Examiner further finds that Gunness’ apparatus includes a single
reformer that produces a synthesis gas having the claimed Eh:CO ratio, and a
FTS reactor for converting the synthesis gas into liquid fuel. Id. The
Examiner finds that Gunness is silent with respect to performing a tri-
reforming process as recited in claim 1. Id. at 2-3. The Examiner
determines, however, that it would have been obvious to a person of
ordinary skill in the art to modify Gunness’ reformer reactor by
3 The Examiner withdrew several rejections under 35 U.S.C. §§ 102(b) and
103(a) in the Answer. Ans. 5-6.
4 US 2,347,682, issued May 2, 1944 (“Gunness”).
5 Devin M. Walker, Synthesis gas production to desired hydrogen to carbon
monoxide ratios by tri-reforming of methane using Ni-MgO-(Ce,Zr)02
catalysts. Applied Catalysis A: General pp. 61-68 (2012)(“Walker”).
6 US 7,537,750 B2, issued May 26, 2009 (“Litwin”).
7 US 4,289,625, issued Sept. 15, 1981 (“Tarman”).
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Appeal 2017-002620
Application 14/029,079
incorporating Walker’s catalyst that provides for tri-reforming operation, in
order to produce the synthesis gas recited in claim 1, with minimal catalyst
deactivation, high reactant conversions, and extended catalyst lifetime. Ans.
3, providing citations to Walker.
Appellants argue, inter alia, that the rejection is improperly based on
hindsight because a person of ordinary skill in the art would not have had a
reason to replace Gunness’ catalyst with that of Walker. App. Br. 11-12.
Appellants argue that a person of ordinary skill in the art would recognize
that “the catalyst used in any given system must be tailored to the parameters
of the system” such that replacement of Gunness’ catalyst “would require
the Gunness system to be redesigned for use with the Walker catalyst” but
the Examiner does not provide any guidance as to how or why such a
redesign could be executed. App. Br. 12-13. Appellants further argue that
because Gunness’ system is not configured to perform tri-reforming, as
acknowledged by the Examiner and evidenced by the absence of an oxygen
or air feed stream to Gunness’ gas reformer 14 (App. Br. 14, citing Gunness
Fig. 1), even if Gunness’ catalyst were replaced with Walker’s, Gunness’
gas reformer still would not perform tri-reforming, but only bi-reforming.
Id. Appellants argue that modifying Gunness’ system to perform tri-
reforming instead of bi-reforming would not have been trivial and the
Examiner has not explained how or why such a redesign could be executed.
Id. at 14-15.
The Examiner has the initial duty of supplying the requisite factual
basis for obviousness and may not “resort to speculation, unfounded
assumptions, or hindsight reconstruction to supply deficiencies in [the]
factual basis.” In re Warner, 379 F.2d 1011, 1016-17 (CCPA 1967). Here,
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Appeal 2017-002620
Application 14/029,079
while finding that Gunness does not disclose a tri-reforming reactor (Final
Act. 8; Ans. 3, 7), the Examiner’s position that Walker’s teaching of a
catalyst for a tri-reforming operation provides a motivation for combining the
references (Ans. 10) does not sufficiently explain why a person of ordinary
skill in the art would have been led to modify Gunness’ system to perform a
tri-reforming process. Appellants persuasively argue that a person of
ordinary skill would not assume that Gunness’ catalyst could simply be
replaced with Walker’s catalyst, and the Examiner’s Answer does not
identify anything in the prior art of record or provide any reason why a
person of ordinary skill would have modified Gunness’ system in a way that
would have led to the claimed system. Further, the Examiner has not
demonstrated that a person of ordinary skill would have had a reasonable
expectation of success in replacing Gunness’ catalyst with Walker’s, because
there is no explanation in the record as to how such a replacement would
have worked in Gunness’ system.
Accordingly, we conclude that the Examiner reversibly erred and has
not established obviousness with respect to Rejection 1. We need not
separately address Rejections 2 and 3, which are based on the same findings.
SUMMARY
We reverse the rejections of claims 1 and 3-12 under 35 U.S.C.
§ 103(a).
REVERSED
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