Ex Parte Polizzotti et al

Patent Trial and Appeal Board

Dec 23, 2016

12971556 (P.T.A.B. Dec. 23, 2016)

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.
12/971,556 12/17/2010 David M. Polizzotti 92055-2 (249009-1) 8186
13193 7590
BLG (GE)
Borden Ladner Gervais LLP
1300-100 Queen Street
Ottawa, ON KIP 1J9
CANADA
12/28/2016 EXAMINER
AHUJA, ANURADHA
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
12/28/2016 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):
ipinfo@blg.com
gpo.mail@ge.com
lori.E.rooney@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID M. POLIZZOTTI, BRIAN CHRISTOPHER MOORE,
VASILE BOGDAN NECULAES, ABDUL RAFI KHWAJA, and
MATTHEW ALAN PETERSEN
Appeal 2015-000574
Application 12/971,556
Technology Center 3600
Before JAMES A. WORTH, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35U.S.C. § 134 from the Examiner’s
rejections of claims 1, 3, 5, 7, 8, and 10-20.1 We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appellants identify the real party in interest as “General Electric
Company.” (Appeal Br. 3.)
Appeal 2015-000574
Application 12/971,556
STATEMENT OF THE CASE
The Appellants’ invention “relates to the treatment of produced water
or wastewater from oil or gas production and to a steam assisted gravity
drainage (SAGD) process.” (Spec. 11.)
Independent Claims2
1. A process for treating produced water comprising a step of
degrading organics in the produced water by way of chemical
oxidation or electromagnetic treatment and further comprising a
step of passing the produced water with degraded organics
through a steam generator.
17. A system for treating produced water from a steam assisted
gravity drainage production well to produce steam for injection
into the ground above the production well comprising:
a) a steam generator;
b) a crystallizer connected to receive blowdown water
from the steam generator; and,
c) a chemical oxidation or electromagnetic treatment
module located upstream of the steam generator or so as to
intercept the blowdown water upstream of the crystallizer.
19. A system for treating produced water from a steam assisted
gravity drainage production well to produce steam for injection
into the ground above the production well comprising:
a) a steam generator;
b) a chemical oxidation or electromagnetic treatment
module located upstream of the steam generator or so as to
intercept the blowdown water flowing from the steam generator
to a crystallizer; and,
c) a nanofiltration or reverse osmosis membrane filter
downstream of the chemical oxidation or electromagnetic
treatment module.
2 These independent claims are quoted from the Claims Appendix (“Claims
App.”) set forth on pages 21—24 of the Appeal Brief.
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Application 12/971,556
Rejections3
I. The Examiner rejects claims 1,3,7, 10-12, 14, and 15 under
35 U.S.C. § 102(b) as anticipated by Lombardi.4 (Final Action 2.)
II. The Examiner rejects claims 5, 8, 13, and 16—20 under
35 U.S.C. § 103(a) as unpatentable over Lombardi and Heins.5 (Final
Action 4.)
ANALYSIS
Claims 1,17, and 19 are the independent claim on appeal, with the
rest of the claims on appeal (i.e., claims 3, 5, 7, 8, and 10-16, 18, and 20)
depending therefrom. (Claims App.) Independent claims 1,17, and 19 are
each directed to a process or system “for treating produced water.” (Id.)
Independent Claim 1
Independent claim 1 requires the steps of “degrading organics in the
produced water by way of chemical oxidation” and “passing the water with
degraded organics through a steam generator.” (Claims App.) The Examiner
determines that Lombardi discloses a process for treating produced water that
comprises these steps. (See Final Action 2—3.)
The Appellants do not argue that Lombardi fails to disclose a process
configuration wherein produced water is treated with an oxidation step; and
the Appellants do not argue that Lombardi fails to disclose a process
configuration wherein treated water is passed through a steam generator.
3 The Examiner’s rejection under 35 U.S.C. § 112, second paragraph (see
Final Action 2) is withdrawn (see Answer 2).
4 US2007/0102359 A1 published May 10, 2007.
5 US 2006/0032630 A1 published February 16, 2006.
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Application 12/971,556
However, the Appellants do argue that “Lombardi discloses a number of
distinct process configurations.” (Appeal Br. 12.) According to the
Appellants, “there is no reason to presume” that the disclosed oxidation
step “is present or even compatible with” the disclosed process
configuration wherein treated water is passed through a steam generator.
(Reply Br. 4.) In other words, the Appellants argue that Lombardi fails to
disclose “within the four comers of the document not only all of the
limitations claimed but also all of the limitations arranged or combined in
the same way as recited in the claim.” Net Money IN, Inc. v. VeriSign, Inc.,
545 F.3d 1359, 1371 (Fed. Cir. 2008).
We are not persuaded by the Appellants’ arguments because they do
not take into account the “operational and/or process design logic” disclosed
in Lombardi’s Figures 2 and 5. (Lombardi 1 85.) As pointed out by the
Examiner (see Answer 3), Lombardi discloses “logic” used for “configuring
sets of unit operations,” and the depicted/discussed process configurations
are “exemplary” implementations of this logic. (Lombardi, 49-52, 85,
91.) We agree with the Examiner’s position that a process configured by
implementing the logic diagrammed in Lombardi’s drawings is disclosed
within the four comers of this document.
Lombardi discloses, via diagrammed logic, a process configuration
wherein an upstream oxidation step (e.g., oxidation step 120) is performed
before an end use for the treated water is selected. (See Lombardi, Fig. 2,
especially decision diamonds 208, 256, boxes 212, 260, and unnumbered
bottommost box.) Lombardi discloses, therefore, that an oxidation step is
compatible with, and can be present in, any of Lombardi’s disclosed end
uses for the treated water. And the Appellants do not persuasively challenge
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Application 12/971,556
the Examiner’s finding (see Final Action 3) that Lombardi discloses an end
use wherein treated water is passed through a steam generator.
Accordingly, Lombardi discloses a process configuration comprising
an upstream oxidation step (e.g., oxidation step 120) for an end use wherein
treated water is passed through a steam generator. And the Appellants do
not adequately address why the Examiner errs in determining that the
method recited in independent claim 1 is anticipated by such a disclosed
process configuration.
Thus, we sustain the Examiner’s rejection of independent claim 1
under 35 U.S.C. § 102(b) as anticipated by Lombard (Rejection I).
Independent Claim 17
Independent claim 17 recites a “steam generator” and a “chemical
oxidation” treatment module located “upstream of the steam generator.”
(Claims App.) The Examiner determines that Lombardi discloses a water-
treatment process configuration (i.e., system) with these components. (See
Final Action 5—6.) For the reasons discussed above in our analysis of
independent claim 1, we are not persuaded by the Appellants’ arguments
that the Examiner errs in making this determination. (See Appeal Br. 17—19;
see also Reply Br. 7.)
Independent claim 17 also recites a “crystallizer connected to receive
blowdown water from the steam generator.” (Claims App.) The Examiner
finds that Heins teaches that blowdown from a steam generator can be
treated in a crystallizer. (See Final Action 5—6.) And the Examiner
determines that it would have been obvious to provide the steam generator in
Lombardi’s system with such “blowdown treatment.” (Id. at 6.)
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The Appellants argue that “Heins refers to use of a crystallizer to
produce a dry solid for disposal” and that it would be illogical to “put the
dried solids back into the treatment system.” (Appeal Br. 18—19.) We are
not persuaded by this argument because it is not commensurate with the
scope of independent claim 17. Independent claim 17 recites that the
oxidation treatment module is “located upstream of the steam generator or
so as to intercept the blowdown water upstream of the crystallizer.” (Claims
App., emphasis added.) As the Examiner relies upon Lombardi to disclose
an oxidation treatment module located upstream of a steam generator, the
treatment module in the Examiner’s combination of the prior art need not
intersect blowdown water to read on the limitations recited in independent
claim 17. In other words, independent claim 17 does not necessarily
preclude a crystallizer that produces a dry solid for disposal.
Accordingly, Lombardi and Heins together teach a steam generator,
an oxidation treatment module upstream of a steam generator, and a
crystallizer connected to receive blowdown water from a steam generator.
And the Appellants do not adequately address why the Examiner errs in
determining that the system recited in independent claim 17 would have
been obvious over the proposed combination of these familiar elements.
Thus, we sustain the Examiner’s rejection of independent claim 17
under 35 U.S.C. § 103(a) as unpatentable over Lombardi and Heins
(Rejection II).
Independent Claim 19
Independent claim 19, like independent claim 17, recites a “steam
generator” and a “chemical oxidation” treatment module located “upstream
of the steam generator.” (Claims App.) The Examiner finds that Lombardi
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discloses a process configuration with these components. (See Final
Action 6.) For the reasons discussed above in our analysis of independent
claim 17, we are not persuaded by the Appellants’ arguments to the contrary.
(See Appeal Br. 20; see also Reply Br. 7.)
Independent claim 19 also recites a “nanofiltration or reverse osmosis
membrane filter” downstream of the oxidation treatment module. (Claims
App.) The Examiner finds that Lombardi discloses a nanofilter element
arranged downstream of an oxidation treatment module in a process
configuration wherein the treated water passes through a steam generator.
(See Final Action 6—7.)
The Appellants argue that the prior art does not “teach or suggest a
combination of features that recapitulates the invention of claim 19.”
(Appeal Br. 20.) We are not persuaded by this argument because Lombardi
discloses a nanofiltration step 180 in a process configuration wherein treated
water is passed through a steam generator. (See Lombardi 1117, Fig. 8.)
And Lombardi’s diagrammed logic discloses that nanofiltration step 180
(and thus the corresponding filter) is downstream of oxidation step 120 (and
thus the corresponding oxidation treatment module). (See id. H 85—90;
Fig. 2, especially boxes 212, 220; Fig. 5, especially boxes 404, 508, 524,
532, 540.)
Accordingly, Lombardi discloses a process configuration comprising a
steam generator, an oxidation treatment module located upstream of the steam
generator, and a nanofiltration element arranged downstream of the oxidation
treatment module. And the Appellants do not adequately address why the
Examiner errs in determining that the system recited in independent claim 19
would have been obvious over such a disclosed process configuration.
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Thus, we sustain the Examiner’s rejection of independent claim 19
under 35 U.S.C. § 103(a) as unpatentable over Lombardi and Heins
(Rejection II).
Dependent Claims 3, 10—12, 14, 15, and 18
Dependent claims 3, 10-12, 14, 15, 18, and 20 recite “sorption,”
“nanofiltration,” “reverse osmosis,” “resin exchange,” and “lime softening”
steps and components. (Claims App.) The Examiner determines that
Lombardi discloses these steps/components in a process configuration
wherein the treated water passes through a steam generator. (See Final
Action 3, 6—7.)
The Appellants argue that Lombardi does not disclose the
combination of features recited in these dependent claims. (See Appeal
Br. 15—17, 19-20.) We are not persuaded by this argument because
Lombardi’s diagrammed logic discloses steps corresponding to these
features. For example, the upstream logic diagrammed in Figure 2 discloses
that an absorption step 144 is performed after oxidation step 120. (See
Lombardi 85, 87.) Also, the downstream logic diagrammed in Figure 5
discloses a nano filtration step 180, a reverse osmosis step 192, a resin
exchange step 820, and a pH adjustment (e.g., lime-softening) step 700.
{See Id. H90, 102.)
Accordingly, Lombardi discloses process configurations (wherein the
treated water passes through a steam generator) comprising oxidation,
sorption, nanofiltration, reverse osmosis, resin exchange, and lime softening
steps/components. The Appellants do not adequately address why the
Examiner errs in determining that the processes/systems recited in dependent
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claims 3, 10-12, 14, 15, 18, and 20 are anticipated by, or would have been
obvious over, such disclosed process configurations.
Thus, we sustain the Examiner’s rejection of dependent claims 3,
10-12, 14, and 15 under 35 U.S.C. § 102(b) as anticipated by Lombardi
(Rejection I); and we sustain the Examiner’s rejection of claims 18 and 20
under 35 U.S.C. § 103(a) as unpatentable over Lombardi and Heins
(Rejection II).
Dependent Claim 5
Dependent claim 5 recites further steps of separating “liquid
blowdown” and treating it “in a crystallizer.” (Claims App.) The Examiner
finds that it would have been obvious, in view of the teachings of Heins, to
separate liquid blowdown from Lombardi’s steam generator and treat it in a
crystallizer. (See Final Action 4.)
The Appellants argue that “Lombardi does not teach that produced
water with degraded organics can be sent to a steam generator” and “Heins
also does not disclose these steps.” (Appeal Br. 18.) We are not persuaded
by this argument because, as discussed above in our analysis of independent
claim 1, Lombardi discloses a process configuration comprising upstream
oxidation steps (e.g., oxidation step 120) for an end use wherein treated
water is passed through a steam generator. And as discussed above in our
analysis of independent claim 17, Heins teaches that blowdown from a
steam generator can be treated in a crystallizer.
Thus, we sustain the Examiner’s rejection of dependent claim 5
under 35 U.S.C. § 103(a) as unpatentable over Lombardi and Heins
(Rejection II).
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Dependent Claim 7
Dependent claim 7 recites that “the step of degrading organics in the
produced water comprises adding an oxidant to the produced water.”
(Claims App.) The Examiner finds that Lombardi’s oxidation step 120
comprises such an addition. (See Final Action 3.)
The Appellants argue that Lombardi’s disclosure regarding oxidation
step 120 “does not pertain” to a process configuration wherein the treated
water is passed through a steam generator. (See Appeal Br. 15.) We are not
persuaded by this argument because, as discussed above in our analysis of
independent claim 1, the upstream logic diagrammed in Lombardi’s Figure 2
(including oxidation step 120) pertains to a process configuration wherein
the treated water is passed through a steam generator.
Thus, we sustain the Examiner’s rejection of dependent claim 7 under
35 U.S.C. § 102(b) as anticipated by Lombardi (Rejection I).
Dependent Claims 8 and 13
Dependent claims 8 and 13, like dependent claim 5, recite the
additional steps of separating “liquid blowdown from an output from the
steam generator” and treating it “in a crystallizer.” (Claims App.) As
discussed above, Lombardi and Heins together teach a steam generator, an
oxidation treatment module upstream of a steam generator, and a crystallizer
connected to receive blowdown water from a steam generator for treatment.
Dependent claim 8 additionally requires that “the step of degrading
organics in the produced water” be “applied to the liquid blowdown
upstream of the crystallizer,” and dependent claim 13 additionally requires
that “the step of degrading organics in the produced water” comprises
“treating the liquid blowdown.” (Claims App.) The Examiner determines
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that the recited application and treatment would have been obvious “in order
to further treat or dispose” the blowdown steam. (Final Action 5.)
The Appellants argue that the Examiner does not sufficiently show
that the prior art teaches the application of an organic-degrading step to
blowdown liquid. (See Appeal Br. 19.) We are persuaded by this argument
because the Examiner does not adequately explain how or why one of
ordinary skill in the art would infer that Lombardi’s upstream organic-
degrading (i.e., oxidation) steps could and should be performed downstream
of the steam generator on liquid blowdown output therefrom.
Thus, we do not sustain the Examiner’s rejections of dependent
claims 8 and 13 under 35 U.S.C. § 103(a) as unpatentable over Lombardi
and Heins (Rejection II).6
Dependent Claims 16 and 20
The Appellants do not argue dependent claims 16 and 20 separately
from independent claims 1 and 19 (see Appeal Br. 18—20), and so they fall
therewith. Thus, we sustain the Examiner’s rejection of dependent claims 16
and 20 under 35 U.S.C. § 103(a) as unpatentable over Lombardi and Heins
(Rejection II).
6 Dependent claim 13 recites “treating the liquid blowdown with
microwaves” (Claims App., emphasis added) and the Appellants argue that
“[t]he use of microwaves is not disclosed” in the prior art (Appeal Br. 19.)
The Examiner maintains that these arguments “pertain to limitation that are
not part of the elected species.” (Answer 7).
We note that the elected or non-elected status of dependent claim 13
concerns a petitionable issue, not an appealable issue, and thus does not
factor into our analysis. See 37 C.F.R. § 1.145; see also In re Schneider,
481 F.2d 1350, 1356-57 (CCPA 1973).
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DECISION
We AFFIRM the Examiner’s rejections of claims 1, 3, 5, 7, 10-12, 14,
15, and 16—20.
We REVERSE the Examiner’s rejection of claims 8 and 13.
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-IN-PART
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