Ex Parte Rauch

Patent Trial and Appeal Board

May 24, 2017

12162500 (P.T.A.B. May. 24, 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.
12/162,500 07/29/2008 Jean-Francois Rauch Serie 7077 1950
40582 7590 05/26/2017
American Air Liquide, Inc.
Intellectual Property Department
9811 Katy Freeway
Suite 100
Houston, TX 77024
EXAMINER
ZERPHEY, CHRISTOPHER R
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
05/26/2017 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):
IP-U S Office @ airliquide.com
Neva. Dare-c @ airliquide. com
Justin.Murray @ airliquide.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-FRANCOIS RAUCH
Appeal 2016-001038
Application 12/162,500
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jean-Francois Rauch (Appellant)1 appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 12, 14—20, and 23—26, which are
the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION.
1 The real parties in interest are identified as Jean-Francois Rauch and L’Air
Liquide Societe Anynyme Pour L’Etude Et L’Exploitation Des Procedes
Georges Claude. Appeal Br. 3.
Appeal 2016-001038
Application 12/162,500
CLAIMED SUBJECT MATTER
Independent claim 12, reproduced below, is representative of the
claimed subject matter:
12. A method for regulating a series of apparatus for
separating air by cryogenic distillation, the series comprising N
air separation apparatus, where N>1, in which a product gas
having substantially the same composition is sent from each air
separation apparatus to a consuming unit, each said air separation
apparatus comprising a system of columns for distilling air, and
an adsorption unit for adsorbing the air of the type in which at
least two adsorbers are used, each of said adsorbers having a
phase shift, following a same cycle in which an adsorption phase,
at a high cycle pressure, and a regeneration phase with
depressurization, succeed one another, terminating in a
repressurization of the adsorber, the method comprising a step in
which the adsorbers of an adsorption unit are placed in parallel,
each said adsorber having an adsorption cycle time, wherein the
operation of at least some of the adsorption units is regulated so
that the repressurization step for one of the adsorbers of one air
separation apparatus begins at a different time from the
beginning of the repressurization for one of the adsorbers of
another air separation apparatus, wherein the operation of the
adsorption units is regulated so that all repressurization steps take
place in different periods, such that only one adsorber is
repressurizing at a time.
Appeal Br. 30 (Claims App.).
EVIDENCE
The Examiner relies upon the following evidence:
White
Massimo
Song
US 4,197,095
US 6,581,411 B2
WO 2005/120680 A1
Apr. 8, 1980
June 24, 2003
Dec. 22, 2005
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Appeal 2016-001038
Application 12/162,500
REJECTIONS2
I. Claims 12, 16, 17, 20, and 23—26 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Massimo and Song.3
II. Claims 14, 15, 18, and 19 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Massimo, Song, and White.
ANALYSIS
New Ground of Rejection — 35 U.S.C. § 112, Second Paragraph
We note that a portion of the final “wherein” clause (hereinafter “final
clause”) recited in claim 12 was originally recited in dependent claim 13,
which was canceled and its subject matter added to claim 12 in the
Amendment dated February 8, 2013. However, as a result of this
amendment to claim 12, it is unclear exactly what the relationship is between
the final clause and the penultimate “wherein” clause (hereinafter
“penultimate clause”), making the metes and bounds of claim 12 unclear.
Particularly, the penultimate clause requires that “the operation of at
least some of the adsorption units is regulated so that the repressurization
step for one of the adsorbers of one air separation apparatus begins at a
different time from the beginning of the repressurization for one of the
adsorbers of another air separation apparatus.” Appeal Br. 30 (Claims App.
(emphasis added)). This clause does not require that the repressurization of
the one absorber of one absorption unit both begin and finish before the
repressurization of the one absorber of the another absorption unit.
2 A rejection of claim 24 under 35 U.S.C. § 112, first paragraph, has been
withdrawn. See Ans. 6; Advisory Act. 2 (mailed Feb. 3, 2015).
3 The Examiner provides an English-language translation of Song.
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Appeal 2016-001038
Application 12/162,500
Consequently, it is consistent with this limitation that the repressurization
step begin at different times for two absorbers, yet the repressurization steps
for these two absorbers could still take place during the same period (i.e.,
overlap).
The final clause requires that “the operation of the adsorption units is
regulated so that all repressurization steps take place in different periods,
such that only one adsorber is repressurizing at a time.” Appeal Br. 30
(Claims App. (emphasis added)). It is unclear whether the “regulation” of
the absorption units in this clause is the same as, or is separate and different
from, the “regulation” of the absorption units in the penultimate clause, in
that the penultimate clause allows for those “at least some” adsorption units
being regulated to have an overlap in the repressurization steps.
Construing “at least some” to mean “less than all” in the penultimate
clause, it is unclear whether “the adsorption units” recited in the final clause
correspond to just those adsorption units, which are regulated, or instead to
all of the adsorption units of all of the air separation apparatuses, which
includes other adsorption units that are not required to be regulated by the
term “some.” Thus, claim 12 is unclear as to which, and how many, of the
adsorption units are required to be regulated.
Appellant indicates that the penultimate and final clauses in claim 12
are supported by the description at page 2, lines 5—9 and 13—18 of the
Specification. Appeal Br. 7. We note, however, that this description merely
substantially reiterates language of claim 12 and does not resolve the
indefmiteness of the claim language discussed above.
Thus, we determine that the limitations recited in the penultimate and
final clauses make the metes and bounds of claim 12 unclear. Consequently,
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Appeal 2016-001038
Application 12/162,500
we enter a new ground of rejection of claim 12, and dependent claims 14—
20, and 23—26, under 35 U.S.C. § 112, second paragraph, pursuant to our
authority under 37 C.F.R. § 41.50(b).
Rejections I and II
The Examiner rejected claims 12, 16, 17, 20, and 23—26 under
35 U.S.C. § 103(a) as unpatentable over Massimo and Song (Final Act. 4—7),
and rejected claims 14, 15, 18, and 19 under 35 U.S.C. § 103(a) as
unpatentable over Massimo, Song, and White {id. at 7—8).
We do not reach the merits of these prior art rejections because we are
unable to review the rejections without having to make speculative
assumptions about the meaning of the language of the claims, as discussed
above for the new ground of rejection under 35 U.S.C. § 112, second
paragraph. Consequently, we are constrained to reverse the rejection of
claims 12, 16, 17, 20, and 23—26 as unpatentable over Massimo and Song,
and the rejection of claims 14, 15, 18, and 19 as unpatentable over Massimo,
Song, and White. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior
art rejection cannot be sustained if the hypothetical person of ordinary skill
in the art would have to make speculative assumptions concerning the
meaning of claim language).
DECISION
We reverse the rejection of claims 12, 16, 17, 20, and 23—26 under
35 U.S.C. § 103(a) as unpatentable over Massimo and Song.
We reverse the rejection of claims 14, 15, 18, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Massimo, Song, and White.
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Appeal 2016-001038
Application 12/162,500
We enter a new ground of rejection of claims 12, 14—20, and 23—26
under 35U.S.C. § 112, second paragraph, as being indefinite.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the
appellant, within two months from the date of the decision, must
exercise one of the following two options with respect to the new
grounds of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
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Appeal 2016-001038
Application 12/162,500
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).
REVERSED; 37 C.F.R. $ 41.50(b)
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