Ex Parte RauchDownload PDFPatent Trial and Appeal BoardMay 24, 201712162500 (P.T.A.B. May. 24, 2017) Copy Citation 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 2 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. 3 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, 4 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. 5 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. 6 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) 7 Copy with citationCopy as parenthetical citation