Ex Parte Rhodes et al

Patent Trial and Appeal Board

Sep 27, 2012

11382606 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LAWRENCE RHODES and YAKOV LERNER
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Appeal 2010-005769
Application 11/382,606
Technology Center 3700
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Before STEVEN D.A. McCARTHY, BRETT C. MARTIN and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Lawrence Rhodes and Yakov Lerner (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s decision to reject under 35 U.S.C. §
102(b) claims 1-3 and 6-13 as anticipated by Gralton (US 6,213,059 B1,
issued Apr. 10, 2001); and under 35 U.S.C. § 103(a): (1) claim 5 as
unpatentable over Gralton; and (2) claims 14-23, 25 and 26 as unpatentable
over Gralton and Kalina (US 6,820,421 B2, issued Nov. 23, 2004). Claims
4 and 24 have been cancelled. We have jurisdiction over this appeal under
35 U.S.C. § 6(b). We REVERSE.

THE INVENTION
Appellants’ invention relates to methods for capturing working fluid
that has leaked or escaped from an expansion turbine and returning the
escaped working fluid to a mixed working fluid thermodynamic cycle.
Spec. para. [002] and fig. 1.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A method for sealing a turbine of a thermodynamic cycle
to minimize the escape of working fluid to the ambient
environment, the method comprising:
expanding at a turbine a multi-component gaseous
working stream of a thermodynamic cycle system transforming
its energy into a usable form and producing a spent stream,
wherein at least a portion of the multi-component working
stream escapes from the thermodynamic cycle system at the
turbine;
providing a non-condensable that mixes with the escaped
multi-component working stream to form a combined stream;
condensing, at least partially, the combined stream to
separate the escaped multicomponent working stream from the
non-condensable; and
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returning the escaped multi-component working stream
to the thermodynamic cycle system.

OPINION
The anticipation rejection based upon Gralton
Each of independent claims 1 and 9 requires a method for sealing a
turbine of a thermodynamic cycle to minimize the escape of working fluid to
the ambient environment, including the method steps of: (1) expanding at a
turbine a multi-component gaseous working stream of a thermodynamic
cycle system transforming its energy into a usable form and producing a
spent stream; and (2) mixing a non-condensable with at least a portion of
escaped multi-component working fluid from the thermodynamic cycle at
the turbine to form a combined stream. App. Br., Claims Appendix.
The Examiner found that Gralton teaches the limitations as recited in
claims 1 and 9. Ans. 3. In addition, the Examiner takes the position,
“Appellant[s] fail[] to disclose any escaped fluid but the returned fluid that
can be mixed with the non-condensable fluid.” Ans. 6. According to the
Examiner, (1) the returned or spent fluid coming out from the turbine is the
only fluid that can be mixed with the non-condensable fluid; and (2) “[a]ny
fluid escaped from the turbine to the atmosphere is gone for good because
the non-condensable fluid cannot go out to the atmosphere to be mixed with
the escaped fluid then returned to the system.” Ans. 7. As such, the
Examiner further takes the position, “the escaped fluid in the claims read[s]
on the returned fluid in Gralton, the claim language is met. . . . Therefore,
the returned fluid in Gralton meets the claimed subject matter.” Ans. 6.
Appellants’ argue, (1) “the Examiner’s Answer concerning the
teachings of Gralton are founded on the incorrect presumption that the ‘spent
stream’ and the ‘escaped multi-component working stream’ are the same”
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(Reply Br. 9-10); and (2) “[t]he Examiner’s improper construction of the
‘escaped multi-component working stream’ as the ‘spent stream’ improperly
reads this limitation out of the claim” (Reply Br. 5). We agree.
All words in a claim must be considered in judging the patentability of
that claim against the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA
1970). Moreover, in reading claim language on prior art in making
patentability determinations, the Examiner cannot rely on a single element to
satisfy two claim elements. See, e.g., In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999) (claim requiring two separate means cannot be anticipated
by structure that only contains two means using one element twice). In this
case, we find that independent claims 1 and 9 each explicitly and
unambiguously require both a “spent stream” and an “escaped multi-
component working stream.” App. Br., Claims Appendix. Furthermore, we
agree with Appellants (see Reply Br. 7) that Appellants’ Specification
specifically discloses
The turbine seal system seals both shaft ends of the
expansion turbine 31-36 with nitrogen at points 31 and 34,
utilizing labyrinth or mechanical dry gas seals. The labyrinth or
mechanical dry gas seals function to reduce the amount
working fluid that escapes from the expansion turbine. By
sealing both ends of the turbine with nitrogen, any working
fluid which would otherwise escape to the ambient environment
is captured and combined with the nitrogen. The escaped
working fluid having the parameters at point 33 and 34 is thus
captured and can be returned to the thermodynamic cycle
system. This combined mixture of nitrogen and working fluid
will hereinafter be referred to as the combined mixture.

Spec. para. [025]. Emphasis added.

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Appellants’ Specification further specifically discloses, “spent stream exit[s]
the expansion turbine at point 36. Spec. para. [030]. Emphasis added. See
also, Reply Br. 8 and fig. 1. As such, we further find that, based upon
Appellants’ disclosure, Appellants have distinctly differentiated a “spent
stream” from an “escaped multi-component working stream.”
In this case, we find nothing in Gralton, and the Examiner does not
point to any teaching in Gralton, to indicate or suggest that Gralton’s process
heat removal method includes both a “spent stream” and an “escaped multi-
component working stream.” Nor does the Examiner specifically even
allege that Gralton’s process heat removal method includes a spent stream
and an escaped multi-component working stream separate from the spent
stream. Rather, the Examiner simply makes the assertion, “the escaped fluid
in the claims read[s] on the returned fluid in Gralton, the claim language is
met.” Ans. 6. For the reasons discussed above, to the extent that the
Examiner’s position is that Appellants’ claims do not require a spent stream
and an escaped multi-component working stream distinct from the spent
stream, the Examiner errs in construing the claim language.
Accordingly, we are constrained to reverse the rejection of claims 1-3
and 6-13 as anticipated by Gralton.

The obviousness rejection over Gralton
The Examiner’s proposed modifications of Gralton do not remedy the
deficiencies of Gralton as described above. Hence, we further are
constrained to reverse the rejection of claim 5 as unpatentable over Gralton.

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The obviousness rejection over Gralton and Kalina
The Examiner’s application of Kalina as a separate additional
reference in conjunction with Gralton does not remedy the deficiencies of
Gralton as described above. Hence, we are constrained to reverse the
rejection of claims 14-23, 25 and 26 as unpatentable over Gralton and
Kalina.

DECISION
The decision of the Examiner is reversed as to claims 1-3, 5-23, 25
and 26.

REVERSED

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