Ex Parte Robinson et al

Patent Trial and Appeal Board

Dec 23, 2014

12492484 (P.T.A.B. Dec. 23, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/492,484 06/26/2009 Earl T. Robinson FN-0036 US NP1 7374
77003 7590 12/24/2014
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
SUITE 3100
CHICAGO, IL 60606
EXAMINER
MERKLING, MATTHEW J
ART UNIT PAPER NUMBER
1725
MAIL DATE DELIVERY MODE
12/24/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EARL T. ROBINSON, FRANCIS S. LAU, and
DWAIN DODSON1
____________

Appeal 2013-001577
Application 12/492,484
Technology Center 1700
____________

Before PETER F. KRATZ, KAREN M. HASTINGS, and
WESLEY B. DERRICK, Administrative Patent Judges.

DERRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Primary
Examiner’s rejection of claims 1–23 as unpatentable for obviousness over
Goldstein et al. (U.S. Patent No. 4,348,487, issued September 7, 1982) in
view of Inoue et al. (US 2004/0180971 A1, published September 16, 2004),
Breu (U.S. Patent No. 5,225,044, issued July 6, 1993), and Kustes et al.
(U.S. Patent No. 4, 540,681, issued September 10, 1985).2 We have
jurisdiction under 35 U.S.C. § 6(b).

1 According to Appellants, the Real Party in Interest is GreatPoint Energy,
Inc. App. Br. 1.
2 Notwithstanding the Examiner’s comment regarding the grounds of
rejection being maintained by the Examiner without furnishing the noted
subheading as to withdrawn rejections (Ans. 2), the record makes it clear
Appeal 2013-001577
Application 12/492,484

2
We AFFIRM.
STATEMENT OF CASE
Appellants’ invention relates to a system with four gasification
reactors for converting carbonaceous feedstock into a plurality of gases and
generating a methane product stream from the plurality of gases. Spec.
Abstract.
Independent claim 1 is illustrative of the claimed invention3 (emphasis
added):
1. A gasification system to generate a plurality of gases
from a catalyzed carbonaceous feedstock, and a methane
product stream from the plurality of gases, the system
comprising:
(a) a first, a second, a third and a fourth gasifying reactor
unit, wherein each gasifying reactor unit independently
comprises:
(A1) a reaction chamber in which a catalyzed
carbonaceous feedstock and steam are converted to (i) a
plurality of gaseous products comprising methane,
hydrogen, carbon monoxide, carbon dioxide, hydrogen
sulfide and unreacted steam, (ii) unreacted carbonaceous
fines and (iii) a solid char product comprising entrained
catalyst;
(A2) a feed inlet to supply the catalyzed carbonaceous
feedstock into the reaction chamber;

that a further provisional rejection obviousness-type double patenting was
withdrawn (Advisory Action, May 9, 2012) on the basis Applicants
expressly abandoned the applications on which the rejection was based
(Response After Final, dated May 3, 2012). Two related Applications on
Appeal are identified by Appellants. App. Br. 1.
3 As all claims are subject to the same rejection and Appellants do not
separately argue the patentability of individual claims, we determine the
Appeal as to all claims on the basis of claim 1. 37 C.F.R. § 39(c)(1)(iv).
Appeal 2013-001577
Application 12/492,484

3
(A3) a steam inlet to supply steam into the reaction
chamber;
(A4) a hot gas outlet to exhaust a hot first gas stream out
of the reaction chamber, the hot first gas stream
comprising the plurality of gaseous products;
(A5) a char outlet to withdraw the solid char product
from the reaction chamber; and
(A6) a fines remover unit to remove at least a substantial
portion of the unreacted carbonaceous fines that may be
entrained in the hot first gas stream;
(b) (1) a single catalyst loading unit to supply the catalyzed
carbonaceous feedstock to the feed inlets of the first, second,
third and fourth gasifying reactor units, or
(2) a first and a second catalyst loading unit to supply the
catalyzed carbonaceous feedstock to the feed inlets the first,
second, third and fourth gasifying reactor units; or
(3) a first, a second and a third catalyst loading unit to
supply the catalyzed carbonaceous feedstock to the feed inlets
of the first, second, third and fourth gasifying reactor units; or
(4) a first, a second, a third catalyst and a fourth catalyst
loading unit to supply the catalyzed carbonaceous feedstock to
the feed inlets of the first, second, third and fourth gasifying
reactor units,
wherein each catalyst loading unit independently comprises:
(B1) a loading tank to receive carbonaceous particulates
and to load catalyst onto the particulates to form the
catalyzed carbonaceous feedstock; and
(B2) a dryer to thermally treat the catalyzed
carbonaceous feedstock to reduce moisture content;
(c) (1) when only the single catalyst loading unit is present,
a single carbonaceous material processing unit to supply the
carbonaceous particulates to the loading tank of the single
catalyst loading unit, or
Appeal 2013-001577
Application 12/492,484

4
(2) when only the first and second catalyst loading units
are present, a single carbonaceous material processing unit to
supply the carbonaceous particulates to the loading tanks of the
first and second catalyst loading units, or
(3) when only the first, second and third catalyst loading
units are present, a single carbonaceous material processing unit
to supply the carbonaceous particulates to the loading tanks of
the first, second and third catalyst loading units, or
(4) when the first, second, third and fourth catalyst
loading units are present, a single carbonaceous material
processing unit to supply the carbonaceous particulates to the
loading tanks of the first, second, third and fourth catalyst
loading units,
wherein the single carbonaceous material processing unit
comprises:
(C1) a receiver to receive and store a carbonaceous
material; and
(C2) a grinder to grind the carbonaceous material into the
carbonaceous particulates, the grinder in communication
with the receiver;
(d) (1) a single heat exchanger unit to remove heat energy
from the hot first gas streams from the first, second, third and
fourth gasifying reactor units to generate steam and produce a
single cooled first gas stream, or
(2) a first and a second heat exchanger unit to remove
heat energy from the hot first gas streams from the first, second,
third and fourth gasifying reactor units to generate steam, a first
cooled first gas stream and a second cooled first gas stream, or
(3) a first, a second, a third and a fourth heat exchanger
unit to remove heat energy from the hot first gas streams from
the first second, third and fourth gasifying reactor unit to
generate steam and produce a first cooled first gas stream, a
second cooled first gas stream, a third cooled first gas stream
and a fourth cooled first gas stream;
Appeal 2013-001577
Application 12/492,484

5
(e) (1) when only the single heat exchanger unit is present, a
single acid gas remover unit to remove at least a substantial
portion of the carbon dioxide and at least a substantial portion
of the hydrogen sulfide from the single cooled first gas stream,
to produce a single acid gas-depleted gas stream comprising at
least a substantial portion of the methane, at least a substantial
portion of the hydrogen and, optionally, at least a portion of the
carbon monoxide from the single cooled first gas stream, or
(2) when only the first and second heat exchanger units
are present, (i) a single acid gas remover unit to remove at least
a substantial portion of the carbon dioxide and at least a
substantial portion of the hydrogen sulfide from the first and
second cooled first gas streams to produce a single acid gas-
depleted gas stream comprising at least a substantial portion of
the methane, at least a substantial portion of the hydrogen and,
optionally, at least a portion of the carbon monoxide from the
first and second cooled first gas streams, or (ii) a first and a
second acid gas remover unit to remove at least a substantial
portion of the carbon dioxide and at least a substantial portion
of the hydrogen sulfide from the first and second cooled first
gas streams to produce a first acid gas depleted gas-stream and
a second acid gas-depleted gas stream, wherein the first and
second acid gas-depleted gas streams together comprise at least
a substantial portion of the methane, at least a substantial
portion of the hydrogen and, optionally, at least a portion of the
carbon monoxide from the first and second cooled first gas
streams, or
(3) when the first, second, third and fourth heat
exchanger units are present, (i) a single acid gas remover unit to
remove at least a substantial portion of the carbon dioxide and
at least a substantial portion of the hydrogen sulfide from the
first, second, third and fourth cooled first gas streams to
produce a single acid gas-depleted gas stream comprising at
least a substantial portion of the methane, at least a substantial
portion of the hydrogen and, optionally, at least a portion of the
carbon monoxide from the first, second, third and fourth cooled
first gas streams, or (ii) a first and a second acid gas remover
unit to remove a substantial portion of the carbon dioxide and at
Appeal 2013-001577
Application 12/492,484

6
least a substantial portion of the hydrogen sulfide from the first,
second, third and fourth cooled first gas streams to produce a
first acid gas-depleted gas stream and a second acid gas-
depleted gas stream, wherein the first and second acid gas-
depleted gas streams together comprise at least a substantial
portion of the methane, at least a substantial portion of the
hydrogen and, optionally, at least a portion of the carbon
monoxide from the first, second, third and fourth cooled first
gas streams, or (iii) a first acid, a second acid, a third and a
fourth acid gas remover unit to remove at least a substantial
portion of the carbon dioxide and at least a substantial portion
of the hydrogen sulfide from the first, second, third and fourth
cooled first gas streams to produce a first acid gas-depleted gas
stream, a second acid gas-depleted gas stream, a third acid gas-
depleted gas stream and a fourth acid gas-depleted gas stream,
wherein the first, second, third and fourth acid gas-depleted gas
streams together comprise at least a substantial portion of the
methane, at least a substantial portion of the hydrogen and,
optionally, at least a portion of the carbon monoxide from the
first, second, third and fourth cooled first gas streams;
(f) (1) when only the single acid gas-depleted stream is
present, a single methane removal unit to separate and recover
methane from the single acid gas-depleted gas stream, to
produce a single methane-depleted gas stream and a single
methane product stream, the single methane product stream
comprising at least a substantial portion of the methane from
the single acid gas-depleted gas stream, or
(2) when only the first and second acid gas-depleted gas
streams are present, (i) a single methane removal unit to
separate and recover methane from the first and second acid
gas-depleted gas streams to produce a single methane-depleted
gas stream and a single methane product stream, the single
methane product stream comprising at least a substantial
portion of the methane from the first and second acid gas-
depleted gas streams, or (ii) a first and a second methane
removal unit to separate and recover methane from the first and
second acid gas-depleted gas streams to produce a first
methane-depleted gas stream and a first methane product
Appeal 2013-001577
Application 12/492,484

7
stream, and a second methane-depleted gas stream and a second
methane product stream, the first and second methane product
streams together comprising at least a substantial portion of the
methane from the first and second acid gas-depleted gas
streams, or
(3) when the first, second, third and fourth acid gas-
depleted gas streams are present, (i) a single methane removal
unit to separate and recover methane from the first, second,
third and fourth acid gas-depleted gas streams to produce a
single methane-depleted gas stream and a single methane
product stream, the single methane product stream comprising
at least a substantial portion of the methane from the first,
second, third and fourth acid gas-depleted gas streams, or (ii) a
first methane removal unit and a second methane removal unit
to separate and recover methane from the first, second, third
and fourth acid gas-depleted gas streams to produce a first
methane-depleted gas stream and a first methane product
stream, and a second methane-depleted gas stream and a second
methane product stream, wherein the first and second methane
product streams together comprise at least a substantial portion
of the methane from the first, second third and fourth acid gas-
depleted gas streams, or (iii) a first, a second, a third and a
fourth methane removal unit to separate and recover methane
from the first, second, third and fourth acid gas-depleted
streams to produce a first methane-depleted gas stream and a
first methane product stream, a second methane-depleted gas
stream and a second methane product stream, a third methane-
depleted gas stream and a third methane product stream, and a
fourth methane-depleted gas stream and a fourth methane
product stream, the first, second, third and fourth methane
product streams together comprising at least a substantial
portion of the methane from the first, second, third and fourth
acid gas-depleted gas streams; and
(g) (1) a single steam source to supply steam to the steam
inlets of the first, second, third and fourth gasifying reactor
units, or
Appeal 2013-001577
Application 12/492,484

8
(2) a first and a second steam source to supply stream to
the steam inlets of the first, second, third and fourth gasifying
reactor units;
and wherein the system further comprises (r) a sour shift unit
between a heat exchanger unit and an acid gas remover unit, to
contact a cooled first gas stream with an aqueous medium under
conditions suitable to convert at least a portion of carbon
monoxide in the cooled first gas stream to carbon dioxide; and
a trim methanator to enrich methane in an acid-gas depleted
gas stream.
ANALYSIS
We have reviewed the Examiner’s rejection under 35 U.S.C. § 103(a)
in light of arguments advanced by Appellants in the Appeal Brief and the
Reply Brief, but are not persuaded the Examiner erred reversibly in
concluding the claims are unpatentable, essentially for the reasons expressed
in the Final Office Action and the Examiner’s Answer, which we adopt.4
See Final Action 4–10; Ans. 2–3. We add the following for emphasis.
The Examiner has determined, inter alia, that Goldstein discloses a
gasification system nearly identical to that claimed (Final Action 4–6 (citing
Goldstein Figure, particularly for the portion of Goldstein’s process/system
up through the methane removal unit)), but does not explicitly disclose
duplicating the various structures, or a subset of the structures, and their
arrangement in parallel where duplicated (id. at 6). The Examiner concludes
that duplicating any or all of these parts would have been obvious to one of
ordinary skill because it would allow for duplicated parts to be taken offline

4 Rather than reiterate all arguments of Appellants and the Examiner, we
refer to the Final Office Action (mailed March 8, 2012), the Appeal Brief
(filed July 18, 2012), the Answer (mailed September 12, 2012), and the
Reply Brief (filed November 6, 2012).
Appeal 2013-001577
Application 12/492,484

9
for maintenance without disrupting operations and “duplicating any or all of
these structures would increase the capacity of the claimed system.” Id.
(citing Breu col. 4, ll. 9–14).
As to other differences, the Examiner finds that while Goldstein
teaches gasifying carbonaceous material to produce methane, it does not
explicitly disclose a grinder to pulverize the feed material prior to its use or a
shift reactor and methanator to increase production of methane. Id. at 7.
The Examiner finds Inoue also discloses a system for gasifying a
carbonaceous material to produce a synthesis gas, and that Inoue teaches a
grinder to pulverize feed material to increase surface area and the reaction
efficiency. Id.
The Examiner finds Kustes also discloses a gasification system to
produce methane and teaches a shift reactor (24) and a methanator (30) to
increase methane production, explaining that the shift reactor adjusts the
composition of the synthesis gas to be favorable for conversion by the
methanator into methane. Id. (citing Kustes col. 4, ll. 34–47).5
The Examiner concludes one of ordinary skill would have found it
obvious to one of ordinary skill to further modify modified Goldstein (i.e.,
the portion of Goldstein’s process/system up through the methane removal
unit with duplication of a subset of structures and their arrangement in

5 The Final Office Action omits the column number, but we find this error
harmless as the relevant teaching is readily found in the cited reference.
Further, we find the relied-upon teaching undisputed – Appellants do not
contest Kustes teaches use of a shift reactor and methanator to produce more
methane. See, e.g., App. Br. 12. Indeed, Goldstein discloses the use of a
water gas shift and methanator units are known prior art options for
producing methane as a product from synthesis gas obtained from catalytic
gasification of coal or similar carbonaceous materials (col. 1, ll. 19–25).
Appeal 2013-001577
Application 12/492,484

10
parallel) by adding the grinder of Inoue to increase the surface area of the
carbonaceous material thereby increasing reaction efficiency (id. at 7) and
the shift reactor and methanator of Kustes to produce more methane (id. at
7–8).
Appellants argue that the Examiner has failed to establish a prima
facie case of obviousness because Goldstein teaches away from the claimed
invention, one of ordinary skill would not combine the cited references, and
the combination does not teach or suggest all claim limitations.
In their “teaching away” argument, Appellants emphasize that
Goldstein is “directed to the ultimate production of a methanol product
stream (along with a methane product stream) . . . as opposed to an
‘optimized’ methane product stream as required by the present claims.”
App. Br. 9. Appellants argue that to provide the methanol stream, Goldstein
requires both a methanol production unit and that there is “substantial carbon
monoxide content (as well as hydrogen content) in the feed stream to the
methanol production unit.” Id. at 10. Appellants also argue Goldstein
teaches an optional treatment to steam reform some methane into carbon
monoxide and hydrogen (syngas). Id. Appellants argue that removing
carbon dioxide at any place in Goldstein’s process would negatively impact
its operation. Id. at 10–11; Reply Br. 5–6. Appellants then argue that
Goldstein teaches away from the claimed invention because the claimed
invention “includes two unit operations specifically designed to consume
(and thus materially deplete) carbon monoxide content . . . the sour shift unit
and the trim methanation unit.” App. Br. 11; see also Reply Br. 6.
Whether the prior art teaches away from the claimed invention is a
question of fact. Dystar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d
Appeal 2013-001577
Application 12/492,484

11
1356, 1360 (Fed. Cir. 2006); In re Harris, 409 F.3d 1339, 1341 (Fed. Cir.
2005). It is well established that a prior art reference must be considered in
its entirety, i.e., as a whole, when determining if it would lead one of
ordinary skill in the art away from the claimed invention. W.L. Gore &
Assoc, Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983); cf. Para–
Ordnance Manufacturing, Inc. v. SGS Importers International, Inc., 73 F.3d
1085, 1090 (Fed. Cir. 1995) (to teach away, a reference must state that a
feature “should not” or “cannot” be used in combination with other features
in the prior art.).
Having considered the record before us, we are not persuaded that
Goldstein teaches away from the claimed invention. We find the
Examiner’s reliance on Goldstein was for its teaching of the portion of
Goldstein’s process/system through the methane removal unit (76) and
provision of a methane stream (77) and methane depleted stream (78), i.e., a
syngas stream. Final Action 4–6; Ans. 2. While the syngas stream in
unmodified Goldstein is used as the feed stream in the methanol production
unit, in the relied-upon combination of, inter alia, Goldstein and Kustes,
syngas is used as the feed stream for a methanator to produce additional
methane. In this regard, representative appealed claim 1 employs the open
“comprising” transitional term and is open to including other system
components. Thus, claim 1 embraces a gasification/methanol production
line of components such as employed in the methanol synthesis production
line of Goldstein in addition to the gasification/methane synthesis line of
unit operations called for in representative claim 1. After all, both methane
and methanol are desirable products.
Appeal 2013-001577
Application 12/492,484

12
Accordingly, we do not find the teachings of Goldstein directed to
optimizing the syngas composition for the production of methanol constitute
any manner of teaching away from optimizing the syngas composition for
the production of methane. Nor do we find Goldstein’s teaching of an
optional treatment to reform some methane into carbon monoxide and
hydrogen (App. Br. 10; Reply Br. 5) constitutes any teaching away as being
optional it also teaches that it is not used.
In their argument why one of ordinary skill would not combine the
references, Appellants argue that the system of Kustes would not be utilized
or even considered for use with the system of either Goldstein or Inoue
because it would deplete carbon monoxide used in both Goldstein and Inoue
for the production of methanol. App. Br. 10–11. On this basis, Appellants
argue that “[a]ny combination of the disclosure of Kustes et al. with the
other disclosures, therefore, cannot be legally or factually supported.” Id. at
12.
We do not find this argument persuasive of reversible error because it
does not address the rejection set forth by the Examiner. As we explain
above, the Examiner relies on the collective teachings of the applied prior art
including a portion of the system/process of Goldstein for its teaching of
system/process to provide, inter alia, a feed stream of syngas. The
Examiner relies on Kustes for its teaching of, inter alia, a shift reactor and
methanator to optimize methane production from the syngas. The fact that
Goldstein includes a methanol synthesis reactor to use the syngas falls short
of showing one of ordinary skill would not look to Goldstein in the manner
set forth by the Examiner. As to Inoue, the Examiner relies on it for its
teaching of grinding feedstock (Final Action 7), which teaching is
Appeal 2013-001577
Application 12/492,484

13
undisputed (App. Br. 11), and Appellants’ arguments one of ordinary skill
would not combine it with Goldstein and Kustes lacks merit.
In their argument that the combination of references does not teach or
suggest all claim limitations, Appellants argue that the claimed invention is
“an overall system configuration where certain units are duplicated and other
units are combined . . . in order to achieve an integrated system that is both
commercially functional and commercially feasible for the intended
purpose” and that the invention is “more than just duplication of the central
gasification reactors.” Id. at 12. On this basis Appellants argue that the
teaching of duplication to increase capacity in Breu falls short, as does the
Examiner’s reasoning, because “[t]he Examiner has provided no technical
basis that would lead a person or [sic] ordinary skill . . . to make the choices
set forth in the presently claimed invention.” Id. at 12–13; see also Reply
Br. 6.
Having considered the record before us, we find no reversible error in
the Examiner’s determination that combining or duplicating certain process
units has no patentable significance unless a new and unexpected result is
produced. Final Action 6–7, 10; Ans. 3. We find Appellants have not
provided any evidence that there is any new or unexpected result, only
attorney argument as to a “system that is both commercially functional and
commercially feasible for the intended purpose” (App. Br. 12) and this lacks
merit both because attorney argument is not evidence and because the claims
are not so limited. Finally, we find that claim 1, which recites different
numbers of elements in the alternative, encompasses a system where the
only duplicated element may be the gasification reactor. See italicized text
in representative claim 1 above. For these reasons and those set forth by the
Appeal 2013-001577
Application 12/492,484

14
Examiner, we are unpersuaded the Examiner erred in finding one of ordinary
skill would have found it obvious to duplicate or combine various known
process units to arrive at the claimed invention.
In view of the foregoing, we determine that Appellants have not
identified reversible error in the Examiner’s conclusion that Goldstein,
Kustes, Inoue, and Breu, would have suggested the system for preparing a
methane stream from carbonaceous material as recited in the claims on
appeal within the meaning of 35 U.S.C. § 103(a).

DECISION
We AFFIRM the Examiner’s decision rejecting claims 1–23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).
AFFIRMED

bar