Ex Parte STRYBOS

Patent Trials and Appeals Board

Jan 31, 2019

14753795 - (D) (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/753,795 06/29/2015 Ronald STRYBOS
40582 7590 02/04/2019
American Air Liquide
Intellectual Property Department
9811 Katy Freeway
Suite 100
Houston, TX 77024
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Sl0096 CNT 9792
EXAMINER
GOODWIN, MICHAEL ALAN
ART UNIT PAPER NUMBER
3672
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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-USOffice@airliquide.com
Neva.Dare-c@airliquide.com
J us tin.Murray@airliquide.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD STRYBOS
Appeal2017-006407
Application 14/753,795 1
Technology Center 3600
Before LISA M. GUIJT, ERIC C. JESCHKE, and BRENT M. DOUGAL,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of the Examiner's
decision, as set forth in the Final Office Action dated July 29, 2016 ("Final
Act."), rejecting claims 1-3 and 7. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Air Liquide Large Industries U.S. LP ("Appellant") is the applicant
under 3 7 C.F .R. § 1.46 and is identified as the real party in interest. Appeal
Br. 3.
Appeal2017-006407
Application 14/753,795
BACKGROUND2
The disclosed subject matter relates to solution mining under an inert
gas. Spec., Title. Claim 1, the sole independent claim on appeal, is
reproduced below, with emphasis added:
1. A method for solution mining comprising:
• providing a cased borehole located within a
salt bed,
• injecting an aqueous liquid into the cased
borehole at a first pressure, in order to expose the
salt bed to the aqueous liquid, thereby dissolving at
least a portion of the salt bed and forming a brine
solution within an underground storage volume,
thereby controlling the geometry of the roof of the
underground storage volume, wherein said
underground storage volume comprises a maximum
allowable pressure,
• withdrawing at least a portion of the brine
solution from the underground storage volume, and
• injecting an inert gas into the cased borehole
at a second pressure, in order to provide an inert
blanket within the underground storage volume,
wherein the second pressure is greater than the first
pressure but less than the maximum allowable
pressure of the underground storage volume,
wherein the maximum allowable pressure (P max) is
defined as p max < Dcasing X Gmax,
wherein Gmax = 0.85, and Dcasing is the depth
of a final cemented casing shoe which defines a
2 Counsel is reminded of the requirement that an appeal brief include a
"concise explanation of the subject matter defined in each of the rejected
independent claims, which shall refer to the specification in the Record by
page and line number or by paragraph number, and to the drawing, if any, by
reference characters." 37 C.F.R. § 4I.37(c)(iii) (2016) (emphasis added);
see Appeal Br. 4 (Summary of Claimed Subject Matter).
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Application 14/753,795
practical endpoint of a length of casing,
permanently cemented into surrounding rock
formations.
REJECTIONS
1. Claims 1-3 and 7 stand provisionally rejected under the
doctrine of obviousness-type double patenting as unpatentable over claims
1---6 of U.S. Patent Application No. 14/711,111.
2. Claims 1-3 and 7 stand rejected under 35 U.S.C. § 112(b) as
failing to particularly point out and distinctly claim the subject matter
regarded as the invention.
3. Claims 1-3 stand rejected under 35 U.S.C. § 102(a)(l) as
anticipated by Dahms (US 3,148,000, issued Sept. 8, 1964).
4. Claim 7 stands rejected under 35 U.S.C. § 103 as unpatentable
over Dahms and Admitted Prior Art ("AP A"). 3
DISCUSSION
Rejection 1 - Provisional Double Patenting
The Examiner provisionally rejected claims 1-3 and 7 on the ground
of the nonstatutory double patenting in view of claims 1-6 of U.S. Patent
Application No. 14/711,111, which is now abandoned. Final Act. 3--4; see
Notice of Abandonment (dated Feb. 23, 2017). Therefore, we dismiss as
moot the appeal as to this provisional rejection. See Ans. 3 (stating that "it
may be Appellant's intention to abandon the copending application, thus
obviating the provisional double patenting rejection").
3 As the AP A, the Examiner identifies page 1, lines 11-15 of the
Specification. See Final Act. 5---6.
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Application 14/753,795
Rejection 2-The rejection of claims 1-3
and 7 under 35 USC§ l 12(b)
The Examiner rejected independent claim 1, stating that "the phrase
'thereby controlling the geometry of the roof renders the claim indefinite
because it is not clear what the term 'thereby' is referencing."4 Final Act. 4.
According to the Examiner, "[i]t is not clear from the claim language, for
example, whether it is the injection of the aqueous liquid, the exposing of the
salt bed to the aqueous liquid, the dissolving of at least a portion of the salt
bed, the forming of a brine solution, or some combination thereof that is
causing the geometry of the roof to be controlled." Id. 5
The Examiner also rejected claim 7 (which depends from claim 1) on
two separate bases: (1) "'the underground storage cavern' lacks proper
antecedent basis" and (2) "the recitation 'modified dome shape' is
indefinite" because "[ t ]he term 'modified' is not defined by the claim
language or the specification." Id.
In the Appeal Brief, Appellant states that "[ t ]hese deficiencies are
easily remedied" and Appellant "requests that the disposition of these be
made after the determination of the board." Appeal Br. 5.
As to claim 1, the Examiner states that resolution of the identified
issue "is believed to be essential before any meaningful evaluation can occur
as to whether or not the claim patentably defines over the prior art." Ans. 4.
The Examiner also states that the "specification and drawings ... fail to
unequivocally define the meaning of the claim language in question" in
4 We will refer to this claim language, shown with emphasis above, as
the "thereby controlling" limitation.
5 The claim language referenced by the Examiner is in the second
step, which begins "injecting an aqueous liquid."
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Application 14/753,795
claim 1. Id. Later in the Answer, the Examiner states, "[ f]or purposes of
applying the prior art (and affording the language its broadest reasonable
interpretation under the circumstances), the examiner construes th[ e] phrase
[ at issue] as meaning controlling the geometry of the roof (i.e., impacting or
affecting the shape of the roof) by any means." Id. at 6.
In the Reply Brief, Appellant states that "it is the 'injecting of an
aqueous liquid into the cased bore hole' ( and the subsequent dissolving of
the salt bed) that is used to control the geometry of the roof." Reply Br. 2.
Appellant also "accept[ s] the definition proffered by the examiner that th[ e]
phrase [at issue] means 'controlling the geometry of the roof (i.e. impacting
or affecting the shape of the roof) by any means."' Id. at 3.
A claim fails to comply with 35 U.S.C. § 112, second paragraph,
"when it contains words or phrases whose meaning is unclear." In re
Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per curiam)
(approving, for pre-issuance claims, the standard from MPEP § 2173.05( e ));
see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing
indefiniteness approved by the Federal Circuit in Packard). If an examiner
"has initially issued a well-grounded rejection that identifies ways in which
language in a claim is ambiguous, vague, incoherent, opaque, or otherwise
unclear in describing and defining the claimed invention, and thereafter the
applicant fails to provide a satisfactory response," the examiner "can
properly reject the claim as failing to meet the statutory requirements of
§ 112(b ). " Packard, 7 51 F .3d at 1311. A "satisfactory response" to an
indefiniteness rejection "can take the form of a modification of the language
identified as unclear, a separate definition of the unclear language, or, in an
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appropriate case, a persuasive explanation for the record of why the
language at issue is not actually unclear." Id.
We view the statements in the Reply Brief ( quoted above) as
adequately defining the "thereby controlling" limitation so as to provide a
"satisfactory response" to this rejection of claim 1. 6 Id. Thus, we reverse
the rejection of claim 1 as indefinite.
We tum now to the separate bases for the rejection of claim 7 as
indefinite. As an initial matter, the rules of the Board do not allow holding a
rejection in abeyance, as requested by Appellant. See 37 C.F.R. § 4I.31(c)
("An appeal, when taken, is presumed to be taken from the rejection of all
claims under rejection unless cancelled by an amendment filed by the
applicant and entered by the Office."); see also Ans. 5 (stating that these
issues "cannot reasonably be deferred until after a determination regarding
the prior art rejections is made by the Board").
The only statement by Appellant that could be viewed as addressing
this rejection is in the Reply Brief, where Appellant states that "[i]t would be
very clear to the skilled artisan reading the specification and reviewing the
figures that the intention is to create a roof that is stepped, or dome shaped,
and not simply flat." Reply Br. 2.
With this statement, however, Appellant has not provided a
"satisfactory response" to the Examiner's two separate bases as to claim 7.
Packard, 751 F.3d at 1311. As to the first basis, Appellant fails to address
6 To the extent Appellant asserts that "controlling the geometry of the
roof' in claim 1 requires creating a "roof that is stepped, or dome shaped,
and not simply flat" (Reply Br. 2), we disagree. Although claim 7 requires
that "the geometry of the roof ... is a modified dome shape," claim 1 does
not specify the shape of the roof.
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the lack of antecedent basis for "the underground storage cavern." See
Appeal Br. 5; Reply Br. 2. As to the second basis, Appellant fails to address
the meaning of "modified" in the phrase "modified dome shape." See
Appeal Br. 5; Reply Br. 2. Appellant has thus failed to persuasively explain
"for the record why the language at issue is not actually unclear." Packard,
751 F.3d at 1311. Because Appellant has not rebutted the Examiner's prima
facie case, we sustain the rejection of claim 7 as indefinite.
Rejection 3 -The rejection of claims 1-3
under 35 US.C. § 102(a)(l)
For this rejection, Appellant argues the patentability of claim 1 and
does not provide separate arguments for claims 2 and 3, which depend from
claim 1. Appeal Br. 5-7; Reply Br. 2--4. Thus, we address claim 1, with
claims 2 and 3 standing or falling with claim 1. See 3 7 C.F .R.
§ 4I.37(c)(l)(iv) (2016).
The Examiner relied on Dahms as disclosing, either explicitly or
inherently, every limitation of claim 1. Final Act. 5. As to the "thereby
controlling" limitation, the Examiner stated that "injecting the aqueous
liquid in the method of Dahms will inherently change or impact ( and, thus,
'control') the roof geometry, to at least some extent." Id.
Before addressing Appellant's arguments, we discuss the construction
of the "thereby controlling" limitation. As noted above (see Rejection 2),
the Examiner has proposed and Appellant has accepted a construction of this
limitation. See Ans. 6; Reply Br. 3. For purposes of this decision, we apply
the agreed-upon construction of the "thereby controlling" limitation:
"controlling the geometry of the roof (i.e., impacting or affecting the shape
of the roof) by any means." Ans. 6. We tum now to the arguments, which,
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Application 14/753,795
according to Appellant, "center[] on the observation that Dahms ... fails to
disclose 'controlling the geometry of the roof."' Reply Br. 3.
First, Appellant argues that "salt has a low tensile strength, so a large
flat roof is not as desirable, and can be unstable." Appeal Br. 5. Appellant
asserts, however, that "a 'modified dome shape' [as recited in claim 7] will
prove to be more stable," and thus:
it would be clear to one of ordinary skill in the art of salt cavern
solution mining that in order to produce a cavern that will not
repeatedly, and intentionally, collapse in on itself, would involve
controlling the geometry of the roof to produce something more
like a modified dome shape.
Id. at 5---6. Appellant argues that Dahms "fails to disclose any particular
shape of the roof' and that "[i]mmiscible layer 6 [in Dahms], which is
presumably directly below the roof, is indicated as being flat, with no
indicated dome shape." Id. at 6.
We are not apprised of error based on this argument. Claim 1 requires
"controlling the geometry of the roof' but does not recite a specific shape
for the "roof." See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (rejecting
arguments "not based on limitations appearing in the claims"). To the extent
Appellant asserts that the limitations in claim 7 limit the scope of claim I-
from which claim 7 depends-we disagree. 7 See id.; Ans. 5 (stating that
"the 'modified dome shape' language discussed by Appellant at the top of
page 6 appears in dependent claim 7 and not independent claim 1 "); see also
35 U.S.C. § 112(d) ("A claim in dependent form shall be construed to
incorporate by reference all the limitations of the claim to which it refers.").
7 To the extent Appellant intends to argue claim 7 separately, for the
reasons discussed below (see Rejection 4), we sustain that rejection.
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Moreover, as noted by the Examiner, claim 1 does not currently recite
a requirement to be "stable"; Appellant expressly removed that limitation
from claim 1. See Ans. 5 ("Appellant's arguments spanning pages 5---6 of
the Brief appear to center on the salt cavern being 'stable', a limitation that
was deleted from claim 1 in Appellant's amendment filed May 24, 2016, and
that does not appear in any of the currently pending claims.").
Second, Appellant argues that "[t]he only references to the cavern's
roof in Dahms ... deal with the desired effect of having the roof collapse in
order to more efficiently remove the potassium chloride." Appeal Br. 7
(citing Dahms, 2:43--44 and 2:53-56). According to Appellant, "[o]ne
skilled in the art of solution mining a stable cavern with the intention of
storing gases in them, as is the clear intent of the present invention, would
not find that the disclosure in Dahms ... 'inherently controls the roof
geometry' to this end." Id. (internal quotations omitted).
The Examiner responds by further explaining why "Dahms discloses
controlling the geometry of the roof of the cavity 8" as shown in, for
example, Figure 1 of Dahms, reproduced below. Ans. 6.
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Figure 1 of Dahms depicts "a typical cavity [8] being developed below a
mineable deposit" of potassium chloride. Dahms, 4:29--30. The Examiner
makes the following findings as to the teachings of Dahms:
Dahms generally discloses a solution mining method ( described,
for example, at col. 2, lines 14--28) in which a solvent (water or
an aqueous solution) is introduced through a cased borehole (see
Fig. 1 or Fig. 2) to dissolve salt from an underground salt deposit,
thereby forming a cavity 8. Dahms further discloses a lateral
growth phase ( described in general terms at col. 2, lines 29-3 8)
in which the underground cavity 8 is caused to grow laterally
(i.e., horizontally). In order to accomplish this lateral growth,
Dahms injects an inert fluid (e.g., nitrogen gas) through the
borehole while the solvent is being introduced. The inert fluid
forms a protective layer 6 at the roof of the cavity to protect the
roof material from being contacted and dissolved by the solvent
(see, e.g., col. 4, lines 64--74).
Ans. 6-7. According to the Examiner, in the "lateral growth phase"
disclosed in Dahms, "cavity 8, and thus also the roof of the cavity, is caused
to expand laterally (i.e., horizontally)," however, "[t]he roof ... is prevented
from expanding vertically (upwardly) by the presence of the protective layer
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6[,] which prevents the solvent from contacting the roof." Id. at 7. The
Examiner states that "[ e ]xpanding the roof laterally in this manner, while
preventing vertical expansion, is considered to meet the claim 1 limitation
'controlling the geometry of the roof."' Id. The Examiner also states that
"to the extent the rejection may rely on the theory of inherency, such
reliance is proper since the potentially inherent characteristic (i.e., lateral
expansion of the roof of the cavity) necessarily flows from the explicit
teaching in Dahms (i.e., lateral expansion of the cavity)." Id. at 8.
Appellant's second argument does not apprise us of error. As to the
discussion of column 2, lines 43 to 44 and lines 53 to 56 by Appellant, we
agree with the Examiner that these are not the "only references to the
cavern's roof in Dahms." Appeal Br. 7. As noted by the Examiner, column
2, lines 34 to 36 disclose an inert fluid "fed into the cavity in order to
establish a thin layer at the roof' of the cavity, thereby "caus[ing] the cavity
to expand laterally as water is fed thereto." See Ans. 8-9. And, as further
noted by the Examiner, column 4, lines 72 to 74 discloses how thick the
layer should be in order to "protect the roof' of the cavity. See id. at 9.
Both of these disclosures relate to the relied-upon lateral growth phase in
Dahms, which precedes the phase discussed by Appellant, in which the roof
is collapsed. Compare, e.g., Dahms, 2:14--38 and 4:57-5:16 (discussing
activity prior to collapsing the roof), with id. at 2:39-56 and 5: 17-23
( discussing collapsing the roof). Appellant does not argue that the lateral
growth phase fails to satisfy the "thereby controlling" limitation. For the
reasons discussed by the Examiner as summarized above, the record here
supports the Examiner's position that the relied-upon aspects in Dahms
satisfy the "thereby controlling" limitation as construed.
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As to Appellant's assertion that the "clear intent of the present
invention" is "storing gases" (Appeal Br. 7) and that"[ o ]ne skilled in the art
would clearly see that the intention of this solution mining method is to
create an underground storage space that will have a long term commercial
use" (Reply Br. 3), claim 1 recites a "method for solution mining" and does
not recite the step of storing gases, whether or not for long-term commercial
use. See In re Self, 671 F .2d at 1348 (rejecting arguments "not based on
limitations appearing in the claims"); see also Reply Br. 3 ("It would be
clear to the skilled artisan that the intention of the instant invention is not to
merely commercially mine salt from an underground formation and then
abandon the spent cavity afterwards."). Appellant also argues that "[i]t
would be very clear to one of ordinary skill in the art that, using the
definition offered by the [E]xaminer, [ the intention of the instant invention]
would be to impact or affect the shape of the roof to create a cavern that will
not immediately collapse." Reply Br. 3. Appellant does not, however,
identify claim language that reflects this argument. See In re Self, 671 F.2d
at 1348.
As noted by Appellant, claim 1 does, however, recite an "underground
storage volume." Appeal Br. 9 (Claims App.) ( emphasis added); see Reply
Br. 3 (stating that although "the phrase 'stable salt cavern' was removed
from claim 1, the phrase 'underground storage volume' remains"). We view
the term "storage" in the phrase "underground storage volume" (recited
multiple times in claim 1) as an intended use of the "underground" "volume"
resulting from the claimed method, and thus, we view the term "storage" as
not limiting the claimed method. See In re Anderson, 662 Fed. App'x 958,
963 (Fed. Cir. 2016) (nonprecedential) (discussing how "for use" language
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Application 14/753,795
in the body of a method claim was an intended use that does not limit the
claimed method); see also Minton v. Nat 'l Ass 'n of Sec. Dealers, Inc., 336
F.3d 1373, 1381 (Fed. Cir. 2003) ("A whereby clause in a method claim is
not given weight when it simply expresses the intended result of a process
step positively recited."). Moreover, even if the term "storage" were
limiting, Appellant has not explained how the term "storage" structurally
distinguishes over the identified aspect of the prior art----cavity 8 in Dahms.
See Final Act. 5 (identifying "cavity 8" in Dahms as an "underground
storage volume"); Dahms, Figs. 1, 2.
For the reasons above, we sustain the rejection of independent claim
1. Claims 2 and 3 fall with claim 1.
Rejection 4-The Rejection of Claim 7 under 35 USC§ 103
For claim 7, the Examiner relied on Dahms in view of APA. See
Final Act. 5-6. The Examiner stated that "Dahms discloses all of the
limitations of independent claim 1" but that "Dahms does not ... explicitly
disclose a cavern having a dome shape, as recited in claim 7." Id. at 6. The
Examiner then made certain findings regarding AP A and provided a reason
to modify Dahms based on the teachings of APA. Id.
Based on the record as a whole, we do not view Appellant as
separately arguing this rejection. Although Appellant does reference
language in claim 7-such as "modified dome shape" (see Appeal Br. 5,
6}-Appellant concludes the relevant discussion by stating that "claim 1, as
currently amended, is not anticipated by, or obvious in view of, Dahms" and
that "[h]ence this rejection is improper and should be vacated." Id. at 6
( emphasis added). Moreover, even after the Examiner states, in the Answer,
that "it is not clear ... whether or not Appellant is seeking review of the
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rejection of dependent claim 7" (Ans. 9), Appellant does not discuss claim 7,
including its "modified dome shape" limitation. See Reply Br. 2--4.
Moreover, even assuming that Appellant had intended to separately
argue this rejection, Appellant does not address the rejection as articulated,
in which the Examiner relies on Dahms in view of AP A. See Final Act. 5---6.
Instead, to the extent Appellant addresses claim 7 at all, Appellant argues
that claim 7 would not have been obvious in view of Dahms alone. See
Appeal Br. 5---6; Ans. 10 ( discussing the rejection of claim 7 based on
Dahms in view of AP A and stating that Appellant has "not disputed" the
Examiner's positions).
For these reasons, we sustain the rejection of claim 7.
DECISION
We dismiss as moot the decision to provisionally reject claims 1-3
and 7 under the doctrine of obviousness-type double patenting, we reverse
the decision to reject claims 1-3 under 35 U.S.C. § 112(b), we affirm the
decision to reject claim 7 under 35 U.S.C. § 112(b ), and we affirm the
decision to reject claims 1-3 and 7 under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § I. l36(a)(l). See 37 C.F.R.
§ 1.136(a)(l)(iv); 37 C.F.R. § 41.50(±).
AFFIRMED
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