Jose Lourenco et al.

Patent Trials and Appeals Board

May 15, 2020

12303956 - (D) (P.T.A.B. May. 15, 2020)

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.
12/303,956 12/08/2008 Jose Lourenco THAS132280 1797
26389 7590 05/15/2020
CHRISTENSEN O'CONNOR JOHNSON KINDNESS PLLC
1201 Third Avenue
Suite 3600
Seattle, WA 98101
EXAMINER
ZEC, FILIP
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
05/15/2020 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):
efiling@cojk.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSE LOURENCO and MacKENZIE MILLAR

Appeal 2019-006234
Application 12/303,956
Technology Center 3700
____________

Before MICHAEL J. FITZPATRICK, ERIC C. JESCHKE, and
AMANDA F. WIEKER, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 8, 9, and 11–13. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies two real parties in interest: 1304338 ALBERTA LTD.
and 1304342 ALBERTA LTD. Appeal Br. 3.
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STATEMENT OF THE CASE
The Specification
The Specification “relates to a method for re-gasification of liquid
natural gas” or LNG for short. Spec. 1:5.
The Claims
Claims 8, 9, and 11–13 are rejected. Final Act. 1. No other claims are
pending. Id. Claim 8, the sole independent claim, is reproduced below.
8. A method of regasification of natural gas,
comprising the steps of:
positioning a storage vessel of liquid natural gas at a
facility that has more than one refrigeration units and
connecting the storage vessel to a heat exchanger comprising a
primary fluid flow path connected to the storage vessel and a
plurality of secondary fluid flow paths spaced in series along
the primary fluid flow path in the heat exchanger, wherein each
refrigeration unit is connected to a secondary fluid flow path of
the plurality of secondary fluid flow paths and wherein the
secondary fluid flow paths are mutually separate and distinct;
circulating a heat transfer medium in a closed loop
between the respective refrigeration unit and the respective
secondary fluid flow path in the heat exchanger, the closed loop
comprising a first portion that cools the respective refrigeration
unit and a second portion that is connected to the respective
secondary fluid flow path in the heat exchanger;
via the heat exchanger, connecting the storage vessel to a
destination, the destination comprising one of natural gas fuel
burners related to operation of the facility and a gas main
distribution network supplying gas to third party gas
consumers; and
passing liquid natural gas from the storage vessel along
the primary fluid flow path of the heat exchanger to the
destination such that a heat exchange takes place between the
liquid natural gas and the heat transfer medium that raises the
temperature of the liquid natural gas, changing the liquid
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natural gas from a liquid phase to a gaseous phase, and lowers
the temperature of the heat transfer medium going to each of
the refrigeration units to maintain a temperature of the more
than one refrigeration units at above cryogenic temperatures but
below freezing, the temperature of the more than one
refrigeration units being successively warmer in the direction of
flow of the liquid natural gas, the gaseous phase natural gas
passing from the heat exchanger to the destination, and the
temperature of the heat transfer medium being lowered
exclusively by the liquid natural gas in the heat exchanger.
Appeal Br. 14–15.
The Examiner’s Rejection
The rejection before us is the Specification as filed lacks an adequate
written description of claims 8, 9, and 11–13 in violation of 35 U.S.C.
§ 112 ¶1. Final Act. 2.
DISCUSSION
Section 112 ¶1 states the following:
The specification shall contain a written description of the
invention, and of the manner and process of making and using it,
in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor or joint
inventor of carrying out the invention.
35 U.S.C. § 112 ¶1.
The Examiner’s rejection is based on the written description, not the
enablement, requirement of § 112 ¶1. Final Act. 2; see also Ariad Pharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1344 (Fed. Cir. 2010) (en banc)
(holding that the written description of the invention and enablement of the
invention are separate requirements of identically-worded predecessor
statute, 35 U.S.C. § 112 ¶1.). Whether the Specification as filed contains a
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written description of the claims is a question of fact. Ariad Pharms., 598
F.3d at 1355. Specifically, the question asks “whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id. at 1351.
All Claims
The Examiner found that the Specification as filed lack an adequate
written description of “the temperature of the heat transfer medium being
lowered exclusively by the liquid natural gas in the heat exchanger,” as
recited in claim 8. Final Act. 3 (Examiner’s emphasis).
Appellant argues that “the specification provides explicit support” for
the “exclusively” feature because, in Figure 1, “no other source of cooling is
shown.” Appeal Br. 9. This argument does not apprise us of error. That the
Specification does not explicitly describe other forms of cooling is not the
same as an explicit description excluding other forms of cooling. “Negative
claim limitations are adequately supported when the specification describes
a reason to exclude the relevant limitation.” Santarus, Inc. v. Par Pharm.,
Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012); see also Inphi Corp. v. Netlist,
Inc., 805 F.3d 1350, 1356 (Fed. Cir. 2015) (“When viewed in its proper
context, Santarus simply reflects the fact that the specification need only
satisfy the requirements of § 112, paragraph 1 as described in this court's
existing jurisprudence, including through compliance with MPEP
§ 2173.05(i) (‘If alternative elements are positively recited in the
specification, they may be explicitly excluded in the claims.’) and In re
Johnson, 558 F.2d [1008,] 1018 [(CCPA 1977)] (‘It is for the inventor to
decide what bounds of protection he will seek.’).”). Omitting something
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from the Specification -- here, additional forms of cooling -- does not
provide a reason to exclude it.
Appellant next argues that the negative limitation “is also implied or
inherent elsewhere in the specification as filed.” Appeal Br. 9. Appellant
explains:
It is clear that a main purpose of the described method is to re-
gasify LNG in such a way that the cold energy stored therein is
captured, and in particular, by using LNG to maintain low
temperatures in refrigeration units. Accordingly, using an
alternate source of cooling would be less efficient as it would
reduce the amount of LNG that could be re-gasified, and require
additional energy to generate the additional source of cooling.
As such, it is clear that, in a preferred implementation, the re-
gasification of LNG would be the only source of cooling.
Appeal Br. 9–10 (citing Spec. 1:11, 3:30–31). Appellant’s argument does
not adequately support its conclusion. The Examiner concedes that “having
other cooling sources could potentially reduce the amount of LNG being re-
gasified.” Ans. 4. However, we agree with the Examiner that this fact does
not mean the Specification describes an exclusion of such other cooling
sources. See id. (“There could be other sources of cooling to reduce the
temperature of the heat transfer medium.”); see also Ariad Pharms., 598
F.3d at 1352 (“[A] description that merely renders the invention obvious
does not satisfy the requirement.”). And there are reasons why an additional
cooling source could be used as part of Appellant’s described invention. For
example, if a refrigeration unit were not being cooled sufficiently by the
LNG in the heat exchanger, a supplemental cooling source could be applied
to the heat transfer medium. See Spec. 4:24–27 (“[T]he needs of the facility
may vary depending upon the type of facility, the season and the cooperation
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one may obtain from companies controlling natural gas distribution
networks providing gaseous phase natural gas to other consumers.”).
Appellant argues that “an objective is to ‘control and match the usage
patterns of LNG with cryogenic energy patterns.’” Appeal Br. 10 (quoting
Spec. 3:12–13). Thus, according to Appellant, “[i]f one were to match the
amount of LNG that is to be re-gasified with the refrigeration requirements
of the refrigeration units a production facility, there would be no need to
provide any additional source of refrigeration.” Id. However, just because
something is an objective, does not mean it is a feature. In fact, the cited
disclosure somewhat cuts against Appellant’s position because it implies that
the method might not control and match the usage patterns of LNG with
cryogenic energy patterns.
Appellant further argues that, in one embodiment, “a facility is
described that has ‘substantial cooling needs, but is unable to consume all of
the gaseous phase natural gas that is produced.’ (See page 4, lines 29–30.)
In other words, . . . excess natural gas is re-gasified from LNG.” Appeal
Br. 10. Appellant argues that this implies that there would not be any other
cooling sources. Id. The Examiner responds that excess gasification of
LNG is not inconsistent with the use of supplemental cooling sources.
Ans. 4–5 (“The fact that there is excess LNG [being re-gasified] indicates
that there is a great amount of thermal load. With or without additional
cooling sources, if the heat load exceeds the capacity of other cooling
sources, this would still generate excess gasified natural gas.”). The
Examiner is correct. Further, an excess of re-gasified natural gas is not
merely dependent on the production of re-gasified natural gas; by definition,
it is also dependent on the consumption of re-gasified natural gas.
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On reply, Appellant cites Figure 2 of the Specification, which “is an
enlarged schematic diagram of the liquid natural gas re-gasification portion
of FIG. 1.” Spec. 2:9–10. Appellant argues that “Figure 2 . . . shows the
heat transfer medium flow paths” but not additional/supplemental cooling
sources. Reply Br. 2–4. This argument does not apprise us of error. As
stated above, omitting something from the Specification -- here, additional
forms of cooling in Figure 2 -- does not provide a reason to exclude it and,
thus, does not support a negative limitation excluding the same. See
Santarus, 694 F.3d at 1351.
Appellant has not apprised us of error in the Examiner’s written
description rejection of claims 8, 9, and 11–13 based on the word
“exclusively.” Accordingly, we affirm the rejection.
Claim 12
The Examiner rejected claim 12 under 35 U.S.C. § 112 ¶1 for the
additional reason that the Specification as filed lacks an adequate written
description of “the rate of gasification of the liquid natural gas and the rate
of flow from the storage vessel being determined by the temperatures being
maintained in the more than one refrigeration unit.” Final Act. 3.
Appellant argues:
[S]upport for this language can be found at page 3, lines 12–13,
which states that, in re-gasifying LNG by providing
refrigeration, an objective is to “control and match the usage
patterns of LNG with cryogenic energy patterns” and at page 3,
lines 27–28, which states that, with reference to the coolant
stream for each section, “[the] temperature control in each stream
is controlled by the circulation flow rate.” A person of ordinary
skill would have understood at the time of the invention that the
rate of gasification of LNG is determined by the thermal energy
that is transferred to the LNG. Based on the specification as
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filed, this occurs in the heat exchanger, which is warmed by heat
transfer fluid circulated to the refrigeration units.
Appeal Br. 12.
The Examiner answers this argument by pointing out that Appellant’s
first citation regarding “cryogenic energy patterns” does not provide support
for the limitation in question because claim 12 is directed to “refrigeration
units at above cryogenic temperatures.” Ans. 6 (quoting claim 8, from
which claim 12 depends). The Examiner further answers Appellant’s
argument by pointing out that Appellant’s second citation regarding “the
circulation flow rate” also does not adequately support the limitation in
question because “the circulation flow rate” refers to the heat transfer
medium, not the flow rate of LNG from the storage vessel. Ans. 6–7.
Appellant filed a Reply Brief but it does not rebut or otherwise address the
Examiner’s Answer with respect to claim 12. See generally Reply Br. On
the record presented, the Examiner has the better position.
Accordingly, we additionally affirm the Examiner’s written
description rejection of claim 12 based on the limitation “the rate of
gasification of the liquid natural gas and the rate of flow from the storage
vessel being determined by the temperatures being maintained in the more
than one refrigeration unit.”
Claim 13
The Examiner rejected claim 13 under 35 U.S.C. § 112 ¶1 for the
additional reason that the Specification as filed lacks an adequate written
description of “the more than one refrigeration units are thermally isolated
from each other.” Final Act. 3 (emphasis added). “[T]he terms ‘isolated’
and ‘thermally’ were not found in the originally filed specification.” Id.
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The Examiner acknowledged that a related term, “insulated,” appears in
paragraph 14 of the Specification but only in describing the storage vessel
for the LNG. Id.
Appellant argues that this limitation is supported by the
Specification’s description of “refrigeration units that are maintained at
different temperatures,” which “inherently requires (as a person of ordinary
skill would have understood at the time of the invention) the refrigeration
units to be thermally isolated in order to maintain the different
temperatures.” Appeal Br. 13 (citing Spec. 2:22–24). Appellant further
argues that Figure “1 shows units 48, 50, and 52 being spaced apart, and a
person of ordinary skill would have understood that physical separation
results in thermal isolation between the refrigeration units.” Id.
The Examiner responds that thermal isolation is not inherent to
refrigeration units being maintained at different temperatures. Ans. 8 (citing
US 2016/0178264 A1). The Examiner further responds that Appellant’s
Figure 1 drawing of refrigeration units as separate boxes with spacing
therebetween does not support the claimed feature of thermal isolation. Id.
at 7–8. Appellant filed a Reply Brief but it does not rebut or otherwise
address the Examiner’s Answer with respect to claim 13. See generally
Reply Br. On the record presented, the Examiner has the better position.
Accordingly, we additionally affirm the Examiner’s written
description rejection of claim 13 based on the limitation “the more than one
refrigeration units are thermally isolated from each other.”
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SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8, 9, 11–13 112 ¶1 Written
Description
8, 9, 11–13

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED