KERACIK, Charles Sterling.Download PDFPatent Trials and Appeals BoardOct 25, 20212020005570 (P.T.A.B. Oct. 25, 2021) 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. 14/396,572 10/23/2014 Charles Sterling Keracik 3123-00102 1135 23505 7590 10/25/2021 CONLEY ROSE, P.C. 575 N. Dairy Ashford Road Suite 1102 HOUSTON, TX 77079 EXAMINER STEIN, MICHELLE ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 10/25/2021 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): pathou@conleyrose.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHARLES STERLING KERACIK Appeal 2020-005570 Application 14/396,572 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, DONNA M. PRAISS, and MERRELL C. CASHION, JR., Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–15 and 23–27. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 In this Decision, we refer to the Specification filed Oct. 23, 2014 (“Spec.”), the Final Office Action dated Oct. 17, 2019 (“Final Act.”), the Appeal Brief filed Mar. 17, 2020 (“Appeal Br.”), the Examiner’s Answer dated May 29, 2020 (“Ans.”), and the Reply Brief filed July 23, 2020 (“Reply Br.). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Charles Sterling Keracik as the real party in interest. Appeal Br. 3. Appeal 2020-005570 Application 14/396,572 2 STATEMENT OF THE CASE The invention relates to the pyrolytic recovery of kerogen oil from shale. Spec. ¶ 1. The Specification describes kerogen as a solid hydrocarbon material which is the precursor of oil and natural gas. Id. ¶ 3. The Specification describes shale as a fine grain, organic rich sedimentary rock, which organic material is transformed into kerogen when subjected to high temperature and pressure during its burial deep within the earth’s crust. Id. According to the Specification, many shale formations outcrop at the surface which is not deep enough for the natural process of catagenesis to occur to thermally crack the kerogen material and cause the expulsion of crude oil and natural gas. Id. ¶¶ 3–4. The Specification describes most kerogen oil production utilizes combustion processes, which are mostly sub-economic and/or uncompetitive with conventional oil and gas development. Id. ¶ 7. The Specification states combustion processes have many environmental issues and typically suffer from reduced yield and produce lower American Petroleum Institute (API) gravity kerogen oil, therefore, there is a need for new methods to economically extract high quality kerogen oil from organic rich shale that are environmentally respectful. Id. ¶¶ 7–8. Independent claim 1, reproduced below from the Appeal Brief’s Claims Appendix, illustrates the subject matter on appeal (emphasis added). 1. A method for recovering hydrocarbons from shale, comprising: operating a plurality of reactors in a batch mode, wherein the reactors are configured for steam hydrolysis; charging each reactor with shale particles; cycling each reactor through phases, wherein the phases comprise: a preheating phase; Appeal 2020-005570 Application 14/396,572 3 a peak heating phase; a cooling phase; a recharge phase comprising removing spent shale particles from the reactor after the cooling phase and recharging the reactor with shale particles that have not undergone a peak heating phase and a cooling phase, wherein the spent shale particles are shale particles that have completed the peak heating phase and the cooling phase; wherein the preheating phase comprises preheating the shale particles with vapor phase effluent produced during the peak heating phase; wherein the peak heating phase comprises heating the shale particles from about 400°F to about 900°F using superheated steam, wherein the peak heating phase is configured to produce the vapor phase effluent, wherein the vapor phase effluent is configured to provide heat for the preheating phase; wherein the cooling phase comprises cooling the shale particles that have completed the peak heating phase to recover heat energy from the spent shale particles, thereby cooling the spent shale particles before they are discharged from the reactor; operating all of the plurality of reactors concurrently, such that no reactor of the plurality is in the same operating phase simultaneously; introducing, from a production facility, superheated steam, with a temperature ranging from about 750°F to 900°F, into a first reactor filled with shale particles that have been preheated to a temperature of about 400°F; heating the shale particles in the first reactor with the superheated steam to thermally crack kerogen within the shale particles, and vaporize liquid hydrocarbons that result from cracking of the kerogen, and vaporize water that is present in the shale particles, thereby producing Appeal 2020-005570 Application 14/396,572 4 the vapor phase effluent, wherein the vapor phase effluent comprises water vapor and hydrocarbon vapor; recovering heat energy remaining in the vapor phase effluent produced in the first reactor upon completion of the first reactor's peak heating phase by transferring the heat energy from the vapor phase effluent in the first reactor to a second reactor that is operating in the preheating phase, wherein a temperature in the second reactor is less than the first reactor; condensing the vapor phase effluent and producing a supply of fresh water in the second reactor; and after completing the peak heating phase of the first reactor and without an intervening phase in the first reactor: cooling the spent shale particles in the first reactor by injecting water condensed from the vapor phase effluent into the first reactor, thereby producing steam by vaporizing the water contacting the spent shale particles, in the first reactor; recovering the steam from the first reactor; heating, in the production facility, the steam recovered from the first reactor to a temperature ranging from about 750°F to about 900 °F to provide regenerated superheated steam for the peak heating phase; injecting the regenerated superheated steam into a reactor that is operating in the peak heating phase; and replenishing water, due to a production of the superheated steam, in the production facility with the supply of fresh water. Claims 11 and 25 are also independent claims directed to a method of recovering kerogen oil and hydrocarbons from shale, respectively. Appeal Br. 40–42, 43 (Claims Appendix). Like claim 1, claim 11 requires heating shale in the first reactor with superheated steam and heating shale in a second reactor by injecting water, steam, or both. Id. at 40–41. Like claim 1, Appeal 2020-005570 Application 14/396,572 5 claim 25 requires injecting superheated steam into a first reactor and cooling the shale in the first rector immediately after the injecting step. Id. at 43. ANALYSIS We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). After considering the argued claims in light of each of Appellant’s arguments, we are persuaded Appellant has identified reversible error. The Examiner rejects claims 1–15 and 23–27 as follows:3 Claim(s) 35 U.S.C. § Reference(s)/Basis 1–3, 8–10 103(a) Jones, 4 Jones, Jr.,5 Gwyn,6 Waltrip7 6, 7 103(a) Jones, Jones, Jr., Waltrip, Gwyn 3 The Examiner’s rejection of claims 1–10 and 23 under 35 U.S.C. § 112, second paragraph, stands withdrawn. Ans. 10; Final Act. 2. We consider the Examiner’s omission of Jones, Jr. and Gwyn from the stated rejections of claims 4–7 and 23, which depend from claim 1, to be harmless error because Appellant recognizes the rejections of the dependent claims are based on the rejection of claim 1. Appeal Br. 18 n.46, 47. Also, it appears that the omission of Gwyn from the rejection of claims 11–13, 15, 23–27 was error given that the Examiner relies on the reasoning presented against claims 1– 5, 9, and 10 to reject these claims and Gwyn was applied to reject those claims. Final Act. 9. 4 US 2,466,593, issued Apr. 5, 1949. 5 US 4,116,810, issued Sept. 26, 1978. 6 US 4,110,193, issued Aug. 29, 1978. 7 US 3,567,622, issued Mar. 2, 1971. Appeal 2020-005570 Application 14/396,572 6 Claim(s) 35 U.S.C. § Reference(s)/Basis 4, 5 103(a) Jones, Jones, Jr., Gwyn, Waltrip, Elliott8 11–13, 15, 23–27 103(a) Jones, Jones, Jr., Gwyn, Waltrip, Elliott, Ogorzaly9 14 103(a) Jones, Jones, Jr., Waltrip, Elliott, Ogorzaly, Gwyn Appellant argues the rejected claims in the following three groups: claims 1–10 and 23; claims 11–15 and 24; and claims 25–27. We address Appellant’s arguments below. Claims 1–10 and 23 The Examiner finds Jones teaches operating a plurality of reactors configured for steam hydrolysis in a batch mode, charging each with shale particles having a maximum dimension of 6 inches. Final Act. 3–4. The Examiner finds Jones’s reactors each undergo a cycling of a preheating phase, a peak heating phase, a cooling phase, a recharge phase (comprising removing shale particles after cooling and recharging the reactor with shale particles that have not undergone a peak heating phase and cooling phase), with all reactors operating concurrently such that no reactor is in the same operating phase simultaneously, recovering heat energy from at least a first reactor, and transferring heat energy recovered from the first reactor to a second reactor. Id. at 4. The Examiner finds Jones teaches introducing water in order to cool the spent shale and create steam, which can be fed back to 8 US 2,723,225, issued Nov. 8, 1955. 9 US 2,581,041, issued Jan. 1, 1952. Appeal 2020-005570 Application 14/396,572 7 the first reactor to provide heating for the peak heating phase. Id. The Examiner finds Jones Jr. teaches condensing water vapor to create a water supply from gaseous products of shale retort processes using shale to cool the retort product gas thus preheating the raw shale feed. Id. at 5. The Examiner determines it would have been obvious to incorporate Jones Jr.’s water vapor condensation into Jones’s second reactor for the benefit of providing a supply of water and gas circulation. Id. The Examiner finds it would have been obvious to select superheated steam at the claimed temperature to obtain Jones’s eduction temperature range and to use an appropriate preheat temperature of 550ºF as taught by Gwyn. Id. at 5–6. The Examiner finds it would have been obvious to use Waltrip’s condensed water vapor as feed to produce superheated steam to be used in the process for the benefit of reducing raw material cost. Id. at 6. According to Appellant, the Examiner erred because (1) Jones Jr. does not teach condensing water within the reactor as required by the claim, but, rather, downstream of the reactor, (2) Jones does not teach cooling the spent shale immediately following peak heating, (3) the Examiner’s rationale for utilizing Jones Jr.’s process in Jones’s reaction vessels is conclusory, (4) the combination of Jones and Jones Jr. lacks motivation because Jones Jr. utilizes a single vertical kiln and changing the communication paths increases thermal losses during operation decreasing efficiency, and (5) the combination of Jones and Jones Jr. would change Jones’s principle of operation, which is to drive hydrocarbon liquid extraction from shale particles by burning spent shale particles, by changing the pair of firing stages (retorts E and D in Jones Fig. 1) immediately following the eduction stages (retorts C and B in Jones Fig. 1). Appeal Br. 19–28. Appeal 2020-005570 Application 14/396,572 8 During examination, the Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (alteration in original)); see also, Ball Aerosol and Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (“[T]he analysis that ‘should be made explicit’ refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis.”). Appellant’s arguments persuade us that the Examiner reversibly erred in rejecting claim 1 as obvious over the modification of Jones with Jones Jr., Gwyn, and Waltrip. As Appellant points out, the Jones and Jones Jr. processes differ in a number of ways such that their combination appears to be based on impermissible hindsight. The record supports Appellant’s position that Jones’s process involves burning or combusting shale particles in the presence of fuel gas and air at a higher temperature than the eduction stages of Jones’s retorts C and B, thus Jones provides no teaching of using superheated steam and fundamentally differs from Jones Jr.’s process, which specifically avoids combustion. Appeal Br. 22–28; Reply Br. 9–11; Jones 3:20–39, Fig. 1 (retorts E, D); Jones Jr. 4:5–17. The Examiner’s responses do not adequately explain why a person having ordinary skill in the art would have modified a shale eduction process that involves combustion with a process for the pyrolysis of kerogen in shale that uses non-oxygenous gas. Ans. 11–13. Appeal 2020-005570 Application 14/396,572 9 In the Answer, the Examiner repeatedly states that it is not seen where Appellant has distinguished the process steps of the prior art from the claim language (Ans. 11, 12) and that Jones and Jones Jr. perform the same preheat, retort, cooling, and discharge steps on the same oil shale feed making them analogous (id. at 13). As Appellant contends, claim 1 requires particular process steps such as the vapor phase effluent in the first reactor is condensed to produce a supply of fresh water in the second reactor, which is not taught by the combination of Jones with Jones Jr. absent impermissible hindsight. Reply Br. 5–7; Appeal Br. 19–21. The Examiner’s reliance on Jones Jr. for this teaching (Final Act. 5) is not supported by the record because Jones Jr. does not teach condensing water within the reactor, i.e., Jones Jr.’s kiln, but rather, downstream of the kiln in Jones Jr.’s gas cooler. Jones Jr. 7:17–23, 9:12–49, Table V, Fig. 2. The Examiner’s reliance on Waltrip for the use of condensed water from the process (Final Act. 6; Ans. 11) does not cure this deficiency because Waltrip routes effluent to a downstream condenser rather than “condensing the vapor phase effluent and producing a supply of fresh water in the second reactor” as recited in claim 1. Similarly, claim 1 requires a particular process step in the first reactor of “cooling the spent shale particles” which is “after completing the peak heating phase of the first reactor and without an intervening phase in the first reactor” that is not taught by the combination of Jones with Jones Jr. absent impermissible hindsight. Appeal. Br. 38 (Claims Appendix). The Examiner relies on Jones for a peak heating phase and Jones Jr. for cooling without an intervening phase between retort and cooling. Final Act. 4. However, the preponderance of the evidence supports Appellant’s position that Jones’s Appeal 2020-005570 Application 14/396,572 10 peak temperature is achieved during combustion, and Jones Jr.’s process avoids combustion. Jones 2:10–15, 3:20–39, Fig. 1; Jones Jr. 4:5–17. Appeal Br. 24; Reply Br. 10–11. The Examiner does not address this fundamental difference between Jones and Jones Jr. raised in the Appeal Brief but, instead, the Examiner maintains the conclusory position that the references may be combined to read on the claimed process steps because they disclose “the same process steps are being performed to the same feeds, to produce the same products.” Ans. 12. The Examiner’s position is that the difference between Jones and Jones Jr. is merely performing the same steps in different reactors versus different zones arranged in a single reactor. Ans. 14. Based on this record, we are persuaded by Appellant’s argument that the combination of Jones and Jones Jr. is not sufficiently supported with reasoning having rational underpinnings. Accordingly, we reverse the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) over Jones, Jones, Jr., Gwyn, and Waltrip. We also reverse the rejection of claims 2–10 and 23 based on their dependency from claim 1. Claims 11–15 and 24 Independent claim 11 is reproduced below from the Appeal Brief’s Claims Appendix (emphasis added). 11. A method for recovering kerogen oil comprising: loading a first reactor with rubblized shale; loading a second reactor with rubblized shale; heating the rubblized shale in the first reactor during a peak heating phase to a maximum temperature for the rubblized shale in the first reactor during the method with superheated steam sourced from a production facility, to thermally crack kerogen within the rubblized shale, and vaporize liquid hydrocarbons that result from cracking of Appeal 2020-005570 Application 14/396,572 11 the kerogen, and vaporize water that is present in the shale particles, thereby producing a vapor phase effluent, wherein the vapor phase effluent comprises water vapor and hydrocarbon vapor, wherein the superheated steam has a temperature ranging from about 750°F to about 900 °F; recovering heat energy from the vapor phase effluent produced in the first reactor; transferring the heat energy recovered from the vapor phase effluent in the first reactor to the second reactor; condensing the vapor phase effluent and producing a supply of fresh water in the second reactor; collecting condensate from the second reactor, wherein the condensate comprises condensed vapor phase effluent, wherein the condensed vapor phase effluent comprises condensed water and condensed hydrocarbons; heating the rubblized shale in the second reactor to a second peak heating temperature by injecting water, steam, or both into the second reactor at a location adjacent the bottom of the second reactor, wherein the second peak heating temperature is the maximum temperature for the rubblized shale in the second reactor during the method; cooling the first reactor during a cooling phase, by injecting the condensed water from the condensate into the first reactor, thereby producing steam by vaporizing the condensed water contacting spent shale, in the first reactor, wherein the spent shale is shale that has completed the peak heating phase and the cooling phase; recovering the steam from the first reactor; heating, in the production facility, the steam recovered from the first reactor to a temperature ranging from about 750°F to about 900 °F to produce regenerated superheated steam for the peak heating phase; injecting the regenerated superheated steam into a reactor undergoing a peak heating phase; Appeal 2020-005570 Application 14/396,572 12 wherein heating the first reactor to a first peak heating temperature comprises injecting the steam to create a pressure drop between the bottom of each reactor and the top of each reactor that is equivalent to an overburden weight of overlying rubblized shale when operating at a higher temperature; recovering kerogen oil from the collected condensate; and replenishing water, due to a production of the superheated steam, in the production facility with the supply of fresh water. Appeal Br. 40–42 (Claims Appendix). Claims 12–15 and 24 depend from claim 11. Id. at 42–43. The Examiner’s rejection is based on the same findings with respect to claim 1 and the finding that Jones Jr.’s process has a retort/peak heating phase that is the maximum temperature phase. Final Act. 9. Additionally, the Examiner relies on Ogorzaly’s teaching that it is conventional to operate a shale retort in a fluidized state by flowing steam up from the bottom of the retort, which the Examiner reads on the claimed pressure drop limitation. Id. Appellant argues that the Examiner’s rejection should be reversed because (1) Jones fails to teach condensing the vapor phase effluent and producing a supply of fresh water in the second reactor as discussed above in connection with claim 1, (2) Jones does not teach eduction stage C represents the maximum temperature, (3) modifying Jones so that the peak temperature of the shale occurs during the eduction/pyrolysis stage as in Jones Jr. is based on conclusory reasoning, and (4) the proposed modification would change Jones’s principle of operation. Appeal Br. 28– 32. Appellant contends Jones subjects the educted shale particles to a pair of firing steps in retorts D and E where the temperature is raised above that in retorts B and C. Id. at 29 (citing Jones 3:20–29). Appellant argues that Appeal 2020-005570 Application 14/396,572 13 removing Jones’s firing steps of retorts D and E would be a fundamental and impermissible change of operation of Jones. Id. at 32. In the Answer, the Examiner reiterates that the difference between Jones and Jones Jr. is merely different reactors versus different zones arranged in a single reactor and finds “additional vessels may provide better control of process conditions . . . as well as additional space in order to produce a greater quantity of products.” Ans. 14. Appellant’s arguments are persuasive of reversible error. As discussed above in connection with the rejection of claim 1, based on this record, we are persuaded that the Examiner’s combination of Jones and Jones Jr. is not adequately supported by reasoning having rational underpinnings in view of a fundamental difference between Jones and Jones Jr. being that one relies on combustion and the other does not. Accordingly, we find Appellant’s arguments support a reversal of the obviousness rejection of claim 11 under 35 U.S.C. § 103(a). We also reverse the rejection of claims 12–15 and 24 based on their dependency from claim 11. Claims 25–27 Claim 25 is reproduced below from the Appeal Brief’s Claims Appendix (emphasis added). 25. A method for recovering hydrocarbons from shale, comprising: loading shale particles into a first reactor and a second reactor; injecting superheated steam into the first reactor to heat the shale particles in the first reactor to a peak temperature for the shale particles in the first reactor during the method; producing a vaporized effluent within the first reactor during the injecting; Appeal 2020-005570 Application 14/396,572 14 flowing the vaporized effluent to the second reactor; heating the shale particles in the second reactor with the vaporized effluent during the flowing; cooling the shale particles in the first reactor immediately after the injecting; and removing the shale particles from the first reactor after the cooling. Appeal Br. 43 (Claims Appendix). Claims 26 and 27 depend from claim 25. Id. at 43–44. The Examiner’s rejection is based on the same findings with respect to claim 11. Final Act. 9. The Examiner determines it would have been obvious to a person having ordinary skill in the art to use Ogorzaly’s fluidized operation to obtain the desired retort reactions. Id. Appellant argues the Examiner’s rejection should be reversed because the Examiner relies on Jones teaching the claimed “peak heating phase” when modified by Jones Jr., however, the Examiner’s reasoning to combine the references is flawed for the reasons discussed in connection with claims 1 and 11 and Gwyn, Waltrip, Elliot, and Ogorzaly do not cure the deficiency of the combination of Jones and Jones Jr. Appeal Br. 33. Appellant’s arguments are persuasive of reversible error for the same reasons discussed above in connection with claim 1. Based on this record, we are persuaded that the Examiner’s combination of Jones and Jones Jr. is not adequately supported by reasoning having rational underpinnings in view of a fundamental difference between Jones and Jones Jr. being that one relies on combustion and the other does not. Accordingly, we find Appellant’s arguments persuasive of reversible error in the obviousness rejection of claims 25 under 35 U.S.C. § 103(a). We Appeal 2020-005570 Application 14/396,572 15 also reverse the rejection of claims 26 and 27 based on their dependency from claim 25. CONCLUSION For these reasons and those provided in the Appeal Brief and the Reply Brief, we reverse the Examiner’s rejection of claims 1–15 and 23–27. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 8–10 103(a) Jones, Jones, Jr., Gwyn, Waltrip 1–3, 8–10 6, 7 103(a) Jones, Jones, Jr., Waltrip, Gwyn 6, 7 4, 5 103(a) Jones, Jones, Jr., Gwyn, Waltrip, Elliott 4, 5 11–13, 15, 23–27 103(a) Jones, Jones, Jr., Gwyn, Waltrip, Elliott, Ogorzaly 11–13, 15, 23–27 14 103(a) Jones, Jones, Jr., Waltrip, Elliott, Ogorzaly, Gwyn 14 Overall Outcome 1–15, 23– 27 REVERSED Copy with citationCopy as parenthetical citation