Michael EATON et al.

Patent Trials and Appeals Board

Dec 18, 2020

2020001511 (P.T.A.B. Dec. 18, 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.
14/845,431 09/04/2015 Michael W. EATON 2014EM220 8720
34477 7590 12/18/2020
ExxonMobil Upstream Research Company
22777 Springwoods Village Parkway
(EMHC-N1.4A.607)
Spring, TX 77389
EXAMINER
SHAO, PHILLIP Y
ART UNIT PAPER NUMBER
1776
NOTIFICATION DATE DELIVERY MODE
12/18/2020 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):
urc-mail-formalities@exxonmobil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL W. EATON and DOUGLAS J. TURNER
Appeal 2020-001511
Application 14/845,431
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
JEFFREY R. SNAY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–9. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as ExxonMobil
Upstream Research Company, which is a subsidiary of Exxon Mobil
Corporation. Appeal Br. 3.
Appeal 2020-001511
Application 14/845,431

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CLAIMED SUBJECT MATTER
The claims are directed to entraining hydrate particles in a gas stream.
Claim 1, reproduced below, is illustrative of the claimed subject matter, with
emphasis added to terms that are important to our analysis:
1. A method for entraining hydrate particles in a gas stream,
including:
separating a raw gas stream into a bulk water stream and a
partially dehydrated gas stream;
chilling the partially dehydrated gas stream to form a
chilled gas stream;
combining the bulk water stream with the chilled gas
stream to form a transport stream including the entrained hydrate
particles; and
flowing the transport stream to a facility.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Gudmundsson US 5,536,893 July 16, 1996
Amin US 2006/0260468 A1 Nov. 23, 2006
REJECTIONS
Claims 1–4, and 9 are rejected under 35 U.S.C. § 102(a)(1) as being
anticipated by Amin. Final Act. 2.
Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over
Amin. Final Act. 6.
Claims 1, and 5–7 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combined prior art of Gudmundsson and Amin. Final
Act. 7.
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Application 14/845,431

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OPINION
Appellant’s main argument is that the Examiner is taking an
unreasonably broad interpretation of the claim language “including” as well
as “combining” (Appeal Br. 5–8; generally Reply Br.). In construing claims,
“the PTO must give claims their broadest reasonable construction consistent
with the specification. . . . Therefore, we look to the specification to see if it
provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope,
a broad construction during prosecution creates no unfairness to the
applicant or patentee.” Id.2
As pointed out by the Examiner, “including” is an open-ended term
and does not preclude other unrecited method steps or elements (Ans. 12).
Notably, Appellant’s response to the Examiner’s interpretation of
“including” appears to focus on the wrong term, i.e., “including the
entrained hydrate particles” (Reply Br. 4) and not on the transitional phrase
“including” on line 1 of claim 1. Appellant may not simply declare that
claim 1 is “closed ended” during prosecution (Reply Br. 4), when Appellant
has chosen open-ended claim language. Furthermore, Appellant has not
directed us to any limiting definition in the Specification. To the contrary,

2 Cf. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (in prosecution
before the PTO “[i]t is the applicants’ burden to precisely define the
invention, not the PTO’s.”). The purpose of this requirement is to provide
the public with adequate notice of the boundaries of protection involved.
The time to do so is during prosecution where an applicant has the ability to
amend the claims to more precisely define the metes and bounds of the
claimed invention. See Ex parte Miyazaki, 89 USPQ2d 1207, 1210–12
(BPAI 2008).
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Application 14/845,431

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the Specification states that the descriptions therein are merely exemplary
and non-limiting (Spec. ¶¶ 25, 26). Thus, Appellant’s argument has not
shown error in the Examiner’s determination that claim 1 encompasses
Amin’s process (e.g., Ans. 12–15).
Appellant also argues that Amin does not disclose “combining” the
water stream with the gas stream as recited in claim 1 and dependent claim 9
(Appeal Br. 10, 11; Reply Br. 4, 6–7). This argument is not persuasive of
error, as one of ordinary skill would have reasonably interpreted
“combining” as recited in claim 1 to encompass the water and gas streams
both entering the vessel 14 as described in Amin as explained by the
Examiner (Ans. 13, 14, see also Ans. 4, 5). Appellant has not adequately
explained how these streams are not in some fashion combined since they
both enter into the same vessel 14. Furthermore, Amin explicitly teaches a
direct physical combination of at least part of the gas stream as it may be
used to atomize the water stream in the nozzles 70. Amin ¶ 62.
Thus, a preponderance of the evidence supports the Examiner’s
position that one of ordinary skill would have reasonably inferred from
Amin’s disclosure a method as claimed (e.g., Ans. 12–14)). In re Preda, 401
F.2d 825, 826 (CCPA 1968) (In determining whether a reference anticipates
the subject matter recited in a claim, “it is proper to take into account not
only specific teachings of the reference but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom.”)
Appellant has not directed our attention to persuasive reasoning or evidence
to establish that the Examiner’s interpretation of Amin’s disclosure is
unreasonable.
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Application 14/845,431

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With respect to claim 8 which recites “increasing a flow rate of the
transport stream,” Appellant’s argument that Amin only increases or
decreases a part of a stream to match another stream (Appeal Br. 14) is
unpersuasive given the breadth of the claim language. A preponderance of
the evidence supports the Examiner’s obviousness determination of this
limitation based on Amin (see, e.g., Ans. 16).
Likewise, with respect to the Examiner’s obviousness rejection of
claim 1 based on Gudmundsson with Amin, Appellant’s arguments fail to
take into account the breadth of the claim language and the applied prior art
as a whole, and thus are not persuasive of reversible error in the Examiner’s
obviousness determination for reasons similar to those above (see also Ans.
19–23).
Accordingly, all of the Examiner’s §§ 102 and 103 rejections are
affirmed.
CONCLUSION
The Examiner’s rejections are AFFIRMED.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 9 102(a)(1) Amin 1–4, 9
8 103 Amin 8
1, 5–7 103 Gudmundsson,
Amin
1, 5–7
Overall
Outcome
1–9
Appeal 2020-001511
Application 14/845,431

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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)(iv).
AFFIRMED