13295601 - (D) (P.T.A.B. May. 29, 2020)

Prim, Eric

Patent Trials and Appeals BoardMay 29, 2020

13295601 - (D) (P.T.A.B. May. 29, 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. 13/295,601 11/14/2011 Eric Prim 2103-01502 7723 30652 7590 05/29/2020 CONLEY ROSE, P.C. 5601 GRANITE PARKWAY, SUITE 500 PLANO, TX 75024 EXAMINER KING, BRIAN M ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 05/29/2020 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): DallasPatents@dfw.conleyrose.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ERIC PRIM ____________________ Appeal 2019-005274 Application 13/295,601 Technology Center 3700 ____________________ Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and SEAN P. O’HANLON, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–3, 8, 10, 15, 19–23, 46–53, and 63–65 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 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 Pilot Energy Solutions, LLC. Appeal Br. 3. 2 The Examiner withdrew a rejection of claims 1–3, 8, 10, 15, 19–23, 46–53, and 63–65 under 35 U.S.C. § 103(a) as unpatentable over Menzel (US 2011/0041550 A1, pub. Feb. 24, 2011), Campbell (US 4,854,955, iss. Aug. 8, 1989), Mak (US 2008/0264100 A1, pub. Oct. 30, 2008), Nagelvoort Appeal 2019-005274 Application 13/295,601 2 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A process comprising: receiving a hydrocarbon feed stream from a subterranean formation, the hydrocarbon feed stream having an energy content from about 900 British thermal units per cubic foot (Btu/ft3) to about 1,800 Btu/ft3, and the hydrocarbon feed stream comprising both a liquid phase and a gas phase such that a vapor fraction of the hydrocarbon feed stream is between zero and one; separating the hydrocarbon feed stream into a top effluent stream and a liquefied petroleum gas-rich (LPG-rich) stream using process equipment comprising only one multi- stage separation column, the hydrocarbon feed stream comprising methane, ethane, propane, and nitrogen, the LPG- rich stream comprising less than or equal to about 3 molar percent of the methane in the hydrocarbon feed stream, the LPG-rich stream comprising from about 40 molar percent to about 50 molar percent of the ethane in the hydrocarbon feed stream, the LPG-rich stream comprising greater than or equal to about 85 molar percent of the propane in the hydrocarbon feed stream, the LPG-rich stream comprising none of the nitrogen in the hydrocarbon feed stream, the LPG-rich stream having a vapor pressure from about 200 pounds per a square inch gauge (psig) to about 300 psig, and the LPG-rich stream comprising only the liquid phase such that a vapor fraction of the LPG-rich stream is zero; cooling the top effluent stream from the multi-stage separation column in a first heat exchanger using an expanded natural gas-rich stream to create a partially condensed stream comprising a vapor portion and a liquid portion, the expanded natural gas-rich stream comprising greater than or equal to about 97 molar percent of the methane in the hydrocarbon feed (US 5,960,644, iss. Oct. 5, 1999), Amin (US 2004/0187686 A1, pub. Sept. 30, 2004), Johnson (US 5,309,720, iss. May 10, 1994), and Bacon (US 4,128,410, iss. Dec. 5, 1978). Ans. 4; see Non-Final Act. 3–39. Appeal 2019-005274 Application 13/295,601 3 stream, the expanded natural gas-rich stream comprising from about 50 molar percent to about 60 molar percent of the ethane in the hydrocarbon feed stream, the expanded natural gas-rich stream comprising less than or equal to about 15 molar percent of the propane in the hydrocarbon feed stream, and the expanded natural gas-rich stream comprising all of the nitrogen in the hydrocarbon feed stream; separating the vapor portion from the liquid portion in a single stage separator that receives the partially condensed stream from the first heat exchanger; expanding the vapor portion from the single stage separator in an expander to produce the expanded natural gas- rich stream that is fed to the first heat exchanger, the expander reducing a pressure of the vapor portion, the expander being downstream from the multi-stage separation column, the expander comprising a Joules-Thompson (JT) expander, and the JT expander receiving the vapor portion from the single stage separator and feeding the expanded natural gas-rich stream to the first heat exchanger; passing the liquid portion from the single stage separator to the one multi-stage separation column as reflux; heating the expanded natural gas-rich stream in the first heat exchanger using the top effluent from the multi-stage separation column; passing the expanded natural gas-rich stream from the first heat exchanger to a second heat exchanger; cooling the hydrocarbon feed stream in the second heat exchanger using the expanded natural gas-rich stream; feeding the hydrocarbon feed stream to the one multi- stage separation column, the one multi-stage separation column comprising three input streams, and the three input streams comprising the hydrocarbon feed stream, the reflux from the single stage separator, and a boil-up stream from a reboiler; and passing the expanded natural gas-rich stream from the second heat exchanger to a compressor that compresses the expanded natural gas-rich stream to form a compressed natural gas-rich stream, the compressed natural gas stream comprising only the gas phase such that a vapor fraction of the natural gas- rich stream is one. Appeal 2019-005274 Application 13/295,601 4 OPINION The fundamental factual inquiry for ascertaining compliance with the written description requirement is 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. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “This inquiry . . . is a question of fact,” and “the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. “[T]he specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. Independent claims 1 and 15 recite “the hydrocarbon feed stream comprising both a liquid phase and a gas phase such that a vapor fraction of the hydrocarbon feed stream is between zero and one.” Appeal Br. 27, 32 (Claims App.). Independent claims 8 and 21 similarly recite “the unprocessed natural gas stream comprising both a liquid phase and a gas phase such that a vapor fraction of the unprocessed natural gas stream is between zero and one.” Id. at 29, 35. The Examiner finds that Appellant’s Specification fails to provide adequate written description support for these limitations. Non-Final Act. 2–3. The Examiner explains that, “[w]hile applicant does have support for liquid and gas being present at some point in the hydrocarbon feed stream, there is no support for having such a broad range of vapor fraction.” Id. at 2, 3; see also id. at 3 (explaining that, “[w]hile applicant does have support for liquid and gas being present at some point in the unprocessed natural gas stream, there is no support for Appeal 2019-005274 Application 13/295,601 5 having such a broad range of vapor fraction”). The Examiner also explains that the limitation in question “encompasses all vapor fraction from zero to one, not just the narrow range [for which] Appellant has support from 0.9219 to 0.9458 and a[s] such the limitation as claimed provides for a broader recitation than that supported by Appellant’s specification.” Ans. 5. Appellant argues that “a person of ordinary skill in the art would recognize that the inventor had possession of the claimed concepts.” Appeal Br. 18. Appellant points to paragraph 27 of the Specification and asserts that a person of skill in the art would “recognize[] that a hydrocarbon feed stream being in a combination of liquid and vapor states means that the hydrocarbon feed stream has a vapor fraction that is between zero and one.” Reply Br. 2; see also Appeal Br. 18 (asserting that “[a] vapor fraction between zero and one means that a stream is a combination of vapor phase and liquid phase”). We agree with Appellant that the Specification provides support for the limitation in question sufficient to satisfy the written description requirement of 35 U.S.C. § 112, first paragraph. In particular, the Specification describes that “[t]he hydrocarbon feed stream may be in any state including a liquid state, a vapor state, or a combination of liquid and vapor states.” Spec. ¶ 27. Given that a liquid state has a vapor fraction of zero (i.e., no vapor), and a vapor state has a vapor fraction of one (i.e., all vapor), a combination of liquid and vapor states would have a vapor fraction between zero and one. Further, the Specification states that the hydrocarbon feed stream may be in any of these states, thereby conveying inclusion of the full range of vapor states between zero and one. Thus, the present application conveys with reasonable clarity that, as of the filing date of the Appeal 2019-005274 Application 13/295,601 6 present application, Appellant was in possession of a process and an apparatus that use a hydrocarbon feed stream (or unprocessed natural gas stream3) having a vapor fraction “between zero and one,” as recited in the claims. Accordingly, we do not sustain the Examiner’s rejection of claims 1–3, 8, 10, 15, 19–23, 46–53, and 63–65 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–3, 8, 10, 15, 19–23, 46–53, 63–65 112, first paragraph Written Description 1–3, 8, 10, 15, 19–23, 46–53, 63–65 REVERSED 3 “We understand the “unprocessed natural gas stream” recited in claims 8 and 21 to be a type of hydrocarbon feed stream, as there is no indication in the record before us that the “unprocessed natural gas stream” recited in claims 8 and 21 is anything other than one type of hydrocarbon feed stream.