Pringle, Frank G. et al.Download PDFPatent Trials and Appeals BoardMay 21, 202012577330 - (D) (P.T.A.B. May. 21, 2020) 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. 12/577,330 10/12/2009 Frank G. Pringle 07037-P0001C 4039 131672 7590 05/21/2020 Whitmyer IP Group LLC 600 Summer Street 3rd Floor Stamford, CT 06901 EXAMINER VAN, QUANG T ART UNIT PAPER NUMBER 3761 MAIL DATE DELIVERY MODE 05/21/2020 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte FRANK G. PRINGLE, CARL EVERLEIGH, and JULIAN FORTHE ________________ Appeal 2018-008974 Application 12/577,330 Technology Center 3700 ____________ Before JASON V. MORGAN, LINZY T. McCARTNEY, and MATTHEW J. McNEILL, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 4, 5, and 14‒22, which are all the claims pending in this application. Claims 2, 3, and 6‒13 are canceled or withdrawn. Appeal Br. 19‒20. An oral hearing was held April 21, 2020. A transcript was entered into the record April 30, 2020. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Greentech Energy Solutions Ltd. Appeal Br. 2. Appeal 2018-008974 Application 12/577,330 2 STATEMENT OF THE CASE Introduction Appellant’s application relates to using microwave radiation to decompose compositions made of petroleum-based materials. Spec. ¶ 2. Claim 1 is illustrative of the appealed subject matter and reads as follows: 1. An apparatus for extracting a petroleum-based material from a composite comprising the petroleum-based material, comprising: a microwave radiation generator, wherein said generator is capable of applying microwave radiation characterized as having at least one frequency component within a range of from about 7.9 GHz to about 8.7 GHz; a vacuum recovery unit, wherein said unit is capable of recovering hydrocarbon products vaporized by the microwave radiation and fractionating the hydrocarbon products to separate the petroleum-based material; and at least one container to collect the petroleum-based material. The Examiner’s Rejections Claims 1, 4, and 5 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Jeambey (US 4,817,711; Apr. 4, 1989), Bridges (US 5,784,530; July 21, 1998), and Furuta (US 6,283,133 B1; Sept. 4, 2001). Final Act. 3‒4. To this combination, the Examiner adds Chemat (US 2004/0187340 A1; Sept. 30, 2004) to reject claim 14 (Final Act. 4‒5); Meek (US 4,086,813; May 2, 1978) to reject claims 15 and 16 (Final Act. 5); Openlander (US 2004/0045957 A1; Mar. 11, 2004) to reject claims 17 and 20‒22 (Final Act. 5); Stussi (US 4,318,935; Mar. 9, 1982) to reject claim 18 Appeal 2018-008974 Application 12/577,330 3 (Final Act. 6); and Sabottke (US 2007/0114177 A1; May 24, 2007) to reject claim 19 (Final Act. 6). ANALYSIS Claims 1 and 15‒22 Appellant argues the Examiner erred in rejecting claim 1 as unpatentable over Jeambey, Bridges, and Furuta. See Appeal Br. 4‒16; Reply Br. 2‒8. In particular, Appellant argues neither Jeambey nor Bridges teaches or suggests “at least one frequency component within a range of from about 7.9 GHz to about 8.7 GHz.” See Appeal Br. 4‒16; Reply Br. 2‒8. Appellant argues Jeambey teaches a frequency range from 200 kHz to 30 GHz with preferred bands of 10 MHz to 5 GHz and 750 MHz to 4 GHz. Appeal Br. 5 (citing Jeambey 53:16‒18). Appellant argues the preferred ranges do not overlap with the claimed 7.9 GHz to 8.7 GHz and, therefore, Jeambey does not teach the claimed frequency range. Id. Appellant also argues Jeambey teaches there is no optimum frequency for hydrocarbon heating in situ in the impregnated media. Id. at 5‒6 (citing Jeambey 52:65‒ 53:3). Appellant also argues Bridges does not teach the claimed frequency range. Appeal Br. 6‒10. Appellant argues Bridges teaches in its background section that direct current heating may be used to heat oil in wells, including in the microwave band of 900 MHz to 10 GHz. Id. at 6 (citing Bridges 1:44‒ 47). Appellant argues Bridges teaches direct current injection, which is different than microwave heating. Id. at 7. The Examiner finds both Jeambey and Bridges teach frequency ranges that cover the claimed 7.9 GHz to 8.7 GHz range. Ans. 4. The Examiner Appeal 2018-008974 Application 12/577,330 4 finds it was well known in the microwave heating oil arts to adjust frequency ranges depending on the viscosity of the oil and other details for a user’s specific application. Id. Appellant argues the Examiner erred in finding an ordinarily skilled artisan would have adjusted the frequency range to the claimed frequency range. See Appeal Br. 10‒11. Appellant has not persuaded us of Examiner error. The Examiner finds, and we agree, both Jeambey and Bridges teach using microwave radiation in frequency ranges that encompass the claimed frequency range and it would have been within the skill of an ordinarily skilled artisan to optimize the frequency range for a particular application. Appellant’s argument that the claimed range represents an unexpected result is unpersuasive. “A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.” In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Optimizing a result- effective variables is ordinarily not patentable. See id. at 1296. However, “[t]he outcome of optimizing a result-effective variable may still be patentable if the claimed ranges are ‘critical’ and ‘produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art.’” Id. at 1297. Appellant does not dispute that the claimed frequency range is a result-effective variable. See Appeal Br. 10‒11. Jeambey supports this conclusion by teaching that frequency ranges should be selected for a particular application based on a number of factors. See Jeambey 53:4‒65. Instead of disputing that the frequency range is a result-effective variable, Appellant argues the claimed range is critical and reflects the Appeal 2018-008974 Application 12/577,330 5 unexpected result that, contrary to conventional wisdom and the teachings of Bridges, it is possible to use microwave radiation to efficiently and economically extract oil from a formation using a frequency range of about 7.9 GHz to about 8.7 GHz. See Appeal Br. 10‒11 (citing January 1, 2017 Everleigh Declaration). Appellant supports its argument that the claimed range represents an unexpected result by citing the testimony of Carl Everleigh. See id. Mr. Everleigh testified that experiments were conducted to determine whether the viscosity of heavy oil could be reduced using microwave frequencies and, if so, which frequencies were optimal. Everleigh Decl. ¶ 4. Mr. Everleigh testifies about the details of the testing procedure and indicates that the results indicated peak frequencies were determined to be 7.9 to 8.7 GHz. Id. ¶ 5. Mr. Everleigh testifies that “the results from the experiments demonstrated the unexpected result that the viscosity of heavy oil could be reduced using specific microwave frequencies. Further, the results from the experiments demonstrated the unexpected result that the optimum range in frequencies that reduce the viscosity of heavy oil is 7.9 to 8.7 GHz.” Id. ¶ 6. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). Mr. Everleigh’s testimony is unpersuasive of unexpected results because it does not compare the results obtained with the expected results based on the teachings of the prior art, which identify frequency ranges that encompass the claimed range. Mr. Everleigh’s only testimony regarding the unexpected Appeal 2018-008974 Application 12/577,330 6 nature of the results is conclusory in nature, not explaining how or why the results are unexpected or making any detailed comparison to expectations. See Everleigh Decl. ¶¶ 5‒6. Appellant also supports the unexpected results argument by citing Bridges’s teaching that using microwave radiation generators was well known in the art, but costly and inefficient. See Appeal Br. 10‒11 (citing Bridges 1:58‒2:15). Bridges teaches an improvement using direct heating of wells, but this improvement requires vertical wells to be redesigned and tailored for horizontal completion. See Bridges 2:47‒4:39. Thus, while Bridges teaches an improvement in some circumstances, it does not teach that the existing techniques are obsolete in all circumstances. Moreover, Bridges teaches that these techniques were well known in the art, which supports the Examiner’s finding that an ordinarily skilled artisan would have known to use frequencies within the taught ranges. The Specification also does not support Appellant’s argument that its claim range is “critical” and demonstrates “unexpected results.” In particular, the Specification discloses [p]referably, the pre-selected microwave radiation frequency will be the resonating microwave frequency, i.e[.], the microwave radiation frequency at which the composite absorbs a maximum amount of microwave radiation. It has been determined that different composites of the present invention will absorb more or less microwave radiation, depending on the frequency of the microwave radiation applied. It has also been determined that the frequency at which maximum microwave radiation is absorbed differs by composite. Spec. ¶ 71. The Specification further explains that Appeal 2018-008974 Application 12/577,330 7 [b]y using methods known in the art, a composite of the present invention can be subjected to different frequencies of microwave radiation and the relative amounts of microwave radiation absorbed can be determined. Preferably, the microwave radiation selected is the frequency that comparatively results in the greatest amount of microwave radiation absorption. Id. Thus, according to the Specification, an ordinarily skilled artisan would have known how to determine the optimal frequency for a particular application. Appellant also argues the Examiner erred in finding an ordinarily skilled artisan would have been motivated to combine the references as proposed. See Appeal Br. 13‒16. Appellant alleges the motivation offered by the Examiner represents impermissible hindsight (id. at 13), there is no reason to modify Jeambey (id. at 14), and the references teach away from the claimed invention (id. at 14‒15). These arguments all rely on the same rationale as discussed above with respect to the claimed frequency range and are unpersuasive for the same reasons. We, therefore, sustain the Examiner’s rejection of independent claim 1 as unpatentable over Jeambey, Bridges, and Furuta. We also sustain the obviousness rejection of dependent claims 15‒22, for which Appellant provides no separate argument. See Appeal Br. 16‒17. Claim 4 Claim 4 recites “[t]he apparatus of claim 1, wherein the microwave radiation generator is capable of applying a sweeping range of microwave radiation frequencies.” Appellant argues the Examiner erred in rejecting claim 4 as unpatentable over Jeambey, Bridges, and Furuta. See Appeal Br. 16. In particular, Appellant argues the Examiner has not identified any Appeal 2018-008974 Application 12/577,330 8 portion of the cited references that teaches a microwave radiation generator that is capable of applying a sweeping range of microwave radiation frequencies and the references fail to teach such a generator. Id. Appellant has not persuaded us of Examiner error. The Examiner finds, and we agree, Jeambey and Bridges teach microwave radiation generators that are capable of applying frequencies that cover wide ranges, including 300 kHz to 30 GHz for Jeambey and 4 GHz to 18 GHz for Bridges. Ans. 7. Appellant has not persuasively identified error in the Examiner’s findings. We, therefore, sustain the Examiner’s rejection of claim 4 as unpatentable over Jeambey, Bridges, and Furuta. Claim 5 Claim 5 recites “[t]he apparatus of claim 1, wherein the microwave radiation generator is only capable of emitting microwave frequencies within a C-Band frequency range and an X-Band frequency range.” The Examiner finds Jeambey and Bridges teach or suggest a microwave radiation generator that is capable of emitting microwave frequencies in the C-band (4 8 GHz) and X-band (8 ‒12 GHz). Ans. 7. The Examiner notes that “the term ‘capable’ is not a positive recitation in the claims and has not been given much patentable weight.” Id. (emphasis omitted). Appellant argues the Examiner erred in rejecting claim 5 as unpatentable over Jeambey, Bridges, and Furuta. See Appeal Br. 16‒17; Reply Br. 8‒9. In particular, Appellant argues claim 5 requires that the microwave radiation generator is only capable of emitting microwave frequencies in the C- and X-bands. See Appeal Br. 16‒17; Reply Br. 14‒15. Appellant argues the Examiner has not established that the cited references Appeal 2018-008974 Application 12/577,330 9 are only capable of emitting microwave frequencies in the claimed ranges. See id. Appellant has persuaded us of Examiner error. The Examiner has not identified, nor have we found, any teachings in the cited references that indicate that the cited microwave radiation generator is “only capable of emitting microwave frequencies within” the cited frequency ranges. We, therefore, do not sustain the Examiner’s rejection of claim 5 as unpatentable over Jeambey, Bridges, and Furuta. Claim 14 Claim 14 recites “[t]he apparatus of claim 1, further comprising an infrared thermocouple for said composite.” Appellant argues the Examiner erred in rejecting claim 14 as unpatentable over Jeambey, Bridges, Furuta, and Chemat. See Appeal Br. 17. In particular, Appellant argues Chemat does not teach or suggest a thermocouple as recited in the claims. Id. According to Appellant, Chemat teaches an infrared sensor used with a microwave oven, which has a frequency of 2.45 GHz and is, therefore, not necessarily compatible with the presently claimed invention. Id. Appellant also argues Chemat does not specifically disclose that its infrared sensor is a thermocouple as claimed. Id. Appellant has not persuaded us of Examiner error. The Examiner finds, and we agree, Chemat teaches an infrared sensor used to detect temperatures. Ans. 7‒8 (citing Chemat ¶ 47). The Examiner finds that an infrared thermocouple is a device to detect the temperature of an object, while an infrared sensor is a device used to sense certain characteristics of its surroundings by emitting or detecting infrared radiation. Id. The Examiner finds an infrared sensor may be capable of measuring the heat emitted by an Appeal 2018-008974 Application 12/577,330 10 object, which is the case in Chemat’s teaching of an infrared sensor that detects temperature. Id. Appellant has not persuaded us of Examiner error because we agree with the Examiner that an ordinarily skilled artisan would have recognized that Chemat’s infrared sensor that detects temperature may be any of a number of sensors, including an infrared thermocouple. Further, claim 14 does not provide any additional detail regarding the infrared thermocouple to distinguish it from Chemat’s infrared sensor. We, therefore, sustain the Examiner’s rejection of claim 14 as unpatentable over Jeambey, Bridges, Furuta, and Chemat. CONCLUSION We reverse the Examiner’s decision rejecting claim 5 under pre-AIA 35 U.S.C. § 103(a). We affirm the Examiner’s decision rejecting claims 1, 4, and 14‒22 under pre-AIA 35 U.S.C. § 103(a). DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References Affirmed Reversed 1, 4, 5 103(a) Jeambey, Bridges, Furuta 1, 4 5 14 103(a) Jeambey, Bridges, Furuta, Chemat 14 15, 16 103(a) Jeambey, Bridges, Furuta, Meek 15, 16 17, 20‒22 103(a) Jeambey, Bridges, Furuta, Openlander 17, 20‒22 Appeal 2018-008974 Application 12/577,330 11 18 103(a) Jeambey, Bridges, Furuta, Stussi 18 19 103(a) Jeambey, Bridges, Furuta, Sabottke 19 Overall Outcome 1, 4, 14‒22 5 FINALITY AND RESPONSE 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. § 41.50(f). AFFIRMED IN PART Copy with citationCopy as parenthetical citation