Pringle, Frank G. et al.

Patent Trials and Appeals Board

May 21, 2020

2018008974 (P.T.A.B. May. 21, 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.
12/577,330 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 Claims 2, 3, and 6‒13 are canceled or withdrawn.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.
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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
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(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
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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
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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
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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
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[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
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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
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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
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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
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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