Skye Energy Holdings, Inc.Download PDFPatent Trials and Appeals BoardAug 2, 20212021000355 (P.T.A.B. Aug. 2, 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. 14/335,765 07/18/2014 David B. Shaffer 104976.000022 1996 23377 7590 08/02/2021 BakerHostetler 2929 Arch Street Cira Centre, 12th Floor Philadelphia, PA 19104-2891 EXAMINER HINES, LATOSHA D ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 08/02/2021 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): eofficemonitor@bakerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID B. SHAFFER Appeal 2021-000355 Application 14/335,765 Technology Center 1700 ____________ Before JEFFREY T. SMITH, LILAN REN, and MERRELL C. CASHION, JR., Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge SMITH. Opinion Dissenting filed by Administrative Patent Judge REN. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 4, 8–12, and 26.2 An oral hearing was held on July 22, 2021.3 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Skye Energy Holdings, Inc. (Appeal Br. 1.) 2 The Examiner indicated that claims 25 and 27–33 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. (Final Act. 6.) 3 A written transcript of the Oral hearing will be entered into the record when the transcript is made available. Appeal 2021-000355 Application 14/335,765 2 STATEMENT OF THE CASE Appellant’s invention relates generally to systems for reducing the water content in a carbonaceous material by heating the carbonaceous material with steam at superatmospheric pressure, and cooling the carbonaceous material with water while controlling the pressure of the carbonaceous material at superatmospheric pressure. (Spec. ¶¶ 7, 12.) Independent claim 1 is representative of the appealed subject matter and is reproduced below: 1. A system, comprising, a pressure vessel adapted for reducing the water content in a carbonaceous material under superatmospheric pressure of at least 15 psig; an energy recovery tank, that is: (i) connected to the pressure vessel via a manifold and (ii) configured to store a pressurized fluid, and wherein the manifold is configured to allow passage of the pressurized fluid both from the pressure vessel to the energy recovery tank and from the energy recovery tank to the pressure vessel. Appeal Br. 14 (Claims Appendix). The Examiner maintains the following rejections:4 I. Claim 1 is rejected under pre-AIA 35 U.S.C. 103(a) as unpatentable over Garwood (US 2009/0000184 A1; published Jan. 1, 2009). 4 The complete statement of the rejections on appeal appears in the February 7, 2020 Final Action. (Final Act. 2–6.) Appeal 2021-000355 Application 14/335,765 3 II. Claims 4 and 8–12 are rejected under pre-AIA 35 U.S.C. 103(a) as unpatentable over Garwood in view of Janusch (US 4,514,912; issued May 7, 1985). III. Claim 26 is rejected under pre-AIA 35 U.S.C. 103(a) as unpatentable over Orlando (US 5,294,412; issued Mar. 15, 1994). OPINION After review of the respective positions Appellant and the Examiner provide, we determine that Appellant has demonstrated reversible error in the Examiner’s rejections under 35 U.S.C. § 103(a). We limit our discussion to independent claims 1 and 26. Rejections I and II The Examiner finds Garwood discloses production equipment for manufacturing fossil fuels. (Final Act. 3.) The Examiner finds Garwood describes a system comprising a pressure vessel (34) connected via a manifold (81) to two or more vessel tanks. (Final Act. 3.) The Examiner finds the manifold comprises a gate valve (80) which allows transfer of fluids in a controlled mass flow. (Final Act. 3; Garwood Figure 1, ¶ 37.) The Examiner determines: Garwood fails to specifically teach that the pressure vessel comprises a pressure above 15 psig. However, it would have been obvious to one having ordinary skill in the art at the time the invention that the pressure vessel of Garwood would achieve a pressure above 15 psig through routine experimentation, due to Garwood applying pressure pumps through the system to regulate the pressure. The applicant is reminded that where the general conditions of a claim are disclosed in Appeal 2021-000355 Application 14/335,765 4 the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. (Final Act. 4.) Appellant argues the Examiner has failed to explain properly how Garwood’s system renders obvious the claimed subject matter. (Appeal Br. 6.) Appellant argues Garwood teaches that, to the extent material may pass out of the blender (pressure vessel), such material is only transferred by a high pressure pump away from the blender and toward a downstream conduit for further processing, not transferred back to any blenders. (Appeal Br. 6–12.) Appellant argues the Examiner has failed to explain how the manifold (81) in the Garwood system is configured to allow passage of the pressurized fluid both from the pressure vessel to the energy recovery tank and vice versa as required by the claimed invention. (Appeal Br. 8–9.) 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). “Rejections 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 v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); 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.”). Further, the fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Appeal 2021-000355 Application 14/335,765 5 Deere Co., 383 U.S. 1, 36 (1966) (“warning against a ‘temptation to read into the prior art the teachings of the invention in issue’”)). Claim 1 recites a system comprising a pressure vessel connected to an energy recovery tank via a manifold in such a way that pressurized fluids may pass through the manifold to the pressure vessel from the energy recovery tank, and also back from the pressure vessel to the energy recovery tank. The Examiner has failed to address the claimed subject matter as a whole and instead has chosen to focus solely on the operation of a manifold that connects the various tanks. The Examiner has not identified any evidence disputing the Appellant’s position that the various pressure vessels (34) in Garwood’s system are not arranged for communication back and forth between one another. We recognize there has been substantial discussion regarding In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014) and the relevance to the claim language “manifold configured to.” (Appeal Br. 6–12; Reply Br. 5.) However, we decline to consider the applicability of Giannelli having determined that the appealed rejection cannot be sustained because Examiner has failed to consider the invention as a whole. Accordingly, we do not sustain the § 103 rejection of claims 1, 4, and 8–12 under 35 U.S.C. § 103(a) for the reasons Appellant presents and those we provide above. Rejection III Claim 26 is rejected under 35 U.S.C. § 103 as unpatentable over Orlando. Claim 26 is reproduced below: Appeal 2021-000355 Application 14/335,765 6 26. A system, comprising, a pressure vessel for reducing the water content in a carbonaceous material; a railed conveyance for moving the carbonaceous material into and out of the pressure vessel; a source of compressed gas connected to the pressure vessel; a source of steam connected to the pressure vessel; and a source of liquid water connected to the pressure vessel. Appeal Br. 15 (Claims Appendix). The Examiner’s rejection is reproduced below: Orlando discloses an apparatus comprising a vessel capable of withstanding atmospheric internal pressure (see column 6 lines 8-28), a railed conveyance for moving carbonaceous material in and out the vessel (see column 6 lines 8-28) and a first hatch in the vessel, wherein the railed conveyance may pass through and a container moving along the rail (see column 6 lines 8-28). It is noted that the content of the pressure vessel, including compressed gas, steam and liquid water, does not further limit the structure of the vessel for purposes of claiming an apparatus. As such, reducing the water content in a carbonaceous material of claim 26 is not further limiting to the apparatus. (Final Act. 6.) Appellant argues the Examiner has failed to properly articulate where Orlando teaches all of the elements of the claimed invention in the Final Office Action. (Appeal Br. 12–13.). Appellant argues specifically the Examiner has failed to identify where Orlando discloses the “source” of compressed gas, steam and liquid water. (Appeal Br. 12.) Recognizing this error, the Examiner states in the Answer: It is maintained that Orlando discloses an apparatus comprising a vessel capable of withstanding atmospheric internal pressure (see column 6 lines 8-63) through a autoclave system, wherein means for Appeal 2021-000355 Application 14/335,765 7 sterilizing through a autoclave is well known in the art (i.e. include steam, liquid, gas, etc.) (see column 4 lines 12-21), a railed conveyance for moving carbonaceous material in and out the vessel (see column 6 lines 8-28) and a first hatch in the vessel, wherein the railed conveyance may pass through and a container moving along the rail (see column 6 lines 8-28). (Ans. 13–14.) Although an autoclave is a pressurized vessel utilized for sterilizing contents, the Examiner has failed to explain where Orlando discloses connections (i.e. sources) for addition of liquid water, steam, and compressed gas to the pressurized vessel. The Examiner has also failed to indicate why it would have been obvious to one having ordinary skill in the art to include these elements. Absent adequate factual basis, the Examiner’s rationale in the Answer appears to rely on impermissible hindsight in rejecting the claims. See In re Warner, 379 F.2d 1011, 1017 (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). Thus, the Examiner has failed to explain how the elements of Orlando render the claimed subject matter unpatentable. Accordingly, we do not sustain the § 103 rejection of claim 26 under 35 U.S.C. § 103(a) for the reasons Appellant presents and those we provide above. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 103 Garwood 1 4, 8–12 103 Garwood, Janusch 4, 8–12 Appeal 2021-000355 Application 14/335,765 8 26 Orlando 26 Overall Outcome 1, 4, 8–12, 26 REVERSED Appeal 2021-000355 Application 14/335,765 9 REN, Administrative Patent Judge, dissenting. I respectfully dissent from the decision to overturn the Examiner’s rejections. Obviousness Rejection of Claim 1 Appellant argues that the Examiner reversibly erred in finding that manifold 81 and gate valve 80 of Garwood teaches or suggests the recited manifold which is “configured to allow passage of the pressurized fluid both from the pressure vessel to the energy recovery tank and from the energy recovery tank to the pressure vessel.” Appeal Br. 8. Appellant argues that the “material is only transferred in one direction” in Garwood. Id. at 8, 6 (arguing that Garwood teaches “such material is only transferred by a high pressure pump away from the blender and toward a downstream conduit for further processing, not transferred back to any blenders”). Appellant’s argument does not structurally distinguish the prior art and is unpersuasive. Paragraph 168 of the Specification, cited by Appellant as written description support for the limitation at issue (Appeal Br. 2), provides that “a manifold 602” which “may be connected to a valve 604, through which the contents of the manifold may pass.” Paragraph 168 also provides that “valve 604 may transmit fluids, such as water or steam, out of the manifold 602. Alternatively, the valve 604 may admit fluids, such as water or steam into the manifold 602.” Paragraphs 158 and 159 of the Specification, also cited by Appellant as written description support for the limitation at issue (Appeal Br. 2), additionally describe “a port or opening” which may be used to control flow. Appellant’s argument that Garwood’s Appeal 2021-000355 Application 14/335,765 10 device is used for a unidirectional flow does not structurally distinguish the prior art device and also does not adequately explain why the prior art device fails to meet the apparatus claim limitation. See Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“[A]pparatus claims cover what a device is, not what a device does.”). Appellant’s argument that manifold 81 of Garwood “does not actually connect the blender 34 to any additional blenders” (Appeal Br. 10) and that Figure 1 of Garwood only shows one vessel (id. at 6) is unpersuasive because it is unsupported by the evidence in the record. Appellant acknowledges that Garwood teaches “[w]hen vessel 34 has been substantially emptied second and third and even fourth and fifth or more vessels similar to 34 and also connected to manifold 81 and therefore conduit 38 are progressively emptied one vessel at a time.” Garwood ¶ 37 (cited in Appeal Br. 6). Whether these additional vessels are illustrated in the figures of Garwood does not remove the teaching of multiple vessels from the text of Garwood. Appellant’s argument that each of the multiple vessels in Garwood are equipped with its own manifold (Appeal Br. 10) is unpersuasive to me because the open-ended claim language does not preclude additional manifolds. Appellant’s argument that there is no apparent benefit to redesign Garwood’s device to arrive at the recited apparatus (id.) is unpersuasive to me because Appellant does not dispute the Examiner finding that the prior art device meets all the structural limitations of the apparatus claim. Compare id., with Final Act. 3-4; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would Appeal 2021-000355 Application 14/335,765 11 improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”) Whether the device in Garwood is used in the prior art process to perform the recited function does not structurally distinguish the prior art. “[T]he patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). “It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). Obviousness Rejection of Claim 265 In rejecting claim 26, the Examiner finds that the recited “a source of compressed gas connected to the pressure vessel,” “a source of steam 5 Moreover, I note that Appellant cites components 400 and 416 as written description support for both “a source of steam connected to the pressure vessel” and “a source of liquid water connected to the pressure vessel.” Appeal Br. 3. The Specification provides that component 400 “is an exemplary system . . . capable of upgrading carbonaceous materials” that includes system 416 which may comprise one or more of each of the following or combinations thereof: a water supply, a boiler, a heat exchanger, a storage tank, a slurry tank, a slurry press, a solid waste removal stream, a liquid waste removal stream, waste treatment systems, streams for transporting steam, streams for transporting water, streams for transporting slurries, and the like. Spec. ¶¶ 132, 137 (emphases added) (cited in Appeal Br. 3 as written description support). The scope of the recited sources of steam and liquid water encompassing both systems 400 and 416 which is part of system 400 and further includes anything that is “the like” of “a water supply, . . . a heat exchanger” as well as both solid and liquid waste removal streams (id. ¶ 137) is therefore ambiguous. “[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the Appeal 2021-000355 Application 14/335,765 12 connected to the pressure vessel,” and “a source of liquid water connected to the pressure vessel” “do not further limit the structure of the vessel for purposes of claiming an apparatus.” Final Act. 6. The Examiner additionally finds that Orlando teaches using steam as an input to an autoclave process. Ans. 13. Appellant, on the other hand, argues that the Examiner reversibly erred because the recited sources “are plainly structural” but does not specify what the structures are. Appeal Br. 13. Appellant does not dispute that using steam as an input is well known but argues that the Examiner’s analysis “leaves open the question of why it would have been obvious to connect a source of compressed gas, a source of steam, and a source of liquid water to an autoclave such as Orlando’s (as claim 26 would require).” Reply Br. 6 (arguing that the Examiner does not explain why a skilled artisan would have taken “the additional steps of introducing liquid water or compressed gas”). “[T]he patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure.” Catalina applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ 2d 1207, *5 (BPAI 2008) (precedential). The Specification additionally provides that system 416 may “comprise components designed to process sulfur, mercury, sodium, chlorides, arsenic, selenium, heavy metals, organic waste, inorganic waste, and other waste products” without disclosing what these components are. Spec. ¶ 138 (cited in Appeal Br. 3 as written description support). In the event that prosecution continues, I suggest that the Examiner consider whether the scope of the recited sources – to the extent that such sources may constitute a structure – is unclear. See Ex parte Miyazaki, 89 USPQ 2d 1207, *5. Appeal 2021-000355 Application 14/335,765 13 Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Appellant’s argument that system claim 26 requires “additional steps” (Reply Br. 6) over the prior art autoclave process does not structurally distinguish the prior art and is unpersuasive of reversible error to me. I consider Appellant’s argument unpersuasive also because it is incommensurate in scope with the claim language which does not require three separate sources of compressed gas, steam, and water. See Reply Br. 6 (arguing that the Examiner’s rationale “leaves open the question of why it would have been obvious to connect a source of compressed gas, a source of steam, and a source of liquid water to an autoclave such as Orlando’s (as claim 26 would require)”). Based on the foregoing, I would have affirmed both obviousness rejections and entered a new ground of rejection of claim 26 for indefiniteness. Copy with citationCopy as parenthetical citation