Skye Energy Holdings, Inc.

Patent Trials and Appeals Board

Aug 2, 2021

2021000355 (P.T.A.B. Aug. 2, 2021)

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.
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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.)
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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
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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
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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:
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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
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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
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26 Orlando 26
Overall
Outcome
1, 4, 8–12,
26

REVERSED

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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
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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
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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
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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.
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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.