8 RIVERS CAPITAL, LLC

Patent Trials and Appeals Board

Nov 22, 2021

2021002734 (P.T.A.B. Nov. 22, 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.
15/492,376 04/20/2017 Brock Alan Forrest P62622 1540US.1 (0429.2) 8184
26158 7590 11/22/2021
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
NG, HENRY
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
11/22/2021 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):
BostonDocket@wbd-us.com
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BROCK ALAN FORREST, JEREMY ERON FETVEDT, and
PETER MICHAEL McGRODDY
Appeal 2021-002734
Application 15/492,376
Technology Center 3700

Before BENJAMIN D. M. WOOD, MICHAEL J. FITZPATRICK, and
JEREMY M. PLENZLER, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4, 16, 17, and 20. Final Act. 1
(Summary). Claims 3, 5–15, 18, 19, and 21–26 have been withdrawn. Id.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42(a).
Appellant identifies the real party in interest as 8 Rivers Capital, LLC.
Appeal Br. 1.
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Application 15/492,376

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CLAIMED SUBJECT MATTER
The claims are directed to systems and methods for producing power
by thermally oxidizing a dilute hydrocarbon stream without substantial
combustion. Spec. 1:28–31. Claims 1 and 17 are independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for power production comprising: carrying out a
closed or semi-closed power production cycle wherein:
CO2 is circulated as a working fluid that is repeatedly
compressed and expanded for power production;
a first fuel source is combusted in a combustor to heat the
working fluid after the working fluid is compressed and before
the working fluid is expanded for power production; and
a recuperator heat exchanger is used to re-capture heat of
combustion for heating of the working fluid; and
heating the working fluid with heat that is formed outside of
the combustor using a second fuel source, said heating being in
addition to the re-captured heat of combustion, and said second
fuel source being a dilute hydrocarbon stream that is oxidized
without substantial combustion to provide the heat that is
formed outside of the combustor.
Appeal Br. 23 (Claims App.).

REFERENCES
Name Reference Date
Kesseli US 6,895,760 B2 May 24, 2005
White US 7,640,739 B2 Jan. 5, 2010
Allam US 2011/0179799 A1 July 28, 2011
Mittricker US 2014/0013766 A1 Jan. 16, 2014

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Application 15/492,376

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REJECTIONS
Claims Rejected 35 U.S.C. § References
1, 2, 4, 17, 20 103 Allam, Kesseli, White
16 103 Allam, Kesseli, White,
Mittricker

OPINION
Claims 1, 2, 4, 17, and 20—§ 103—Allam, Kesseli, and White
Claim 1
The Examiner relies on Allam to teach most of the limitations of
independent claim 1, except that the Examiner acknowledges that Allam
does not teach “heating the working fluid with heat that is formed outside of
the combustor using a second fuel source, said heating being in addition to
the re-captured heat of combustion, and said second fuel source being a
dilute hydrocarbon stream that is oxidized without substantial combustion.”
Final Act. 4 (citing Allam ¶¶ 182, 199, 219, Fig. 5). The Examiner therefore
relies on Kesseli to teach:
heating the working fluid (Col. 4, l.25, “air/fuel mixture”) with
heat (via recuperator 20) that is formed outside of the
combustor (reactor chamber 25 acts as the combustor) using a
second fuel source (VOC-producing system 50), said heating
being in addition to the re-captured heat of combustion (from
reactor chamber 25).
Id. (citing Kesseli 4:25, Fig. 1). The Examiner determines that it would have
been obvious to a person having ordinary skill in the art “to modify Allam
by including a second fuel source, namely VOCs, for heating the working
fluid, in order to utilize the heat generated from combusting VOCs for
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Application 15/492,376

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increasing the heating value of the working fluid, as taught by Kesseli.” Id.
at 5 (citing Kesseli 1:26–27, 2:42–45).2
Appellant responds, inter alia, that Kesseli’s air/fuel mixture is not a
working fluid. Appeal Br. 7. Appellant reasons that “the air/fuel mixture is
combusted,” which “necessarily requires a chemical change.” Id.
Appellant submits that it is “the products of combustion” that are “routed
through the remaining components of [Kesseli’s] microturbine engine.” Id.
(citing Kesseli 2:50–54). Appellant also takes issue with the Examiner’s
reason to combine Allam and Kesseli, which Appellant alleges is based on
the Examiner’s “mischaracteriz[ation]” of Kesseli. Appeal Br. 12.
Appellant additionally contends that the Examiner has not shown that
combining Allam with Kesseli would result in Kesseli’s VOCs being
oxidized, without substantial combustion, in the circulating fluid of Allam.
Appeal Br. 15. Appellant asserts that “the examiner attempts to rely upon an
inherency argument,” which requires a showing “that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art,”
but, according to Appellant, the Examiner cannot make this showing
because Allam teaches removing the excess O2 from its exhaust stream. Id.
at 16.

2 The Examiner relies on White to teach “an example of a VOC being a
dilute hydrocarbon gas.” Id. (citing White 1:14–16). The Examiner
determines that it would have been obvious to one of ordinary skill in the art
to modify the Allam/Kesseli combination by using a dilute hydrocarbon as
the second fuel “because it was known in the art that various manufacturing,
agricultural, contamination remediation and industrial processes produce a
waste gas stream having dilute hydrocarbon concentrations generally in air,
as taught by White.” Id. (citing White 1:22–24).
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As to Appellant’s argument that Kesseli’s air/fuel mix is not a
working fluid, the Examiner responds that this argument “is irrelevant
because Allam already teaches CO2 being circulated as a working fluid.”
Ans. 3. Nonetheless, the Examiner asserts that “[i]t was known in the art, as
inherent, that a ‘working fluid’ transfers force, motion, or mechanical
energy, and [therefore] Kesseli’s fuel/air mixture is certainly a ‘working
fluid’ as it drives gasifier turbine 30.” Id. at 4.
Regarding Appellant’s argument that Kesseli’s VOCs would not be
oxidized in Allam’s system, the Examiner responds:
Appellant’s Fig. 2 (which is the elected species) does not
explicitly show oxidation of the dilute hydrocarbon stream
outside of the combustor. As shown in Fig. 2, oxidant supply
60, which is connected only to combustor 100, is the only
source of oxygen, and there is no other source of oxygen
outside of combustor 100. Therefore, the second fuel source is
oxidized – outside the combustor – by the residual oxygen in
the “substantially pure” recycle CO2 stream 135, after the
CO2/fuel/oxygen mixture 112 is separated by separator 130. As
discussed on pg. 5 of the Final Office Action, this scenario
would occur in Allam after applying Kesseli’s teaching of
injecting VOCs upstream of the compressor, due to the residual
O2 remaining in Allam’s CO2 circulating fluid.
Ans. 4–5.
We agree with the Examiner that Allam teaches the claimed working
fluid. However, it is still relevant whether Kesseli also teaches a working
fluid, because the Examiner’s unpatentability determination is based on the
finding that it would have been obvious to one of ordinary skill in the art to
modify Allam “by including a second fuel source, namely VOCs, for heating
the working fluid, in order to utilize the heat generated from combusting
VOCs for increasing the heating value of the working fluid as taught by
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Kesseli.” Final Act. 5 (citing Kesseli 1:26–27, 2:42–45) (emphasis added).
We therefore must consider whether this finding is adequately supported in
the record.
The Examiner’s finding is not adequately supported. As noted above,
the Examiner found that one of ordinary skill in the art would have known
that “a ‘working fluid’ transfers force, motion, or mechanical energy, and
[therefore] Kesseli’s fuel/air mixture is certainly a ‘working fluid’ as it
drives gasifier turbine 30.” Ans. 4. We disagree, however, that the fuel/air
mixture drives gasifier turbine 30. Instead, as Appellant correctly notes, the
mixture is combusted before it reaches the turbines, and the products of this
combustion, not the air/fuel mixture, drive the turbines. Kesseli 2:50–58.
Further, the Examiner’s reason to combine Allam and Kesseli
incorrectly equates “increasing the heating value” of the working fluid with
the claimed “heating” of the working fluid. “[H]eating value” refers to “the
amount of heat produced from the complete combustion of a unit quantity of
fuel (e.g., joules per cubic foot of natural gas).”3 The heating value of the
air/fuel mixture is increased by adding “make-up fuel” to the mixture.
Kesseli 2:43–45. “[H]eat generated from combusting VOCs” does not
increase the heating value of the mixture, contrary to the Examiner’s
reasoning. Therefore, the Examiner’s articulated reason to combine lacks a
rational underpinning.
We are also not persuaded that the combined art inherently teaches the
limitation in independent claim 1 requiring oxidizing the dilute hydrocarbon

3 Knovel.com (accessed Nov. 5, 2021), https://app.knovel.com/kn/
search?concept_expand=false&content_type=dictionary&date_expand=false
&include_synonyms=off&query=heating%20value.
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Application 15/492,376

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stream. In relying on inherency, the Examiner must provide evidence or
reasoning to establish a sound basis for the Examiner’s belief that the
missing descriptive matter is necessarily present in the reference. See In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). “[W]hen the PTO shows sound
basis for believing that the products of the applicant and the prior art are the
same, the applicant has the burden of showing that they are not.” Id.
According to the Examiner, oxidation of Kesseli’s VOCs occurs in
Allam’s system because of “residual O2 remaining in Allam’s CO2
circulating fluid.” Ans. 5. But Allam expressly teaches removing “excess
O2” from the CO2 circulating fluid. Allam ¶ 217. Although the Examiner
correctly notes that Allam teaches that excess O2 “can be” removed,
suggesting that they may not be removed, the issue is whether oxidation of
VOCs would necessarily occur in Allam’s system. At best, oxidation of
Kesseli’s VOCs may occur in Allam’s system, but that is not enough to
establish inherency.
Because the Examiner’s reason to combine Allam and Kesseli lacks a
rational underpinning, we do not sustain the Examiner’s rejection of
independent claims 1 and 17, as well as dependent claims 2, 4, and 20, as
unpatentable over Allam, Kesseli, and White. (Our determination that the
combined prior art fails to teach, either expressly or inherently, the limitation
in claim 1 requiring oxidation of the dilute hydrocarbon stream provides an
additional reason for not sustaining the Examiner’s rejection of claims 1, 2,
and 4.)
Claim 16—§ 103—Allam, Kesseli, White, and Mittricker
The Examiner’s rejection of claim 16 relies on the combination of
Allam, Kesseli, and White rendering unpatentable claim 1, from which claim
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16 depends. Final Act. 8–9. As discussed above, we do not sustain the
rejection of claim 1 as unpatentable over Allam, Kesseli, and White, and
Mittricker is not relied on to cure the deficiencies noted above.
Accordingly, we do not sustain the Examiner’s rejection of claim 16 as
unpatentable over Allam, Kesseli, White, and Mittricker.
Other Issues
Appellant argues that the Examiner erroneously withdrew claim 3
under a restriction requirement, and erroneously objected to certain
drawings. Appeal Br. 19-20. As the Examiner correctly notes (Ans. 7),
these issues are not appealable to the Board, but are reviewable by way of
petition to the Technology Center Director. See MPEP § 1002.02(c) (Item 2
(Petitions from a final decision of examiner requiring restriction); Item 4
(Petitions under 37 C.F.R. § 1.113 relating to objections or requirements
made by the examiners)). Accordingly we do not address these issues here.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 17,
20
103 Allam, Kesseli,
White
1, 2, 4, 17,
20
16 103 Allam, Kesseli,
White, Mittricker
16
Overall
Outcome
1, 2, 4, 16,
17, 20

REVERSED