Blue Planet, Ltd.Download PDFPatent Trials and Appeals BoardMar 2, 202014204994 - (D) (P.T.A.B. Mar. 2, 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. 14/204,994 03/11/2014 Brent R. Constantz BLUE-001CON 6053 93726 7590 03/02/2020 EPA - BOZICEVIC FIELD & FRANCIS LLP BOZICEVIC, FIELD & FRANCIS 201 REDWOOD SHORES PARKWAY SUITE 200 REDWOOD CITY, CA 94065 EXAMINER BOWERS, NATHAN ANDREW ART UNIT PAPER NUMBER 1799 NOTIFICATION DATE DELIVERY MODE 03/02/2020 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): docket@bozpat.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BRENT R. CONSTANTZ, MARK BEWERNITZ, JACOB SCHNEIDER, and CHRIS CAMIRE ____________ Appeal 2019-003842 Application 14/204,994 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and DEBRA L. DENNETT, Administrative Patent Judges. BEST, Administrative Patent Judge. I. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 31–36, 38–40, 46, 48–50, and 55–59 of Application 14/204,994. Final Act. (September 7, 2018). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we reverse. 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Blue Planet, Ltd. as the real party in interest. Appeal Br. 3. Appeal 2019-003842 Application 14/204,994 2 II. BACKGROUND Carbon dioxide (CO2) is a naturally occurring chemical compound present in the earth’s atmosphere as a gas. Spec. 1:19–20. Sources of atmospheric CO2 are varied and include living organisms that produce CO2, as well as other naturally occurring sources, such as volcanoes, hot springs, and geysers. Id. 1:20–22. An additional major source of atmospheric CO2 is industrial plants, which combust fossil fuels and syngas. Id. 1:23–28. Atmospheric CO2, however, is commonly viewed as a greenhouse gas and anthropogenic sources of CO2 have been implicated in global warming and climate change, as well as increasing oceanic bicarbonate concentration. Id. 1:29–33. The ’994 Application describes a system for the sequestration of anthropogenic CO2. Id. 2:21–34. Claim 31 is representative of the ’994 Application’s claims and is reproduced below from the Claims Appendix of the Appeal Brief. 31. A system for removing CO2 from a CO2 containing gas, the system comprising: a source of the CO2 containing gas, wherein the source of the CO2 containing gas is an industrial plant; an aqueous medium source; an alkaline earth metal cation source that is distinct from the aqueous medium source; and a single reactor configured to: contact the CO2 containing gas with the aqueous medium under conditions sufficient to produce a bicarbonate rich product; and contact the bicarbonate rich product with alkaline earth metal cations from the alkaline earth metal cation source to produce a solid carbonate from the Appeal 2019-003842 Application 14/204,994 3 bicarbonate rich product and the alkaline earth metal cations in a continuous process. Appeal Br. Claims App. 35 (emphasis added). III. REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 31–34, 38–40, 46, 48–50, and 55–59 are rejected under 35 U.S.C. § 103 as unpatentable over the combination of Gellett2 and Dziedzic.3 Final Act. 3–7. 2. Claims 35 and 36 are rejected under 35 U.S.C. § 103 as unpatentable over the combination of Gellett, Dziedzic, and Valdez.4 Final Act. 7–8. IV. DISCUSSION There are two independent claims on appeal: claims 31 and 59. Appeal Br. 3–5. For the reasons set forth below, we need only discuss claim 31 without reaching Appellant’s separate arguments for reversal of the rejections of claims 40, 56, 59, and 35. Id. 21–31. Dependent claims 32–36, 38–40, 46, 48–50, and 55–58 will stand or fall with their parent independent claims. 2 US 7,998,714 B2, issued Aug. 16, 2011. 3 US 7,132,090 B2, issued Nov. 7, 2006. 4 US 2012/0199535 A1, published Aug. 9, 2012. Appeal 2019-003842 Application 14/204,994 4 A. Rejection of claims 31–34, 38–40, 46, 48–50, and 55–59 as unpatentable over the combination of Gellett and Dziedzic. The patent examiner bears the initial burden of establishing a prima facie case that an application’s claims would have been obvious based upon what was known in the prior art. In re Dillon, 919 F.2d 688, 701 (Fed. Cir. 1990). Here, the Examiner relied on Gellett, which discloses a system for removing CO2 from a CO2 containing gas. Final Act. 3. The Examiner found that Gellett’s reactor includes immobilized carbonic anhydrase, which produces a bicarbonate rich product from the CO2 containing gas source and an aqueous medium source. Id. (citing Gellett Fig. 3B); see also Gellett 6:35–55. The Examiner found that Gellett “describes a variety of sodium cation sources, as well as certain alkaline earth metal cation sources,” which are supplied to the reactor to produce solid sodium carbonate and sodium bicarbonate. Final Act. 3 (citing Gellett 41:45–42:21); see also Gellett 7:1– 17. According to the Examiner, Gellett describes each limitation of the claim, but “does not expressly state that the cation (e.g.[,] the alkaline earth metal) added to the reactor is configured to produce a solid carbonate composition that can be collected and removed from the system, wherein the alkaline earth metal cation is provide[d] separately from an aqueous medium source.” Final Act. 3. The Examiner found Dziedzic similarly teaches a system for generating a bicarbonate rich product using carbonic anhydrase and CO2 from flue gas. Id. The Examiner found Dziedzic teaches that a supply of calcium and/or magnesium cations, which is provided separately from an Appeal 2019-003842 Application 14/204,994 5 aqueous medium source, is added to the bicarbonate to form a carbonate salt precipitate. Id. 3–4 (citing Dziedzic 5:45–58; Fig. 1). The Examiner determined that, “[a]t the time of the invention, it would have been obvious to add a metal cation solution directly into [Gellett’s] reactor . . . in order to immediately precipitate the generated bicarbonate product using calcium or magnesium anions [sic, cations].” Final Act. 4. According to the Examiner, because Dziedzic’s precipitation technique is known in the art and Gellett “considers alkaline earth metal cations (e.g.[,] calcium) to be suitable substitutes for sodium cations,” such an application of “a known technique . . . to a known device ready for improvement to yield predictable results is prima facie obvious.” Id. (citing MPEP § 2143; Gellett 7:1–18, 41:45–42:21). Appellant argues, inter alia, that the Examiner “has not articulated a sufficient reason why one of ordinary skill in the art would have combined the teachings of Gillette and Dziedzic.” Appeal Br. 18. In particular, Appellant contends that the Examiner’s relied upon “discussion of alkaline earth metal cations, e.g.[,] calcium and magnesium cations, in Gellett is in regard to increasing the concentration of bicarbonate ions in the aqueous medium.” Id. (citing Gellett 41:46–59). Appellant argues Gellett discloses that substituting sodium cations with alkaline earth metal cations should preferably result in a carbonate that is soluble in aqueous solution. Appeal Br. 19 (citing Gellett 7:12–15). According to Appellant, Gellett’s bicarbonate product is required in a subsequent dehydration step to form concentrated and purified CO2 gas. Appeal Br. 7–8 (citing Gellett 7:1–7, 7:57–8:64; Fig. 2A). In response, the Examiner argued that “[o]ne of ordinary skill in the art would have found Gellett’s dehydration step and Dziedzic’s Appeal 2019-003842 Application 14/204,994 6 mineralization alkaline earth metal step to be functionally equivalent ways for further processing a bicarbonate rich stream because both steps generate a CO2 product that is readily isolated, removed and contained.” Answer 4; see also id. 5. The Examiner further argues that “Gellett’s overall goal” and “primary purpose of the system is to mitigate the environmental impact of CO2 found in industrial gas streams.” Id. 4. As Appellant persuasively argues, however, “even if Gellette’s purpose was merely to remove CO2 from a gas stream, Gellette’s systems already accomplish such a purpose by generating a bicarbonate solution.” Appeal Br. 21. In other words, the Examiner has not identified a sufficient reason to combine Gellett’s bicarbonate production with Dziedzic’s mineralization alkaline earth metal step. We, furthermore, agree with Appellant that Gellett is directed not only to removal of CO2 from a gas stream, but also to the production of concentrated and purified CO2. Id. 7–8; Reply Br. 3–5; see Gellett 7:1–17; 7:57–8:67. As Appellant argues, application of Dziedzic’s mineralization alkaline earth metal step would have consumed the bicarbonate ions needed for Gellett’s dehydration reaction, thereby preventing Gellett’s production of concentrated CO2. Appeal Br. 9. We, therefore, are persuaded that the ordinarily skilled artisan would not have been led by Dziedzic’s generation of insoluble alkaline earth metal carbonates to modify Gellett’s system. On these facts, the Examiner has not established that one of ordinary skill in the art would have considered incorporating Dziedzic’s process as a step for improving Gellett’s system to remove CO2 from a CO2 containing gas. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[T]he claimed subject matter may involve more than the simple substitution of one known element for another or the Appeal 2019-003842 Application 14/204,994 7 mere application of a known technique to a piece of prior art ready for the improvement.”); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections 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.”). In view of the foregoing, we reverse the Examiner’s rejection of claims 31–34, 38–40, 46, 48–50, and 55–59. 37 C.F.R. § 41.37(c)(1)(iv) (2013). B. Rejection of claims 35 and 36 as unpatentable over the combination of Gellett, Dziedzic, and Valdez. As we discussed in connection with claim 31, the Examiner erred by determining that one of ordinary skill in the art would have been led by Dziedzic’s generation of insoluble alkaline earth metal carbonates to modify Gellett’s system. See § IV.A supra. We, therefore, reverse the rejection of claims 35 and 36. 37 C.F.R. § 41.37(c)(1)(iv). V. CONCLUSION In summary: Claims Rejected 35 U.S.C. § References(s)/Basis Affirmed Reversed 31–34, 38–40, 46, 48–50, 55–59 103 Gellett, Dziedzic, 31–34, 38–40, 46, 48–50, 55–59 35, 36 103 Gellett, Dziedzic, Valdez 35, 36 Overall Outcome 31–36, 38–40, 46, 48–50, 55–59 REVERSED Copy with citationCopy as parenthetical citation