Blue Planet, Ltd.

Patent Trials and Appeals Board

Mar 2, 2020

14204994 - (D) (P.T.A.B. Mar. 2, 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.
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
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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
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Application 14/204,994
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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.
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Application 14/204,994
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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
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Application 14/204,994
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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
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Application 14/204,994
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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
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Application 14/204,994
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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