Ex Parte Ahmed et al

Patent Trial and Appeal Board

Sep 25, 2012

11268531 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/268,531 11/08/2005 M. Mushtaq Ahmed 21405 2071
27182 7590 09/26/2012
PRAXAIR, INC.
LAW DEPARTMENT - M1 557
39 OLD RIDGEBURY ROAD
DANBURY, CT 06810-5113
EXAMINER
STALDER, MELISSA A
ART UNIT PAPER NUMBER
1732
MAIL DATE DELIVERY MODE
09/26/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL
AND APPEAL BOARD
____________

Ex parte M. MUSHTAQ AHMED,
JAMES PATRICK MEAGHER, and
EDWARD SCOTT JURASEVICH
____________

Appeal 2011-008994
Application 11/268,531
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008994
Application 11/268,531

2
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-13. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Claim 1 is illustrative of the subject matter on appeal:
1. A method for controlling addition of a supplementary
oxygen stream into a steam methane reformer utilizing both the
supplementary oxygen stream and a primary oxidant stream to
support combustion of a fuel stream by burners firing into a
radiant section of the steam methane reformer to support
endothermic heat requirements of a steam methane reforming
reaction conducted in reformer tubes to obtain an enhanced rate
of production of a product gas stream produced by the steam
methane reforming reaction, said method comprising:
obtaining a first temperature that is either equal to a
reformer tube wall temperature measured at a location of inlet
regions of the reformer tubes at which a maximum temperature
is produced at the enhanced rate of production or is equal to a
temperature from which said reformer tube wall temperature
can be derived;
controlling the first temperature by increasing a first flow
rate of the supplementary oxygen stream when the first
temperature is below an inlet wall temperature target and
decreasing the first flow rate of the supplementary oxygen
stream within the first temperature is above an inlet wall
temperature target, the inlet wall temperature target being
selected to either prevent damage to the reformer tubes at said
location of the inlet regions of the reformer tubes at which said
maximum temperature is produced or to maintain the maximum
temperature at said location, whichever is less; and
maintaining the combustion of the fuel stream under a
substantially constant stoichiometry by adjusting a second flow
rate of the primary oxidant.
Appeal 2011-008994
Application 11/268,531

3
Appellants appeal the following rejections:
1) Claims 1-13 under 35 U.S.C. § 112, second paragraph as
indefinite;
2) Claims 1-5, 7-10, 12, and 13 under 35 U.S.C. § 103(a) as
unpatentable over Drnevich1;
3) Claims 8 and 12 under 35 U.S.C. § 103(a) as unpatentable
over the combined prior art of Drnevich and Lomax2;
4) Claims 6 and 11 under 35 U.S.C. § 103(a) as unpatentable
over the combined prior art of Drnevich and Buxbaum3.
The 112 Second Paragraph Rejection
“The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification. If
the claims read in light of the specification reasonably apprise those skilled
in the art of the scope of the invention, § 112 demands no more.” Miles
Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993) (citation
omitted).
The Examiner determined that the terms “enhanced rate of
production”, “maximum temperature”, “prevent damage to the reformer
tubes” and “substantially constant stoichiometry” of a combustion reaction
in claim 1 were all indefinite (Ans. 3-4).
Appellants provide a detailed explanation of how one of ordinary skill
would understand the scope of the terms “enhanced rate of production” of

1 US 6,981,994 B2 issued Jan. 3, 2006.
2 US 2005/0097819 A1 published May 12, 2005.
3 US 2004/0163313 A1 published Aug. 26, 2004.
Appeal 2011-008994
Application 11/268,531

4
the product gas stream, the location of the tubes at which a “maximum
temperature” is produced, and that the temperature target of claim 1 is
selected to “prevent [thermal] damage” to the tubes as used in the
Specification and claim 1 (Br. 11-14).
Accordingly, we agree with Appellants that upon review of the claim
language read in light of the Specification, a preponderance of the evidence
supports Appellants’ position that the aforementioned language of claim 1 is
definite (id.).
The Examiner argues that the term “substantially” is a relative term
which is not defined by the claims, and that there is no guidance in the
Specification to determine what “substantially” means in this instance (Ans.
4). In this case, the term “substantially” does not render the claimed subject
matter indefinite. “Substantially” is often used to mean largely but not
wholly what is specified. See, e.g., York Prods., Inc., v. Cent. Tractor Farm
& Family Ctr., 99 F.3d 1568, 1572-73 (Fed. Cir. 1996); See also, Amhil
Enters. Ltd. v. Wawa, Inc., 81 F.3d 1554, 1562 (Fed. Cir. 1996). There is no
evidence on this record that “substantially” has a different meaning in claim
1. Thus, the Examiner has not established by a preponderance of the
evidence that one of ordinary skill would not have readily understood the
scope of “maintaining the combustion of the fuel stream under a
substantially constant stoichiometry” as recited in claim 1.
Accordingly, we reverse the Examiner’s rejection of the claims under
35 U.S.C. 112, second paragraph.

Appeal 2011-008994
Application 11/268,531

5
The 103 Rejections
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter in rejections 2 and 3 would have been obvious to one
of ordinary skill in the art within the meaning of § 103 in view of the applied
prior art. Accordingly, we will sustain the Examiner’s rejections 2) and 3)
for essentially those reasons expressed in the Answer, including the
Response to Argument section, and we add the following primarily for
emphasis.
“For obviousness under § 103, all that is required is a reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir.
1988).
Appellants’ main argument that the prior art does not teach or suggest
the claimed invention, in part because Drnevich does not explicitly teach or
suggest measuring the tube wall temperature, or temperatures at the inlet of
the reformer tubes, and controlling such temperatures by controlling the
oxygen addition (Br. 17), is unavailing as it fails to consider the applied
prior art as a whole. Appellants do not directly address the Examiner’s
reasonable position that the ordinary skilled artisan would predictably desire
to control the reactant flows as claimed in order to control the temperature of
the tubes so as to prevent damage thereto since Drnevich teaches “[t]he tube
wall temperature is a critical parameter influencing the life of the tubes.”
(Drnevich, col. 8, ll. 7-8; Ans. 9; generally Br.; no Reply Br. has been filed).
Appellants have also not adduced any persuasive technical reasoning or
evidence in response to the Examiner’s reasonable determination that
measuring the temperature of the tube inlet and then controlling “the
Appeal 2011-008994
Application 11/268,531

6
temperature of the tubes in this way [as claimed] so that the temperature of
the tube is either maintained or lowered so as to not harm the tube” would
have been within the ordinary level of skill in the art (Ans. 9; no Reply Brief
has been filed).
It is well established that ordinary creativity is presumed on the part of
one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007) (“[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.”). An improvement in the art is obvious if “it
is likely the product not of innovation but of ordinary skill and common
sense.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). See also,
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir.
2009) (“hold[ing] that while an analysis of obviousness always depends on
evidence that supports the required Graham factual findings, it also may
include recourse to logic, judgment, and common sense available to the
person of ordinary skill that do not necessarily require explication in any
reference or expert opinion.”)
Accordingly, the preponderance of the evidence supports the
Examiner’s § 103 rejection based on Drnevich.
With respect to the rejection 3) based on Drnevich with Lomax,
Appellants’ argument that Lomax does not teach or suggest controlling the
stoichiometry of the combustion by measuring flue gas oxygen as claimed
since Lomax senses carbon monoxide to adjust a purging rate (Br. 20, 21) is
unpersuasive as it fails to consider the prior art as a whole. Appellants have
not persuaded us of error in the Examiner’s reasonable determination that it
would have been within the ordinary skill of an artisan to have used a carbon
monoxide sensor which “reveal[s] the same data in that the relevant reaction
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Application 11/268,531

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[will determine the oxygen content]” and then increase or decrease the rate
of oxygen supply to the reactor of Drnevich (Ans. 6, 11; Br. 21).
Accordingly, the preponderance of the evidence supports the
Examiner’s § 103 rejections based on Drnevich, and Drnevich with Lomax.
With respect to the rejection 4), a preponderance of the evidence
supports Appellants’ position that the applied prior art applied by the
Examiner “does not even remotely hint” at making reformer tubes from two
different materials as required in claims 6 and 11 (Br. 22). The Examiner
relies upon Buxbaum to teach that a reactor made of a flat plate heat
exchanger can be formed from metals, ceramics, or polymers (Ans. 6). The
Examiner has not, however, directed us to sufficient factual underpinnings to
support her determination that one would have made the inlet regions of the
tubes of Drnevich out of a different material that is susceptible to thermal
damage at a lower temperature than the material used in the outlet regions of
the tubes as recited in claims 6 and 11 (id. at 6, 7, 12).
Accordingly, we are constrained to reverse this rejection of claims 6
and 11 on appeal.
DECISION
The decision of the Examiner is affirmed-in-part.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED-IN-PART

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