Ex Parte Al-Mulhim et al

Patent Trial and Appeal Board

Oct 26, 2017

13628305 (P.T.A.B. Oct. 26, 2017)

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.
212,345 1449
EXAMINER
GURTOWSKI, RICHARD C
ART UNIT PAPER NUMBER
1778
MAIL DATE DELIVERY MODE
13/628,305 09/27/2012
38137 7590 10/26/2017
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
Khalid Abdulaziz Al-Mulhim
10/26/2017 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 KHALID ABDULAZIZ AL-MULHIM and
SALEM MOHAMMED AL-QAHTANI
Appeal 2016-008325
Application 13/628,3051
Technology Center 1700
Before CHUNG K. PAK, N. WHITNEY WILSON, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’
rejections adverse to the patentability of claims 23—27 and 29-35.
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM-IN-PART.
1 Appellants identify the real party in interest as the Saudi Arabian Oil
Company of Saudi Arabia. App. Br. 2.
Appeal 2016-008325
Application 13/628,305
BACKGROUND
The subject matter on appeal is directed to a system for separating
water from crude oil. Spec. 1:7—8.
Claim 23 is illustrative, is taken from the Claims Appendix of the
Appeal Brief, and appears below (indentations added for readability):
23. A system for separating water from crude oil, comprising
a bulk-storage tank for storing unrefined crude oil;
a first pipe for delivering water separated from crude oil in
the bulk-storage tank to a water containment system;
a second pipe for delivering crude oil to an oil shipping
system;
a first valve for controlling flow of water in the first pipe;
a second valve for controlling flow in the second pipe; and
a control system for controlling operation of the first and
second valves, the control system including
a control device for controlling operation of the first
and second valves;
means arranged on a first pipe for measuring at least
one specific property of water that flows through the first
pipe and connected with the control device for
communicating a measured value thereto,
the control device having means for comparing the
measured value with a predetermined threshold value of
the at least one specific property characterizing flow of oil-
water mixture having a predetermined oil-water ratio, and
means for closing the first valve and thereafter,
opening the second valve when the measured value
reaches the predetermined threshold value, to provide for
flow of crude oil to the oil shipping system.
App. Br. 16.
REFERENCES
The Examiner relies on the following references as evidence of
unpatentability:
Prestridge US 3,849,285 Nov. 19, 1974
Gudmundsson US 5,741,978 Apr. 21, 1998
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Application 13/628,305
Dana US 6,218,948 B1 Apr. 17,2001
Hadfield et al. WO 92/19350 A1 Nov. 12, 1992
(hereinafter “Hadfield”)
REJECTIONS ON APPEAL
I. Claims 23, 27, 32, and 33 under 35 U.S.C. § 102(b) as anticipated
by Hadfield;
II. Claim 24 under 35 U.S.C. § 103(a) as unpatentable over Hadfield
in view of Gudmundsson;
III. Claims 25, 26, 29-31, and 34 under 35 U.S.C. § 103(a) as
unpatentable over Hadfield in view of Dana; and
IV. Claim 35 under 35 U.S.C. § 103(a) as unpatentable over Hadfield
in view of Prestridge.
OPINION
Appellants present separate arguments against the rejection of
independent claims 23 and 32. App. Br. 6—14; Reply Br. 2—5. Thus, we
need only address these claims. Claims not separately argued will stand or
fall with independent claims 23 and 32. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 23
The Examiner finds that Hadfield anticipates the system recited in
claim 23. Ans. 2—3. Appellants’ contentions that the Examiner erred in
rejecting this claim appear at pages 7—11 of the Appeal Brief, and pages 2—3
of the Reply Brief.
We have considered each of Appellants’ arguments regarding claim
23 and are not persuaded that Appellants have identified reversible error. In
re Jung, 637 F.3d 1356, 1365—66 (Fed. Cir. 2011) (explaining the Board’s
long-held practice of requiring Appellants to identify the alleged error in the
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Application 13/628,305
Examiner’s rejection). We therefore sustain the anticipation rejection of
claim 23 for the reasons expressed by the Examiner in the Final Action and
in the Answer. We add the following comments for emphasis.
We are not persuaded by Appellants’ assertion that Hadfield does not
disclose a bulk-storage tank. App. Br. 7. Appellants have not directed us to
any language in the Specification that would limit the term “bulk-storage
tank” so as to exclude Hadfield’s prestorage zone 64. Moreover, the
Examiner’s interpretation of this claim limitation (Ans. 2, 8) is consistent
with the Specification’s use of this term. Spec. 1:10—14. That is, the bulk-
storage tank, like Hadfield’s prestorage zone 64, houses a mixture of oil and
water that may separate naturally via gravitational forces. Hadfield 10:11—
33. We emphasize that, in their Reply Brief, Appellants do not challenge
with any specificity the Examiner’s rebuttal regarding this limitation.
Ans. 8.
We also disagree with Appellants’ assertions that “Hadfield does
notdisclose means arranged on the first pipe for measuring at least one
specific property of water that flows through the first pipe” (Reply Br. 2)
and that “Hadfield does not disclose comparison of a specific property of
water with a threshold value” (App. Br. 8). In this regard, when discussing
the embodiment of Figure 2 relied on by the Examiner, Hadfield states that
“[tjhose components of the system 60 [i.e., the system of Figure 2] which
are identical to those of the system 10 of Fig. 1 are identified by the same
identifying numerals.” Hadfield 10:8—10. Thus, because monitoring device
30 appears in both system 10 and system 60, Hadfield’s discussion of this
“identical” element in system 10 applies to both systems. We additionally
observe that Hadfield teaches that monitoring device 30 can measure the
density of a liquid (Hadfield 6:38—7:6), and that density is one of several
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Application 13/628,305
“measurable properties” identified in Appellants’ Specification. Spec.
11:21-22.
Hadfield’s monitoring device monitors “the makeup of the recovered
fluid flowing through” fluid supply conduit 72, and “[i]f it is determined that
the recovered fluid contains an oil concentration in excess of that which can
be handled by . . . separator 24, then the recovered fluid is diverted through a
bypass conduit 32 to the ship’s storage 16.” Hadfield 6:6—10. “If the oil
concentration in the recovered fluids is at relatively low levels, the control
valve 34 will remain open and the control valve 36 will remain closed” but if
“an excessively high concentration of oil is detected in the recovered fluid
by the monitoring device 30, it will cause the control” valves to operate in
the opposite fashion, thus, sending the fluid through valve 36 via conduit 32
to the ship’s storage. Id. at 6:17—27. Hadfield’s monitoring device is
typically “set so that if greater than fifty percent oil were contained in the
incoming recovered fluid stream[,] the entire recovered fluid stream would
be diverted to ship[’]s storage” but that percentage of oil “must be adjusted
based upon observations of the” performance of the hydrocyclone system
24. Id. at 7:14—19.
Thus, because Hadfield’s system monitors the density characteristic of
the fluid going through the first pipe 72, and controls the opening and
closing of valves 34 and 36 based on this property vis-a-vis a predetermined
threshold value (e.g., “relatively low levels” of oil in the fluid (Hadfield
6:17—22), “excessively high concentration^] of oil” in the fluid (id. at 6:22—
27), and “greater than fifty percent oil” content in the fluid (id. at 7:15)), the
Examiner is correct (Ans. 8—9) that Hadfield discloses the limitations in
dispute.
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Moreover, we observe that Appellants’ argument regarding conduit 69
(App. Br. 9) is not persuasive because the Examiner does not rely on this
portion of system 60 in the rejection, but rather relies on conduit 32 to
satisfy this limitation. Ans. 2, 9. Furthermore, Appellants’ argument that
“Hadfield does not disclose first, flow of water of the water-containing
system and, thereafter, to the oil shipping system” (App. Br. 9) is
unpersuasive because it is directed to a limitation not recited in the claim. In
re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[Appellant’s arguments fail
from the outset because . . . they are not based on limitations appearing in
the claims.”).
Appellants’ argument (Reply Br. 2—3) suggesting that Hadfield’s
conduit 72 is made of two parts, and thus, does not disclose the recited “first
pipe” because it is separated by monitor 30 is likewise unpersuasive.
Hadfield discloses that conduit 72 is one part that “connects a discharge
outlet of the booster pump 70 to the inlet 22 of the first hydrocyclone
separator 24.” Hadfield 10:38—11:2. The claims as written do not exclude
such a configuration, and the Examiner properly relies on Hadfield’s conduit
72 as one pipe (“a first pipe,” Ans. 2). As such, it is of no moment that
Hadfield’s single conduit 72 travels through monitor device 30.
Thus, for the well-stated reasons by the Examiner and above, we
sustain the anticipation rejection of claim 23. We sustain the rejections of
claims 24—27 and 29—31 not separately argued for the same reasons. App.
Br. 11. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 32
The Examiner finds that Hadfield anticipates the apparatus recited in
claim 32. Ans. 3—A. Appellants’ contentions that the Examiner erred in
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rejecting this claim appear at pages 11—14 of the Appeal Brief, and pages 3—
5 of the Reply Brief. We have considered each of Appellants’ arguments
regarding claim 32 and are persuaded of reversible error. In re Jung, 637
F.3d at 1365-66.
Specifically, Appellants’ argument (App. Br. 12) regarding Hadfield’s
lack of disclosure of three limitations recited in claim 32 is well-founded.
To anticipate “it is not enough that the prior art reference discloses
part of the claimed invention, which an ordinary artisan might supplement to
make the whole, or that it includes multiple, distinct teachings that the
artisan might somehow combine to achieve the claimed invention.” Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
Rather,
unless a [prior art] reference discloses within the four comers of
the document not only all of the limitations claimed but also all
of the limitations arranged or combined in the same way as
recited in the claim, it cannot be said to prove prior invention of
the thing claimed and, thus, cannot anticipate under 35 U.S.C.
§102.
Id.
Here, to satisfy the limitation requiring first and second sensors
“arrangeable on a first pipe for sensing” multiple specific properties of water
flowing through the first pipe, the Examiner relies on Hadfield’s disclosure
that “multiple meters can be used, including flow meters and density
meters.” Ans. 3, 4 (emphasis added). To satisfy the limitation requiring a
first and second means for comparing the first and second measured values
with respective predetermined thresholds, the Examiner notes that the
sensors are connected to the controller which monitors the amount of liquid
and measures the amount of oil and actuates the valves accordingly. Id.
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Such disclosure is insufficient to establish anticipation of the recited
limitations for several reasons. First, we note that the relied-upon disclosure
of Hadfield is ambiguous regarding whether other meters, such as a density
meter, are used in addition to, or in place of, the flow meter. If a prior art
reference is subject to two interpretations, then it is ambiguous and will not
support an anticipation rejection. In re Hughes, 345 F.2d 184, 188 (CCPA
1965). See also In re Turlay, 304 F.2d 893, 899 (CCPA 1962) and In re
Cramblet, 62 F.2d 358, 359 (CCPA 1932). “[I]f a reference is ambiguous
and can be interpreted so that it may or may no [sic] constitute an
anticipation of an appellant’s claims, an anticipation rejection under 35
U.S.C. § 102 based upon the ambiguous reference is improper.” In re Brink,
419 F.2d 914, 917 (CCPA 1970). Furthermore, even if Hadfield was read to
disclose the potential simultaneous use of multiple meters in one system,
such disclosure that merely allows for this possibility is insufficient to
establish anticipation of the claimed system. Net Money IN, Inc., 545 F.3d at
1371.
Furthermore, we note that, to satisfy the limitation requiring the
controller’s processor to be “configured to adjust weightings associated with
each of two comparison values based on the results of operation of the
system,” the Examiner makes a general reference to Hadfield’s disclosure of
a processor for executing an application program for water-crude oil
separation and cites, inter alia, Hadfield’s disclosure in the paragraph
bridging pages 13 and 14. Ans. 4. The disclosure relied on by the
Examiner, however, is directed to the use of three pressure monitoring
means on three different lines, and does not evince measuring multiple
properties (e.g., pressure and density) on the same pipe as claimed.
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Thus, we are constrained to reverse the Examiner’s anticipation
rejection of claim 32, as well as the rejections of its dependent claims 33—
35.2
SUMMARY
The rejections of claims 23—27 and 29—31 are affirmed.
The rejections of claims 32—35 are reversed.
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
2 Claims 34 and 35 are rejected under 35 U.S.C. § 103 as unpatentable over
Hadfield and additional prior art. The Examiner does not rely on the
additional prior art to remedy the deficiencies of Hadfield. Ans. 6—8.
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