Ex Parte Allam et al

Patent Trial and Appeal Board

Dec 29, 2017

13843313 (P.T.A.B. Dec. 29, 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.
13/843,313 03/15/2013 Rodney John Allam P62622 1042US.CP2 7630
26158 7590 01/03/2018
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
GOYAL, ARUN
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
01/03/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODNEY JOHN ALLAM, MILES R. PALMER,
GLENN WILLIAM BROWN JR., JEREMY ERON FETVEDT,
and BROCK ALAN FORREST
Appeal 2016-006673
Application 13/843,313
Technology Center 3700
Before EDWARD A. BROWN, LEE L. STEPINA, and
SEAN P. O’HANLON, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rodney John Allam et al. (Appellants)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1, 3, 4, 31-33, and
40-49.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appeal Brief identifies 8 Rivers Capital, LLC as the real party in
interest. Appeal Br. 1.
2 Claim 2 is cancelled, and claims 5-30 and 34-39 are withdrawn from
consideration. Appeal Br. 24, 26-31, 32-33 (Claims App.).
Appeal 2016-006673
Application 13/843,313
CLAIMED SUBJECT MATTER
Claims 1, 3, 4, 31, and 49 are independent. Claim 1 is illustrative, and
reads:
1. A method of power generation comprising:
combusting a hydrocarbon or carbonaceous fuel in a first
combustor in the presence of an oxidant and a recycle CO2 stream
so as to form a first combustor exhaust stream at a pressure of at
least about 12 MPa and a temperature of at least about 800 °C;
expanding the first combustor exhaust stream across a first
turbine to form a first turbine discharge stream;
heating the first turbine discharge stream in a second
combustor to form a second combustor exhaust stream;
expanding the second combustor exhaust stream across a
second turbine so as to output from the second turbine a second
turbine discharge stream such that the pressure ratio of the first
combustor exhaust stream relative to the second turbine
discharge stream is at least 20;
cooling the second turbine discharge stream in a
recuperator heat exchanger;
isolating at least a portion of the CO2 from the cooled
turbine discharge stream to form the recycle CO2 stream;
compressing the recycle CO2 stream; and
passing the recycle CO2 stream to the first combustor.
Appeal Br. 24 (Claims App.).
REJECTIONS
I. Claims 1, 3, 4, 31-33, 40-42, 44, 46, 47, and 49 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Osgerby (US 4,498,289,
issued Feb. 12, 1985), Ph. Mathieu & R. Nihart, Sensitivity Analysis of the
MATIANT Cycle, 40 Energy Convers. Mgmt., 1687-1700 (1999)
(“Mathieu”), and E. Iantovski & Ph. Mathieu, Highly Efficient Zero
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Emission CO2-Based Power Plant, 38 Energy Conyers. Mgmt., S141-S146
(1997) (“Iantovski”).
II. Claim 43 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Osgerby, Mathieu, Iantovski, and Fassbender (US 6,918,253 B2, issued
July 19, 2005).
III. Claim 45 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Osgerby, Mathieu, Iantovski, and Crawford (US 4,765,143, issued Aug.
23, 1988).
IV. Claim 48 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Osgerby, Mathieu, Iantovski, and O’Hearen (US 2003/0053909 Al,
published Mar. 20, 2003).
ANALYSIS
I
Claim 1
The Examiner finds that Osgerby discloses a first combustor (high
pressure combustion chamber 14), a first turbine (turbine 16), a second
combustor (reheating burner 20), and a second turbine (turbine 21), but does
not disclose that the pressure ratio of the first combustor 14 exhaust stream
to the second turbine 21 discharge stream is at least 20, as claimed. Final
Act. 2-3. The Examiner finds that Mathieu teaches a pressure ratio of the
pressure P2 at the exit of first combustor (h) to the pressure P4 at the exit of
the low pressure turbine (1) of 40:1,3 and also teaches that the efficiency of
3 The Examiner cites to Mathieu, Table 2, for this finding. Final Act. 3;
Ans. 2. Table 2 does not disclose this pressure ratio value. See Mathieu, p.
1697. However, Table 1 of Mathieu discloses an “Upper intermediate
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the cycle is sensitive to pressure P2. Id. at 3 (citing Mathieu, p. 1694,11. 7-
8), see also Mathieu, p. 1690 (Fig. 3).
The Examiner concludes that it would have been obvious to modify
Osgerby’s second turbine 21 so that the ratio of the pressure at the exit of
first combustor 14 to the pressure at the exit of second turbine 21 is at least
20. Final Act. 3. The Examiner reasons that this modification would
provide “high cycle efficiency due to increased combustor exit pressure,” as
taught by Mathieu, and due to low compression work, as taught by
Iantovski. Id. (citing Mathieu, p. 1694,11. 7-8; Iantovski, p. S142,1. 29-p.
S143,11. 7).
Osgerby discloses that gas is vented from combustion chamber 14 at a
pressure at or above 1068.7 psi (e.g., 3000 psi). Osgerby, col. 6,11. 47-51,
Figs. 1, 2. Osgerby discloses that the exhaust stream from turbine 21 is at a
pressure of 294 psi. Id. at col. 7,11. 17-19, Figs. 1, 2. We understand that
the Examiner’s rejection modifies only turbine 21 to change the pressure of
the exhaust stream such that the ratio of the pressure of the exhaust stream
from combustion chamber 14 to the pressure of the exhaust stream from
turbine 21 is at least 20. Regarding the Examiner’s statement that the
modification of Osgerby would provide “high cycle efficiency due to
increased combustor exit pressure,” the Examiner does not indicate that
Osgerby’s combustion chamber 14 or reheating burner 20 would also be
modified to increase its exit pressure. See Final Act. 3.
Appellants contend the Examiner has not established that a person of
ordinary skill in the art could have predictably modified Osgerby using the
pressure (/E)” of 40 bar and a “Low pressure of the cycle (/E)” of 1 bar. See
id. at p. 1696. The pressure ratio P2/P4 of these values is 40:1.
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teachings of Mathieu and/or Iantovski with a reasonable expectation of
success. Appeal Br. 8. Appellants contend that the Examiner focuses solely
on the recited pressure ratio and the second turbine exit pressure in Osgerby,
seeks out a reference teaching a system where a fluid is expanded across
such pressure ratio, and then concludes it would have been obvious to
modify a single turbine output in Osgerby to achieve this ratio. Id. at 9.
Appellants contend that the Examiner points to nothing in Osgerby
suggesting that the pressure output of the second turbine may be altered
independent of other operating parameters of its system. Id. Rather,
Appellants contend, the Examiner only finds that Mathieu teaches that the
efficiency in its specific system can be sensitive to the pressure at a specific
point in the cycle. Id. According to Appellants, the Examiner provides no
reasoning why a person of ordinary skill in the art would believe that
Osgerby’s efficiency may be increased by changing only the specific
pressure output of the second turbine to thus adjust the pressure ratio across
the turbines. Id.
Appellants further contend that the Examiner has not given proper
credit to the evidence of unpredictability provided in the Declaration under
37 C.F.R. § 1.132 by Rodney Allam (“Allam Declaration”). Appeal Br. 11-
16. Appellants contend that the Allam Declaration provides a detailed
explanation of the unpredictable effects of the proposed modification of
Osgerby. Id. at 13. When an applicant submits evidence in response to a
rejection, we determine patentability based “on the totality of the record.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (citations omitted).
The Allam Declaration states that Mathieu requires a three-turbine
system to use its described process parameters, whereas Osgerby teaches a
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two-turbine system. Decl. ^ 5. The Allam Declaration states that the
pressure ratio between the second and third turbines in Mathieu cannot
merely be isolated for use in a two-turbine system without considering the
reason for using the pressure ratio in Mathieu’s process. Id. In this regard,
the Allam Declaration explains that Mathieu’s process is optimized for three
turbines with combustion occurring between only two of the expansion
stages. Id. The Allam Declaration explains that Mathieu requires three
turbines (turbines 1, 2, and 3) with reheat between turbine 2 and turbine 3
(“LP expander” “1”) to achieve an outlet stream from turbine 3 having a
sufficiently high temperature at point 11 entering the recuperator (f) to
achieve the necessary temperature of the stream at 300 bar at point 5
entering turbine 1 (“HP expander” “g”). Id. 6; see also Mathieu, p. 1690
(Fig. 3), p. 1696 (Table 1). The Allam Declaration explains that Mathieu
uses a three-turbine system under different conditions to achieve a different
purpose than Osgerby achieves using a two-turbine system. Decl. ^ 6. The
Allam Declaration states that the pressure ratio of 40 across turbines 2 and 3
in Mathieu is only possible because it is carried out across the last two of the
three turbines. Id. 11 8.
The Allam Declaration also states that the proposed modification of
Osgerby fails to consider the effects on the operating conditions for
Osgerby’s entire method. Id. 5, 7. The Allam Declaration explains that
lowering the pressure of the exhaust stream from turbine 21 would
necessitate additional changes to the system; namely, a higher outlet
pressure for turbine 16, a higher inlet temperature for turbine 21, and a lower
outlet temperature for turbine 21. Id. ^7. The Allam Declaration states that
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the Examiner fails to consider the difference in the total set of conditions for
turbines 16 and 21 relative to turbines 2 and 3 of Mathieu. Id. ^ 8.
We are persuaded by Appellants’ contentions that the Examiner has
not provided an adequate reason with a rational underpinning to modify
Osgerby’s turbine 21 to change the pressure of its exhaust stream such that
the ratio of the pressure of the exhaust stream from combustion chamber 14
to the pressure of the exhaust stream from turbine 21 is at least 20. The
Examiner’s rationale for modifying Osgerby’s turbine 21 is premised on the
finding that the modification would provide “high cycle efficiency due to
increased combustor exit pressure,” as taught by Mathieu. Final Act. 3. We
note that the description in Mathieu relied on by the Examiner to support this
finding states that “[t]he cycle r\ turns out to be rather sensitive to the
combustion chamber pressure P2 but not to /V’ See Mathieu, p. 1694,11. 7-
8. We agree with Appellants that this description “merely teaches that the
pressure in one combustor can be important while the pressure in a second
combustor is not important.” Reply Br. 4. We further agree with Appellants
that this description “cannot be characterized as teaching that the pressure
ratio of a first combustor exhaust stream relative to a second turbine
discharge stream should be at least 20,” as claimed. Id. Hence, Mathieu
does not support the Examiner’s finding upon which the modification of
Osgerby is premised.
The Examiner responds to Appellants’ contention that one of ordinary
skill in the art would have not have modified Osgerby in view of Mathieu
and Iantovski as proposed by the Examiner by stating that Osgerby’s
apparatus differs from the claimed apparatus in only that the pressure ratio
of the first combustor exhaust stream to the second turbine exit stream is 20.
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Ans. 2. The Examiner then states, “when the prior art device is the same as
the device described in the specification for carrying out the claimed
method, it can be assumed the device will obviously perform the claimed
process.” Id. (citing In re King, 801 F.2d 1324 (Fed. Cir. 1986).
However, King states:
the law is, and long has been, that “if a previously patented
device, in its normal and usual operation, will perform the
function which an appellant claims in a subsequent application
for process patent, then such application for process patent will
be considered to have been anticipated by the former patented
device.”
King, 801 F.2d at 1326 (emphasis added) (citations omitted). Appellants
point out that the Examiner explicitly agrees that the claimed method
operates under different parameters than taught by Osgerby, and, as such,
the system taught by Osgerby, in its disclosed “normal and usual operation,”
will not necessarily perform the claimed method, as required by King.
Reply Br. 2. Accordingly, we agree with Appellants that King does not
support the Examiner’s position with regard to how Osgerby’s system
“obviously” operates.
In response to Appellants’ argument that the Examiner does not
provide adequate reasoning as to why a person of ordinary skill in the art
would believe that the pressure ratio from Mathieu would be applicable to
Osgerby’s cycle, or that Osgerby’s second turbine could be successfully
operated at an output pressure, as claimed, the Examiner states that
Appellants have failed to sufficiently enable a structure to make and use the
full scope of the claimed invention, and that the claims “would be rejected”
for lack of enablement. Similarly, in response to Appellants’ argument that
the invention achieves a pressure ratio of 20 in a cycle with two turbines,
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whereas Mathieu requires a three turbine system, the Examiner indicates that
the claims “would further be rejected” for lack of written description. Ans.
3. As noted by Appellants, however, no such rejections have been made.
Reply Br. 5. The Examiner’s statements do not address adequately
Appellants’ arguments.
The Examiner also states that “Osgerby and Mathieu are capable of
operating at different exit temperatures as taught by Osgerby (Figs. 2, 4 and
6 temperature for point 6) and as taught by Mathieu (different cycle
pressures Figs. 5-7 and pages 1693-1696).” Ans. 4. However, Figures 2, 4,
and 6 of Osgerby depict system conditions for different systems, as shown in
Figures 1, 3, and 5, respectively. See Osgerby, col. 6,11. 17-19 and 28-30,
col. 11,11. 40 43. The Examiner does not establish that the temperature
conditions used in the systems shown in Figures 3 and 5, which have
different components and different arrangements than in Figure 1, would be
applicable to the Figure 1 system, or would provide predictable results in the
Figure 1 system.4 “Obviousness does not require absolute predictability, but
a reasonable expectation of success is necessary.” See In re Clinton, 527
F.2d 1226, 1228 (CCPA 1976). Moreover, it is not apparent how the use of
different temperature conditions in the systems shown in Figures 3 and 5
supports the Examiner’s proposed modification of only turbine 21 in the
system of Figure 1.
4 Appellants note that U.S. Patent No. 5,802,840 to Wolf describes Osgerby.
Appeal Br. 9-10; Reply Br. 5-6. According to Appellants, “Wolf is
evidence that making changes to Osgerby is highly unpredictable.” Reply
Br. 6. We note Wolf describes a “decisive defect” in Osgerby concerning
the embodiment shown in Figures 3 and 4 of Osgerby. See Wolf, col. 2,1.
61-col. 3,1. 5.
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We are also persuaded that the Examiner has not explained adequately
how Osgerby would be further modified so that the system continues to
function properly in light of the single proposed modification to the turbine
21. Appellants contend that the Examiner has improperly taken the position
“that it was not necessary to show in the art that such [further] modifications
were possible” because Appellants’ application does not teach how to
implement the claimed pressure ratio and/or second turbine exit discharge
pressure. Appeal Br. 18. We agree with Appellants on this point. The
Allam Declaration explains why modifying Osgerby, as proposed by the
Examiner, would necessitate additional modifications to Osgerby. The
Examiner does apprise us of any error in Mr. Allam’s statements. And,
although none of the claims are rejected for lack of enablement or adequate
written description, Appellants point out that Example 3 in the Specification
describes the claimed system and method. Id.', see Spec. p. 96,11. 19-22,
Fig. 13.
The Examiner’s reliance on Iantovski does not cure the deficiencies in
the combination of Osgerby and Mathieu. In this regard, the Examiner does
not apprise us of any error in Mr. Allam’s explanation as to why Iantovski
would have no bearing on the motivation of one skilled in the art to modify
the turbine pressure ratio in Osgerby, as proposed by the Examiner. See
Decl. ^ 9.
For the foregoing reasons, we do not sustain the rejection of claim 1.
Claim 3
Claim 3 recites a power generation system comprising, inter alia, “a
first combustor adapted to combust a fuel in the presence of a recycle CO2
stream and provide a first combustor exhaust stream at a pressure of at least
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about 10 MPa’ ’’ and “a second turbine in fluid communication with the
second combustor and comprising an inlet adapted to receive the second
combustor exhaust stream and an outlet adapted to output a second turbine
discharge stream at a pressure that is less than about 0.15 MPa.” Appeal
24-25 (Claims App.) (emphasis added). The Examiner finds that Mathieu
teaches that the pressure P4 at the exit of the low pressure turbine is less than
0.15 MPa. Final Act. 4. The Examiner concludes that it would have been
obvious to modify Osgerby’s second turbine 21 in the system shown in
Figure 1 to have an exit pressure of less than 0.15 MPa to provide “high
cycle efficiency due to increased combustor exit pressure,” as taught by
Mathieu, and due to low compression work, as taught by lantovski. Id.
(citing Mathieu, p. 1694,11. 7-8; lantovski, p. S142,1. 29-p. SI43,11. 7).
Final Act. 4.
As noted, Osgerby discloses an exhaust stream pressure from
combustion chamber 14 at point (3) of 3000 psi (20.7 MPa) and an exhaust
stream pressure from turbine 21 at point (6) of 294 psi (2.0 MPa). See
Osgerby, Figs. 1, 2. These values correspond to a pressure ratio of about 10.
Mathieu discloses a pressure P2 of 40 bar (4 MPa) and a pressure P4 of 1 bar
(0.1 MPa). See Mathieu, p. 1696 (Table 1). These values correspond to a
pressure ratio of 40. In claim 3, the ratio of the first combustor exhaust
stream pressure (10 MPa) to the second turbine discharge stream pressure
(0.15 MPa) corresponds to a pressure ratio of about 67. Neither Osgerby nor
Mathieu discloses this pressure ratio.
Furthermore, as discussed above with respect to claim 1, the Examiner
has not provided an adequate reason with a rational underpinning to modify
Osgerby’s second turbine 21 to have an exit pressure of less than 0.15 MPa.
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Accordingly, we do not sustain the rejection of claim 3 for reasons similar to
those for claim 1.
Claim 4
Claim 4 recites a power generation system comprising, inter alia, “a
first turbine and a second turbine in series that are adapted to expand a high
pressure recycle CO2 stream between a high pressure of about 10 MPa to
about 60 MPa over a pressure ratio that is greater than 20 and discharge
from the second turbine at a pressure that is less than about 0.15 MPa
Appeal Brief 25-26 (Claims App.) (emphasis added). The Examiner finds
that Mathieu teaches the claimed pressure ratio and second turbine discharge
pressure. Final Act. 5. The Examiner concludes that it would have been
obvious to modify Osgerby’s second turbine 21 such that the ratio of the
pressure at the exit of the first combustor 14 to the pressure at the exit of low
pressure turbine 21 is at least 20 and the pressure at the exit of low pressure
turbine 21 is less than about 0.15 MPa. Id. The Examiner articulates the
same rationale as for claims 1 and 3. Id.
For the reasons discussed above for claims 1 and 3, the Examiner has
not provided an adequate reason with a rational underpinning to modify
Osgerby’s second turbine 21 as proposed. Accordingly, we do not sustain
the rejection of claim 4 for reasons similar to those for claims 1 and 3.
Claims 31-33. 4(M2. 44. 46. and 47
Claim 31 recites a power generation system comprising, inter alia, “a
first combustor adapted to . . . provide a first combustor exhaust stream at a
pressure of at least about 12 MPa” and “the first and second turbines being
adapted to expand their respective streams such that the pressure ratio at the
inlet of the first turbine to the outlet of the second turbine is at least about
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20.” Appeal Br. 31-32. The Examiner’s findings and reasoning for t claim
31 are similar to those for claims 1, 3, and 4. Final Act. 5-6. Accordingly,
we do not sustain the rejection of claim 31, or claims 32, 33, 40^12, 44, 46,
and 47 depending therefrom, for reasons similar to those discussed for
claims 1 and 3.
Claim 49
Claim 49 recites a power generation system comprising, inter alia, “a
first turbine and a second turbine in series that are adapted to expand a high
pressure recycle CO2 stream between a high pressure of about 10 MPa to
about 60 MPa over a pressure ratio that is greater than 20.” Appeal Br. 35
(Claims App.) (emphasis added). The Examiner’s findings and reasoning
for claim 49 are similar to those discussed for claims 1 and 4. Final Act. 8-
9. Accordingly, we do not sustain the rejection of claim 49 for reasons
similar to those discussed for claims 1 and 4.
II
The Examiner’s application of Fassbender to reject claim 43 does not
cure the deficiencies of the rejection of parent claim 31. Thus, we do not
sustain the rejection of claim 43 as unpatentable over Osgerby, Mathieu,
Iantovski, and Fassbender.
III
The Examiner’s application of Crawford to reject claim 45 does not
cure the deficiencies of the rejection of parent claim 31. Thus, we do not
sustain the rejection of claim 45 under 35 U.S.C. § 103(a) as unpatentable
over Osgerby, Mathieu, Iantovski, and Crawford.
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IV
The Examiner’s application of O’Hearen to reject claim 48 does not
cure the deficiencies of the rejection of parent claim 31. Thus, we do not
sustain the rejection of claim 48under 35 U.S.C. § 103(a) as unpatentable
over Osgerby, Mathieu, Iantovski, and O’Hearen.
DECISION
We reverse the rejections of claims 1, 3, 4, 31-33, and 40^19.
REVERSED
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