Ex Parte Chakravarthy et al

Patent Trial and Appeal BoardApr 28, 2016

11863561 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/863,561 09/28/2007 27182 7590 04/28/2016 PRAXAIR, INC. LAW DEPARTMENT- Ml-04 39 OLD RIDGEBURY ROAD DANBURY, CT 06810-5113 FIRST NAMED INVENTOR Vijayaraghavan S. Chakravarthy 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 21637 1912 EXAMINER PHERO, MELANIE ART UNIT PAPER NUMBER 3744 MAILDATE DELIVERY MODE 04/28/2016 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 VIJAYARAGHAVAN S. CHAKRAVARTHY and JOHN HENRI ROY AL Appeal2013-009678 Application 11/863,561 1 Technology Center 3700 Before ANTON W. PETTING, MICHAEL C. ASTORINO, and BRUCE T. WIEDER, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 1-7. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We REVERSE. 1 According to the Appellants, "[t]he real party in interest is Praxair Technology, Inc." Appeal Br. 3. Appeal2013-009678 Application 11/863,561 Claimed Subject Matter Claim 1, the sole independent claim, is representative of the subject matter on appeal and is reproduced below with added emphasis. 1. A condenser reboiler system located in a bottom region of a low pressure column of double column arrangement used in an air separation system, said condenser reboiler system compnsmg: first and second heat exchangers to indirectly exchange heat from a nitrogen-rich vapor stream from a high pressure column of the double column arrangement to an oxygen-rich liquid descending within the low pressure column to condense the nitrogen-rich vapor stream and to partially vaporize the oxygen-rich liquid, thereby to initiate the formation of an ascending oxygen-rich vapor phase within the low pressure column and the collection of oxygen-rich liquid phase within a sump region thereof; the first and second heat exchangers of down-flow configuration and having flow passages open at the bottom thereof to discharge the oxygen-rich liquid phase and the oxygen-rich vapor phase; the first and second heat exchangers situated in a side=by= side relationship and located in the bottom region of the low pressure column; and the first of the heat exchangers having a length shorter than that of the second of the heat exchangers and being positioned with respect to the second of the heat exchangers such that upon start-up of the air separation system following a cold shut-down thereof, a liquid level of the oxygen-rich liquid dumped into the sump as a result of the cold shut-down is below the first of the heat exchangers to permit start-up of the air separation system while the second of the heat exchangers is at least partially submerged. Rejections Claims 1--4 and 7 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Grenier (US 5,071,458, iss. Dec. 10, 1991). 2 Appeal2013-009678 Application 11/863,561 Claims 2, 5, and 6 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Grenier and Naumovitz (US 5,956,972, iss. Sept. 28, 1999).2 ANALYSIS The Examiner finds that Grenier discloses substantially all of the claimed features of independent claim 1, but acknowledges that Grenier does not explicitly teach that the first heat exchanger (i.e., auxiliary heat exchanger 20) has a length shorter than the second heat exchanger (i.e., exchanger 7) as required by claim 1. See Final Act. 3--4; see also Grenier, Fig. 4. The Examiner concludes that a person having ordinary skill in the art would have shortened the first heat exchanger to save on construction costs by using less material and to save on operating costs associated with running a pump. See Final Act. at 4. The Appellants contend that the Examiner's reasons to modify the length of the first heat exchanger to be shorter than the length of the second heat exchanger lacks rational underpinning and, therefore, is inadequate to support the Examiner's conclusion of obviousness. See Appeal Br. 12-15. The Appellants support this contention by asserting that the Examiner's suggested benefits including lower material and operating costs that would result from a shorter first heat exchanger are unsupported by evidence. See id. at 12-13. Moreover, the Appellants assert that simply shortening the first 2 Although the Examiner sets forth separate rejections for claims 2 and claims 5 and 6 (Final Act. 6-7), we have consolidated these rejections because they are both based upon the combination of Grenier and Naumovitz. 3 Appeal2013-009678 Application 11/863,561 heat exchanger would require redesigning other dimensions of the first and/ or second heat exchanger and that the operating costs of running a pump are not influenced by the length of the first heat exchanger. See id. at 13-15. The Appellants' contention is persuasive. The Examiner responds to the Appellants' contention by reiterating similar reasoning set forth in the rejection. Compare Final Act. 8-9 with Ans. 10-11. Notably, it appears that the Examiner may base support for shortening auxiliary heat exchanger 20 on column 2, lines 8-18 and 41--43 of the Grenier patent. See Final Act. 8-9, Ans. 10-11. The cited disclosure of Grenier however is directed to positioning an exchanger, rather than shortening an exchanger, and as such, fails to adequately support the Examiner's conclusion of obviousness. Moreover, the Examiner does not include citations to any other portion of the Grenier patent to support the conclusion of obviousness. Hence, the Examiner's proffered suggested benefits as a result of shortening auxiliary heat exchanger 20 relative to exchanger 7 lack adequate support, i.e., rational underpinning. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.") (cited with approval in KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Thus, the Examiner's rejection of independent claim 1, and claims 2- 4 and 7, as unpatentable over Grenier is not sustained. The Examiner's additional findings and reasoning pertaining to the rejection of dependent claims 2, 5, and 6 do not remedy the lack of rational underpinning. Thus, we do not sustain the Examiner's rejection of claims 2, 5, and 6 as unpatentable over Grenier and Naumovitz. 4 Appeal2013-009678 Application 11/863,561 DECISION We REVERSE the Examiner's decision rejecting claims 1-7 under 35 U.S.C. Â§ 103(a). REVERSED 5