Ex Parte Le Bot et al

Patent Trial and Appeal Board

Apr 23, 2013

10555745 (P.T.A.B. Apr. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PATRICK LE BOT, OLIVIER DE CAYEUX, and
FREDERIC JUDAS
____________________

Appeal 2011-001283
Application 10/555,745
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001283
Application 10/555,745

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
19-37. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to a method and system for the production of
pressurized air gas by cryogenic distillation of air. Sole independent claim
19, reproduced below, is illustrative of the claimed subject matter:
19. A method which may be used for
separating air by cryogenic distillation in a system
of columns, said method comprising:
a) providing a system of columns
comprising a double column or a triple column,
wherein said column operating at the highest
pressure is operating at a pressure called medium
pressure;
b) raising air to a high pressure, wherein
said high pressure is at least about 5 to about 10
bar greater than said medium pressure; wherein
said high pressure air comprising a first portion
and a second portion, wherein said second portion
is at least part of the portion of said high pressure
air that is remaining after said first portion is
removed;
c) withdrawing said first portion of said
air from an exchange line, wherein:
1) said first portion comprises
between about 10% to about 50% of the flow of
said high pressure air; and
2) said first portion is withdrawn
at a temperature within 5 deg. C of the (pseudo)
liquid vaporization temperature;
d) boosting, with a cold booster, said
first portion to at least said high pressure, wherein:
Appeal 2011-001283
Application 10/555,745

3
1) said cold booster is in fluid
connection with a drive device; and
2) said drive device comprises at
least one member selected from the group
consisting of:
i) an expansion turbine;
ii) an electric motor; and
iii) a combination expansion
turbine and electric motor;
e) sending said boosted first portion
back into said exchange line;
f) sending at least one liquefied portion
from a cold end of said exchange line to at least
one column of said system;
g) expanding said second portion of said
high pressure air in a Claude turbine, and sending
said expanded second portion to a medium
pressure column;
and
h) withdrawing at least one liquid stream
from said column system.

REFERENCE
Grenier US 5,596,8851 Jan. 28, 1997

REJECTIONS
Claims 20-26 stand rejected under 35 U.S.C. § 112 first paragraph as
failing to comply with the written-description requirement. Ans. 3.
Claims 19-37 stand rejected under 35 U.S.C. § 112 second paragraph
as indefinite. Ans. 3-4.
Claims 19-37 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Grenier. Ans. 5.

1 Both the Appeal Brief (Br. 12) and the Answer (Ans. 2) mistakenly cite
Grenier as US 5,595,885.
Appeal 2011-001283
Application 10/555,745

4
ANALYSIS
Claims 20-26 – Written Description
Appellants do not present any argument pertaining to the rejection of
claims 20-26 as failing the written-description requirement. We therefore
summarily sustain this rejection. See MPEP § 1205.02, 8th ed., Rev. 8, July
2010 (“if a ground of rejection stated by the examiner is not addressed in the
appellant’s brief, that ground of rejection will be summarily sustained by the
Board.”).
Claims 19-37 – Indefiniteness
Appellants do not present any argument pertaining to the rejection of
claims 19-37 as indefinite. As above, we summarily sustain this rejection.
Claims 19-37 – Obviousness – Grenier
Sole independent claim 19, step b), requires that incoming high
pressure air be separated into a “first portion” and a “second portion,”
wherein “said second portion is at least part of the portion of said high
pressure air that is remaining after said first portion is removed.” Br. 17
(Claims Appx.). Step g) requires “expanding said second portion of said
high pressure air in a Claude turbine and sending said expanded second
portion to a medium pressure column.” Referring to Grenier figure 3, the
Examiner found that the compressed air discharged from compressor 42 is
separated into a first portion sent through line 64 and a second portion sent
through line 74. Ans. 5. The Examiner acknowledged, however, that “a
portion of the second portion” enters turbine 75, as some of the second
portion is diverted to expansion valve 76. Ans. 13-14.
Appellants argue that Grenier does not satisfy step g) of claim 19
because not all of the second portion enters the Claude turbine. Br. 15. We
Appeal 2011-001283
Application 10/555,745

5
agree. Step g) requires that “said second portion” be expanded in a Claude
turbine, which reasonably means that all of it be sent to the Claude turbine,
not just a portion of it. See Norgren v. Int’l Trade Comm’n, 699 F.3d 1317,
1323 (Fed. Cir. 2012) (claim drawn to a “four-sided, generally rectangular
clamp” requires that “the clamp as a whole, and not merely portions of it,
must be four-sided and generally rectangular”). Because not all of the air in
line 74, which the Examiner specifically identified as the second portion,
enters the Claude turbine, the Examiner’s rejection of claim 19 as obvious
over Grenier is not sustained.2 Because claims 20-37 depend from claim 19,
the rejection of those claims as obvious over Grenier is not sustained as well.
DECISION
For the above reasons, we summarily affirm the Examiner’s rejection
of claims 20-26 as failing the written description requirement and the
Examiner’s rejection of claims 19-37 as indefinite. The Examiner’s
rejection of claims 19-37 as obvious over Grenier is reversed.

2 It seems evident that Grenier does perform step g) if the portion of air that
enters turbine 75 is deemed the “second portion” rather than all of the air in
line 74. It is not necessary to deem the entire portion of air in line 74 to be
the second portion. The claim itself contemplates the possibility that, after
the first portion is removed, there may be at least one additional split when it
recites “wherein said second portion is at least part of the portion of said
high pressure air that is remaining after said first portion is removed.”
However, because we have already summarily affirmed the rejection of all
of the pending claims as indefinite, we decline to enter a new ground of
rejection based on this interpretation of Grenier. See MPEP § 1205.02, 8th
ed., Rev. 8, July 2010 (“Since the exercise of authority under 37 C.F.R.
§ 41.50(b) is discretionary, no inference should be drawn from a failure to
exercise that discretion.”)
Appeal 2011-001283
Application 10/555,745

6
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)(iv).

AFFIRMED

Klh