Ex Parte NierenbergDownload PDFPatent Trial and Appeal BoardMar 28, 201712758139 (P.T.A.B. Mar. 28, 2017) Copy Citation 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. 12/758,139 04/12/2010 Alan B. Nierenberg 2788.101 4324 86174 7590 Frederic Dorwart, Lawyers Old City Hall 124 East Fourth Street Tulsa, OK 74103 EXAMINER PETTITT, JOHN F ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 03/30/2017 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 following e-mail address(es): pchiu@fdlaw.com fdorwart@fdlaw.com dstopforth@fdlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALAN B. NIERENBERG Appeal 2015-003196 Application 12/758,139 Technology Center 3700 Before MICHAEL L. HOELTER, JEFFREY A. STEPHENS, and BRENT M. DOUGAL, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claim 26. Br. 5. Claims 1—25 and 27-40 have been canceled. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE CLAIMED SUBJECT MATTER The disclosed subject matter “relates to the transportation and regasification of liquefied natural gas (LNG).” Spec. 11. Claim 26 is the sole claim on appeal and is reproduced below. 26. An apparatus for vaporizing LNG onboard an LNG carrier, comprising: Appeal 2015-003196 Application 12/758,139 an LNG carrier moored to an offshore buoy; a single unidirectional closed loop onboard the LNG carrier, the unidirectional closed loop consisting essentially of: at least one first shell-and-tube heat exchanger onboard the LNG carrier, the at least one first shell-and- tube heat exchanger fluidly coupled to at least one natural gas pipeline and each of the at least one first shell-and- tube heat exchangers configured to regasify a quantity of LNG by bringing the LNG to about a vaporization temperature; at least one steam surface condenser configured as at least one second shell-and-tube heat exchanger fluidly coupled to the at least one first shell and tube heat exchanger by a single intermediate fluid; the single intermediate fluid flowing from the at least one steam surface condenser to the at least one first shell-and-tube heat exchanger and back to the at least one steam surface condenser such that the steam surface condenser provides a sole source of heat to the single intermediate fluid and wherein the single intermediate fluid provides the sole source of heat to the at least one first shell-and-tube heat exchanger; and at least one circulating pump configured to circulate the single intermediate fluid through the closed loop; and wherein the quantity of LNG is regasified onboard the LNG carrier as the LNG passes through one of the at least one first shell and tube heat exchangers. REFERENCES RELIED ON BY THE EXAMINER Bodle US 2,975,607 US 3,068,659 US 3,864,918 US 6,089,028 Mar. 21, 1961 Dec. 18, 1962 Feb. 11, 1975 July 18, 2000 April 15, 2003 Marshall, Jr. Lorenz Bowen et al. Frimm et al. US 6,546,739 B2 2 Appeal 2015-003196 Application 12/758,139 The Examiner also relies on Appellant’s Admitted Prior Art (“AAPA”) identified at least at Spec. 25, 33, 35. See Final Act. 13, 15, 18, 20; Ans. 28. THE REJECTIONS ON APPEAL1 Claim 26 is rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claim 26 is rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable over Frimm, Marshall, and AAPA. Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable over Frimm, Bodle, and AAPA. Claim 26 is rejected under 35 § U.S.C. § 103(a) as unpatentable over Frimm, Bowen, and AAPA. Claim 26 is rejected under 35 § U.S.C. § 103(a) as unpatentable over Frimm, Lorenz, and AAPA. ANALYSIS The rejection of claim 26 as failing to comply with the written description requirement The Examiner states, “the recitation, ‘a single unidirectional closed loop’ is new matter” because there is “no mention or limitation whatsoever of the direction of the flow of the loop.” Final Act. 7. In reply, Appellant references “[t]he arrows shown in the closed loop of FIG. 3” and states that 1 The Examiner’s stated rejections include references to claims 27 and 29— 32. However, these claims have been canceled (Br. 5) and hence, their rejection is not before us on appeal. 3 Appeal 2015-003196 Application 12/758,139 they “clearly illustrate a single direction of the flow of the loop.” Br. 13. Appellant further states, “[a] person of skill in the art would immediately recognize the arrows as illustrating a direction of flow.” Br. 13. Appellant also addresses “[p]ump 22” and that “the intermediate fluid [flows] in one direction only, as illustrated by the input and output arrows from the pump.” Br. 13. This is sufficient to conclude that one skilled in the art would recognize that Appellant has described a loop of fluid flowing in a single direction. Further, even in the event the fluid may be able to flow in an opposite direction, it is still understood that Appellant has described a flow in a closed loop moving in a single direction. We are not in agreement with the Examiner’s findings and conclusions on this point, or that claim 26 recites new matter on this basis. Understanding that, “there is no disclosed structure that limits the flow to only one direction” (Ans. 15), the Examiner thereafter states, “it is noted that the scope of the recitation includes structure that prevents flow in more than one direction” (Ans. 16). Based on this understanding that the recitation includes un-named structure, the Examiner then states, “[t]here are no disclosures of check valves or other structure that only permit one way flow.” Ans. 16. However, “the name of the game is the claim” {In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)) and we elect to not read additional limitations into a claim beyond those that are expressed. Consistent with our discussion above, a loop may be configured to flow in one direction based on orientation of the pump, and we do not agree with the Examiner that additional structures not recited in the claim or described in the Specification are necessary. 4 Appeal 2015-003196 Application 12/758,139 The Examiner also addresses the “limitation that the apparatus may only comprise ‘a single’ loop [and] therefore the recitation also contains new matter in this regard.” Final Act. 7 (emphasis added); see also Ans. 17. However, as noted by Appellant, the Specification provides express support for this claim limitation stating, “a single loop is clearly illustrated in FIG. 3 and paragraphs [0032] and [0044].” Br. 14. We note, in particular, that paragraph 44 of the Specification provides that “vaporizer 23 may be operated solely with use of the secondary sources of heat such as the steam heater 26,” which we understand contemplates a single closed loop including only the intermediate fluid path illustrated in Figure 23 from pump 22 to steam heater 26, from steam heater 26 to vaporizer 23, and from vaporizer 23 back to pump 22. Although the embodiment operated solely with steam heater 26 (i.e., closing off valves 45, 44, and 42 and excluding the optional fluid paths shown in dashed lines in Figure 3) is an alternative embodiment, “properly described, alternative features are sufficient to satisfy the written description standard of § 112, paragraph 1 for negative claim limitations.” Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1357 (Fed. Cir. 2015) (holding that “properly describing alternative features—without articulating advantages or disadvantages of each feature—can constitute a ‘reason to exclude’ under the standard articulated in Sanlanis[, Inc. v. Par Pharm., Inc., 694 F.3d 1344 (Fed. Cir. 2012)]”). Accordingly, we again are not in agreement with the Examiner’s findings and conclusions on this point, or that claim 26 recites new matter in this regard. The Examiner further states, “[t]he recitation, ‘the unidirectional closed loop consisting essentially of’ is new matter since the application never made any exclusionary descriptions of the structure of the closed loop 5 Appeal 2015-003196 Application 12/758,139 that would support this closed claim language.” Final Act. 7; see also Ans. 15—17. As noted above, we interpret the Specification to describe an alternative embodiment in which there is a single loop for a single intermediate fluid, consisting only of pump 22, steam heater 26, vaporizer 23 connected with piping 52 and valves 41, 46. See Spec. Fig. 3, H 31^44. Therefore, we do not agree with the Examiner that, “it is not consistent with the disclosure to limit the intermediate fluid loop to only that portion that has the steam heater.” Ans. 21.2 The Examiner also states, “[t]he recitation, ‘at least one surface condenser’ (line 5) is new matter as the application nowhere states that the steam heater (26) may comprise more than one shell and tube heat exchanger.” Final Act. 8. However, we agree with Appellant, “[t]his is incorrect since paragraph [0035] of the Application states that ‘three steam heaters 26 with drain coolers are used.”3 Br. 15. We are not in agreement with the Examiner that this recitation encompasses new matter. The Examiner further addresses “[t]he recitation, ‘such that the steam surface condenser provides a sole source of heat’” and that this recitation “contains new matter as the application does not support that the apparatus must exclude or may not include any other sources of heat to the intermediate fluid.” Final Act. 8. As discussed above, paragraph 44 of the Specification provides that “vaporizer 23 may be operated solely with use of 2 We consider whether claim 26 is clear as to what is included or excluded by the “consisting essentially of’ phrase as part of the indefmiteness rejection infra. 3 Regarding the shell-and-tube type heat exchanger, Appellant’s Specification states that this type of heat exchanger/vaporizer is “well known to the industry.” Spec. 125; see also 1123,33. 6 Appeal 2015-003196 Application 12/758,139 the secondary sources of heat such as the steam heater 26.” Accordingly, we are not in agreement with the Examiner that this recitation encompasses new matter. In summation, we do not sustain the Examiner’s rejection of claim 26 as containing new matter such that claim 26 fails “to comply with the written description requirement.” Final Act. 7. The rejection of claim 26 as being indefinite The Examiner identifies several claim phrases recited in claim 26 that are considered indefinite. Final Act. 10—11. Among those addressed is the transitional phrase ‘“consisting essentially of (line 3—4).” Final Act. 10. The Examiner considers this phrase indefinite “because the application does not make it clear what the basic and essential features are of the invention.” Final Act. 10. Appellant, on the other hand, states, “the claim language ‘consisting essentially of renders a claim open only for the inclusion of unspecified components which do not materially affect the basic and novel characteristics of the combination.” App. Br. 17—18 (citation omitted). Appellant also states, “[t]he basic and novel characteristics of Claim 26 are crystal clear.” App. Br. 18. The limitations subjected to this “consisting essentially of’ transitional phrase are the limitations directed to “at least one” heat exchanger, “at least one” steam condenser, “at least one pump,” and “the single intermediate fluid” flowing between these components (this limitation also specifying that which provides a “sole source of heat” to this intermediate fluid which, in turn, provides a “sole source of heat” to the heat exchanger). Thus, what is “crystal clear” about this combination is that it recites at least one heat exchanger, steam condenser, and pump, along with a 7 Appeal 2015-003196 Application 12/758,139 fluid flowing between them as well as how heat is acquired by the fluid and how it is transferred to the heat exchanger (i.e., “solely”). We agree with Appellant that “[t]he specification explicitly states that vaporizer 23 (heat exchanger 23) may be operated solely with the use of the steam heater (heat exchanger 26) as a source of heat.” App. Br. 19 (referencing Spec. 144; see also Spec. H 31, 32, and Fig. 3). We further agree with Appellant that, “[tjhere is nothing unclear about such an explicit statement.” App. Br. 19. However, as per Appellant’s own understanding (see supra), the transitional phrase ‘“consisting essentially of’ renders a claim open only for the inclusion of unspecified components which do not materially affect the basic and novel characteristics of the combination.” App. Br. 17—18 (emphasis added). On this point, Appellant’s Specification does not clearly identify the basic and novel characteristics of this combination or otherwise make clear what unspecified components are to be avoided so as to “not materially affect the basic and novel characteristics of the combination.” In other words, Appellant’s Specification provides no guideline or criteria to assist in ascertaining whether an additional component may or may not be permitted. For example, it is not clear from Spec. 132 whether the inclusion of additional back-flow or by-pass valves, or the inclusion of control valves, would be permitted or precluded. The inclusion of such additional devices would certainly alter fluid flow by introducing more flow resistance into the loop. What about a change in structure that might alter a flow pressure or a flow volume, but not the “sole” heat transfer of the system as recited? What about additional heat-distributing devices that improve heat transfer (or heat retention), but which are not explicitly included in the above combination? 8 Appeal 2015-003196 Application 12/758,139 “It is of utmost importance that patents issue with definite claims that clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter.” MPEP § 2173. During prosecution, “[a] claim is indefinite when it contains words or phrases whose meaning is unclear.” Id. Consequently, in accordance with Appellant’s usage (and understanding) of “consisting essentially of,” we agree with the Examiner that claim 26 is unclear, and hence indefinite, because claim 26 “does not make [] clear what the basic and essential features are of the invention” so that persons can be informed “of the boundaries of the protected subject matter.” Final Act. 10; MPEP § 2173. The rejections of claim 26 as unpatentable over Frimm, AAPA and one of Marshall, Bodle, Bowen, or Lorenz Appellant argues the individual rejections of claim 26 involving either Marshall, Bodle, or Bowen together. Br. 20—29. Appellant separately addresses the rejection of claim 26 involving Lorenz. Br. 29—35. We address Appellant’s arguments with respect to Marshall first. However, before we do so, we first must construe the scope of claim 26. In doing so, we address “the single intermediate fluid” limitation discussed above. This limitation includes the phrase, “such that the steam surface condenser” (emphasis added). The only antecedent basis for “steam surface condenser” is “at least one” such condenser. Thus, we understand this limitation as being “such that the at least one steam surface condenser.” This is consistent with the remainder of the identified “single intermediate fluid” limitation which repeatedly references “the at least one steam surface condenser,” except in the instance cited. Appellant contends that any combination of the primary reference of Frimm with Marshall “would result in a structure entirely different, and with 9 Appeal 2015-003196 Application 12/758,139 materially distinct characteristics, than that of Claim 26.” Br. 22. However, a review of Figure 1 of Marshall discloses “a single unidirectional closed loop” “consisting essentially of’ “at least one” heat exchanger, “at least one” condenser, “at least one” pump, and a “single intermediate fluid” flowing therebetween receiving and providing a “sole source of heat” as recited. This figure of Marshall also discloses expansion engines 12 and 14, and Appellant contends that the inclusion in Marshall of expansion engine 12 changes “the basic structure of [the] heating stages of Marshall.” App. Br. 22. However, Appellant does not elaborate on this, or otherwise explain how Marshall’s expansion engine 12 changes a “heating stage of Marshall.” To be clear, Marshall relies on heaters 11 and 13 for heat. See Marshall 2:22—27 and Fig. 1. Hence, Appellant’s contention is not persuasive of Examiner error on this point. Appellant also asserts, “there is no motivation” to make the combination because the “object of Marshall” is different. Br. 22—23. However, Appellant does not dispute the structure disclosed in Frimm or Marshall (or the teachings of AAPA) or otherwise explain how the Examiner’s stated reason to combine (Final Act. 14) fails to provide rational underpinning for this rejection based on obviousness.4 We are not persuaded by Appellant that simply having a different “object” (even if true) renders that reference unsuitable under an obviousness-type analysis.5 4 The Examiner also explains how “the references are explicitly about LNG vaporization” and hence in the same field of endeavor and suitable for use in an obviousness analysis. Ans. 26. 5 For example, we are provided guidance that even with respect to an anticipation rejection, a reference need only satisfy the limitations of the claim; it is not necessarily that the reference teach what the subject 10 Appeal 2015-003196 Application 12/758,139 Appellant also states, “[wjhere the features of one reference cannot be substituted into the structure of a second reference to produce the claimed apparatus, this weighs heavily against obviousness.” Br. 23 (reference omitted). However, this is a straw-man argument because the Examiner is not relying on a substitution of components as Appellant asserts. Instead, the Examiner finds that it would have been obvious “to modify the vaporizer of Frimm to be heated with the intermediate fluid loop of Marshall” for the reasons stated. Final Act. 14. Accordingly, Appellant’s contention regarding substitution is not persuasive of Examiner error. Appellant also states, “Frimm is silent regarding the LNG heating mechanism and the structure of the vaporizer.” Br. 24. However, the Examiner relied on a combination of references (Frimm, Marshall, and AAPA) for disclosing such structure, not Frimm alone. As such, Appellant’s contention is not persuasive of Examiner error. Appellant also addresses “Steam as the Sole Source of Heat” and that Marshall “requires multiple heat sources.” Br. 24 (referencing Marshall Fig. 2 and 1:38-40). However, Appellant’s own claim states that “at least one” heat exchanger and/or condenser is appropriate. Thus, the fact that Marshall discloses multiple such devices is not indicative of Examiner error. Furthermore, regarding whether or not Marshall discloses “steam” heat, it is not disputed by Appellant that steam heaters are “well known to the industry.”* * 6 Spec. 25 (relied on by the Examiner as AAPA, Final Act. 13). application teaches. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983). 6 Appellant further acknowledges Marshall’s teaching of steam heat (“one example given is steam”). Br. 28. 11 Appeal 2015-003196 Application 12/758,139 Accordingly, Appellant’s contention regarding the “sole” limitation is not persuasive of Examiner error. Appellant further contends that Marshall does not “teach, suggest or disclose a steam surface condenser configured as a shell-and-tube heat exchanger onboard an LNG carrier.” Br. 28. However, on this point, Appellant does not address AAPA that was relied on, which states, “[t]he steam heater 26 preferably is a conventional shell and tube heat exchanger.” Final Act. 13 (referencing Spec. 133). Nor does Appellant dispute the Examiner’s further reliance on paragraph 35 as AAPA (Ans. 28), which states, “[sjuitable steam heat exchangers 26 are similar to steam surface condensers used in many shipboard, industrial and utility applications, and are available from heat exchanger manufacturers worldwide.” Spec. 135. We are thus not persuaded by Appellant that the Examiner erred in relying on these passages in Appellant’s Specification for the reasons stated.7 In summary, Appellant is not persuasive the Examiner erred in rejecting claim 26 as being obvious over Frimm, Marshall, and AAPA. 37 CFR 41.50(a)(1) states, “[t]he affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed.” Accordingly, in view of our affirmance of the rejection of claim 26 as being obvious over Frimm, Marshall, and AAPA, we elect to not 7 Appellant states, “Appellant has not admitted that the recitations of Claim 26 were known in the art at the time the invention was made.” Br. 28. However, the Examiner is not relying on AAPA for “the recitations of Claim 26” as asserted, but instead for the disclosure that shipboard shell-and-tube steam heat exchangers were known to those skilled in the art. See Spec. 1125,33,35. 12 Appeal 2015-003196 Application 12/758,139 address the other rejections of this claim involving the references to Bodle, Bowen, or Lorenz. DECISION The Examiner’s rejection of claim 26 as lacking written description is reversed. The Examiner’s rejection of claim 26 as being indefinite is affirmed. The Examiner’s rejection of claim 26 as being obvious over Frimm, Marshall, and AAPA is affirmed. We elect at this time to not address the additional rejections of claim 26 as being obvious over Frimm, AAPA, and one of Bodle, Bowen, or Lorenz for the reasons expressed above. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation