Ex Parte Nierenberg

Patent Trial and Appeal Board

Mar 28, 2017

12758139 (P.T.A.B. Mar. 28, 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.
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:
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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
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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.
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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.
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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
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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.
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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
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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?
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“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
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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
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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.
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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.
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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
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