Ex Parte Olah et al

Patent Trial and Appeal Board

Aug 16, 2013

12469366 (P.T.A.B. Aug. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GEORGE A. OLAH
and G.K. SURYA PRAKASH
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Appeal 2012-004974
Application 12/469,366
Technology Center 1700
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Before TERRY J. OWENS, GEORGE C. BEST, and DONNA M. PRAISS,
Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-3, 5-16 and 20-23, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claims are directed toward methods for providing a
strategic U.S. fuel reserve of methanol or dimethyl ether. Claims 1 and 23
are illustrative:
1. A method of providing a strategic U.S. fuel reserve
comprising storing methanol or dimethyl ether in appropriate
storage facilities in a strategic amount to serve as an alternative
fuel to imported oil.

23. A method of supplementing the strategic U.S. fuel
reserve comprising storing methanol or dimethyl ether in the
U.S. Strategic Petroleum Reserves.

The References
Basu US 5,906,664 May 25, 1999
Nakagaki US 6,099,983 Aug. 8, 2000
Filippi US 2004/0123737 A1 Jul. 1, 2004
Lastella US 2005/0081435 A1 Apr. 21, 2005
Gibson US 2005/0132642 A1 Jun. 23, 2005
Green US 2005/0250863 A1 Nov. 10, 2005
Olah (Olah ‘091) US 2006/0235091 A1 Oct. 19, 2006
Olah (Olah ‘969) US 2007/0254969 A1 Nov. 1, 2007
Matsumoto (abstract) US 2004-036687 A Feb. 5, 2004

Methanol Refueling Station Costs 1-15, EA Engineering, Science, and
Technology, Inc. (Feb. 1, 1999) (hereinafter Station).

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Strategic Petroleum Reserve: A Remarkable Asset 1-7 (Apr. 23, 2006), at
http://www.semp.us/publictions/biot_reader.php?BiotID=352 (hereinafter
SPR).

Twenty in Ten: Strengthening America’s Energy Security, White House
Office of Communications (Jan. 23, 2007) (hereinafter Twenty).

The Rejections
The claims stand rejected as follows:
1) claims 1, 12, 13, 16, 20 and 22 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 Appellants regard as the
invention,
2) claim 13 under 35 U.S.C. § 101 as failing to claim statutory
subject matter,
3) claims 1-3, 5-8, 11-16, 20, 22 and 23 under 35 U.S.C. § 103 over
Olah ‘091 in view of Gibson and SPR,
4) claims 9 and 10 under 35 U.S.C. § 103 over Olah ‘091 in view of
Gibson, SPR, Olah ‘969 and Green,
5) claims 20-23 under 35 U.S.C. § 103 over Olah ‘091 in view of
Gibson, SPR and Twenty,
6) claims 1-3, 12, 20, 22 and 23 under 35 U.S.C. § 103 over Filippi in
view of Lastella, Gibson and SPR,
7) claims 5-8 and 11-16 under 35 U.S.C. § 103 over Filippi in view of
Lastella, Gibson, SPR and Olah ‘091,
8) claims 9 and 10 under 35 U.S.C. § 103 over Filippi in view of
Lastella, Gibson, SPR, Olah ‘091, Olah ‘969 and Green,
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9) claims 20-23 under 35 U.S.C. § 103 over Filippi in view of
Lastella, Gibson, SPR and Twenty,
10) claims 1-3, 12 and 20-23 under 35 U.S.C. § 103 over Station in
view of Nakagaki, SPR and Twenty,
11) claims 5-8 and 11-16 under 35 U.S.C. § 103 over Station in view of
Nakagaki, SPR, Twenty and Olah ‘969,
12) claims 9 and 10 under 35 U.S.C. § 103 over Station in view of
Nakagaki, SPR, Twenty, Olah ‘969 and Green,
13) claims 1 and 12 under 35 U.S.C. § 103 over Matsumoto in view of
Gibson, Basu and Nakagaki,
14) claims 5-8, 11-16 and 20 under 35 U.S.C. § 103 over Matsumoto in
view of Gibson, Basu, Nakagaki and Olah ‘969,
15) claims 9 and 10 under 35 U.S.C. § 103 over Matsumoto in view of
Gibson, Basu, Nakagaki, Olah ‘969 and Green, and
16) claims 20-23 under 35 U.S.C. § 103 over Matsumoto in view of
Gibson, Basu, Nakagaki and Twenty.
OPINION
We reverse rejections 1, 2, 6 and 13-15 and affirm rejections 3-5, 7-12
and 16.
Rejection 1
“[T]he indefiniteness inquiry asks whether the claims ‘circumscribe a
particular area with a reasonable degree of precision and particularity.’”
Marley Mouldings Ltd. v. Mikron Industries Inc., 417 F.3d 1356, 1359 (Fed.
Cir. 2005) (quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971)).
The Examiner asserts that the terms “U.S. fuel reserve” and
“U.S. Strategic Petroleum Reserve” are indefinite because there is no size
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limitation on the storage facility and that “strategic amount” and “amount
sufficient to provide U.S. independence from imported oil” are indefinite
because there is no amount set forth as being sufficient to avoid shortage
(Ans. 6-7).
The Examiner has not established that definiteness of the claims
requires recitation of a storage facility size or a stored amount. The
Examiner’s mere assertion to that effect is not sufficient for establishing a
prima facie case of indefiniteness.
The Examiner argues that “using the retrieved dimethyl ether as a
substitute for natural gas or LPG” in claim 13 is indefinite because the claim
does not set forth any positive steps regarding the use such as a step of
“substituting” (Ans. 6, 39).
The Examiner’s mere assertion that “using . . . as a substitute” is not a
positive step does not establish that “using the retrieved dimethyl ether as a
substitute for natural gas or LPG” fails to circumscribe a particular area with
a reasonable degree of precision and particularity.
For the above reasons we reverse rejection 1.
Rejection 2
The Examiner argues that claim 13 does not claim patentable subject
matter because the recitation of “using . . . as a substitute”, without any
recited steps regarding the use, is an improper definition of a process
(Ans. 6).
The step of “using the retrieved dimethyl ether as a substitute for
natural gas or LPG” is part of a claimed process. The Examiner’s mere
assertion that “using . . . as a substitute” does not recite steps regarding the
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use does not establish that the claimed process is not a process under
35 U.S.C. § 101.
Hence, we reverse rejection 2.
Rejections 3-5, 7-12 and 16
The Appellants argue that in view of Olah ‘091, Olah ‘969, SPR or
Twenty, one of ordinary skill in the art would not have expected turbulence
or spikes in the methanol market and, therefore, would not have been led to
store a strategic amount of methanol (Br. 14-16, 18-21).
SPR (p. 2) and Twenty (3rd page) disclose that oil is stored in the
Strategic Petroleum Reserve to provide an inventory of oil for use during oil
supply interruptions, Twenty discloses that methanol is an alternative to
gasoline (1st page), and Olah ‘091 (¶ 0013) and Olah ‘969 (¶ 0013) disclose
that methanol is a substitute for gasoline and diesel fuel and is a potential
substitute for liquefied natural gas and liquefied petroleum gas. In view of
those disclosures, one of ordinary skill in the art, through no more than
ordinary creativity, would have stored methanol in a strategic reserve to
provide an inventory of methanol as a substitute for gasoline, diesel fuel,
liquefied natural gas and liquefied petroleum gas during oil supply
interruptions. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)
(“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.”). As acknowledged by the Appellants, “[w]hat is true for a
‘strategic amount’ of petroleum is also true for a ‘strategic amount’ of
methanol because one of ordinary skill would routinely convert among
forms of energy storage according to their relative energy contents” (Br. 13).
The Appellants argue that inventive effort would be required to store
methanol where the Strategic Petroleum Reserve is stored, i.e., in salt
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domes, because salt, though insoluble in petroleum, is moderately soluble in
methanol (Br. 16-17).
The Appellants’ disclosure of storing methanol in salt domes, without
any accompanying enabling information (Spec. 6:5-7; 8:27-29), indicates
that storing methanol in salt domes would not require inventive effort.
Regardless, a strategic reserve of methanol could be stored in other
enclosures such as tanks.
Thus, we are not persuaded of reversible error in rejections 3-5, 7-12
and 16.
Rejection 6
Filippi stockpiles carbon dioxide which can be used to make methanol
(¶¶ 0006, 0059).
Lastella stores a three-day supply of methanol for use in making
biofuel from waste oil (¶¶ 0013, 0017, 0087).
Gibson discloses that “[m]any consumers stockpile petroleum heating
oil during the warmer months to avoid the price spikes of winter” (¶ 0009).
The Examiner argues that in view of Lastella’s disclosure of storing a
three-day supply of methanol for use in making fuel it would have been
prima facie obvious to one of ordinary skill in the art to store, in salt domes
as taught by SPR, methanol made from Filippi’s stockpiled carbon dioxide
because salt domes are a safe and effective means of storage (Ans. 14-15,
50-51).
The Examiner has not established that the applied references would
have fairly suggested, to one of ordinary skill in the art, methanol as a
substitute for petroleum fuel. Hence, we reverse rejection 6.
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Rejections 13-15
Matsumoto stores dimethyl ether in a container whose inner surface is
coated with inorganic zinc primer (abstract).
Basu discloses methanol and dimethyl ether as components of
oxygenated diesel fuel (abstract).
Nakagaki discloses that methanol can be a fuel cell fuel (col. 4, ll. 11-
14, 22-23).
Green discloses a methane reforming catalyst (¶ 0028).
The Examiner argues that in view of the applied references it would
have been prima facie obvious to one of ordinary skill in the art to store
methanol as an alternative fuel source during periods of limited availability
or excessive cost of oil (Ans. 18, 51-52).
The Examiner has not established that the applied references would
have fairly suggested, to one of ordinary skill in the art, methanol as a
substitute for petroleum fuel. Accordingly, we reverse rejections 13-15.
DECISION/ORDER
Rejections 1, 2, 6 and 13-15 are reversed. Rejections 3-5, 7-12 and 16
are affirmed.
It is ordered that the Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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