Ex Parte Palmer et al

Patent Trial and Appeal Board

Jul 30, 2018

13672312 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/672,312 11/08/2012
26158 7590 08/01/2018
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
FIRST NAMED INVENTOR
Miles R. Palmer
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.
P62622 1300US.l 8400
EXAMINER
BURKE, THOMAS P
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MILES R. PALMER, JEREMY ERON FETVEDT,
DAVID ARTHUR FREED, and
GLENN WILLIAM BROWN JR.
Appeal 2017-011120
Application 13/672,312
Technology Center 3700
Before CHARLES N. GREENHUT, BRETT C. MARTIN, and
BRENT M. DOUGAL, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a rejection of claims
1, 4--9, 11, 12, 20, 21, 25-31, and 37--42. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is 8 Rivers Capital, LLC. App. Br. 1.
Appeal 2017-011120
Application 13/672,312
CLAIMED SUBJECT MATTER
The claims are directed to a hybrid fossil fuel and solar heated
supercritical carbon dioxide power generating system and method. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of generating power, the method comprising:
combusting a carbonaceous fuel in a primary combustor
with oxygen in the presence of a pressurized CO2 containing
stream to provide a heated CO2 containing stream at a pressure
of about 150 bar (15 MPa) comprising one or more combustion
products;
passing the heated CO2 containing stream at a temperature
of about 500 °C to about 1,800 °C and a pressure of about 150
bar ( 15 MP a) to about 400 bar ( 40 MP a) from the primary
combustor through a turbine to expand the heated CO2
containing stream, generate power, and form a turbine exhaust
stream comprising CO2;
cooling the turbine exhaust stream comprising CO2 in a
heat exchanger to form a cooled turbine exhaust stream;
pressurizing CO2 from the cooled turbine exhaust stream
to form the pressurized CO2 containing stream;
heating the pressurized CO2 containing stream in the heat
exchanger;
further heating the pressurized CO2 containing stream with
a solar heater; and
passing the pressurized and solar heated CO2 containing
stream to the primary combustor;
wherein the amount of carbonaceous fuel and oxygen
provided to the primary combustor is controlled such that the
heat of combustion in the primary combustor is inversely related
to heat available from the solar heater for heating the pressurized
CO2 containing stream passing through the solar heater.
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Application 13/672,312
REJECTIONS
Double Patenting
Claims 1, 11, 12, 20, 21, 26, and 37 are rejected under nonstatutory
double patenting as being unpatentable over claim 11 of Allam '075 (U.S.
8,596,075 B2, issued Dec. 3, 2013) in view of Childs (U.S. 6,470,683 Bl,
issued Oct. 29, 2002) as evidenced by Litwin (U.S. 2010/0024421 Al,
published Feb. 2, 2010) and Freund (U.S. 2011/0127773 Al, published June
2, 2011) and further in view of Rouse (U.S. 2002/0108371 Al, published
Aug. 15, 2002).
Claims 4--9, 27-31, and 38--42 are rejected under nonstatutory double
patenting as being unpatentable over claim 41 of Allam '075 in view of
Childs, as evidenced by Litwin and Freund, and further in view of Rouse.
Claim 25 is rejected under nonstatutory double patenting as being
unpatentable over claim 60 of Allam '075 in view of Childs, as evidenced by
Litwin and Freund, and further in view of Rouse.
Reiections under § 103 (a)
Claims 1, 4--8, 11, 12, 25, 26, 28-31, 37, and 39--42 are rejected under
pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Allam '799 (US
2011/0179799 Al, published July 28, 2011) in view of Childs, as evidenced
by Litwin and Freund and further in view of Rouse.
Claims 9, 27, and 38 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Allam '799 in view of Childs as evidenced by Litwin and
Freund and further in view of Rouse, and further in view of Osgerby (U.S.
4,498,289, issued Feb. 12, 1985).
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Application 13/672,312
Claims 1, 20, 21, 26, 27, and 37 are also rejected under
35 U.S.C. § 103(a) as being unpatentable over Osgerby in view of Childs as
evidenced by Litwin and Freund and further in view of Rouse.
OPINION
Reiections under § 103 (a)
The rejection of claims 1, 4---8, 11, 12, 25, 26, 28-31, 37, and 39-42 over
Allam '799 in view of Childs as evidenced by Litwin and Freund, and further
in view of Rouse.
Arguments are set forth for each stated rejection under§ 103(a)
without reference to the specific language of any particular claim. There
does not appear to be any dispute that the Examiner's proposed combination,
if made, would yield the claimed subject matter. Rather, Appellants'
contentions are that the proposed combination would not have been obvious.
With respect to the combination predicated on Allam '799, for which
claim 1 is representative under 37 C.F.R. § 4I.37(c)(l)(iv), Appellants'
contend Allam '799 is too specific in the requirements for adding heat to the
CO2 stream 1053 so as to provide the requisite "reasonable expectation of
success" in including the solar heater of Childs. App. Br. 6-10. Allam '799
has inventors and assignment interests in common with the present
application and discloses all aspects of the claimed subject matter except for
those related to the solar heater. Declarant, Brock Forrest, 2 an employee of
the real party in interest in the present application, contends that the
specificity of Allam '799, including the pressures and temperatures required
by Allam '799, would not lead one to expect that solar heating would be
2 Declaration of Brock Forrest, dated July 21, 2016.
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Application 13/672,312
useful absent hindsight. Deel. paras. 3-5. We agree with the Examiner,
however, that the weight of evidence is to the contrary. Ans. 3-5.
The portion of Allam '799 relied upon by declarant (Deel. para. 3;
Allam '799 para. 271) discussing the requirement for "considerable ... low
grade heat" to be added to the CO2 stream actually demonstrates the lack of
criticality or specificity of the heating source. Although that paragraph does
not mention solar as a possibility, this is not a requirement for rejection
under§ 103(a). Allam '799 provides various examples of the heat source:
LP steam stream 1052 and the adiabatic heat of compression (as in the
embodiment illustrated in Fig. 12 cited by the Examiner), steam streams
from the coal fired power station, and heat formed by the air separation unit.
This evidence weighs against Appellants' position concerning the need for
using a specific source of heat in Allam '799.
We also agree with the Examiner that the cited evidence, Childs and
Freund, effectively rebut Appellants' position that one skilled in the art
would not have a reasonable expectation of success in making the proposed
modification. Childs and Freund demonstrate, respectively, the use of solar
power to heat supercritical CO2, and solar power's capacity to provide heat
within the requisite temperature ranges. Declarants' remarks (Deel. paras. 4,
5) that such systems cannot "be simply dropped into the Allam cycle" reflect
a misunderstanding of the standards involved in an obviousness analysis. "It
is well-established that a determination of obviousness based on teachings
from multiple references does not require an actual, physical substitution of
elements." In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012).
"Combining the teachings of references does not involve an ability to
combine their specific structures." In re Nievelt, 482 F.2d 965, 968 (CCPA
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Application 13/672,312
1973). The fact that judgment and mechanical skill may be required to
arrive at a particular combination does not necessarily mean that particular
combination constitutes a nonobvious invention. Graham v. John Deere Co.
of Kansas City, 383 U.S. 1, 10-12 (1966) (discussing Hotchkiss v.
Greenwood, 52 U.S. 248 (1850)). Absolute predictability that the
substitution will be successful is not required, all that is required is a
reasonable expectation of success. See In re O 'Farrell, 853 F.2d 894, 903-
04 (Fed. Cir. 1988). One of ordinary skill can use his or her ordinary skill,
creativity, and common sense to make the necessary adjustments and further
modifications to result in a properly functioning device. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398,418 (2007) ("the [obviousness] analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ"). Further, an
expert's opinion (Deel. para. 6) on the legal conclusion of obviousness is
neither necessary nor controlling. Avia Group Int 'l, Inc. v. L.A. Gear Calif.,
Inc., 853 F.2d 1557, 1564 (Fed. Cir. 1988).
Appellants make brief arguments concerning Rouse that only point
out that Rouse does not disclose subject matter for which it was not cited by
the Examiner. App. Br. 9. Appellants do not apprise us of any specific error
in the Examiner's reliance on Rouse or the conclusions drawn therefrom.
For the foregoing reasons we sustain the rejection of claims 1, 4--8,
11, 12, 25, 26, 28-31, 37, and 39--42 over Allam '799 in view of Childs as
evidenced by Litwin and Freund, and further in view of Rouse.
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The rejection of claims 9, 27, and 38 over Allam '799 in view of Childs as
evidenced by Litwin and Freund, and further in view of Rouse and Osgerby.
Appellants present brief arguments alleging "the examiner again has
not shown that a person of ordinary skill would predict that Allam could or
should be modified through addition of a further combustor" because "[ the
combination proposed by the Examiner] would already include heating from
one combustor and a solar heater ( which the examiner argues is capable of
heating the recycle CO2 to a temperature of 1000°C)." App. Br. 10-11.
Osgerby is cited in this context for the unremarkable proposition that it was
known in this art to provide heat using a two stage burner as an alternative to
a single stage. Non-Final Act. 21; Osgerby col. 9, 11. 65-68; col. 10, 11. 26-
33. Appellants' argument is essentially generic, that because a prior-art
device performs a particular function or achieves a particular result it is
nonobvious to use alternatives for performing that function or achieving that
result. This is again inconsistent with the standards of an obviousness
analysis. "[A] person of ordinary skill has good reason to pursue the known
options within his or her technical grasp. If this leads to the anticipated
success, it is likely the product not of innovation but of ordinary skill and
common sense." KSR, 550 U.S. at 421.
For the foregoing reasons we sustain the rejection of claims 9, 27, and
38 over Allam '799 in view of Childs as evidenced by Litwin and Freund,
and further in view of Rouse and Osgerby.
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The rejection of claims 1, 20, 21, 26, 27, and 37 over Osgerby in view of
Childs as evidenced by Litwin and Freund and further in view of Rouse.
Regarding this rejection, there is no dispute that the Examiner's
proposed combination would yield the subject matter of representative claim
1. Rather, Appellants contend that the combination proposed would not
have been predictable because Osgerby is inoperable. App. Br. 11-17
(citing U.S. 5,802,840, issued Sept. 8, 1998 to Wolf); Deel. 9.
It is true that a prior art reference must be "enabling of the features for
which it has been cited." See In re Epstein, 32 F.3d 1559, 1567---69 (Fed.
Cir. 1994) (citing In re Sasse, 629 F.2d 675,681 (CCPA 1980)). However,
Appellants' arguments are unpersuasive for several reasons. First,
Appellants' have not explained how the allegedly inoperable aspects of
Osgerby relate to the subject matter for which Osgerby was cited. Where
the evidence or argument presented asserts inoperability in features of the
reference that are not relied upon, the reference is still effective as to other
features that are operative. In re Shepherd, 172 F.2d 560, 564 (CCPA
1949). Appellants' arguments concerning inoperability relate to the ability
to realistically achieve the exact temperatures and pressures stated by
Osgerby with known, non-theoretical, systems and methods. That Osgerby
may have relied on some theoretical or hypothetical figures that are in
practice unrealistic does not demonstrate inoperability of Osgerby's system
in its entirety. Second, Appellants' do not apprise us of where the claims
recite or embody the specific subject matter alleged to be nonenabled or
inoperative in Osgerby. Where the evidence or arguments presented asserts
that the reference relied upon is inoperative, the claims presented by the
applicant must distinguish from the alleged inoperative reference disclosure.
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In re Crosby, 157 F.2d 198,200 (CCPA 1946); see also In re Epstein, supra.
Allegations of inoperability related to features or components not found in
the claims or relied upon by the Examiner do not demonstrate error in the
Examiner's rejection.
Third, although there is no concrete evidence of the simulation
described by Appellants entered into the record, even were we to regard
Appellants' statements as an accurate description of the simulation,
Appellants' description, at most, simply shows Appellants plugged in some
of Osgerby's reference values and did not come up with realistic parameters
for certain components of Osgerby's system. Determining whether a
description in a publication may be used as prior art against an application
requires a determination of whether one skilled in the art to which the
invention pertains could take the description of the invention in the printed
publication and combine it with his own knowledge of the particular art and
from this combination be put in possession of the features for which the
reference has been cited. See In re Samour, 571 F.2d 559 (CCPA 1978).
"Skilled workers would as a matter of course, [] if they do not immediately
obtain desired results, make certain experiments and adaptations." In re
Michalek, 162 F.2d 229,232 (CCPA 1947). Appellants have not provided
any explanation or evidence to demonstrate why the inability to realize
certain theoretical values would tum one skilled in the art away from
Osgerby's system in its entirety. "[T]he failures of experimenters who have
no interest in succeeding should not be accorded great weight." Id.
Fourth, and perhaps most convincingly, the aspect of the alleged
inoperability appearing to be most relevant to the claimed subject matter, the
relied upon teachings of Osgerby, and the discussion of Osgerby in Wolf,
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relates to the purported inability of Osgerby's heat exchangers 26, 126 to
recover sufficient energy to heat the CO2 stream in the manner envisioned
by Osgerby. App. Br. 13-14; Wolf col. 2, 1. 61- col. 3, 1. 5; Osgerby col. 8,
11. 6-13. If this is in fact a shortcoming of Osgerby, as suggested by
Appellants, it is one that would seem to motivate, rather than discourage, the
Examiner's proposed modification of adding an additional, solar, heating
source. As mentioned above, where obviousness is concerned, the fact that
judgment and mechanical skill may be required to arrive at a particular
combination does not necessarily mean that particular combination
constitutes a nonobvious invention. Graham, supra. One of ordinary skill
can use his or her ordinary skill, creativity, and common sense to make the
necessary adjustments and further modifications to result in a properly
functioning device. See KSR, supra.
For the foregoing reasons we sustain the rejection of claims 1, 20, 21,
26, 27, and 37 over Osgerby in view of Childs as evidenced by Litwin and
Freund and further in view of Rouse.
Double Patenting
It is not clear what Appellants are intending to argue as the
Examiner's error in the double-patenting rejections. Appellants' state:
the examiner has gone outside the metes and bounds of the
claims of the Allam patent to find basis for alleging obviousness
of multiple, necessary elements of the presently rejected claims.
In such situation, an obviousness-type double patenting rejection
is not proper.
App. Br. 18. An obviousness-type double patenting rejection is set forth
when the prior patent or application does not recite in a claim every
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limitation appearing in the claims presently rejected. Thus, it is unclear why
Appellants appear to take issue with the Examiner's reliance on additional
evidence to demonstrate that the subject matter presently claimed would
have been an obvious variant of that claimed previously. Ans. 5 ( citing
MPEP § 804(II)(B)(2)). Appellants' arguments do not apprise us of any
errors in the Examiner's double patenting rejections.
DECISION
The Examiner's rejections are 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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