Ex Parte Schenck

Patent Trial and Appeal Board

Apr 13, 2016

12649128 (P.T.A.B. Apr. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/649, 128 12/29/2009 Hubert Willem SCHENCK
23632 7590 04/15/2016
SHELL OIL COMPANY
PO BOX 2463
HOUSTON, TX 77252-2463
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.
TH3161 (US) 5029
EXAMINER
VADEN, KENNETH I
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
04/15/2016 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):
USPatents@Shell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUBERT WILLEM SCHENCK
Appeal2014-007641
Application 12/649, 128
Technology Center 1700
Before CATHERINE Q. TIMM, CHRISTOPHER C. KENNEDY,
and MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals the Examiner's final rejection of claims 1-14 and
16. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b ).
For the reasons set forth below, we AFFIRM.
1 Appellant identifies Shell Oil Company as the real party in interest.
App. Br. 2.
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Application 12/649, 128
The Claimed Invention
Appellant's disclosure relates to a method for supplying synthesis gas.
Abstract; Spec. 2. Claims 1 and 12 are representative of the claims on
appeal and are reproduced below from the Claims Appendix to the Appeal
Brief (App. Br. 10, 11):
1. A method for supplying synthesis gas comprising
a) reacting a carbonaceous feed with an oxidant, to
generate synthesis gas;
b) forwarding all or part of the synthesis gas generated in
step a) to an underground storage location, to generate a
synthesis gas buffer; and
c) retrieving synthesis gas from the underground storage
location and supplying the retrieved synthesis gas to a
downstream processing unit, which downstream processing unit
is substantially continuously converting synthesis gas.
12. The method according to claim 1, wherein during a
period of off-peak demand for synthesis gas and/or a period of
high generation of synthesis gas, a part of the synthesis gas
generated in step a) is passed to an underground storage
location in step b) and wherein during a period of peak demand
for synthesis gas and/or a period of low generation of synthesis
gas, another part of the synthesis gas generated in step a) is
mixed with retrieved synthesis gas in step c) and supplied to a
downstream processing unit.
The References
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Marion
Hill et al.,
(hereinafter "Hill")
us 3,920,717
US 6,581,618 B2
2
Nov. 18, 1975
June 24, 2003
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Application 12/649, 128
Bamicki
Ploeg et al.,
(hereinafter "Ploeg")
Rakhmailov
US 2007/0137107 Al June 21, 2007
US 2007/0151155 Al July 5, 2007
US 2008/0092544 Al Apr. 24, 2008
Adam Newcomer, et al., Enhancing IGCC economics with a diurnal
syngas storage scheme, Third Annual Carnegie Mellon Conference on
the Electricity Industry, March 14, 2007 (hereinafter "Newcomer")
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1--4, 6, and 11-13 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Newcomer in view of Ploeg and
further in view of Rakhmailov.
2. Claim 5 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Newcomer in view of Ploeg as applied to claim 1, and
further in view of Hill.
3. Claims 7-10, 14, and 16 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Newcomer in view of Ploeg and Rakhmailov
as applied to claim 1, and further in view of Bamicki and still further in view
of Marion.
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Rejection 1
OPINION2
Claims 1--4, 6, and 11-13. Appellant argues claims 1--4, 6, and 11-13
as a group. We, therefore, select claim 1 as representative of this group, and
the remaining claims stand or fall with claim 1. 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv)
(2014). The Examiner finds that the combination of Newcomer, Ploeg, and
Rakhmailov teaches all the limitations of claim 1. Final Act. 3-5.
The Examiner finds that Newcomer teaches the majority of claim 1 's
limitations. Final Act. 3, 4 (citing Newcomer 3, 7). The Examiner finds
further that although Newcomer teaches reacting a carbonaceous feed (i.e.,
coal) to generate synthesis gas,3 Newcomer does not specifically teach
reacting oxygen with the coal in a partial oxidation reaction, as claimed. Id.
at 4. The Examiner, however, relies on Ploeg for teaching that limitation.
Id. In particular, the Examiner finds that Ploeg teaches a partial oxidation
reaction using coal as the carbonaceous material with substantially pure
oxygen at reaction temperatures to produce synthesis gas. Id. (citing Ploeg,
Abstract; i-f 44).
The Examiner concludes it would have been obvious to one of
ordinary skill in the art at the time of the invention that Newcomer would
have used coal in a partial oxidation reaction with oxygen to deliver
synthesis gas with the desired composition of carbon monoxide and
2 We affirm the Examiner's rejections for the reasons set forth in the Answer
and the Final Office Action mailed October 3, 2013, which we adopt as our
own. Nevertheless, we highlight and address specific findings and arguments
for emphasis as follows.
3 Note that "synthesis gas" is also referred to as "syn gas." Spec. 1, 11. 10, 11.
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Application 12/649, 128
hydrogen as taught by Ploeg as a known process for producing synthesis gas
from coal. Final Act. 4.
The Examiner finds that Newcomer teaches using the synthesis gas to
supply a gas turbine for electricity, but further finds that it does not
specifically disclose the gas turbine (i.e., downstream processing unit)
substantially continuously converting synthesis gas for generating
electricity, as recited in claim 1. Final Act. 4. The Examiner, however,
relies on Rakhmailov for teaching that limitation. Id. In particular, the
Examiner finds Rakhmailov teaches that burning of fuels such as syngas is
desirable in continuous cycles, including gas turbine power generation and a
wide variety of industrial processes. Id. (citing Rakhmailov i-f 16).
The Examiner concludes it would have been obvious to one of
ordinary skill in the art at the time of the invention to have used Newcomer's
gas turbine continuously to convert synthesis gas into electricity in view of
Rakhmailov' s teachings that gas turbine power generation is a process that
bums fuel such as syngas in continuous cycles. Final Act. 4.
Appellant argues that the "combined teachings of Newcomer,
Rakhmailov, and Ploeg do not teach or suggest that the 'downstream
processing unit is substantially continuously converting synthesis gas' at
least some of which is supplied from the underground storage location"
limitation recited in claim 1. App. Br. 3.
We are not persuaded by Appellant's argument. Based on the record
before us, the Examiner's finding that the combination of Newcomer, Ploeg,
and Rakhmailov teaches all the limitations of claim 1, including that the
downstream processing unit is substantially continuously converting
synthesis gas is well-supported by the evidence and based upon sound
technical reasoning. Newcomer 3, 7; Ploeg, Abstract; i-f 44; Rakhmailov i-f
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16. As the Examiner found (Ans. 4), Newcomer teaches that the turbine can
operate independently of the gasifier and that the storage of syngas allows
for additional flexibility in facility configuration and operation. Newcomer
3. As the Examiner further found (Ans. 4, 5), the syngas process
configuration disclosed at page 3 of Newcomer would actually require
continuous operation of the gas turbine to always provide a certain minimum
of electricity/power generation.
Moreover, as the Examiner concluded (Final Act. 2, 4, 5), it would
have been obvious to one of ordinary skill to operate the gas turbine in
continuous cycles, particularly in light Newcomer's teachings regarding
continuous operation of the gas turbine during minimal electricity demand
(Newcomer 3) and Rakhmailov's teachings regarding operating gas turbine
power generation in continuous cycles (Rakhmailov i-f 16). Cf In re Dilnot,
319 F.2d 188 (CCPA 1963) (concluding that a claimed continuous operation
was obvious in light of batch process of the prior art). Appellant's argument
1s msufficient to establish reversible error in the Examiner's findings and
conclusion in this regard.
Appellant argues that it "would not [have been] obvious to modify
Newcomer to provide continuous power generation" because "Newcomer
proposes the use of storage to provide for variable demand by the turbines"
and because "Newcomer considers it advantageous to provide variable and
not continuous use of the turbines." App. Br. 4.
This argument is not well-taken because Appellant does not provide
an adequate technical explanation or direct us to sufficient evidence to
support it, and attorney argument cannot take the place of evidence. In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellant does not identify
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evidence-whether in Newcomer or elsewhere in the record-that
adequately supports these assertions.
Moreover, Appellant's argument is insufficient to show reversible
error in the Examiner's rationale for why one of ordinary skill would have
modified Newcomer in view of Ploeg's and Rakhmailov's teachings to
arrive at Appellant's claimed invention. That the Examiner's reason for
combining these references is not the same as Appellant's reason is
insufficient to establish reversible error. KSR Int 'l Co. v. Teleflex, Inc., 550
U.S. 398, 420 (2007) (explaining that any need or problem known in the art
can provide a reason for combining the elements in the manner claimed).
Appellant argues that the Examiner's rejection should be reversed
because "in Newcomer, while one particular turbine might be operating
substantially continuously ... , such turbine does so without use of stored
syngas" and the "turbine ... supplied with syngas from storage does not
operate continuously, as that would inhibit accumulation in storage." App.
Br. 4.
This argument is unpersuasive because, as noted by the Examiner
(Ans. 5), it is based on an "Example" disclosed at page 4 of Newcomer.
Newcomer's teachings, however, are not limited to the disclosures in its
examples. See In re Mills, 470 F.2d 649, 651(CCPA1972) ("[A] reference
is not limited to the disclosure of specific working examples.").
Appellant argues that the Examiner's rejection should be reversed
because the term "'downstream processing unit' in claim 1 should be
construed to mean an individual thing which (1) is supplied with synthesis
gas retrieved from an underground storage location and which also (2)
substantially continuously converts synthesis gas," and that "[ n ]either of the
two turbines of page 4 of Newcomer meet both criteria." App. Br. 6.
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We are not persuaded by Appellant's arguments. First, as previously
discussed above, Newcomer's teachings are not limited to certain examples
or embodiments disclosed at page 4, as Appellant's argument suggests. In
re Mills, 470 F.2d at 651.
Second, considering the teachings of the prior art and claim 1 's
limitations under the broadest reasonable interpretation in light of the
Specification, we discern no reversible error in the Examiner's finding (Final
Act. 2) that the two gas turbines of Newcomer correspond to a "downstream
processing unit," as recited in the claim. Newcomer 3, 4; Spec. 13, 11. 28-31
("The downstream processing unit to which the retrieved synthesis gas is
supplied may be any downstream processing unit that is known by the
skilled person to process synthesis gas. Examples of a downstream
processing unit include a gas turbine or combined cycle for power
generation.") (emphasis added).
Third, as noted by the Examiner (Ans. 5), even applying Appellant's
proposed construction, a downstream processing "unit" need not be a single
thing to read on claim 1 's limitation, as Appellant argues. Indeed, as the
Examiner found (Ans. 5), Newcomer's gas turbines are, in fact, a group that
is part of an IGCC, i.e., "integrated gasification combined cycle," which was
known in that art at the time of the invention as using a combination of gas
turbines and steam turbines to convert synthesis gas to electricity.
Newcomer 1, 3, 4; Spec. 13, 11. 28-31. Appellant's argument, without more,
is insufficient to establish reversible error in the Examiner's findings in this
regard.
Claim 12. Appellant presents an additional argument for the
patentability of claim 12. Appellant argues that the Examiner's rejection of
claim 12 should be reversed because "the combined teachings of Newcomer,
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Rakhmailov, and Ploeg do not teach or suggest another part of the synthesis
gas 'is mixed with retrieved synthesis gas' retrieved from underground
storage," as recited in the claim. App. Br. 6.
We are not persuaded by Appellant's argument. The Examiner's
finding (Final Act. 3-5, 6) that the combination ofNewcomer, Ploeg, and
Rakhmailov teaches all of claim 12' s limitations, including the "is mixed
with retrieved synthesis gas" limitation is well-supported by the record and
based on sound technical reasoning. Newcomer 3, 7, 13; Ploeg, Abstract; ,-r
44; Rakhmailov ,-r 16. As the Examiner found (Ans. 6), the configuration of
page 3 ofNewcomer shows syngas directly from the gasification or from
storage going to the gas turbine via a same line, and although not shown,
there would have to be some device to maintain the syngas in storage until
needed to be fed to the gas turbine. Moreover, as the Examiner concluded
(id. at 6, 7), one of ordinary skill in the art would have recognized from the
teachings of page 3 of Newcomer, that if there was not sufficient syngas
generated by the gasifier needed for the turbine to generate electricity, the
configuration would allow the use of both syngas from the gasifier and from
storage to be fed together to the gas turbine. We discern no reversible error
in the Examiner's conclusion and findings in this regard.
Appellant's argument that "[n]one of the examples of Newcomer
show syngas simultaneously going directly to from the gasifier to the gas
turbine and from storage to the gas turbine" (App. Br. 7) is unpersuasive
because Newcomer's teachings are not limited to the examples it discloses.
In re Mills, 470 F.2d at 651.
Appellant's conclusory assertions that the "the illustration is
inaccurate" and that "some device would be present to prevent mixing
between the stored syngas and the syngas moving directly from the gasifier
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to the turbine," (App. Br. 7) without more, are insufficient to establish
reversible error in the Examiner's findings and conclusions in this regard.
Accordingly, based on the findings and technical reasoning provided
by the Examiner, and for the reasons discussed above, we affirm the
Examiner's rejection of claims 1--4, 6, and 11-13 under 35 U.S.C. § 103(a)
as unpatentable over Newcomer in view of Ploeg and further in view of
Rakhmailov.
Rejections 2 and 3
Appellant does not present any separate or additional arguments for
the patentability of claims 5, 7-10, 14, and 16. Instead, Appellant relies on
the same arguments presented above for Rejection 1. Based on the findings
and technical reasoning provided by the Examiner and for the reasons
discussed above for Rejection 1, we find that Appellant fails to establish
reversible error in the Examiner's factual findings and legal conclusions
with respect to claims 5, 7-10, 14, and 16.
Accordingly, we affirm the Examiner's Rejections 2 and 3.
DECISION/ORDER
The Examiner's rejections of claims 1-14 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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