Excelerate Energy Limited Parnership

Patent Trials and Appeals Board

Jun 29, 2021

2021002834 (P.T.A.B. Jun. 29, 2021)

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.
14/454,558 08/07/2014 Alan B. Nierenberg 2788.172 5843
86174 7590 06/29/2021
Frederic Dorwart, Lawyers PLLC
Old City Hall
124 East Fourth Street
Tulsa, OK 74103
EXAMINER
PETTITT, JOHN F
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
06/29/2021 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):
dstopforth@fdlaw.com
fdorwart@fdlaw.com
pmichlin@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 2021-002834
Application 14/454,558
Technology Center 3700
Before BENJAMIN D. M. WOOD, JILL D. HILL, and
MICHAEL L. WOODS, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Excelerate Energy
Limited Partnership. Appeal Br. 1.
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BACKGROUND
Appellant’s invention relates to transportation and regasification of
liquefied natural gas (“LNG”). Sole independent claim 1, reproduced below,
represents the claimed subject matter:
1. A method for regasifying LNG while onboard an LNG
carrier comprising:
mooring an LNG carrier at an offshore location, the LNG
carrier comprising an onboard LNG vaporizer;
configuring valves into a circuit such that a first heat
source provides heat to the LNG vaporizer, and such that a
second heat source is isolated from the circuit; and
regasifying the LNG onboard the LNG carrier with the
circuit.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Arnold US 4,557,319 Dec. 10, 1985
Zednik US 6,089,022 July 18, 2000
Wen US 6,367,258 B1 Apr. 9, 2002
Emblem US 2002/0134455 A1 Sept. 26, 2002
REJECTIONS
I. Claims 3 and 4 stand rejected under 35 U.S.C. § 112(b) as
indefinite.
II. Claims 1–4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Emblem and Wen.
III. Claims 1–4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Emblem, Wen, and Arnold.
IV. Claims 1–4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zednik and Wen.
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V. Claims 1–4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zednik, Wen, and Arnold.
ANALYSIS
Rejection I – Indefiniteness of Claims 3 and 4
Claim 3
Claim 3 depends indirectly from claim 1 and recites the valves being
“configured into the circuit such that flow through seawater provides
additional heat to the onboard LNG vaporizer to be used in conjunction with
the steam heater.” Appeal Br. 47 (Claims App.).
The Examiner finds that claim 3 is indefinite because “it is not clear if
the flow through seawater providing additional heat may also be the second
heat source that was recited as [isolated,] or if the claim requires the second
heat source must be isolated while the flow through seawater provides
additional heat.” Final Act. 2.
Appellant notes that its Specification discloses at least three heat
sources that “may be used in various combinations to provide heat to
vaporizer (23),” including a “steam heater (26),” “submerged heat
exchanger(s) (21),” and “flow through seawater from seawater inlet (61).”
Appeal Br. 40. Further, Appellant notes, the method of claim 1 includes
configuring valves (e.g., valves 41, 42, and 43) to selectively provide heat to
a vaporizer from a heat source (i.e., a steam heater (26)). Id. (citing Spec. ¶
42, Fig. 3). Still further, other valves (e.g., valves 44, 45 and 46) can
selectively isolate the heat source from the vaporizer. Id. at 41.
Combinations of the three heat sources listed above “may be achieved with
various combinations of open and closed valves taught in the
[S]pecification.” Id. (“For example, if valves 41, 42 and 43 are open, but
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valves 44 and 45 are closed, steam heater (26) and flow through seawater
from seawater inlet 61 provides heat to vaporizer (23), but submerged heat
exchanger (21) is isolated from the vaporizer (23) and does not provide heat
to vaporizer (23) because the valves are closed and the pathway is
blocked.”).
Based on this disclosure in the Specification, Appellant argues that
claim 3 “is not indefinite because an isolated heat source clearly cannot
provide heat.” Id. According to Appellant, claim 1 recites first and second
heat sources, the first heat source providing heat to a vaporizer and the
second heat source being isolated. Claim 2 recites the first heat source being
a steam heater. Id. Therefore, the isolated second heat source can be a
submerged heat exchanger or flow through seawater. Id. Then, claim 3
recites the flow through seawater being an additional heat source to the first
heat source/steam heater. Id. Therefore, Appellant argues, claim 3 recites
the steam heater and flow through seawater providing heat to the vaporizer
“while submerged heat exchanger (21) does not, since at least one heat
source must be isolated from vaporizer (23).” Id.
The Examiner responds that, because “configuring valves” into a
circuit as recited in claim 1 “is met by providing some valves open and some
valves closed in the circuit,” claim 3 is indefinite because “there is no way to
tell if the recitation of claim 3 is another configuring step providing the
valves into another configuration or whether the recitations of claim 3
merely further define the selfsame configuration of claim 1.” Ans. 38. The
Examiner disagrees with Appellant’s allegation that their disclosure “teaches
three possible heat sources, and that one of the three must be isolated.” Id.
at 39. According to the Examiner, the claims do not recite or require three
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heat sources, and “there are no claim limitations that require that the second
heat source must be isolated at all times,” such that it is unclear whether
claim 3 requires “another configuring of the valves or not and this ambiguity
leads to questions about whether the second heat source could be isolated at
one point in time and then provide the recited additional heat of claim 3 at a
later point in time by another configuring of the valves.” Id.
Appellant replies that claims “are read in view of the specification and
not in a vacuum.” Reply Br. 8. According to Appellant, “[o]nly a
reasonable degree of clarity and particularity is required . . . in view of the
level of skill in the art of regasification of LNG onboard a LNG carrier.” Id.
(citing MPEP § 2173.02(II)).
Appellant has the better argument. Claim 3 depends from claim 1.
Claim 1 recites a first heat source providing heat to a vaporizer, and a second
heat source that is isolated (by valve configuration) so that it cannot provide
heat to the vaporizer. Having considered Appellant’s Specification and the
three heat sources discussed therein, a skilled artisan would have
understood, with a reasonable degree of clarity, that the additional heat
source refers to a third “flow through seawater” heat source. For this reason,
we do not sustain the Examiner’s rejection of claim 3 as indefinite.
Claim 4
Claim 4 depends directly from claim 1 and recites the first heat source
being one of: (1) “a steam heater providing steam heat to the onboard LNG
vaporizer through an intermediate fluid;” (2) “flow through seawater
providing heat to the onboard LNG vaporizer;” or (3) “a submerged heat
exchanger providing heat to the onboard LNG vaporizer through the
intermediate fluid.” Appeal Br. 47 (Claims App.)
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The Examiner finds that the phrases “providing heat” in elements (2)
and (3) above render claim 4 indefinite because “it is not clear if the recited
heat is the same heat that was recited in claim 1 . . . or if this is introducing a
different heat, since the claim is reintroducing heat anew and it is not clear if
this is the same heat or not.” Final Act. 2.
Appellant argues that claim 4 “is clearly written to select any one of
the three possible heat sources to be the first heat source of independent
Claim 1,” such that both instances of the phrase “providing heat” refer to
“the same heat source as” the first heat source that “provides heat” in claim
1. Appeal Br. 43 (emphases omitted). Further, Appellant argues, the two
instances of “providing heat” are recited as mutually exclusive given the use
of the term “or.” Id. Thus, Appellant argues, claim 4 limits the first heat
source of claim 1 “to ONLY ONE OF the three claimed choices (submerged
heat exchanger (21), steam heat (26), or flow through seawater (61)).” Id.
The Examiner responds that claim 1 recites the first heat source
providing heat to the vaporizer, and claim 4 “reintroduces ‘heat’
inappropriately.” Ans. 40. The Examiner contends that “it is entirely
unclear why the recitation [of claim 4] does not read, --flow through
seawater providing the heat to the onboard LNG vaporizer-- and --a
submerged heat exchanger providing the heat to the onboard LNG
vaporizer--.” Id. The Examiner further contends that claim 4’s
reintroduction of the term heat “implies that the heat is some other heat and
not the heat already introduced in claim 1,” creating “a genuine question as
to whether . . . claim 4 requires an additional application heat to the heat
already recited in claim 1 or if the newly recited sources of heat merely
provide --the-- heat of claim 1.” Id. The Examiner also responds that “a
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reader of the claim may guess as to what the recitations require,” but “the
reintroduction of heat creates an unnecessary and easily amendable
ambiguity,” making it “unclear why the Appellant would not simply amend
claim 3.” Id.
Appellant replies that “[t]he Examiner’s point is well-taken regarding
the potential usage of ‘the’ before ‘heat’ in Claim 4,” but counters that “the
legal question is whether ‘the claims set out and circumscribe a particular
subject matter with a reasonable degree of clarity and particularity.’” Reply
Br. 8 (emphases omitted). Appellant continues that definiteness must be
analyzed in light of “(A) The content of the particular application disclosure;
(B) The teachings of the prior art; and (C) The claim interpretation that
would be given by one possessing the ordinary level of skill in the pertinent
art at the time the invention was made.” Id. at 8–9 (citing MPEP
§ 2173.02(II)). Claim 1 recites heat being provided to “an LNG vaporizer”
and claim 4 recites that “the heat is one of from a steam heater, flow through
seawater or from a submerged heat exchanger.” Id. at 9. Appellant
contends that “it does not matter if it is the ‘same’ heat [as referred to in
claim 1], and in fact, such a statement is a bit nonsensical because heat is an
energy transfer concept, and not a thing,” which is “abundantly clear in
view of the specification, and the level of one possessing ordinary skill in
the art.” Id.
Appellant has the better argument. We agree with Appellant that a
skilled artisan, having considered the Specification in its entirety, would
understand that claim 4 recites alternatives for the first heat source, and that
“the” need not be inserted before the word heat for a skilled artisan to have
understood, with a reasonable degree of clarity, that each of the alternative
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heat sources recited in claim 4 would provide the vaporizer heat recited in
claim 1. For this reason, we do not sustain the rejection of claim 4 as
indefinite.
Rejections II–V: Obviousness
Non-Analogous Art
In each of Rejections II–V, the Examiner relies on Wen for disclosing
“configuring valves into a circuit” such that a first heat source provides heat
to the LNG vaporizer, and such that a second heat source is isolated from the
circuit. See Final Act. 4, 5, 7, 8–9. Appellant argues, relevant to each of
Rejections II–V, that “Wen is non-analogous art and cannot properly be
combined with any of the other references to support on obviousness
rejection.” Appeal Br. 10, 11–12. Regarding non-analogous art, Appellant
argues, inter alia, that “Wen is not from the same field of endeavor and is
also not reasonably pertinent to the problem involved.” Id. at 11.
According to Appellant, “Wen’s field of endeavor is a combined cycle
power plant.” Appeal Br. 11. Appellant further contends that Wen’s field of
endeavor is “improving the output and efficiency of a combined cycle power
generation plant by cold liquid vaporization using a warm heat transfer fluid
to transfer heat to a vaporizer.” Id. at 12 (emphases omitted) (citing Wen
1:18–20, Abstract). Appellant submits that Wen’s claim preambles recite
“[a]n LNG/LPG combined cycle power plant” and “[a] method for
producing power in an LNG/LPG combined cycle power plant.” Id.
In contrast to Wen, Appellant argues, its field of endeavor “relates to a
method for regasifying LNG while onboard an LNG carrier,” and “[t]he
regasification of a shipboard product stored as liquid and delivered as gas is
a different field of invention than increasing the efficiency and output of a
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land-based, combined cycle power generation plant.” Appeal Br. 13
(emphases omitted). Appellant continues that “[c]ombined cycle power
plants are not the same field of endeavor as shipboard regasification of
LNG.” Id. (emphases omitted). According to Appellant, “[m]any different
fields of endeavor [employ] heat exchangers, but that does not place all of
these widely varying endeavors into the same field.” Id. (emphases
omitted).
The Examiner responds that “mere attorney assertion does not
establish the field of endeavor of Wen.” Ans. 11. According to the
Examiner, the field of endeavor of both Wen and the claimed invention is
regasifying LNG. Id. (citing Wen 1:25).
Appellant replies that the Board consistently uses, to determine the
field of endeavor: (1) express disclosure in the background of the invention;
(2) the title; and (3) the preamble of the claims. Reply Br. 4. Thus,
Appellant argues, Wen’s field of endeavor is combined cycle power plants,
and the claimed invention’s field of endeavor is “regasification of LNG
while onboard an LNG carrier.” Id. at 3–4. Appellant disagrees with the
Examiner’s assertion that any technology that vaporizes LNG is in the same
field of endeavor, arguing that such an assertion is too broad and not
consistent with Appellant’s and Wen’s disclosures. Id. at 4.
The Examiner argues that the claimed invention’s field of endeavor
should not be limited to regasification onboard an LNG carrier, because such
an “arbitrary limitation” is not “commensurate with the way that those of
ordinary skill in the art view regasification of LNG.” Ans. 11. According to
the Examiner, Appellant’s argument that it leases FSRU vessels to those
wishing to have natural gas regasification capability without building a
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plant, evidences that the field of endeavor is LNG regasification generally,
and not limited to regasification on ships. Id. at 12 (citing Appeal Br. 35).
The Examiner contends that additional benefits of Wen do not change that
Wen’s field of endeavor includes LNG regasification. Id. (“there is mention
of how LNG is regasified in nearly every single column of Wen”).
We agree that a combined cycle power plant, and the processes that
occur therein, are more complex than merely regasifying LNG. However,
the processes within Wen’s combined cycle power plant certainly include
regasifying LNG. See, e.g., Wen, Fig. 1, Abstract. The Examiner is correct
that Wen discusses LNG gasification throughout its disclosure. Indeed, the
first aspect that Wen discloses for increasing power plant efficiency is
“assisting the vaporization of [LNG]” with existing heat in the power plant.
Id. at Abstract. Further, the title of Wen is “Method and Apparatus for
Vaporizing Liquid Natural Gas in a Combined Cycle Power Plant. See id.,
Title (emphasis added). It seems to us that an inventor would look to LNG
vaporization in a power plant as relevant, generally, to LNG vaporization, or
even LNG vaporization on an LNG carrier. Appellant has provided no
explanation or evidence that the nature of an LNG carrier causes LNG
vaporization thereon to have different requirements than LNG vaporization
in a power plant. Regardless of where vaporization/regasification takes
place, a heat source is required to provide heat to a vaporizer of LNG to
vaporize its liquid form. For this reason, we are not persuaded that Wen is
non-analogous art.
Rejection II: Claim 1–4, Emblem and Wen
The Examiner finds that Emblem discloses “a method for regasifying
LNG (para. 41) while onboard an LNG carrier (1) comprising: mooring an
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LNG carrier (1) at an offshore location (para. 41, 11), the LNG carrier (1)
comprising an onboard LNG vaporizer (4; para. 38); regasifying the LNG
onboard the LNG carrier (1).” Final Act. 3–4. The Examiner finds that
Emblem also discloses “that the vaporizer is heated by propane either alone
or together with sea water, and using a water-glycol mixture as a
vaporization media (para. 20).” Id. at 4. The Examiner finds that, although
Emblem does not disclose “configuring valves into a circuit such that at least
a first heat source provides heat to the LNG vaporizer and a second heat
source is isolated from the circuit,” Wen discloses “configuring valves (25,
26, 27, 28) into a circuit (circulating a primary heat transfer fluid) such that a
first heat source (steam condenser or seawater) provides heat to the
vaporizer (13) and such that a second heat source (14) is isolated from the
circuit.” Id. (citing, inter alia, Wen 4:62; 5:30–35; 6:5; 6:16; 6:20–30). The
Examiner concludes that it would have been obvious “to modify Emblem
with an intermediate fluid circuit having heat exchangers with bypass
valves” to selectively provide and isolate “heat from a heat source” for
“improved flexibility in using the cooling from revaporizing LNG to cool
other processes as desired.” Id. The Examiner notes that, in Wen, “closing
valve 25 and opening valve 26 would isolate the heat source [(gas turbine
15)] from the circuit.” Ans. 17.
Motivation and Hindsight
Appellant argues that the method recited in claim 1 is an “elegant
solution [that] would not be reached by one of ordinary skill in the art
without the use of impermissible hindsight.” Appeal Br. 10. Along these
same lines, Appellant argues that “the Examiner has provided insufficient
motivation to combine the references in the fashion claimed.” Id. at 17.
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Appellant contends that the following reasoning proffered by the Examiner
is insufficient: (1) it is well known to have one heat source provide heat to a
LNG vaporizer while another second heat source is isolated from the circuit;
(2) to accept heat from more than one heat source and selectively isolating
one of the heat sources; and (3) improving flexibility by using the cooling
from revaporizing LNG to selectively cool other processes. Id. Appellant
argues that the Examiner’s contention that isolating a heat source is “well
known” lacks evidentiary support. Id. at 18.
We agree with Appellant that the Examiner failed to establish that it is
“well known” to have one heat source provide heat to a LNG vaporizer
while another second heat source is isolated from the circuit. A teaching
from a single reference is insufficient, in this case, to establish that selective
isolation of heat sources was well known.
Appellant then argues that reasoning (2) “merely recites the solution
provided by Appellant’s claim, which is impermissible hindsight –– and is
not supported by any need or desire articulated in either of the cited
references.” Appeal Br. 18. Reasoning (2), regarding selective isolation,
appears to have been intended by the Examiner as a lead in to the flexibility
asserted in the reasoning (3) above, and thus does not appear to us have been
proffered by the Examiner as a separate reasoning. Regarding reasoning (3)
–– improving flexibility based on selective isolation –– Appellant argues
that this reasoning is “inapplicable to both Emblem and the problem faced
by the Appellant,” and a skilled artisan “would not look to usages for ‘other
processes’ to solve the problem of providing flexible heat sources for the
vaporization of LNG onboard an LNG carrier.” Appeal Br. 18.
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The Examiner responds that Wen discloses “many benefits of
configuring valves into a circuit that provides heat from one heat source and
isolates another heat source from the circuit.” Ans. 17. The Examiner
contends that Wen discloses that multiple heat sources allow more heat to be
added to the LNG than a single heat source, and Wen’s valves (25, 26, 27,
28) increase system flexibility by allowing heat to be provided from
different sources “while certain heat sources are offline.” Id. (citing Wen
7:25 (“This alternative embodiment [of Fig. 3] provides heat for LNG
vaporization when the gas turbine is not operating or during the winter when
ambient air is cold.”)). Wen also discloses that it is beneficial to cool a
power plant by using its naturally-occurring heat to vaporize LNG. See id.
at 17–18. Thus, the Examiner argues, Wen suggests that configuring or
employing valves in a circuit on Emblem’s ship would provide increased
flexibility and “an increase in thermal efficiency to the thermal power
plant[].” Id. at 18. The Examiner contends that, therefore, “the rejection
does not rely on the claimed invention but relies on the teachings of Wen.”
Id.
We agree with the Examiner that Wen provides a reason to insert its
valves 25, 26, 27, 28 into the circuit of Emblem’s ship. Wen discloses that,
while the vaporizer 13 can cool heat transfer fluid that circulates to cool the
gas turbine 15 via coil 14, the heat from the gas turbine 15 is similarly used
as a heat source for the vaporizer 13. See Wen 3:41–5:63. Circulating water
18 is referred to as a “secondary heat transfer fluid” that heats the “primary
heat transfer fluid” that circulated through the gas turbine cooling coil 14.
Id. at 6:19–39. The primary heat transfer fluid is selectively circulated
through gas turbine cooling coil 14 and/or the cooling coil of heat exchanger
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16 by opening and closing valves 25, 26 (for gas turbine cooling coil) and
valves 27, 28 (for the cooling coil of heat exchanger 16). Id. at 6:12–39. In
the discussion of the embodiment of Figure 3, Wen states that its heat
exchanger can add heat to the primary heat transfer fluid 32 that runs
through the vaporizer, gas turbine cooling coil 14, and cooling coil of heat
exchanger 16. Id. at 7:14–20. This occurs when valve 27 is open and valve
28 is closed, and assists vaporization. Id. at 6:65–7:3, 7:19–20. Wen
discloses selective utilization of the gas turbine cooling coil 14 and cooling
coil of heat exchanger 16 in stating that the embodiment of Figure 3 can
selectively utilize the heat exchanger 16 to “provide[] heat for LNG
vaporization when the gas turbine is not operating or during the winter when
ambient air is cold.” Id. at 7:23–26. Thus, Wen teaches flexibility achieved
using valves 25, 26, 27, 28 to selectively route a primary heat transfer fluid
used by the vaporizer through a primary and/or secondary heat source.
Appellant further argues that “Wen is about producing cooling
energy,” whereas claim 1 is directed to heating LNG and, thus, a “rationale
to combine Wen with Emblem should have an explanation of why one of
ordinary skill in the art would use the valve and bypass valve of Wen to
provide flexible choice of heat source to regasify LNG.” Appeal Br. 19
(emphases omitted).
Appellant’s argument on this point is not persuasive, because Wen is
directed to both cooling energy and providing heat to a vaporizer 13 by
employing primary 14 and/or secondary 16 heat sources that are selectively
connected to the vaporizer’s circuit via valves 25, 26, 27, 28. We are not
persuade by this argument.
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Configuring
Appellant also argues that “Wen does not discuss ‘configuring’ valves
as in the claimed invention.” Appeal Br. 15. According to Appellant, Wen
is not configurable, and the text of Wen cited by the Examiner as evidence
“does NOT discuss configuring valves into a circuit.” Id. at 15–16.
Appellant also contends that “[t]he Examiner says nothing about how the
apparatus of Wen might be modified to be used with Emblem to produce a
method of ‘configuring valves.’” Id.
The Examiner responds that Wen discloses configuring valves 25, 26,
27, 28 into a circuit with pump 24 to selectively provide heat from multiple
sources. Ans. 14. We agree with the Examiner. Appellant provides no
formal construction of the term “configurable.” Nor does the Examiner.
The plain and ordinary meaning of the term “configure” is “to set up for
operation . . . in a particular way.” Merriam-Webster Online Dictionary,
https://www.merriam-webster.com/dictionary/configuring (last visited May
4, 2021). Thus, the plain meaning of “configuring” would be “setting up for
operation in a particular way.” See id. This construction is consistent with
use of the term “configuring” in Appellant’s Specification. It is unclear to
us, given that Wen discloses opening and closing valves 25, 26, 27, 28 to
selectively employ heat sources 14, 16 to provide heat to vaporizer 13 (see
explanation of Wen above), how Wen fails to disclose setting up its system,
which provides LNG regasification, in a particular way. Here, the particular
way could refer to selective connection of the vaporizer to available heat
sources. For this reason, Appellant’s argument is unpersuasive.
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Second Heat Source
Appellant next argues that the Examiner erroneously “equates Wen’s
valves with Claim 1’s ‘a second heat source [that is] isolated from a circuit.”
Appeal Br. 16 (emphases omitted) (“a bypass valve is . . . is essentially a
pressure regulator [that] does not isolate one heat source from another.”).
The Examiner responds that Wen discloses plural heat sources, and
therefore discloses the recited “second heat source.” Ans. 16 (citing Wen
4:60–65 (steam heat source), 5:5, 6:65–67 (heat available from inlet air to
turbine), 5:5–10 (heat available from cryogenic power generation cycle),
6:30–40 (water), 7:25 (heat from seawater)).
We agree with the Examiner. Even if the Examiner misspoke in
identifying a valve as a heat source, the Examiner also accurately found that
Wen discloses two heat sources –– gas turbine coil 14 and the coil of heat
exchanger 16. We, therefore, discern no error in the Examiner’s finding.
Rejection III: Claims 1–4, Emblem, Wen, and Arnold
The Examiner finds that “Emblem, as modified [by Wen], meets all of
the limitations of the claims” but, to the extent that Emblem, as modified,
does not specifically disclose valves “configured into the circuit such that a
submerged heat exchanger provides heat to the onboard LNG vaporizer, . . .
ships routinely employ submerged heat exchangers to perform heat
exchange with seawater,” and Arnold discloses such “a submerged heat
exchanger (16) exchanging heat between sea water and an intermediate
fluid.” Final Act. 5–6. The Examiner concludes that it would have been
obvious to “modify Emblem with a submerged heat exchanger to heat the
intermediate circuit, along with valves to [selectively] bypass the submerged
heat exchanger” to provide “heat from seawater without having to handle
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and pump the sea water thereby reducing the components that are corroded
by sea water and for the purpose of obtaining heat exchange.” Id. at 6.
Appellant argues that “Arnold does not change the analysis with
respect to Emblem in view of Wen.” Appeal Br. 20. For the reasons
explained above regarding Rejection II, we are not persuaded by Appellant’s
arguments against Emblem and Wen.
Submerged Heat Exchanger
Appellant further argues that “Arnold’s teaching of a keel cooler to
cool systems in a ship cannot be used to cure the deficiency of Emblem or
Wen, because it teaches a keel cooler to disburse heat, not to use as a heat
source for anything, and particularly not for regasifying LNG onboard an
LNG carrier.” Appeal Br. 22 (emphases omitted).
The Examiner responds that Wen, rather than Arnold, “is relied on to
disclose configuring valves into a circuit such that a first heat source
provides heat to the LNG vaporizer and such that a second heat source is
isolated from the circuit.” Ans. 21. Arnold is only relied on for its
disclosure of employing submerged heat exchangers to heat exchange with
seawater. Id. The Examiner further explains that dependent claim 4 does
“not require the submerged heat exchanger, since it was recited in the
alternative,” but Arnold informs us that submerged heat exchangers were
known, and that there are benefits to using a submerged heat exchanger
when performing heat exchange with seawater, and those benefits are
applicable whether the seawater is being heated or cooled. Ans. 20.
We agree with the Examiner. Claim 4 recites a submerged heat
exchanger as an alternative. Thus, the Examiner did not even need to bring
in Arnold. The Examiner only proffered Arnold to show that submerged
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heat exchangers were known. We discern no error in the Examiner’s
findings and conclusions underlying Rejection III.
Rejection IV: Claims 1–4, Zednik and Wen
According to Appellant, “[t]he Examiner uses Wen in [Rejections IV
and V] exactly as he used it with Emblem.” Appeal Br. 24. Appellant again
raises Wen being non-analogous art and failing to “teach a required claim
element to help the Examiner establish a prima facie case of obviousness.”
Id. at 24–26. For the reasons set forth above in our analysis of Rejection II,
Wen is analogous prior art.
Teaching Away
Appellant argues that Zednik teaches away from the claimed
invention. Appeal Br. 26. According to Appellant, “Zednik considers and
rejects potential heat sources other than direct use of surrounding seawater
for the vaporization of LNG, and in the end, discourages and disparages
them all.” Id. Appellant contends that Zednik discusses, at length, “safety
hazards to the ship and crew of piping ‘live steam’ to heat LNG vaporizers,
the problems of keeping the ship’s boilers fired during off-loading
operations, and the risks of the toxicity of glycol to the crew and
surrounding environment.” Id. at 26–27 (citing Zednik 2:23–52). Appellant
contends that “[w]hen the Examiner then combines Zednik with Wen (a
shore-based regasification system) he ignores the fact that Zednik itself says
that shipboard and shore-based regasification systems are different at least
because of the safety concerns for crew members and the environment.” Id.
at 27. In fact, Appellant argues, Zednik “explicitly considered and rejected
the combination proposed by the Examiner as dangerous, technically
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problematic and toxic to the environment,” such that a skilled artisan “would
not combine Zednik with Wen to arrive at the claimed invention.” Id.
The Examiner responds that all of the teachings of Zednik were
considered, including disclosed “disadvantages.” Ans. 24 (citing Zednik
2:38–52). The Examiner argues that there is no requirement that prior art
combinations have no disadvantages.” Id. Further, the Examiner argues,
“steam lines pos[ing] a risk to crewman [is] not dissuasive as steam turbines
and steam lines are regularly used for power on ships and there advantages
far outweigh the small risk of leaks.” Id. Further, the Examiner argues,
maintenance routines and inspections can minimize leak risk. Id. The
Examiner then argues that having to run steam boilers “is a valid
consideration,” but Wen “configure[s] valves into a circuit so that the
various heat sources can be employed as needed depending on the situation
at hand,” making the intermittent use of steam boilers on a ship “an
advantage and a flexibility and not a disadvantage.” Id.
Here, the Examiner has the better argument. While Zednik discloses
risks associated with using steam heat on an LNG carrier, Zednik also
discloses that such has been proposed. Zednik 2:27–31 (“the system
described in the above cited Paper proposes to use steam from the ship’s
boilers as the heat-exchange medium in the onboard vaporizers for
revaporizing the LNG.”). Further, the Examiner’s proposed combination is
not adding steam heat to an LNG carrier, but rather configuring the system
on the LNG carrier to have valves for selective use of heat sources for
vaporization. Arguments about Zednik teaching away are, thus, not
persuasive that it would not have been obvious to add Wen’s configurable
valves to Zednik’s system.
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Motivation
Appellant next argues that there is no motivation to combine Zednik
and Wen, and the Examiner’s proffered reasoning lacks a rational
underpinning. Appeal Br. 27. According to Appellant, the Examiner’s
proffered reasoning, “providing heat from a heat source or isolating a heat
source as desired and for . . . improved flexibility” comes from the
disclosure of Arnold, which teaches keel coolers “to COOL other systems in
a ship.” Id. at 28. Appellant argues that this reasoning is inapplicable to
Zednik and Wen, which are shore-based systems. Id. According to
Appellant, ship-based systems have “unique problems” and are therefore not
interchangeable with shore-based systems. Id.
We are not persuaded by Appellant’s argument. Appellant has
provided no proof or detailed persuasive explanation of why ship-based
regasification systems are not interchangeable with shore-based
regasification systems. Further, as explained above in our analysis of
Rejection II, Wen suggests adding system flexibility by using valves 25, 26,
27, 28 to selectively route a primary heat transfer fluid used by the vaporizer
through a primary and/or secondary heat source.
Rejection V: Claims 1–4, Zednik, Wen and Arnold
Similar to Rejection III, and in addition to arguments made against the
combination of Zednik and Wen in response to Rejection IV, Appellant
argues that Arnold’s keel cooler “uses seawater to COOL hot equipment
onboard a ship,” whereas the claimed invention “repurposes” these coolers
“to provide heating capacity . . . to regasify the LNG.” Appeal Br. 29
(emphases omitted) (citing Spec. ¶ 19).
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For the various reasons explained above, we are not persuaded by
Appellant’s arguments.
Commercial Success
Appellant further argues that it “has provided ample evidence of
commercial success that dictates against a finding of obviousness.” Appeal
Br. 10. According to Appellant, the Declaration of Edward Scott (“Scott
Dec.”) is probative evidence of secondary considerations of commercial
success, and “presents facts relevant to the market share created by the
invention.” Id. at 32. Further, Appellant argues, Mr. Scott’s Declaration
establishes that the claimed invention “allowed Excelerate to capture 30% of
the world's FSRU market.” Id. at 35 (citing Scott Dec. ¶ 13). Appellant
argues that the Examiner discounted the evidence set forth in Mr. Scott’s
Declaration because the Examiner failed “to comprehend that the evidence
in the Dec. showing Excelerate was the premier entrant into the marketplace
with a configurable circuit for regasification of LNG is significant evidence
of why Excelerate dominates the [floating storage regasification unit
(“FSRU”)] market.” Id. at 34–35 (citing Dec. ¶ 13). Appellant contends
that “understanding the LNG regasification market and the FSRU’s impact
on that market is critical to understanding how the claimed invention
benefits Excelerate.” Id. at 35.
The Examiner responds, inter alia, that “[t]here is no evidence
whatsoever that the ability of [Excelerate] to negotiate with governments
and other large entities to lease such ‘complex’ ships is primarily due to their
possession of a method step of configuring valves as claimed.” Ans. 33.
We consider, first, whether any established evidence of commercial
outweighs the Examiner’s findings and conclusions establishing
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obviousness. Regarding sufficiency of proof of commercial success, in In re
Huang, the Federal Circuit affirmed that Board’s determination that a
personal affidavit including sales figures “failed to prove that evidence of
commercial success overcame” evidence establishing prima facie
obviousness. In re Huang, 100 F.3d 135, 137 (Fed. Cir. 1996). The Board
reasoned that the assertions in the affidavit were “neither supported by an
evidentiary showing nor placed in a meaningful context, e.g., market share
or profitability.” Id. The Federal Circuit “agree[d] with the Board that
Huang ha[d] not provided sufficient proof to establish” commercial success.
Id. at 139. In analyzing the evidence of commercial success, the Federal
Circuit noted that Huang provided affidavit evidence with bare sales
numbers showing sales of “several hundred thousand units to Wilson and
others” but, “[b]eyond these bare sales numbers, Huang provides no further
evidence as to the degree of commercial success achieved by the grips.” Id.
The court opined that during examination, the PTO lacks resources to
gather evidence supporting or refuting an applicant’s assertion that its sales
show commercial success, and therefore “the PTO must rely upon the
applicant to provide hard evidence of commercial success.” Id. at 139–40.
Huang, the court determined, had not “provided sufficient information upon
which the PTO could determine whether the grips were commercially
successful” because, although Huang’s affidavit indicated sales of many
units, it provided “no indication of whether this represents a substantial
quantity in this market” which provided “a very weak showing of
commercial success, if any.” Id. at 40 (citing Cable Elec. Prods., Inc. v.
Genmark, Inc., 770 F.2d 1015, 1026–27 (Fed.Cir.1985) (citations omitted)).
Because Huang’s affidavit evidence was limited, the court determined that
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the Board had not erred in deciding that Huang’s proffered evidence of
commercial success outweighed the Examiner’s obviousness findings. Id.
In In re Applied Materials, Inc., the Federal Circuit agreed with the
Board that there was insufficient evidence of commercial success to
outweigh the evidence of obviousness. 692 F.3d 1289, 1294 (Fed. Cir.
2012). According to the court, while Applied had “provided some evidence”
that its claimed invention was more successful than a competitor’s, “the
more probative evidence of commercial success relates to whether the sales
represent ‘a substantial quantity in th[e] market.’” Id. at 1300 (citing Huang,
100 F.3d at 140). The court opined that “[j]ust as the number of units sold
without evidence of the market share is only weak evidence of commercial
success, . . . so too is an assertion of market share lacking in sales data.” Id.
In the present case, Appellant has proffered the following evidence of
commercial success in this Appeal:
1. The Scott Dec. and its attached evidence stating that, since 2005,
Excelerate “has become the owner and/or operator of the largest fleet of
FSRUs in the world,” that “Excelerate is the pioneer and market leader in
innovative, floating LNG solutions,” and that Excelerate has “delivered
more floating LNG solutions than any other provider.” Scott Dec. ¶ 4. Mr.
Scott also declares that, since 2005, Excelerate has transported “over 43.7
million cubic meters of LNG on FSRUs it owns and/or operates,” and has
“managed the ship-to-ship transfer and subsequent regasification of
approximately 166.6 million cubic meters of LNG.” Id. ¶ 5. Mr. Scott then
declares that Excelerate “has designed, built and operated thirteen offshore
terminals,” each terminal costing “approximately $80-200 Million USD.”
Id. ¶ 9.
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2. A printout of Excelerate’s website, advertising benefits of the
claimed invention. Scott Dec., Annex A.
3. A spreadsheet from an unknown source that Appellant contends
establishes (1) the entire world’s FSRU fleet, (2) that since the first FSRU
(Excelerate’s Excelsior) was built in 2005, Excelerate has “accumulated”
nine out of the 31 total FSRUs in existence, accounting “for almost 30% of
the entire world FSRU market,” (3) that despite attempts by competitor
Golar to “follow Excelerate’s lead, Excelerate has remained the market
leader,” and (4) “of all 22 FSRUs owned by third parties, Excelerate’s
flexibility has allowed it to remain the most competitive and successful
market participant with the most FSRUs and offshore regasification
terminals in the world.” Scott Dec. ¶ 13, Annex B.
4. A 2018 publication stating that Excelerate, Golar, and Hoegh
dominate the FSRU industry. Appeal Br. 34, n. 21; 38 n. 26 (citing
Zawadzki, For the global LNG industry, is the FSRU honeymoon over?
Thomson Reuters: Commodities, July 18, 2018).
5. A 2017 publication explaining that competitor Golar converted
vessels to achieve certain functionality, whereas Excelerate built new
vessels. Appeal Br. 35–36 (citing Songhurst, The Outlook for Floating
Storage and Regasification Units (FSRUs), The Oxford Institute for Energy
Studies, July 2017). According to Appellant, the publication “supports
Appellant’s arguments that the ability to configure a circuit to select one
heat source and isolate another is not generally available in the
marketplace,” and “that the ‘heating fluid system’ of the Excelerate FSRUs
is an advantage because of spare capacity to ‘meet the needs of a peek send
out rate.” Id. at 35.
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Regarding Mr. Scott’s Declaration, we note that an affidavit or
declaration, timely submitted and containing evidence of commercial
success, must be considered by the Examiner in determining the issue of
obviousness. See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538
(Fed. Cir. 1983). To have probative value, such evidence should be
supported by actual proof. See, e.g., In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984). The Scott Declaration includes some proof in the way of
Annex A and Annex B. Annex A, however, is not objective evidence
supporting Mr. Scott’s conclusion – it is Excelerates own website
advertising. Further, the source of the spreadsheet in Annex B is unknown
to us. Further, although an affidavit/declaration providing only conclusions
may have some probative value, it may have little weight when considered
in light of all the evidence of obviousness. See In re Brandstadter, 484 F.2d
139 (CCPA 1973). Still further, an affidavit of an interested person can be
less persuasive than that of a disinterested person. See In re McKenna, 203
F.2d 717 (CCPA 1953). Thus, while Mr. Scott’s Declaration must be
considered, it is an affidavit of an interested person and its assertions are not
supported by compelling evidence.
Regarding the Songhurst publication, we note that it contains no
evidence of market share. The Examiner contends that Songhurst’s
publication “is not a part of the declaration” and the evidence presented
therein “only further establishes that there are a host of very important
financial and logistical and technical decisions that have led to the success of
the company and there is no evidence that the use of valves in a circuit is
responsible for the Appellant's alleged commercial success.” Ans. 33–34.
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Regarding the Zawadzki publication, the Examiner contends that the
opinions of Zawadski “have been considered but are largely irrelevant”
because “they have no relation to the claimed invention,” “the opinions of
journalists are not facts,” and “[are] not sufficient to overcome the evidence
for obviousness provided by the prior art.” Ans. 31.
In making a determination of patentability, evidence supporting
patentability is weighed against evidence supporting the Examiner’s
obviousness determination. See Richardson-Vicks, Inc., v. The Upjohn Co.,
122 F.3d 1476, 1484 (Fed. Cir. 1997). Thus, evidence of commercial
success is not necessarily dispositive of patentability; rather, evidence of
commercial success is weighed against the Examiner’s proffered evidence of
obviousness to determine patentability.
Here, as explained above in our analysis of Rejections II and IV, the
Examiner has proffered substantial evidence of unpatentability (i.e.,
obviousness). Appellant, in turn, has proffered some evidence of
commercial success. The substantial evidence of unpatentability must be
weighed against Appellant’s evidence of commercial success. Appellant’s
evidence includes an affidavit of an interested party, Mr. Scott, referencing
Appellant’s own website and a spreadsheet from an unknown source that
Appellant contends shows that since the first FSRU (Excelerate’s Excelsior)
was built in 2005, Excelerate has “accumulated” nine out of the 31 total
FSRUs in existence, accounting “for almost 30% of the entire world FSRU
market.” Scott Dec. ¶ 13, Annex B.
The Zawadzki publication, which Appellant claims establishes that
Excelerate, Golar, and Hoegh dominate the FSRU industry, has some
relevance to commercial success. While indeed stating that the first FSRU
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was “put in operation in 2005 by Exelerate,” which dominates the industry
along with Golar and Hoegh, the Zawadzki publication provides no evidence
to support its claim or tie the success of Excelerate to the claimed invention.
It is our opinion that Appellant’s proffered evidence is relevant to
commercial success, but is insufficient to overcome the evidence proffered
by the Examiner regarding unpatentability.2 We decline to allow the
submitted evidence of commercial success to overcome the Examiner’s
strong obviousness rejection. Commercial success can tip scales in a
patentability analysis, but it cannot create patentability when no invention
exists.
Copying
Appellant also argues that competitors copied their claimed invention,
which is additional evidence of non-obviousness. Appeal Br. 33. According
to Mr. Scott, Excelerate’s success has prompted others to try to copy
Excelerate and enter the FSRU market. Scott Dec. ¶ 13. Mr. Scott declares
that the spreadsheet presented in Annex B shows that Golar entered the
FSRU market in 2008 as Excelerate’s first competitor, but Excelerate has

2 Cf. Fox Factory, Inc. v. SRAM, LLC, IPR2016-01876, slip op. at 51-52
(P.T.A.B. Apr. 2, 2018) (Paper 59) (“substantial commercial success within
the single chainring market,” demonstrated by Patent Owner’s sales and
marketing evidence showed “large growth in market share and sales volume,
and resulting large market share in the single chainring market, to be
indicative of commercial success.” See Ex parte Standish, 10 USPQ2d 1454
(Bd. Pat. App. & Inter. 1988) (Gross sales figures, to establish commercial
success, should be accompanied by evidence of market share, the time
period during which the product was sold, and/or what sales would normally
be expected in the market.).
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remained the market leader as a result of its flexible regasification mode
technology. Id.
We are not persuaded by Appellant’s copying argument. The
spreadsheet does not provide persuasive evidence of copying. Further, the
source of the spreadsheet is unknown. Mr. Scott is an interested party. His
unsupported allegation of copying, even when combined with Appellant’s
proffered evidence of commercial success, cannot overcome the Examiner’s
substantial evidence of unpatentability.
CONCLUSION
We agree with the Examiner’s arguments regarding indefiniteness.
Each and every argument regarding the prior art rejections presented by
Appellant in both the Appeal Brief and the Reply has been carefully
considered and found unpersuasive. The Examiner’s rejection is
AFFIRMED.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
3, 4 112(b) Indefiniteness 3, 4
1–4 103(a) Emblem, Wen 1–4
1–4 103(a) Emblem, Wen, Arnold 1–4
1–4 103(a) Zednik, Wen 1–4
1–4 103(a) Zednik, Wen, Arnold 1–4
Overall
Outcome:
1–4

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED