Jose Lourenco et al.

Patent Trials and Appeals Board

Apr 1, 2021

2020004585 (P.T.A.B. Apr. 1, 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.
13/128,603 05/10/2011 Jose Lourenco THAS137092 1802
26389 7590 04/01/2021
CHRISTENSEN O'CONNOR JOHNSON KINDNESS PLLC
1201 Third Avenue
Suite 3600
Seattle, WA 98101
EXAMINER
JULES, FRANTZ F
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
04/01/2021 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):
efiling@cojk.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSE LOURENCO and MACKENZIE MILLAR

Appeal 2020-004585
Application 13/128,603
Technology Center 3700
____________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
TARA L. HUTCHINGS, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 11, 13, 15, and 16. This is the second
appeal in this application, the first being Appeal 2016-004968, decided
Sept. 21, 2017. 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. According to the Appellant, “[t]he subject application is
owned by the assignees 1304338 ALBERTA LTD., and 1304342
ALBERTA LTD., who are the real parties in interest.” Appeal Br. 1.
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STATEMENT OF THE CASE
Claimed Subject Matter
Claim 11, the sole independent claim, is representative of the subject
matter on appeal and reproduced below with some indenting and bracketed
notations added.
11. A method for increasing an injection rate of natural
gas to a gas storage cavern that is used to store natural gas, the
natural gas being stored in the gas storage cavern by diverting a
stream of natural gas from a natural gas pipeline and
compressing and injecting the stream of natural gas into the gas
storage cavern, the method comprising the steps of:
[(a)] increasing the injection rate of natural gas into the
gas storage cavern from a first rate to a second rate that is
greater than the first rate by:
[(a1)] positioning at the gas storage cavern a tank
of liquid natural gas (LNG) and a heat exchanger
upstream of a compressor, the heat exchanger having a
first flow path and a second flow path in thermal contact
with the first flow path;
[(a2)] passing LNG from the tank through the first
flow path of the heat exchanger;
[(a3)] passing the stream of natural gas through the
second flow path of the heat exchanger to effect a heat
transfer between the stream of natural gas and the LNG
such that the LNG is warmed and the stream of natural
gas is cooled;
[(a4)] passing the stream of natural gas from the
heat exchanger to the compressor to compress the natural
gas; and
[(a5)] discharging the warmed LNG and the
compressed natural gas into the gas storage cavern such
that the stream of natural gas is injected from the natural
gas pipeline into the gas storage cavern at the second
rate.

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References
The prior art relied upon by the Examiner is:
Name Reference Date
Manohar et al.
(“Manohar”)
US 6,658,888 B2 Dec. 9, 2003
Kaart US 2011/0277498 A1 Nov. 17, 2011
Pozivil et al.
(“Pozivil”)
WO 2005/068847 A1 July 28, 2005
Lourenco et al.
(“Lourenco”)
WO 2007/140581 A1 Dec. 13, 2007

Rejections
Claims 11, 13, 15, and 16 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 11, 13, 15, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lourenco in view of Pozivil, and Manohar and/or Kaart.

ANALYSIS
Written Description
The Examiner finds claim 11 fails to comply with the written
description requirement under 35 U.S.C. § 112, first paragraph, because
steps (a) and (a5) “require[] ‘increasing the injection rate’ ‘from a first rate
to a second rate’” and “the [S]pecification fails to support a method in which
injection is provided at both a first rate and a second rate.” Ans. 4; see Final
Act. 2–3, 8–9. Claim 11 requires that the “second rate . . . is greater than the
first rate.” Supra. The Examiner rejects claims 13, 15, and 16 due to their
dependency on claim 11. Final Act. 3.
The Appellant argues that the written description requirement is
satisfied because the Specification describes “[the] objective is to increase
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Application 13/128,603

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the gas injection rate of compressor 32 by lowering the temperature of the
gas suction line to the compressor, making the gas denser, thus increasing
the mass flow rate and also decreasing the compressor outlet temperature.”
Appeal Br. 5 (quoting Spec. 2:20–22); see Spec. 3:17–20. The Appellant
contends that “[t]he plain and ordinary meaning of the phrase ‘increase the
gas injection rate of compressor 32’ requires the compressor to have
operated at a gas injection rate that is lower than the increased rate.” Appeal
Br. 5. The Appellant’s argument is not persuasive.
According to the Appellant, the quoted phrase “increase the gas
injection rate of compressor 32” requires that the compressor operate at first
and second injection rates, where the first injection rate is lower than the
second injection rate. However, the Appellant fails to adequately explain
how the Specification discloses compressor 32 as operating –– or even has
the ability to operate –– at the first and second injection rates, where the first
injection rate is lower than the second injection rate.
The Examiner’s position is that the Specification’s description that
“[t]he objective is to increase the gas injection rate of compressor 32 by
lowering the temperature of the gas suction line to the compressor, making
the gas denser, thus increasing the mass flow rate and also decreasing the
compressor outlet temperature” (Spec. 2:20–22; see id. at 3:17–20) “clearly
indicates that the teaching of ‘lowering the temperature of the gas suction
line’ is relative to the prior art.” Final Act. 8. In support of this position, the
Examiner quotes the “Background” of the invention in the Specification,
which discloses the state of the prior art:
[N]atural gas is traditionally stored in a gaseous form in large
volume salt caverns and aquifers to meet peak demand and
ensure a secure supply. The gas is added to storage by
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compression, resulting in an increment in cavern temperature
and an increment in cavern pressure. These increments in
pressure and temperature in the cavern decrease the rate at
which gas can be added to the cavern.
Id. (citing Spec. 1:8–13). The Examiner explains that “a benefit of [the
Appellant’s] invention over the prior art does not amount to support for
claiming a method operating at the first rate of the prior art.” Id. In other
words, it is the Examiner’s position that the claimed first injection rate refers
to the prior art, which compresses natural gas for storage into a cavern, and
the claimed second injection rate refers to the Appellant’s invention, which
cools a stream natural gas with LNG in a heat exchanger and then
compresses the cooled natural gas for storage into a cavern.
The Appellant contends “that even if the [S]pecification is interpreted
as providing support for higher injection rates relative to prior art processes
as suggested by the Examiner, claim 1 is still supported by the application as
filed.” Appeal Br. 6. The Appellant’s contention is not persuasive.
The Specification does not disclose a method of compressing natural
gas for storage into a cavern by not cooling the gas prior to compressing the
gas (i.e., first injection rate) and by cooling the gas prior to compressing the
gas (i.e., second injection rate). See Ans. 5–6; Final Act. 8–9. Rather, the
Specification only discloses latter, which is tantamount to the claimed
second injection rate. More specifically, the Specification discloses a
method whereby heat exchanger 30 uses LNG to cool a stream of natural gas
that is routed to compressor 32, which makes the stream of natural gas
denser, and thus increases mass flow rate. See Spec. 2:20–21. Figures 1 and
2 each show main pipeline stream 1 providing natural gas stream to line 2 to
heat exchanger 30 whereby the stream is cooled by LNG. Id. at 2:8–9,
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3:4–5. The outflow of cooler natural gas from heat exchanger 30 is natural
gas stream 3, which flows to knock-out drum 31. Id. at 2:9–11, 3:5–7.
Drum 31 removes condensate through stream 4. Id. The outflow of natural
gas from drum 31 is natural gas stream 5, which flows to compressor 32. Id.
at 2:11–12, 3:7–8. This is the only route for natural gas to reach compressor
32. The Specification does not describe that a feature of its method is the
ability to control the temperature of a natural gas stream beyond heat
exchanger 30 or that a feature of the heat exchanger 30 is the ability to
provide natural gas stream 3 at different temperatures. Moreover, the
Appellant does not persuasively address whether either feature is an aspect
of its method or how one of ordinary skill in the art would understand that
either feature is an aspect of its method.
In view of the foregoing, we determine that the Appellant fails to
adequately explain how the Specification reasonably conveys to one of
ordinary skill in the art that the inventor(s) had possession of claimed
invention, which includes injecting natural gas into a gas storage cavern at
first and second rates, where the second rate is greater than the first rate.2
See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).

2 We note that the Appellant has not claimed that the second injection rate is
an improvement over the prior art’s method of injecting a stream of natural
gas into a gas cavern at a first injection rate. See also Spec. 1:1–18.
Moreover, we also note that limitation (a1) recites, “positioning at the gas
storage cavern a tank of liquid natural gas (LNG) and a heat exchanger
upstream of a compressor.” Supra (emphasis added). The “positioning”
step is the first step in step (a) “increasing the injection rate of natural gas
into the gas storage cavern.” Supra. Due to the use of the indefinite article
“a” prior to “compressor” in “positioning” step (a1), we do not understand
the step of injecting natural gas at a first rate to require the use a compressor.
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Thus, we sustain the Examiner’s rejection of independent claim 11 and
dependent claims 13, 15, and 16 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.

Obviousness
The Appellant argues that the Examiner’s rejection of Lourenco in
view of Pozivil, and Manohar and/or Kaart fails to teach step (a) of claim 11.
See Appeal Br. 7–11. The Appellant’s argument is persuasive.
At the outset, we note that claim 11’s step (a) recites “increasing the
injection rate of natural gas into the gas storage cavern from a first rate to a
second rate that is greater than the first rate by” performing steps (a1)–(a5).
Supra. In our view, step (a) requires injecting, at a first rate, natural gas into
a gas storage cavern, and injecting, at a second rate, natural gas into the gas
storage cavern, where the second rate is greater than the first rate. Under
this interpretation, the Examiner must establish that the prior art teaches
injecting, at two different rates, natural gas into a gas storage cavern.
The Examiner’s rejection, however, never appears to establish that
Lourenco, Pozivil, Manohar, or Kaart, by themselves or in combination,
teaches injecting, at two different rates, natural gas into a gas storage cavern.
Rather, the Examiner’s rejection, on this record, only seems to modify
Lourenco’s method to result in the claimed second rate of rejection. See
Final Act. 4–6. In other words, the Examiner does not establish how the
prior art teaches injecting, at a first rate, natural gas into a gas storage
cavern, where the first rate is lower than a second rate. For example, the
Examiner’s rejection does not indicate what teaching in the applied prior art
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references corresponds to the claimed first rate of injection. This deficiency
is reflected in the rejection where the Examiner determines:
if not already naturally provided by the provision of the heat
exchanger of Pozivil to Lourenco, it nonetheless would have
been obvious to one having ordinary skill in the art, at the time
of the claimed invention, to employ the cooling of the natural
gas stream to be compressed (by heat exchange with LNG, as
taught by Pozivil) to increase the natural gas flow rate through
the compressor, and thereby the injection rate into the cavern,
of Lourenco, as modified, from a nominal first rate to a higher
second rate, for the purpose of providing rapid filling of the gas
storage cavern.
Final Act. 6 (emphasis added). The Examiner’s determination appears to
interpret the claim requirement of injecting at a first rate of natural gas into a
gas storage cavern as insignificant by referring to the first rate as “nominal.”
We disagree with such an interpretation of claim 11’s step (a). Further, it is
notable that the Examiner’s interpretation of claim 11’s step (a) for the
rejection under 35 U.S.C. § 103(a) appears inconsistent with the Examiner’s
interpretation of the same step when rejecting the claim under 35 U.S.C.
§ 112, first paragraph. In the latter rejection the Examiner interprets
claim 11’s step (a) as requiring a step of injecting natural gas into a gas
storage cavern “at a lower first rate and then, at a second rate higher than the
first” (Final Act. 3), but for the former rejection the Examiner appears to
interpret the first rate of rejection as “nominal,” i.e., insignificant.
Thus, we do not sustain the Examiner’s rejection of claims 11, 13, 15,
and 16 under 35 U.S.C. § 103(a) as unpatentable over Lourenco in view of
Pozivil, and Manohar and/or Kaart.

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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11, 13, 15,
16
112, first
paragraph
Written Description 11, 13, 15,
16

11, 13, 15,
16
103(a) Lourenco, Pozivil,
Manohar, Kaart
11, 13, 15,
16
Overall
Outcome
11, 13, 15,
16

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED