Jose Lourenco et al.Download PDFPatent Trials and Appeals BoardApr 1, 20212020004585 (P.T.A.B. Apr. 1, 2021) Copy Citation 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. Appeal 2020-004585 Application 13/128,603 2 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. Appeal 2020-004585 Application 13/128,603 3 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 Appeal 2020-004585 Application 13/128,603 4 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 Appeal 2020-004585 Application 13/128,603 5 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, Appeal 2020-004585 Application 13/128,603 6 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. Appeal 2020-004585 Application 13/128,603 7 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 Appeal 2020-004585 Application 13/128,603 8 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. Appeal 2020-004585 Application 13/128,603 9 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 Copy with citationCopy as parenthetical citation