Paul J. Berlowitz et al.

Patent Trials and Appeals Board

Dec 30, 2019

14207728 - (D) (P.T.A.B. Dec. 30, 2019)

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.
14/207,728 03/13/2014 Paul J. Berlowitz 2014EM057-US 4504
27810 7590 12/30/2019
ExxonMobil Research & Engineering Company
P.O. Box 900
1545 Route 22 East
Annandale, NJ 08801-0900
EXAMINER
THOMAS, BRENT C
ART UNIT PAPER NUMBER
1724
NOTIFICATION DATE DELIVERY MODE
12/30/2019 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):
ipg@exxonmobil.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL J. BERLOWITZ, TIMOTHY ANDREW BARCKHOLTZ,
and ANITA S. LEE

Appeal 2018-009128
Application 14/207,728
Technology Center 1700
____________

Before ROMULO H. DELMENDO, KAREN M. HASTINGS,
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–4 and 6–21.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed Mar. 13, 2014
(“Spec.”), the Final Office Action dated Nov. 30, 2017 (“Final Act.”), the
Appeal Brief filed Apr. 30, 2018 (“Appeal Br.”), the Examiner’s Answer
dated June 28, 2018 (“Ans.”), and the Reply Brief filed Sept. 25, 2018
(“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. ExxonMobil Research and Engineering Company is
identified as the real party in interest. Appeal Br. 3.
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STATEMENT OF THE CASE
The invention relates to the use of molten carbonate fuel cells in the
processing or production of cement. Spec. ¶ 3. The Specification describes
molten carbonate fuel cells as utilizing hydrogen or other fuels to generate
electricity. Id. ¶ 5. The Specification defines “reformable fuel” as a fuel that
contains carbon hydrogen bonds that can be reformed to generate H2. Id.
¶ 56. According to the Specification, CO is not considered a reformable fuel
under this definition, although CO can participate in a water gas shift
reaction to form hydrogen. Id.
Claims 1 and 19, reproduced below, are illustrative of the subject
matter on appeal (emphasis added).
1. A method for producing cement, the method
comprising:
introducing a fuel stream comprising a reformable fuel
into an anode of a molten carbonate fuel cell, into an internal
reforming element associated with the anode, or into a
combination thereof;
in a process for production of cement, heating a cement
kiln to form a cement product and a cement kiln exhaust;
introducing a cathode inlet stream comprising CO2 and
O2 into a cathode of the fuel cell, the cathode inlet stream
comprising at least a portion of the cement kiln exhaust; and
generating electricity within the molten carbonate fuel
cell.
Appeal Br. 15 (Claims Appendix).
19. A method for producing cement, the method
comprising:
introducing a fuel stream comprising a reformable fuel
into an anode of a molten carbonate fuel cell, into an internal
reforming element associated with the anode, or into a
combination thereof;
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in a process for production of cement, heating a cement
kiln to form a cement product and a cement kiln exhaust;
introducing a cathode inlet stream comprising CO2 and
O2 into a cathode of the fuel cell, the cathode inlet stream
comprising at least a portion of the cement kiln exhaust; and
generating electricity within the molten carbonate fuel
cell,
wherein the reformable fuel introduced into the anode,
into the internal reforming element associated with the anode,
or into the combination thereof, comprises a reformable
hydrogen content, a ratio of the reformable hydrogen content to
a net amount of hydrogen reacted at the anode being at least
about 1.5.
Id. at 17–18.
ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims in light of the case law presented in this Appeal and each of
Appellant’s arguments, we are not persuaded of reversible error in the
appealed rejections.

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The Examiner rejects claims 1–4 and 6–21 as follows. Final Act. 4–
12.

Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1–4, 6–8, 10–12, 14–18 103 Keefer,3 Shima4
9 103 Keefer, Shima, Lopez5
13 103 Keefer, Shima, Cui,6 Nakazawa7
19–21 103 Keefer, Shima, Cui

Appellant separately argues the rejections of independent claims 1 and
19. Appeal Br. 6–14. Therefore, in view of the lack of arguments directed to
the dependent claims, claims 2–4, 6–8, 10–12, and 14–18 stand or fall with
claim 1 and claims 20 and 21 stand or fall with claim 19 from which they
depend. 37 C.F.R. § 41.37(c)(1)(iv). We consider the arguments advanced
by Appellant in support of patentability of claim 1 to the extent applicable to
the separate rejections of claims 9 and 13. We separately address claims 1
and 19 below.
Claim 1
Appellant contends that the Examiner erred in rejecting claim 1 over
the combined teachings of Keefer and Shima based on the showing of
unexpected results and long-felt need. Appeal Br. 10–12. According to
Appellant, “a need to provide a suitable method for reducing CO2 emissions
in a practical manner has been felt in the cement industry since at least

3 US 2003/0143448 A1, published July 31, 2003.
4 US 2011/0044880 A1, published Feb. 24, 2011.
5 US 4,372,092, Feb. 8, 1983.
6 US 2011/0104577 A1, May 5, 2011.
7 US 5,134,043, July 28, 1992.
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1998.” Id. at 10. Appellant asserts that this is supported by the Declaration
of Paul J. Berlowitz dated August 15, 2018 (“Berlowitz Declaration”) and a
presentation that Appellant contends was made in 1998 and published in pdf
format in 2004 at www.wbcsdcement.org/pdf/tfl/prghgt42.pdf
(“Hendriks”).8 According to Appellant, Hendriks is referenced numerous
times in a subsequent 2008 report by the International Energy Agency
Greenhouse Gas R&D Programme, titled “CO2 Capture in the Cement
Industry” (“2008 Report”), which allegedly provides “the current state of the
art (in 2008) for mitigating CO2 emissions during cement manufacture.” Id.
Appellant points to Table 1 of the 2008 Report to establish that the two
primary methods of carbon capture depicted allow for avoidance of 77% and
52% of CO2 emissions. Id. at 11. Appellant compares these CO2 emissions
statistics with the 90% or greater capture in Table A of Appellant’s
Specification, but acknowledges that Table A is not a direct comparison with
Table 1 of the 2008 Report. Id. According to Appellant, the ratio of total
CO2 captured to CO2 emitted in Table 1 of the 2008 Report corresponds to a
CO2 reduction of only 82%, therefore, at 90% or greater, “Table A provides
a clear benefit in addressing this long-felt need for improving CO2 reduction
during cement manufacture.” Id.
Appellant asserts that unexpected results relative to existing solutions
has been demonstrated because the Berlowitz Declaration establishes “the
complete lack of any reference with even a hint or a suggestion of
combining a molten carbonate fuel cell with cement production in order to

8 C.A. Hendriks et al., Emission Reduction of Greenhouse Gases from the
Cement Industry. According to the Berlowitz Declaration, the Hendriks
article was presented at the 4th International Conference on Greenhouse Gas
Control Technologies in 1998. Berlowitz Decl. ¶ 3.
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reduc[e] or minimize CO2 emissions while also generating substantial
amounts of power.” Id. at 12. Appellant also argues that the prior art
references relied upon by the Examiner either lack the molten carbonate fuel
cell portion of claim 1 or the cement production portion of claim 1, therefore
no meaningful comparison can be made. Id. at 12–13. Appellant asserts that
Shima and Lalande9 have no power production and would be at least
qualitatively similar to the comparisons provided in the Berlowitz
Declaration or paragraph 35 in the Specification, thus, “the ability to recover
CO2 while producing substantial electrical power is unexpected.” Id. at 13.
The Examiner responds that there is no evidence that the asserted long
felt need persisted or that other attempts to solve the problem have been
unsuccessful. Ans. 13. The Examiner finds that the problem appears to have
been solved by others prior to Appellant, citing Shima’s separation and
removal of CO2, which can be recovered and used in other processes, and
Lalande’s disclosure of various strategies to reduce emissions by improving
energy efficiency, using waste as alternative fuel, and using fly ash to
replace cement in concrete. Id. (citing Lalande ¶ 25). The Examiner also
finds that Lalande teaches greatly reducing or eliminating CO2 production
from cement clinker manufacture by catalyzing the hydration of CO2 into a
solution of bicarbonate ions and hydrogen ions wherein the bicarbonate ions
react with metals ions to precipitate an environmentally harmless carbonated
metal. Id.
Regarding unexpectedly better results relative to existing solutions,
the Examiner responds that Keefer is the closest prior art reference because
it is drawn to a method of operating a fuel cell that allows for carbon dioxide

9 US 2004/0129181 A1, published July 8, 2004.
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utilization. Id. at 14. The Examiner further responds that Shima is relied
upon for teaching conventional cement manufacturing methods which
generate excess CO2 gas. Id. The Examiner determines that cement
production would have been an intended use for the fuel cell method from
among process methods that produce excess carbon dioxide. Id.
In the Reply Brief, Appellant contends that because claim 1 explicitly
produces cement, cement production is not an intended use. Reply Br. 3.
According to Appellant, the Examiner’s analysis is improper because the
invention is the realization that unexpected benefits could be achieved by
integrating a cement production process with the operation of molten
carbonate fuel cells. Id. (citing Spec. ¶¶ 24, 25).
Appellant’s arguments do not persuade us that the Examiner
reversibly erred in rejecting claim 1 as obvious over the teachings of Keefer
and Shima when considered together with Appellant’s objective evidence of
non-obviousness. Accordingly, we sustain the Examiner’s rejection for
essentially those reasons expressed in the Answer, including the Response to
Argument section, and we add the following primarily for emphasis.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (noting that 35 U.S.C.
§ 103 leads to three basic factual inquiries: (1) the scope and content of the
prior art; (2) the differences between the prior art and the claims at issue;
and (3) the level of ordinary skill in the art). If the Examiner’s burden is met,
the burden then shifts to the Appellant to overcome the prima facie case with
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argument and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the arguments.
See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellant does not rebut the Examiner’s findings (Ans. 13–14) that
Keefer is the closest prior art reference and that Lalande details a variety of
strategies for reducing emissions subsequent to the 2008 Report. Instead,
Appellant argues that there are “unexpected benefits . . . achieved by
integrating a cement production process with operation of molten carbonate
fuel cells.” Reply Br. 3. According to Appellant, an unexpected results
comparison cannot be made to a process that does not integrate a cement
production process. Id. The difficulty with Appellant’s argument is that
Keefer’s process takes and uses a CO2 effluent gas stream to produce
electricity and Appellant has not shown how sourcing the CO2 from a
cement production process produces unexpected results compared to
Keefer’s process. If the unexpected result is only that Appellant’s effluent
gas stream is derived from a cement manufacturing operation, the effluent
from a cement manufacturing operation would have to unexpectedly produce
a CO2 effluent gas stream. That, however, is not the case in view of Shima.
The burden of establishing that unexpected results support a
conclusion of nonobviousness rests with Appellant. In re Huang, 100 F.3d
135, 139 (Fed. Cir. 1996). “[W]hen unexpected results are used as evidence
of nonobviousness, the results must be shown to be unexpected compared
with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991). “[I]t is not enough to show that results are obtained which
differ from those obtained in the prior art: that difference must be shown to
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be an unexpected difference.” See In re Klosak, 455 F.2d 1077, 1080
(CCPA 1972) (emphasis in original).
The problem with Appellant’s long-felt need argument is that neither
the Berlowitz Declaration nor Appellant addresses alternative processes
identified by the Examiner such as Lalande to establish that the cement
manufacturing industry lacked a more efficient cement manufacture process
up until Appellant’s invention. The Berlowitz Declaration asserts that the
2008 Report “is believed to be representative of the state of the art for
mitigation of CO2 emissions during cement manufacture at the time of
filing.” Berlowitz Decl. ¶ 5. The Berlowitz Declaration, however, fails to
provide any reasoning or evidence to support the assertion that no additional
processes were known in the art besides those in Table 1 of the 2008 Report
and that no technological improvements occurred between 2008 and
Appellant’s 2014 application filing date. Berlowitz Decl. ¶ 5. The statement,
therefore, is of little probative value. See 37 C.F.R. § 42.65(a) (opinion
testimony that does not disclose underlying facts or data “is entitled to little
or no weight”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776
F.2d 281, 294 (Fed. Cir. 1985) (a lack of objective support for expert
opinion “may render the testimony of little probative value in a validity
determination”). Nothing requires a fact finder to credit unexplained
testimony of an expert. Rohm and Haas Co. v. Brotech Corp., 127 F.3d
1089, 1092 (Fed. Cir. 1997).
Even if the time span between Hendriks and Appellant’s filing date
were sufficient to establish long-felt need, Patent Owner has not addressed
Lalande’s disclosure of other techniques for reducing CO2 emissions in the
cement production industry. Lalande ¶ 25; Ans. 13. Therefore, the evidence
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cited in this appeal record is insufficient to establish that any long-felt need
was solved by Appellant’s process, as opposed to the prior art techniques
reflected in Lalande.
In sum, Appellant’s position (Reply Br. 3) that the Examiner failed to
examine claim 1 as a whole is not persuasive of error because after
thoroughly considering Appellant’s objective evidence of non-obviousness
together the teachings of Keefer and Shima, the preponderance of the
evidence supports the Examiner’s determination that a person having
ordinary skill in the art would have known that cement production produces
a high concentration excess of CO2 gas to supply to the fuel cell method of
Keefer which teaches utilizing CO2 to produce electricity. Shima ¶ 18;
Keefer ¶¶ 3, 111, Fig. 6). Accordingly, we affirm the Examiner’s rejection
of claim 1 as well as claims 2–4 and 6–18 under 35 U.S.C. § 103 over
Keefer and Shima.

Claim 19
Appellant contends that the Examiner erred in rejecting claim 19
because molecular hydrogen (H2) does not have carbon-hydrogen bonds and,
therefore, does not meet the express definition of “reformable fuel” set forth
in the Specification. Appeal Br. 7 (citing Spec. ¶ 57). According to
Appellant, the reformable hydrogen content of the reformable fuel
introduced into the anode required by claim 19 cannot be determined based
only on the fuel utilization because any H2 present in the fuel stream is not
considered reformable fuel by definition. Id. Appellant provides the
Declaration of Timothy A. Barckhotz, a named inventor, dated March 2,
2017 (“Barckholtz Declaration”) as support for the argument that Keefer’s
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reformable hydrogen content to reformable fuel ratio does not meet the
requirements of claim 19 because it is 1.3 or less. Id. at 8. Appellant
contends that neither Shima nor Cui cures this deficiency of Keefer because
Shima does not disclose a fuel cell and “the ratio in Cui could be less than
1.0.” Id. at 8–9 (citing Cui ¶¶ 61, 66, 127).
The Examiner responds that Keefer teaches the use of natural gas as
the fuel gas and natural gas by definition is comprised of hydrocarbons,
specifically methane (CH4). Ans. 12 (citing Keefer ¶ 23). Regarding the ratio
required by claim 19, the Examiner finds that Cui teaches a per pass fuel
utilization of less than 50% and the use of hydrogen rich fuels so the fuel
used by the method of Keefer, Shima, and Cui would be a reformable fuel.
The Examiner further finds that the reformable hydrogen content in the
reformable fuel versus the net hydrogen reacted at the anode in the method
of Keefer, Shima, and Cui would be a value greater than or equal to 2.0 (the
higher ratio recited in dependent claim 20) because the net hydrogen reacted
at the anode is 1 (reformable fuel) divided by less than 0.5 (fuel utilized)
which would be greater than or equal to 2.0. Id. at 12.
In the Reply Brief, Appellant maintains that because hydrogen cannot
be a reformable fuel based on the definition in the Specification, hydrogen is
excluded from the definition of reformable fuel. Reply Br. 2. Appellant
contends that the ratio cannot be determined based only on fuel utilization
because hydrogen must be excluded in determining the claimed ratio. Id.
Appellant’s arguments do not persuade us that the Examiner
reversibly erred in rejecting claim 19 over the cited prior art references.
Appellant does not dispute the Examiner’s use of less than 0.5 for the fuel
utilization rate used in determining the ratio disclosed by the cited prior art
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combination. Appellant does not dispute the Examiner’s finding that Keefer
discloses a reformable fuel (natural gas) that meets the definition provided
by paragraph 56 of the Specification. Appellant’s assertion that the claimed
ratio of hydrogen content in the reformable fuel to hydrogen reacted at the
anode would not be met by the combination of Keefer, Shima, and Cui
because the prior art fuel stream contains hydrogen in addition to reformable
fuel as defined by the Specification, which would reduce the value of the
numerator in the ratio, is not persuasive of reversible error for a number of
reasons.
First, Appellant’s argument does not address the value of the
denominator used by the Examiner to calculate the claimed ratio. The
Examiner finds the fuel utilization rate would be less than 0.5. Ans. 12.
Using this fuel utilization rate in the computation set forth in the Barckholtz
Declaration confirms the Examiner’s calculation of a ratio greater or equal to
2.0. Compare Ans. 12 with Barckoltz Decl. ¶ 15.
Second, the calculations provided in the Barckholtz Declaration are
based on unsupported assumptions about a “conventional operation” having
a fuel utilization of 75%. Barckholtz Decl. ¶¶ 7, 10, 15.
Third, Appellant’s assertion that H2 is present in the prior art fuel
stream to reduce the numerator in the claimed ratio does not adequately
address how that fact necessarily drives the value of the ratio computed by
the Examiner to below the claimed amount given that the value is also
impacted by the denominator.
Fourth, the calculations provided in the Barckholtz Declaration that
assume an anode feed gas containing 85 vol% hydrogen and 15 vol%
methane are based on an embodiment disclosed in Keefer that includes
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recycled hydrogen in the feed stream. Barckholtz Decl. ¶¶ 8, 11. In a
determination of obviousness, a reference may be relied upon for all that it
would have reasonably suggested to one having ordinary skill in the art.
Merck & Co. Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(“That the [prior art] patent discloses a multitude of effective combinations
does not render any particular formulation less obvious.”). As noted in the
Barckholtz Declaration, for Keefer’s conventional operation embodiment, it
can be assumed that all of the fuel in the anode feed gas is methane, which is
a reformable fuel. Barckholtz Decl. ¶ 15.
Because we are not persuaded of error in the Examiner’s finding that
the combination of Keefer, Shima, and Cui discloses the method of claim 19
including the claimed ratio, we affirm the Examiner’s rejection of claim 19
as well as claims 20–21 under 35 U.S.C. § 103.
CONCLUSION
For these reasons and those the Examiner provides, we uphold the
Examiner’s rejection of claims 1–4, 6–21 under 35 U.S.C. § 103 as obvious
over the cited prior art references.

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DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–4, 6–8, 10–
12, 14–18 103 Keefer, Shima
1–4, 6–8,
10–12, 14–
18

9 103 Keefer, Shima, Lopez 9
13 103 Keefer, Shima, Cui, Nazakawa 13
19–21 103 Keefer, Shima, Cui 19–21
Overall
Outcome
1–4, 6–21

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)(1)(iv).

AFFIRMED