Terry D. Turner et al.

Patent Trials and Appeals Board

Dec 16, 2019

13528246 - (D) (P.T.A.B. Dec. 16, 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.
13/528,246 06/20/2012 Terry D. Turner 2939-10492US (BA-566) 9684
85013 7590 12/16/2019
TraskBritt / Battelle Energy Alliance, LLC
PO Box 2550
Salt Lake City, UT 84110
EXAMINER
MENGESHA, WEBESHET
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
12/16/2019 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):
USPTOMail@traskbritt.com
iplegal@inl.gov
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TERRY D. TURNER, BRUCE M. WILDING,
MICHAEL G. MCKELLAR, DENNIS N. BINGHAM,
and KERRY M. KLINGLER
____________

Appeal 2018-002401
Application 13/528,246
Technology Center 3700
____________

Before KENNETH G. SCHOPFER, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 1–3, 5, 6, 12, 16–18, 21, and
30–36, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
“Battelle Energy Alliance, LLC.” Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The Appellant’s invention “relate[s] to the compression and
liquefaction of gases and, more specifically, the liquefaction of natural gas
employing a refrigerant path separate from a process stream.” Spec. ¶ 3.
Claims 1 and 17 are the independent claims. Claim 1 is illustrative of
the subject matter on appeal and is reproduced below (with added bracketing
for reference):
1. A method of liquefying natural gas, the method
comprising:
[(a)] cooling a compressed gaseous refrigerant stream of a
refrigerant loop in a channel of a heat exchanger to form a
partially gaseous refrigerant stream comprising a gaseous phase
and a liquid phase;
[(b)] separating the gaseous phase from the liquid phase in
a separation vessel downstream of the channel of the heat
exchanger to form a gaseous refrigerant side stream and a liquid
refrigerant stream;
[(c)] expanding the gaseous refrigerant side stream in an
expansion device downstream of the separation vessel;
[(d)] combining the expanded, gaseous refrigerant side
stream with the liquid refrigerant stream in a mixer downstream
of the expansion device to form another partially gaseous
refrigerant stream; and
[(e)] directing the another partially gaseous refrigerant
stream into another channel of the heat exchanger downstream
of the mixer prior to modifying a temperature of the another
partially gaseous refrigerant stream to extract heat from a natural
gas process stream of a natural gas processing path fluidly
separate from the refrigerant loop to liquefy at least a portion of
the natural gas process stream and form a gaseous refrigerant
stream.
Appeal Br. 40 (Claims App.).

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Prevost et al.
(“Prevost”)
US 5,701,761 Dec. 30, 1997
Wilding et al.
(“Wilding”)
US 2011/0094263 A1 Apr. 28, 2011
Turner et al.
(“Turner”)
US 2011/0094262 A1 Apr. 28, 2011
REJECTIONS
Claims 1–3, 5, 6, 12, 16–18, 21, and 30–36 stand rejected under
35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing
to comply with the written description requirement.
Claims 1–3, 5, 6, 12, and 16 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Prevost.
Claims 1, 17, 18, 21, and 30–32 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Prevost in view of Wilding.
Claims 33–36 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Prevost in view of Wilding and further in view of Turner.
Claims 1–3, 5, 6, 12, 16–18, 21, and 30–32 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Wilding in view of Prevost.
Claims 33–36 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wilding in view of Prevost and further in view of Turner.
OPINION
Written Description
The Examiner rejects the claims for having insufficient support in the
disclosure to show that, at the time of the invention, the Appellant had
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possession of limitation (e) of “directing the another partially gaseous
refrigerant stream into another channel of the heat exchanger downstream of
the mixer prior to modifying a temperature of the another partially
gaseous refrigerant stream to extract heat from a natural gas process
stream.” Final Act. 2–3.
The Appellant directs attention to Figure 1 of the Specification as
showing
the NG liquefaction plant . . . is free of additional apparatuses
(e.g., heating/cooling apparatuses) intervening between the
mixer 176 and the another channel of the primary heat exchanger
120 in the flow path of the at least partially gaseous refrigerant
stream 166', one of ordinary skill in the art at the time of the
invention would recognize that the at least partially gaseous
refrigerant stream 166' may be directed from the mixer 176 into
another channel of the primary heat exchanger 120 prior to
modifying a temperature thereof.
Appeal Br. 11. The Appellant also directs attention to paragraph 25 of the
Specification as providing
support[] that the at least partially gaseous refrigerant stream 166'
may be directed from the mixer 176 and into another channel of
the primary heat exchanger 120 prior to modifying a temperature
thereof (e.g., without modifying the temperature of the at least
partially gaseous refrigerant stream 166' by way of additional
heating/cooling apparatuses intervening between the mixer 176
and the another channel of the primary heat exchanger 120).
Id. at 11–12 (emphasis omitted).
To satisfy the written description requirement under 35 U.S.C.
§ 112(a), the specification must “reasonably convey[] to those skilled in the
art that the inventor had possession” of the claimed invention as of the filing
date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
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2010) (en banc). An adequate description does not require any particular
form of disclosure or that the Specification recite the claimed invention in
haec verba, but must do more than render the claimed invention obvious.
Id. at 1352. As stated in Ex parte Parks, however, adequate written
description “does not require literal support for the claimed invention.” Ex
parte Parks, 30 USPQ2d 1234, 1236 (BPAI 1993) (emphasis omitted). As
such, “a lack of literal support does not, in and of itself, establish a prima
facie case for lack of adequate descriptive support . . . .” Id. (emphasis
omitted). “Rather, it is sufficient if the originally-filed disclosure would
have conveyed to one having ordinary skill in the art that an appellant had
possession of the concept of what is claimed.” Id.
The Examiner agrees that Figure 1 of the Specification depicts stream
166' flowing directly from mixer 176 to heat exchanger 120 without any
intervening apparatuses modifying the stream’s temperature. Ans. 3. And
paragraph 25 of the Specification discusses stream 166' flowing from mixer
176 to heat exchanger 120 without any specific description of an intervening
apparatus. When considering Figure 1 in combination with paragraph 25,
we agree with the Appellant that one of ordinary skill in the art would
recognize that the claim recites a positive limitation to what is invented (see
Appeal Br. 13), i.e., the limitation of “prior to modifying” refers to prior to a
modification in temperature caused by an apparatus or device, as opposed to
any natural heat gain or loss due to outside temperatures (see Reply Br. 3–4).
The Examiner is correct that the Specification does not specifically
discuss that partially gaseous stream 166' is sent directly to heat exchanger
120 without any intervening apparatuses performing a modification in
temperature and that there may be some natural modification in temperature
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to stream 166' during flow to the heat exchanger due to heat gain or loss as it
flows through a pipe. See Ans. 3. However, we agree with the Appellant
that one of ordinary skill in the art would understand that “the as-filed
[S]pecification supports that the at least partially gaseous refrigerant stream
166' (i.e., as opposed to a thermally modified variation thereof formed
through heat transfer form or to an ‘outside environment’) exiting the mixer
176 may be directed into the primary heat exchanger 120.” Reply Br. 4.
When considering the Specification as whole, we find the Specification
reasonably conveys to one of ordinary skill in the art that the Appellant had
possession of directing stream 166' into another channel of heat exchanger
120 downstream of mixer 176 prior to modifying a temperature of stream
166'.
Based on the foregoing, we do not sustain the written description
rejection of the claims.
Obviousness
Prevost
The Appellant contends that the Examiner’s rejection of claim 1 is in
error because:
Prevost does not teach or suggest, “directing the another partially
gaseous refrigerant stream into another channel of the heat
exchanger downstream of the mixer prior to modifying a
temperature of the another partially gaseous refrigerant stream
to extract heat from a natural gas process stream of a natural gas
processing path fluidly separate from the refrigerant loop to
liquefy at least a portion of the natural gas process stream and
form a gaseous refrigerant stream,” as recited in independent
claim 1[, limitation (e)].
Appeal Br. 21; see also id. at 22–28. Specifically, the Appellant argues that
the Examiner has not adequately explained how one of ordinary skill in the
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art would find it obvious to combine Prevost’s embodiments as depicted in
its Figures 2 and 3 to reach the claimed invention. See id. at 26–28. We
agree.
The Examiner finds that Prevost, in the embodiment depicted in
Figure 3, “teaches all the limitations as disclosed above including modifying
temperature of the another partially gaseous refrigerant stream (10) [by
passing the stream through HE1] prior to sending the stream (10) into
another channel of the heat exchanger HE2.” Final Act. 5; Ans. 5–6.
However, the Examiner also cites to Prevost’s separate embodiment as
depicted in Figure 2 to show that “liquefying a natural gas using a single
exchanger, and sending a combined expanded gaseous refrigerant (9) and
liquid refrigerant (6, 7, and 8) back to the single heat exchanger (prior to any
modification to the combined refrigerant stream) is also well known.” Final
Act. 5; see also Ans. 6. Specifically, the Examiner finds that Prevost’s
Figure 2 teaches
liquefying a natural gas using a single exchanger (El), by
sending a combined expanded gaseous refrigerant [9] and liquid
refrigerant [6, 7, and 8] (which is a stream equivalent to the
another partially gaseous refrigerant stream 10/11 of fig. 3)
back to the single heat exchanger (prior to any modification to
the temperature of the combined refrigerant stream).
Ans. 6. And, the Examiner determines:
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify the natural gas
liquefaction process of Prevost by using a single heat exchanger
as taught by fig. 2 of Prevost in order to minimize cost by
avoiding the use of multiple heat exchangers to liquefy the
natural gas, since it has been held that combining two
embodiments disclosed adjacent to each other in a prior art patent
does not require a leap of inventiveness and involves only routine
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skill in the art, Boston Scientific v. Cordis Fed. Cir. 2009 [554
F.3d 982].
Final Act. 5; Ans. 6.
Prevost’s Figure 2 and 3, reproduced below, depict methods for
liquefy pressurized natural gas.

The differences between the two figures are the additional steps added in
Figure 3, including the cooling step added between condenser C1 and
separator S1 via heat exchanger E2, the recycled vapor mixture from heat
exchanger E1 passing to exchanger E2 via pipe 11, and the pressurized
natural gas cooled by exchanger E2 fed via pipe 13 to exchanger E1 to
undergo a second cooling phase. See Prevost, col. 6, l. 59–col. 7, l. 18.
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To the extent the Examiner finds that Prevost’s Figure 3 teaches
limitation (e) of directing the another partially gaseous stream 10/11 to
another channel of heat exchanger E2 (of limitation (a)) prior to a
modification of the temperature of stream 10/11 (see Final Act. 5; Ans. 5),
this finding is unsupported. Figure 3 shows that the mixture fed via pipe 10
is sent through exchanger E1, where it is cooled, i.e., the temperature is
modified, prior to being sent back to exchanger E2 via pipe 11. See also
Appeal Br. 21.
The Examiner’s determination that the combination of Prevost’s
embodiments of Figures 2 and 3 teaches limitation (e) (see Final Act. 5;
Ans. 6) is also inadequately supported. The Examiner determines that it
would have been obvious to modify the double heat exchanger method of
Figure 3 with Figure 2’s single heat exchanger. Id. The Examiner does not
explain how the limitations of claim 1 would still be met when removing one
heat exchanger from Figure 3. The Examiner explains that if exchanger E2
is removed, then the cooled pressurized natural gas that is in pipes 6, 7,
and 8 is sent back to exchanger E1 via pipe 10. Ans. 6. However, the
Examiner notably does not rely solely on Figure 2 for teaching claim 1, and
it is not clear how removing exchanger E2 modifies the embodiment of
Figure 3 to still have a separator downstream of E1, as recited in limitation
(b). See Appeal Br. 23. In other words, the Examiner does not adequately
explain what the end result would be of removing exchanger E2 from the
embodiment of Figure 3 or how one of ordinary skill in the art would
understand how the combination meets the claim as a whole.
Thus, based on the record before us, we are persuaded of Examiner
error, and we do not sustain the obviousness rejection over Prevost of
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claim 1 and of claims 2, 3, 5, 6, 12, and 16, which fall with claim 1.
37 C.F.R. § 41.37(c)(1)(iv).
Prevost and Wilding
For the rejection under 35 U.S.C. § 103(a) of claims 1, 17, 18, 21, and
30–32 as obvious over Prevost in view of Wilding, and for the rejection
under 35 U.S.C. § 103(a) of claims 1–3, 5, 6, 12, 16–18, 21, and 30–32 as
obvious over Wilding in view of Prevost, the Examiner relies on the
combination of Prevost’s Figures 2 and 3 to teach limitation (e) of claim 1,
similarly recited in independent claim 17. See Final Act. 7–9, 16–18; Ans. 9
(“since the examiner does not relied on Wilding to teach the above argued
claim limitation [(e)], therefore the argument by the appellant is moot”); 10
(relying on response for rejection of claim 1 as obvious over Prevost). Thus,
for the same reasons we do not sustain the rejection of claim 1 as obvious
over Prevost, we also do not sustain the obviousness rejections of claim 1,
17, 18, 21, and 30–32 over Prevost in view of Wilding and of claims 1–3, 5,
6, 12, 16–18, 21, and 30–32 as obvious over Wilding in view of Prevost.
Prevost, Wilding, and Turner
The Examiner’s rejects claim 33–36, which ultimately depend from
independent claim 17, as obvious over Prevost, Wilding, and Turner. Turner
does not cure the deficiencies of claim 17 regarding Prevost as discussed
above. Thus, for the same reasons we do not sustain the rejection of
claim 17 as obvious over Prevost and Wilding, we also do not sustain the
obviousness rejections of claim 33–36 over Prevost, Wilding, and Turner.
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CONCLUSION
The Examiner’s decision to reject claims 1–3, 5, 6, 12, 16–18, 21, and
30–36 is not sustained.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5, 6, 12,
16–18, 21,
30–36
112(a) Written Description 1–3, 5, 6, 12,
16–18, 21,
30–36
1–3, 5, 6, 12,
16
103 Prevost 1–3, 5, 6, 12,
16
1–3, 5, 6, 12,
16–18, 21,
30–32
103 Prevost, Wilding 1–3, 5, 6, 12,
16–18, 21,
30–32
33–36 103 Prevost, Wilding,
Turner
33–36
Overall
Outcome
1–3, 5, 6, 12,
16–18, 21,
30–36

REVERSED