Tuesday, December 11, 2012

Requestor Fluor loses in appeal of re-exam 95/001,168

Within FLUOR TEC v. USPTO and Lummus:

Fluor Tec, Corp. (“Fluor”) appeals from the decision of the Board of Patent Appeals and Interferences (the “Board”) in an inter partes reexamination affirming the Examiner’s decision not to reject claims 1–9, 11, 13, 25– 29, 31, 33, 37–47, 55, 56, and 58 of U.S. Patent 6,712,880 (the “’880 patent”) owned by Lummus Technology, Inc. (“Lummus”). See Fluor Tec, Corp. v. Patent of Lummus Tech. Inc., No. 2011-013099 (B.P.A.I. Dec. 15, 2011) (“Board Decision”). Because substantial evidence sup- ports the Board’s conclusion that the claimed invention would not have been obvious in view of the cited prior art, we affirm.

Of technical matters:

Relevant to the issues argued in this appeal, Lum- mus’s separation apparatus is a two-column system that includes an absorber column [18] and a downstream fractionation column [22], wherein the absorber column is operated at a pressure substantially greater than the fractionation column. ’880 patent col.6 ll.52–60, col.3 ll.48–54. Inlet gas [40] is first cooled or condensed in heat exchanger [12] and separated in separator [14] into first liquid stream [44] and first vapor stream [42]. Id. col.7 ll.18–27. The first liquid stream [44] is expanded in expander [24], heated in exchanger [12], and supplied to a middle tray of fractionation column [22] as first fractiona- tion feed stream [58]. Id. col.7 ll.31–35. A portion of first liquid stream [44] may be fed to overhead exchanger [20], as well as exchanger [12], before being supplied to frac- tionation column [22]. Id. col.8 ll.5–11. The first vapor stream [42] is expanded in turboexpander [16] to the operating pressure of absorber [18]. Id. col.7 ll.29–31. The expanded first vapor stream [42a] is then fed into the lower end of absorber [18]. Id. col.7 ll.34–36. In the absorber, heavier compounds in the vapor stream are absorbed by the falling liquid stream to produce absorber bottom stream [45], and lighter compounds rise to the top of the column to produce absorber overhead stream [46]. Id. col.7 ll.50–59. Absorber bottom stream [45] is cooled (condensed) in exchangers [20] and [12], and fed into the middle of fractionation column [22] as second fractiona- tion feed stream [48]. Id. col.7 ll.60–62, col.8 ll.17–21.
In requesting reexamination, Fluor relied on Interna- tional Patent Publication Number WO 02/14763 of Mak (the “Mak application”) as evidence of unpatentability. (...)The liquid portion [5] is expanded in Joules-Thompson valve [115] and fed directly into the fractionation column [106], and the gaseous portion [2] is cooled in heat exchanger [100] and fed into absorber [103] without expansion in a turboexpander.

Of the basic legal background:

A claim is invalid for obviousness if, to one of ordinary skill in the pertinent art, “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made.” 35 U.S.C. § 103(a) (2006); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406–07 (2007). Obviousness is a legal conclu- sion based on underlying factual findings. In re Kao, 639 F.3d 1057, 1065 (Fed. Cir. 2011). We review the Board’s legal conclusions de novo and its factual determinations for substantial evidence. In re Am. Acad. Sci. Tech. Ctr., 367 F.3d 1359, 1363 (Fed. Cir. 2004). Substantial evi- dence means “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Consol. Edison Co. v. Nat’l Labor Relations Bd., 305 U.S. 197, 229 (1938).

As to what is NOT an obvious design choice:

See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (“An inference of nonobviousness is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements.”). The Mak applica- tion discloses two different configurations, one designed for high-pressure feed gas and one designed for low- pressure feed gas, and that Mak specifically discusses the advantages of the “no turboexpander design” for low- pressure feed gas. See Mak Appl. 8–9. In Mak’s system, depicted in Figure 5, the gaseous portion is cooled in a heat exchanger before being fed into the absorber, but if high-pressure feed gas could be accommodated simply by adding an expander to the low-pressure configuration, then there would be no need for the separate high- pressure configuration. See In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (holding that different structure to achieve different purpose was not an obvious design choice).

Of teaching away:

Moreover, a skilled artisan desiring to utilize a high- pressure feed gas would have been directed to follow the alternative systems disclosed in the Mak application that are specifically designed to accommodate a high-pressure feed gas, rather than attempt to modify Mak’s low- pressure configuration. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (a reference teaches away “when a person of ordinary skill, upon reading the reference . . . would be led in a direction divergent from the path that was taken by the applicant”). Accordingly, viewing the teachings of the Mak application as a whole, a skilled artisan would not have been motivated to add an expander to the low- pressure configuration depicted in Figure 5 to arrive at the claimed invention. Because the Board’s fact-finding is supported by substantial evidence, we affirm its conclu- sion of nonobviousness. In re Jolley, 308 F.3d 1317, 1320 (Fed. Cir. 2002).


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