Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 14-33 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13-30 of copending Application No. 18276846 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of the claims of the co-pending application completely encompass those of the present claims. The claims are rejected as follows:
Present claims Co-Pending Claims
14 13 and 24
15 15
16 16
17 17
18 17
19 18
20 19
21 20
22 21
23 22
24 23
25 13 and 24
26 13 and 24
27 13 and 24
28 25
29 26
30 27
31 28
32 29
33 30
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 26, 28, 30-32 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 26 repeatedly recites “member for cooling”; however, this lacks antecedent basis as no member for cooling is previously recite. For the purpose of examination, this limitation is understood to be “cooling member”.
Claim 26 recites a configuration that compressor speed is based on where the cooling members are but states that compression stages that are disposed successively in series and do not have a member for cooling the cycle gas are operated at a lower speed than compression stages with a member for cooling provide at their outlet; however, the claims only require that there is not a member for cooling between compression stages, but allow for a condition in which even though a compression stage does not have a member for cooling between it and a previous stage the second compression stage could still have a member for cooling at its outlet, which would make it unclear what speed that compressor was to be operated at. For the purpose of examination, this limitation is understood that the compression stages operate in series without a member for cooling therebetween are operated at a lower speed than a compression stage which has a member for cooling after it and either does not have a prior compressor or the prior compressor also has a member for cooling after it.
Claims 28, 30-32 are rejected as being dependent upon a rejected claim.
Claim Interpretation
While claims 19 and 20 use the terms “attached to the outlet” and “attached to the inlet” it is understood that this does not mean a direct attachment between the bypass pipe and the outlet/inlet of the compression stage, only that the bypass pipe provides attachment from and to the outlet of the compressor and the inlet of the compressor respectively.
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
member for collecting in claim 14 understood to be a store (which is understood to be any kind of storage),
expansion mechanism in claim 14 understood to be a turbine,
member for cooling in claim 23 understood to be a heat exchanger,
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Compression mechanism is not interpreted under 35 USC 112(f) as sufficient structure is provided.
Cooling member is not interpreted under 35 USC 112(f) as sufficient structure is provided.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 14-18, 25, 27, 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rummelhoff et al. (US PG Pub 20080202158) and further in view of Marcuccilli et al. (US PG Pub 20230160632), hereinafter referred to as Marcuccilli and Cardella et al. (US PG Pub 20180347897), Cardella.
With respect to claim 14, Rummelhoff teaches a device for refrigeration or liquefaction of a fluid that liquefies below 0°C, the device comprising (Figure 4, which is an invention for cooling a boil-off gas for reliquefaction, paragraphs 23, 35, boil off gas is primarily methane, paragraph 4, which is known to liquefy well below 0 C):
a circuit for fluid that is to be cooled, having an upstream end intended to be connected to a source of gaseous fluid and a downstream end intended to be connected to a member for collecting the fluid when cooled or liquefied (upstream end is 10, downstream end is 13, where 13 is reliquefied natural gas, paragraph 35 and reliquefied BOG is returned to a storage vessel, paragraph 11);
an assembly of heat exchanger(s) in a heat exchange relationship with the circuit for fluid that is to be cooled (heat exchangers 5, 6, 7, 7b are used for cooling BOG, paragraph 35);
and a refrigerator in a heat exchange relationship with at least part of the assembly of heat exchanger(s) (Nitrogen Brayton cycle with two expanders in series is used for cooling the BOG, paragraph 37), the refrigerator being of the type performing a refrigeration cycle on a cycle gas comprising nitrogen (nitrogen is the gas circulating through the refrigerator, paragraph 37), wherein said refrigerator comprises the following, disposed in series in a cycle circuit:
a compressing mechanism for compressing the cycle gas (three compressors in series 2, 3, 4, paragraph 46)
at least one cooling member for cooling the cycle gas (after coolers are seen after each compressor in the figure), an expansion mechanism for expanding the cycle gas (expander 9, paragraph 36) and at least one member for heating the expanded cycle gas (the passageway through the heat exchangers where the nitrogen would be warmed),
wherein the at least one cooling member comprises at least one heat exchanger disposed at the outlet of at least one compression stage in a heat exchange relationship with the cycle circuit (the aftercoolers shown in the figure).
Rummelhoff does not teach wherein the compression mechanism comprises at least three compression stages in series that are composed of an assembly of compressor(s) of centrifugal type, the compression stages being mounted on a set of shafts driven in rotation by an assembly of motor(s).
Marcuccilli teaches that in a refrigeration device for a working circuit of refrigerant fluid that each compressor can be a centrifugal compressor (paragraph 28).
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Marcuccilli for the compressors of Rummelhoff to have been centrifugal compressors since it has been shown that combining prior art elements to yield predictable results is obvious whereby it is common knowledge in the art centrifugal compressors are known to be suitable for a cryogenic refrigeration system as they have a high reliability that operate efficiently.
Further, Marcuccilli teahces that each compressor has a separate motor driven by a shaft between them (20, 22, 24 driving 14, 16, 18) (paragraph 28).
Therefore it would have been obvious to a person having ordinary skill in the art for each compressor of Rummelhoff to have been driven by a separate motor via a shaft since it has been shown that combining prior art elements to yield predictable results is obvious whereby providing separate motors would provide what is common knowledge in the art of the ability to provide more control to the cooling system by allowing each compressor to be individually adjusted by its respective dedicated motor which could provide for more efficient operation.
Rummelhoff does not each said heat exchanger being cooled by a heat transfer fluid.
Marcuccilli teaches that air or water is used to cool a cooler after a compressor (paragraph 28).
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Marcuccilli to have had the heat exchangers after the compressors of Rummelhoff use air or water since it has been shown that combining prior art elements to yield predictable results is obvious whereby it is common knowledge in the art that coolers after compressors use water or air for cooling as they readily available and provide the proper temperature needed for removing heat of compression.
Rummelhoff does not teach wherein the compression mechanism comprises at least two compression stages that are disposed successively in series and do not have any cooling members therebetween.
Cardella teaches that a compressor can be designed without gas intercoolers and aftercoolers with reduces the capital cost (paragraph 136).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Cardella to have designed at least one of the compressors of Rummelhoff without an aftercooler to reduce the overall capital cost of the system. While this is not a specific teaching of which aftercooler to remove, a teaching has been provided both that aftercoolers are known and it is known to not use them. As such, having an aftercooler missing between two of the compression stages would have been obvious to try as it has been shown that choosing from a finite number of identified predictable solutions, with a reasonable expectation of success is obvious whereby based on the teachings of Cardella and Rummelhoff it would have been obvious to have after coolers after all of the compressors, none of the compressors or only some of the compressors. Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have not had an aftercooler between two of the compression stages since it has been shown that choosing from a finite number of identified predictable solutions with a reasonable expectation of success is obvious whereby not having an aftercooler between two of the compression stages would be common knowledge in the art as a way to reduce the overall cost of the system if the cooling was not needed after compression.
With respect to claim 15, Rummelhoff does not teach wherein the compression mechanism comprises four compression stages in series.
Marcuccilli teaches that while three compressors are shown, more generally any number of compressor stages are may be used (paragraph 28).
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have had four compressors instead of three in Rummelhoff based on the teaching of Marcuccilli as it has been shown that a mere duplication of parts (having one more compressor) has not patentable significance unless a new and unexpected result is produced whereby having four compressors would provide what is common knowledge in the art of either reducing size of the compressors used to provide the final compression or allowing for a higher pressure for the refrigerant.
Rummelhoff further does not teach the at least one cooling member comprising three cooling heat exchanges that are disposed respectively at the outlet of three of the four compression stages, such that the device is configured to provide cooling to only three of said four compression stages.
It has previously been established that it is known by Rummelhoff and Cardella (see teaching of Cardella in the rejection of claim 1) respectively that it is known to both have and not have aftercoolers after compressors and as such it would have been obvious to have after coolers after all of the compressors, none of the compressors or only some of the compressors. Therefore it would have been obvious to a person having ordinary skill in the art to have when having four compressors in Rummelhoff as modified to have based on the teaching of Cardella to have had one of the compressors not have an aftercooler since it has been shown that choosing from a finite number of identified predictable solutions with a reasonable expectation of success is obvious whereby not having an aftercooler between two of the compression stages would be common knowledge in the art as a way to reduce the overall cost of the system if the cooling was not needed after compression. Thus as only one compressor does not have an aftercooler, three compressors would, which would provide cooling to only three compression stages.
With respect to claim 16, Rummelhoff does not teach wherein the at least one cooling member is disposed solely between every second pair of compression stages in series.
It has previously been established that it is known by Rummelhoff and Cardella (see teaching of Cardella in claim 1) respectively that it is known to both have and not have aftercoolers after compressors and as such it would have been obvious to have after coolers after all of the compressors, none of the compressors or only some of the compressors. Therefore it would have been obvious to a person having ordinary skill in the art to have when having three compressors in Rummelhoff as modified to have based on the teaching of Cardella to have had an aftercooler only after the second compressor in series of Rummelhoff since it has been shown that choosing from a finite number of identified predictable solutions with a reasonable expectation of success is obvious whereby not having an aftercooler between two of the compression stages would be common knowledge in the art as a way to reduce the overall cost of the system if the cooling was not needed after compression.
With respect to claim 17, Rummelhoff as modified teaches wherein the assembly of motor(s) comprises multiple motors for driving the compression stages (as modified multiple motors are present).
With respect to claim 18, Rummelhoff as modified teaches wherein the assembly of motor(s) comprises a separate respective motor for each compression stage (as modified each compression stage has a separate motor attached).
With respect to claim 25, Rummelhoff as modified teaches a method of refrigeration or liquefaction of a fluid using the refrigeration device as claimed in Claim 14, the method including the steps of: providing the refrigeration device as claimed in Claim 14; circulating a fluid in the circuit for fluid that is to be cooled; and cooling said fluid via the cold produced by the refrigerator (Figure 4 of Rummelhoff provides this configuration, with nitrogen being used in the Brayton cycle to cool the boil off gas).
With respect to claim 27, Rummelhoff as modified teaches wherein the fluid is natural gas (BOG from natural gas which is primarily methane would also be considered natural gas).
With respect to claim 29, Rummelhoff as modified teaches wherein the fluid comprises natural gas (the system is for liquefying natural gas boil-off, paragraphs 4, 18).
Claim(s) 19-20, 23-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rummelhoff/Marcuccilli/Cardella and further in view of Durand (FR3072428A1), hereinafter referred to as Durand.
With respect to claim 19, Rummelhoff does not teach wherein at least one of the motors is cooled by a flow of cycle gas via at least one bypass pipe for a fraction of the flow of cycle gas supplying the compression mechanism, the bypass pipe comprising an upstream end attached to the outlet of at least one of the compression stages for drawing off a fraction of the flow of cycle gas.
Durand (Figure 1) teaches that on the outlet line from a first compressor (1) that a pipe can be connected which does not pass to the second compressor but cooling first to a first motor and then to a second motor (5 and 6) before the fluid passing through the motors is returned back to the inlet of the first compressor (1) (Page 5, lines 185-212).
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Durand to have in Rummelhoff provide a bypass line which takes a portion of the compressed refrigerant from the first compressor and passes it through the motors to provide cooling to the motors before it is passed back to the inlet of the compressor since it has been shown that combining prior art elements to yield predictable results is obvious whereby providing a cooling line through the motors would as would be recognized by one having common knowledge in the art ensure that the motors remain cooled while not having to provide a second source of refrigerant.
With respect to claim 20, Rummelhoff as modified teahces wherein a downstream end of at least one bypass pipe is attached to the inlet of a compression stage after it passes and exchanges heat with at least one motor (as modified the flow line that goes from the compressor through the motors returns back to the inlet of the compressor so the bypass pipe would be attached to the inlet of a compression stage).
With respect to claim 23, Rummelhoff does not teaches wherein the at least one bypass pipe comprises at least one member for cooling the cycle gas.
Duran teaches that between motors that a heat exchanger (13) can be used to cool the flow of refrigerant used to cool the second motor (Page 5, line 205-207).
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Duran to have on the flow line between two motors for the refrigerant of Rummelhoff as modified provided a heat exchanger to cool the refrigerant upstream of the second motors since it has been shown that combining prior art elements to yield predictable results is obvious whereby providing a heat exchanger between the motors would as would be recognized by one having common knowledge in the art cool the stream to provide it with a sufficient temperature to cool the motor.
With respect to claim 24, Rummelhoff as modified teaches wherein the at least one member for cooling the cycle gas of the at least one bypass pipe comprises a cooling heat exchanger (a heat exchanger is the member as modified).
Claim(s) 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rummelhoff/Marcuccilli/Cardella/Durand and further in view of Sun et al. (US PG Pub 20140345311), hereinafter referred to as Sun.
With respect to claims 21-22, Rummelhoff as modified does not teach wherein the at least one bypass pipe comprises, between its upstream end and its downstream end, a subdivision into at least two separate branches respectively supplying separate motors in order to cool them wherein the at least two separate branches formed by the subdivision of a bypass pipe have a downstream junction with a common line portion of the bypass line.
Sun teaches two examples of cooling components with a motor cooling line (20) where in one configuration (Figure 1D) the components being cooled are in series where the flow enters the system (at 20) passes through and then into the suction of the compressor (paragraph 22) and another (Figure 1E) in which the flow is split into separate flow lines which can be within or outside a compressor before providing cooling and then are both passed to the suction port of the compressor.
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have instead of passing through the motor in series to have in Rummelhoff as modified based on the teaching of Sun had the line cooling line for the motor split into two and pass through the motors separately before recombining and then passing to the suction line (which would be a junction of a common line of the bypass line) of the compressor since it has been shown that choosing from a finite number of identified predictable solutions is obvious whereby as there are two configurations (parallel and series) it would have been obvious to choose from them and one having common knowledge in the art would recognize that it is obvious whereby as they are both known ways of providing cooling to multiple components before the fluid is passed to the compressor it would have been obvious to have provided parallel as opposed to series flow which would as would be common knowledge in the art allow for the same temperature fluid to be passed to all of the motors so a heat exchange is not needed to cool the flow after the first motor.
Claim(s) 26, 28, 30, 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rummelhoff/Marcuccilli/Cardella and further in view of Ueda et al. (US PG Pub 20180087809), hereinafter referred to as Ueda.
With respect to claim 26 Rummelhoff as modified does not teach controlling the rotational speed of the at least two compression stages in accordance with independent speeds, wherein, during at least one determined operating phase, the rotational speed of the compression stages that are disposed successively in series and that do not have a member for cooling the cycle gas such as a heat exchanger for exchanging heat between them said compression stages that are disposed successively in series is kept at a speed lower than the rotational speed of the compression stages that are each provided at their outlet with a member for cooling the cycle gas.
Ueda teaches that two compressors in series can be operated at unique motor rotation speeds and thereby can be operated at optimum operational conditions to save energy and improve refrigerating performance (paragraph 158).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Ueda to have the individual compressors as controlled by the motors of Rummelhoff operated at unique motor rotation speeds (which would be the rotational speed of the compressor) to save energy and improve the performance of the refrigerator. While there is a not a specific teaching of any compressor having a higher or lower speed than any other as they are operated at unique speeds at least two compressors would be operating at a lower speed than two other compressors. Further, as there are only three compressors present it would have been obvious to a person having ordinary skill in the art at the time the invention was filed for the compression stages which do not have an aftercooler between them to operate at a lower speed than the compression stages which has an aftercooler after it as it has been held obvious to try whereby choosing between a finite number of predictable solutions is obvious. As there are only three compressors all of which are shown to be obvious to operate at rotational speeds, determining which compressors operate at the higher and lower speeds respectively would be limited to only the conditions of: the compressor where the compressors without an aftercooler between them operate at a higher speed than a compressor with an aftercooler after it, the compressor where the compressors without an aftercooler between them operate at a lower speed than a compressor with an aftercooler after it, or the compressor with an aftercooler after it operates at a speed between the compressors which do not have an aftercooler between them. Thus, choosing between the three conditions would have been obvious and one having ordinary skill in the art would have had a reasonable expectation of success in operating the compressors with the speeds in the configuration as claimed if that resulted in the optimal conditions of operation to maximizes refrigerating performance.
With respect to claim 28, Rummelhoff as modified teaches wherein the compression mechanism comprises a greater number of compression stages than the expanding mechanism comprises expansion turbines (there are 3 compressors in Rummelhoff but only 2 turbines, 8 and 9).
With respect to claim 30, Rummelhoff as modified teahces wherein the cycle gas has a molar mass of less than 30 g/mol (nitrogen which is the makeup of the cycle gas has a molar mass of under 30 g/mol).
With respect to claim 32, Rummelhoff does not teach wherein the compression mechanism comprises four compression stages in series.
Marcuccilli teaches that while three compressors are shown, more generally any number of compressor stages are may be used (paragraph 28).
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have had four compressors instead of three in Rummelhoff based on the teaching of Marcuccilli as it has been shown that a mere duplication of parts (having one more compressor) has not patentable significance unless a new and unexpected result is produced whereby having four compressors would provide what is common knowledge in the art of either reducing size of the compressors used to provide the final compression or allowing for a higher pressure for the refrigerant.
Rummelhoff further does not teach the cooling members are disposed solely at the outlet of the first, second and fourth compression stages.
It has previously been established that it is known by Rummelhoff and Cardella (see teaching of Cardella in the rejection of claim 1) respectively that it is known to both have and not have aftercoolers after compressors and as such it would have been obvious to have after coolers after all of the compressors, none of the compressors or only some of the compressors. Therefore it would have been obvious to a person having ordinary skill in the art to have when having four compressors in Rummelhoff as modified to have based on the teaching of Cardella to have had third compressor not have an aftercooler since it has been shown that choosing from a finite number of identified predictable solutions with a reasonable expectation of success is obvious whereby not having an aftercooler between the third and fourth stage would be common knowledge in the art as a way to reduce the overall cost of the system if the cooling was not needed after compression.
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rummelhoff/Marcuccilli/Cardella/Ueda and further in view of Wang (US PG Pub 20150369534), hereinafter referred to as Wang.
Rummelhoff as modified does not teach the cycle gas made up of pure helium of a mixture comprising at least 50% helium.
Wang teaches that a refrigerant for methane can be formed of one gas including helium (Paragraph 60).
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Wang provided the refrigerant of Rummelhoff as a one component refrigerant of helium instead of nitrogen (which would meet the limitation as claimed) since it has been shown that a simple substitution of one known element for another to yield predictable results is obvious whereby as they are both known refrigerants suitable for cooling natural gas one having ordinary skill in the art would have been able to carry out such a substitution with the reasonably predictable result of being able to cool the natural gas a needed.
Claim(s) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rummelhoff and further in view of Cardella, Marcuccilli and Ueda.
With respect to claim 33, Rummelhoff teaches (Figure 4) a method for refrigerating or liquefying a fluid, the method comprising:
circulating the fluid in a fluid circuit configured to be cooled, wherein the fluid comprises at least one of natural gas and hydrogen (upstream end is 10, downstream end is 13, where between 10 and 13 BOG is reliquefied natural gas, paragraph 35 and reliquefied BOG is returned to a storage vessel, paragraph 11);
cooling said fluid in the fluid circuit via cold produced by a refrigerator, the refrigerator operating a refrigeration cycle on a cycle gas of nitrogen (Nitrogen Brayton cycle with two expanders in series is used for cooling the BOG, paragraph 37),
compressing the cycle gas in a compression mechanism comprising a plurality of compression stages arranged in series (three compressors in series 2, 3, 4, paragraph 46 compress the refrigerant)
cooling the cycle gas at an outlet of at least one of the compression stages with at least one outlet heat exchanger (after coolers as seen in the figure)
Rummelhoff does not teach the compression stages are centrifugal compression stages.
Marcuccilli teaches that in a refrigeration device for a working circuit of refrigerant fluid that each compressor can be a centrifugal compressor (paragraph 28).
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Marcuccilli for the compressors of Rummelhoff to have been centrifugal compressors since it has been shown that combining prior art elements to yield predictable results is obvious whereby it is common knowledge in the art centrifugal compressors are known to be suitable for a cryogenic refrigeration system as they have a high reliability that operate efficiently.
Rummelhoff as modified does not teach the compression stages being mounted on a set of shafts rotationally driven by a set of motors.
Further, Marcuccilli teaches that each compressor has a separate motor driven by a shaft between them (20, 22, 24 driving 14, 16, 18) (paragraph 28).
Therefore it would have been obvious to a person having ordinary skill in the art for each compressor of Rummelhoff to have been driven by a separate motor via a shaft since it has been shown that combining prior art elements to yield predictable results is obvious whereby providing separate motors would provide what is common knowledge in the art of the ability to provide more control to the cooling system by allowing each compressor to be individually adjusted by its respective dedicated motor which could provide for more efficient operation.
Rummelhoff does not teach said outlet heat exchanger being cooled by a heat transfer fluid.
Marcuccilli teaches that air or water is used to cool a cooler after a compressor (paragraph 28).
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Marcuccilli to have had the heat exchangers after the compressors of Rummelhoff use air or water since it has been shown that combining prior art elements to yield predictable results is obvious whereby it is common knowledge in the art that coolers after compressors use water or air for cooling as they readily available and provide the proper temperature needed for removing heat of compression.
Rummelhoff as modified does not teach wherein the compression mechanism includes at least two compression stages arranged successively in series without any inter-stage cooling member located therebetween.
Cardella teaches that a compressor can be designed without gas intercoolers and aftercoolers with reduces the capital cost (paragraph 136).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Cardella to have designed at least one of the compressors of Rummelhoff without an aftercooler to reduce the overall capital cost of the system. While this is not a specific teaching of which aftercooler to remove, a teaching has been provided both that aftercoolers are known and it is known to not use them. As such, having an aftercooler missing between two of the compression stages would have been obvious to try as it has been shown that choosing from a finite number of identified predictable solutions, with a reasonable expectation of success is obvious whereby based on the teachings of Cardella and Rummelhoff it would have been obvious to have after coolers after all of the compressors, none of the compressors or only some of the compressors. Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have not had an aftercooler between two of the compression stages since it has been shown that choosing from a finite number of identified predictable solutions with a reasonable expectation of success is obvious whereby not having an aftercooler between two of the compression stages would be common knowledge in the art as a way to reduce the overall cost of the system if the cooling was not needed after compression.
Rummelhoff as modified does not teach controlling a rotational speed of the compression stages according to independent speeds.
Ueda teaches that two compressors in series can be operated at unique motor rotation speeds and thereby can be operated at optimum operational conditions to save energy and improve refrigerating performance (paragraph 158). A controller is provided (60) which monitors the operation of the motor for the compressors (paragraph 119).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Ueda to have the individual compressors as controlled by the motors of Rummelhoff operated at unique motor rotation speeds (which would be the rotational speed of the compressor) with a controller to monitor the compressors to save energy and improve the performance of the refrigerator.
Response to Arguments
Applicant's arguments filed 9/5/2025 have been fully considered but they are not persuasive.
While the majority of the rejections under 35 USC 112(b) have been resolved, the amendment to claim 26 did not resolve the rejection.
Applicant argues, page 15, that the combination of Rummelhoff in view of Marcuccilli and Cardella “would not lead to predictable results in the context of the specific problems solved by the invention, which highlights the advantages of centrifugal compressors in a multi-stage arrangement with skipped intercoolers for light cycle gases”. This is not persuasive.
In response to applicant's argument that “the advantages of centrifugal compressors in a multi-stage arrangement with skipped intercoolers for light cycle gases”, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Further, applicant argues that “the Office Action’s argument for skipped intercoolers, relying on Cardella’s general statement bout reducing capital cost by removing intercoolers, fails to recognize the prejudice in the art that the present invention overcomes”. This is not persuasive.
The teaching of Cardella that intercoolers or aftercoolers can be removed to remove capital cost (paragraph 36). This provides prima facie showing that it would have been obvious to a person having ordinary skill in the art to due so. That it goes against an alleged “prejudice in the art” does not render it any less obvious based on the teaching of Cardella. In response to applicant's argument that the aftercoolers would not be removed in Rummelhoff, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Based on the teaching of Cardella, when considering the overall invention of Rummelhoff, when considering all aspects of the invention one having ordinary skill in the art would consider removing an aftercooler or intercooler if it was ultimately determined that they were not necessary for operation.
Applicant further argues, that “Cardella’s general statement does not provide a specific motivation to remove an intermediate intercooler in a multi-stage centrifugal compressor system, especially for the light gas cycle emphasized by the present invention, where the benefit (reduction in pressure drops, hardware savings) outweighs the perceived efficiency drop.” This is not persuasive.
The teaching by Cardella provides a universal teaching that it is known that intercoolers and aftercoolers do not have to be used, and by doing so capital cost can be removed, which teaching applies equally to any system that has intercoolers or aftercoolers. Further, the question of obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Based on the teaching of Cardella, when considering the overall invention of Rummelhoff, when considering all aspects of the invention one having ordinary skill in the art would consider removing an aftercooler or intercooler if it was ultimately determined that they were not necessary for operation.
Applicant further argues, page 16, that the obvious to try argument provided in the action “does not identify a finite number of identified predictable solutions with a reasonable expectation of success for the specific problem addressed by the applicant” and is using “hindsight reasoning and does not establish motivation to combine them in the specific arrangement that defines the inventiveness of the claim”. This is not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the specific problem addressed by applicant) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The obviousness provided by the prior art and the showing that it would have been obvious to have achieved the invention as claimed does not render the invention any less obvious even if it does not address the specific problem addressed by the applicant. “It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant” MPEP 2144 IV. Cardella establishes that it is known that aftercoolers or intercoolers can be not used as a way of reducing capital costs, which would be a showing of the first that there is a recognized problem in the art that capital cost may need to be reduce. Further, the removal of said coolers is a predictable potential solution and further Cardella thus shows that it would have been obvious to do this. As there are a finite number of compressors in Cardella, there are also a finite number of possible combinations of aftercoolers or intercoolers that could be removed, and the choice to remove some, one or all of them, or different combinations would be equally obvious as there are only a finite number of individual combinations. This shows that the specific arrangement contemplated by the claims would have been obvious, even if the reasoning was different from that of the claimed invention. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Cardella shows that it is known to remove aftercoolers and intercoolers, and as there are only a finite number of combinations of such removal, it is not using hindsight reasoning to remove various coolers in the rejection above, but a showing of obviousness based on the prior art and that it is “obvious to try” MPEP 2143.
Applicant further agues, that the “rationale for having four compression stages, citing Marcuccilli’s general statement that ‘any number of compressor stages may be used’ is insufficient” as it “does not provide a motivation to specifically choose four stages in combination with the absence of an intercooler between two successive stages in Rummelhoff’s system” and that “merely duplicating parts is only obvious if it produces no new or unexpected results” which the invention as claimed has “specific advantages”. This is not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The rejection above only recites Marcuccilli for the showing of obviousness of the presence of additional compressors, and applicant does not address the additional teachings as provided by Cardella.
Applicant argues, page 16-17 that “the combination as suggested is not a simple substitution” as the teaching of Cardella “fundamentally misapprehends the technical context and the nature of the compressors involved” as Cardella uses a different type of compressor than the claimed invention and the teaching of Cardella “of capital cost reduction, does not inherently transfer to a predictable or obvious design choice for a centrifugal compressor system”. This is not persuasive.
The teaching by Cardella provides a general teaching that it is known that intercoolers and aftercoolers do not have to be used, and by doing so capital cost can be removed, which teaching applies equally to any system that has intercoolers or aftercoolers, regardless of the type of compressor. The teaching is sufficient that one of ordinary skill in the art would have considered it obvious to have contemplated configurations without the aftercoolers and intercoolers in Rummelhoff. It is well known in the art that there are tradeoffs in any change that have been made, and one having ordinary skill in the art would have considered it obvious that a decrease in efficiency or a change in some operational conditions would be obvious to save cost on operation as long as the overall operation still achieved its stated goal.
Applicant argues that their teaching that providing this configuration “goes against prejudices since the overall compression efficiency can drop in relation to known systems” provides “highlights that the teaching of Cardella, focused on reciprocating compressors, does not provide a motivation or a reasonable expectation of success for omitting intercoolers between successive centrifugal stages, particularly given the known drawbacks for centrifugal systems in the cited art”. This is not persuasive.
Applicant has only provided a conclusory argument here based upon their own specification without providing any supporting evidence. Further, the teaching of Cardell is a general teaching that one of ordinary skill in the art would recognize can be applied to any compression configuration. The teaching is sufficient that one of ordinary skill in the art would have considered it obvious to have contemplated configurations without the aftercoolers and intercoolers in Rummelhoff. It is well known in the art that there are tradeoffs in any change that have been made, and one having ordinary skill int eh art would have considered it obvious that a decrease in efficiency or a change in some operational conditions would be obvious to save cost on operation as long as the overall operation still achieved its stated goal.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Cardella to have designed at least one of the compressors of Rummelhoff without an aftercooler to reduce the overall capital cost of the system. While this is not a specific teaching of which aftercooler to remove, a teaching has been provided both that aftercoolers are known and it is known to not use them. As such, having an aftercooler missing between two of the compression stages would have been obvious to try as it has been shown that choosing from a finite number of identified predictable solutions, with a reasonable expectation of success is obvious whereby based on the teachings of Cardella and Rummelhoff it would have been obvious to have after coolers after all of the compressors, none of the compressors or only some of the compressors. Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have not had an aftercooler between two of the compression stages since it has been shown that choosing from a finite number of identified predictable solutions with a reasonable expectation of success is obvious whereby not having an aftercooler between two of the compression stages would be common knowledge in the art as a way to reduce the overall cost of the system if the cooling was not needed after compression.
Applicant argues pages 18-20 that Rummelhoff aims to achieve energy efficient solution, with a reduction in power demand and uses aftercoolers after each compressor stage to maintain a temperature profile in the cold box which would result in one having ordinary skill in the art to “be strongly motivated away from removing an aftercooler between compression stages” which would “increase energy losses and decrease overall thermodynamic efficiency in a refrigeration cycle” and thus the office actions proposed modification “would not contemplate a modification that directly frustrates the primary objective” which a skilled artisan would not contemplate as it frustrates the primary objective. This is not persuasive.
While Rummelhoff may desired to achieve more efficient operations and reduce exergy losses, this does not change that it would have been obvious to have removed an aftercooler as claimed. Rummelhoff’s desire for efficiency is related to a “more efficient compression” related to the compressor for the natural gas stream, and does not discuss this in relation to the refrigeration cycle. This does not provide a teaching away of a medication to the refrigeration cycle. The teaching of Cardella can be understood that a determination can be made that if unnecessary aftercoolers and intercoolers can be removed. Thus, it would have been obvious to one having ordinary skill in the art to have removed them if it is determined that they are unnecessary to operation. In response to applicant's argument that the aftercoolers would not be removed in Rummelhoff, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Based on the teaching of Cardella, when considering the overall invention of Rummelhoff, when considering all aspects of the invention one having ordinary skill in the art would consider removing an aftercooler or intercooler if it was ultimately determined that they were not necessary for operation. Further, the energy efficiency discussed in Rummelhoff is not discussed with respect to the use of the aftercoolers and intercoolers as shown in the drawings, but to the operations of the expansion system and how streams are not split (see paragraphs 7-10) and not to the aftercoolers or intercoolers of the compression system. Additionally, the arguments are not taking the entirety of the rejection into consideration, only that as provided by Cardella. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Further, while removing an aftercooler could result in an increase in energy losses or a result in loss of thermodynamic efficiency, this is not necessarily what would happen, as the teaching of Cardella is specifically about it being obvious, when it is determined that they are not necessary to remove them. Thus, even though Rummelhoff is focused on maintaining thermodynamic efficiency one having ordinary skill in the art would consider it obvious to remove one of the aftercoolers or intercoolers if it was determined they were not necessary to desired operations and thus operating without one is obvious.
In regards to claim 16, applicant has provided no specific argument that has not already been addressed above into the combination as claimed.
Applicant argues page 20 that it would not have been obvious to have modified Rummelhoff with the teaching of Durand as Durand teaches “motor cooling bypass” which is a “different type of system and different objectives” where the claimed invention is for “drawing off a fraction of the cycle gas supplying the compression mechanism” and the combination does not provide such a teaching. This is not persuasive.
Rummelhoff provides no teaching of motor cooling, as Rummelhoff provides no teaching of the presence of motors; however, one having ordinary skill in the art would recognize that there are drivers for said compressors and Marcuccilli shows the obviousness of said drivers being motors. Durand then provides a showing that it is known that a compressor bypass line can be provide such that fluid passes the compressor and instead provides motor cooling before being reintroduced to the cycle back to the compressor. Contrary to applicant’s argument that the common knowledge in the art is “conclusory and lacks supporting evidence”, this is clearly present in the teachings by Durand beyond just the common knowledge in the art, as the entire point of Durand is to provide cooling to the motors which means that it would result in the ability to not have to use additional cooling as stated in the rejection, or reduce said cooling, as the cooling is provided by the already present cycle. Thus, there would be sufficient motivation and reasoning to apply a system such as Durand to that of Rummelhoff as modified, as it is known that motors that drive compressors need to be cooled.
Applicant argues page 20-21 that there is no teaching or suggestion to “split the flow for separate motors and then have a downstream junction within one and the same pipe portion”. This is not persuasive.
Sun teaches two examples of cooling components with a motor cooling line (20) where in one configuration (Figure 1D) the components being cooled are in series where the flow enters the system (at 20) passes through and then into the suction of the compressor (paragraph 22) and another (Figure 1E) in which the flow is split into separate flow lines which can be within or outside a compressor before providing cooling and then are both passed to the suction port of the compressor. This provides a showing of obviousness that the stream that is passing to the motor as modified in Rummelhoff can be split into two parallel branches which then recombine together in the bypass line before being passed back into the cycle.
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have instead of passing through the motor in series to have in Rummelhoff as modified based on the teaching of Sun had the line cooling line for the motor split into two and pass through the motors separately before each cooling line is passed to the suction (which would be a junction of a common line of the bypass line) of the compressor since it has been shown that choosing from a finite number of identified predictable solutions is obvious whereby as there are two configurations (parallel and series) it would have been obvious to choose from them and one having common knowledge in the art would recognize that it is obvious whereby as they are both known ways of providing cooling to multiple components before the fluid is passed to the compressor it would have been obvious to have provided parallel as opposed to series flow which would as would be common knowledge in the art allow for the same temperature fluid to be passed to all of the motors so a heat exchange is not needed to cool the flow after the first motor.
Applicant argues that the combination is improper hindsight as the “prior references do not teach the underlying motor cooling in this context”.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). As stated by applicant, Sun provides two general cooling strategies, one of which is parallel cooling of multiple components starting with one original cooling line. As modified Rummelhoff has one cooling line which is shown to be obvious to split into multiple lines for cooling multiple components in parallel that need cooling, which in Rummelhoff would be multiple motors.
Applicant argued that the “benefit highlighted in the present specification- cooling all or some motors by cycle gas tapped at different pressure levels- is not achieved or suggested by Sun”. This is not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., cycle gas at different pressure levels) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claims do not require the cycle gas being tapped at different pressure levels for the cooling to be provided, nor do the drawings appear to show this configuration. All that is required of the claimed invention and the drawings as shown bypass line is split into multiple branches to cool separate motors and then recombined, which has no bearing on the pressure level the cycle gas is removed at.
Applicant argues, in regard to claim 26, pages 22 that a proper motivation has not been established by Ueda because “there is no teaching or suggestion in Ueda to specifically control the speed of compression stages based on the presence or absence of an intermediate cooler between them” and the use of obvious to try is “insufficient” because the invention as claimed “aims to limit heating and avoid damage to the equipment in stages without intermediate cooling” which is “a targeted solution o a problem that arises from the very inventive concept of skipping intercoolers, and is it is not generally taught by Ueda”. This is not persuasive.
In the case of the combination of Cardella it is shown that it is old and well known that compressors can have intercoolers or aftercoolers but also are not required to have intercoolers or aftercoolers as it can reduce the capital cost (paragraph 136). This shows that it would be obvious, to have had aftercoolers or intercoolers after some compressors but that it would be equally obvious to have them only when necessary, and thus while one having ordinary skill in the art would consider placing them after each compressor, the choice of not having one after a compressor would be obvious, and as there are only a limited number of compressors, a combination of having them after some but not others would be obvious. Further, Ueda provides a teaching that when compressors are operated together, they can be operated at unique motor rotation speeds to achieve optimal performance conditions and save energy (paragraph 158). Thus, as there are a limited number of operating compressors there are a limited number of combinations that are possible and thus it would have been obvious having ordinary skill in the art to achieve the result as claimed when trying to determine ideal operating performance for the overall configuration. Applicant is not considered the prior art references as a whole an applying a piecemeal analysis. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As it has been shown by Cardella to have not have intercoolers after every compressor, it is separately and independently obvious in view of Ueda to determine which compressors are operated at which speeds. One having ordinary skill in the art would expect that an adjustment of the speeds would result in a beneficial result and thus would have considered it obvious to have achieved the configuration as claimed as it is one of the identified predictable solutions. Applicant’s solution and motivation to provide this configuration does not render the claims any less obvious as “It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant” MPEP 2144 IV.
Applicant further argues that a person of ordinary skill in the art faced with excessive temperature rise “would likely attempt to optimize sped in a way that minimized such heating or maximizes output, rather than purposely running it at a lower speed than cooled stages” and applicant’s invention results in an “unexpected technical effect”. This is not persuasive.
In response to applicant's argument that “speed reduction of uncooled stages, unexpectedly compensates for the loss of isothermal compression”, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Ueda teaches that individual motors (and thus compressors in series) can be operated at different speeds to provide optimal conditions and save energy and improve refrigerating performance, and as such, operating the compressors based on the configuration as claimed would have been obvious and well within ordinary skill in the art to determine the ideal operating conditions to maximize performance and save energy.
Applicant further argues that the invention has “currently claimed specific speed control, where uncooled stages run slower than cooled stages to achieve an unexpected benefit for light gases” which is “not ‘a predictable solution’” because such a solution must be obvious to try and a matter of routine optimization whereas “the present invention is not a routine optimization, but rather a specific and surprising approach” and results in “a new an unexpected result” as “the very nature of the claimed speed control is counter-intuitive”. This is not persuasive.
Cardella provides a showing that it would have been obvious to a person having ordinary skill in the art to have aftercoolers in some locations and not in others. Ueda provides a teaching that it would have been obvious to run compressors at different speeds to achieve optimization. As such, there are only a finite number of combinations of these, all of which would be obvious to try, ones in which some compressors are operated at higher speed, one in which some are operated at lower, and varying combinations; however, there are only a finite number of combinations of operating pressures relative to teach other as well as locations for not having aftercoolers. As such, based on these combined teachings, it is not counter-intuitive to achieve the specific speed control as claimed, but well within routine optimization which one of ordinary skill in the art would have been motivated to do to as taught by Ueda “maximize performance and save energy”. That applicant has done so for a different reason or discovered an alleged “surprising positive impact”, which no evidence has been provided for, does not render the claims any less obvious as the result of such a modification would be predictable, and it would be one solution that would have been considered as it is within the finite number of predictable solutions.
Applicant further argues that there is “lack of motivation to combine for specific speed control” as Ueda only teaches “general teachings of operating compressors at ‘unique motor speeds’ for ‘optimum operational conditions’ but no specific guidance or motivation to apply a lower speed to uncooled compression stages” and as such “Ueda’s broad teaching does not bridge the gap to Applicant’s specific, counter-intuitive control strategy” and the “’obvious to try’ rationale remains misplaced because the specific outcome… is not a predictable solution”. This is not persuasive.
Applicant is not considered the prior art references as a whole an applying a piecemeal analysis. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As it has been shown by Cardella to have not have intercoolers after every compressor, it is separately and independently obvious in view of Ueda to determine which compressors are operated at which speeds. One having ordinary skill in the art would expect that an adjustment of the speeds would result in a beneficial result and thus would have considered it obvious to have achieved the configuration as claimed as it is one of the identified predictable solutions. Applicant’s solution and motivation to provide this configuration does not render the claims any less obvious as “It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant” MPEP 2144 IV.
Applicant’s remaining arguments do not provide specific arguments over the prior art which have not been addressed above, an only provide general statements about how the added claims are patentable.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN M KING whose telephone number is (571)272-2816. The examiner can normally be reached Monday - Friday, 0800-1700.
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/BRIAN M KING/ Primary Examiner, Art Unit 3763
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