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.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). (Another good case pointed to by the court here against inadequate reasoning by the Examiner is Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012) (obviousness determination improper where “little more than an invocation of the words ‘common sense’ (without any record support showing that this knowledge would reside in the ordinarily skilled artisan)”).)
Background / Facts: The patent here was directed to cryogenic processes for separating multi-component gaseous hydrocarbon streams to recover both gaseous and liquid compounds using a high pressure absorber. In contrast to the “Mak” application prior art reference touted by third-party requestor Fluor on reexam, the claims require either “expanding” or an “expansion means” for expanding at least a portion of a first vapor stream, which the specification discloses are to “be effectuated with a turbo-expander, Joules-Thompson expansion valves, a liquid expander, a gas or vapor expander or the like.”
Issue(s): Whether it would not have been obvious to add an expander to the otherwise equivalent low-pressure configuration of the Mak reference when utilizing Mak’s low-pressure system with a high-pressure feed gas (in order to improve the efficiency of the absorber) would require matching the feed gas pressure with the absorber pressure, as was well-known in the prior art.
Holding(s): No. The Mak reference discloses two different configurations, one designed for high-pressure feed gas and one designed for low-pressure feed gas, with Mak specifically discussing the advantages of the “no turboexpander design” for low-pressure feed gas. 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 to arrive at the claimed invention so that it would be compatible with a high-pressure feed gas. Instead, if he or she desired to utilize a high-pressure feed gas, he or she would have been directed to follow the alternative systems disclosed in the Mak reference that are specifically designed to accommodate a high-pressure feed gas, rather than to attempt to modify Mak’s low-pressure configuration. Mak therefore teaches away from such a modification because “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.”