ENERGYIELD LLC (75%) et al.

Patent Trials and Appeals Board

Dec 28, 2020

2020000224 (P.T.A.B. Dec. 28, 2020)

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.
15/704,524 09/14/2017 Robert Hotto 1065-028.DIV 7681
24955 7590 12/28/2020
ROGITZ & ASSOCIATES
Jeanne Gahagan
4420 Hotel Circle Court
SUITE 230
SAN DIEGO, CA 92108
EXAMINER
CHANDLER, KAITY V
ART UNIT PAPER NUMBER
1725
NOTIFICATION DATE DELIVERY MODE
12/28/2020 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):
John@rogitz.com
Noelle@rogitz.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT HOTTO
Appeal 2020-000224
Application 15/704,524
Technology Center 1700

Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
N. WHITNEY WILSON, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real parties in interest as Energy
Yield LLC and John L. Rogitz. Appeal Br. 2.
Appeal 2020-000224
Application 15/704,524

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CLAIMED SUBJECT MATTER
The claims are directed to an integrated reformer and syngas
separator. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A reformer assembly, comprising:
at least one vortex tube comprising a swirl chamber having a
hydrocarbon input tangential to the swirl chamber and a main
tube segment communicating with the swirl chamber and having
a first output juxtaposed with an inside surface of a wall of the
main tube segment, the first output for outputting relatively
hotter and heavier constituents of fluid provided at the
hydrocarbon input;
at least one catalytic constituent on the inside surface of the
wall of the main tube segment;
and
at least one heat input providing heat to vortex tube to promote
reformation of Hydrogen and Carbon from the hydrocarbon
input.
Independent claims 2 and 12 are also each directed to an assembly
similar to that of claim 1, but further including a tube disposed centrally
within the main tube segment defining a second output. Appeal Brief
Claims Appendix 7–9.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Westby US 3,563,883 Feb. 16, 1971
Noguchi US 4,122,802 Oct. 31, 1978
Sanger US 6,793,698 B1 Sept. 21, 2004
Kim US 2006/0194084 A1 Aug. 31, 2006
Fischel US 2010/0330445 A1 Dec. 30, 2010
Weaver US 2014/0093446 A1 Apr. 3, 2014

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REJECTIONS
Claims 1–20 are rejected under 35 U.S.C. § 112(b) as being indefinite.
Ans. 3, 4 (this is a new ground of rejection).
Claims 1–6 and 8 are rejected under 35 U.S.C. § 102(a)(1) as being
anticipated by Fischel. Final Act. 2.
Claims 7, 9, 17, and 18 are rejected under 35 U.S.C. § 103 as being
unpatentable over Fischel, as applied to claim 1, and further in view of
Weaver. Final Act. 6.
Claims 10 and 19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Fischel, further in view of Sanger in view of Westby.
Final Act. 7.
Claims 11 and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Fischel, and further in view of Kim and Noguchi. Final
Act. 8.

OPINION
The § 112 Rejection
After review of the respective positions provided by Appellant and the
Examiner, we agree with Appellant that one of ordinary skill in the art
would have understood what is being claimed. A preponderance of the
evidence supports Appellant’s assertions that the Examiner’s rejection
should be reversed.
The Examiner’s position that Appellant is attempting to claim both a
method and an apparatus here because, e.g., claim 1 recites that the first
output is “for outputting relatively hotter and heavier constituents of fluid”
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(Ans. 3) is not tenable.2 Rather, we agree that Appellant is merely describing
the function of the apparatus similar to In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997). Reply Br. 2 (“As noted by the court in Schreiber, ‘[a]
patent applicant is free to recite features of an apparatus either structurally or
functionally.’”).
Accordingly, the Examiner’s 112 rejection is reversed.

The §§ 102 and 103 Rejections
Appellant’s main argument is that the Examiner is taking an
unreasonably broad interpretation of the claim language “vortex tube” as
well as the “input tangential to the swirl chamber” (Appeal Br. 5–8; Reply
Br. 3, 4). In construing claims, “the PTO must give claims their broadest
reasonable construction consistent with the specification. . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims to
narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” Id.3

2 Likewise with respect to the second output of claims 2 and 12, reciting that
such is “for outputting at least one relatively lighter and cooler constituent of
fluid” falls within permissible functional language. Note claim 2 as
reproduced in the Claims Appendix inadvertently deleted “for” in this clause
(compare to claim 2 as filed).
3 Cf. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (in prosecution
before the PTO “[i]t is the applicants’ burden to precisely define the
invention, not the PTO’s.”). The purpose of this requirement is to provide
the public with adequate notice of the boundaries of protection involved.
The time to do so is during prosecution where an applicant has the ability to
amend the claims to more precisely define the metes and bounds of the
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As pointed out by the Examiner, Appellant does not point to any
limiting definition of the term “vortex tube” nor does Appellant limit the
claimed tube to a non-rotating stationary tube (Ans. 5–7). Appellant’s
response that the hydrocarbon input is not “tangential” fails to take into
account that Figure 1A of Fischel illustrates that the hydrocarbon input does
indeed flow out tangentially to the swirl chamber at the end of the input
passageway (see the upside down T configuration of the input in Fig. 1A).
Appellant may not simply declare that vortex tubes do not rotate, since claim
1 does not preclude a rotating tube chamber as exemplified in Fischel that
creates vortex flows, when Appellant has not chosen more limiting claim
language. Furthermore, Appellant has not directed us to any limiting
definition or other language in the Specification. To the contrary, the
Specification states that “the scope of the present application is limited only
by the appended claims” (Spec. 14, last full paragraph). Thus, Appellant’s
argument has not shown error in the Examiner’s determination that claim 1
encompasses Fischel’s device (e.g., Ans. 5–7).
Appellant also argues that Fischel does not disclose that the first
output is “for outputting relatively hotter and heavier constituents” as recited
in claim 1 and that the second output is “for outputting at least one relatively
lighter and cooler constituent” as recited in claims 24 and 12 (Appeal Br. 10,
11; Reply Br. 4, 6–7). This argument is not persuasive of error. One of
ordinary skill would have reasonably appreciated that hydrogen output 114

claimed invention. See Ex parte Miyazaki, 89 USPQ2d 1207, 1210–12
(BPAI 2008).
4 It appears that claim 2 as reproduced in the Claims Appendix inadvertently
deleted “for” in this clause (compare to claim 2 as filed).
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is lighter versus the carbon stream 106 in Fischel as explained by the
Examiner (e.g., Ans. 7). In any event, choosing to define an element
functionally, i.e., by what it does, carries with it a risk. Where there is reason
to conclude that the structure of the prior art is inherently capable of
performing the claimed function, the burden shifts to the applicant to show
that the claimed function patentably distinguishes the claimed structure from
the prior art structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997); In re Hallman, 655 F.2d 212, 215 (CCPA 1981). Appellant has not
met that burden here.
Thus, a preponderance of the evidence supports the Examiner’s
position that one of ordinary skill would have reasonably inferred from
Fischel’s disclosure an assembly as claimed in each of claims 1, 2, and 12.
In re Preda, 401 F.2d 825, 826 (CCPA 1968) (In determining whether a
reference anticipates the subject matter recited in a claim, “it is proper to
take into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.”). Appellant has not directed our attention to persuasive
reasoning or evidence to establish that the Examiner’s interpretation of
Fischel’s disclosure is unreasonable.
With respect to claim 8 which depends from claim 2 and recites “the
tube is a Hydrogen-permeable tube,” Appellant’s argument that membrane
94 is not a tube (Appeal Br. 5; Reply Br. 5) is not responsive to the
Examiner’s rejection which is based on the “at least one tube” of claim 2
encompassing hydrogen permeable tube filter layer 96 of Fischel (Final Act.
4, 6; Fischel ¶ 149). As stated in Fischel’s abstract, 92 and 96 are rotating
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cylindrical surfaces (i.e., tubes). A preponderance of the evidence supports
the Examiner’s finding of anticipation of this limitation based on Fischel.
Likewise, with respect to the Examiner’s obviousness rejection of
claims 10 and 19 based on Fischel, Sanger, and Westby, Appellant’s
argument (Appeal Br. 5) fails to adequately address the rejection made by
the Examiner (Final Act. 7–8). This argument also fails to take into account
the breadth of the claim language as discussed previously herein and the
applied prior art as a whole, and thus are not persuasive of reversible error in
the Examiner’s obviousness determination.
Accordingly, each of the Examiner’s §§ 102 and 103 rejections are
affirmed.
CONCLUSION
The Examiner’s §112 rejection is reversed.
The Examiner’s §§ 102 and 103 rejections are affirmed.

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 112(b) Indefiniteness 1–20
1–6, 8 102(a)(1) Fischel 1–6, 8
7, 9, 17, 18 103 Fischel, Weaver 7, 9, 17, 18
10, 19 103 Fischel, Sanger,
Westby
10, 19
11, 20 103 Fischel, Kim,
Noguchi
11, 20
Overall
Outcome
1–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED