Ex parte Beebe

Board of Patent Appeals and Interferences

Aug 18, 1999

08643048 (B.P.A.I. Aug. 18, 1999)

Application for patent filed May 2, 1996. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KENNETH W. BEEBE
____________
Appeal No. 99-0209
Application No. 08/643,0481
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge, ABRAMS
and FRANKFORT, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-5, 7-13, 15 and 16, which at that
point constituted all of the claims remaining of record in the
application. Amendments permitted entry after the final
Appeal No. 99-0209
Application No. 08/643,048
2
rejection resulted in the cancellation of claims 7 and 15 and
the addition of claim 20, as well as changes to claims 1, 4,
5, 9, 12 and 13. Notwithstanding the amendments, the examiner
maintained a rejection of all of the surviving claims.
Therefore, before us on appeal are claims 1-5, 8-13, 16 and
20.
The appellant's invention is directed to a premixing low
NOx fuel emissions combustor with lean direct injection (LDI)
of gas fuel. The claims on appeal have been reproduced in an
appendix to the Appeal Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Bayer 2,944,388 Jul. 12,
1960
Amos 5,394,688 Mar.
7, 1995
THE REJECTION
Claims 1-5, 8-13, 16 and 20 stand rejected under 35
U.S.C.
Appeal No. 99-0209
Application No. 08/643,048
Although not so designated, technically, this is a new2
rejection made for the first time in the Examiner’s Answer, in
that it is applied for the first time against a number of the
claims. In the final rejection, the examiner rejected claims
1-4, 8-12 and 16 under 35 U.S.C. § 102(b) as being anticipated
by Amos, and claims 5, 7, 13 and 15 under 35 U.S.C. § 103 as
being unpatentable over Amos in view of Bayer. The Section
102 rejection has been withdrawn, and the appellant has
responded to the new Section 103 rejection in the Reply Brief.
3
§ 103 as being unpatentable over Amos in view of Bayer.2
The rejection is explained in the Examiner's Answer.
OPINION
Rather than reiterate the opposing viewpoints of the
examiner and the appellant, we refer to the Examiner’s Answer
(Paper No. 17) and the appellant’s Briefs (Papers Nos. 16 and
19) for a full explanation thereof.
The test for obviousness is what the combined teachings
of the prior art would have suggested to one of ordinary skill
in the art. See, for example, In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima
facie case of obviousness, it is incumbent upon the examiner
to provide a reason why one of ordinary skill in the art would
have been led to modify a prior art reference or to combine
Appeal No. 99-0209
Application No. 08/643,048
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reference teachings to arrive at the claimed invention. See
Ex parte Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985).
To this end, the requisite motivation must stem from some
teaching, suggestion or inference in the prior art as a whole
or from the knowledge generally available to one of ordinary
skill in the art and not from the appellant's disclosure.
See, for example, Uniroyal, Inc. V. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1052 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988).
The dispositive issue in this case is whether it would
have been obvious to one of ordinary skill in the art to
modify the Amos gas turbine structure by replacing the
disclosed fuel spray pegs (78) located in the secondary air
inlet passage (68) with the fuel/air atomizing spray bars (31)
disclosed by Bayer in the context of providing fuel to the
afterburner of a jet engine. It is our opinion that it would
not have been obvious to do so, and therefore we will not
sustain the examiner’s rejection. Our reasons for arriving at
this conclusion follow.
Appeal No. 99-0209
Application No. 08/643,048
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The problem to which the appellant has directed his
inventive efforts is minimizing the level of oxides of
nitrogen (NOx) in the reaction zone of a gas turbine engine.
Central to the appellant’s solution to the problem is
injecting fuel and air directly into the secondary combustion
zone of the gas turbine by means of a lean direct injection
(LDI) assembly. As described on pages 4, 7 and 8 of the
specification, each LDI spoke is supplied with fuel and air
from separate manifolds, which fuel and air is discharged
together from openings in the spokes directly into the
secondary combustion zone.
Amos also is concerned with reducing NOx. Like the
appellant’s claimed invention, Amos utilizes primary and
secondary combustion systems. In the Amos system, a first set
of gas fuel spray pegs (62) located in air inlets to the
primary combustion zone, in conjunction with swirl vanes (84 &
86), supply an efficiently mixed fuel/air stream to the
primary zone, where it produces combustion having lower NOx.
Pressurized air to the secondary combustion zone is supplied
through a plurality of annular passages (68), and gas fuel is
added to each of these streams through another set of fuel
Appeal No. 99-0209
Application No. 08/643,048
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spray pegs (76) located upstream of the secondary combustion
zone in the secondary air passages. In the Amos system, the
gas fuel is mixed with the air after the fuel exits the fuel
spray pegs. Essentially, with regard to the system recited in
the appellant’s claims Amos does not teach providing fuel and
air to a secondary combustion zone by means of a plurality of
spokes, each of which injects both the fuel and the air.
For this teaching the examiner looks to Bayer, which is
directed to a jet engine with an afterburner. Bayer
discloses, inter alia, a plurality of fuel/air injectors (31)
that are very similar in construction to the injectors used in
the appellant’s invention, in that they include separate
connections for fuel supply and air supply, an annular chamber
in which fuel and air are received, and a plurality of
discharge openings (51) through which fuel and air are
injected directly into a combustion chamber. It is the
examiner’s position that it would have been obvious to one of
ordinary skill in the art to replace the secondary combustion
zone fuel injectors disclosed by Amos with those of Bayer
because “[s]uch a configuration provides maximum fuel
Appeal No. 99-0209
Application No. 08/643,048
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atomization with minimal atomizing air flow,” as well as a
number of other benefits (Answer, page 5).
We do not agree with this conclusion. The mere fact that
the prior art structure could be modified does not make such a
modification obvious unless the prior art suggests the
desirability of doing so. See In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). In our view, there
are several factors which would have acted as disincentives to
one of ordinary skill in the art to make the modification
proposed by the examiner. The first is that Amos already has
solved the problem of reducing NOx and why, therefore, would
the artisan wish to modify that system. Carrying this one
step further, Amos achieves the necessary mixing of the
separately injected fuel and air streams as they proceed
together along the length of the annular passages (68), and to
replace the fuel-only injectors with fuel/air injectors would
seem to provide no advantage. In addition, Amos utilizes gas
fuel while the fuel used in Bayer is liquid and,
notwithstanding the examiner’s opinion, there is no evidence
to support a conclusion that one of ordinary skill in the art
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Application No. 08/643,048
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would have considered the Bayer liquid injector to be usable
in a gas fuel system.
In view of the above, we fail to perceive any teaching,
suggestion or incentive in either of the references which
would have motivated one of ordinary skill in the art to
modify the Amos system in the manner proposed by the examiner.
From our perspective, the only suggestion for doing so resides
in the luxury of the hindsight afforded one who first viewed
the appellant’s disclosure. This, of course, is not a proper
basis for a conclusion of obviousness. See In re Fritch, 972
F.2d 1260, 23 USPQ2d 1780 (Fed. Cir. 1992).
It is our opinion that the combined teachings of the two
applied references fail to establish a prima facie case of
obviousness with regard to the subject matter recited in the
appellant’s claims.
Appeal No. 99-0209
Application No. 08/643,048
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SUMMARY
The rejection is not sustained.
The decision of the examiner is reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 99-0209
Application No. 08/643,048
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bae
Appeal No. 99-0209
Application No. 08/643,048
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Alan M. Kagen
Nixon & Vanderhye
1100 North Glebe Road
Eighth Floor
Arlington, VA 22201-4714