Ex parte Buchi et al.

Board of Patent Appeals and Interferences

Nov 28, 2001

09152515 (B.P.A.I. Nov. 28, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FRANZ BUCHI et al.
____________
Appeal No. 2001-2193
Application No. 09/152,515
____________
HEARD: November 13, 2001
____________
Before ABRAMS, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 10, which are all of the claims
pending in this application.
We REVERSE.
Appeal No. 2001-2193 Page 2
Application No. 09/152,515
BACKGROUND
The appellants' invention relates to a liquid fuel
pressure atomizing nozzle. A copy of the claims under appeal
is set forth in the appendix to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Squire et al. 478,295 July 5,
1892
(Squire)
Forney 1,887,407 Nov. 8,
1932
Gebhardt et al. 3,401,883 Sep. 17,
1968
(Gebhardt)
Akimoto et al. 5,603,456 Feb.
18, 1997
(Akimoto)
Claims 1, 2, 4 and 10 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Forney.
Claim 3 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Forney and Squire.
Appeal No. 2001-2193 Page 3
Application No. 09/152,515
Claims 4 to 8 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Forney and Gebhardt.
Claim 9 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Forney and Gebhardt as applied to claim 4
above, and further in view of Squire.
Claim 10 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Forney and Akimoto.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the final rejection (Paper
No. 14, mailed May 9, 2000) and the answer (Paper No. 21,
mailed February 1, 2001) for the examiner's complete reasoning
in support of the rejections, and to the brief (Paper No. 20,
filed December 21, 2000) and reply brief (Paper No. 23, filed
April 2, 2001) for the appellants' arguments thereagainst.
OPINION
Appeal No. 2001-2193 Page 4
Application No. 09/152,515
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
The anticipation rejection
We will not sustain the rejection of claims 1, 2, 4 and
10 under 35 U.S.C. § 102(b).
To support a rejection of a claim under 35 U.S.C. §
102(b), it must be shown that each element of the claim is
found, either expressly described or under principles of
inherency, in a single prior art reference. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
Claim 1, the sole independent claim on appeal, reads as
follows:
Appeal No. 2001-2193 Page 5
Application No. 09/152,515
A liquid fuel pressure atomizing nozzle for gas-
turbine burners, comprising a nozzle body having at least
two separate feed passages for one liquid to be atomized,
the first feed passage being at least partly enclosed by
the second feed passage and also being connected
downstream to an outer space via a discharge orifice, and
the second feed passage likewise being connected to the
outer space, wherein the second feed passage has at least
two discharge orifices to the outer space wherein an axis
of each of said at least two discharge orifices are
oriented outwardly from a central axis of said first feed
passage.
Appeal No. 2001-2193 Page 6
Application No. 09/152,515
Forney discloses a burner constructed to burn either gas
or oil atomized by steam prior to discharge. Figure 1 of
Forney shows a furnace equipped with a burner and Figure 3 of
Forney shows a sectional view of the burner. Forney teaches
that gas flows from pipe 37 into chamber 34, then into the
space between tubes 28 and 29, then to the space between tip
31 and sleeve 59, and then to outlet ports 58 angled relative
to the longitudinal axis of the tubes 28 and 29. Forney also
teaches that steam flows from pipe 47 into tube 30, then into
nozzle 65, then to sleeve 59 where it atomizes oil injected
through ports 64 in the sleeve 59, and then to outlet ports
57. Forney provides that oil is supplied from pipe 42 to the
space between pipes 29 and 30 for flow to the ports 64.
Forney does not teach the size of the ports 57 and 58.
We agree with the appellants that claim 1 is not
anticipated by Forney. Specifically, we agree with the
appellants that the preamble of claim 1 (i.e., a liquid fuel
pressure atomizing nozzle) is a structural limitation that is
not met by Forney. In our view, this structural limitation
requires that at least one of the claimed discharge orifices
Appeal No. 2001-2193 Page 7
Application No. 09/152,515
is sized so that a pressurized liquid fuel injected therefrom
will atomize. Forney does not teach that any of his ports 57
and 58 are sized so that a pressurized liquid fuel injected
therefrom will atomize. Additionally, it is well-settled that
under principles of inherency, when a reference is silent
about an asserted inherent characteristic, it must be clear
that the missing descriptive matter is necessarily present in
the thing described in the reference, and that it would be so
recognized by persons of ordinary skill. Continental Can Co.
v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749
(Fed. Cir. 1991). As the court stated in In re Oelrich, 666
F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981)(quoting Hansgirg
v. Kemmer, 102 F.2d 212, 214, 40 USPQ 665, 667 (CCPA 1939)):
Inherency, however, may not be established by
probabilities or possibilities. The mere fact that
a certain thing may result from a given set of
circumstances is not sufficient. [Citations
omitted.] If, however, the disclosure is sufficient
to show that the natural result flowing from the
operation as taught would result in the performance
of the questioned function, it seems to be well
settled that the disclosure should be regarded as
sufficient.

In this case, it is not clear that the missing descriptive
matter (i.e., that ports 57 and 58 are sized so that a
Appeal No. 2001-2193 Page 8
Application No. 09/152,515
pressurized liquid fuel injected therefrom will atomize) is
necessarily present in the description of Forney, and that it
would be so recognized by persons of ordinary skill.
For the reasons set forth above, claim 1 is not
anticipated by Forney. Accordingly, the decision of the
examiner to reject claim 1, and claims 2, 4 and 10 dependent
thereon, under
35 U.S.C. § 102(b) is reversed.
The obviousness rejections
We have also reviewed the references (i.e., Squire,
Gebhardt and Akimoto) additionally applied in the rejection of
claims 3 to 10 under 35 U.S.C. § 103 but find nothing therein
which makes up for the deficiency of Forney discussed above.
Accordingly, we cannot sustain the examiner's rejection of
appealed claims 3 to 10 under 35 U.S.C. § 103.
Appeal No. 2001-2193 Page 9
Application No. 09/152,515
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 10 is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2001-2193 Page 10
Application No. 09/152,515
BURNS DOANE SWECKER & MATHIS LLP
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
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Application No. 09/152,515
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