Ex Parte ChenDownload PDFPatent Trial and Appeal BoardMay 30, 201311297177 (P.T.A.B. May. 30, 2013) Copy Citation 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. 11/297,177 12/08/2005 Alexander G. Chen 67097-233; EH-11274 3986 54549 7590 05/31/2013 CARLSON, GASKEY & OLDS/PRATT & WHITNEY c/o CPA Global P.O. Box 52050 Minneapolis, MN 55402 EXAMINER NGUYEN, ANDREW H ART UNIT PAPER NUMBER 3741 MAIL DATE DELIVERY MODE 05/31/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ALEXANDER G. CHEN ____________________ Appeal 2011-001966 Application 11/297,177 Technology Center 3700 ____________________ Before: LINDA E. HORNER, BARRY L. GROSSMAN, and NEIL A. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001966 Application 11/297,177 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 7 and 11-17. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims relate to “a fuel delivery system for an energy conversion device” and, more particularly, “to a fuel delivery system including a fuel deoxygenator for removing dissolved oxygen providing for vaporizing fuel to improve combustion.” Spec., para. [0001]. Claim 1, directed to a method of operating a fuel transformation system, and claim 11, directed to a “system for conditioning liquid fuel for a combustion device,” are independent claims. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of operating a fuel transformation system for preparing liquid fuel for a combustion device comprising the steps of: a) removing dissolved oxygen from a liquid fuel at a first temperature with a deoxygenation device; b) heating the liquid fuel to a second temperature greater that the first temperature to vaporize at least a portion of the fuel; c) mixing the vaporized fuel with an oxidizer; and d) reforming the vaporized fuel oxidizer mixture in a catalytic reactor. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Koch Spadaccini US 3,828,736 US 6,315,815 B1 Aug. 13, 1974 Nov. 13, 2001 Ziegner US 2004/0040309 A1 Mar. 4, 2004 Appeal 2011-001966 Application 11/297,177 3 REJECTIONS The Examiner made the following rejections: Claims 1-6 and 11-17 stand rejected under 35 U.S.C. § 103(a) over Spadaccini and Koch. Ans. 4.1 Claim 7 stands rejected under 35 U.S.C. § 103(a) over Spadaccini, Koch, and Ziegner. Ans. 7. OPINION Claims 1-6 and 11-17 Appellant argues claims 1-6 and 11-17 as a group. App. Br. 4-7. We select independent claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appellant argues for reversal of the rejection of the appealed claims solely based upon arguments regarding the alleged teachings of Spadaccini and Koch with regard to claim 1. App. Br. 6-7.2 Appellant argues that these references teach away from the proposed modification of Spadaccini. Reply Br. 3; see also App. Br. 4. In particular, Appellant argues that Spadaccini relates to removing oxygen from a fuel stream in contrast to the Koch device specifically adding oxygen containing gas to the fuel and there can be no reason to combine a system and method with the purpose of removing oxygen from a liquid fuel with a system that operates to add oxygen to the fuel. Reply Br. 3. The Examiner disagrees, stating that in his view, the two operations do not interfere with one another because “Koch's addition of oxygen-containing 1 Claims 8-10 and 18 were withdrawn. App. Br. 2, Ans. 2. 2 Arguments which Appellant could have made but chose not to make regarding other claims or in response to findings or conclusions of the Examiner are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appeal 2011-001966 Application 11/297,177 4 gas occurs downstream of an evaporator (6) and with the purpose of reacting the two in a catalytic chamber.” Ans. 6-7. The Examiner notes that, as is known in the art, in order to create a reaction with fuel, oxygen must be present – which is true of any such apparatus, and that “Spadaccini's invention, which teaches removing dissolved oxygen from liquid fuel would still require an oxygen-containing gas to be added upstream of the combustor in order for a combustion reaction to occur. This necessary and inherent addition of oxygen-containing gas is what is . . . taught by Koch.” Ans. 7. Furthermore, in the Examiner’s view, “Spadaccini teaches a reduction in coking in injectors upstream of the combustor (col 1 lines 25- 30).” Ans. 7. The Examiner determined that “[t]he combination of Spadaccini and Koch would result in a reduction in coking in the injector and evaporator (5 and 6 in Koch) before the evaporated fuel is mixed with oxygen-containing gas in the mixer (7).” Id. The issue before us is whether the Examiner articulated adequate reasoning based on rational underpinnings to explain why one of ordinary skill in the art would have found the claimed invention obvious under 35 U.S.C. § 103(a) over Spadaccini and Koch. We agree with the Examiner that the combination of references for the use of their respective teachings of the steps of the method of the claim 1 is proper. We find the Examiner’s explanation of the teachings of Koch and Spadaccini and the knowledge and skill in the art to be reasonable based on a preponderance of the evidence, and we find the Examiner’s articulation of the combination of the references to be based on a rational underpinning. We further find that the Examiner has adequately addressed Appellant’s arguments in the Examiner’s Answer. Ans. 8-11. See In re Kahn, 441 F.3d Appeal 2011-001966 Application 11/297,177 5 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). As such, we adopt the Examiner’s findings and reasoning as our own. Much of Appellant’s argument is based upon the legal argument of teaching away in that, according to Appellant, it is inconsistent for the Examiner to combine Koch and Spadaccini because of a concern with coking.3 The Examiner has responded with appropriate factual findings, with which we agree. Regarding the legal argument, we note the failure of Appellant to meet the requirement of our reviewing court in order to establish “teaching away” under the law. We highlight and address the following arguments only for emphasis, to respond to Appellant. For the reasons noted above and by the Examiner, we are not persuaded by Appellant’s principal arguments that the Examiner has failed to state a prima facie case, or particularly in Appellant’s view, that the references “teach away” from any combination thereof. In In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994), the Court stated the general rule to determine whether a reference “teaches away”: “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” The Court, however, further explained its holding in that the degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference's disclosure is unlikely to be 3 For clarity we note that as to the Examiner’s articulated reasoning regarding temperatures, discussed in the Answer at pages 9-10, Appellant’s Reply does not answer the Examiner, but Appellant merely repeats much of his opening argument. Reply Br. 3. Appeal 2011-001966 Application 11/297,177 6 productive of the result sought by the applicant. Appellant has not provided persuasive evidence or argument to establish that a person of ordinary skill, with knowledge of the references, would be discouraged from following the path set out in the Examiner’s rejection, or that the combination of the teachings of the references as proposed by the Examiner is unlikely to be successful. As noted, the Examiner’s rejection based on combining the teachings of the cited references is supported by articulated reasoning with rational underpinning to justify the obviousness conclusion. Accordingly, we affirm the rejection of claims 1-6 and 11-17. Claim 7 Appellant relies on the same arguments presented for the reversal of the rejection of independent claim 1 to argue for reversal of the rejection of dependent claim 7. Appellant asserts that the “addition of the Ziegner reference does not correct the problems with the base reference[s].” App. Br. 7. For the reasons above stated for claims 1-6 and 11-17, we affirm the rejection of claim 7. DECISION For the above reasons, the Examiner’s rejections of claims 1-7 and 11- 17 are affirmed. 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) (2011). AFFIRMED Appeal 2011-001966 Application 11/297,177 7 hh Copy with citationCopy as parenthetical citation