Ex Parte Chen

Patent Trial and Appeal Board

May 30, 2013

11297177 (P.T.A.B. May. 30, 2013)

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
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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
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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).
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Application 11/297,177
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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
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Application 11/297,177
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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.
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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

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Application 11/297,177
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