Ex Parte Colannino et al

Patent Trial and Appeal Board

Oct 26, 2017

13658766 (P.T.A.B. Oct. 26, 2017)

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.
13/658,766 10/23/2012 JOSEPH COLANNINO 2651-042-05 6108
134647 7590
Launchpad IP, Inc.
914 164th St. SE
Suite B-12 #433
Mill Creek, WA 98012
EXAMINER
DEEAN, DEEPAK A
ART UNIT PAPER NUMBER
3749
NOTIFICATION DATE DELIVERY MODE
10/30/2017 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):
docket @ launchpadip. com
renise@launchpadip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH COLANNINO, THOMAS S. HARTWICK,
DAVID B. GOODSON, TRACY A. PREVO, and
CHRISTOPHER A. WIKLOF
Appeal 2015-007965
Application 13/658,766
Technology Center 3700
Before JENNIFER D. BAHR, SUSAN L. C. MITCHELL, and
LEE L. STEPINA, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
ClearSign Combustion Corporation (Appellant)1 appeals under
35 U.S.C. § 134(a) from the Examiner’s decision, set forth in the Final
Action (Aug. 1, 2014, hereinafter “Final Act.”) rejecting claims 1, 5-19, 21-
28, 31-33, 35-59, 61-68, and 71-91. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM-IN-PART.
1 ClearSign Combustion Corporation (Appellant) is the applicant as provided
in 37 C.F.R. § 1.46 and is identified in the Appeal Brief (Feb. 9, 2015,
hereinafter “Appeal Br.”) as the real party in interest. Application Data
Sheet (July 31, 2013); Appeal Br. 3.
Appeal 2015-007965
Application 13/658,766
THE CLAIMED SUBJECT MATTER
Claim 78, reproduced below, is illustrative of the claimed subject
matter.
78. A combustion system, comprising:
a burner configured to support a flame;
a first electrode, positioned and configured to receive a
voltage potential and to impart a corresponding electrical charge
to a flame supported by the burner;
a second electrode, positioned farther from the burner than
the first electrode and configured to interact electrically with the
flame; and
a voltage source coupled to the first and second electrodes,
configured to apply a first voltage potential to the first electrode,
and to apply to the second electrode a second voltage potential
that is repulsive to an electrical charge imparted to the flame by
the first electrode and that corresponds to the first voltage
potential.
REJECTIONS2
I. The Examiner rejected claims 78, 80, 82-86, 88, 90, and 91 under
35 U.S.C. § 102(b) as anticipated by Kaehni et al., (US 2,604,936,
issued July 29, 1952; hereinafter “Kaehni”). Final Act. 3.
II. The Examiner rejected claims 81 and 89 under 35 U.S.C. § 103(a)
as unpatentable over Kaehni. Id. at 6.
III. The Examiner rejected claims 1, 5, 10-15, 17, 21, 24-28, 31, 32,
35-37, 43^16, 51-56, 61, 66-68, 71-73, 75-77, 79, and 87 under
35 U.S.C. § 103(a) as unpatentable over Kaehni and Wright et al.,
2 In the Answer (July 17, 2015, hereinafter “Ans.”), the Examiner withdrew
a rejection of claims 75 and 78 under 35 U.S.C. § 112, second paragraph.
Ans. 36.
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Application 13/658,766
(US 3,306,338, issued Feb. 28, 1967; hereinafter “Wright”). Id. at
8.
IV. The Examiner rejected claims 16, 18, 19, 41, 42, 57-59, 64, 65,
and 74 under 35 U.S.C. § 103(a) as unpatentable over Kaehni,
Wright, and Branston et al., (US 2007/0020567 Al, published Jan.
25, 2007; hereinafter “Branston”). Id. at 24.
V. The Examiner rejected claims 22, 23, 33, 38^10, 62, and 63 under
35 U.S.C. § 103(a) as unpatentable over Kaehni, Wright, and
Heiligers et al., (US 2005/0208442 Al, published Sept. 22, 2005;
hereinafter “Heiligers”). Id. at 29.
VI. The Examiner rejected claims 6, 9, 47, and 50 under 35 U.S.C.
§ 103(a) as unpatentable over Kaehni, Wright, and Pavlik et al.,
(US 7,243,496 B2, issued July 17, 2007; hereinafter “Pavlik”). Id.
at 32.
VII. The Examiner rejected claims 7 and 48 under 35 U.S.C. § 103(a)
as unpatentable over Kaehni, Wright, Pavlik, and Hammer et al.,
(US 7,845,937 B2, issued Dec. 7, 2010; hereinafter “Hammer”).
Id. at 34.
VIII. The Examiner rejected claims 8 and 49 under 35 U.S.C. § 103(a)
as unpatentable over Kaehni, Wright, Pavlik, and O’Connor (US
4,635,566, issued Jan. 13, 1987). Id. at 35.
IX. The Examiner also maintained provisional rejections of claims 1,
5, 6, 14, 16, 22-24, 41^47, 61-64, and 73 on grounds of
obviousness-type double patenting over various claims of four
then-co-pending applications. Id. at 36; see Non-Final Action
(Nov. 8, 2013; hereinafter “Non-Final Act.”) 28-30. Those
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Application 13/658,766
applications have since issued into US Patent 8,851,882; US Patent
9,151,549; US Patent 8,881,535; and US Patent 9,243,800.
DISCUSSION
Anticipation—Rejection I
Appellant takes issue with the Examiner reading both the “burner”
and the “first electrode” of claim 78 on nozzle 29 of Kaehni. Appeal Br. 44;
Reply Br. 4; see Final Act. 3; Ans. 36. According to Appellant, “[t]he
Examiner breaks a fundamental rule of examination by applying a single
element of the reference to anticipate two distinct claim features.” Appeal
Br. 44.
The Examiner maintains that this reading of the claim is consistent
with Appellant’s Specification, which states that “when the burner includes a
conductive portion, the conductive portion of the burner itself may function
as the charge electrode.” Ans. 36 (quoting Spec. 12:26-28). More
specifically, Appellant’s Specification states:
Optionally, supporting a charge electrode proximal to a burner
and at least intermittently in contact with a flame supported by
the burner may include supporting a conductive portion of the
burner. For example, when the burner includes a conductive
portion, the conductive portion of the burner itself may function
as the charge electrode.
Spec. 12:23-28.
This description clearly evinces that the recitation of a burner and an
electrode positioned proximal to the burner to impart an electrical charge to
a flame supported by the burner is to be construed in the present application
as encompassing a burner with a conductive portion of the burner itself
functioning as the electrode. Thus, the Examiner’s reading of claim 78 “is
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an interpretation that corresponds with what and how the inventor[s]
describe [their] invention in the [Specification; i.e., an interpretation that is
‘consistent with the [Specification,’” and, therefore, is the broadest
reasonable interpretation of the claim. In re Smith Int 7, Inc.,___ F.3d____,
2017 WL 4247407, at * 5 (Fed. Cir. Sept. 26, 2017) (quoting In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997)).
Appellant contends that the Examiner’s “[application of
[Appellant’s] own [Specification to interpret a prior art document exhibits
prima facie evidence that the Examiner has used impermissible hindsight.”
Reply Br. 4. This contention is unavailing because the Examiner does not
rely on Appellant’s Specification to interpret, or supplement, what Kaehni
discloses, much less to provide a teaching to modify Kaehni in any way.
Rather, the Examiner, properly, relies on Appellant’s Specification in
interpreting Appellant’s claim 78. See In re Suitco Surface, Inc., 603 F.3d
1255, 1260 (Fed. Cir. 2010) (explaining that “claims should always be read
in light of the specification and teachings in the underlying patent
[application]”).
Appellant further submits that “claim 83 actually teaches against the
Examiner’s interpretation.” Reply Br. 4. In particular, citing “the Doctrine
of Claim Differentiation,” Appellant contends that claim 83, which depends
from claim 78, “recites that one electrode comprises the burner, [thereby
implying] that the base claim 78 covers the situation in which the electrode
does not comprise the burner.” Id.
Claim 83 depends from claim 78, and further recites, “wherein the
first electrode comprises an electrically conductive portion of the burner.”
Appeal Br. 107 (Claims App.). Claim 83 supports, rather than teaches
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against, the Examiner’s interpretation of claim 78. “A claim in dependent
form shall be construed to incorporate by reference all the limitations of the
claim to which it refers” and shall “specify a further limitation of the subject
matter claimed.” 35 U.S.C. § 112 (1975) (amended 2011). We agree with
Appellant that dependent claim 83 suggests that independent claim 78 is not
limited to structures in which the electrode comprises the burner, i.e., that it
includes structures in which the electrode does not comprise the burner. See
Reply Br. 4. However, claim 83, which refers to claim 78 and, thus, shall be
construed to incorporate all the limitations of claim 78, also indicates that
claim 78 is not limited to structures in which the electrode does not comprise
the burner. Stated differently, dependent claim 83 shows that claim 78
covers structures in which the electrode comprises an electrically conductive
portion of the burner.
The Examiner is not “improperly attempting to import a limitation
from the specification into claim 78” or to “force just one of the two
alternatives into claim 78,” as Appellant alleges. Reply Br. 4. The
Examiner construes claim 78 as covering structures in which the first
electrode comprises the burner, but not as excluding structures in which the
first electrode does not comprise any portion of the burner.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s finding that Kaehni anticipates the subject matter of claim 78.
Accordingly, we sustain the rejection of claim 78, as well as claims 80 and
82-85, for which Appellant merely relies on the same arguments presented
for claim 78, under 35 U.S.C. § 102(b) as anticipated by Kaehni. Appeal Br.
44-46.
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Appellant contends that the rejection of claim 86, which depends from
independent claim 84, “contradicts the rejection of claim 78.” Id. at 47.
Appellant’s basis for this contention is that, in rejecting claim 78, the
Examiner reads the claimed burner and first electrode on Kaehni’s torch
nozzle 29, and reads the claimed second electrode on Kaehni’s annulus 31,
but, in rejecting claim 86, the Examiner reads the claimed burner and second
electrode on Kaehni’s torch nozzle 29. Id. Thus, according to Appellant,
“[o]ne of the two rejections must be wrong.” Id.
This line of argument is not convincing. We discern no inconsistency
in the Examiner’s explanations of the rejections of claims 78 and 86. See
Final Act. 3-5. Notably, claim 86 depends from independent claim 84, not
from independent claim 78. Appeal Br. 107 (Claims App.). Claims 78 and
86 both recite two electrodes, each of which has an electrical potential
applied thereto, one of which is closer to the burner than the other and
imparts an electrical charge to the flame, and the other of which is further
from the burner and has a voltage potential that is repulsive to the electrical
charge imparted to the flame. Id. at 106, 107. Claim 78 recites the second
electrode being positioned further from the burner than the first electrode,
and claim 86 recites the second electrode being closer to the burner than the
first electrode and imparting a charge to the flame. Id. Consequently, there
is no inconsistency in the Examiner reading the first electrode and second
electrode claimed in claim 78 on nozzle 29 and annulus 31, respectively, and
reading the second electrode and first electrode on nozzle 29 and annulus 31,
respectively. See Final Act. 3-5.
Thus, Appellant does not apprise us of error in the Examiner’s finding
that Kaehni anticipates the subject matter of claim 86. Accordingly, we
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sustain the rejection of claim 86, as well as claims 88, 90, and 91, for which
Appellant relies solely on the aforementioned arguments, under 35 U.S.C.
§ 102(b) as anticipated by Kaehni. See Appeal Br. 47—48.
Obviousness—Rejection II
In rejecting claim 81, the Examiner finds that Kaehni teaches varying
the voltages applied to nozzle 29 and annulus 31 “to achieve a desired result
for a desired application (Col. 2 Ln. 24-43) and selecting desired voltages
and polarities to shape the flame (Col. 8 Ln. 11-13),” but “does not expressly
disclose . . . wherein the voltage source is configured to apply the first and
second voltage potentials as a same voltage potential.” Final Act. 6. In
view of these teachings, the Examiner determines it would have been
obvious “to apply the same voltage to both the charge and shape electrodes,
since it has been held that choosing from a finite number of identified,
predictable solutions, with a reasonable expectation of success is obvious.”
Id. Further, the Examiner finds that “Kaehni teaches optimizing flame shape
(Col. 8 Ln. 11-13) brightness, intensity, and exhaust (Col. 2 Ln. 13-19) by
varying the voltages applied to the electrodes (Col. 2 Ln. 29-31).” Id. at 7.
Thus, the Examiner determines, alternatively, that it would have been
obvious for one of ordinary skill in the art “to apply the same voltage to both
electrodes as part of routine experimentation in order to optimize the
characteristics of combustion.” Id.
Appellant alleges error in the Examiner’s rejection because the two
different voltages—5kV and lOkV—are taught by Kaehni only for the
situation where “‘plate or work-piece’ 31 is grounded.” Appeal Br. 49.
Notably, Appellant’s allusion to the reference numeral “31” to denote the
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“plate or work-piece” discussed by Kaehni (see Kaehni 8:5-6) is incorrect.
In the embodiment of Figure 11, relied on by the Examiner, Kaehni uses the
reference numeral “30” to denote the “work-piece.” Kaehni 7:70. As the
Examiner points out (Ans. 36-37), Kaehni discloses applying a positive
charge to both nozzle 29 (the charge electrode) and annulus 31 (the second
electrode) in order to attract the flame toward the center of the annulus and
in spreading condition to the work. Kaehni 7:67-8:4; Fig. 11. This teaching
is different from Kaehni’s subsequent teaching of an alternative scenario, in
which different positive potentials (lOkV and 5kV) are applied to the flame
and to the annulus, respectively, which yields “[a] somewhat different
effect”—namely, the flame being propelled toward the work-piece by a 5kV
potential. See Kaehni 8:4-11. The description of these two different
scenarios suggests that, in the first scenario, the flame and the annulus are
charged to the same potential. However, even if one were not to draw such
an inference from this description, there are only two possibilities as to the
relative voltage potentials of the flame (i.e., torch nozzle 29) and annulus 31
in the first scenario in which they are both charged to unspecified positive
potentials; either they are at the same potential or they are at different
potentials.
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Moreover, Kaehni
teaches that “[b]y selecting desired voltages and polarities, the flame can be
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spread, contracted, or elongated, selectively.” Kaehni 8:11-13. Thus, the
selection of the relative voltage potentials of nozzle 29 and annulus 31,
whether the same or different from one another, would have been an obvious
matter of routine optimization to achieve the desired shape of the flame.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s determination that the subject matter of claim 81 would have
been obvious. Accordingly, we sustain the rejection of claim 81, as well as
claim 89, for which Appellant relies solely on the arguments presented for
claim 81, under 35 U.S.C. § 103(a) as unpatentable over Kaehni. See
Appeal Br. 49-50.
Obviousness—Rejection III
Independent claims 1 and 43 require that substantially in-phase
time-varying electrical potentials be applied to the charge and shape
electrodes. Appeal Br. 96, 101 (Claims App.). Claim 79, which depends
from independent claim 78, and claim 87, which depends indirectly from
independent claim 84, require in-phase time-varying voltage potentials. Id.
at 107, 108. The Examiner finds that Kaehni discloses an apparatus
substantially as recited in claim 1, including “use of a time varying
potential,” but that “Kaehni is silent to the phase relationship between the
time-varying potentials” applied to the charge electrode and to the shape
electrode. Final Act. 8. The Examiner finds that Wright teaches
“application of electrostatic fields to a flame wherein two electrodes are
provided with respective time varying electrical potentials which are in
phase.” Id. at 9 (citing Wright 3:8-14). The Examiner determines it would
have been obvious “to apply substantially in-phase time varying electrical
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potentials [to Kaehni’s charge electrode and shape electrode] in order to
appropriately vary the shape, intensity, or efficiency of the flame for a
desired purpose or application.” Id. The Examiner makes similar findings,
and articulates substantially the same reasoning, in rejecting claims 43, 79,
and 87. Id. at 15-16, 23, 24.
Appellant argues that Wright discloses “only electrodes that produce
an electric field passing through the flame” and “does not disclose any
charge electrode.” Appeal Br. 55. Thus, Appellant submits that Wright’s
teachings with respect to any relative phase of the electrical potentials
suppled to Wright’s electrodes “cannot suggest any relationship between”
the phase of the electrical potential of the charge electrode (i.e., nozzle 29)
and the electrical potential of the shape electrode (annulus 31) of Kaehni.
Id.
Appellant’s argument has merit. The electrical potential of Kaehni’s
nozzle 29 is imparted to the flame so that the flame is used as one of the
electrodes, along with a second electrode (annulus 31) to create an
electrostatic field for controlling the shape and direction of the flame. See
Kaehni 1:43^18; 7:73-8:2. Wright’s electrodes A and A', on the other hand,
apply independent electrostatic fields to the flame, without any current
flowing (and, thus, without any charge being imparted) to the flame from
either electrode A or A'. Wright 2:43 46; 3:5-7. In other words, Wright
provides no teachings with respect to the electrical potential of the flame
relative to the electrical potential of an electrode, such as annulus 31 of
Kaehni, applying an electrostatic field to the flame. As such, it is not
apparent, and the Examiner does not cogently explain, why Wright’s
teachings of supplying in-phase electrical potentials to electrodes A and A' is
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instructive as to the relative phase of the potentials of Kaehni’s nozzle 29
and annulus 31. The Examiner’s explanation that “Wright teaches that in
[Ajppellanf s field of endeavor of improving the properties of a flame
through the application of electric fields, varying the frequencies of two
potentials applied to two respective electrodes such that they overlap is
known” (Ans. 38) is not illuminating in this regard. Consequently, the
Examiner’s stated reason for “applying substantially in-phase time varying
electrical potentials” to Kaehni’s charge electrode and shape electrode—“in
order to appropriately vary the shape, intensity, or efficiency of the flame for
a desired purpose or application” (Final Act. 15-16, 23, 24)—lacks rational
underpinnings.
For the above reasons, we do not sustain the rejection of claims 1, 43,
79, and 87, or claims 5, 10-15, 17, 21, 24-28, 31, 32, 35-37, 44^16, 51-56,
61, 66-68, 71-73, and 75-77, which depend, directly or indirectly, from
claim 1 or claim 43, as unpatentable over Kaehni and Wright.
Obviousness—Rejections IV VIII
These rejections are deficient for the same reason as the rejection of
claims 1 and 43, discussed above. The Examiner’s application of the
additional teachings of Branston, Heiligers, Pavlik, Hammer, and O’Connor
in rejecting claims 6-9, 16, 18, 19, 22, 23, 33, 38^12, 47- 50, 57-59, 62-65,
and 74, which depend directly or indirectly from independent claim 1 or
independent claim 43, does not make up for the aforementioned
shortcomings of the rejection of claims 1 and 43. Final Act. 24-36.
Accordingly, for the same reasons, we do not sustain the rejections of claims
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6-9, 16, 18, 19, 22, 23, 33, 38^12, 47-50, 57-59, 62-65, and 74 under
35 U.S.C. § 103(a).
Obviousness-Type Double Patenting Rejections
Each of the four applications forming the basis of the obviousness-
type double patenting rejections matured into a patent subsequent to the
Final Action. Further, claims 1-16, 18, 21, and 27-36 of Application
12/753,047, which were relied on in the rejection based on that application
(Non-Final Act. 28), were canceled in an Amendment filed May 15, 2014,
prior to its issuance as U.S. Patent 8,851,882. Similarly, claims 1-13 of
Application 13/006,344, which were relied on in the rejection based on that
application (Non-Final Act. 28), were canceled in an Amendment filed June
12, 2015, prior to its issuance as U.S. Patent 9,151,549 and subsequent to the
Final Action in the present application. Fikewise, claims 29^16 of
Application 13/370,183, which were relied on in the rejection based on that
application (Non-Final Act. 29), were amended in an Amendment filed July
21, 2014, prior to its issuance as U.S. Patent 8,881,535 and prior to the Final
Action in the present application, but subsequent to the Non-Final Action, in
which the obviousness-type double patenting rejections were first set forth.
Additionally, claims 1-17 and 29-39 of Application 13/370,280, which were
relied on in the rejection based on that application (Non-Final Act. 30), were
amended in an Amendment filed September 4, 2015, prior to its issuance as
U.S. Patent 9,243,800 and subsequent to the Final Action in the present
application.
Due to the aforementioned changes in circumstances since the
provisional rejections were made, we decline to reach a determination as to
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the propriety of any of the provisional obviousness-type double patenting
rejections and leave it to the Examiner to evaluate, after jurisdiction of the
present application is returned to the Examiner, whether any obviousness-
type double patenting rejections based on any of the issued patents should be
made.
DECISION
The Examiner’s decision rejecting claims 78, 80-86, and 88-91 under
35 U.S.C. §§ 102(b) and 103(a) is AFFIRMED.
The Examiner’s decision rejecting claims 1, 5-19, 21-28, 31-33, 35-
59, 61-68, 71-77, 79, and 87 under 35 U.S.C. § 103(a) is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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