Ex Parte Denis

Board of Patent Appeals and Interferences

Aug 27, 2009

10795372 (B.P.A.I. Aug. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PERRY LUCIEN ST. DENIS
____________

Appeal 2008-003689
Application 10/795,372
Technology Center 3700
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Decided: August 27, 2009
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Before JENNIFER D. BAHR, JOHN C. KERINS, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Perry Lucien St. Denis (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-5, 9, and 22.1 We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
Appellant’s invention is drawn toward an apparatus for heating a
liquid storage tank. Spec. 1, ll. 21-22 and fig. 3.
Claim 22 is representative of the claimed invention and reads as
follows:
22. An apparatus for heating an oil well production storage tank,
comprising:
a liquid storage tank having an interior, a peripheral sidewall,
and an engine compartment housing an engine that effectively
shares a portion of the peripheral sidewall with the tank,
wherein at least a portion of the engine compartment is inset
within a periphery of the liquid storage tank; and
an engine disposed in the engine compartment, such that heat
given off from the engine during operation heats the engine
compartment and such heat is transferred by radiation from the
engine compartment to the interior of the liquid storage tank
through the portion of the peripheral sidewall that is shared by
the engine compartment.
THE REJECTIONS

1 Claims 10-16 and 18-21 are indicated allowable by the Examiner.
Claims 6-8 are objected to by the Examiner as being dependent upon a
rejected base claim and otherwise indicated as being allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claim. Advisory Action 5, mailed July 19, 2007. Claims 6-8,
10-16, and 18-21 are not part of the instant appeal.
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The Examiner relies upon the following as evidence of
unpatentability:
Miller US 3,757,745 Sep. 11, 1973
Van Winkle US 4,003,139 Jan. 18, 1977

Appellant seeks review of the Examiner’s rejections of claims 1-5, 9,
and 22 under 35 U.S.C. § 103(a) as obvious over Miller and Van Winkle.

THE ISSUES
In rejecting claims 1 and 22 as being unpatentable over Miller and
Van Winkle the Examiner found that Miller discloses all features of claims 1
and 22 with the exception of an engine and engine compartment. Ans. 3, 4.
The Examiner found that Van Winkle discloses an engine 30, for heating a
tank 14, housed within an engine compartment 20 that is appended to the
side of a tank 14. Ans. 4. Thus, the Examiner concluded that it would have
been obvious to a person of ordinary skill in the art at the time of the
invention
to modify the burner which functions as the
heating device of Miller to substitute an engine as
taught in Van Winkle as such an engine desirable
provides heating in an manner that is economical
and requires little fuel to operate.
Id.
Appellant argues that the Examiner erred in concluding that the
subject matter of independent claims 1 and 22 is obvious because (a) the fire
tube 13 (heat exchanger) of Miller as modified by Van Winkle does not
constitute an “engine compartment;” and (b) Van Winkle discloses
positioning the engine away from the tank and uses fans to circulate the air
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over the engine, hence teaches away from positioning the engine of Miller
and Van Winkle in an “engine compartment” such that heat transfer occurs
from the engine compartment to the interior of the tank. App. Br. 10-11.
See also Reply Br. 4-5.
In light of the above, the issues involved in this appeal are as follows:
(1) Has the Examiner made a proper finding as to whether a portion
of the heat exchanger tube 13 of Miller when modified by Van Winkle
constitutes a portion of an “engine compartment”?
(2) Has Appellant shown that Van Winkle teaches away from the
proposed modification of replacing the oil burner of Miller with the engine
of Van Winkle?

SUMMARY OF DECISION
We AFFIRM.

FINDINGS OF FACT

The following enumerated findings of facts (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Miller discloses a direct fired heating device for heating
material inside a tank 10 including, ends 11, 12 (a peripheral
sidewall), heat exchangers 13, 14 (exhaust conduit), an oil
burner 17, a directional nozzle 18, and a baffle 19. Miller, col.
1, ll. 40-56 and col. 2, ll. 16-18 and fig. 1.
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2. The end 12 of the tank 10 of Miller includes apertured end 16
that connects oil burner 17 to the directional nozzle 18 and the
baffle 19 that occupies the interior of heat exchanger 13.
Miller, col. 1, ll. 49-56 and fig. 1.
3. In use, the products of combustion (exhaust gas) generated by
the oil burner 17 of Miller are directed by nozzle 18 through the
baffle 19 of the heat exchanger 13 and transfer heat to the
interior of the tank. Miller, col. 2, ll. 16-28 and fig. 1.
4. A person of ordinary skill in the art would have readily
recognized that the oil burner 17 of Miller requires the nozzle
18 in order to direct the combustion (exhaust) gasses from the
oil burner 17 into the baffle 19.
5. A person of ordinary skill in the art would have readily
recognized that an engine requires a nozzle to direct the flow of
exhaust gasses away from the combustion area.
6. Van Winkle discloses an assembly for heating the contents of a
grain tank 14 including an engine 30 that is located within a
housing 20 at a distant location from the side of the tank 14.
Van Winkle, col. 2, ll. 7-9 and fig. 5.
7. In use, airflow generated by fans 36, 46, and 48 heats air as it
passes over engine 30 and exhaust pipes 38, 52. Specifically,
the air within housing 20 is forced over engine 30 and pipes 38,
52 containing hot exhaust gasses from the engine. Van Winkle,
col. 2, ll. 42-56 and fig. 5.
8. As depicted in Figure 1 of the present application, Appellant’s
engine compartment includes a manifold and directional
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nozzles for directing exhaust gasses from the engine 24 to
exhaust conduit 36.

PRINCIPLES OF LAW
Obviousness
It is elementary that to support an obviousness rejection all words in a
claim must be considered in judging the patentability of that claim against
the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 ("While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.")

OPINION
Issue (1)
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According to Appellant, Miller does not disclose an engine and engine
compartment. App. Br. 10. Appellant argues that the fire tube 13 (heat
exchanger) of Miller does not constitute an engine compartment because the
burner 17 of Miller is not confined to a compartment, but rather is exposed
to the atmosphere. Id. Although we agree with Appellant that the burner 17
of Miller is exposed to the atmosphere, we note that the nozzle 18 is
contained within the heat exchanger 13. FF1. We further find that the end
12 of the tank 10 of Miller includes apertured end 16 that connects oil burner
17 to the directional nozzle 18 and the baffle 19 that occupies the interior of
heat exchanger 13. FF 2. Hence, we agree with the Examiner that the
interior of heat exchanger 13 where the nozzle 18 is located constitutes a
portion of a “burner compartment” inset within a periphery of the tank. Ans.
6. A person of ordinary skill in the art would have readily recognized that
oil burner 17 of Miller requires the nozzle 18 in order to direct the
combustion (exhaust) gasses from oil burner 17 into baffle 19 and then
through heat exchanger 13 (exhaust conduit) to provide heat to the oil inside
tank 10. FF 3, 4. The same person of ordinary skill in the art would have
similarly recognized that an engine also requires a nozzle to direct the flow
of exhaust gasses away from the combustion area. FF 5. For example, the
tailpipe of a car is used to direct the exhaust gasses away from the engine to
the atmosphere. As such, when replacing the burner assembly 17, 18 of
Miller with the engine of Van Winkle, as the Examiner suggests, we find
that a portion of the interior of the heat exchanger 13, i.e., the “burner
compartment,” will include a portion of the engine of Van Winkle, hence
constituting a portion of an “engine compartment,” as required by claims 1
and 22. This construction of “engine compartment” is consistent with
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Appellant’s use of this terminology (FF8). In other words, we find that,
similar to the oil burner assembly 17, 18 of Miller, the engine assembly of
Miller and Van Winkle would include a nozzle within the “engine
compartment” for directing the combustion (exhaust) gasses from the engine
into the baffle 19 and the heat exchanger 13 of Miller and Van Winkle.
Hence, we find that at least a portion of heat exchanger tube 13 of Miller
when modified by Van Winkle constitutes a portion of an “engine
compartment,” such that at least a portion of the engine compartment is inset
within a periphery of the tank, as called for in claims 1 and 22.

Issue (2)
We are not persuaded that Van Winkle’s teaching of an engine located
away from the tank that uses fans to circulate heated air (FF 6, 7) teaches
away from the modification proposed by the Examiner. Obviousness does
not require that all of the features of the secondary reference be bodily
incorporated into the primary reference In re Keller, 642 F.2d 413, 425
(CCPA 1981). Moreover, the artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of
independent judgment. Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881,
889 (Fed. Cir. 1984). In this case, the oil burner 17 of Miller provides
combustion (exhaust) gasses from the oil burner 17 through heat exchanger
13 that heats the interior of the tank. FF 3. Similarly, the engine 30 of Van
Winkle provides exhaust gasses to heat the air within housing 20 as the air
flows over pipes 38, 52. FF 7. Therefore, we find that it would have been
well within the level of ordinary skill in the art to replace the oil burner
assembly of Miller with the engine of Van Winkle, in the manner suggested
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by the Examiner, because it is no more than “the simple substitution of one
known element for another.” KSR. at 417. After all, "[a] person of ordinary
skill is also a person of ordinary creativity, not an automaton." Id. at 421.
Moreover, we agree with the Examiner that the heated exhaust flow of
Miller and Van Winkle transfers its heat to the oil inside tank 10 through the
walls of heat exchanger 13 (where the nozzle 18 is located), namely, the
engine compartment. Ans. 8.
For the foregoing reasons, Appellant’s arguments do not persuade us
that the Examiner erred in rejecting claims 1-5, 9 and 22 under 35 U.S.C.
§ 103(a) as obvious over Miller and Van Winkle. Accordingly, the rejection
of claims 1-5, 9 and 22 is sustained.
CONCLUSIONS
(1) The Examiner has made a proper finding that a portion of the
heat exchanger tube 13 of Miller when modified by Van Winkle constitutes
a portion of an “engine compartment.”
(2) The Appellant has failed to show that Van Winkle teaches away
from the proposed modification of replacing the oil burner of Miller with the
engine of Van Winkle.

DECISION
The Examiner’s decision to reject claims 1-5, 9, and 22 is 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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LV

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