Ex Parte Dinu

Patent Trial and Appeal Board

Sep 16, 2016

12957232 (P.T.A.B. Sep. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/957,232
82438 7590
GE Power & Water
Fletcher Yoder PC
FILING DATE
11/30/2010
09/16/2016
P.O. Box 692289
Houston, TX 77269-2289
FIRST NAMED INVENTOR
Constantin Dinu
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
ATTORNEY DOCKET NO.
245799-1
(GETH0336)SW A
CONFIRMATION NO.
1779
EXAMINER
KIM, CHRISTOPHER S
ART UNIT PAPER NUMBER
3752
MAIL DATE DELIVERY MODE
09/16/2016 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
Exparte CONSTANTIN DINU
Appeal2014-008881
Application 12/957,232
Technology Center 3700
Before LYNNE H. BROWNE, MARK A. GEIER, and
JASON W. MELVIN, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Constantin Dinu (Appellant) appeals under 35 U.S.C. § 134 from the
rejection of claims 12-14, 16, 17, 21, and 22. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm and designate our affirmance of claim 22 a NEW
GROUND OF REJECTION. We further enter a NEW GROUND OF
REJECTION for claim 16.
Appeal2014-008881
Application 12/957,232
CLAIMED SUBJECT MATTER
Claim 12, reproduced below, is illustrative of the claimed subject
matter:
12. A system, comprising:
a gasification fuel injector, comprising:
a fuel passage configured to inject a fuel;
a first oxygen passage configured to inject oxygen;
a tip portion disposed about the fuel passage and the first
oxygen passage;
a coolant chamber disposed in the tip portion; and
a curved recess disposed downstream of the coolant
chamber along an exterior surface of the tip portion adjacent an
outlet of the fuel passage, wherein the curved recess is disposed
circumferentially around the exterior surface of the tip portion.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Helton
Mishra
us 6,010,330
US 8,360,342 B2
REJECTIONS
Jan. 4, 2000
Jan.29,2013
I. Claims 12-14, 16, 17, 21, and 22 stand rejected under 35
U.S.C. § 102(b) as anticipated by Helton.
II. Claims 12-14, 16, 17, 21, and 22 stand rejected on the ground
of nonstatutory double patenting as unpatentable over claims 1-
7 of Mishra in view of Helton.
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Application 12/957,232
DISCUSSION
New Ground of Rejection
35 U.S.C. § 112, second paragraph, states, "[t]he specification shall
conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention."
We reject claim 16 under 35 U.S.C. § 112, second paragraph, as being
indefinite.
Claim 16 requires a "curved recess [that] is configured to increase
heat transfer and reduce thermal stress in the tip portion." Appeal Br. 9.
This limitation fails to particularly point out and distinctly claim the subject
matter Appellant regards as his invention because it does not set forth a
framework for comparison. In other words, the claim does not specify with
respect to what element the heat-transfer rate of the curved recess is
increased or with respect to what element the thermal stress in the tip potion
is reduced. It is possible that the heat transfer is increased relative to the
coolant chamber, a tip portion that does not include a recess, or some other
claimed or unclaimed structure. Similarly, it is possible that the thermal
stress in the tip portion is reduced as compared to the coolant chamber, a tip
portion that does not include a recess, or some other claimed or unclaimed
structure. Accordingly, the meaning of this limitation is unclear and subject
to multiple interpretations.
"[I]f a claim is amenable to two or more plausible claim constructions,
the USPTO is justified in requiring an applicant to more precisely define the
metes and bounds of the invention by holding the claim unpatentable under
35 U.S.C. § 112, second paragraph, as indefinite." Ex parte Miyazaki, 89
USPQ2d 1207, 1211(BPAI2008) (precedential). Thus, claim 16 is
indefinite.
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Appeal2014-008881
Application 12/957,232
Claims 12-14 and 21
Rejection I
Appellant does not provide separate arguments for the patentability of
claims 13, 14, and 21, which depend from independent claim 12. See
Appeal Br. 3-7. Accordingly, claims 13, 14, and 21 stand or fall with claim
12.
The Examiner finds that Helton discloses each and every limitation of
independent claim 12. In particular, the Examiner finds that Helton
discloses "a curved recess 74 (where surface 7[0] meets surface 62)." Final
Act. 3.
Appellant contends that "Helton does not teach or suggest, 'a curved
recess disposed downstream of the coolant chamber along an exterior
surface of the tip portion adjacent an outlet of the fuel passage, wherein the
curved recess is disposed circumferentially around the exterior surface of the
tip portion."' Appeal Br. 4 (emphasis omitted). In support of this
contention, Appellant argues that "[i]nstead of a curved recess in the planar
end-face closure 62, Helton discloses a curved fillet 7 4 between the planar
end-face enclosure 62 and the nozzle lip 70." Id.
Responding to this argument, the Examiner finds that:
Helton discloses a curved recess 74 (see below) disposed
downstream of the coolant chamber (chamber having baffles 66)
along an exterior surface (surface of 62 and 72) of the tip portion
46, 60 adjacent an outlet C of the fuel passage 48, wherein the
curved surface recess 7 4 is disposed circumferentially around the
exterior surface of the tip portion 46, 60.
Ans. 3. In support of this finding the Examiner reproduces Helton's Figure
4 as follows:
4
Appeal2014-008881
Application 12/957,232
This figure is a marked-up copy of Helton's Figure 4, which is an
elevational view of an alternative embodiment of the invention, and a partial
enlargement of Figure 4.
The Examiner explains that "[c]oved surface 74 is recess[ed] as
compared to cone surface 72." Ans. 4. The Examiner further relies on
Helton's description of the fillet as "coved" and notes that "[t]he term 'cove'
is defined as: a recess or a concave surface" and explains that "[ c ]oved
surface 7 4 is on the exterior surface of the tip portion (see figure 4) and is
circumferentially around the exterior surface because it surrounds outlet C."
Id. (citation omitted). Appellant does not contest this definition or proffer a
different definition of "cove." See generally, Reply Br. Thus, Appellant
does not apprise us of error.
We sustain the Examiner's decision rejecting claim 12 and claims 13,
14, and 21, which fall therewith, as anticipated by Helton.
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Appeal2014-008881
Application 12/957,232
Claim 16
Having determined that claim 16 is indefinite, we cannot sustain the
rejection of this claim under 35 U.S.C. § 102(b) because to do so would
require speculation as to the scope of the claims. See In re Aoyama, 656
F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming
an anticipation rejection of indefinite claims).
For this reason, we do not sustain the Examiner's decision rejecting
claim 16.
Claim 17
Appellant contends that "Helton does not teach or suggest 'a wall
between the curved recess and the coolant chamber, and wherein the wall
decreases in thickness from a maximum thermal stress point to a maximum
mechanical stress point."' Appeal Br. 5 (emphasis omitted). In support of
this contention, Appellant argues that "Helton discloses that the planar end-
face enclosure 62 has a constant thickness." Id. at 6.
In response to this argument, the Examiner reiterates the finding that
"Helton discloses the tip portion comprising a wall 62 between the curved
recess 7 4 and the coolant chamber (chamber having baffles 66)" and reasons
that "[t]he maximum thermal stress point is at the greatest thickness of wall
62 (including the thickness of coved fillet 74) along axis 38." Ans. 6
(emphasis added). The Examiner explains that "[t]he point of greatest wall
thickness retains more heat than a thinner point. The maximum stress point
is where wall thickness is the thinnest because a thinner wall is weaker than
a thicker wall" and that "[w]all 62 (including the thickness of caved fillet 74)
decreases in thickness from the maximum thermal stress point to the
maximum mechanical stress point." Id.
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Appeal2014-008881
Application 12/957,232
Responding to this argument, Appellant reiterates the argument that
Helton fails to disclose a wall that decreases in thickness from a maximum
thermal stress point to a maximum mechanical stress point because "Helton
appears to disclose that the planar end-face closure 62 maintains a constant
thickness, and that it is the fillet 7 4 that changes in thickness." Reply Br. 3.
(emphasis omitted).
Appellant's argument is not responsive to the rejection as articulated
by the Examiner as discussed supra. Appellant does not explain why
Helton's wall including cove fillet 74 does not change in thickness.
Accordingly, Appellant does not apprise us of error.
We sustain the Examiner's decision rejecting claim 17 as anticipated
by Helton.
Claim 22
Appellant contends that "Helton does not teach or suggest, 'the curved
recess comprises two opposing side walls that extend in an upstream
direction, and the two opposing side walls extend circumferentially around
the exterior surface of the tip portion." Appeal Br. 6 (emphasis omitted). In
support of this contention, Appellant argues that "Helton discloses an
injector nozzle assembly 30 with a planar end-face enclosure 62." Id.
(emphasis omitted).
Appellant's argument is not responsive to the rejection as articulated
by the Examiner, which identifies fillet 7 4 as corresponding to the claimed
recess. Accordingly, Appellant's argument is unconvincing.
Appellant further argues that "Helton teaches away from a curved
recess comprising two opposing side walls that extend in an upstream
direction, because they would interfere with a smooth transition of
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Appeal2014-008881
Application 12/957,232
recirculated gas flow across the planar end-face enclosure 62 of the nozzle
face." Id. at 6-7 (emphasis omitted).
Appellant's argument is unconvincing because "teaching away"
requires that the reference "criticize, discredit, or otherwise discourage" the
use of other alternatives. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004). Appellant does not identify any portion of Helton that criticizes,
discredits, or otherwise discourages the use of a curved recess as claimed.
We will not read into a reference a teaching away from a proposed
combination when no such language exists. See Dystar Textilfarben GmbH
& Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir.
2006).
In addition, Appellant contends that "the fillet 7 4 does not have two
opposing side walls that extend in an upstream direction." Appeal Br. 7. In
support of this contention, Appellant argues that "the fillet 7 4 could at most
be considered to have one wall as the fillet 7 4 extends between the nozzle lip
70 and the planar end-face enclosure 62." Id.
As shown in the figure on page 4 of the Reply Brief, Appellant
construes the limitation at issue to require two undefined "side walls" on the
same side that together form the recess. See Reply Brief 4. However, claim
22 is not so limited and Appellant's claim construction is not supported by
the Specification, which describes an exterior surface that defines annular
recess 234. Spec. i-f 44. Thus, to the extent the Appellant's recess has two
opposing side walls, so does Helton's recess. Additionally, claim 22 does
not define or otherwise limit the "upstream" direction. Thus, Appellant's
argument regarding the Examiner's "plane of opposition" defining two
opposing sidewalls (Reply Br. 5-6) similarly does not apprise us of error.
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Application 12/957,232
For these reasons, we sustain the Examiner's decision rejecting claim
22 as anticipated by Helton. As our reasoning differs the Examiner, we
designate our affirmance of claim 22 a new ground of rejection pursuant to
our authority under 37 C.F.R § 41.50(b).
Rejection II
The Examiner finds that "[c]laims 1-7 of [Mishra] disclose the
limitations of the currently claimed invention [i.e. claims 12-14, 16, 17, 21,
and 22] with the exception of the curved recess." Final Act. 4. The
Examiner further finds that "Helton discloses a curved recess 7 4 (where
surface 72 meets surface 62)." Id. Based on these findings, the Examiner
determines that it would have been obvious "to have applied [the] tip portion
72 construction of Helton, resulting in the curved recess, to the device of
[Mishra] to provide a heat sink (Helton, cl 4)." Id. at 5.
Appellant argues that "Helton fails to disclose 'a curved recess
disposed downstream of the coolant chamber along an exterior surface of the
tip portion adjacent an outlet of the fuel passage, wherein the curved recess
is disposed circumferentially around the exterior surface of the tip portion,"'
thus, "Helton is unable to cure the deficiencies of [Mishra]." Appeal Br. 7.
As discussed supra, the Examiner correctly finds that Helton discloses
a curved recess as recited in claim 12. Accordingly, Appellant's argument is
unconvmcmg.
We sustain the Examiner's decision rejecting claims 12-14, 16, 17,
21, and 22 as unpatentable over claims 1-7 of Mishra.
DECISION
We enter a NEW GROUND OF REJECTION for claim 16 under 35
U.S.C. § 112, second paragraph.
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Appeal2014-008881
Application 12/957,232
The Examiner's rejection of claims 12-14, 17, 21, and 22 as
anticipated by Helton is AFFIRMED, and the rejection of claim 22 is
designated a NEW GROUND OF REJECTION.
The Examiner's rejection of claim 16 as anticipated by Helton is
reversed.
The Examiner's rejection of claims 12-14, 16, 17, 21, and 22 as
unpatentable over claims 1-7 of Mishra in view of Helton is affirmed.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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Appeal2014-008881
Application 12/957,232
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
AFFIRMED; 37 C.F.R. § 41.50(b)
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