Ex Parte Epstein et al

Patent Trial and Appeal Board

Apr 13, 2016

12614640 (P.T.A.B. Apr. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/614,640 11109/2009 Alan Epstein
54549 7590 04/15/2016
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
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. CONFIRMATION NO.
PA0009447AA;67097-1128PUS 8979
EXAMINER
NGUYEN, ANDREW H
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
04/15/2016 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):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN EPSTEIN and RICHARD C. MIAKE-L YE
Appeal2014-000601
Application 12/614,640
Technology Center 3700
Before CHARLES N. GREENHUT, LISAM. GUIJT, and
JASON W. MELVIN, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
2, 4, 5, and 7-11. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to an ultra-low sulfur fuel and method for
reduced contrail formation. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
Appeal2014-000601
Application 12/614,640
1. A method of managing contrail formation of a gas
turbine engine, comprising:
delivering an ultra-low sulfur fuel to a combustor of a gas
turbine engine to limit an amount of sulfur byproduct produced
in an exhaust of the gas turbine engine, wherein a concentration
of sulfur in the ultra-low sulfur fuel is less than one part per
million.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
O'Rear US 6,933,323 B2 Aug. 23, 2005
U. Schumman et al., In situ observations of particles in jet aircraft
exhausts and contrails for different sulfur-containing fuels, 101 J. of
Geophysical Res. 6853 (1996) (hereinafter "Schumann").
George W. Mushrush et al., Stability Studies of a Jet Fuel Containing
No Organo-Sulfur Compounds, 20 Petroleum Science and Technology 561
(2002) (hereinafter "l\1ushrush").
Greg Hemighaus et al., Alternative Jet Fuels, Aviation Fuels
Technical Review (2006) (hereinafter "Hemighaus").
REJECTIONS
Claims 10 and 11 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement. Final Act. 2.
Claims 10 and 11 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 3.
Claims 5 and 7 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Mushrush. Final Act. 4.
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Claims 1, 2, and 4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schumann, Hemighaus, and Mushrush. Final Act. 4.
Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mushrush and O'Rear. Final Act. 6.
Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hemighaus and Mushrush. Final Act. 6.
OPINION
Claims 10 and 11 - 35 U.S. C. § 112, first paragraph
The Examiner rejected claim 10 for failing to comply with the written
description requirement. Final Act. 2. The Examiner found the original
disclosure failed to teach "controlling a concentration of sulfur in an aviation
fuel ... in response to the critical threshold." Final Act. 2. The Examiner
reasoned the claim had two reasonable interpretations, controlling sulfur
concentration in the preparation phase of the fuel and controlling sulfur in
flight as an active control. Ans. 4. The Examiner found control of sulfur
concentration in the preparation phase of the fuel was taught in the original
disclosure but that control of sulfur in flight is not described in the original
disclosure. Ans. 4. Appellants do not contest the reasonableness of the
Examiner's claim construction. Rather, Appellants argue the second,
hypothetical example is irrelevant to the written description inquiry. Reply
Br. 2.
To satisfy the written description requirement, the specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562---63 (Fed. Cir.
1991 ). Specifically, the specification must describe the claimed invention in
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a manner understandable to a person of ordinary skill in the art and show
that the inventor actually invented the claimed invention. Id. at 1562---63;
Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
Claim 10 does not limit the controlling of the sulfur concentration to
any particular location or moment in the process. In the absence of claim
language to the contrary, a person of ordinary skill in the art may reasonably
interpret the claim to cover both situations described by the Examiner,
control during the preparation phase and control during flight. Appellants'
limited disclosure provides no discussion of how or in what manner one
would control sulfur concentration during flight. A person of ordinary skill
in the art would not reasonably conclude that Appellants were in possession
of an invention commensurate in scope with that claimed. "[T]he purpose of
the written description requirement is to ensure that the scope of the right to
exclude, as set forth in the claims, does not overreach the scope of the
inventor's contribution to the field of art as described in the patent
specification." Ariad, 598 F.3d at 1353-1354 (internal quotations and
citation omitted). We, therefore, must agree with the Examiner that due to
the absence of a supporting disclosure that fully satisfies the written
description requirement of 35 U.S.C. § 112, first paragraph, claim 10
constitutes an improper attempt to "preempt the future before it has arrived."
Ariad, 598 F.3d at 1358 (internal quotations and citation omitted). The
rejection of claims 10 and 11 under 35 U.S.C. § 112, first paragraph, is
affirmed.
Claims 10 and 11 - 35 U.S. C. § 112, second paragraph
The Examiner found claim 10 to be indefinite because the "critical
threshold" is "established" at a vague point - when the exhaust
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"substantially reduces contrail formation." Final Act. 3. Additionally, the
Examiner found it was unclear from what the contrail formation is reduced
and how much the contrail would need to be reduced to establish the critical
threshold. Final Act. 3.
The use of relative terminology in claim language, including terms of
degree, does not automatically render the claim indefinite under 35 U.S.C.
§ 112, second paragraph. Seattle Box Co., Inc. v. Industrial Crating &
Packing, Inc., 731F.2d818 (Fed. Cir. 1984). When a term of degree is
used, the specification must provide some standard for measuring that
degree. Id. at 826.
We are unable to find any language in the claim, or instruction in the
Specification, so as to reasonably apprise one skilled in the art as to when
the sulfur byproducts in the exhaust are at a "critical threshold" such that
contrail formation is "substantially reduced." Appellants direct our attention
to the Specification which provides an open ended list including, inter alia,
"other parameter[s] for judging contrail formation." App. Br. 3, citing
Spec., para. 14. Such an open ended list does not reasonably apprise one of
ordinary skill in the art of how to measure the reduction in contrail
formation. There are numerous parameters that may be used to determine
contrail formation, and Appellants' Specification has not provided guidance
to a person of skill in the art as to what these other parameters may be.
Appellants additionally refer to Schumann for supplying the necessary tools
of analysis to determine whether there is a substantial reduction in contrail
formation. App. Br. 3, citing Schumann, p. 6866. However, this reliance on
Schumann does nothing more than further indicate that there are numerous
parameters which are involved in determining contrail formation, and a
person of skill in the art reading the present Specification would not be
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Application 12/614,640
reasonably apprised as to which parameters need to be measured or what
change in the measured parameters would render the contrail formation
"substantially reduced." The Examiner correctly concluded that this
uncertainty as to when a "critical threshold" is established and when contrail
formation is "substantially reduced" renders the metes and bounds of claim
10 unclear. The rejection of claims 10 and 11 for being indefinite is
affirmed.
Claims 5 and 7-9
Regarding claims 5 and 7, the Examiner found Mushrush disclosed a
fuel having a sulfur content less than 300 parts per billion and nominally
zero. Final Act. 4. The Examiner relied upon a disclosure in Mushrush of
the fuel having "0.0 ppm of sulfur." Final Act. 4, citing Mushrush, p. 563.
Appellants argue the disclosure of "0.0 ppm of sulfur" is a mistake and was
intended to read "0.0 %"given that the units of ppm are inconsistent with
the units used in the remammg disclosure of iviushrush. App. Br. 4.
Appellants have not provided sufficient evidence to support a finding
that Mushrush did not intend to disclose a fuel having "0.0 ppm of sulfur."
Appellants rely on recitations of percentages in Mushrush to support the
argument. App. Br. 4, citing Mushrush pp. 564, 568. However, a switch
between different units of measure is not, in itself, enough to show that there
was a mistaken disclosure. Mushrush relies on both percentages and parts
per million in other instances of the disclosure. Mushrush pp. 563, 568.
Absent sufficient evidence that a person of ordinary skill in the art at the
time of the invention would know the use of parts per million to be a
mistake, we are not persuaded that Mushrush cannot be relied upon to teach
what is disclosed on the face of the reference. The rejection of independent
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claim 5 and dependent claim 7 is affirmed. Appellants argue claims 8 and 9
with respect to their dependence on claim 5 (App. Br. 6), and therefore the
rejection of these claims is also affirmed.
Claims 1, 2, and 4
Regarding claims 1 and 4, the Examiner found Schumann taught the
method except for an ultra-low sulfur fuel with a concentration of less than
one part per million or less than 300 parts per billion. Final Act. 5. The
Examiner relied upon Mushrush to teach a sulfur fuel having a content of 0.0
ppm. Final Act 5. The Examiner additionally relied upon Schumann and
Hemighaus to teach reduced sulfur fuels reduce contrail formation. Final
Act. 5.
Appellants argue the units of Mushrush are erroneous and ambiguous
with regard to sulfur concentration. App. Br. 4. As previously discussed,
these arguments are not persuasive. Appellants additionally argue
Hemighaus does not define what is meant by "sulfur-free" and cannot be
relied upon to teach a fuel of the claimed concentration. App. Br. 4. The
Examiner appears to be relying on Hemighaus for the proposition that low
sulfur or sulfur-free fuels would reduce contrail formation. Final Act. 5, 9,
citing Hemighaus p. 11. Regardless of whether Hemighaus discloses a
completely sulfur-free fuel or sulfur down to some "parts per" level, the
reference indicates that there is a link between sulfur concentration and
contrail formation and, at the time of the invention, a person of ordinary skill
in the art would reasonably consider this teaching to suggest a modification
of the sulfur content in the fuel.
Appellants argue Schumann teaches a reduction in sulfur
concentration to the claimed level would have no effect on contrail
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formation and further that Schumann downplays the role of sulfur in contrail
formation. App. Br. 5---6. Schumann identifies a link between sulfur content
and contrail formation, citing several factors affected by increased sulfur
emissions. Ans. 8, citing Schumann, p. 6865, col. 2, para. 3. The fact that
Schumann may recognize additional variables have an impact on contrail
formation does not negate the explicit teachings of the reference.
Additionally, as noted by the Examiner, Schumann suggests that
experiments should be performed with fuels having a sulfur content of less
than 1 ppm. Ans. 8, citing Schumann, p. 6866, col. 1, para 4. Thus,
Schumann contains a direct suggestion to try values outside of the tested
range and having very low sulfur concentration. The rejection of
independent claim 1 and dependent claim 4 is therefore affirmed.
Appellants do not further argue the rejection of dependent claim 2 and the
rejection of claim 2 is therefore also affirmed.
Claims 10 and 11
The Examiner relied on Hemighaus and Mushrush to teach the
method of claim 10. Final Act. 6-7. The Examiner found it would have
been obvious to one of ordinary skill in the art at the time of the invention to
make the fuel of Hemighaus comprise less than one part per million and less
than 300 parts per billion, as taught by Mushrush. Final Act. 7. Appellants
reiterate arguments presented with respect to claims 1 and 5. App. Br. 6-7.
As previously discussed, these arguments are not persuasive.
The Examiner additionally relied on the obviousness of discovering
the optimum or workable ranges involving only routine skill in the art. Final
Act. 5---6 (citing Jn re Aller, 220 F.2d454 (CCPA 1955)). Though this
rejection was also applied to claims 1, 4, and 5, Appellants only argue the
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rejection with respect to claim 10. App. Br. 7. Hemighaus clearly discloses
a link between sulfur content and contrail formation, stating "they emit no
sulfur oxides ... or sulfuric acid ... which are implicated in contrail
formation." Hemighaus, p. 11. Schumann expounds on this link, citing the
various effects sulfur content has on contrail formation, including onset of
contrail formation and optical thickness of contrails. Schumann, p. 6865,
col. 2, para. 3. These disclosures demonstrate that, at the time of the
invention, a person of skill in the art would reasonably expect that sulfur
concentration has a direct effect on contrail formation. The rejection of
independent claim 10 and dependent claim 11 is therefore affirmed.
DECISION
The Examiner's rejections of claims 1, 2, 4, 5, and 7-11 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). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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