Ex parte GARCIA-MALLOL

Board of Patent Appeals and Interferences

Jul 31, 2000

08288864 (B.P.A.I. Jul. 31, 2000)

The oral hearing scheduled for July 13, 2000, was waived in a paper1
filed May 22, 2000 (Paper No. 15).
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JUAN A. GARCIA-MALLOL
_____________
Appeal No. 1997-4385
Application No. 08/288,864
______________
ON BRIEF1
_______________
Before ABRAMS, STAAB, and GONZALES, Administrative Patent
Judges
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 19 through 29. These claims constitute all of the
claims pending in this application.
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Application No. 08/288,864
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We AFFIRM-IN-PART.
The subject matter on appeal is disclosed as a fluidized
bed reactor 10 having a furnace section 22 and a horizontal
cyclone separator 28 defining a generally cylindrical vortex
chamber 30 for separating solid particles from a mixture of
gases and particles. In operation, a mixture of entrained
particles and gases rises upwardly within the furnace section
22 and passes through an inlet 32 into the vortex chamber 30
where the solid particles strike the inner surfaces of the
vortex chamber 30 and are separated from the gases. The gases
exit the chamber 30 via an outlet 36 while the separated
particles fall downwardly by gravity into a funnel 35 and are
returned to the furnace section via an outlet trough 34. A
solids deflector 38 extends into the vortex chamber from an
end wall 18 of the chamber for preventing separated particles
from bouncing off the end wall and becoming re-entrained in
the separated gases. A solid block 33 is disposed adjacent
the inlet opening 32 for defining an inlet passage for
directing the mixture of entrained particles and gases into
the vortex chamber 30 in a tangential direction thereto.
Appeal No. 1997-4385
Application No. 08/288,864
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Claims 19 and 25 are representative and are reproduced in an
appendix to the brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Evans 2,888,096 May 26,
1959
Suzuki et al. (Suzuki) 4,285,142 Aug. 25,
1981 Dewitz et al. (Dewitz) 4,731,228
Mar. 15, 1988 Kalen et al. (Kalen) 5,207,805
May 04, 1993
The following rejections are before us for review:
(I) claims 19 through 24 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Dewitz; and
(II) claim 25 through 29 stands rejected under 35 U.S.C.
§ 102(b) as being anticipated by Evans or Suzuki or Kalen.
The full text of the examiner's rejections and responses
to the arguments presented by the appellant appears in the
answer
(Paper No. 13), while the complete statement of the
appellant’s arguments can be found in the brief (Paper No.
12).
Appeal No. 1997-4385
Application No. 08/288,864
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OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant’s specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we have made the
determinations which follow.
Rejection (I)
We sustain the rejection of claims 19 through 24 under
35 U.S.C. § 102(b) as being anticipated by Dewitz.
Initially we note that anticipation by a prior art
reference does not require either the inventive concept of the
claimed subject matter or the recognition of inherent
properties that may be possessed by the prior art reference.
See Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 633,
2 USPQ2d 1051, 1054 (Fed. Cir.), cert. denied, 484 U.S. 827
(1987). A prior art reference anticipates the subject of a
claim when the reference discloses every feature of the
claimed invention, either explicitly or inherently (see Hazani
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Application No. 08/288,864
5
v. Int'l Trade Comm'n, 126 F.3d 1473, 1477, 44 USPQ2d 1358,
1361 (Fed. Cir. 1997) and RCA Corp. v. Applied Digital Data
Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984)); however, the law of anticipation does not require
that the reference teach what the appellants are claiming, but
only that the claims on appeal "read on" something disclosed
in the reference (see Kalman v. Kimberly-Clark Corp., 713 F.2d
760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied,
465 U.S. 1026 (1984)).
Claim 19 on appeal is written in Jepson format. Ex parte
Jepson, 1917 Dec. Comm’r Pats. 62, 243 Off. Gaz. 525 (1917).
When a claim is written in Jepson format, the subject matter
recited in its preamble (leading up to the claim language “the
improvement”) is impliedly admitted to be old in the art. In
re Ehrreich, 590 F.2d 902, 909, 200 USPQ 504, 510 (CCPA 1979).
The appellant’s “improvement” comprises:
a solids deflector extending into the chamber from
the other end wall opposite the one end wall
[containing the outlet opening] for preventing the
separated particles from bouncing off the other end
wall and becoming re-entrained in the separated
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gases.
Before addressing the examiner's rejection based upon
prior art, it is an essential prerequisite that the claimed
subject matter be fully understood. Analysis of whether a
claim is patentable over the prior art under 35 U.S.C. §§ 102
and 103 begins with a determination of the scope of the claim.
The properly interpreted claim must then be compared with the
prior art. Claim interpretation must begin with the language
of the claim itself. See Smithkline Diagnostics, Inc. v.
Helena Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d 1468,
1472 (Fed. Cir. 1988). Accordingly, we will initially direct
our attention
to the appellant’s claim 19 to derive an understanding of the
scope and content thereof.
Before turning to the proper construction of the claims,
it is important to review some basic principles of claim
construction. First, and most important, the language of the
claim defines the scope of the protected invention. Yale Lock
Mfg. Co. v. Greenleaf, 117 U.S. 554, 559 (1886) ("The scope of
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letters patent must be limited to the invention covered by the
claim, and while the claim may be illustrated it cannot be
enlarged by language used in other parts of the
specification."); Autogiro Co. of Am. v. United States, 384
F.2d 391, 396, 155 USPQ 697, 701 (Ct. Cl. 1967) ("Courts can
neither broaden nor narrow the claims to give the patentee
something different than what he has set forth [in the
claim]."). See also Continental Paper Bag Co. v. Eastern
Paper Bag Co., 210 U.S. 405, 419 (1908); Cimiotti Unhairing
Co. v. American Fur Ref. Co., 198 U.S. 399, 410 (1905).
Accordingly, "resort must be had in the first instance to the
words of the claim" and words "will be given their ordinary
and accustomed meaning, unless it appears that the inventor
used them
differently." Envirotech Corp. v. Al George, Inc., 730 F.2d
753, 759, 221 USPQ 473, 477 (Fed. Cir. 1984). Second, it is
equally "fundamental that claims are to be construed in the
light of the specification and both are to be read with a view
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to ascertaining the invention." United States v. Adams, 383
U.S. 39, 49, 148 USPQ 479, 482 (1966).
Furthermore, the general claim construction principle
that limitations found only in the specification of a patent
or patent application should not be imported or read into a
claim must be followed. See In re Priest, 582 F.2d 33, 37,
199 USPQ 11, 15 (CCPA 1978). One must be careful not to
confuse impermissible imputing of limitations from the
specification into a claim with the proper reference to the
specification to determine the meaning of a particular word or
phrase recited in a claim. See E.I. Du Pont de Nemours & Co.
v. Phillips Petroleum Co., 849 F.2d 1430, 1433, 7 USPQ2d 1129,
1131 (Fed. Cir.), cert. denied, 488 U.S. 986 (1988). What we
are dealing with in this case is the construction of the
limitations recited in the appealed claims.
With the above in mind, we interpret the word
“preventing” in the appellant’s claim 19 to mean “impeding.”
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This
interpretation is consistent with the ordinary meaning of the
word (see Webster's II New Riverside University Dictionary 933
(1984) ("prevent: to keep (someone) from doing something;
impede"); id. at 613 ("impede: to obstruct or delay the
progress: hinder")) and with the appellant’s use of the word
in the specification. There is no disclosure in the
appellant’s specification that the solids deflector 38 totally
covers or precludes all particles from bouncing off the end
wall 18. In fact, the provision of opening or slot 38a in the
lower portion of the deflector for directing separated solids
into funnel 35 (see specification, p. 7 and Figures 1 and 3)
indicates to us that entrained particles may contact that
portion of wall 18 not covered by the deflector 38 and settle
within the interior of the deflector.
The examiner determined (answer, p. 4) that the solids
deflector as defined in claim 19 reads on the vortex
stabilizer 21 of Dewitz. We note that Dewitz specifically
teaches that a
Appeal No. 1997-4385
Application No. 08/288,864
It is well settled that the burden of establishing a prima facie case2
of anticipation resides with the Patent and Trademark Office (PTO). See In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
10
vortex stabilizer improves the separation efficiency of the
solid and fluid phases (see col. 10, ll. 47-52), which is one
of the objects of the appellant’s invention.
Without question, the vortex stabilizer 21 disclosed by
Dewitz will prevent particles from bouncing off the wall 9 at
least at that portion of wall 9 which is occupied or covered
by the vortex stabilizer 21, just as the appellant’s deflector
will prevent particles from bouncing off the wall 18 at that
portion of the wall covered by the deflector. Thus, we
conclude that the examiner has established a prima facie case
of anticipation. 2
The appellant argues (brief, pp. 3-5) that Dewitz teaches
that the purpose of the vortex stabilizer 21 is “. . . to
guarantee formation and existence of a helical flow of fluid
(vapor) material” (see Dewitz, col. 7, ll. 14-16) and that the
vortex stabilizer 21 of Dewitz is not capable of preventing
the separated particles from bouncing off the wall 9.
According to the appellant, because the outer diameter of the
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vortex stabilizer 21 is significantly less than that of the
wall 9, the
element 21 of Dewitz will permit solids to bounce off wall 9.
While there is no explicit statement in Dewitz that the
disclosed vortex stabilizer 21 prevents separated particles
from
bouncing off the wall 9, it is self-evident that separated
particles are prevented from contacting that portion of wall 9
covered by the vortex stabilizer 21. That is all the claim
requires (see our interpretation of the word “preventing”
above).
After the PTO establishes a prima facie case of
anticipation based on inherency, the burden shifts to the
appellant to prove that the subject matter shown to be in the
prior art does not possess the characteristics of the claimed
invention. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964,
966 (Fed. Cir. 1985); In re King, 801 F.2d 1324, 1327, 231
USPQ 136, 138 (Fed. Cir. 1986). Hence, the appellant’s burden
before the PTO is to prove that Dewitz’s vortex stabilizer
does not perform the function defined by the solids deflector
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in claim 19. The appellant has not come forward with any
evidence to satisfy that burden. Compare In re Best, 562 F.2d
1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977); In re Ludtke,
441 F.2d 660, 664, 169 USPQ 563, 566-67 (CCPA 1971). The
appellant’s mere argument in the brief to the effect that
Dewitz’s vortex stabilizer does not perform the function
defined
by the solids deflector in claim 19 is not evidence. See In
re Pearson, 494 F.2d 1399, 1405, 181 USPQ 641, 646 (CCPA 1974)
(attorney's arguments in a brief cannot take the place of
evidence).
For the reasons set forth above, the decision of the
examiner to reject claim 19 under 35 U.S.C. § 102(b) is
affirmed.
The appellant has grouped claims 19 through 24 as
Appeal No. 1997-4385
Application No. 08/288,864
See page 3 of the appellant’s brief.3
The word “in” should be canceled upon return of the application to the4
jurisdiction of the examiner.
13
standing or falling together. Therefore, in accordance with3
37 CFR
§ 1.192(c)(7), claims 20 through 24 fall with claim 19. Thus,
it follows that the decision of the examiner to reject claims
20 through 24 under 35 U.S.C. § 102(b) is also affirmed.
Rejection (II)
We will not sustain the rejections of claims 25 through
29 under 35 U.S.C. § 102(b) as being anticipated by Evans, by
Suzuki or by Kalen.
In claim 25, which is also written in Jepson format, the
appellant’s “improvement” comprises:
a block disposed adjacent the inlet opening for
defining an inlet passage for directing the mixture
in [sic] into the vortex chamber in a tangential
direction thereto.4
The examiner determined (answer, p. 5) that “the inlet
duct 15 of Evans is located adjacent the wall section 16 which
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is in the form of a block” to direct flow into chamber 10 in a
tangential direction. The examiner also determined that
Suzuki discloses “a block shape to inlet duct” 23 in Figure 5.
The examiner describes Figures 1 and 2 of Kalen as disclosing
a tangential gas inlet and a wall 14 which forms a block
located adjacent the inlet.
The appellant’s specification (p. 7) describes a “solid
block 33 having ends 33a and 33b (FIG. 1); sides 33c and 33d;
a top 33e; and a bottom 33f" positioned just below inlet 32
and defining, with walls 12 and 20, a passage having a
rectangular cross-section registering with the inlet 32.
Thus, consistent with the appellant’s specification and the
ordinary meaning of
the word, we construe the word “block” to mean “a solid piece,
as
of wood, with one or more flat sides” (see Webster's II New
Riverside University Dictionary 182 (1984)). As so construed,
we agree with the appellant’s argument (brief, p. 5) that the
patents to Evans, Suzuki and Kalen do not teach a “block”
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disposed adjacent an inlet opening for defining an inlet
passage.
Since every feature of claim 25 is not disclosed by
Evans, Suzuki or Kalen, the claim is not anticipated by any of
the applied references. Claims 26 through 29 depend from
claim 25 and include all the limitations of that claim. Thus,
the
§ 102(b) rejections of claims 25 through 29 based on Evans,
Suzuki and Kalen will not be sustained.
SUMMARY
The decision of the examiner to reject claims 19 through
24 under 35 U.S.C. § 102(b) as being anticipated by Dewitz is
affirmed. The decision of the examiner to reject claims 25
through 29 under 35 U.S.C. § 102(b) as being anticipated by
Evans or Suzuki or Kalen is reversed.
The decision of the examiner is affirmed-in-part.
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Application No. 08/288,864
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
jfg/vsh
Appeal No. 1997-4385
Application No. 08/288,864
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Warren B. Kice
Haynes & Boone, L.L.P.
3100 Nations Bank Plaza
901 Main Street
Dallas, TX 75202-3789