Ex Parte Graham

Patent Trial and Appeal Board

Sep 16, 2016

13654485 (P.T.A.B. Sep. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/654,485 10/18/2012
8131 7590 09/16/2016
MCKELLAR IP LAW, PLLC
784 SOUTH POSEYVILLE ROAD
MIDLAND, MI 48640
FIRST NAMED INVENTOR
Robert G. Graham
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.
MSH-787CIP 5019
EXAMINER
GOYAL,ARUN
ART UNIT PAPER NUMBER
3741
MAILDATE 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
Ex parte ROBERT G. GRAHAM
Appeal2014-009737
Application 13/654,485
Technology Center 3700
Before EDWARD A. BROWN, JAMES P. CALVE, and
WILLIAM A. CAPP, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's Final
rejection of claims 1, 4, 7, 10, 16, 25, and26. 1 Appeal Br. 1, 4. Claims 2, 3,
5, 6, 8, 9, 11-15, 17-24, and 27-30 are withdrawn. Id. at 4. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Examiner's objection to the drawings (Final Act. 2-3; Ans. 2-3) is a
petitionable matter and not subject to review on appeal. 37 C.F.R. §§ 1.181,
1.113; see also MANUAL OF p ATENT EXAMINING PROCEDURE ("MPEP")
§§ 1002.02(c) (technology center directors decide petitions under 37 C.F.R.
§ 1.113 for objections or requirements by examiners), 1201 (line between
petitionable and appealable matters should be observed) (9th Ed. Rev. 7,
Nov. 2015).
Appeal2014-009737
Application 13/654,485
CLAIMED SUBJECT MATTER
Claims 1, 10, 16, and 25 are independent. Claim 1 is reproduced
below.
1. A ceramic, intermittently sealable refractory tile
comprising a refractory tile, said refractory tile having a top and
a bottom, and contained within said refractory tile, an air shaft,
having an external end and an internal end, said external end
being surmounted by a check valve, said internal end opening
into a manifold formed in the top of the refractory tile, said
manifold having a bottom, there being a plurality of channels
from the bottom of the manifold and opening through the
bottom of the refractory tile.
REJECTIONS
Claims 1, 4, 7, 10, 16, 25, and 26 are rejected under 35 U.S.C. § 112,
first paragraph, for lack of enablement.
Claims 1, 4, 7, 10, and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Graham (US 6,381,963 Bl, iss. May 7, 2002).
Claims 25 and 26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Graham and Dinjus (US 8,043,391 B2, iss. Oct. 25, 2011).
ANALYSIS
Claims 1, 4, 7, 10, 16, 25, and 26 for lack of enablement
The Examiner determined that claims 1, 4, 7, 10, 16, 25, and 26 are
not described in the Specification sufficiently to enable a skilled artisan to
make or use the invention. Final Act. 4. In particular, the Examiner found
that the Specification does not disclose how the valve automatically opens
and closes to remain open from point D to point E and remains closed until it
arrives at point D when Appellant describes the valve as a flip top that opens
by gravity on the bottom half and closes on the top half of the rotation. Id.
2
Appeal2014-009737
Application 13/654,485
"The enablement requirement is satisfied when one skilled in the art,
after reading the specification, could practice the claimed invention without
undue experimentation." AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244
(Fed. Cir. 2003) (citing In re Wands, 858 F.2d 731, 736-37 (Fed. Cir.
1988)); see Auto. Techs. Int'!, Inc. v. BMW of N Am., Inc., 501F.3d1274,
1282 (Fed. Cir. 2007) (citing AK Steel and Wands); MPEP § 2164.08 ("The
Federal Circuit has repeatedly held that 'the specification must teach those
skilled in the art how to make and use the full scope of the claimed invention
without "undue experimentation";'" "what is well-known is best omitted").
Factors to consider in determining if undue experimentation is required are:
(1) the quantity of experimentation needed, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples, (4)
the nature of the invention, ( 5) the state of the prior art, ( 6) the level of
ordinary skill in the art, (7) the predictability or unpredictability of the art,
and (8) the breadth of the claims. See Wands, 858 F.2d at 737; see also
MPEP § 2164.0l(a) Undue Experimentation Factors. The PTO bears an
initial burden of explaining why the claim scope is not enabled by the
specification. In re Wright, 999 F.2d 1557, 1561---62 (Fed. Cir. 1993).
"Whether undue experimentation is required 'is not a single, simple
factual determination, but rather is a conclusion reached by weighing many
factual considerations."' Streck, Inc. v. Research & Diagnostic Sys., Inc.,
665 F.3d 1269, 1288 (Fed. Cir. 2012) (citation omitted). The Examiner's
finding that the Specification does not describe how the check valve opens
does not, by itself, address any of the factors for undue experimentation.
Without such a factual inquiry and findings, we cannot sustain this rejection.
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Appeal2014-009737
Application 13/654,485
The claims does not require the check valve to open or close in a
particular way. Claim 1 recites a "ceramic, intermittently sealable refractory
tile" with "said external end being surmounted by a check valve. "2 Further,
Appellant argues that the Specification makes clear that the check valve is
disclosed as a flip top that opens by gravity when the gasifier turns towards
the bottom and closes when the gasifier turns to the top. Br. 6. Appellant
also discloses that the check valves 26 in combination with the air pressure
behind them in air conduction system 9 operate to prevent air and flue gas
from returning to air conduction system 9. Spec. 11:11-16, 13:22-14:12.
We do not sustain the rejection of claims 1, 4, 7, 10, 16, 25, and 26.
Claims 1, 4, 7, 10, and 16 as unpatentable over Graham
Appellant argues claims 1, 4, 7, 10, and 16 as a group. See Br. 4--5
(arguing the patentability of claims 4 and 7 due to their dependency from
claim 1 and of claims 10 and 16 for the same reasons as claim 1 ). We select
claim 1 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner found that Graham teaches all of the features of claim 1
including a check valve (cap 82 of sealing mechanism 67) surmounting the
external end of the air shaft (tubular opening 77) except for a plurality of
channels from the bottom of the manifold and opening through the bottom of
the refractory tile 23. Final Act. 5. The Examiner determined it would have
been obvious to duplicate the channel of Graham into a plurality of channels
to allow air to pass through to the combustion zone because a duplication of
parts in this circumstance provides no new or unexpected results. Id. at 5---6.
2 Independent claim 10 recites a gasifier with the refractory tile recited in
claim 1. Independent claim 16 recites a system with the gasifier of claim 10.
Independent claim 25 recites a method using the energy system of claim 16.
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Appeal2014-009737
Application 13/654,485
Appellant argues that Graham teaches a ball valve that is contained
internally in the air shaft rather than surmounting the external end of the air
shaft as recited in claim 1. Br. 4. Appellant also argues that the shut-off
valve of Graham can only be used individually and cannot manifold several
tiles to one valve to combine more tuyeres into one shape. Id. at 5.
Appellant's arguments are not persuasive of error in the Examiner's
findings that Graham discloses cap seal 82 as a check valve that surmounts
an external end of air shaft 77 as shown in Figure 9. Graham discloses that
cap seal 82 closes when tile 23 rotates to the top of the rotation to prevent air
from entering the kiln. Graham, 9: 15-34. Appellant discloses a similar
check valve 26 that opens when a tile 25A rotates beyond point D and closes
when kiln 1 rotates tile 25A beyond point E. See Spec. 13:22-14: 12.
Claim 1 recites an intermittently sealable refractory tile comprising
"said external end being surmounted by a check valve." The use of the
open-ended transitional phrase "comprising" in claim 1 means that claim 1
encompasses a tile that includes a check valve and other elements, such as
ball valve 24 of Graham. See In re Skvorecz, 580 F.3d 1262, 1267-68 (Fed.
Cir. 2009); In re Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004). Appellant's
argument that the instant Specification describes a gasifier that is the direct
opposite of the gasifier described in Walker (see Br. 4) is not commensurate
with the scope of claim 1 and therefore is not persuasive. Appellant's
arguments regarding the combinability of the claimed check valve with
multiple tiles and tuyeres via a manifold also are not commensurate with
claim 1, which covers only the embodiment of Figures 4---6. See Ans. 2.
Accordingly, we sustain the rejection of claims 1, 4, 7, 10, and 16 as
unpatentable over Graham.
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Appeal2014-009737
Application 13/654,485
Claims 25 and 26 as unpatentable over Graham and Dinjus
Appellant asserts that the arguments presented against the rejection of
claim 1 as unpatentable over Graham apply equally well to the rejection of
claims 25 and 26. Br. 6. These arguments are not persuasive for the reasons
discussed above for claim 1. Accordingly, we sustain the rejection of claims
25 and 26.
DECISION
We AFFIRM the rejections of claims 1, 4, 7, 10, 16, 25, and 26 under
35 U.S.C. § 103(a), and REVERSE the rejection of 1, 4, 7, 10, 16, 25, and
26 under 35 U.S.C. § 112, first paragraph, for lack of enablement.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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