Ex Parte HOKE

Board of Patent Appeals and Interferences

Jul 31, 2003

09292137 (B.P.A.I. Jul. 31, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES B. HOKE
____________
Appeal No. 2003-0093
Application No. 09/292,137
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT, and McQUADE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-5 and
9. Claims 6-8 have been withdrawn from consideration as being directed to a non-
elected invention.
We REVERSE.
Appeal No. 2003-0093
Application No. 09/29213
Page 2
1The grounds which form the basis of this second rejection of claim 4 differ from those applied
against claims 1, 4 and 9.
BACKGROUND
The appellant's invention relates to a fuel injector. An understanding of the
invention can be derived from a reading of exemplary claim 1, which has been
reproduced in an appendix to the Brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Sharpe 3,713,588 Jan. 30, 1973
Mancini et al. (Mancini) 4,798,330 Jan. 17, 1989
Russell 4,941,617 Jul. 17, 1990
Richardson 5,417,070 May 23, 1995
Prociw et al. (Prociw) 6,082,113 Jul. 4, 2000
(filed May 22, 1998)
Claims 1, 4 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mancini.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Mancini in view of either Russell or Sharpe.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Mancini.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Mancini.1
Appeal No. 2003-0093
Application No. 09/29213
Page 3
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Mancini in view of either Richardson or Prociw.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the Answer
(Paper No. 21) and the final rejection (Paper No. 14) for the examiner's complete
reasoning in support of the rejections, and to the Brief (Paper No. 20) and Reply Brief
(Paper No. 22) for the appellant's arguments thereagainst.
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 make the determinations which follow.
The appellant’s invention is directed to coke resistant fuel injectors for gas
turbine engines which produce a thoroughly blended fuel-air mixture for reducing
nitrogen oxide. The appellant’s claim 1, which is the only independent claim before us,
recites a pressure atomizing core nozzle disposed along an injector centerline and
having a fuel discharge orifice, first and second partitions circumscribing the nozzle to
define an inner air passage, a third partition circumscribing the second partition and
defining a secondary fuel passage, an outer wall circumscribing the third partition and
forming an annular outer air passage, and
Appeal No. 2003-0093
Application No. 09/29213
Page 4
2The test for obviousness is what the combined teachings of the prior art would have suggested to
one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would have been led to modify a prior art reference or
to combine reference teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972,
973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some teaching,
suggestion or inference in the prior art as a whole or from the knowledge generally available to one of
ordinary skill in the art and not from the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-
Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
an air distribution baffle having a cap that extends radially
across the inner air passage, the cap having an outer edge
radially spaced from the second partition to define an air
injection annulus and also penetrated by a radially and
circumferentially distributed plurality of air injection orifices.
The examiner has rejected this claim as being obvious2 in view of the teachings
of Mancini. In the course of arriving at this conclusion, the examiner apparently
acknowledges that Mancini fails to disclose or teach “a radially and circumferentially
distributed plurality of air injection orifices” in the cap, for he states:
One of ordinary skill in the art at the time of the claimed
invention, aiming to substantially increase the number of the
Mancini holes 74, would have had no alternative but to add
a second row of holes 74, that would have resulted in a
radial and circumferential distribution, as presently claimed.
The appellant urges that no suggestion exists for modifying the Mancini injector in the
manner proposed by the examiner. We agree.
At the outset, we point out that in view of the disclosure of the invention in Figure
5 and 5A, as well as the arguments advanced by the appellants in the Briefs, we
interpret the phrase “radially and circumferentially distributed” to mean that the orifices
Appeal No. 2003-0093
Application No. 09/29213
Page 5
are distributed along a plurality of circumferences which are spaced at different radial
distances from the nozzle axis, i.e., along concentric annular rings. From the
examiner’s explanation of the rejection, he also interpreted the limitation in that fashion.
Mancini discloses in Figure 1 a nozzle structure having at its downstream end a
primary fuel discharge opening 52 surrounded by an inner air passage 82, which
terminates at face 75 comprising a “multiple circumferentially spaced air discharge
apertures 74" (column 4, line 61 et seq.). There is no mention of the apertures being
positioned at different radii from nozzle axis A, and such cannot be ascertained from
Figure 1. Figure 6 illustrates an embodiment of the “face” of an embodiment of the
nozzle that is provided with a single circumferential array of apertures, although the
explanation does not explicitly relate it to the air apertures 74 of Figure 1. Thus, it is our
view that Mancini fails to disclose or teach providing orifices located at different radii
from the nozzle axis in the air distribution baffle that extends radially across the inner air
passage, as is required by claim 1.
We cannot agree with the examiner that one of ordinary skill in the art would
have found it obvious to modify Mancini by adding an additional ring of orifices 74 to
cap 75, for no evidence has been provided in support of such; the examiner relies upon
his unsubstantiated opinion. The mere fact that the prior art structure could be modified
does not make such a modification obvious unless the prior art suggests the desirability
of doing so. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
We fail to perceive any teaching, suggestion or incentive which would have led one of
Appeal No. 2003-0093
Application No. 09/29213
Page 6
ordinary skill in the art to modify Mancini in the manner proposed by the examiner, other
than the hindsight afforded one who first viewed the appellant’s disclosure. This, of
course, is not a proper basis for a rejection. In re Fritch, 972 F.2d 1260, 1264,
23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
It therefore is our conclusion that Mancini fails to establish a prima facie case of
obviousness with regard to the subject matter recited in claim 1, and we will not sustain
the rejection.
Nor, it follows, will we sustain the two rejections of dependent claim 4 and the
single rejection of dependent claim 9 on the same grounds. We note in passing that
there is no evidence to support the examiner’s conclusion in the second rejection of
claim 4 that “it was conventional in the art” to have air swirls in the same direction in this
type of nozzle.
Dependent claim 2 stands rejected on the basis of Mancini plus either Russell or
Sharpe. However, the shortcoming in Mancini is not overcome by the teachings of
either of the secondary references, which were cited as evidence of the obviousness of
using flared inlets in the air passages. The rejection of claim 2 is not sustained.
Claim 3, which depends from claim 9, has been separately rejected as being
unpatentable over Mancini, with the examiner opining that it would have been obvious
to optimize the air flow rates of the Mancini injector. In addition to the fact that there is
no evidence in support of this conclusion, claim 3 inherits the defect in the rejection
applied against claim 1, and this rejection cannot be sustained.
Appeal No. 2003-0093
Application No. 09/29213
Page 7
We reach the same conclusion with respect to claim 5, which depends from
claim 1 through claim 4, for the reasons expressed above with regard to claims 1 and 4.
CONCLUSION
None of the rejections are sustained.
The decision of the examiner is reversed.
REVERSED

NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
NEA/lbg
Appeal No. 2003-0093
Application No. 09/29213
Page 8
KENNETH C. BARAN
PRATT & WHITNEY, PATENT DEPARTMENT
MAIL STOP 132-13
400 MAIN STREET
EAST HARTFORD, CT 06108
APPEAL NO. 2003-0093 - JUDGE ABRAMS
APPLICATION NO. 09/292137
APJ ABRAMS
APJ McQUADE
APJ FRANKFORT
DECISION: REVERSED
Prepared By: Lesley Brooks Gordon
OB/HD
GAU: 3700
3 MEM CONF Y N
DRAFT TYPED: 12 May 04
FINAL TYPED: