11254207 (B.P.A.I. Dec. 21, 2011)

Ex Parte Huber

Board of Patent Appeals and InterferencesDec 21, 2011

11254207 (B.P.A.I. Dec. 21, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/254,207 10/18/2005 Dave J. Huber FTT-165R 3872 75552 7590 12/21/2011 JOHN RYZNIC FLORIDA TURBINE TECHNOLOGIES, INC. 1701 MILITARY TRAIL, SUITE 110 JUPITER, FL 33458-7887 EXAMINER TRIEU, THAI BA ART UNIT PAPER NUMBER 3748 MAIL DATE DELIVERY MODE 12/21/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte DAVID J. HUBER ________________ Appeal 2009-012834 Application 11/254,207 Technology Center 3700 ________________ Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY and WILLIAM V. SAINDON, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s 1 decision finally rejecting claims 1-5, 7, 9, 10, 12, 13 and 15-20. The 2 Examiner rejects under 35 U.S.C. § 103(a): claims 1, 3, 5, 7, 9, 10, 12, 13 3 and 15 as being unpatentable over Nishiyama (US 5,029,442, issued Jul. 9, 4 1 The Appellant identifies the real party in interest as Florida Turbine Technologies, Inc. of Jupiter, Florida. Appeal No. 2009-012834 Application No. 11/254,207 2 1991) and Nettel (US 2,585,029, issued Feb. 12, 1952); claims 2, 16, 17, 19 1 and 20 as being unpatentable over Nishiyama, Nettel and Algrain (US 2 7,174,714 B2, issued Feb. 13, 2007; and claim 4 as being unpatentable over 3 Nishiyama, Nettel and Wallace (US 4,452,043, issued Jun. 5, 1984).2 We 4 have jurisdiction under 35 U.S.C. § 6(b). 5 We REVERSE. 6 Claims 1 and 9 are independent. Claim 1 recites: 7 1. A hybrid engine, comprising: 8 a gas turbine engine including a compressor, 9 a combustor, and a turbine having a turbine output 10 shaft; 11 means to rotatably connect the turbine 12 output shaft to a drive train; 13 an internal combustion engine having an 14 engine output shaft; 15 means to rotatably connect the drive train 16 with the internal combustion engine output shaft; 17 compressed air supply means to deliver 18 compressed air from the compressor to the internal 19 combustion engine to extract heat from the engine; 20 hot air supply means to deliver hot air from 21 the engine to an inlet of the combustor; and 22 valve means to regulate a supply of 23 compressed air from the compressor to both the 24 combustor and the engine. 25 The Appellant argues that claim 1 is limited to a “hybrid engine” due 26 to the recitation of a hybrid engine in the preamble. (App. Br. 9). The 27 2 Rejections of claims 9-12, 18 and 20 under 35 U.S.C. § 112, second paragraph, were withdrawn by the Examiner in the Supplemental Examiner’s Answer mailed May 14, 2009. (Ans. 4). Appeal No. 2009-012834 Application No. 11/254,207 3 Appellant contends that neither Nishiyama nor Nettel describes a hybrid 1 engine. Similarly, the preamble of claim 9 recites a “process of operating a 2 hybrid engine, the hybrid engine including a gas turbine engine and an 3 internal combustion engine both connected to a common drive train.” The 4 Appellant also argues the patentability of claim 9 on the basis that “neither 5 the Nishiyama patent nor the Nettel patent disclose a hybrid engine having a 6 common drive train with a gas turbine engine and an internal combustion 7 engine each connected to the common drive train.” (App. Br. 13). The 8 Examiner concludes that the recitations in the preambles of claims 1 and 9 9 are entitled to no weight. (See Ans. 12-13).3 10 “If the claim preamble, when read in the context of the entire claim, 11 recites limitations of the claim, or, if the claim preamble is ‘necessary to 12 give life, meaning and vitality’ to the claim, then the claim preamble should 13 be construed as if in the balance of the claim.” Pitney Bowes, Inc. v. 14 Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). In order to 15 conclude whether the preambles of claims 1 and 9 are necessary to give life, 16 meaning and vitality of claims 1 and 9, it is first necessary to determine the 17 meaning and scope of the term “hybrid engine.” 18 The Appellants do not identify any formal definition of the term 19 “hybrid engine” in the Specification. The broadest definition of a “hybrid 20 car” appears to be “a mode of transportation using more than one energy 21 source to power it.” Online Digital Educ. Connection, http://www.odec.ca 22 /projects/2004/guil4m0/public_html/what.html (last visited September 21, 23 2011). A more common definition of the term “hybrid” is a system which 24 3 All references to “Ans.” will be to the Supplemental Examiner’s Answer mailed May 14, 2009. Appeal No. 2009-012834 Application No. 11/254,207 4 combines an internal combustion engine with a battery-powered electric 1 motor. See, e.g., HybridCenter.com, http://www.hybridcenter 2 .org/hybrid-center-how-hybrid-cars-work-under-the-hood.html (last visited 3 September 21, 2011). The first definition is a reasonable generalization of 4 the second. 5 In the context of the Appellant’s field of endeavor and the language of 6 claims 1 and 9, the former definition may be restated as a system which 7 combines an internal combustion engine and another energy source, such as 8 a gas turbine engine, where the internal combustion engine and the other 9 energy source both provide power to the drive train. For these purposes, a 10 “drive train” includes any moving components external to the hybrid engine 11 which are driven by the engine. (See About.com Auto Repair, 12 http://autorepair.about.com/library/glossary/bldef-153.htm (last visited 13 September 21, 2011)(defining “drive train” as “[a]ll the moving components 14 of the car as a whole including the engine, clutch, transmission, driveshaft, 15 differential, axles and wheels”); see also Algrain, col. 3, ll. 47-48). 16 Turning to apparatus claim 1, the term “hybrid engine” does not 17 merely indicate a field of use of the claimed subject matter. As discussed 18 above, the term “hybrid engine” indicates a structural relationship between 19 the outputs of an internal combustion engine and another energy source. 20 The body of claim 1 does not fully define the claimed subject matter 21 independently of the preamble because the recitations of the claim body may 22 be met by an engine which is not a hybrid engine. Nevertheless, claim 1 23 recites an internal combustion engine and a gas turbine engine. Claim 1 24 additionally recites means to rotatably connect the turbine output shaft to a 25 drive train and means to rotatably connect the drive train with the internal 26 Appeal No. 2009-012834 Application No. 11/254,207 5 combustion engine output shaft. These recitations provide an objective 1 indication that the Appellant intends to limit the subject matter of claim 1 to 2 a hybrid engine. (See App. Br. 10). 3 Furthermore, the language of the Specification4 indicates that the 4 Appellant seeks patent protection limited to a hybrid engine. For example, 5 the Specification states that “[a] hybrid gas turbine and internal combustion 6 engine configuration is claimed.” (Spec., para. [0014]; see also, id., paras. 7 [0004], [0020] and [0024]). Although the term “hybrid engine” appears only 8 in the preamble of claim 1, claim 1 has been written so as to limit the 9 claimed subject matter to a hybrid engine. 10 Turning to claim 9, a method claim may be limited to the use of 11 structure recited in the preamble of the claim. See Bell Commc’ns Research, 12 Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 621 (Fed. Cir. 1995); In re 13 Stencel, 828 F.2d 751, 754-55 (Fed. Cir. 1987). The preamble of claim 9 14 expressly recites that the claimed method is one “for operating a hybrid 15 engine, the hybrid engine including a gas turbine engine and an internal 16 combustion engine both connected to a common drive train.” Furthermore, 17 the method steps refer to operations performed on components of the hybrid 18 engine recited in the preamble, namely, the gas turbine engine and the 19 internal combustion engine. These references in the steps recited in claim 9 20 indicate that the hybrid engine and its components are necessary to give 21 meaning to the claim and properly define the invention. In view of the 22 language of the Specification indicating that the Appellant seeks patent 23 protection limited to an internal combustion engine, claim 9 has been written 24 4 All references to “Spec.” or the “Specification” will be to the Substitute Specification filed May 25, 2008 and approved by the Examiner on June 20, 2008. Appeal No. 2009-012834 Application No. 11/254,207 6 so as to limit the claimed subject matter to a method for operating a hybrid 1 engine including a gas turbine engine and an internal combustion engine 2 both connected to a common drive train. 3 Nishiyama describes an internal combustion engine with an attached 4 supercharger. (Nishiyama, col. 2, l. 67 – col. 3, l. 2). Nishiyama does not 5 appear to mention any connection between the supercharger 3 and a drive 6 train. Figures 1 and 2 of Nishiyama do not depict the supercharger as having 7 an output shaft connected to any structure external to the supercharger itself. 8 The Examiner finds that Nishiyama does not describe a hybrid engine. 9 (Ans. 12). 10 Nettel teaches using the energy of a self-powered supercharger 11 including a compressor and a rotor to crank an internal combustion engine. 12 (See Nettel, col. 2, ll. 47-50). Nettel describes a four-cylinder internal 13 combustion engine 10 including an engine shaft coupled to a flywheel 13. 14 (Nettel, col. 3, l. 70 – col. 4, l. 3 and figs. 1 and 2). Nettel also describes a 15 supercharger 14 including a turbine or blower 15 and a turbine 17. (Nettel, 16 col. 4, ll. 3-6). As depicted in Figures 1 and 2 of Nettel, an output shaft of 17 the turbocharger 14 is rotatably connected by means of a gear train with the 18 flywheel 13. (See Nettel, col. 4, ll. 7-27 and col. 6, ll. 33-44). 19 Nettel teaches using an electric motor 20 to start the turbocharger 14. 20 Rotary energy output by the supercharger 14 is used to crank the four-21 cylinder engine 10. (Nettel, col. 5, ll. 18-63 and col. 6, ll. 45-47). 22 Nettel does not appear to describe where the engine shaft of the four-23 cylinder engine 10 or the output shaft of the turbocharger 14 may be 24 rotatably connected to a drive train. Figures 1 and 2 of Nettel fail to show 25 any such connection. In particular, Figure 2 of Nettel does not depict any 26 Appeal No. 2009-012834 Application No. 11/254,207 7 connection between the shaft 46 and any drive train external to the 1 combination of the four-cylinder engine 10 and the supercharger 14. (See, 2 e.g., Ans. 7). The Appellant is correct in arguing that neither Nishiyama nor 3 Nettel describes a hybrid engine with a gas turbine engine and an internal 4 combustion engine each connected to the common drive train. (See App. Br. 5 13). 6 Lacking such description, one of ordinary skill in the art would not 7 have had reason to combine the teachings of Nishiyama and Nettel to yield 8 either the apparatus of claim 1 or the method of claim 9. The Examiner’s 9 proposed reason for combining the references, set forth on pages 7-8 and 9 10 of the Answer, does not explain why one of ordinary skill in the art might 11 have had reason to rotatably connect the output shaft of a supercharger such 12 as that described by Nishiyama to a drive train. We do not sustain the 13 rejection of claims 1, 3, 5, 7, 9, 10, 12, 13 and 15 under § 103(a) as being 14 unpatentable over Nishiyama and Nettel. 15 Algrain describes a turbocompound engine 10 which drives a power 16 train 12. (Algrain, col. 3, ll. 45-47 and fig. 1). Algrain’s turbocompound 17 engine 10 incorporates a motor/generator 32 with a shaft of a turbocharger 18 16 and another motor/generator 34 with the crankshaft of the engine 10. 19 (Algrain, col. 4, ll. 14-23 and 30-37). Algrain teaches using the 20 motor/generator 32 as a generator to generate electrical power and the 21 motor/generator 34 as a motor to drive the crankshaft of the engine 10. 22 (Algrain, col. 4, ll. 62-67). Nevertheless, the Examiner fails to persuasively 23 explain how Algrain’s turbocompound engine 10 might be a hybrid engine. 24 Neither does the Examiner persuasively explain how the teachings of 25 Algrain might remedy the deficiencies in the combined teachings of 26 Appeal No. 2009-012834 Application No. 11/254,207 8 Nishiyama and Nettel discussed in connection with the rejection of claims 1, 1 3, 5, 7, 9, 10, 12, 13 and 15. (See Ans. 10 and 15). We do not sustain the 2 rejection of claims 2, 16, 17, 19 and 20 under § 103(a) as being unpatentable 3 over Nishiyama, Nettel and Algrain. 4 Wallace also describes a compound engine. The compound engine 5 includes an internal combustion engine 10, a rotary compressor 11 and a 6 power turbine 12. (Wallace, col. 3, ll. 3-5). Both the output shaft 13 of the 7 internal combustion engine 10 and the output shaft 22 of the power turbine 8 12 are coupled to the output shaft 19 of the compound engine. (Wallace, 9 col. 3, ll. 5-12). Compressed air from the compressor 11 and exhaust gases 10 from the internal combustion engine 10 drive the power turbine 12. 11 (Wallace, col. 3, ll. 15-19). The Examiner fails to persuasively explain how 12 the teachings of Algrain might remedy the deficiencies in the combined 13 teachings of Nishiyama and Nettel discussed in connection with the rejection 14 of claims 1, 3, 5, 7, 9, 10, 12, 13 and 15. (See Ans. 11 and 15). We do not 15 sustain the rejection of claim 4 under § 103(a) as being unpatentable over 16 Nishiyama, Nettel and Wallace. 17 18 DECISION 19 We REVERSE the Examiner’s decision rejecting claims 1, 3, 5, 7, 9, 20 10, 12, 13 and 15. 21 22 REVERSED 23 24 25 Klh 26