Ex Parte Johnson et al

Patent Trial and Appeal Board

Apr 29, 2014

10622677 (P.T.A.B. Apr. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEPHEN ALLEN JOHNSON, JOHN WURSTER, and
JOHN PHILIP COMER
____________________

Appeal 2011-001899
Application 10/622,677
Technology Center 3700
____________________

Before STEVEN D. A. MCCARTHY, EDWARD A. BROWN, and
ANNETTE R. REIMERS, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Stephen Allen Johnson et al. (“Appellants”) appeal under 35 U.S.C.
§ 134(a) (2009) from the Examiner’s decision rejecting claims 24-26, 33, 34,
36, 44-66, 68-88, 90-110, 112-132, 134-137, and 139-141.1 App. Br. 9-10.
We have jurisdiction under 35 U.S.C. § 6(b) (2009).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
Claims 24, 68, 90, 112, and 134 are independent. Claim 24 is
illustrative of the claimed subject matter and reads:
24. A method of operating a solid fuel fired boiler,
comprising:
introducing a solid fuel into the boiler, wherein the solid
fuel is a coal having a sulfur content of less than about 1.5 wt.%
(dry basis of the coal);
introducing an ironcontaining material into the boiler,
wherein the iron-containing material is at least one of mill scale
from steel production and dust from blast furnace gas cleaning
equipment; and
at least partially combusting the solid fuel to produce an
ash slag, wherein, in the at least partially combusting step, at
least one of the following is true:
(i) the ash slag has a fluid temperature less than a fluid
temperature characteristic of the ash slag produced from
combustion of the solid fuel alone; and
(ii) the ash slag has a melting point less than the melting
point of a second ash slag produced from the combustion of the
solid fuel alone.

1 Claims 1-23, 27-32, 35, 37-43, 67, 89, 111, 133, 138, and 142 were
cancelled.
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REJECTIONS
I. Claims 24-26, 33, 34, 36, 44-66, 73, 78-81, 87, 88, 95, 100-
102, 109, 110, 122-124, 131, 132, 140, and 141 stand rejected under 35
U.S.C. § 112, first paragraph, written description requirement.
II. Claims 24-26, 33, 34, 36, 44-53, 55, 56, 61-66, 68-74, 76, 77,
82-88, 90-96, 98, 99, 104-110, 112-118, 120, 121, 126-132, 134-137, and
139-141 stand rejected under 35 U.S.C. § 103(a) (2009) as unpatentable over
Benner (US 1,955,574; issued Apr. 17, 1934) and Hepworth (US 4,572,085;
issued Feb. 25, 1986).
III. Claims 57, 58, 78, 79, 100, 101, 122, and 123 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Benner, Hepworth, and Khan
(US 4,886,521; issued Dec. 12, 1989).
IV. Claims 59, 60, 80, 81, 102, 103, 124, and 125 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Benner, Hepworth, and Pirsh
(US 3,896,746; issued July 29, 1975).
V. Claims 54, 75, 97, and 119 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Benner, Hepworth, and Arai (US 4,089,507;
issued May 16, 1978).
VI. Claims 68-86, 90-108, 112-130, 134-137, and 139 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Hepworth and Kober
(US 4,498,402; issued Feb. 12, 1985).2

2 Claims 89, 111, 133, and 138 were also rejected. However, as noted supra,
these claims were cancelled.
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ANALYSIS
Rejection I
Claims 24-26, 33, 34, 44, 46-66, 87, 109, 131, 140, and 141
The Examiner concluded that claims 24, 87, 109, 131, 140 and 141
“refer to the ash slag [having] a fluid temperature less than the fluid
temperature characteristic of the ash slag or a second ash slag produced from
combustion [of the] solid fuel alone,” and found that this limitation was not
described in the Specification in such a way as to reasonably convey to one
skilled in the relevant art that the inventors had possession of the claimed
invention at the time the application was filed. Ans. 4. The Examiner found
that “the applicant[s] lack[] an explicit disclosure in the specifications for the
claimed subject matter.” Id. at 10.
Appellants indicate that the “fluid temperature” limitation was copied
from Shepard3 for the purpose of invoking an interference proceeding. App.
Br. 10. Appellants contend that a specification need not literally recite a
claim limitation for a claim to satisfy the requirements of Section 112, first
paragraph, and that “unstated subject matter satisfies the written description
requirement when it is inherently disclosed in the specification.” Id. at 12.
Appellants contend that their Specifications4 and Shepard each disclose the
combustion of the same fuel in the same type of combustion chamber in the
presence of the same iron-bearing material additive under the same
temperature regime. Id. at 14. Therefore, Appellants contend that the
methods disclosed in their Specifications inherently produce the same result

3 US 6,484,651 B1; issued Nov. 26, 2002.
4 Non-provisional Application Specification, filed July 18, 2003 (“Non-
provisional Specification”); Provisional Application Specification, filed June
26, 2000 (“Provisional Specification”) (together “Specifications”).
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as the method in the Shepard, “namely the production of an ash slag having
a lower viscosity, ash melting temperature, and fluid temperature.” Reply
Br. 4-5.
By disclosing a device that inherently has a property, a patent
applicant necessarily discloses that property even if the property is not stated
explicitly. In re Smythe, 480 F.2d 1376, 1384 (CCPA 1973); see MPEP5
§ 2163.07(a)). Shepard discloses combusting low sulfur coal with iron-
bearing additives in a “wet bottom” boiler in order to lower the AFT
characteristics (including “fluid temperature”) of the resulting ash slag.
Shepard, col. 2, ll. 4-19, col. 7, ll. 57-62, col. 9, ll. 18-21, col. 10, ll. 22-26;
see also claim 5. The Specifications describe combusting low sulfur coal
with iron-bearing additives in a “wet bottom” boiler in order to lower the
melting temperature of the ash slag. Provisional Spec., p. 1, Abstract, p. 2,
ll. 11-13; Non-provisional Spec., p. 2, l. 17, p. 6, ll. 4-5 and 15-17, p. 7, ll.
15-17. Thus, because both Shepard and the Specifications describe using the
same reactants (low sulfur coal and iron-bearing additives) under the same
reaction conditions (combustion) in the same type of reactor (wet bottom
boiler), we agree with Appellants that the method described in the
Specifications will inherently produce the result as described in Shepard of a
lowered ash slag fluid temperature. App. Br. 14.
The Bisque Declaration6 provided by Appellants supports their
position that the Specifications describe a method that will inherently result

5 Manual of Patent Examining Procedure (MPEP) (8th ed., rev. 9, Aug.
2012).
6 Declaration of Ramon Bisque, dated July 29, 2004.
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in lowering of the AFT characteristics of the ash slag, including fluid
temperature. Bisque Dec., p. 3, para. 8, p. 7, para. 18.
It is the Examiner’s “initial burden [to] present[] evidence or reasons
why persons skilled in the art would not recognize in the disclosure a
description of the invention defined by the claims.” In re Wertheim, 541
F.2d 257, 263 (CCPA 1976). The Examiner determined that Appellants are
trying to equate two different terms, that is, “melting point” and “fluid
temperature,” these terms were not equivalent, and the property of one term
is not necessarily present in the other. Ans. 10. However, even assuming
that the “melting point” and “fluid temperature” are not equivalent
properties, the Examiner provided no persuasive argument or evidence to
rebut Appellants’ showing that the Specifications describe a method that will
inherently lower the fluid temperature of the ash slag. The Examiner did not
address Appellants’ arguments directed to Shepard’s disclosure regarding
“fluid temperature,” and therefore, did not properly consider whether this
extrinsic evidence made clear that the Specifications inherently disclose
lowering the fluid temperature of the ash slag. Id. at 11. Based on the
record before us, we agree with Appellants that the Specifications inherently
describe methods that result in lowering the fluid temperature of ash slag
such that one skilled in the art would reasonably conclude that the inventors
had possession of the claimed subject matter as recited in claims 24, 87, 109,
and 131.
Hence, we do not sustain the rejection under 35 U.S.C. § 112, first
paragraph, of claims 24, 87, 109, and 131, or claims 25, 26, 33, 34, 44, and
46-66, which depend from claim 24.
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The Examiner incorrectly found that claims 140 and 141 include the
disputed “fluid temperature” limitation. Ans. 4. Thus, we do not sustain the
rejection of these claims.
Claim 36
The Examiner found that claim 36 “refers to the melting point of the
second ash slag is less than 2600 degrees F,” and that this limitation was not
described in the specification in such a way as to reasonably convey to one
skilled in the relevant art that the inventors had possession of the claimed
invention at the time the application was filed. Ans. 4.
Appellants do not present specific arguments for how this temperature
limitation is disclosed in the Specifications, but appear instead to rely on
their contentions regarding the fluid temperature being less than 2600ºF.
App. Br. 19-20. Particularly, Appellants identify the same support for the
melting point being less than 2600ºF as for the fluid temperature being less
than 2600ºF. App. Br. 7.
First, Appellants contend that the Specifications disclose that ash slag,
in the absence of the iron-containing additive, melts at normal combustion
temperatures ranging from 2600 ºF to 3000ºF. App. Br. 20. Second,
Appellants contend that the Specifications also disclose that the iron-bearing
additive fluxes the ash slag and lowers its melting temperature. Id.
Appellants further contend that it must follow from these two points that the
“melting temperature” of the ash slag is reduced and less than 2600ºF. Id.
Additionally, Appellants rely on the statement in the Bisque Declaration that
page 20 and Figure 7 of the Non-provisional Specification show that the ash
slag is melted at a temperature below 1900ºF to support their position. Id.
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Initially, Appellants do not contend that the subject matter of claim 36
is explicitly described in the original disclosures of the Provisional and Non-
provisional applications. The Provisional application states that “[i]n order
to melt into a slag at normal combustion temperatures (2600-3000ºF),
cyclone furnaces are designed to burn coals whose ash contains high
amounts of iron.” Provisional Spec., p. 1, Abstract. The Non-provisional
application states that “[t]o melt ash into slag at normal combustion
temperatures (e.g., from about 2600 to about 3000ºF), slag-type furnaces,
such as cyclones, are designed to burn coals whose ash contains high
amounts of iron.” Non-provisional Spec., p. 2, ll. 14-15. It is unclear from
these portions of the Specifications that ash slag with the iron additive must
necessarily be melted at temperatures below 2600ºF; rather, these portions of
the Specifications merely state that ash with high amounts of iron is melted
into slag at normal combustion temperatures, and that an exemplary
temperature range is between about 2600 and 3000ºF. The Non-provisional
Specification further states that “[i]ron . . . reduces the melting temperature
of the ash” (Non-provisional Spec. 2, l. 17), but it is not clear that this
statement is a reference to an iron additive reducing the melting temperature
of ash to below this exemplary range (i.e., below 2600ºF). Rather, this
portion of the Non-provisional Specification can be interpreted as describing
that the presence of high amounts of iron in the ash reduces the melting
temperature of the ash to a temperature still within the normal combustion
temperatures (i.e., within the exemplary range of 2600- 3000ºF).
Regarding Appellants’ contention that Figure 7 and page 20 of the
Non-provisional Specification show that ash slag is melted at temperatures
below 1900ºF (App. Br. 20), the Examiner correctly noted that Figure 7 does
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not show temperatures below 1900ºF (Ans. 12). We note that Figure 8 does
show such temperatures. Figures 7 and 8 show that a temperature of ash
slag having a viscosity of 250 poise (T250) is below 2600ºF. Non-provisional
Spec., p. 20, ll. 14-21; figs. 7, 8. However, Appellants do not provide any
persuasive argument or evidence to show that “T250” is the same as the
“melting point” recited in claim 36. The Bisque Declaration states that
Figure 7 shows that the ash slag is melted at a temperature below 1900ºF
(Bisque Dec., page. 9, para. 22); however, Appellants do not provide any
persuasive argument or evidence that any of the temperatures below 1900ºF
is necessarily the same as the “melting point” recited in claim 36; rather,
melting of the ash slag may have begun at or been completed at different
temperatures.
Thus, we sustain the rejection of claim 36 under 35 U.S.C. § 112, first
paragraph.
Claims 45, 88, 110, and 132
The Examiner found that claims 45, 88, 110, and 132 “refer[] to . . .
the fluid temperature is less than 2600[ºF]” and that this limitation was not
described in the Specification in such a way as to reasonably convey to one
skilled in the relevant art that the inventors had possession of the claimed
invention at the time the application was filed. Ans. 4. Again, Appellants
do not contend that the subject matter recited in claims 45, 88, 110, and 132
is explicitly described in the original disclosures. As noted supra regarding
claim 36, Appellants contend that specific portions of the Specifications
show that “the melting temperature or the AFT characteristic fluid
temperature of the ash is reduced and less than 2600ºF.” App. Br. 20.
However, Appellants do not provide any persuasive argument or evidence
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that any temperature below 2600ºF shown in Figures 7 and 8 of the Non-
provisional Specification is the claimed “fluid temperature.” Appellants
state that the “fluid temperature” is “the temperature at which [an] ash cone
has melted to a nearly flat layer with a maximum height of 0.0625 in. (1.59
mm).” App. Br. 16. Appellants have not provided any persuasive evidence
that the Specifications show that ash slag at temperatures below 2600ºF
satisfies these characteristics of “fluid temperature.” Thus, we sustain the
rejections of claims 45, 88, 110, and 132 under 35 U.S.C. § 112, first
paragraph.
Claims 73, 78-81, 95, 100-102, and 122-124
The Examiner did not identify any specific limitation in any one of
claims 73, 78-81, 95, 100-102, and 122-124 that lacks written description
support. Ans. 4-5. Additionally, these claims depend directly from claim
68, 90, or 112, which are not included in this ground of rejection. Thus, we
do not sustain the rejection of claims 73, 78-81, 95, 100-102, and 122-124.
Rejection II
Regarding claims 24, 68, and 134, the Examiner found that Benner
discloses introducing a solid fuel (coal) into a boiler, an iron containing
material, and at least partially combusting the solid fuel to produce an ash
slag having a lower melting point than ash slag produced from combustion
of solid fuel alone. Ans. 5. The Examiner also found that Benner teaches
“‘[t]he presence of iron oxide in the coal is the chief cause of change in
melting point of the ash.’” Id. at 13 (citing Benner, p. 1, ll. 53-55). The
Examiner further found that Benner discloses fusible clay or rouge, which
contain iron, as possible reagents. Id.
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Appellants contend that Benner does not disclose how various forms
of iron oxide change the melting point of ash, specifically, whether and
under what conditions the various forms of iron oxide increase or decrease
the melting point of the ash. Reply Br. 8. Appellants also contend that
Benner discloses whether or not iron oxide does change the melting point of
ash depends on oxidizing conditions in the combustion chamber and the
amount of carbon in the ash. Id. (citing Brenner, p. 1, ll. 41-46 and 50-57).
Thus, Appellants contend that it is not clear how mill scale and BOF dust
impact the ash fusion temperatures or ash melting temperature. Id. at 9.
Benner discloses “methods of treating fuel in such a manner as to
raise or lower the melting point of the ash,” and discloses that “the softening
point of a coal ash may be raised by the addition of sand or a non-
ferruginous clay, while the softening point of the ash may be lowered by
adding lime or soda to the coal.” Benner, p. 1, ll. 7-9 and 71-75. Rather
than teaching that iron oxide necessarily lowers the melting point of coal
ash, Benner teaches that iron oxide in ash has different effects according to
the condition of the atmosphere of the combustion chamber and the amount
of the carbon in the ash, and whether there are oxidizing or reducing
conditions in the combustion chamber. Benner, p. 1, ll. 41-46 and 52-57.
Benner discloses that rouge and fusible clay are possible reagents to affect
the melting point of the ash, but fails to disclose that these reagents
necessarily lower the melting point of the ash, as required by claims 24, 68,
and 134.
In addition, as noted by Appellants, the Examiner did not provide
sufficient evidence or reasoning to support the finding that adding mill scale
or similar iron additives suggested by Hepworth would lower the melting
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point of coal ash. As admitted by the Examiner, Hepworth was not relied on
to teach using iron to lower the melting point of the ash, but Benner was.
Ans. 13. As noted supra, Benner fails to teach using iron or an iron
containing material to lower the melting point of ash. Also, the Examiner’s
reliance on Kalb as providing evidence that “low sulfur content with low
iron content and high alkali content coal is desirable for reduction of SO2
emissions”7 does not cure the deficiencies of Benner and Hepworth. Id. at 6.
Thus, the Examiner failed to establish by a preponderance of the evidence
that the applied combination of references teaches using mill scale or iron
oxide to lower the melting point of ash slag.
Hence, we do not sustain the rejection under 35 U.S.C. § 103(a) of
claims 24, 68, and 134, and their dependent claims 25, 26, 33, 34, 36, 44-53,
55, 56, 61-66, 69-74, 76, 77, 82-88, 135-1378, and 139-141.
Regarding claims 90 and 112, the Examiner found that Benner
discloses “viscosity.” Ans. 5 (citing Benner, p. 3, ll. 52-75). Based on this
finding, we understand the Examiner’s position is that Benner discloses
combusting a solid fuel with an iron-containing material results in an ash
slag having a viscosity lower than the viscosity of ash slag produced from
combustion of the solid fuel alone.
Appellants contend that Benner discloses that the degree of oxidation
or reduction of the iron oxide dramatically influences its behavior on

7 We note that Kalb (US 5,046,265; issued Sep. 10, 1991) is not listed in the
heading of this rejection (Ans. 5), but that the Examiner appears to have
relied on Kalb as an evidentiary reference to show the desirability of
reducing sulfur dioxide emissions (id. at 6).
8 Claim 137 depends from claim 1; however, claim 1 was cancelled. We
assume for the purpose of this appeal that claim 137 depends from claim
134.
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viscosity. Reply Br. 8. We understand Appellants’ contention to be that
Benner fails to disclose the use of iron-containing material to lower the
viscosity of ash slag.
Benner discloses that temperature changes inside the furnace and of
the slag may lead to considerable difficulties resulting from a change in the
viscosity of the coal ash slag. Benner, p. 3, ll. 58-63. Benner also discloses
that the introduction of a sufficient amount of a fluxing agent may lower the
melting point of the slag so that the slag can be drained from the furnace
bottom. Id. at p. 3, ll. 68-72. As noted supra regarding claims 24, 68, and
134, Benner fails to disclose that iron oxide or iron-containing material is
such a fluxing agent that lowers the melting point of slag, and therefore
would lower the viscosity of the slag. As noted supra, the Examiner’s
application of Hepworth and Kalb does not cure this deficiency of Benner.
Thus, the Examiner failed to establish by a preponderance of the evidence
that using mill scale or iron oxide lowers the viscosity of ash slag.
Hence, we do not sustain the rejection under 35 U.S.C. § 103(a) of
claims 90 and 112, and their dependent claims 91-96, 98, 99, 104-110, 113-
118, 120, 121, and 126-132.
Rejections III, IV, and V9
In applying the additional teachings of Khan, Pirsh, and Arai to reject
the remaining dependent claims, the Examiner did not articulate any
additional findings or reasoning that cure the deficiencies in the combination
of Benner, Hepworth, and Kalb. Thus, we also do not sustain the

9 Kalb is not listed in the heading of rejection III (Ans. 6), IV (id. at 7), or V
(id.). As the claims subject to these rejections depend from claims that are
included in rejection II, discussed supra, we also consider Kalb as being
relied on as an evidentiary reference in rejections III-V.
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obviousness rejections of claims 57, 58, 78, 79, 100, 101, 122, and 123 over
Benner, Hepworth, and Khan; claims 59, 60, 80, 81, 102, 103, 124, and 125
over Benner, Hepworth, and Pirsh; or claims 54, 75, 91, and 119 over
Benner, Hepworth, and Arai.
Rejection VI
Regarding claims 68, 90, 112, and 134, the Examiner found that
Hepworth discloses the invention substantially as claimed with the exception
of “low sulfur” coal. Ans. 8. The Examiner found that Kober teaches low
sulfur coal to meet environmental regulations, and determined that it would
have been obvious to modify Hepworth by including low sulfur coal as
taught by Kober to meet environmental requirements. Id. at 9 (citing Kober,
col. 2, l. 10).
In contrast, Appellants contend that it would not have been obvious to
modify Hepworth to use low sulfur coal because Hepworth is specifically
directed to the combustion of high sulfur coals, and Hepworth discourages
using low sulfur coals that are expensive and, if used, can cause further
distress in economically deprived Eastern coal-mining areas. App. Br. 30
(citing Hepworth, col. 1, ll. 22-32). Appellants contend Hepworth teaches
that the iron additive removes sulfur, but teaches nothing about its impact on
melting point or viscosity, and that Hepworth provides no incentive or
motivation to use low sulfur coals with the additive. Id.
Hepworth discloses a process for combusting sulfur in which iron
oxide containing materials are used as a sulfur sink to remove sulfur
compounds from sulfur-containing coal. Hepworth, col. 2, ll. 16-20.
Hepworth states “[i]t is accordingly desirable that economic means be found
whereby available high sulfur coals could be utilized without further
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contributing to the atmospheric pollution problem.” Hepworth, col. 1, ll. 28-
31. Thus, Hepworth teaches using iron-containing materials with high sulfur
coals to produce a combustion process that does not further contribute to
atmospheric pollution problems. The Examiner’s rationale for modifying
Hepworth-“for the purpose of meeting environmental requirements”-lacks
rational underpinnings because Hepworth already teaches a process for
combusting high sulfur coals without further contributing to atmospheric
pollution. The Examiner has not shown that using low sulfur coals in
Hepworth’s process would provide any additional beneficial effect.
Hence, we do not sustain the rejection of claims 68, 90, 112, and 134,
and their dependent claims 69-86, 91-108, 113-130, and 135-137.

DECISION
We AFFIRM the rejection of claims 36, 45, 88, 110, and 132, and
REVERSE the rejection of claims 24-26, 33, 34, 44, 46-66, 73, 78-81, 87,
95, 100-102, 109, 122-124, 131, 140, and 141 under 35 U.S.C. § 112, first
paragraph.
We REVERSE the rejections of claims 24-26, 33, 34, 36, 44-66, 68-
88, 90-110, 112-132, 134-137, and 139-141 under 35 U.S.C. § 103(a).
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.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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