Ex Parte Lesieur

Board of Patent Appeals and Interferences

Sep 25, 2003

09332415 (B.P.A.I. Sep. 25, 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written for publication and is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROGER R. LESIEUR
_____________
Appeal No. 2002-0218
Application No. 09/332,415
______________
ON BRIEF
_______________
Before PAK, WARREN, and DELMENDO, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from
the final rejection of claims 1, 2, 7, 9, 12 through 20, 22, and
23, which are all of the claims pending in the application.
Claims 3-6, 8, 10, 11, and 21 have been canceled.
APPEALED SUBJECT MATTER
The subject matter on appeal is related to the subject
matter of another appeal, Appeal No. 2002-0249 (Application
09/321,390). This subject matter, like the previous subject
matter, is directed to autothermal reformer assemblies. Compare
Appeal No. 2002-0218
Application No. 09/332,415
1 The appellant has indicated (Brief, page 3) that claims 1,
2, 7, 9, 12, 16, 17, 19, 20 and 22 will stand or fall together,
claims 13-15 will stand or fall together, and claims 23 and
18 stand or fall separately. Therefore, for purposes of this
appeal, we limit our discussion to claims 1, 13, 18 and 23
consistent with 37 CFR § 1.192(c)(7)(2001). See In re McDaniel,
293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002)(“If
2
the claims on present appeal with the appealed claims in Appeal
No. 2002-0249. One of the novel aspects of the autothermal
reformer assemblies involved in the two appeals lies in employing
“an open cell foam catalyst bed that reduces the size and weight
of the reformer assembly.” Compare page 1 of the present
specification with page 1 of the specification of Application
09/321,390. This open cell foam catalyst bed is also said to
provide “an enhanced catalyst and heat transfer surface area
. . . and . . . an enhanced gas mixing and distribution flow
path.” Compare page 3 of the present specification, with page 3
of the specification of Application 09/321,390. However, the
autothermal reformer assembly in this appeal, unlike the previous
one, is directed to converting methanol and ethanol fuels, rather
than hydrocarbon fuels (claim 23) and employing a copper and/or
zinc catalyst bed subsequent a noble catalyst bed (claims 1, 20
and 22). Details of the appealed subject matter are illustrated
in representative claims 1, 13, 18, and 23 which are reproduced
below1:
Appeal No. 2002-0218
Application No. 09/332,415
the brief fails to meet either requirement [of 37 CFR § 1.192
(c)(7)(2001)] the Board is free to select a single claim from
each group of claims subject to a common ground of rejection as
representative of all claims in that group and to decide the
appeal of that rejection based solely on the selected
representative claim”).
3
1. A methanol and ethanol fuel gas autothermal
reformer assembly for converting a methanol or ethanol
fuel gas stream into a hydrogen-enriched process gas
stream, said assembly comprising:
a) a monolithic open cell foam catalyst bed, said
catalyst bed including an inlet end and an outlet end,
a first inlet region of said catalyst bed being
provided with a catalyst which is operable to combust a
portion of the fuel gas stream so as to raise the
temperature of said fuel gas stream in said first
region to a temperature in the range of about 300o to
about 500oF while inhibiting carbon deposition in
catalyzed cells of said foam catalyst bed, and said
catalyst bed further including a subsequent second
region which contains a copper and/or zinc catalyst;
b) a fuel gas stream inlet passage, said fuel gas stream
inlet passage being disposed in heat is transferred to said
fuel gas stream inlet passage exchange relationship with a
process gas stream outlet passage from said catalyst bed
whereby heat from the process gas stream is transferred to
said fuel gas stream inlet passage from the processed gas
stream;
c) an air inlet passage, said air inlet passage being
disposed in heat exchange relationship with the process gas
stream whereby heat from the process gas stream is
transferred to said air inlet passage; and
d) a fuel gas stream reforming catalyst deposited in said
foam catalyst bed.
Appeal No. 2002-0218
Application No. 09/332,415
4
13. The autothermal reformer assembly of Claim
1 wherein said foam catalyst bed includes an autothermal
reformer-operating temperature-compatible metal support
selected from the group consisting of stainless steel,
nickel alloys and iron-aluminum alloys.
18. The autothermal reformer assembly of Claim
1 wherein said air inlet passage contains an air/steam
mixture.
23. A methanol fuel gas autothermal reformer assembly
for converting a methanol fuel gas stream into a
hydrogen-enriched process gas stream, said assembly
comprising a monolithic open cell foam catalyst bed,
said catalyst bed including an inlet end and an outlet
end, an inlet portion of said catalyst bed being
provided with a noble metal catalyst which is operable
to combust a portion of the methanol fuel gas at a
temperature of about 200
F thereby enabling start up
of the reformer assembly while inhibiting carbon
deposition in catalyzed cells of said foam catalyst
bed.
PRIOR ART
In rejecting the claims under 35 U.S.C. § 103, the examiner
relies upon the following prior art references:
Dicks 3,904,554 Sep. 09, 1975
Narumiya et al. (Narumiya) 4,308,233 Dec. 29, 1981
Setzer et al. (Setzer) 4,415,484 Nov. 15, 1983
Sheller 5,384,009 Jan. 24, 1995
Bhattacharyya et al. (Bhatta) 5,498,370 Mar. 12, 1996
Clawson WO 98/08771 Mar. 05, 1998
(Published World Intell. Prop. Org. Application)
Appeal No. 2002-0218
Application No. 09/332,415
2 The examiner has withdrawn the Section 112 rejection set
forth in the final Office action dated December 27, 2000. See
the Answer, pages 2, 3 and 5.
5
REJECTIONS
The appealed claims stand rejected as follows2:
I. Claims 1, 2, 7, 9, 12-18, 20, and 22 stand provisionally
rejected under the judicially created doctrine of obviousness-
type double patenting as being unpatentable over claims 1 through
22 of copending Application Serial No. 09/321,390 in view of
Dicks;
II. Claims 19 and 23 stand provisionally rejected under the
judicially created doctrine of obviousness-type double patenting
as being unpatentable over claims 1 through 22 of copending
Application Serial No. 09/321,390 in view of Dicks and Clawson;
III. Claim 23 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the combined disclosures of Clawson, Narumiya
and Setzer;
IV. Claims 1, 2, 7, 9, 12, 16, 17, 19, 20, and 22 stand
rejected under 35 U.S.C. § 103 as being unpatentable over the
combined disclosures of Clawson, Narumiya, Setzer and Dicks;
V. Claims 13-15 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combined disclosures of Clawson,
Narumiya, Setzer, Dicks and Sheller; and
Appeal No. 2002-0218
Application No. 09/332,415
6
VI. Claim 18 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the combined disclosures of Clawson, Narumiya,
Setzer, Dicks, and Bhatta.
OPINION
We have carefully reviewed the claims, specification and
prior art, including all of the arguments advanced by both the
examiner and the appellant in support of their respective
positions. As a consequence of this review, we have made the
determinations which follow.
OBVIOUSNESS-TYPE DOUBLE PATENTING REJECTIONS
The examiner has provisionally rejected claims 1, 2, 7, 9,
12-20, 22 and 23 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over
claims 1 through 22 of copending Application Serial No.
09/321,390 in view of either Dicks or Dicks and Clawson. The
appellant has not challenged the examiner’s factual findings and
conclusions supporting the obviousness-type double patenting
rejections in question. Rather, the appellant asserts that
(Brief, page 16):
These rejections will not be addressed in this appeal
brief since they are not ripe for resolution at this
point in time.
Appeal No. 2002-0218
Application No. 09/332,415
3 We note that a decision affirming-in-part and reversing-
in-part the examiner’s rejections of the claims in copending
Application Serial No. 09/321,390 was mailed in May, 2003.
7
According to the appellant (Reply Brief, page 1),
it is impossible to have a provisional final
obviousness-type double patenting rejection which
relies on a co-pending patent application which has not
yet issued . . . . 3
We do not agree. Our reviewing courts have sanctioned and
reviewed provisional double patenting rejections based upon
claims in a copending application. See, e.g., In re Longi,
759 F.2d 887, 892, 225 USPQ 645, 648 (Fed. Cir. 1985) (double
patenting rejection over claims of three copending applications
affirmed on the merits); In re Mott, 539 F.2d 1291, 1296, 190
USPQ 536, 541 (CCPA 1976)(double patenting rejection under 37 CFR
§ 101 over claims in a copending application was held correct on
the merits but reversed because rejection was made final rather
than provisional); In re Wetterau, 356 F.2d 556, 558, 148 USPQ
499, 501 (CCPA 1966)(affirming provisional double patenting
rejection over claims in a copending application on the merits).
Therefore, it is our determination that the final provisional
obviousness-type double patenting rejections in question are
properly before us. However, the appellant has not disputed the
factual findings and conclusions set forth by the examiner.
Appeal No. 2002-0218
Application No. 09/332,415
4 In evaluating the prior art references, it is proper to
take into account not only the specific teachings therein, but
also the inferences which one skilled in the art would reasonably
be expected to draw therefrom. See In re Preda, 401 F.2d 825,
826, 159 USPQ 342, 344 (CCPA 1968).
8
Accordingly, we are constrained to summarily affirm the
examiner’s decision provisionally rejecting claims 1, 2, 7, 9, 12
through 20, 22 and 23 under the judicially created doctrine of
obviousness-type double patenting.
35 U.S.C. § 103
Under 35 U.S.C. § 103, to establish a prima facie case of
obviousness, there must be some objective teachings or
suggestions in the applied prior art references4 and/or knowledge
generally available to a person having ordinary skill in the art
that would have led such person to arrive at the claimed subject
matter. See generally In re Oetiker, 977 F.2d 1443, 1447-48,
24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992)(Nies, J., concurring);
In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
1991). The knowledge generally available to a person having
ordinary skill in the art would include the appellant’s admission
regarding what was known in the art at the time of the
appellant’s invention. See In re Nomiya, 509 F.2d 566, 570-71,
184 USPQ 607, 611-12 (CCPA 1975)(the admitted prior art in an
applicant’s specification may be used in determining the
Appeal No. 2002-0218
Application No. 09/332,415
9
patentability of a claimed invention); accord In re Davis, 305
F.2d 501, 503, 134 USPQ 256, 258 (CCPA 1962).
CLAIM 23
With the above precedents in mind, we turn first to the
rejection of Claim 23 under 35 U.S.C. § 103 as being unpatentable
over the combined disclosures of Clawson, Narumiya, and Setzer.
We observe that the appellant does not dispute the examiner’s
finding that Clawson discloses an autothermal reformer assembly
useful for converting alcohol (methanol and ethanol) fuels
corresponding to the claimed autothermal reformer assembly except
that its reforming catalyst is not supported by an open cell foam
carrier (support). Compare the Answer, pages 5-6, with the
Brief, pages 18-20
The dispositive question is, therefore, whether it would
have been obvious to employ an open cell foam carrier to support
the reforming catalyst of the autothermal reformer assembly
described in Clawson. On this record, we answer this question in
the affirmative.
We find that Clawson teaches that its reforming catalytic
materials, such as noble metals, can be supported on any carrier
and that the resulting reforming catalytic bed needs to be
sufficiently porous to allow the passage of gases. See page 16,
Appeal No. 2002-0218
Application No. 09/332,415
10
line 23 to page 17, line 7; page 19, line 29 to page 20, line 7;
and page 22, line 20 to page 23, line 2. We recognize that
Clawson does not specifically mention using an open cell foam
carrier as the carrier for its reforming catalyst.
However, we observe that it is admittedly known to be
desirable to reduce the size and weight of an autothermal
reforming assembly by focusing on the shapes and/or
configurations of reforming catalysts (inclusive of an inert
carrier which determines the catalyst shape or configuration).
See the specification, pages 2-3. We find that Narumiya teaches
an open cell foam carrier, which can be used with a reforming
catalytic material, such as a noble metal catalyst, and can be
used to reduce the weight and size of a purification device (a
small purification device for an exhaust gas). See column 2,
lines 45-65, column 3, lines 15-46 and column 4, lines 27-49. We
find that this open cell foam carrier also has properties useful
for and advantageous to the reforming zone of the autothermal
reformer assembly, such as decreasing pressure loss and improving
high heat resistance, small heat capacity, unreacted gas
conversion and porosity. See column 1, lines 40-47 and column 2,
lines 35-44.
Appeal No. 2002-0218
Application No. 09/332,415
11
Given the desire of one of ordinary skill in the art to
reduce the size and weight of an autothermal reformer assembly,
we concur with the examiner that one of ordinary skill in the art
would have been led to employ the open cell foam catalyst carrier
taught in Narumiya as the carrier for the reforming catalyst of
the autothermal reformer assembly described in Clawson, motivated
by a reasonable expectation of successfully reducing the size and
weight of the assembly and enhancing the heat transfer, gas
mixing and distribution, and gas conversion during the
autothermal reforming process. See, e.g., Nomiya, 509 F.2d at
572, 184 USPQ at 613 (“that knowledge of a problem provides a
reason or motivation for workers in the art . . . ”).
In reaching this determination, we recognize that Narumiya
is directed to employing its open cell foam catalyst carrier in a
purification device, rather than in a reforming zone of an
autothermal reformer assembly, as argued by the appellant.
However, as indicated supra, the appellant acknowledges that it
is known to be desirable in the autothermal reforming art to
reduce the size and weight of an autothermal reformer assembly
via selecting particular catalyst shapes and/or configurations.
We find that Narumiya is also interested in decreasing the size
and the weight of a purification device by employing a
Appeal No. 2002-0218
Application No. 09/332,415
5 Setzer is deemed cumulative and redundant since Clawson
teaches employing a reforming catalyst, such as a noble metal, on
any carrier. See Clawson, page 16.
12
particularly shaped or configured catalytic carrier (thus forming
a particularly shaped or configured catalyst). Therefore, from
our perspective, one of ordinary skill in the art interested in
reducing the size and weight of an autothermal reformer assembly
would have looked to the teachings of Narumiya to accomplish the
same. See, e.g., In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171,
174 (CCPA 1979)(a prior art reference is considered from an
analogous art if it is reasonably pertinent to the particular
problem with which the inventors were involved); Nomiya, 509 F.2d
at 572, 184 USPQ at 613 (“knowledge of a problem provides a
reason or motivation for workers in the art . . . ”). This is
especially true in this situation since Naurmiya teaches that its
open cell foam carrier can also be used together with a reforming
catalytic material, such as a noble metal, and has properties
appropriate and advantageous to the reforming zone of the
autothermal reforming assembly of the type described in Clawson
as indicated supra.
Accordingly, we affirm the examiner’s decision rejecting
claim 23 under 35 U.S.C. § 103 as unpatentable over the combined
disclosures of Clawson, Narumiya and Setzer5.
Appeal No. 2002-0218
Application No. 09/332,415
13
CLAIMS 1, 2, 7, 9, 12, 16, 17, 19, 20, and 22
We turn next to the examiner’s rejection of claims 1, 2, 7,
9, 12, 16, 17, 19, 20, and 22 under 35 U.S.C. § 103 as being
unpatentable over the combined disclosures of Clawson, Narumiya,
Setzer and Dicks. Much of the relevant disclosures of Clawson
and Narumiya are discussed above. We find nothing in Setzer and
Dicks which teaches or would have suggested the employment of a
copper and/or zinc catalyst bed subsequent to a noble metal
catalyst bed in the autothermal reformer assembly of the type
suggested by Clawson and Narumiya. Nor has the examiner
explained why one of ordinary skill in the art would have been
led to employ the above-mentioned catalysts in the claimed
sequence. Accordingly, we reverse this rejection.
CLAIMS 13 THROUGH 15
We turn next to the examiner’s rejection of claims 13-15
under 35 U.S.C. § 103 as being unpatentable over the combined
disclosures of Clawson, Narumiya, Setzer, Dicks and Sheller.
However, since the examiner does not rely on Sheller to remedy
the above deficiency, we reverse this rejection as well.
CLAIM 18
We turn next to the examiner’s rejection of claim 18 under
35 U.S.C. § 103 as being unpatentable over the combined
Appeal No. 2002-0218
Application No. 09/332,415
14
disclosures of Clawson, Narumiya, Setzer, Dicks and Bhatta. As
the examiner does not rely on Bhatta to remedy the above
deficiency indicated supra, we reverse this rejection as well.
CONCLUSION
The provisional rejection of claims 1, 2, 7, 9, 12-18, 20,
and 22 under the judicially created doctrine of obviousness-type
double patenting as being unpatentable over claims 1-22 of
copending Application Serial No. 09/321,390 in view of Dicks is
affirmed.
The provisional rejection of Claims 19 and 23 under the
judicially created doctrine of obviousness-type double patenting
as being unpatentable over claims 1-22 of copending Application
Serial No. 09/321,390 in view of Dicks and Clawson is affirmed.
The rejection of Claim 23 under 35 U.S.C. § 103 as being
unpatentable over the combined disclosures of Clawson, Narumiya
and Setzer is affirmed.
The rejection of Claims 1, 2, 7, 9, 12, 16, 17, 19, 20, and
22 under 35 U.S.C. § 103 as being unpatentable over the combined
disclosures of Clawson, Narumiya, Setzer, and Dicks is reversed.
The rejection of claims 13-15 under 35 U.S.C. § 103 as being
unpatentable over the combined disclosures of Clawson, Narumiya,
Setzer, Dicks, and Sheller is reversed.
Appeal No. 2002-0218
Application No. 09/332,415
15
The rejection of claim 18 under 35 U.S.C. § 103 as being
unpatentable over the combined disclosures of Clawson, Narumiya,
Setzer, Dicks, and Bhatta is reversed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
CKP:hh
Appeal No. 2002-0218
Application No. 09/332,415
16
WILLIAM W. JONES
6 JUNIPER LANE
MADISON, CT 06443