Ex Parte Mac Donald

Patent Trials and Appeals Board

May 21, 2019

14436986 - (D) (P.T.A.B. May. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/436,986 04/20/2015
158051 7590
FERDINAND ROMANO
ACCELIPLAW, PLLC
POBox427
COCOA, FL 32923
05/23/2019
FIRST NAMED INVENTOR
John Joseph Mac Donald
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.
12207-003 1060
EXAMINER
STECKBAUER, KEVIN R
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
05/23/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mromano@acceliplaw.com
fromano@acceliplaw.com
promano@acceliplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN JOSEPH MAC DONALD
Appeal2018-007006
Application 14/436,986
Technology Center 3700
Before MICHAEL J. FITZPATRICK, ANNETTE R. REIMERS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant, John Joseph Mac Donald, 1 appeals under 35 U.S.C.
§ 134(a) from the Examiner's final decision rejecting claims 28, 29, 32-38,
and 42--46. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies BMS-TEK, LLC. as the real party in interest. Appeal
Br. 1.
Appeal2018-007006
Application 14/436,986
STATEMENT OF THE CASE
The Specification
The disclosure "relates to internal combustion engines and, more
specifically, to systems and methods which reduce exhaust emissions [ such
as NOx] without degrading other engine performance parameters such as
fuel efficiency." Spec. ,I2; see also id. ,I3 (identifying NOx as an exhaust
emission).
The Rejected Claims
Claims 28, 29, 32-38, and 42--46 are rejected. Final Act. 1. The only
other pending claim, claim 39, is allowed. Id.
Claims 28 and 35 are independent. Appeal Br. 16-17. Claim 28 is
illustrative of the rejected claims and reproduced below with emphasis
added.
28. A method for operating an internal combustion
engine under dynamically varying
conditions, comprising:
injecting a liquid primary fuel into the engine;
monitoring a magnitude of an engine characteristic with a
sensor positioned to measure magnitudes of a first dependent
variable associated with combustion of the primary fuel source
in the presence of a secondary fuel source, the dependent
variable taken from the group consisting of exhaust gas
temperature, NOx content and SOx content;
injecting into the engine a combustible, gaseous product
comprising reactive hydrogen while injecting the primary fuel
into the engine; and
while the liquid primary fuel is being delivered into the
engine, continually adjusting the rate of delivery of the reactive
hydrogen into the engine as a function of change in engine
operation under the dynamically varying conditions, said
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Appeal2018-007006
Application 14/436,986
adjusting including, over a range of sixty percent to one
hundred percent of engine power, continually increasing the
rate of delivery of the reactive hydrogen into the engine as a
function of an increase in the rate at which the primary fuel is
delivered into the engine, to reduce NOx exhaust gas content.
Id. at 16 ( emphasis added).
The Appealed Rejection
The following rejection is before us for review: claims 28, 29, 32-38,
and 42--46 under 35 U.S.C. § 112(a)/i-fl. Final Act. 2. 2
DISCUSSION
Section 112 states, in part:
The specification shall contain a written description of the
invention, and of the manner and process of making and using it,
in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same.
35 U.S.C. § 112(a); see also 35 U.S.C. § 112 ,II (pre-AIA version stating the
same). "In order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide in haec verba support
for the claimed subject matter at issue." Purdue Pharma L.P. v. Faulding,
Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). Nonetheless, the disclosure
must convey with reasonable clarity to those skilled in the art that the
inventor was in possession of the invention. See id.
Independent claim 28 is directed to "[a] method for operating an
internal combustion engine under dynamically varying conditions." Appeal
2 The Examiner also rejected the same claims under 35 U.S.C. § 112(b )/i-f2
but he withdrew that rejection pursuant to amendments to independent
claims 28 and 35. Final Act. 4; Advisory Act. 1; Ans. 2.
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Appeal2018-007006
Application 14/436,986
Br. 16. Independent claim 35 is directed to "[a]n engine system." Id. at 17.
Each of independent claims 28 and 35 recites "over a range of sixty percent
to one hundred percent of engine power, continually increasing the rate of
delivery of the reactive hydrogen into the engine[] as a function of an
increase in the rate at which the primary fuel is delivered into the engine."
Id. at 16-17 ( emphasis added). The Examiner found that the Specification
lacked a written description of this limitation. Final Act. 3 ("Applicant's
Specification does not describe continually increasing the rate of delivery of
the reactive hydrogen as a function of an increase in primary fuel delivery
rate.").
Appellant does not identify an in haec verba teaching of this
limitation. Appellant argues that this limitation is taught nonetheless, albeit
indirectly. Appeal Br. 8-14. In that regard, Appellant relies, in particular,
on the last sentence of paragraph 36 and the first three sentences of
paragraph 37 as well as Figure 11. Id. at 8-12.
Figure 11 is reproduced below.
20 40 60
Engine Power in %
Figure 11
4
80 mo
Appeal2018-007006
Application 14/436,986
Figure 11, reproduced above, "illustrates a general relationship of a
minimum HHO [a form of reactive hydrogen] injection to achieve NOx
reduction as a function of engine power." Spec. i-f2 l ( emphasis added); see
also ,I37 ("Generally the HHO production level increases as a function of
engine output.").
As noted by Appellant, the Specification also discloses that "where
the engine power is increased [by] increasing the flow rate of a primary fuel
into the engine, control circuitry may adjust the rate of delivery of the
secondary fuel [ reactive hydrogen] as the rate of primary fuel delivery
changes." Spec. i-f36 ( cited at, e.g., Appeal Br. 11 ).
Piecing these disclosures together, Appellant argues the following:
The combustion which results in the illustrated increased engine
power is dependent on and a function of the increased rate of
primary fuel delivery. Thus, to provide the relationship between
reactive hydrogen delivery and engine power, as illustrated in
Figure 11, there must be a functional relationship between
reactive hydrogen delivery and primary fuel delivery.
Appeal Br. 10 ( emphasis added).
We are not persuaded by Appellant's arguments.
The Examiner finds as follows:
A person having ordinary skill in the art would have recognized
that because minimum reactive hydrogen injection increases
with increasing engine power and increasing engine power
corresponds to increasing rate of primary fuel delivery, a
relationship indirectly exists where increasing reactive hydrogen
injection may correspond to increasing rate of primary fuel
delivery. However, the mere existence of a relationship does not
impliedly, explicitly, or inherently suggest that one of the rate of
delivery of reactive hydrogen and the rate of delivery of primary
fuel is being controlled based on a mathematical function of the
other, especially when no algorithm, matrix, or mathematical
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Appeal2018-007006
Application 14/436,986
function is explicitly disclosed or suggested m the original
Specification.
Ans. 6-7. Thus, although the Specification discloses that minimum reactive
hydrogen delivery and primary fuel delivery are positively correlated, the
Specification does not describe controlling the former as a function of the
latter. In other words, the Specification does not describe that the rate of
hydrogen delivery can be calculated based on the rate at which the primary
fuel is delivered into the engine.
In making this finding, the Examiner states that he "has given the term
'a function' its ordinary and customary meaning (e.g. 'a mathematical
correspondence that assigns exactly one element of one set to each element
of the same or another set', as defined by Merriam-Webster, 10th Ed.), as
given by a person of ordinary skill in the art." Ans. 4. The Examiner's
construction, taken from extrinsic evidence, is consistent also with the
intrinsic evidence.
For example, original claim 1 recited, in part, "continually generating
( define term) a second signal which varies as a function of change in the first
sensor output signal, the second signal having a different magnitude than
that of the first sensor output signal from which it is derived ( e.g., as a
percentage of the first signal magnitude)." Spec. 16; see also id. at 17
( original claim 10 similarly using the term "function"). A person of ordinary
skill in the art would understand, in light of the Specification and the
identified extrinsic evidence, that the term "function" is being used in claims
28 and 35 to recite a mathematical correspondence between an input (i.e.,
"the rate at which the primary fuel is delivered into the engine") and an
output (i.e., "the rate of delivery of the reactive hydrogen into the engine").
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Appeal2018-007006
Application 14/436,986
The Specification as filed lacks a description of such a function and likewise
lacks a description of "continually increasing the rate of delivery of the
reactive hydrogen into the engine" based on such a function.
Accordingly, the rejection of claims 28, 29, 32-38, and 42--46 under
35 U.S.C. § 112(a)/i-fl is affirmed.
DECISION
The Examiner's rejection of claims 28, 29, 32-38, and 42--46 is
affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l)(iv).
AFFIRMED
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