Ex Parte Mao et alDownload PDFBoard of Patent Appeals and InterferencesApr 9, 201210864211 (B.P.A.I. Apr. 9, 2012) Copy Citation 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. 10/864,211 06/09/2004 Chien-Pei Mao (49370) 61053 7281 7590 04/09/2012 Edwards & Angell, LLP P. O. Box 55874 Boston, MA 02205 EXAMINER MCGRAW, TREVOR EDWIN ART UNIT PAPER NUMBER 3752 MAIL DATE DELIVERY MODE 04/09/2012 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 CHIEN-PEI MAO and JOHN SHORT ____________________ Appeal 2010-003779 Application 10/864,211 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, EDWARD A. BROWN, and WILLIAM V. SAINDON, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-003779 Application 10/864,211 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 31-39 under 35 U.S.C. § 103(a) as unpatentable over Bretz (US 2004/0139750 A1, pub. Jul. 22, 2004) in view of Masai (US 3,790,086, iss. Feb. 5, 1974). We have jurisdiction under 35 U.S.C. § 6(b). The Claimed Subject Matter Claim 31, reproduced below with added emphasis, is illustrative of the claimed subject matter. 31. A fuel injector comprising: a) a heat shield defining a longitudinal axis and having a conical outer surface; b) an air cap located outboard of the heat shield and having a conical inner surface, wherein an axially converging airflow channel is defined between the conical outer surface of the heat shield and the conical inner surface of the air cap; and c) a conical air swirler disposed within the axially converging airflow channel and having an upstream inlet surface and a downstream outlet surface, wherein the upstream inlet surface of the conical air swirler defines a two- dimensional plane, the conical air swirler having a plurality of axially extending circumferentially spaced apart turning slots located between the upstream inlet surface and the downstream outlet surface, wherein the spaced apart turning slots are bounded in part by the conical outer surface of the heat shield and the conical inner surface of the air cap, and wherein the spaced apart turning slots are further bounded by slot walls that are oriented normal to the two-dimensional plane of the upstream inlet surface of the conical swirler. SUMMARY OF DECISION We REVERSE and enter a NEW GROUND of REJECTION. App App spac dime e.g., with plan (dep Acco two- issue to re eal 2010-0 lication 10 The issu ed-apart tu nsional pl App. Br. 1 the base o e is norma icting the c rdingly, b dimension The Exa . Ans. 6-9 move lead Figure 3 X- an plane is page. plane an wider 03779 /864,211 The Ex e raised by rning slot ane of the 1-13. The f the cone l to that pl laimed tw oth the slo al plane. miner relie . Figure 3 lines and of Masai d Y-axes h parallel t The Z-axi d runs in a end of the O aminer’s Appellan s bounded upstream claimed t shape of t ane. Spec o-dimensi t walls an s on figur of Masai reference n depicts a f ave been o the claim s is norma nd out of cone to th o 3 PINION Obviousne ts in this a by slot wa inlet surfac wo-dimen he conical . 13:17-19 onal plane d the airflo e 3 of Mas , modified umbers, i ront view included fo ed two-di l to the cla the page. e smaller utward. ss Rejecti ppeal is w lls oriente e of a con sional pla swirler; th ; see also R with a bo w are nor ai to teach to include s provided of a conic r referenc mensional imed two Air would end, i.e. fr on hether Ma d normal t ical swirle ne is comm e airflow eply Br. ld black li mal to the the limita X- and Y below: al swirler. e. The X- plane and -dimension flow from om the pa sai teache o the two- r. See, ensurate into the 5, FIG. 3B ne). claimed tion at -axes and The Y the al the ge s Appeal 2010-003779 Application 10/864,211 4 Reviewing figure 3 of Masai, we agree with Appellants that the slot walls of the conical swirler in Masai are not oriented normal to the upstream inlet surface plane. We find that the slot walls are tilted with respect to the Z-axis, as shown in figure 3. If the slot walls were normal to the Z-axis, then the slot walls on the axis lines would be depicted more in line with the X- and Y-axes in the perspective view shown in figure 3. Instead of normal to the Z-axis, Masai describes this configuration of veins as “radial and inclined.” Col. 3, l. 15. Given the perspective shown in figure 3, “radial” would indicate that the vanes are extending from the conical surface and “inclined” would indicate that the vanes do not pass straight up the side of the cone but rather are inclined with respect to the top and bottom portions (i.e., as shown in figure 3, the walls twist as they move up the conical side). Upon passing through these vanes, the gas is ejected “in a conical and swirling flow with respect to the axis of the nozzle body.” Id., col. 4, ll. 1-2. Thus, the inclined vanes impart the swirl to the moving air. Accordingly, Masai’s drawings, bolstered by description in the written portion of the Masai disclosure, do not support the Examiner’s finding that Masai teaches the claimed turning slot walls. As such, we cannot sustain the Examiner’s rejection of claims 31-39, which relies on this unsupported finding. New Ground of Rejection Pursuant our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 31-39 for failing to comply with the written description requirement of 35 U.S.C. § 112, first paragraph. In particular, we do not find the written description demonstrates possession of the claimed invention having a feature “wherein the spaced apart turning slots Appeal 2010-003779 Application 10/864,211 5 are further bounded by slot walls that are oriented normal to the two- dimensional plane of the upstream inlet surface of the conical swirler.” This limitation is found in claim 31 and, by dependency, the remaining claims 32- 39. “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). This test “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. “Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. This inquiry is a question of fact. Id. (citing Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985)). Accordingly, we look to the Specification for support for the limitation at issue. Appellants first point to page 13, lines 17-19 of the Specification. App. Br. 6. This sentence, however, merely states that the flat surface 16 (i.e., the claimed two-dimensional plane) is oriented normal to the incoming fluid flow. This does not speak to the orientation of the slot walls. Appellants next point to page 14, line 6 through page 15, line 2. App. Br. 6. This section first states that the swirlers can be manufactured “by a number of different machining techniques” and then goes on to describe a particular and well-known wire EDM technique in further detail. Again, this section does not speak to the orientation of the slot walls. Further, the claims are not limited to a swirler manufactured by any particular technique nor does the record support a finding that any one of these manufacturing Appeal 2010-003779 Application 10/864,211 6 techniques necessarily produces slot walls that are oriented normal to the claimed two-dimensional plane. See also Ariad, 598 F.3d at 1352 (“a description that merely renders the invention obvious does not satisfy the [written description] requirement, Lockwood v. Am. Airlines, 107 F.3d 1565, 1571-72 (Fed.Cir.1997).”). Appellants then point to page 17, lines 15-17. App. Br. 6. This section describes “turning vanes 22” (the spaces between the vanes form the slots) but again, this section does not speak to the orientation of the slot walls (or the vanes forming the slot walls). Lastly, Appellants point to figures 3A, 4, 5A, 8, and 9. App. Br. 6. As we have established above, the Specification is silent as to the orientation of the slow walls, let alone the claimed orientation.1 Further, the drawings themselves do not clearly depict walls oriented as claimed. It is not clear whether figure 3A is a two- or three-dimensional view. In either case, it does not show the claimed orientation. Figure 3C depicts the walls, but the walls, like in Masai, appear inclined relative to normal. The walls are not so 1 It is also worth noting that the claimed orientation of the slot walls is unusual compared to the prior art (and commonly understood) use of the term “swirler.” A swirler would typically be understood by one of ordinary skill to impart swirl (i.e., spin) to the airflow with respect to the axis upon which it travels. For example, the air entering the base end of Masai’s conical swirler would strike the inside of the slot wall and exit the swirler with a clockwise swirl with respect to the path of the airflow. See, e.g., Masai, fig. 3, col. 3, ll. 18-23 (“gas will be conically swirled as it moves axially”); Bretz, para. [0035] (“circumferentially spaced apart angled slots formed in the annular ring 54 for imparting a swirling motion to the air assist current.”). In light of this evidence before us, it does not appear that one of ordinary skill would envision a “swirler” to include those that have slot walls in line with the airflow. See Ariad, 598 F.3d at 1351 (requiring “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art”). Appeal 2010-003779 Application 10/864,211 7 clearly oriented normal to the claimed two-dimensional plane such as to provide written description support absent further discussion in the written Specification. Figures 8 and 9 depict, on the upper half of the area in which the conical swirler lies, a line apparently normal to the claimed two- dimensional plane. However, this single line does not sufficiently notify one of ordinary skill in the art that the inventors invented a conical swirler “wherein the spaced apart turning slots are further bounded by slot walls that are oriented normal to the two-dimensional plane of the upstream inlet surface of the conical swirler.” See Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (A patentee demonstrates possession of the invention by describing it “in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention”). It is not apparent to us what that line in Figures 8 and 9 is intended to represent and Appellants’ suggestion that it depicts the claimed slot walls is, without more, insufficient to establish what it necessarily represents. We do not find any other portion of the Specification that provides support for slot walls oriented as claimed. We note that figures 2A, 2B, 7A, and 7B depict radial-type swirlers, an alternative to the claimed axial-type swirler. Spec., p. 12, ll. 12-21. The claimed invention does not encompass radial-type swirlers because radial-type swirlers do not intake air from an upstream surface defined by a two-dimensional plane, but rather a ring surrounding the swirler. See fig. 7B (depicting axially inward air intake). Accordingly, reviewing the Specification and drawings from the perspective of one of ordinary skill in the art, we find that the disclosure of the application does not “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad, 598 F.3d at 1351. Appeal 2010-003779 Application 10/864,211 8 DECISION As set forth above, we reverse the Examiner’s decision regarding claims 31-39 and enter a new ground of rejection for claims 31-39. FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner.… (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record.… 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). REVERSED; 37 C.F.R. § 41.50(b) mls Copy with citationCopy as parenthetical citation