Ex Parte Mao et al

Board of Patent Appeals and Interferences

Apr 9, 2012

10864211 (B.P.A.I. Apr. 9, 2012)

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.

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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)

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