Ex Parte Paganessi et al

Board of Patent Appeals and Interferences

Aug 16, 2010

10813557 (B.P.A.I. Aug. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSEPH E. PAGANESSI and FREDERICK W. GIACOBBE
____________

Appeal 2009-011389
Application 10/813,557
Technology Center 1700
____________

Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-011389
Application 10/813,557

2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 10, 12, and 15-18, the only claims pending
in the Application. (Br.3 3.) We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention relates to “generating acetylene for direct on-site use in
a process such as carburization.” (Spec.4 1:10-11.) Claim 10, the sole
independent claim on appeal, is reproduced below from the Claims
Appendix to the Appeal Brief:
10. A method of generating and supplying acetylene,
comprising:

generating acetylene in an acetylene generation device by
directing at least one reactant feed stream including methane
into the acetylene generation device, wherein the acetylene
generation device comprises an arc plasma reactor including an
anode and a cathode disposed within the reactor, and the
acetylene is generated by generating plasma within the reactor
via a power supply connected to the anode and the cathode
thereby yielding acetylene and hydrogen according to the
formula:

2CH4 --------> C2H2 + 3H2;

directing the generated acetylene to an acetylene
processing device disposed in-line and downstream from the
acetylene generation device; and

operating the acetylene processing device to consume at
least a portion of the acetylene.

2 (Final Office Action (“Final”), mailed Apr. 17, 2008.)
3 (Appeal Brief, filed Nov. 17, 2008.)
4 (Specification, filed Mar. 31, 2004.)
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The Examiner maintains (Ans.5 3-6), and Appellants request review of
(Br. 6), the following grounds of rejection:
1. claims 10 and 12 under 35 U.S.C. § 103 as unpatentable over
Colton (US 3,256,358, issued Jun. 14, 1966) in view of Kubota (US
5,702,540, issued Dec. 30, 1997); and
2. claims 15-18 under 35 U.S.C. § 103 as unpatentable over
Colton and Kubota as applied to claim 10, and further in view of Hook (US
5,960,634, issued Oct. 5, 1999) as evidenced by Poor (US 7,033,446 B2,
issued Apr. 25, 2006).
Appellants rely on the same arguments in traversing both grounds of
rejection. Appellants’ arguments are directed to limitations found in
independent claim 10. The sole issue presented for our review is: did the
Examiner fail to establish a prima facie case of obviousness as to claims 10,
12, and 15-18 because the Examiner did not properly explain the motivation
for combining the methods of Colton and Kubota to form an in-line
processing method?
Appellants do not dispute the Examiner’s finding that Colton
discloses a step of generating acetylene in an acetylene generating device as
claimed in the first step of claim 10. (Cf. Br. 8.) Nor do Appellants dispute
the Examiner’s finding that Kubota discloses an acetylene processing device
which is capable of consuming acetylene generated from Colton’s acetylene
generating device. (See Br. 8, last para.) Rather, Appellants argue the
Examiner failed to properly explain the motivation for combining the Colton
and Kubota methods in the manner claimed. According to Appellants, “the
Examiner has merely provided the conclusory statement that it is obvious to

5 (Examiner’s Answer, mailed Feb. 20, 2009.)
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Application 10/813,557

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combine a generation process with an end use of a material generated in a
process.” (Br. 10.)
The Examiner, in response, explains that “one of ordinary skill in the
art at the time of the invention would . . . find motivation to place the
acetylene generation device and the acetylene processing device in a single
system in order to eliminate the additional costs of transportation of the
acetylene from one site to another.” (Ans. 7, ll. 2-5.) The Examiner also
states that it would have been within the level of skill of the ordinary artisan
to have connected Colton’s and Kubota’s devices at the same site via a
pipeline. (Ans. 8.)
[A]n implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but
when the “improvement” is technology-independent and the
combination of references results in a product or process that is
more desirable for example because it is stronger, cheaper,
cleaner, faster, lighter, smaller, more durable, or more efficient.
Because the desire to enhance commercial opportunities by
improving a product or process is universal-and even common-
sensical-we have held that there exists in these situations a
motivation to combine prior art references even absent any hint
of suggestion in the references themselves. In such situations,
the proper question is whether the ordinary artisan possesses
knowledge and skills rendering him capable of combining the
prior art references.
Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006).
Appellants have not addressed the above-quoted/cited explanation by
the Examiner regarding motivation to combine Colton and Kubota, which
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explanation we find to be reasonable.6 Nor have Appellants argued that the
ordinary artisan would not have possessed the knowledge and skills
necessary to combine the Colton and Kubota methods in the manner
claimed. (See generally, Br.) Absent such arguments, we are not convinced
of error in the Examiner’s obviousness determination. Accordingly, we
sustain both grounds of rejection.
The Examiner’s decision to reject claims 10, 12, and 15-18 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

kmm

LINDA K. RUSSELL
PATENT COUNSEL
AIR LIQUIDE
2700 POST OAK BLVD., SUITE 1800
HOUSTON, TX 77056

6 We note that Appellants have elected not to file a Reply Brief to the
Examiner’s Answer, see 37 C.F.R. § 41.41.