Ex parte Pfefferle

Board of Patent Appeals and Interferences

Jul 28, 2000

08377861 (B.P.A.I. Jul. 28, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the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 WILLIAM C. PFEFFERLE
____________
Appeal No. 1998-1493
Application No. 08/377,861
____________
ON BRIEF
____________
Before STONER, Chief Administrative Patent Judge, ABRAMS, and
MCQUADE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-10, which constitute all of the
claims of record in the application.
The appellant's invention is directed to an emissions
control system for a rich-burn, small internal combustion
Appeal No. 1998-1493
Application No. 08/377,861
Our understanding of this reference was obtained from a1
PTO translation, a copy of which is enclosed.
2
engine (claims 1-7) and to a method of controlling carbon
monoxide emissions from such an engine (claims 8-10). The
claims on appeal have been reproduced in an appendix to the
Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Aronsohn 3,460,916 Aug. 12,
1969
Sabet 3,776,201 Dec. 4,
1973
Japanese publication 52-70222 Jun. 11,
1977
Samejima (Japanese reference) 1
THE REJECTIONS
Claims 1-10 stand rejected under 35 U.S.C. § 112, first
paragraph, as being drawn to a specification which fails to
provide an adequate disclosure.
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Application No. 08/377,861
3
Claims 1-10 also stand rejected under 35 U.S.C. § 103 as
being unpatentable over Samejima in view of Aronsohn and
Sabet.
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and the
appellant, we make reference to the Examiner's Answer (Paper
No. 9) and to the Appellant's Briefs (Papers No. 8 and 10).
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OPINION
In reaching our decision on the issues raised in this
appeal, we have carefully assessed the claims, the prior art
applied against the claims and the respective views of the
examiner and the appellant as set forth in the Answer and the
Briefs, and have applied to the various issues the guidance
provided by our reviewing court.
The Rejection Under 35 U.S.C. § 112, First Paragraph
According to the examiner (Answer, page 3):
It is not clear how swirler 9 (figures 1 or 2) can
create a low-pressure zone in the device. The
structure of the swirler is not clear.
We begin our analysis of this issue by noting that on page 7
of the specification the appellant discloses that the engine
exhaust gases may contact a swirler as they enter the muffler,
to promote mixing and reaction, and that the swirler "may also
be employed to create a low pressure region near the muffler
inlet and thus inhibit backflow of gases." He then goes on to
describe that the swirler utilizes the energy of the entering
gases to induce a rolling motion within the gases. The
swirler is shown diagrammatically in Figure 1, and is depicted
in Figure 2 as comprising a plurality of blades which are
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explained in the text as being "a spiral arrangement." In the
Brief, the appellant
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directs attention to four patents of record in which swirlers
are disclosed, and provides three pages from a publication
which he urges support his contention that swirlers create
areas of low pressure.
As stated in In re Marzocchi, 439 F.2d 220, 224, 169 USPQ
367, 370 (CCPA 1971), with regard to the issue of the support
provided in the disclosure, it is incumbent upon the Patent
Office, whenever a rejection on this basis is made, to explain
why it doubts the truth or accuracy of any statement in a
supporting disclosure and to back up assertions of its own
with acceptable evidence or reasoning which is inconsistent
with the contested statement. Otherwise, there would be no
need for the applicant to go to the trouble and expense of
supporting his presumptively accurate disclosure.
The appellant has shown and described the swirler in the
disclosure and, in response to the examiner's rejection, has
supplemented this by evidence supporting his position that
swirlers were known in the art and would function in the
manner stated in his specification and claims. The
dispositive issue is whether the appellant's disclosure,
considering the level of ordinary skill in the art as of the
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7
date of the appellant's application, would have enabled a
person of such skill in the art to make and use the
appellant's invention without undue experimentation.
From our perspective, the responses by the appellant
shifted the burden to the examiner to disprove the appellant's
assertions. This the examiner has not done, for he has failed
to comment upon the appellant's evidentiary offering, except
to agree that swirlers were known in the art, or to his
arguments, and has not advanced acceptable reasoning and/or
evidence to rebut the appellant's position. Therefore, the
examiner has not met his burden and the appellant's stand
essentially is uncontroverted on the record. This being the
case, we will not sustain the rejection of claims 1-10 under
35 U.S.C. § 112, first paragraph.
The Rejection Under 35 U.S.C. § 103
A prima facie case of obviousness is established when the
teachings of the prior art itself would appear to have
suggested the claimed subject matter to one of ordinary skill
in the art (see In re Bell, 991 F.2d 781, 782, 26 USPQ2d 1529,
1531 (Fed. Cir. 1993)). This is not to say, however, that the
claimed invention must expressly be suggested in any one or
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all of the references, rather, the test for obviousness is
what the combined teachings of the references would have
suggested to one of ordinary skill in the art (see Cable Elec.
Prods. v. Genmark, Inc., 770 F.2d 1015, 1027, 226 USPQ 881,
888 (Fed. Cir. 1985)), considering that a conclusion of
obviousness may be made from
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9
common knowledge and common sense of the person of ordinary
skill in the art without any specific hint or suggestion in a
particular reference (see In re Bozek, 416 F.2d 1385, 1390,
163 USPQ 545, 549 (CCPA 1969)), with skill being presumed on
the part of the artisan, rather than the lack thereof (see In
re Sovish, 769 F.2d 738, 742, 226 USPQ 771, 774 (Fed. Cir.
1985)). Insofar as the references themselves are concerned,
we are bound to consider the disclosure of each for what it
fairly teaches one of ordinary skill in the art, including not
only the specific teachings, but also the inferences which one
of ordinary skill in the art would reasonably have been
expected to draw therefrom (see In re Boe, 355 F.2d 961, 965,
148 USPQ 507, 510 (CCPA 1966) and In re Preda, 401 F.2d 825,
826, 159 USPQ 342, 344
(CCPA 1968).
According to the examiner, all of the subject matter
recited in claim 1 is disclosed by Samejima except for the
swirler. However, it is the examiner's position that the use
of such a device is taught by Aronsohn, and it would have been
obvious to one of ordinary skill in the art to add a swirler
to the treatment device of the primary reference because of
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Aronsohn's "showing of the desirability of doing so in a
similar environment" (Answer, pages 3 and 4). We do not
agree.
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Samejima is directed to an exhaust gas purifier. In this
system, an air ejector (3) entrains air into the exhaust gas
flow as it leaves the combustion chamber. The gas then enters
a
purifier (5), where at least a portion flows into a catalyst
chamber (9), there to be recombusted before flowing into a
thermal reactor chamber (10), from whence it is discharged to
the atmosphere. The portion of the gas that does not flow
through the catalyst chamber (a large amount at high engine
speeds) passes directly to the thermal reactor chamber, where
it in turn is recombusted by the high temperature recombusted
gas exiting the catalyst chamber.
The exhaust gas treatment muffler disclosed by Aronsohn
comprises a passive outside air intake (12) where air is added
to the exhaust gas, a combustion chamber having an ignitor
(14) and a turbulator (15) that receives the gas/air mix and
creates "turbulence or vortex action" therein (column 2, lines
15-16), and an afterburning zone. There is no teaching in
Aronsohn that the action of the turbulator creates a low
pressure region near the muffler inlet and, since the ignitor
and a sustaining catalyst bed are located at the intake side
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of the turbulator, it would appear that the combustion
occurring in this region would cause high pressure to be
developed there.
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The appellant's independent claim 1 requires that there
be
means within the reaction chamber for inducing
effective recirculation of the exhaust flowing
through said reaction chamber, and creating a low
pressure region in the reaction chamber proximal the
chamber inlet (emphasis added).
In the Samejima apparatus, a point "proximal the chamber
inlet" would be located at or near the outlet of pipe 6,
immediately above catalyst chamber 9. If a means for inducing
effective recirculation and for creating a low pressure area
were to be placed there, it seems to us that the Samejima
invention would be rendered inoperable, for the required flow
of at least some of the exhaust gas into the catalyst chamber,
which is vital to the operation of the Samejima system, would
be at the very least severely compromised, and perhaps even
destroyed. This, from our perspective, would be a
disincentive to the artisan to make the modification proposed
by the examiner.
Moreover, even if the proposed modification were made,
the resulting structure would not meet the terms of claim 1.
The Aronsohn turbulator would appear to meet the first "means"
requirement of inducing effective recirculation of the
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Application No. 08/377,861
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exhaust. However, it appears not to meet the second "means"
requirement of creating a low pressure area proximal the
chamber inlet, for there is no explicit teaching to this
effect in the patent, and there seems to be no reason to
assume that this would inherently be the case in view of the
fact that Aronsohn teaches that combustion takes place at the
upstream end of the turbulator.
Further consideration of the teachings of Sabet, which
was cited for its disclosure of using platinum as a catalyst
in an
exhaust gas steam, does not alleviate the problems elucidated
in the several preceding paragraphs with regard to the other
two references.
For the reasons set forth above, we conclude that the
combined teachings of the three references applied by the
examiner fail to establish a prima facie case of obviousness
with respect to the subject matter recited in independent
claim 1. This being the case, we will not sustain the
rejection of claim 1 or, it follows, of claims 2-7, which
depend therefrom.
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We reach the opposite result, however, with regard to
method claims 8-10. At the outset, we take note of the fact
that the examiner and the appellant have grouped these claims
with apparatus claims 1-7, and the appellant has failed to
separately argue with any reasonable specificity their
patentability over the applied prior art.
Independent claim 8 is directed to a "method of
controlling carbon monoxide and hydrocarbon emissions from a
rich-burn small internal combustion engine." With regard to
this language, it is our view that all three of the references
applied against claim 8
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disclose "rich-burn" engines in that all are directed to
disposing of combustibles that remain in the exhaust gases
after the fuel is burned in the engines, which indicates that
the mixture burned in the engine is "rich." As to the
designation of
"small," which the appellant has defined in the specification
as meaning "a displacement of about 800 cc, preferably between
100 and 600 cc" (page 5), while none of the references
explicitly state that the engines with which the disclosed
exhaust emission control devices are utilized fall into the
size range defined by the appellant, neither do they state
that they do not. Thus from our perspective and in the
absence of evidence to the contrary, one of ordinary skill in
the art would have recognized that the methods for controlling
emissions disclosed therein would be applicable to engines of
the appellant’s size range.
It is our opinion that Aronsohn discloses all of the
steps recited in claim 8. In the Aronsohn arrangement, the
exhaust gas pulses are passed through a nozzle to provide a
gas jet
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Application No. 08/377,861
With regard to our reliance on Aronsohn alone,2
anticipation is the epitome of obviousness. See In re
Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (1982).
17
(step a), and this jet is passed into the end of a flow duct
to induct air into the exhaust gas (step b). At this point,
as explained in column 2 at lines 17-19, the inducted air and
the exhaust gas are mixed homogeneously by the turbulator
(step c). Inherent in the turbulator evolution would be the
final step of claim 8 (step d), reacting the carbon monoxide
and hydrocarbons with oxygen, which would produce carbon
dioxide and water. In this regard, we note that Aronsohn also
teaches using catalysts to line portions of his device to
promote the desired exhaust gas cleaning reactions.
We therefore conclude that the teachings of the applied
prior art establish a prima facie case of obviousness with
regard to the method recited in claim 8, and the rejection of
claim 8 is sustained. In view of the appellant’s election to2
group all of the claims together (Brief, page 3), claims 9 and
10 fall with claim 8, from which they depend.
SUMMARY
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The rejection of claims 1-10 under 35 U.S.C. § 112, first
paragraph, is not sustained.
The rejection of claims 1-7 under 35 U.S.C. § 103 is not
sustained,
The rejection of claims 8-10 under 35 U.S.C. § 103 is
sustained.
The decision of the examiner is affirmed-in-part.
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No period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
BRUCE H. STONER, JR. )
Chief Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. MCQUADE )
Administrative Patent Judge )
Appeal No. 1998-1493
Application No. 08/377,861
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JOSEPH T. EISELE
KANE, DALSIMER, SULLIVAN, KURUCZ,
LEVY, EISELE AND RICHARD
711 THIRD AVENUE
NEW YORK, NY 10017-4059
Shereece
Appeal No. 1998-1493
Application No. 08/377,861
APJ ABRAMS
APJ
APJ KEYBOARD()
AFFIRMED-IN-PART
Prepared: April 25, 2001