Ex Parte Pieti

Board of Patent Appeals and Interferences

May 18, 2009

10478059 (B.P.A.I. May. 18, 2009)

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.
10/478,059 11/18/2003 Pauli Pieti 19380.0037 8034
26694 7590 05/18/2009
VENABLE LLP
P.O. BOX 34385
WASHINGTON, DC 20043-9998
EXAMINER
LU, JIPING
ART UNIT PAPER NUMBER
3743
MAIL DATE DELIVERY MODE
05/18/2009 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 PAULI PIETI
__________

Appeal 2009-2143
Application 10/478,059
Technology Center 3700
__________

Decided: May 18, 2009
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
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The following claims are representative.

39. A solid fuel burner, comprising:
a space for solid fuel to be burned;
a base bordering the space;
a top comprising a cover bordering the space;
at least one side wall bordering the space and extending between the base
and the top and including non-adjustable air intake openings; and
at least one substantially vertical fire pipe arranged inside the space, the fire
pipe comprising a wall, a lower end, an open upper end, openings in the
wall, and an air intake at the lower end, the fire pipe extending through the
cover such that a perpendicular distance between the fire pipe and the side
wall from the top to the base is constant.

40. A solid fuel burner, comprising:
a container comprising a bottom, a top including a cover and at least one
side all extending between the top and the bottom, the at least one side wall
comprising non-adjustable air intake openings;
a grate arranged inside the container within fixed distance from the bottom
of the container;
at least one substantially vertical fire pipe arranged within the container and
including a wall, a lower end, an upper end, and openings in the wall, the
fire pipe being open from its upper end, the fire pipe extending through the
cover such that a perpendicular distance between the fire pipe and the side
wall from the top to the base is equally large; and
an air intake operatively connected to the lower end of the fire pipe.

21. The burner according to claim 39, wherein the fire pipe is a perforated
pipe arranged in a substantially vertical position in the solid fuel space, in
which pipe the surface area of the openings is over 30%, advantageously at
least 40% of the entire surface area of the wall of the fire pipe remaining
inside the solid fuel space.

24. The burner according to claim 39, wherein it is a burner that can be
positioned in an existing furnace, or it can be used as such without the
surrounding furnace.

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26. The burner according to claim 24, wherein the burner comprises an air
intake pipe installed in a substantially horizontal position, said air intake
pipe being connected to the lower part of the fire pipe inside the container.

27. The burner according to claim 24, wherein it comprises a grate within a
fixed distance from the bottom of the container, inside the same.

Cited References

Martin 1,526,204 Aug. 17, 1926
Bush DE195379 Feb. 13, 1908
Figueroa 4,502,464 Mar. 5, 1985
Foltyn 1,586,548 June 1, 1926
Dorsch 21,046 July 27, 1858
Mauny FR 1,208,8021 Feb. 25, 1960

Grounds of Rejection
1. Claims 21-25, 28 and 29 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martin in view of Bush or Figueroa.
2. Claim 26 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Martin in view of Bush or Figueroa, and further in view of Foltyn.
3. Claims 27 and 40 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martin in view of Bush or Figueroa and Dorsch.
4. Claims 21-25, 28 and 29 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mauny in view of Bush or Figueroa.
5. Claim 26 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Mauny in view of Bush or Figueroa, and further in view of Foltyn.

1 English translation.
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6. Claims 27 and 40 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mauny in view of Bush or Figueroa and Dorsch.

ISSUE
The Examiner argues that it would have been obvious to one having
ordinary skill in the art at the time the invention was made to modify the
solid fuel burner of Martin to provide non-adjustable air intake openings to
the container sidewall as taught by Bush or Figueroa in order to improve the
combustion efficiency.
The Applicant argues that there is no motivation to combine the cited
references because Martin already suggests that complete combustion is
achieved by the burner.
The issue is: Is there motivation or a reason to combine the cited
references?

FINDINGS OF FACT
1. Martin shows a solid fuel burner comprising a space/container A with a
base/bottom, a top including a cover c and at least one side wall b extending
between the top and the bottom, a vertical fire pipe d with an air intake 10 at
lower end and an open upper end (page 1, lines 85-90) and openings 17 in
the wall which are arranged same as claimed. (Ans. 3.)
2. The fire pipe 13 extends through the cover c. (Ans. 3.)
3. The perpendicular distance between the fire pipe and the side wall from
the top to the base/bottom is constant. (Ans. 3.)
4. However, Martin does not show the side wall of the space/container
[stack d] including non-adjustable air intake openings. (Ans. 3.)
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5. Bush teaches a solid fuel burner with the side wall A of the
space/container [combustion chamber D] including non-adjustable air intake
openings C same as claimed. (Ans. 3.)
6. Figueroa teaches a solid fuel burner with the side wall 1 of the
space/container [fuel chamber 39] including non-adjustable air intake
openings 5a same as claimed. (Ans. 3.)
7. The Examiner concludes that, “it would have been obvious to one having
ordinary skill in the art the time the invention was made to modify the solid
fuel burner of Martin to provide non-adjustable air intake openings to the
container side wall as taught by Bush or Figueroa in order to improve the
combustion efficiency.” (Ans. 3.)
8. The Bush device can be arranged to distil combustion gases, arranged to
burn pellets and can be positioned in any manner one desires. (Ans. 4.)
9. The solid fuel burner of Martin as modified by Bush or Figueroa as above
includes all that is recited in claim 26 except for an air intake pipe installed
in a substantially horizontal position and connected to the lower part of the
fire pipe. (Ans. 4.)
10. Foltyn teaches a solid fuel burner with an air intake pipe 17 installed in
a substantially horizontal position and connected to the lower
part of the central air channel 31 for supplying air same as claimed. (Ans.
4.)
11. The Examiner concludes that “it would have been obvious to one having
ordinary skill in the art at the time the invention was made to further modify
the solid fuel burner of Martin to include a horizontal positioned … intake
pipe as taught by Foltyn in order to improve the combustion efficiency.”
(Ans. 4.)
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12. Dorsch teaches a solid fuel burner with a grate (movable plates l, 2)
arranged inside the container within a fixed distance from the bottom of the
container (see Fig. 1) which is the same as those claimed. (Ans. 5.)
13. The Examiner concludes that, it would have been obvious to one having
ordinary skill in the art to include a grate inside the container within fixed
distance from the bottom of the container as taught by Dorsch in order to
improve the combustion efficiency. (Ans. 5.)
14. Mauny shows a solid fuel burner comprising a space/container 1 with a
base/bottom 6, a top including a cover 11 and at least one side wall 1
extending between the top and the bottom, a vertical fire pipe 8 with an air
intake 7 at lower end and an open upper end 10 and openings 13,
14 in the wall which are arranged same as claimed. (Ans. 5.)
15. The fire pipe 8 extends through the cover 11. The perpendicular
distance between the fire pipe and the side wall from the top to the
base/bottom is constant. (Ans. 5.)
16. Mauny does not show the side wall of the space/container including
non-adjustable air intake openings.
17. The Examiner concludes that it would have been obvious to one having
ordinary skill in the art the time the invention was made to modify the solid
fuel burner of Mauny to provide non-adjustable air intake openings to the
container side wall as taught by Bush or Figueroa in order to improve the
combustion efficiency. (Ans. 6.)
18. The solid fuel burner of Mauny as modified by Bush or Figueroa as
above includes all that is recited in claim 26 except for an air intake pipe
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installed in a substantially horizontal position and connected to the lower
part of the fire pipe. (Ans. 6.)
19. Foltyn teaches a solid fuel burner with an air intake pipe 17 installed in
a substantially horizontal position and connected to the lower
part of the fire pipe 31 for supplying air same as claimed. (Ans. 6.)
20. The Examiner concludes that it would have been obvious to one having
ordinary skill in the art at the time the invention was made to further modify
the solid fuel burner of Mauny to include a horizontal positioned an intake
pipe as taught by Foltyn in order to improve the combustion efficiency.
(Ans. 6.)
21. Mauny shows a solid fuel burner comprising a space/container 1 with a
base/bottom 6, a top including a cover 11 and at least one side wall 1
extending between the top and the bottom, a vertical fire pipe 8 with an air
intake 7 at lower end and an open upper end 10 and openings 13,
14 in the wall which are arranged same as claimed. The fire pipe 8 extends
through the cover 11. (Ans. 7.)
22. In Mauny, the perpendicular distance between the fire pipe and the side
wall from the top to the base/bottom is constant. (Ans. 7.)
23. However, Mauny does not show the side wall of the space/container
including non-adjustable air intake openings and a grate arranged inside the
container within a fixed distance from the bottom of the container. Bush
teaches a solid fuel burner with the side wall A of the space/container
including non-adjustable air intake openings C same as claimed. (Ans. 7.)
24. Figueroa teaches a solid fuel burner with the side wall 1 of the
space/container including nonadjustable air intake openings 5a same as
claimed. (Ans. 7.)
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25. Dorsch teaches a solid fuel burner with a grate 1, 2 arranged inside the
container within a fixed distance from the bottom of the container (see Fig.
1) same as claimed. (Ans. 7.)
26. The Examiner concludes that it would have been obvious to one having
ordinary skill in the art the time the invention was made to modify the solid
fuel burner of Mauny to provide non-adjustable air intake openings to the
container side wall as taught by Bush or Figueroa and to include a grate
inside the container within fixed distance from the bottom of the container as
taught by Dorsch in order to improve the combustion efficiency. (Ans. 7.)
27. Bush discloses a firing plant with a central pipe open from its upper end.
(Bush, English Translation 1, and Fig. 1.)
28. Figueroa discloses a stove with a central flame opening 13. (Figueroa,
col. 1, ll. 64-67.)

ANALYSIS
We essentially agree with the Examiner’s prima facie case of
obviousness analysis, fact finding and responses to Appellants’ arguments
set forth in the Answer and adopt them as our own. We provide the
following clarifying comments:

--With respect to the rejection of claim 26 under 35 U.S.C. § 103(a) as
being unpatentable over Martin in view of Bush or Figueroa, and further in
view of Foltyn, and the rejection of claim 26 under 35 U.S.C. § 103(a) as
being unpatentable over Mauny in view of Bush or Figueroa, and further in
view of Foltyn, Appellants argue that in Foltyn, air tube 17 does not extend
to a central fire pipe. (App. Br. 10.)
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The Examiner finds, and we concur, that Fig. 2 of Foltyn shows the
air tube pipe 17 is connected to the central air channel 31 or pipe via semi
circular trough 15. (Ans. 10.)
Appellants argue that core structures 27 and 28 are only present when
sawdust is being packed into the heater and that after packing, they are
removed. (App. Br. 10.) Appellants argue since neither structure 27 and 28
are present during combustion that no air intake pipe is present during
combustion. (App. Br. 10-11.) We agree with the Examiner that when core
structures 27 and 28 are removed, what remains is the horizontal air intake
pipe 17 connected to the central air channel 31 via trough 15. (Ans. 10.)
Figure 4 of Foltyn shows air tube pipe 17 is connected to the central air
channel 31 or pipe and air channel 31 extends into the center of air tube pipe
17.

--With respect to the rejection of claims 21-25, 28 and 39 under 35
U.S.C. § 103(a) as being unpatentable over Mauny in view of Bush or
Figueroa, Appellants argue that Mauny does not suggest a fire pipe open
from its upper end. (App. Br. 13.)
Appellants do not separately argue the individual claims of this
rejection and therefore we select claim 39 as representative. Claim 39
recites “at least one substantially vertical fire pipe arranged inside the space,
the fire pipe comprising a wall, a lower end, an open upper end, openings in
the wall.”
Mauny discloses an incinerator with a draft tube chimney 8 which is
closed at its upper end 10 when in operation. (Mauny, English Translation
3.) Bush discloses a firing plant with a central pipe open from its upper end.
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(Bush, English Translation 1, and Fig. 1.) Figueroa discloses a stove with a
central flame opening 13. (Figueroa, col. 1, ll. 64-67.) Therefore, it would
have been obvious to one of ordinary skill in the art to have an open
chimney or central pipe in view of the known, suitable alternatives in the
prior art as evidenced by Bush and Figueroa. “When a work is available in
one field of endeavor, design incentives and other market forces can prompt
variations of it, either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401, 127 S.Ct.
1727, 1731 (2007). For the same reason, "if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill. …[A] court
must ask whether the improvement is more than the predictable use of prior
art elements according to their established functions." Id.

--With respect to the rejection of claims 27 and 40 under 35 U.S.C. §
103(a) as being unpatentable over Mauny in view of Bush or Figueroa and
Dorsch, Appellants argue that, in Mauny, the suction element is capped at its
higher end in order to avoid any external projection of sparks, and that
opening the fire pipe at the upper end would lead to the projection of sparks.
(App. Br. 15.) Appellants argue that this proposed modification of Mauny
would render its incinerator unsatisfactory. (App. Br. 15.)
Concerning this argument of Appellants, we note that “[a]lthough a
reference that teaches away is a significant factor to be considered in
determining unobviousness, the nature of the teaching is highly relevant, and
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must be weighed in substance. A known or obvious composition does not
become patentable simply because it has been described as somewhat
inferior to some other product for the same use.” In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994). In the present case, both Bush and Figueroa teach it is
known to have an open fire pipe in a stove, which may be inferior to Mauny,
itbut is still known and functional alternative.
Appellants further argue that the grate of Dorsch is closed while
burning and thus that it does not promote combustion. (App. Br. 15.) Claim
40 requires a grate arranged inside the container within fixed distance from
the bottom of the container. Dorsch describes a stove with such a movable
grate with lower and upper plates (1, 2) which are movable by handle (d).
When in the open position the grate promotes combustion. The motivation to
combine references does not have to be identical to patent owner’s to
establish obviousness. In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996).
In view of the above, we find that the Examiner has provided an
indication of motivation to combine the cited references and we affirm each
of the rejections before us.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

LP

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P.O. BOX 34385
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