Ex Parte PietiDownload PDFBoard of Patent Appeals and InterferencesMay 18, 200910478059 (B.P.A.I. May. 18, 2009) 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. 10/478,059 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). Appeal 2009-2143 Application 10/478,059 2 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. Appeal 2009-2143 Application 10/478,059 3 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. Appeal 2009-2143 Application 10/478,059 4 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.) Appeal 2009-2143 Application 10/478,059 5 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.) Appeal 2009-2143 Application 10/478,059 6 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 Appeal 2009-2143 Application 10/478,059 7 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.) Appeal 2009-2143 Application 10/478,059 8 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.) Appeal 2009-2143 Application 10/478,059 9 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. Appeal 2009-2143 Application 10/478,059 10 (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 Appeal 2009-2143 Application 10/478,059 11 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 Appeal 2009-2143 Application 10/478,059 12 VENABLE LLP P.O. BOX 34385 WASHINGTON DC 20043-9998 Copy with citationCopy as parenthetical citation