Ex Parte Provitola

Board of Patent Appeals and Interferences

Jul 31, 2003

09703302 (B.P.A.I. Jul. 31, 2003)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ANTHONY ITALO PROVITOLA
__________
Appeal No. 2003-0304
Application 09/703,302
___________
ON BRIEF
___________
Before FRANKFORT, NASE, and BAHR, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 19. Claim 20, the only other claim
remaining in the application, has been withdrawn from
consideration by the examiner as being directed to a non-elected
species.
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Application 09/703,302
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Appellant’s invention is directed to a gaseous-fuel
breathing rocket engine. As noted on pages 1-2 of the
specification, the preferred gaseous fuel is a gaseous fuel that
contains hydrogen, and the reservoir containing such gaseous fuel
may be the gas retaining structure of an airship, such as gas
bags, wherein the gaseous fuel serves as the lifting gas.
Independent claims 1, 15 and 16 are representative of the subject
matter on appeal and a copy of those claims may be found in
Appendix I of appellant’s brief.
The sole prior art reference relied upon by the examiner in
rejecting the appealed claims is:
Mirville 5,012,640 May 7, 1991
Claims 1 through 19 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Mirville.
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejection and the
conflicting viewpoints advanced by the examiner and appellants
regarding the rejection, we make reference to the examiner's
answer (Paper No. 13, mailed May 30, 2002) for the reasoning in
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Application 09/703,302
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support of the rejection, and to appellant’s brief (Paper No. 12,
filed April 2, 2002) and reply brief (Paper No. 14, filed June
24, 2002) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims, to
the applied prior art Mirville patent, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determinations which
follow.
While it is true that the schematic drawings of the present
application (Figs. 1-8) and the schematic representations of the
air-hydrogen turbo-jet engines of Figures 1-8 in the Mirville
patent appear to be identical, we agree with appellant that when
the explanation provided by the present specification is read and
associated with the reference numbers in the schematic drawings
of the present application, one of ordinary skill in the art
would clearly differentiate the disclosed invention of the
present application from that described and claimed in the
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Mirville patent, because Mirville does not disclose a gaseous-
fuel breathing rocket engine operating on the combustion of a
gaseous fuel compressed by an oxidizer driven turbine, as in the
present application.
Apparently, given the visual identity of the schematic
representations of Figures 1-8 of the present application and
those of Figures 1-8 of Mirville, the examiner is of the view
that the respective engines represented by those drawing figures
are structurally the same. In the paragraph bridging pages 5-6
of the answer, the examiner makes the following
observations/comments:
The fact that the claimed structure injects a gaseous
fuel (hydrogen) in the duct 10 and liquid oxygen through
injectors 17 does not make it patentable over the structure
taught by Mirville for injecting air in the duct 10 and
liquid hydrogen through injectors 17. A recitation with
respect to the material intended to be worked upon by a
claimed apparatus does not impose any structural limitations
upon the claimed apparatus which differentiates it from a
prior art apparatus satisfying the structural limitations of
that claimed. Therefore, injecting a gaseous fuel
(hydrogen) instead of air (materials to be worked upon) in
the duct 10 does not impose any structural limitations upon
the claimed apparatus which differentiates it from a prior
art apparatus (Mirville) satisfying the structural
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Application 09/703,302
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limitations of that claimed. Thus, Mirville satisfies all
the structural limitations claimed by applicant since the
material(s) to be worked upon (liquid or gaseous hydrogen,
air or liquid oxygen) does not impose any structural
limitations.
We note that an anticipation under 35 U.S.C. § 102(b) is
established when a single prior art reference discloses, either
expressly or under principles of inherency, each and every
element or limitation of a claimed invention. See In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed Cir
1997) and RCA Corp. v. Applied Digital Data Systems, Inc., 730
F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). However, we
observe that the law of anticipation does not require that the
reference teach what the appellant has disclosed but only that
the claims on appeal "read on" something disclosed in the
reference, i.e., all limitations of the claim are found in the
reference. See Kalman v. Kimberly Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S.
1026 (1984).
With the above as guidance, we look to claim 1 on appeal and
note that this claim is directed to a gaseous-fuel breathing
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rocket engine which includes a gaseous-fuel duct defining a
gaseous-fuel intake (30), a gaseous-fuel compressor (3) for
compressing gaseous fuel, a turbine assembly (6) disposed in an
annular chamber (8) and including at least one turbine rotor
blade (7) operatively associated with each of the compressor
blades, a source of liquid oxygen (24), a pump (25) for
transporting the liquid oxygen from the source to the annular
chamber so as to rotate the turbine, an oxygen exhaust path (16)
from the annular chamber, and one or more injectors (at 17) for
directing the oxygen into the gaseous-fuel duct for mixing with
the compressed gaseous fuel. By contrast, the air-hydrogen
turbo-jet engines of Figures 1-8 in the Mirville patent do not
include “a source of liquid oxygen” and “at least one pump for
transporting the liquid oxygen from the source into the annular
chamber so as to rotate the turbine rotor stage.”
Like appellant, we view claim 1 as being directed to a
combination, wherein a source of liquid oxygen is positively set
forth as part of the combination, along with at least one pump
for transporting the liquid oxygen from the source into the
annular chamber so as to rotate the turbine rotor stage. Since
the engines of Mirville have no “source of liquid oxygen” or pump
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for transporting the liquid oxygen from the source into the
annular chamber, it is clear to us that Mirville does not
anticipate appellant’s invention as defined in claim 1 on appeal.
Accordingly, the examiner’s rejection of claim 1, and of claims 2
through 14 which depend therefrom, will not be sustained.
Independent claims 15 and 16 on appeal, however, are of a
considerably different scope than claim 1 discussed above. In
both of claims 15 and 16 the gaseous-fuel breathing rocket engine
is defined in terms of either means or structure for performing a
function, with the result being that the functional recitations
of these claims each actually constitute merely an intended use
or capability of the recited means or structure, and do not
positively limit the structure or means in any other way. As an
example, we read appellant’s claim 15 on the engine seen in
Figure 1 of Mirville, noting that the engine of Figure 1 in
Mirville is a rocket engine capable of serving as a gaseous-fuel
breathing engine, and comprises a gas duct (11) defining an
intake capable of handling a gaseous fuel; means (3, 4) for
compressing any gas within the duct, including a gaseous fuel;
means (17) for injecting a gaseous material (e.g., fuel or
oxidizer) into the compressed gas flow downstream of the
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compressor means (3, 4); a turbine (6, 7) driven by expanding a
gaseous material (e.g., fuel or oxidizer) operatively associated
with the means for compressing; and means (1) operatively
associated with the gas duct for exhausting gases from the gas
duct.
Independent claim 16 on appeal is readable on the engine of
Figure 1 of Mirville in the following manner, noting particularly
that the engine of Figure 1 in Mirville is a rocket engine
capable of serving as a gaseous-fuel breathing engine, and
comprises a gas duct (11) defining an intake capable of handling
a gaseous fuel; a compressor (3, 4) disposed axially within the
gas duct for compressing any gas within the duct, including a
gaseous fuel; one or more injectors (17) for injecting a gaseous
material (e.g., fuel or oxidizer) into the compressed gas flow
downstream of the compressor (3, 4); a turbine (6, 7) operatively
associated with the compressor for driving the compressor,
wherein the turbine is driven by expanding a gaseous material
(e.g., fuel or oxidizer); and one or more nozzles (1) operatively
associated with the gas duct for exhausting gases from the gas
duct.
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Appellant’s contentions (brief, pages 10-11) that claims 15
and 16 are “similar to claim 1” and that the arguments applicable
to claim 1 apply equally as well to claims 15 and 16, are not
persuasive. As we have demonstrated above, claims 15 and 16 are
of an entirely different scope than claim 1 on appeal and those
claims are readable on the prior art engine of Mirville.
As a result of the foregoing, we will sustain the examiner’s
rejection of claims 15 and 16 under 35 U.S.C. § 102(b) as being
anticipated by Mirville.
In accordance with appellant’s grouping of the claims on
page 3 of the brief, we find that claims 17 through 19 will fall
with claim 16, from which they depend. Thus, the examiner’s
rejection of claims 17 through 19 under 35 U.S.C. § 102(b) as
being anticipated by Mirville is also sustained.
It follows from the above determinations that the decision
of the examiner rejecting claims 1 through 14 of the present
application under 35 U.S.C. § 102(b) is reversed, while the
decision rejecting claims 15 through 19 under 35 U.S.C. § 102(b)
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is affirmed. Thus, the decision of the examiner is affirmed-in-
part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JEFFREY V. NASE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
CEF:pgg
Appeal No. 2003-0304
Application 09/703,302
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Anthony I. Provitola
Post Office Box 2855
DeLand, FL 32721-2855