Ex Parte Quanci et alDownload PDFPatent Trial and Appeal BoardMay 8, 201814839493 (P.T.A.B. May. 8, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/839,493 08/28/2015 25096 7590 05/10/2018 PERKINS COIE LLP - SEA General PATENT-SEA P.O. BOX 1247 SEATTLE, WA 98111-1247 FIRST NAMED INVENTOR John Francis Quanci 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 084553-8035.USOO 8708 EXAMINER PILCHER, JONATHAN L ART UNIT PAPER NUMBER 1772 NOTIFICATION DATE DELIVERY MODE 05/10/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): patentprocurement@perkinscoie.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN FRANCIS QUANCI, CHUN WAI CHOI, PARTHASARATHY KESA VAN, KATHARINE E. RUSSELL, KHAMBATH VICHITVONGSA, JEFFREY SCOTT BROMBOLICH, RICHARD ALAN MROZOWICZ, and EDWARD A. GLASS Appeal2018-001544 Application 14/839,493 Technology Center 1700 Before CATHERINE Q. TIMM, JEFFREY R. SNAY, and DEBRA L. DENNETT, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE 1 In explaining our Decision, we cite to the Specification of August 28, 2015 (Spec.), the Final Office Action of September 1, 2016 (Final), the Appeal Brief of April 24, 2017 (Appeal Br.), the Examiner's Answer of September 29, 2017 (Ans.), and the Reply Brief of November 29, 2017 (Reply Br.). Appeal2018-001544 Application 14/839,493 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner's decision to reject claims 1-10 and 13-23. 3 We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM and ENTER A NEW GROUND OF REJECTION. The claims are directed to a method of increasing a coal processing rate of a coke oven. See, e.g., claims 1, 16, 19, and 21. Claim 16 is illustrative: 16. A method of increasing a coal processing rate of a coke oven, the method comprising: charging a bed of coal into a coke oven in a manner that defines an operational coal charge; the coke oven having a designed maximum coal processing rate that is defined by a designed maximum coal charge and a designed maximum coking time associated with the designed maximum coal charge; the operational coal charge being less than the designed coal maximum charge; coking the operational coal charge in the coke oven over an operational coking time to define an operational coal processing rate; the operational coking time being less than the designed maximum coking time; wherein the operational coal processing rate is greater than the designed maximum coal processing rate. Appeal Br. 22 (claims appendix). 2 Appellant is the Applicant, SunCoke Technology and Development LLC., which, according to the Brief, is the real party in interest. Appeal Br. 2. 3 Claims 11 and 12 are pending, but not rejected. The Examiner indicates that claims 11 and 12 would be allowable if rewritten in independent form. Final 12. 2 Appeal2018-001544 Application 14/839,493 The Examiner maintains the following rejections: A. The rejection of claims 16-18 under 35 U.S.C. § 102(a)(l) as anticipated by MacDonald; 4 B. The rejection of claims 1-9, 13, 14, and 19-23 under 35 U.S.C. § 103 as obvious over Sturgulewski5 in combination with MacDonald; C. The rejection of claim 10 under 35 U.S.C. § 103 as obvious over Sturgulewski and MacDonald, and further Schucker; 6 and D. The rejection of claim 15 under 35 U.S.C. § 103 as obvious over Sturgulewski and MacDonald, and further Thompson. 7 OPINION As an initial matter, there is an issue of claim interpretation to be resolved. All the independent claims set forth parameters recited as designed maxima. See, e.g., claims 1, 16, 19, and 21. For instance, claim 16 recites a coke oven "having a designed maximum coal processing rate that is defined by a designed maximum coal charge and a designed maximum coking time associated with the designed maximum coal charge" (claim 16). Claim 1 recites a coke oven "having a designed maximum coal charge capacity and a designed maximum coking time associated with the designed maximum coal charge" (claim 1 ). Claim 19 requires coking times be less than "a designed maximum coking time" (claim 19). Claim 21 recites the 4 MacDonald, US 4,124,450, issued November 7, 1978. 5 Sturgulewski, US 6,059,932, issued May 9, 2000. 6 Schucker et al., US 6,964,236 B2, issued November 15, 2005. 7 Thompson, US 3,784,034, issued January 8, 1974. 3 Appeal2018-001544 Application 14/839,493 method as directed to a method of increasing a coal processing rate of a coke oven "having a designed coal volume per charge and a designed coking time associated with the designed coal volume per charge" and requires charging coal into the coke oven so the charge is less than "the designed maximum coal volume per charge" (claim 21 ). In responding to Appellant's arguments against the rejection of claim 16, the Examiner determines that, under the broadest reasonable interpretation the terms "designed maximum coal processing rate", "designed maximum coal charge", and "designed maximum coking time associated with the designed maximum coal charge" are somewhat arbitrary in scope. For example, the "a designed maximum coal charge" could be interpreted as the maximum amount of coal that will fit into a coke oven, the maximum amount of coal that can be safely coked in a coke oven as determined by an operator, the maximum amount of coal that is to be charged to a coke oven according to a process designed by a particular person, or simply as the largest amount of coal that an operator has contemplated charging to an oven. Ans. 10. Appellant responds that paragraph 98 of the Specification "clearly defines the subject claim limitations." Reply Br. 3. The Examiner's analysis and Appellant's response bring up a question of what "designed maximum" means and whether the language is definite in the context of the claims. We determine that the language is, as explained by the Examiner, susceptible to various meanings. This results in indefiniteness. When a claim is amenable to two or more plausible claim constructions, the claim is indefinite for failing to particularly point out and distinctly claim the subject 4 Appeal2018-001544 Application 14/839,493 matter that Appellants consider to be the invention. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008). Because the claim language "designed maximum" is indefinite, we enter a new ground of rejection under 35 U.S.C. § 112(b) as follows. New Ground under§ 112 (b) Claims 1-23 are rejected under 35 U.S.C. §112(b) as failing to particularly point out and distinctly claim the subject matter the applicant regards as the invention. First, we determine that the Specification does not provide adequate guidance as to the meaning of the phrase "designed maximum." The definiteness of the language employed in a claim must be analyzed not in a vacuum, but in light of the teachings of the particular application, In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). As pointed out by Appellant, the most relevant part of the Specification is paragraph 98, which reads in part: The coke oven is at least partially defined by a maximum designed coal charge capacity (volume per charge). In some embodiments, the maximum designed coal charge capacity is defined as the maximum volume of coal that can be charged into a coke oven according to the width and length of a coke oven multiplied by a maximum bed height, which is typically defined by a height of downcomer openings, formed in the coke oven's opposing side walls, above the coke oven floor. The volume will further vary according to the density of the coal charge throughout the coal bed. The maximum coal charge of the coke oven is associated with a maximum coking time (the designed coking time associated with the designed coal volume per charge). The maximum coking time is defined as the longest amount of time in which the coal bed may be fully coked. The maximum coking time is, in various embodiments, constrained by the amount of volatile matter within the coal bed that may be converted into heat over the duration of the coking 5 Appeal2018-001544 Application 14/839,493 process. Further constraints on the maximum coking time include the maximum and minimum coking temperatures of the coking oven being used, as well as the density of the coal bed and the quality of coal being coked. Spec. i-f 98. Paragraph 98 provides definitions for "the maximum designed coal charge capacity" and "maximum coking time," but these definitions do not render the "designed maximum" parameters of the claims definite. Paragraph 98 's definition of the maximum designed coal charge capacity does not exclude other definitions. This is because the definition is only for "some embodiments." See Spec. i-f 98 ("[i]n some embodiments, the maximum designed coal charge capacity is defined as the maximum volume of coal that can be charged into a coke oven ... ") (emphasis added). This definition leaves open the possibility of defining the maximum designed coal charge in another way for other embodiments. It is not a strictly limiting definition for the purposes of the claims, which are not limited to any particular embodiment. Also, the sentence after the definition states that "[t]he volume will further vary according to the density of the coal charge throughout the coal bed." Id. Thus, the maximum designed coal charge capacity of coal (volume per charge) is not only dependent on the width, length, and height of the oven, but also on the density of the coal charge. So there will be a maximum designed coal charge capacity for non-compacted coal that is different than the maximum designed coal charge capacity for a given higher density coal charge for a given coke oven. The existence of different potential values of the designed maximum coal charge renders the claim indefinite because it is not known which density coal is being selected for 6 Appeal2018-001544 Application 14/839,493 the recited "a designed maximum coal charge" of the claims. See, e.g., claim 16. We note as well that the claims use a different phrasing than the Specification, using, for instance, "designed maximum" instead of "maximum designed." This leads to further confusion. The claims also use "designed maximum coal charge" (claim 16) and "designed maximum coal volume per charge" (claim 21) instead of "maximum designed coal charge capacity" leading to questions of whether these terms have different meanings and leading to more confusion. Next we consider whether the prior art sheds any light on the meaning of "designed maximum" to the ordinary artisan. See In re Moore, 439 F .2d at 1235 (holding that the definiteness of the language must also be analyzed in light of the prior art). We note that there is no evidence in this appeal record indicating that the "designed maximum" terms recited in the claims have a customary meaning in the art. Given that the definitions in the Specification are only for "some embodiments" and are variable, and given the lack of evidence supporting a determination that the terms had a known meaning in the art, we determine that the scope of the claims are indefinite. As pointed out by the Examiner, the terms can be defined in various ways and are arbitrary in scope. This fact supports an indefiniteness rejection. "As the statutory language of 'particular[ity ]' and 'distinct[ ness ]' indicates, claims are required to be cast in clear-as opposed to ambiguous, vague, indefinite-terms." In re Packard, 751F.3d1307, 1313 (Fed. Cir. 2014). Applying an indefiniteness rejection now, before any claims issue in a patent, gives Appellant the 7 Appeal2018-001544 Application 14/839,493 opportunity to bring clarity to the claim language. See In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014) (Affirming an indefiniteness rejection because Packard had been given the opportunity to bring clarity to his claim language stating that "[i]n some cases it is difficult enough for courts to construe claims when the draftsperson has made every effort to be clear and concise, let alone when the claims have readily observable ambiguities or incoherencies within them."). Thus, we apply a new ground of rejection per our authority under 37 C.F.R. § 41. 50(b) and reject claims 1-23 under 35 U.S.C. § 112(b) as indefinite. Anticipation Turning to the rejection of claims 16-18 under 35 U.S.C. § 102(a)(l) as anticipated by MacDonald, we note that Appellant does not argue any claim apart from the others. Appeal Br. 7-10. Thus, we select claim 16 as representative for resolving the issue on appeal. The issue is: Has Appellant identified a reversible error in the Examiner's finding that MacDonald teaches a method of charging a bed of coal into a coke oven with an operational coal charge that is less than the designed maximum coal charge and coking the operational coal charge for a time that is less than the designed maximum coking time? Appellant has not identified such an error. The Examiner finds that MacDonald describes the method required by claim 16 in Figure 5 and column 8, lines 10-16. According to column 8, lines 10-16, Figure 5 illustrates the useful temperature ranges for MacDonald's coking process. MacDonald col. 8, 11. 10-16. Figure 5 is a graph of temperature (y-axis) versus coking time (x-axis). Figure 5 graphs 8 Appeal2018-001544 Application 14/839,493 coking time from the time of the charging of the coal (at charge) to 48 hours (at pull or pushing and quench). According to MacDonald, the graph lines are based on a 48-hour coking period for a coal charge that is 42 inches deep. Id. Although the graph lines are based on a 42 inch deep coal charge coked for 48-hours, MacDonald states that "[a]pproximately the same temperature ranges will exist over a compressed period of time of 24 hours when the coal charge is between 22 to 24 inches deep." Id. By stating that the graph is also relevant for a process of coking a 22 to 24 inch deep coal charge coked for 24 hours, MacDonald conveys that coking a 22 to 24 inch deep charge for 24 hours is a known method for use in a coking oven able to hold a least 42 inch charge. MacDonald, by graphing only up to a 48 hour discharge time and stating that this time is associated with a 42 inch deep charge further conveys that the 42 inch deep charge is the maximum coal charge MacDonald contemplates. Whether this 42 inch deep charge is "a designed maximum coal charge" or its volume is "a designed maximum coal charge" is not critical. It is reasonable to find that the designed maximum coal charge is more than that of a 22 to 24 inch deep charge whether the designed maximum is a 42 inch deep charge (or its volume) or some larger charge. Likewise, the 24 hour coking time will be less than the designed maximum coking time, which is assumedly 48 hours. Because the operational rate is a value calculated based on the charge and time, it follows that the rate based on a 22 to 24 inch deep charge coked in 24 hours is greater than the designed maximum coal processing rate. A preponderance of the evidence supports the Examiner's finding that MacDonald describes a method meeting the charging and coking steps of claim 16. 9 Appeal2018-001544 Application 14/839,493 Obviousness The Examiner rejects claims 1-9, 13, 14, and 19-23 under 35 U.S.C. § 103 as obvious over Sturgulewski in combination with MacDonald and adds further prior art references to reject claims 10 and 15. Appellant's focus is on claim 1. Appeal Br. 11-17. Thus, we select claim 1 as representative. To reject claim 1, the Examiner relies on Sturgulewski for its teaching of a coal charging system. Final 5. There is no dispute that the coal charging system taught by Sturgulewski is positioned at least partially within a coke oven as required by claim 1, the argument is that Sturgulewski does not discuss the designed maximums of the coke oven. Appeal Br. 12. This argument fails because the Examiner found that "every oven inherently has a maximum or designed coal charge capacity and a maximum or designed coking time associated with the maximum coal charge," and Appellant acknowledges this is so. Compare Final 5, with Appeal Br. 12. Appellant contends that Sturgulewski does not discuss this inherent trait of all ovens, but this lack of discussion is immaterial. The fact that the traits are inherent is enough to support the rejection. See, e.g., Gen. Elec. Co. v. Jewel Incandescent Lamp Co., 326 U.S. 242, 249 (1945) ("It is not invention to perceive that the product which others had discovered had qualities they failed to detect."). The inherent traits (designed maxima) at issue define threshold values for the two operational coal charges and two coking times. As long as the charges and times are less than the respective "designed maximum," the charges and times are within the scope of the charge levels and times encompassed by the clams. The Examiner has provided evidence that it was 10 Appeal2018-001544 Application 14/839,493 known in the art to use operational coal charges and coking times less than the designed maxima. Final 5---6 (citing MacDonald's disclosure of 22 to 24 inch deep charges coked for 24 hours). That the designed maximum might be more than that of the 42-inch deep charge is of no matter, the operational charge of 22 to 24 deep will still be less than the designed maximum. Appellant has not identified a reversible error in the Examiner's finding. Appellant contends that neither Sturgulewski nor MacDonald teaches or suggests that a sum of the first operational coal charge and the second operational coal charge exceeds a weight of the designed maximum coal charge capacity as further required by claim 1. Appeal Br. 13-14. But, as pointed out by the Examiner, MacDonald teaches coking a 42 inch deep charge for 48 hours and coking a 22 to 24 inch charge for 24 hours. Ans. 14; see also MacDonald col. 8, 11. 10-16. Although some natural compacting in the 42 inch deep charge may increase the density of that charge, we agree with the Examiner that it is reasonable to find that the sum of two of MacDonald's 22 to 24 inch charges will still outweigh a 42 inch deep charge and Appellant's Figure 38 fails to prove otherwise. Ans. 15-16. Figure 38 plots coking time against coal bed density, but there is no evidence that the densities reported in Figure 3 8 correlate with the densities that would occur in MacDonald's charges, none of which are disclosed as extruded or otherwise treated to increase density. A preponderance of the evidence supports the Examiner's conclusion of obviousness. 11 Appeal2018-001544 Application 14/839,493 In summary: 16-18 § 102(a)(l) 1-9, 13, 14, § 103 19-23 10 § 103 15 § 103 Summar New Ground of Rejection: 1-23 CONCLUSION MacDonald Sturgulewski, MacDonald Sturgulewski, MacDonald, Schucker Sturgulewski, MacDonald, Thompson DECISION 16-18 1-9, 13, 14, 19-23 10 15 1-10 13-23 ' The Examiner's decision is affirmed and a new ground of rejection entered. TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: 12 Appeal2018-001544 Application 14/839,493 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record .... No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED; 37 C.F.R. § 41.50(b) 13 Copy with citationCopy as parenthetical citation