Ex Parte Rickey

Patent Trial and Appeal Board

Apr 16, 2013

11704664 (P.T.A.B. Apr. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WARK E. RICKEY
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Appeal 2011-000775
Application 11/704,664
Technology Center 3700
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Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-000775
Application 11/704,664

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 1-101. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The rejected claims are directed to a variable orifice for varying the
effective cross-sectional flow area of a conduit used to deliver a stream of
particulate coal to a burner (Spec. [0004]). Claims 1 and 6 are the sole
independent claims.
EXEMPLARY CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A variable orifice for varying the cross-
sectional area of a single channel flow conduit
used to deliver a single stream of particulate coal
to a burner comprising:
a first plate having an upstream edge and
a downstream edge, said plate being fixedly
mounted within and extending across the conduit
in a plane which is parallel to the flow direction of
said stream;
a second plate having an upstream edge
and a downstream edge and angularly moveably
mounted within and extending across said conduit

1 Our decision will refer to Appellant’s Specification (“Spec.,” filed
February 9, 2007), Appeal Brief (“App. Br.,” filed March 22, 2010), and
Reply Brief (“Reply Br.,” filed August 19, 2010), as well as the Examiner’s
Answer (“Ans.,” mailed July 12, 2010).

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with the downstream edge closely contiguous to
the downstream edge of the first plate such that the
first and second plates form an acute included
angle therebetween wherein the included angle
opens toward the flow of particulate coal; and
a mechanical structure for selectively
varying the angular relationship between the first
and second plate.
THE REJECTIONS
Appellant appeals the following rejections made by the Examiner:
Claims 1, 5, 6, and 10 under 35 U.S.C. § 102(b) as anticipated by
Bishop (US 3,123,098, iss. Mar. 3, 1964); and
Claims 2-4 and 7-9 under 35 U.S.C. § 103(a) as unpatentable over
Bishop in view of Holloway (US 5,647,389, iss. Jul. 15, 1997)2.
ANALYSIS
The Anticipation Rejection
Independent claims 1 and 6, which Appellant argues together, are
rejected as anticipated by Bishop. Although Appellant does not appear to
point to any specific claim language, Appellant argues the Examiner errs by
not giving patentable weight to language in claims 1 and 6 regarding the use

2 In the Examiner’s Answer mailed July 12, 2010, the Examiner newly
rejected claims 6-10 under 35 U.S.C. § 112, first and second paragraphs. In
Response, Appellant filed an Amendment on August 19, 2010, amending
independent claim 6. An Office Communication mailed October 13, 2010
indicated that the Amendment filed August 19, 2010 was entered, and that
the rejections under 35 U.S.C. § 112, first and second paragraphs, were
withdrawn.
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of the variable orifice in the delivery of particulate coal (App. Br. 9-10). In
response, the Examiner concludes that such language amounts to intended
use (Ans. 5-6, 10-11). We find the portions of the multiple louver damper of
Bishop identified by the Examiner appear to at least be capable of being
used to deliver particulate coal, and “[i]t is well settled that the recitation of
a new intended use for an old product does not make a claim to that old
product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)
(citations omitted). It is incumbent on Appellant to either identify claim
limitations that are particularly suited for delivery of particulate coal, or set
forth specific disclosures of Bishop that make its device particularly
unsuited for the delivery of particulate coal. Thus, Appellant has not
persuaded us the rejection is in error.
Appellant further argues the Examiner errs in concluding the portion
of the frame member extending between reference numbers 3 and 35 in Fig.
1 of Bishop teaches “a first plate . . . mounted within and extending across
the conduit” (App. Br. 10, Reply Br. 1-3) in each of claims 1 and 6. More
specifically, Appellant argues that because in Bishop there is no flow above
this frame member, the frame member defines the outside boundary of the
conduit rather than being within the conduit, and therefore the frame
member cannot extend across the conduit as required by each of these
claims. In response, the Examiner concludes that the entirety of duct 2 of
Bishop teaches the claimed conduit, and the frame member is therefore
within and extends across the conduit (Ans. 4-6, 10-11). We find the
Examiner’s conclusion that duct 2 of Bishop teaches the claimed duct to be
reasonable, and we find Appellant has not pointed to any language in the
Specifications or claims precluding duct 2 of Bishop from teaching the
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claimed conduit. Thus, Appellant has not persuaded us the rejection is in
error.
Based on the above findings, we therefore sustain the rejection of
independent claims 1 and 6 under 35 U.S.C. § 102(b) as anticipated by
Bishop.
The Obviousness Rejection
Dependent claims 2-4 and 7-9 are rejected as unpatentable over
Bishop in view of Holloway. Appellant’s arguments seem to be the
Examiner used impermissible hindsight because the references are from non-
analogous art (App. Br. 11).
The test for non-analogous art is first whether the art is within the
field of the inventor’s endeavor and, if not, whether it is reasonably pertinent
to the problem with which the inventor was involved. In re Wood, 599 F.2d
1032, 1036 (CCPA 1979). A reference is reasonably pertinent if, even
though it may be in a different field of endeavor, it logically would have
commended itself to an inventor’s attention in considering his problem
because of the matter with which it deals. In re Clay, 966 F.2d 656, 659
(Fed. Cir. 1992). For the reasons discussed above, we find that both the
claims and Bishop are directed to guiding airflow through a conduit, and
thus are analogous art. Based on the Examiner’s conclusions on pages 11-12
of the Examiner’s Answer, we find it is logical to use the locking device of
Holloway in the louver damper of Bishop. Thus, we sustain the rejection of
claims 2-4 and 7-9 under 35 U.S.C. § 103(a) as unpatentable over Bishop in
view of Holloway.

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DECISION
The Examiner’s rejection of claims 1, 5, 6, and 10 as anticipated by
Bishop is AFFIRMED; and
The Examiner’s rejection of claims 2-4, and 7-9 as unpatentable over
Bishop in view of Holloway is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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