Ex Parte RowleyDownload PDFPatent Trials and Appeals BoardMay 16, 201915006213 - (D) (P.T.A.B. May. 16, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 15/006,213 01/26/2016 Gerald W. Rowley 34704 7590 05/16/2019 BACHMAN & LAPOINTE, P.C. 900 CHAPEL STREET SUITE 1201 NEW HAVEN, CT 06510 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. 11-302 1630 EXAMINER MCMAHON, MARGUERITE J ART UNIT PAPER NUMBER 3747 MAIL DATE DELIVERY MODE 05/16/2019 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 PATENT TRIAL AND APPEAL BOARD Ex parte GERALD W. ROWLEY Appeal2018-006061 Application 15/006,213 1 Technology Center 3700 Before LINDA E. HORNER, BRETT C. MARTIN, and RICHARD H. MARSCHALL, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner's rejections of claims 1, 3, 5-22, and 24-28. Final Office Action (October 11, 2017, "Final Act."). 2 We have jurisdiction under 35 U.S.C. § 6(b ). 1 The Appeal Brief identifies Gerald W. Rowley ("Appellant") as the real party in interest. Appeal Brief (February 13, 2018, "Appeal Br.") 2. 2 Claims 2, 4, and 23 are canceled. Appeal Br. 4. Although the Office Action Summary omits claims 27 and 28 from the listing of pending and rejected claims, these claims are rejected on page 6 of the Final Office Appeal2018-006061 Application 15/006,213 The Examiner rejected the claims on appeal as being unpatentable over various combinations of the prior art. Appellant contests the rejections arguing that the Examiner failed to articulate adequate reasoning for the proposed prior art combinations. For the reasons explained below, we agree with Appellant that the Examiner has failed to provide adequate reasoning to explain why one having ordinary skill in the art would have been led to combine the prior art teachings in the manner claimed. Thus, we reverse. CLAIMED SUBJECT MATTER The claimed subject matter on appeal relates to a fuel vaporizer system for heating fuel to be used in engines and generators. Specification (January 1, 2016, "Spec.") ,r 1. Claims 1, 15, and 24 are the independent claims. Claim 1 is illustrative of the subject matter on appeal and is reproduced below. 1. A fuel heater and vaporizing system comprising: a source of fuel; a thermal source; and a heat exchanger configured to thermally couple to the thermal source, said heat exchanger having a saddle shape and being configured to fit over said thermal source; wherein said heat exchanger has an inlet for receiving fuel from said fuel source, an outlet for discharging fuel, and a hollow passageway extending between the inlet and the outlet; wherein said heat exchanger has an open bottom to allow said heat exchanger to be placed over said thermal source. Appeal Br. 19 (Claims Appendix). Action. 2 Appeal2018-006061 Application 15/006,213 EVIDENCE The Examiner relies on the following references in the grounds of rejection on appeal. Mills Virgil Gorans Poje Rowley et al. ("Rowley") us 2,240,311 us 3,935,901 us 4,393,851 US 2007/0151547 Al US 8,707,934 B2 Apr. 29, 1941 Feb.3, 1976 July 19, 1983 July 5, 2007 Apr. 29, 2014 Appellant submits a Declaration under 3 7 C.F .R. § 1.13 2 of Mr. Mark N. Thomblom ("Thomblom Dec.") in support of its appeal. Appeal Br. 25 (Evidence Appendix). REJECTIONS The Final Office Action includes the following rejections under 35 U.S.C. § 103: 1. Claims 1, 3, 5, 12, and 13 are rejected as unpatentable over Virgil, Poje, and Mills. 2. Claims 6-12, 15-22, and 24-26 are rejected as unpatentable over Virgil, Poje, Mills, and Rowley. 3. Claims 14, 27, and 28 are rejected as unpatentable over Virgil, Poje, Mills, Rowley, and Gorans. ANALYSIS In the rejection of claim 1, the Examiner found that Virgil discloses a fuel heater as recited, except that it does not disclose "the fuel heater being a vaporizing system, and the heat exchanger being configured to fit over the thermal source, wherein the heat exchanger receives the fuel through the inlet and discharges fuel from the outlet." Final Act. 3. The Examiner found that Poje teaches it was known in the art to heat a fuel line or a fuel 3 Appeal2018-006061 Application 15/006,213 filter by a heat source. Id. Based on this finding, the Examiner determined it would have been obvious to modify Virgil to surround the fuel line, instead of the fuel filter, with the heat source. Id. at 4. The Examiner further found that Mills teaches it was known in the art to use a fuel heater to vaporize the fuel. Id. The Examiner determined it would have been obvious, in view of Mills, to further modify Virgil by heating the fuel to a vaporizing temperature, as was conventional in the engine art. Id. The Examiner found that Mills also teaches it was known in the art to provide fuel to and from a heat exchanger and to place the heat exchanger over a thermal source. Id. Based on this teaching in Mills, the Examiner determined it would have been obvious to further modify Virgil's system "to reverse the positions of the heat source and the fuel, such that the fuel surrounds the heat source in lieu of the heat source surrounding the fuel, as the two different configurations are conventional alternatives in the engine art, known for the same purpose." Id. Appellant argues that the rejection should be reversed because the Examiner has failed to explain adequately what would have led one having ordinary skill in the art to modify Virgil, based on the teachings of Poje and Mills, in the manner claimed. Appeal Br. 15-16. Specifically, Appellant asserts that Virgil teaches connecting its heat exchanger chamber 10 to an existing fuel filter 44 without any fuel system modifications. Appeal Br. 12. Appellant further asserts that Virgil "expressly teaches against modification of the fuel system." Id. (citing Virgil, col. 1, 11. 19-57); see also id. at 15. Appellant asserts that the proposed modification to Virgil's system to flow fuel through the heat exchange chamber 10 would "completely change[] the principle of operation of Virgil." Id. at 15. Appellant also asserts that the 4 Appeal2018-006061 Application 15/006,213 Thomblom Declaration provides evidence that one having ordinary skill in the art would not have been led to modify the Virgil system, based on Poje and Mills, in the manner suggested by the Examiner. Id. at 16. Mr. Thomblom's testimony is based, at least in part, on a misunderstanding of the Examiner's proposed modification of the Virgil system. Mr. Thomblom is under the impression that the Examiner suggested to flow fuel through Virgil's heat exchanger chamber 10 and to flow "hot exhaust gases through the fuel filter 44" and that the modification entails "[r]edesigning the cylinder shaped fuel filter to a crescent shaped chamber." Thomblom Dec. ,r,r 16, 18. We disagree with Mr. Thomblom's characterization of the rejection. The Examiner's rejection does not suggest passing exhaust gases through Virgil's fuel filter. Ans. 9 (noting this argument overlooks the Examiner's proposed modification of Virgil with Poje ). Rather, the rejection first suggests modifying Virgil to use the heat exchange chamber to heat the fuel line of Virgil instead of the fuel filter. Final Act. 4 (suggesting to "modify Virgil by surrounding the fuel line in lieu of the fuel filter with the heat source"). The Examiner's rejection then suggests further modifying Virgil to "reverse the positions of the heat source and the fuel" so that the fuel from the fuel line flows through the heat exchange chamber and the hot exhaust gases flow through a pipe that travels through the center of the chamber. Id. (suggesting to modify the as-modified system of Virgil "such that the fuel surrounds the heat source in lieu of the heat source surrounding the fuel"). Because Mr. Thomblom's testimony does not address the proposed modifications to Virgil's system as set forth in the Final Office Action, the testimony is of little value to Appellant's arguments. 5 Appeal2018-006061 Application 15/006,213 Despite these deficiencies in the Declaration, Appellant raises a valid argument in the Briefs that the Examiner has failed to address adequately. Specifically, we agree with Appellant that the Examiner's explanation of the reason to modify Virgil's system to flow the fuel through the heat exchange chamber is insufficient in light of the teachings in Virgil to design a heat exchange system that avoids cutting the fuel line or otherwise changing the fuel flow characteristics. In response to Appellant's arguments, the Examiner finds only that "the two configurations ( fuel surrounding exhaust or exhaust surrounding fuel) are ... interchangeable." Ans. 8 (taking Official Notice that these two configurations "are conventional [and] known for the same purpose in the heat exchange art in general as well as in heat exchange in engines specifically"). The Examiner further disagrees with Appellant's characterization of the principle of operation of Virgil and finds that reversing the position of the fuel and the exhaust would not prevent functioning of Virgil's device. Id. at 8, 10-11. The Examiner's explanation is insufficient in this instance in which Virgil specifically teaches avoiding cutting the fuel line to place a heat exchanger in the line. Virgil discusses prior art attempts to solve the problem of gelation of diesel fuel in cold weather conditions, including attempted solutions involving changing the fuel system itself, adding units to the system which change fuel flow characteristics, and inserting heaters into the fuel line. Virgil 1:19-29. For example, Virgil describes a prior art solution that required cutting into existing fuel lines to insert a heater-separator into the line. Id. at 1 :29-36. Virgil describes that such prior art systems "have only been partially successful at best." Id. at 1 :52-54. Virgil provides a solution 6 Appeal2018-006061 Application 15/006,213 different from the described prior art solutions, in which a plenum chamber is fastened externally to the fuel filter and uses hot exhaust gas to heat the filter. Id. at 1 :67-2: 1. Virgil explicitly identifies an "object of the invention is to provide a diesel fuel heater for a diesel fuel filter without change of the fuel line system." Id. at 2: 15-17 ( emphasis added). In discussing the advantages of its system, Virgil discloses that because there is no change in the fuel system and no additional elements placed in the fuel system, the pressure drip and fuel flow through the fuel system will remain the same. Id. at 4: 17-21. Virgil further discloses another advantage is that during warm weather, in which gelation of diesel fuel is not a problem, the heater can be stopped easily by turning a valve to stop exhaust flow to the heater or the heater may be easily and quickly removed and stored. Id. at 4: 10-15. As discussed above, we understand the Examiner's proposed modification to Virgil's system to entail ( 1) heating the fuel line instead of the fuel filter, and (2) modifying the fuel line to insert the heat exchange chamber 10 in the fuel line. The Examiner provides insufficient reasoning for either proposed modification in light of the teachings in Virgil of the advantages of its system, which provides heat specifically at the fuel filter and avoids cutting the fuel line. Simply because other heat exchange systems heated a fuel line instead of a fuel filter is not a sufficient reason, by itself, to modify Virgil's system in light of Virgil's teaching to apply heat to the fuel "at the slowest flow volume in the fuel line (in the fuel filter element)." Id. at 2:4-6. Further, simply because other heat exchange systems place a heat exchange element within the fuel line is not a sufficient reason, by itself, to modify Virgil's system to use an in-line heat exchange 7 Appeal2018-006061 Application 15/006,213 element in light of Virgil's teaching of advantages of Virgil's external heat exchanger plenum. For these reasons, we do not sustain the first ground of rejection of claim 1 and its dependent claims 3, 5, 12, and 13 under 35 U.S.C. § 103 as unpatentable over Virgil, Poje, and Mills. The remaining grounds of rejection rely on the same deficient combination of the teachings of Virgil, Poje, and Mills. Final Act. 4-7. The Examiner does not rely on either Rowley or Gorans in a manner that cures the deficiency in the base combination. Thus, we also do not sustain the second and third grounds of rejection. DECISION The decision of the Examiner rejecting claims 1, 3, 5-22, and 24-28 is reversed. REVERSED 8 Copy with citationCopy as parenthetical citation