Ex Parte Schneeberger

Patent Trial and Appeal Board

Aug 14, 2017

12564877 (P.T.A.B. Aug. 14, 2017)

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.
12/564,877 09/22/2009 Johannes Peter Schneeberger JPS1012CIP 9316
7590 08/16/201755524
IDEPA INC.
ATTN: JOHANNES SCHNEEBERGER
P.O. BOX 358
BRISBANE, CA 94005
EXAMINER
DAVIS, MARY ALICE
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
08/16/2017 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):
JOHSCHNEE@GMAIL.COM
j xschx @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHANNES PETER SCHNEEBERGER
Appeal 2015-006196
Application 12/564,877
Technology Center 3700
Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision1 rejecting claims 40, 44, and 49.2 We have jurisdiction under
35 U.S.C. § 6(b).
1 Appeal is taken from the Final Office Action dated June 3, 2014 (“Final
Act.”), as supplemented by the Advisory Action dated Nov. 28, 2014 (“First
Adv. Act.”) and the Advisory Action dated Jan. 22, 2015 (“Second Adv.
Act.”).
2 Claims 1—35, 37, 38, 43, 45^47 have been cancelled. See, e.g.,
Amendment dated Jan. 2, 2015. Claims 36, 39, 41, 42, 48, and 50 are
allowed. See Second Adv. Act. 2; Final Act. 6.
Appeal 2015-006196
Application 12/564,877
We AFFIRM and designate our affirmance as a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
Claim 40, reproduced below, is the sole independent claim on appeal.
Claim 40 is illustrative of the subject matter on appeal.
40. A particle combustion engine comprising:
A. a compression stage and an expansion stage;
B. a combustion system in between and in fluid
communication with said compression stage and said expansion
stage;
C. a particle fuel evaporator that is part of said
combustion system, said particle fuel evaporator being capable
of evaporating the evaporating content of a solid particle fuel;
and
wherein said particle fuel evaporator comprises a carbon
particle extraction port.
REJECTIONS3
I. Claims 40 and 44 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Nagato (US 7,285,144 B2; issued Oct. 23, 2007).
II. Claim 49 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Nagato and Parr (US 3,867,912; issued Feb. 25, 1975).
3 The rejections of claim 45 under 35 U.S.C. § 112, first paragraph, and
§103 are moot, because claim 45 has been cancelled. See Second Adv. Act.
2.
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Application 12/564,877
ANALYSIS
Rejection I
Regarding independent claim 40, the Examiner finds, inter alia, that
Nagato’s gasification furnace 3 and dust collector 203 correspond to the
claimed particle fuel evaporator, and that dust collector 203 corresponds to
the claimed carbon particle extraction port. Final Act. 4 (citing Nagato,
Figs. 5, 9); see Ans. 2.
Appellant argues, inter alia, that Nagato’s “dust collector 203 is a
separate entity separated at least by [] desulfurizing equipment 213 and []
gas cooling apparatus 202 from [] fluidized-bed furnace 1.” Appeal Br. 3;
see also Reply Br. 2-4. Thus, we understand that Appellant is arguing that
Nagato’s particle fuel evaporator (or gasification furnace 3) does not
“comprise” a carbon particle extraction port (dust collector 203), as claimed.
With reference to Figure 5, Nagato discloses that “combustible
material 48 is supplied to the gasification furnace 3, and is gasified by partial
combustion” {id. at 23:45—47), and also that “discharging port 49
[discharges] the produced gas from the gasification furnace 3” (Nagato
23:38—39). Nagato further discloses that “[u]nbumed char generated in the
gasification furnace 3 and accompanied by the produced[] gas is cooled . . .
in a gas apparatus 202 provided downstream.” Id. at 52—55 (emphasis
added); see also id., Fig. 5 (depicting a single process stream, sequentially,
from gasification furnace 3 via discharging port 49 to (optional)
desulfurizing equipment 213, to cooling gas apparatus 202, to dust collector
203). Thus, Nagato discloses that unbumed char is discharged, along with
the produced gas, from port 49.
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Application 12/564,877
Claim 40 requires “a particle fuel evaporator [comprising] a carbon
particle extraction port.” Appeal Br. 6 (Claims App.). We find that the
claimed carbon particle extraction port reads on Nagato’s discharge port 49,
because Nagato’s gasification furnace 3 comprises discharge port 49, and
discharge port 49 extracts carbon particles (in the form of unbumed char4)
from gasification furnace 3. In other words, we modify the Examiner’s
findings by determining that Nagato’s gasification furnace 3 corresponds to
the claimed particle fuel evaporator and Nagato’s discharging port 49
corresponds to the claimed carbon particle extraction port. The Examiner’s
findings regarding the remaining structure recited in claim 40 (i.e.,
compression and expansion stages, and combustion system), and the particle
fuel feed recited in claim 44 remain unchanged. See Final Act. 3^4. Thus,
we address Appellant’s additional arguments infra, in view of this finding,
noting that our new finding renders Appellant’s remaining arguments
directed towards the Examiner’s reliance on Nagato’s dust collector 203 and
discharging port 23 moot.
Appellant argues that “nothing in Nagato . . . can be compared to [the
claimed] carbon particle extraction port,” because it is “well know[n] in the
art of fluidized-bed furnaces [that] the purpose [is] to completely combust
char;” and “[h]aving a carbon particle extraction port would contradict and
void the purpose of completely combusting char particles in fluidized-bed
4 Nagato discloses that “combustible components [are] composed mainly of
carbon (i.e., the so-called char produced in the gasification furnace).”
Nagato 1:24—26. See also Appeal Br. 4 (explaining the differences between
soot and char, and specifically recognizing that char is known to contain
carbon particles: “soot is materially different from carbon particles
remaining after evaporating the evaporating portion of solid fuel particles.”).
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Application 12/564,877
reactors.” Appeal Br. 3; see also Reply Br. 2 (“[Nagato’s system]
necessitates to introduce, retain and completely combust char in its
combustion system . . . not to extract it.”).5 In other words, Appellant argues
that “Nagato does not teach carbon particle extraction but carbon particle
induction.” Appeal Br. 4. Further, Appellant argues that “extraction of the
char would render Nagato’s fluidized reactor 1 inoperative.” Id. at 5; see
also Reply Br. 6.
As discussed supra, Nagato discloses discharging unbumed char from
gasification furnace 3 via discharging port 49. Thus, regardless of whether
Nagato’s discharged, unbumed char is completely combusted in a further
processing step, a preponderance of evidence supports our finding that
Nagato’s unbumed char is extracted (or pulled out) from gasification
furnace 3 (or the particle evaporator) via port 49. To the extent Appellant is
arguing that the unbumed char must be extracted from the combustion
system and/or not reintroduced for complete combustion, Appellant is
arguing limitations that are not claimed. As determined by the Examiner,
“[i]t is irrelevant that NAGATO uses the extracted carbon particles to be
reused in the system.” See Ans. 3. Unclaimed features cannot impart
patentability to claims. In reHiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
1998). Arguments must be commensurate in scope with the actual claim
language. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Accordingly, we sustain the Examiner’s rejection of claim 40 under
35 U.S.C. § 102(b) as anticipated by Nagato. Appellant chose not to present
5 Appellant submits that an ordinary meaning of the claim term “extraction”
is “‘the act or process of getting something by pulling it out, forcing it out.’”
Appeal Br. 3 (citing Merriam-Webster Dictionary.).
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Application 12/564,877
separate arguments for the patentability of claim 44, which depends from
claim 40, and therefore, we also sustain the Examiner’s rejection of claim
44. See Appeal Br. 5 (“Dependent Claims 44, 49 stand and fall together
with independent Claim 40.”). As our findings differ from the Examiner’s,
we designate our affirmance a new ground to give Appellant a full and fair
opportunity to react to this rejection.
Rejection II
Appellant chose not to present separate arguments for the patentability
of claim 49, which depends from claim 40, and therefore, we also sustain the
Examiner’s rejection of claim 49. See Appeal Br. 5 (“Dependent Claims 44,
49 stand and fall together with independent Claim 40.”). As our findings
differ from the Examiner’s with respect to independent claim 40, we
designate our affirmance a new ground to give Appellant a full and fair
opportunity to react to this rejection. The Examiner’s findings and
reasoning regarding claim 49 remain unchanged.
DECISION
The Examiner’s rejections of claims 40, 44, and 49 are affirmed and
designated new grounds of rejection, as set forth above.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise one of the
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Application 12/564,877
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(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
prosecution will be remanded to the examiner.
The new ground of rejection is binding upon the examiner unless an
amendment or new Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection designated
in the decision. Should the examiner reject the claims, appellant may again
appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request for
rehearing must address any new ground of rejection and state with
particularity the points believed to have been misapprehended or overlooked
in entering the new ground of rejection and also state all other grounds upon
which rehearing is sought.
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED; 37 C.F.R, $ 41.50(b)
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