Ex Parte Sloane et al

Board of Patent Appeals and Interferences

Aug 17, 2011

10602938 (B.P.A.I. Aug. 17, 2011)

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.
10/602,938 06/24/2003 Thompson M. Sloane GP-303216 1828
7590 08/17/2011
General Motors Corporation
Legal Staff, Mail Code 482-C23-B21
300 Renaissance Center
P. O. Box 300
Detroit, MI 48265-3000
EXAMINER
ESHETE, ZELALEM
ART UNIT PAPER NUMBER
3748
MAIL DATE DELIVERY MODE
08/17/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte THOMPSON M. SLOANE, PAUL M. NAJT, and
WILLIAM R. LEPPARD
________________

Appeal 2010-001884
Application 10,602,938
Technology Center 3700
________________

Before JOHN C. KERINS, WILLIAM V. SAINDON and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal No. 2010-001884
Application No. 10/602,938

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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a), from a final
rejection of claims 1-17 and 20-351. The real party in interest is General
Motors Corporation. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

References Relied on by the Examiner
Bundrick U.S. 4,419,969 Dec. 13, 1983
Ethington U.S. 4,690,743 Sep. 1, 1987
Gonzalez U.S. 4,765,293 Aug. 23, 1988
Lowther U.S. 4,965,052 Oct. 23, 1990
Bromberg U.S. 5,409,784 Apr. 25, 1995
Dickey U.S. 5,832,880 Nov. 10, 1998
Britton U.S. 6,314,925 B1 Nov. 13, 2001
Dahung Hsu2 EP 643,209 A1 Mar. 15, 1995

The Claimed Subject Matter
The claimed subject matter is directed to a compression ignition
engine that concurrently initiates the injection of fuel and the injection of an
acetylene-based component into the engine. Independent claim 1 is
illustrative of the claims on appeal and is reproduced below:
1 . A method of operating a homogeneous-charge compression
ignition (HCCI) engine, comprising:
initiating fuel injection and concurrently initiating injection of
an acetylene-based-component into said engine;
mixing air, said fuel and said acetylene-based component to
form a combustion mixture; and

1 Claims 18, 19 and 36 are only objected to and will not be addressed herein
(Final Office Action p. 8).
2 EP 643,209 A1 lists the last name as “Dahung Hsu” but the Examiner and
Appellants only employ “Dahung” and we will likewise identify this
reference as “Dahung” to maintain consistency.
Appeal No. 2010-001884
Application No. 10/602,938

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compressing said combustion mixture to induce auto-ignition of
said combustion mixture, releasing energy and converting said
combustion mixture to exhaust gas.

The Rejections on Appeal
Multiple corrective Examiner Answers have been mailed in this
appeal. The last one, mailed Nov. 7, 2007, is cited herein.
1. Claims 1, 2, 8-14, 17, 20, 24-28, 34 and 35 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Dahung in view of Bundrick and
further in view of Gonzalez (Ans. 3).
2. Claims 3, 15 and 29 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dahung, Bundrick and Gonzalez and further in view of
Britton (Ans. 6).
3. Claims 4, 16, 30-32 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dahung, Bundrick and Gonzalez and further in view of
Dickey (Ans. 7).
4. Claims 5, 6, 21, 22 and 33 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dahung, Bundrick and Gonzalez and further in view
of Bromberg (Ans. 8).
5. Claims 7 and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dahung, Bundrick and Gonzalez and further in view of
Ethington (Ans. 8).
6. Claims 7 and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dahung, Bundrick and Gonzalez and further in view of
Lowther (Ans. 9).

Appeal No. 2010-001884
Application No. 10/602,938

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ISSUE
Has the Examiner established that one of ordinary skill in the art
would have had reason to concurrently initiate the injection of a fuel and an
acetylene-based component into a compression ignition engine when it was
known that multiple fuels can each be injected into a compression engine
and that acetylene is an available fuel for compression ignition?

FINDINGS OF FACT
1. Dahung discloses a dual-fuel compression engine where a main fuel
and a pilot fuel are each injected into the combustion chamber (Dahung
2:30-35, Fig. 1 and Abst.).
2. Dahung teaches that “More than 65 years ago it was recognized that a
small amount of readily ignitable pilot fuel could be injected in diesel
engines to improve combustion of ‘heavy’ hydrocarbon fuels that are
otherwise difficult to ignite” (Dahung 2:7-11).
3. Dahung teaches that pilot fuel “is more readily flammable than the
main fuel”, that pilot fuel “serves to ignite the main fuel” and that “other
readily combustible pilot fuels may also be used” (Dahung Abst. and 5:19-
30).
4. Dahung further teaches that “the injection timings and quantities can
be varied” (Dahung 5:19-21).
5. Gonzalez discloses an internal combustion engine that is operable in
“a non-assisted compression ignition (diesel) mode” and that “[p]ilot and
main fuel injections timings may be concurrent or staged” (Gonzalez 1:59-
64, 2:67-68).
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Application No. 10/602,938

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6. Bundrick discloses a compression-ignition engine and lists acetylene
as “an available fluid fuel” (Bundrick 2:15-18).

ANALYSIS
Appellants separately argue each of the Examiner’s rejections and
each reference cited, and Appellants present different arguments for
different claim groupings (App. Br. 7-13, Reply Br. (mailed Aug. 21, 2006)
2-12, and Supp. Reply Br. (mailed Jan 22, 2007) 1-3). Each of these will be
addressed below.
In general, and with respect to all the claims, Appellants contend that
there is no motivation to combine the references (App. Br. 7-13, Reply Br.
2-12). However, the Examiner’s stated motivation is “to enhance the engine
performance” (Ans. 4) and this is consistent with Dahung’s desire “to
improve combustion” by combining a readily ignitable pilot fuel with the
main diesel fuel (Dahung 2:7-11). Bundrick’s teaching that acetylene is a
readily available fuel for use in compression ignition engines, i.e., diesel
engines (Bundrick 2:15-18) and Gonzalez’s teaching that both a main and a
pilot fuel can be added concurrently to the firing chamber (Gonzalez 2:67-
68) would have been known to one skilled in the art seeking to improve the
combustion of a diesel engine. Hence, the Examiner has provided sufficient
reasons to combine the teachings of Dahung, Bundrick and Gonzalez.

Rejection 1: The Subject Matter of Claims 1, 2, 8-14, 17, 20, 24-28, 34 and
35 are Obvious over Dahung, Bundrick and Gonzalez.

Method claims 1, 2, 8-14, 17, 20, 24-26 and apparatus claims 27, 28,
34 and 35 are rejected by the Examiner as being obvious over Dahung,
Appeal No. 2010-001884
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Bundrick and Gonzalez (Ans. 3). Each independent claim (claims 1, 13 and
27) requires the concurrent initiation of the injection of a fuel and an
acetylene-based component into an engine.
Dahung teaches that a pilot fuel could be injected into a diesel engine
“to improve combustion” of the more-difficult-to-ignite main fuel (Dahung
2:7-11). Dahung further teaches that “[o]ther readily combustible pilot fuels
may also be used” and that “[t]he injection timings and quantities can be
varied” (Dahung 5:19-30). Bundrick lists acetylene as “an available fluid
fuel” for compression ignition (Bundrick 2:15-18) and Gonzalez specifically
teaches that “[p]ilot and main fuel injections timings may be concurrent or
staged” (italics added) (Gonzalez 1:59-64, 2:67-68).
Specifically addressing independent claims 1 and 13, Appellants
present arguments directed to deficiencies in the individual references which
the Examiner had already acknowledged (Ans. 4, App. Br. 7, see also Reply
Br. 5-6). Appellants also present arguments directed to teachings in the
references upon which the Examiner does not rely (App. Br. 7-9, see also
Reply Br. 4 and 8-11). These arguments are not deemed persuasive.
Appellants also contend that Dahung, Bundrick and Gonzalez “do not
suggest or provide the necessary motivation to arrive at the invention as
claimed” and, more specifically, that Dahung does not teach the claimed
invention; that “Bundrick fails to cure the deficient teachings of Dahung”
and that “Gonzalez also fails to cure the deficient teachings of Dahung”
(App. Br. 7-8, Reply Br. 2). An express teaching or motivation in the
references is not required; instead, the Examiner need only articulate a
reason to combine the references with some rational underpinning to support
the legal conclusion of obviousness (see KSR Int'l Co. v. Teleflex Inc., 550
Appeal No. 2010-001884
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U.S. 398, 418 (2007)). The Examiner’s stated reason is “in order to enhance
the engine performance” (Ans. 4) which is consistent with Dahung’s desire
“to improve combustion” (Dahung 2:7-11). Appellants contend that
Bundrick fails to cure the deficiencies of Dahung on the basis that Bundrick
fails to teach multiple fuels or concurrent injection of multiple fuels (App.
Br. 7-8). Appellants also contend that Gonzalez fails to cure the deficiencies
of Dahung on the basis that Gonzalez is directed toward a spark-ignition
engine that separately combusts the fuels and does not create a combustion
mixture (App. Br. 8-9). However, the Examiner does not rely on Bundrick
or Gonzalez for these teachings. Thus, Appellants’ arguments are not
persuasive.
Appellants specifically address independent apparatus claim 27 which
requires a first amount of fuel and a second amount of acetylene-based
component be supplied to a reciprocally driven cylinder which also receives
a third amount of air (App. Br. 9-10). Appellants repeat the allegations that
Dahung fails to teach this, that “Bundrick fails to cure the deficient teaching
of Dahung” and that “Gonzalez further fails to cure the deficient teachings
of Dahung” (App. Br. 10). Again, Appellants do not collectively address all
three references or the Examiner’s position as to what this combined trio
teaches. Nevertheless, Dahung clearly states that “The injection timings and
quantities can be varied” (italics added) (Dahung 5:19-21). Because Dahung
teaches that the quantity of the pilot and main fuel injected into the
cylinder’s combustion chamber can vary, Appellants’ argument that “claim
27 defines over the prior art” is not persuasive (App. Br. 10).
In addressing all three independent claims 1, 13 and 27, Appellants
allege that “the Examiner incorrectly relies on the general knowledge of one
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Application No. 10/602,938

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skilled in the art to combine the references” (App. Br. 10). This contention
is not persuasive because the Examiner relied upon the combined teachings
of Dahung, Bundrick and Gonzalez and the Examiner’s reason for their
combination mirrors Dahung’s recitation of a desire “to improve
combustion” (Dahung 2:7-11). More specifically, the Examiner’s stated
reason, i.e. “in order to enhance the engine performance” (Ans. 4), is
achieved by the Examiner’s combination of Dahung’s dual fuel engine with
Bundrick’s teaching regarding “the use of acetylene in the compression
ignition” and also Gonzalez’s teaching of “concurrent” pilot and main
injection timings (Ans. 4). Accordingly, Appellants’ contention that the
Examiner incorrectly relied on the general knowledge of one skilled in the
art is unsupported (App. Br. 10-11).
Appellants further allege that Dahung “teaches away” from
concurrently injecting both a fuel and an acetylene-based component into the
engine because Dahung’s does so in stages (Reply Br. 5-6). Our reviewing
court has stated “[t]he prior art’s mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed”. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(emphasis added). Appellants provide no evidence of Dahung criticizing,
discrediting or otherwise discouraging the claimed solution and thus
Appellants’ contention is not persuasive.
When specifically addressing Bundrick, Appellants contend that
“[o]ne of skill in the art would not look to a reference listing ‘available’
surplus fuels that can potentially be combusted in a flex-fuel engine to select
a combination of fuel and additive for a sophisticated and highly calibrated
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HCCI engine” (Reply Br. 7). Appellants’ argument is not supported by
objective evidence because Appellants failed to set forth any affidavits or
declarations in support of that assertion. See In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (Appellants’ arguments do not take the place of
evidence); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (lawyer arguments and
conclusory statements which are unsupported by factual evidence are
entitled to little probative value).
When specifically addressing Gonzalez, Appellants do not dispute
that Gonzalez teaches a “non-assisted compression ignition (diesel) mode”
(Reply Br. 8 citing Gonzalez 1:61-65). However, Appellants contend that a
general statement by the Examiner “to ‘enhance engine performance’ is not
borne out by what Gonzalez teaches” (Reply Br. 8). More specifically,
Appellants allege that Gonzalez “teaches away” from using concurrent
injection of pilot and main fuels in high compression engines and Appellants
assert that the claimed HCCI engines “are relatively high compression
engines” (Reply Br. 8-9). Appellants assert that Gonzalez “teaches away”
due to the statement in Gonzalez that “[t]he timing of main fuel injection
may be concurrent with the pilot fuel injection on engines of low specific
output or low compression” (italics added) (Reply Br. 8-9; Gonzalez 5-68 to
6:3). Appellants have not shown how this disclosure in Gonzalez criticizes,
discredits or otherwise discourages concurrent injection of pilot and main
fuel in a high compression engine (See Fulton, 391 F.3d at 1201).
Accordingly, Appellants’ contention is not persuasive.
Appellants also contend that “one of skill in the art would not look to
the limited class of pilot fuels used to ignite an otherwise non-ignitable fuel
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for improving performance in an HCCI engine, which uses a pre-mixed self-
ignitable fuel” (Reply Br. 6, see also Reply Br. 7). The references cited by
the Examiner state otherwise. Dahung teaches that “[m]ore than 65 years
ago it was recognized that a small amount or readily ignitable pilot fuel
could be injected in diesel engines to improve combustion of ‘heavy’
hydrocarbon fuels that are otherwise difficult to ignite” (Dahung 2:7-11).
Bundrick lists acetylene as “an available fluid fuel” for compression ignition
(Bundrick 2:15-18). In view of the above teachings, and contrary to
Appellants’ contention, one skilled in the art would have been led to the use
of acetylene as part of a pre-mixed self-ignitable fuel, especially when it has
been known for more than 65 years that a readily ignitable pilot fuel could
be injected in a diesel engine along with a more difficult to ignite fuel.
In specifically addressing dependent claims 17, 20 and 35 “regarding
the variation in load conditions,” Appellants allege that Dahung “does not
specify varying the amount of pilot fuel” nor does Dahung “suggest
modifying the quantity of pilot fuel to the engine” (Reply Br. 6). This is
incorrect as Dahung specifically teaches that “[t]he injection timings and
quantities can be varied” (italics added) (Dahung 5:19-21). Appellants’
contention is not persuasive.
In specifically addressing dependent claims 10, 11, 26 and 34,
Appellants contend “[t]hese claims specifically recite ranges” and “a proper
rejection must point to at least some reference having a mixture of
acetylene-based component and fuel within the ranges set forth” (Reply Br.
11). Appellants state that the Examiner “is utilizing hindsight construction”
because the Examiner has provided no support for the combination of
Dahung, Bundrick and Gonzalez and that these references “lack any mention
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of ranges based on stoichiometry of the acetylene-based compound” (Reply
Br. 12, Supp. Reply Br. 2). The Examiner rejected these claims asserting
that it would have been obvious “to optimize the proportions of the fuel
based on the loading requirement of the engine” because “discovering the
optimum or workable ranges involves only routine skill in the art” (Ans. 12
referencing In re Aller, 105 USPQ 233). Appellants dispute whether Aller
applies because “there is no single reference here that teaches a claimed
method; there are no example methods laid out in the prior art with given
parameters” and there is “no starting point for the automotive engineer to
optimize” (Supp. Reply Br. 2). Appellants also contend that Dahung teaches
using a pilot fuel to ignite a main fuel that “cannot be self-ignited” and that
this reference teaches “a pilot fuel is needed [for] fuel that does not self-
ignite” (italics added) (Supp. Reply Br. 2-3). Appellants contend that “one
would not use a pilot fuel if the main fuel self-ignited” (Supp. Reply Br. 2).
Dahung does not address use of a main fuel that “cannot” or “does
not” self-ignite as asserted by Appellants, instead, Dahung addresses main
fuels “that are otherwise difficult to ignite” (Dahung 2:7-11, see also Abst
(“a pilot fuel (14) which is more readily flammable than the main fuel”), and
Dahung 2:33-35 (“one of the fuels is a pilot fuel which burns more readily
than the other fuel, which is the main fuel”)). Dahung specifically teaches
that it has been known for more than 65 years that a “readily ignitable pilot
fuel could be injected in diesel engines to improve combustion of [main]
fuels that are otherwise difficult to ignite” (Dahung 2:7-11). Dahung further
teaches one example where pilot fuel in the amount of “about 4% to about
7% by energy is injected through the pilot injector 14 to provide an ignition
source for the gas fuel” (Dahung 5:25-28). Hence, contrary to Appellants’
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assertions as to why Aller does not apply in the present situation, Dahung is
a single reference that, modified in accordance with Bundrick and Gonzalez
as above, teaches the claimed method and provides a specific example with
given parameters as a starting point for the automotive engineer to optimize.
Accordingly, Appellants’ assertions are not persuasive and there is no
evidence that the Examiner relied upon hindsight.
Based on the record before us, the Examiner’s rejection of claims 1, 2,
8-14, 17, 20, 24-28, 34 and 35 as being unpatentable over Dahung, Bundrick
and Gonzalez is sustained.

Rejection 2: The Subject Matter of Claims 3, 15 and 29 are Obvious over
Dahung, Bundrick and Gonzalez and further in view of Britton.

Appellants contend that it is unclear how Britton’s acknowledged
teaching of hydrogen and acetylene as a fuel “could suggest to a skilled
artisan that these compounds in particular should be used as an additive
component for fuels in an HCCI engine” (Reply Br. 10). The Examiner
specifically addressed this matter by referencing the passage in Britton
stating “[f]uels such as hydrogen and acetylene with lightweight molecules
exhibit higher flame speed and less ignition delay” as the reason why such
fuel would be employed would be “in order to improve the combustion
process” (Ans. 7 citing Britton 8:22-24). Appellants present no further
argument different from those already advanced above other than to state
that claims 3, 15 and 29 depend from one of the claims previously addressed
and that these three claims “define over the prior art for at least the reasons
stated above” (App. Br. 11, Reply Br. 10). As the Examiner’s rejections of
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the earlier claims were sustained, we likewise sustain the Examiner’s
rejection of claims 3, 15 and 29 for the same reasons.

Rejection 3: The Subject Matter of Claims 4, 16, 30-32 is Obvious over
Dahung, Bundrick and Gonzalez and further in view of Dickey.

Appellants contend that Dickey “provides no motivation to include an
acetylene-based component” and that Dickey provides no suggestion for
“concurrently” initiating the injection of this component with a separate fuel
(Reply Br. 9-10). The Examiner did not rely upon Dickey for these reasons
but instead for Dickey’s teaching of a diesel engine having an exhaust gas
recirculation system that diverts some of the exhaust gas back to the intake
manifold (Ans. 7, see also Dickey 4:10-13 and Fig. 1). As Appellants have
made no other argument different from those already advanced, we sustain
the Examiner’s rejection of claims 4, 16, 30-32 for the same reasons.

Rejection 4: The Subject Matter of Claims 5, 6, 21, 22 and 33 are Obvious
over Dahung, Bundrick and Gonzalez and further in view of Bromberg.

Appellants contend that “while Bromberg states that a plasma
reformer can generate acetylene and hydrogen, there still remains no
suggestion to employ this combination of a fuel and an additive component
in an HCCI engine system” (Reply Br. 11). Bromberg discloses the
technique of employing a plasmatron to generate acetylene in an automotive
environment (Bromberg 9:28-29, 10:41-42 and Figs. 11 and 17). It is well
settled that the use of a known technique to improve a similar device in the
same way is obvious unless its actual application is beyond the ability of one
skilled in the art (KSR Int’l Co. v. Teleflex, Inc. 550 U.S. 398, 417 (2007)).
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Appellants have not shown that it would be beyond the ability of one skilled
in the art to improve the combination of Dahung, Bundrick and Gonzalez
with Bromberg’s teaching of generating acetylene for use as an engine fuel.
Accordingly, we sustain the Examiner’s rejection of claims 5, 6, 21, 22 and
33 for these reasons and for the reasons set forth above.

Rejections 5 and 6: The Subject Matter of Claims 7 and 23 are rejected as
being Obvious over Dahung, Bundrick and Gonzalez and further in view of
Ethington or, alternatively, and further in view of Lowther.

Appellants contend that neither of these references provide the
requisite “suggestion or motivation” and hence the “presently claimed
invention is non-obvious and patentable” (Reply Br. 11). Appellants’
arguments regarding these references cite teachings different from the
teachings relied upon by the Examiner (Reply Br. 11, Ans. 8-10). As
Appellants have made no other argument different from those already
advanced above, we sustain the Examiner’s rejection of claims 7 and 23 for
the same reasons.

CONCLUSION OF LAW
The Examiner has established that one of ordinary skill in the art
would have had reason to concurrently initiate the injection of a fuel and an
acetylene-based component into a compression ignition engine when it was
known that multiple fuels can each be injected into a compression engine
and that acetylene is an available fuel for compression ignition.

Appeal No. 2010-001884
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DECISION
1. The rejection of claims 1, 2, 8-14, 17, 20, 24-28, 34 and 35 as being
unpatentable under 35 U.S.C. § 103(a) over Dahung in view of Bundrick and
further in view of Gonzalez is affirmed.
2. The rejection of claims 3, 15 and 29 under 35 U.S.C. § 103(a) as
being unpatentable over Dahung, Bundrick and Gonzalez and further in view
of Britton is affirmed.
3. The rejection of claims 4, 16, 30-32 under 35 U.S.C. § 103{a) as
being unpatentable over Dahung, Bundrick and Gonzalez and further in view
of Dickey is affirmed.
4. The rejection of claims 5, 6, 21, 22 and 33 under 35 U.S.C. § 103(a)
as being unpatentable over Dahung, Bundrick and Gonzalez and further in
view of Bromberg is affirmed.
5. The rejection of claims 7 and 23 under 35 U.S.C. § 103(a) as being
unpatentable over Dahung, Bundrick and Gonzalez and further in view of
Ethington is affirmed.
6. The rejection of claims 7 and 23 under 35 U.S.C. § 103{a) as being
unpatentable over Dahung, Bundrick and Gonzalez and further in view of
Lowther 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).

AFFIRMED

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