Ex Parte Smyrniotis et al

Patent Trial and Appeal Board

Sep 25, 2013

11427894 (P.T.A.B. Sep. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHRISTOPHER R. SMYRNIOTIS, EMILITO R. RIVERA,
FRANK ZUCCARINI, and WILLIAM H. SUN
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Appeal 2011-009775
Application 11/427,894
Technology Center 3700
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Before PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 29-31. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We affirm the decision of the Examiner.

CLAIMED SUBJECT MATTER
The claimed subject matter relates generally to a process for
increasing the heat output of large-scale combustors, such as the type used
industrially and by utilities to provide power and incinerate waste. Spec.,
para. [0002]. Claim 29, the sole independent claim, is representative of the
subject matter on appeal, and recites:
29. A process for improving the operation of
combustors, comprising:
burning a carbonaceous fuel in the presence of both
a combustion catalyst and an in-furnace treatment
chemical in the fuel;
determining combustion conditions within a
combustor that can benefit from targeted in-furnace
treatment chemical for control of slag and/or corrosion;
locating introduction points on the furnace wall
where introduction of targeted in-furnace treatment
chemical could be accomplished;
based on the determination of the previous step,
introducing targeted in-furnace treatment chemical in a
manner effective to control slag and/or corrosion;
determining the effectiveness of targeted in furnace
injection of combustion catalyst; and
based on the determination of the previous step,
introducing targeted in-furnace combustion catalyst
separately from the fuel as a targeted in-furnace chemical
effective for improving the oxidation of the fuel, in
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combination with the targeted in-furnace treatment
chemical.

REFERENCES
The Examiner relied on the following patents to reject all the claims.
Smyrniotis U.S. 5,740,745 Apr. 21, 1998
Zamansky U.S. 6,206,685 B1 Mar. 27, 2001

REJECTION
The rejection of claims 29-31 under 35 U.S.C. § 103(a) based on
Smyrniotis and Zamansky is before us for review.
ANALYSIS
In relevant part to the issues on appeal, the Examiner found that
Smyrniotis disclosed the basic elements of the claimed invention but did not
disclose the step of introducing a targeted in-furnace combustion catalyst as
called for in claim 29. Ans. 3-4. The Examiner found that Zamansky
disclosed the missing step. Id. at 4. The Examiner also found that it would
have been obvious to a person of ordinary skill to combine the disclosures of
Smyrniotis and Zamansky based on the rationale that the proposed
combination would have produced the added benefit of a combustor with
reduced slag and reduced pollution emissions. Id.
Concerning independent claim 29, Appellants disagree with the
Examiner’s proposed combination arguing: that the references address
“different problems,” given that Smyrniotis is directed to reducing slag and
corrosion in a combustion system such as a furnace, whereas Zamansky is
directed to reducing NOX in a combustion system (App. Br. 3); that
Zamansky does not disclose a combustion catalyst (id. at 5); that the
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Examiner has relied improperly on a “hindsight” analysis to combine the
references (id. at 6); and that Example 3 in the Specification presents “truly
surprising” results which are evidence of patentability (id. at 7).
We address each of these arguments below.
Whether The References Are Directed To Different Problems
Appellants assert that a person of ordinary skill in art would not
consider Smyrniotis and Zamansky together. App. Br. 3. There is no
dispute that Smyrniotis is directed to reducing slag and corrosion in a
combustion system. See App. Br. 3 (“Smyrniotis is directed to slagging and
corrosion”). There also can be no legitimate dispute that Zamansky is
directed to methods of decreasing the concentration of nitrogen oxides in
flue gases emitted to the atmosphere from stationary combustion systems
such as boilers, furnaces, and incinerators. Zamansky, col. 1, ll. 8-11. As
found by the Examiner, the Zamansky method uses a metal-containing
additive for improving oxidation of the fuel. Ans. 4. Thus, both Smyrniotis
and Zamansky are concerned with improved performance of combustion
systems.
As stated in the Specification, the claimed invention “provides a
process of system analysis for pollutant control.” Spec., para. [0021].
Decreasing the concentration of nitrogen oxides in flue gases emitted to the
atmosphere is a pollutant control. Zamansky, col. 1, ll. 13-15 (“Nitrogen
oxides are the major air pollutants emitted by boilers, furnaces, engines,
incinerators, and other combustion sources.”). Thus, according to the
Specification, the claimed invention, Smyrniotis, and Zamansky are all
focused on a common problem of pollutant control in combustion systems.
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Whether a patent claiming the combination of prior art elements is
obvious is determined by whether the improvement is more than the
predictable use of prior art elements according to their established functions.
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
“Common sense teaches, however, that familiar items may have
obvious uses beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle.” Id. at 420. Regardless of Zamansky’s primary
purpose, the Examiner found that Zamansky discloses a method of
improving the performance of a combustion system and reducing pollutants
by injecting metal additives into the main combustion zone and/or the
reburning zone of the combustion chamber. Ans. 6. The assertion that a
person of ordinary skill in the relevant technology would ignore Zamansky
because Zamansky may use this technology for a primary purpose different
than the claimed invention is not supported by the evidence in this case. See
KSR, 550 U.S. at 420. As the Supreme Court reminds us, “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.” Id.
at 420-21.
Whether Zamansky Discloses A Combustion Catalyst
Appellants argue that Zamansky “does not teach combustion
catalysts” and that the metal additives in Zamansky are used “to reduce
NOX.” App. Br. 5-6; Reply Br. 2. Appellants do not cite any evidence that
metal additives used to reduce NOX cannot also be combustion catalysts.
Appellants also argue that “not all metal-containing additives are
combustion catalysts” (Reply Br. 3) but do not point us to any evidence that
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establishes when a metal-containing additive is or is not a combustion
catalyst.
The Specification does not define the phrase “combustion catalyst.”
If the specification does not assign or suggest a particular definition to
a claim term, it is appropriate to consult a general dictionary definition of the
word for guidance in determining the ordinary and customary meaning of
the claim term as viewed by a person of ordinary skill in the art. Comaper
Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). The Examiner
construed “catalyst” as “a person or thing that causes a change.” Ans. 6
(citing Collins English Dictionary – Complete & Unabridged 10th Edition,
HarperCollins Publishers, http://dictionary.reference.com/browse/catalyst
(accessed: Oct. 13, 2010)). The Examiner found that the metal additives in
Zamansky meet the dictionary definition because the metal additives “cause
a change in the combustion process by reducing existing nitrous oxides and
preventing the formation of additional nitrous oxides . . . without themselves
being consumed.” Ans. 6 (citing Zamansky, col. 7, ll. 40-44). The
Examiner explained that “[t]he metal additives free up oxygen molecules
(which would otherwise be bonded with nitrogen molecules to form nitrous
oxides), allowing these molecules to further promote complete oxidation of
the fuel. Id. (citing Zamansky, col. 6, ll. 53-59). We agree with the
Examiner’s construction of the phrase “combustion catalyst” and find that a
preponderance of the evidence supports the Examiner’s finding that the
metal additives in Zamansky are combustion catalysts.
In their Reply Brief, Appellants argue that the catalyst in Zamansky is
not “targeted,” notwithstanding the admission that the Zamansky catalyst is
introduced into a “known fuel-rich zone.” Reply Br. 2. Appellants do not
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point us to any evidence that a specific zone, such as a fuel-rich zone, is not
a “targeted” zone as called for in claim 29.
Appellants also argue that Zamansky does not determine the
effectiveness of the target catalysts. As found by the Examiner, Zamansky
discloses “determining the effectiveness of targeted in furnace injection of
combustion catalyst.” Ans. 4 (citing Zamansky, col. 8, ll. 18-20 (“One of
skill in the art can readily determine the optimal amount of a particular
metal-containing additive”); col. 8, ll. 36-37, 41-43). Thus, the Examiner
established by a preponderance of the evidence that Zamansky discloses this
step of the claims.
Whether The Examiner Relied On Hindsight
Appellants assert that the Examiner relied on impermissible hindsight
in the proposed combination of Smyrniotis and Zamansky. App. Br. 6. The
impermissible “hindsight syndrome” results when “that which only the
inventor taught is used against its teacher.” W.L. Gore & Assoc., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (emphasis added), cert.
denied, 469 U.S. 851 (1984). That is not the situation here because the prior
patents cited and relied upon by the Examiner provide the knowledge and
evidence to support the rejection.
“Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill [in the
art] at the time the claimed invention was made and does not include
knowledge gleaned only from applicant’s disclosure, such a reconstruction
is proper.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (emphasis
added). As found by the Examiner, Zamansky suggests introducing a
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targeted in-furnace combustion catalyst separately from the fuel as a targeted
in-furnace chemical effective for improving the oxidation of the fuel. Ans.
4. Thus, the suggestion to use such a combustion catalyst is found in
Zamansky, not only in the Specification. Accordingly, Appellants’
arguments do not apprise us of error in the rejection by the Examiner.
Whether The Claimed Invention Provides Unexpected Results
Finally, Appellants argue that the results in Example 3 in the
Specification are “truly surprising.” App. Br. 7. Appellants assert that these
surprising or unexpected results are part of the “entirety of the evidence” in
determining patentability, thereby suggesting that this shifts the weight of
the evidence in their favor.
“A greater than expected result is an evidentiary factor pertinent to the
legal conclusion of . . . obviousness.” In re Corkill, 771 F.2d 1496, 1501
(Fed. Cir. 1985) (citation omitted). However, “[i]t is well settled that
unexpected results must be established by factual evidence. Mere argument
or conclusory statements in the specification does not suffice.” In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (citation omitted).
Here, the only asserted factual evidence of alleged unexpected results
is from statements in the Specification explaining the result in Example 3
and speculating why this result was obtained. See Spec., paras. [0042],
[0043], and [0045].
The data and result from Example 3 is not a satisfactory showing of
unexpected results. When a process is said to achieve unexpected (i.e.,
superior) results, those results must logically be shown as superior compared
to the results achieved with other processes. In re De Blauwe, 736 F.2d at
705 (citations omitted). Moreover, an assertion of unexpected or superior
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results to rebut a prima facie case of obviousness must compare the claimed
invention to the closest prior art. In re Merchant, 575 F.2d 865, 869 (CCPA
1978). Here, Appellants have not presented any evidence, such as
comparative tests and data, comparing Appellants’ claimed process with the
closest prior art. Thus, Appellants’ assertions of unexpected results
“constitute mere argument and conclusory statements in the specification
which cannot establish patentability.” In re De Blauwe, 736 F.2d at 705
(citations omitted).
Having considered all the evidence presented by Appellants against
obviousness and weighing all the evidence anew, it is our conclusion that the
evidence for obviousness outweighs the evidence against obviousness.
Dependent Claim 30
Appellants argue, without reference to any supporting evidence, that
the Zamansky reference “does not specify slurries of combustion catalysts
comprised of anything.” App. Br. 8. The Examiner’s finding to the contrary
is supported by a preponderance of the evidence. Ans. 5; see also
Zamansky, col. 18, ll. 58-60 (“the metal-containing additives are in the form
of a solid particulate, a liquid, a solution, a suspension, a slurry, a molten
substance, or a gas”) (emphasis added).
Dependent Claim 31
Appellants repeat their argument that Zamansky is directed only to
reducing NOX (App. Br. 9), which we have addressed above. We also note
that in rejecting claim 31, the Examiner cited the Zamansky disclosure
which lists most of the metal compounds listed in claim 31. Ans. 5. Thus,
we do not find persuasive Appellants’ assertion of error by the Examiner.

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DECISION
Upon consideration of the record as a whole in light of Appellants’
contentions and the preponderance of relevant evidence, we affirm the
Examiner’s decision rejecting claims 29-31 under 35 U.S.C. § 103(a) based
on Smyrniotis and Zamansky.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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