Ex Parte Smyrniotis et al

Patent Trial and Appeal Board

Aug 13, 2018

12501590 (P.T.A.B. Aug. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/501,590 07/13/2009
37138 7590 08/15/2018
THADDIUS J. CARVIS
Law Offices of Thaddius Carvis
16341 Limestone CT
LEESBURG, VA 20176
FIRST NAMED INVENTOR
Christopher R. Smyrniotis
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.
FTP6008A US 4651
EXAMINER
PO, MING CHEUNG
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
08/15/2018 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):
admin@tjcarvis.com
tjcarvis@email.com
nsguth@comcast.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER R. SMYRNIOTIS,
KENT W. SCHULZ, and EMELITO P. RIVERA
Appeal2017-009643
Application 12/501,590
Technology Center 1700
Before LINDA M. GAUDETTE, RAEL YNN P. GUEST, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1 and 3-9. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6.
We affirm.
The invention relates to a process that increases the output of a
combustor fired with coal having high iron and/or calcium content by
reducing the tendency of slag to form on heat exchange surfaces, changing
the nature of the slag to make it easier to remove, and actually removing
slag. Spec. ,r 1. Claim 1 illustrates the invention:
1. A process for reducing slag cohesiveness and/or adhesiveness
in a combustor, thereby decreasing the rate of fouling, comprising:
Appeal2017-009643
Application 12/501,590
combusting a slag-forming coal, having an iron content of greater than
about 15% based on the weight of the ash and expressed as Fe203 and/or a
calcium content of greater than 5% based on the weight of the ash and
expressed as CaO, with an overall excess of oxygen;
moving the resulting combustion gases though heat exchange
equipment under conditions which cause cooling of slag formed by burning
the fuel; and
prior to contact with said heat exchange equipment in the combustor,
introducing into hot combustion gases in the combustor an aqueous liquid
aluminum trihydroxide reagent in amounts, substoichiometric in terms of
affecting the fusion point of the slag, and with droplet sizes and
concentrations effective to form nano-sized particles of under 200
nanometers in the hot combustion gases and to decrease the rate of fouling
by slag and to increase the friability of resulting slag.
Appellants 1 request review of the Examiner's rejection of claims 1
and 3-9 under 35 U.S.C. §I03(a) as unpatentable over Smymiotis (US
2005/0150441 Al, published July 14, 2005), Pastore (US 2009/0178599 Al,
published July 16, 2009), and Johnson (US 7,332,002 B2, issued February
19, 2008). App. Br. 3; Final Act. 3.
Appellants identify each of independent claims 1, 6, 9, along with
their respective dependent claims, where applicable, as separate claim
groupings. App. Br. 4. However, Appellants rely on the same arguments to
address all three claim groupings. Id. at 8. Accordingly, we select claim 1
as representative of all the claims presented for review on appeal. Claims 3-
9 stand or fall with claim 1.
1 Fuel Tech, Inc. is identified as the real party in interest. App. Br. 1.
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OPINION
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the rejection of claims 1 and 3-9 for the reasons
presented by the Examiner. We add the following for emphasis.
The subject matter of independent claim 1 is directed to a process for
reducing slag cohesiveness and/or adhesiveness in a combustor resulting
from the combustion of a high iron and/or calcium content slag-forming coal
by introducing an aqueous liquid aluminum trihydroxide reagent into hot
combustion gases generated in the combustor prior to the gases contacting
the heat exchange equipment in the combustor, thereby decreasing the rate
of fouling by slag and increasing the friability of resulting slag.
The Examiner finds Smymiotis teaches controlling slag from
combustion of coal containing iron or calcium using a slag controlling
chemical comprising magnesium hydroxide that is introduced at various
points in the form of a spray into the combustion gas. Final Act. 3--4;
Smymiotis ,r,r 2, 17, 23-26, 30. The Examiner finds Smymiotis does not
teach (1) the content of the coal containing iron in the form ofFe20 3 and/or
calcium oxide or (2) the use of a chemical comprising aluminum
trihydroxide as a slag controlling chemical. Final Act. 4--5. With respect to
difference (1 ), the Examiner finds Johnson teaches the claimed high
iron/calcium slag-forming coal was known in coal-fired furnaces and
determined that it would have been obvious to one of ordinary skill in the art
to use the coal as the combustion source in the process disclosed by
Smymiotis. Final Act. 4; Johnson col. 2, 11. 1-39, col. 3, 11. 1-8, 43--45.
With respect to difference (2), the Examiner finds Pastore teaches the use of
aluminum hydroxide in liquid form as a slag-reducing agent combined with
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magnesium hydroxide in the combustion of coal. Final Act. 5; Pastore ,r,r
15, 22. The Examiner further relies on the combined teachings of
Smymiotis and Pastore for the amount and size of particles for the aluminum
hydroxide. Final Act. 5-6; Smymiotis ,r 6; Pastore ,r 21. The Examiner
determines that it would have been obvious to one of ordinary skill in the art
to add Pastore' s aqueous aluminum hydroxide to Smymiotis' s slag
controlling agent because Pastore teaches its use with magnesium hydroxide
as effective to reduce slag. Final Act. 5; Pastore ,r,r 17-18.
Appellants argue that Johnson is not pertinent to the invention because
it is directed to a technology that is different from the technology of the
other references. App. Br. 5. According to Appellants, Johnson is directed
to furnaces that require a liquid layer of slag at the location in a boiler that
combustion is most intense and does not address the problem with
particulate ash that leaves the combustor with the combustion gases and will
foul heat transfer surfaces unless something is done. Id.
We are unpersuaded. Appellants acknowledge in their Specification
that there is an economic reason to use high iron/ calcium content coals in
many plants. Spec. ,r 3. An applicant cannot defeat an obviousness rejection
by asserting that the cited references fail to teach or suggest elements which
the applicant has acknowledged are taught by the prior art. Constant v.
Advanced Micro-Devices, Inc., 848 F. 2d 1560, 1570 (Fed. Cir. 1988) ("A
statement in a patent that something is in the prior art is binding on the
applicant and patentee for determinations of anticipation and obviousness.");
In re Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975) (explaining that a
statement by an applicant that certain matter is prior art is an admission that
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Application 12/501,590
the matter is prior art for all purposes). Thus, there is no support for the
argument that the type of coal itself is the patentable feature of the invention.
Moreover, Appellants have not adequately explained why one skilled
in the art would not have been capable of using Johnson's coal in a
combustor if economically feasible and then treating the generated gases
according to the combined teachings of Smymiotis and Pastore to reduce the
impact of slag on the combustor components. KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398,421 (2007) ("A person of ordinary skill is also a person of
ordinary creativity, not an automaton."); see also In re Sovish, 769 F.2d 738,
743 (Fed. Cir. 1985) (presuming skill on the part of one of ordinary skill in
the art).
Appellants argue neither Smymiotis, Pastore, nor their combined
teachings disclose the use of aluminum trihydroxide alone as a slag reducing
agent. App. Br. 5---6.
We find this argument also unavailing. As noted by the Examiner, the
language of claim 1 is drafted using the open transitional language of
"comprising" and does not exclude the presence of additional slag reducing
agents. Ans. 9. Further, Appellants direct us to no language in the claim
that limits the slag reducing agent to only aluminum trihydroxide.
Relying on the Declaration under 37 C.F.R. § 1.132 (Declaration)2 by
co-inventor and Declarant Kent W. Schulz, Appellants contend that the use
of magnesium hydroxide together with aluminum trihydroxide3, as taught by
2 The Declaration was submitted on December 23, 2014 and entered by the
Examiner in the Final Action of April 27, 2015.
3 We understand that the aluminum hydroxide (1261) discussed in the
Declaration and the Appeal Brief falls within the scope of the claimed
aluminum trihydroxide.
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Pastore, leads to unexpectedly improved results in the control of slag while
these materials, when used separately, were not effective. App. Br. 6; Deel.
,r,r 4---6 and Exhibit A.
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of obviousness was based. In re Rinehart, 531 F.2d 1048,
1052 (CCPA 1976). The burden of establishing unexpected results rests on
Appellants. Appellants may meet this burden by establishing that the
difference between the claimed invention and the closest prior art was an
unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). The unexpected results must be established by factual evidence, and
attorney statements are insufficient to establish unexpected results. See In re
Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997). Further, a showing of
unexpected results supported by factual evidence must be reasonably
commensurate in scope with the degree of protection sought by the claims
on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
After weighing Appellants' evidence in support of patentability,
including the Declaration, we agree with the Examiner's determination that a
preponderance of the evidence weighs in favor of obviousness. Ans. 10.
We first note that Appellants' arguments appear to be inconsistent
with Appellants' showing of unexpected results because Appellants first
argue that the claims are limited to the use of aluminum trihydroxide alone
(App. Br. 5---6) and then argue that the combined use of aluminum
trihydroxide and magnesium hydroxide is superior to aluminum trihydroxide
by itself (id. at 6). Further, it is not clear that the showing distinguishes the
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claimed invention from the closest prior art, because Pastore expressly
teaches using more than one slag-reducing ingredient. Moreover, the
showing is not commensurate in scope with the claim because Declarant
does not identify the composition of the high iron/calcium content coal used
to perform the tests other than describing it as coal having an iron content
higher than the Illinois Basin coals. Deel. ,r 3. In addition, Declarant has
only tested a single aluminum trihydroxide reagent ( aluminum hydroxide
(1261)) and has not adequately explained why this single reagent is
representative of the broad scope of aluminum trihydroxide compositions
claimed. Appellants also provide no details with respect to amounts and
droplet sizes of the slag reducing reagent used.
Thus, on this record, Appellants have not adequately explained why
the evidence shows the improvement would have been unexpected by one of
ordinary skill in the art and that the testing is reasonably commensurate in
scope with the claims.
Appellants additionally argue that one skilled in the art would not
have been able to ascertain from the prior art references if their treatments
would work to control slag in coals that are high in calcium or iron because
the type of coal greatly affects the recovery of ash and effects of slag and
there is no single set of data or charts available to predict ash and slag
properties just because a chemical analysis has been done. App. Br. 6-8.
Appellants also argue that none of the cited references disclose introducing a
slag reducing agent in nano-sized particles of under 200 nanometers. Id. at
10. Appellants contend that they believe the particle size disrupts the normal
crystalline or glass that forms the slag. Id.
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We are unpersuaded by these arguments because they are not
supported by objective evidence showing the unpredictability of the art or
the criticality of the slag-reducing agent's particle size. Appellants, at most,
have provided mere attorney arguments and such arguments of counsel
cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979).
Thus, Appellants have not adequately shown error in the Examiner's
determination of obviousness.
Accordingly, we affirm the Examiner's prior art rejection of claims 1
and 3-9 under 35 U.S.C. § 103(a) for the reasons presented by the Examiner
and given above.
ORDER
The Examiner's prior art rejection of claims 1 and 3-9 under 35
U.S.C. § 103(a) 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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