Ex Parte Traina

Board of Patent Appeals and Interferences

Jul 20, 2009

10336112 (B.P.A.I. Jul. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOHN E. TRAINA
__________

Appeal 2009-0033061
Application 10/336,112
Technology Center 3700
__________

Decided:2 July 20, 2009
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and ERIC GRIMES,
Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL

1 Heard June 11, 2009.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 3-8, and 10-23, all the claims pending. We have jurisdiction under
35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The invention is directed to “a power generation system that relies
upon cultivated biomass to provide sufficient amounts of fuel to produce
large amounts of power” (Spec. 3).
Claims 1, 4, 6, 8, 12-15, 17, and 21 are representative of the subject
matter on appeal:
1. A system for producing power comprising:
a biomass field that produces biomass material grown for use as
combustion fuel,
a furnace that burns the biomass material to produce heat and steam,
means for transferring the biomass material from the biomass field to
the furnace, and
means for transferring at least one of waste heat and products of
combustion from the furnace to the biomass field,
wherein the furnace burns substantially all the biomass fuel produced
in the biomass field and at least one waste product of combustion from the
furnace is returned to the biomass field.

4. The system of claim 1 wherein the biomass field is comprised of a
matrix of ponds exposed to sunlight.

6. The system of claim 1 wherein the products of combustion are
selected from the group consisting of water vapor, carbon dioxide and ash.

8. A method of producing energy comprising:
growing in a biomass field a biomass material for use as a combustion
fuel,
transferring the biomass material from the biomass field to a furnace
or to storage,
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burning the biomass material in the furnace to produce heat and
products of combustion selected from the group comprised of water vapor,
carbon dioxide and ash,
using a first portion of the heat to produce steam, and
returning a second portion of the heat to the biomass field.

12. The method of claim 8 also comprising returning to the biomass field
from the furnace at least some products of combustion selected from the
group consisting of water vapor, carbon dioxide and ash.

13. The method of claim 8 wherein the biomass field grows plankton and
also comprising periodically harvesting plankton from the biomass field for
use as the biomass material and drying the harvested plankton before
transferring the biomass material to the furnace or storage.

14. The method of claim 8 wherein the biomass field grows oil producing
plants and also comprising periodically collecting oil from the plants for use
as the biomass material before transferring the biomass material to the
furnace or storage.

15. A partially closed loop system for producing power comprising:
a biomass field that produces biomass material grown for use as a
combustion fuel,
a furnace that burns the biomass material to produce heat, steam and
products of combustion,
a generator connected to the furnace which utilizes steam from the
furnace to generate electricity,
means for transferring the biomass material from the biomass field to
the furnace, and
means for transferring at least one of heat and products of combustion
from the furnace to the biomass field.

17. A system for producing power comprising:
a biomass field that produces biomass material grown for use as
combustion fuel,
a furnace that burns the biomass material to produce heat, ash, carbon
dioxide and water vapor, and
means for transferring at least one of a portion of the carbon dioxide
and a portion of the water vapor from the furnace to the biomass field.
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21. A method of producing energy comprising:
growing in a biomass field a biomass material for use as a combustion
fuel,
transferring the biomass material from the biomass field to a furnace
or to storage,
burning the biomass material in the furnace to produce heat and
products of combustion selected from the group comprised of water vapor,
carbon dioxide and ash, and
returning at least one of a portion of the carbon dioxide and a portion
of the water vapor from the furnace to the biomass field.

The Examiner relies on the following evidence:
Frederick US 4,203,374 May 20, 1980
Hertel US 4,437,419 Mar. 20, 1984
Rivers US 4,532,873 Aug. 6, 1985
Ladt US 4,572,086 Feb. 25, 1986
LePori US 4,848,249 Jul. 18, 1989
Moll US 5,935,842 Aug. 10, 1999
O’Connor US 6,536,360 B2 Mar. 25, 2003

The Examiner rejected the claims as follows:
(A) Claims 17-23 under 35 U.S.C. § 102(b) as anticipated by Frederick.

(B) Claim 1 under 35 U.S.C. § 103(a) as unpatentable over Frederick and
Rivers.

(C) Claims 4-6 under 35 U.S.C. § 103(a) as unpatentable over Frederick,
Rivers and Moll.

(D) Claims 1, 3, 7, 10, and 14 under 35 U.S.C. § 103(a) as unpatentable
over LePori and Ladt.

(E) Claims 8 and 11 under 35 U.S.C. § 103(a) as unpatentable over Ladt,
Rivers, and O’Connor.

(F) Claim 12 under 35 U.S.C. § 103(a) as unpatentable over Ladt, Rivers,
O’Connor, and Hertel.
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(G) Claim 13 under 35 U.S.C. § 103(a) as unpatentable over Ladt, Rivers,
O’Connor, and Moll.

(H) Claims 1, 3, 7, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable
over LePori, Ladt, and Hertel.

(I) Claims 4-6 under 35 U.S.C. § 103(a) as unpatentable over LePori,
Ladt, Hertel, and Moll.

ANTICIPATION
Principles of Law
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
During examination, the PTO must interpret terms in a claim using
“the broadest reasonable meaning of the words in their ordinary usage as
they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Issue (A): Anticipation of Claims 17-23
The Examiner rejected claims 17-23 as anticipated by Frederick.
The issue raised by this rejection is whether Appellant has shown that
the Examiner erred in finding that Frederick’s system for producing power by
burning biomass material includes a means for transferring resultant carbon
dioxide or water vapor to the biomass field where the biomass material was
grown.

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Findings of Fact
FF1 The Specification teaches that “[t]he by-products of combustion
are principally heat, carbon dioxide, water vapor and ash” (Spec. 3). In the
present invention, “[t]hese by-products, which normally make up smoke
stack emissions, are in part cycled back to a biomass field as input energy
and nutrients” (id.), “typically through pipes” (id. at 4), in order to “grow the
biological material rather than dispose of them as waste” (id. at 5).
FF2 Claim 17 is directed to a system for producing power by
burning biomass material which comprises, among other things, “means for
transferring at least one of a portion of the carbon dioxide and a portion of
the water vapor from the furnace to the biomass field.” Similarly, claim 21
is directed to a method of producing energy which includes the step of
“returning at least one of a portion of the carbon dioxide and a portion of the
water vapor from the furnace to the biomass field.”
FF3 Frederick describes “a method and means for burning corn and
corncobs which permits the heating of other buildings with the products of
combustion” (Frederick, col. 1, ll. 37-39).
FF4 Corn and corncobs are “biomass material” (see FF14 below).
FF5 Frederick’s apparatus for burning corncobs comprises:
A conical-shaped perforated floor . . . positioned within an
enclosure . . . [with] a central opening formed therein which is
in communication with the source of material to be burned.
The material to be burned is forced upwardly through the
central opening in the floor and is deposited on the perforated
floor. The material is ignited . . . The material tends to be
deposited upon the floor in a mound and slowly moves
downwardly over the floor . . . towards the periphery. The
material burns as it moves . . . so that only ash remains when
the material reaches the periphery of the floor. A conveyor
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extends around the periphery of the floor for conveying the ash
therefrom. Air carrying the products of combustion is passed
upwardly through a heat exchanger so that outlying buildings
may be heated.

(Frederick, col. 1, l. 55 to col. 2, l. 4.)
FF6 According to Frederick, “[t]he gases of combustion are filtered
. . . and exhausted through stack 58 . . . result[ing] in very little pollutants
being added to the atmosphere” (Frederick, col. 3, ll. 34-39).
Analysis
Appellant contends that Frederick merely discloses “a conventional
smokestack that releases products of combustion into the atmosphere where
they can be blown in any direction by the wind” (App. Br. 6), rather than
“means for transferring . . . products of combustion, such as carbon dioxide
and water vapor, from the furnace to the biomass field” (id. at 7).
The Examiner reasons that Frederick’s corn “was clearly grown in an
area of land . . . somewhere on this planet” (Ans. 12), and “smokestack [58]
illustrated in . . . figure [1] would transport these well known products of
combustion . . . into the atmosphere of planet earth where they eventually
would return via air currents and weather patterns” (id.), and therefore,
Frederick discloses means for transferring carbon dioxide and water vapor
“from the furnace to the biomass field” (id. at 3).
Appellant has the better argument. The present Specification makes a
clear distinction between cycling combustion products like carbon dioxide
and water vapor back to the biomass field, and simply releasing them into
the atmosphere through an emissions stack (FF1). The Examiner’s
interpretation of Frederick’s release of combustion products into Earth’s
atmosphere through stack 58 as returning carbon dioxide and water vapor to
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the field where the corn was grown is not reasonable, given the teachings of
the Specification. Nor has the Examiner identified any other means or
structure in Frederick that would meet the limitations of the rejected claims.

Conclusions of Law
Appellant has shown that the Examiner erred in finding that
Frederick’s system for producing power by burning biomass material
includes a means for transferring resultant carbon dioxide or water vapor to
the biomass field where the biomass material was grown.
The rejection of claims 17-23 under 35 U.S.C. § 102(b) as anticipated
by Frederick is reversed.
OBVIOUSNESS
Principles of Law
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir.
1992). Obviousness requires a suggestion of all the elements in a claim.
CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003).
“The combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Moreover, an “[e]xpress
suggestion to substitute one equivalent for another need not be present to
render such substitution obvious.” In re Fout, 675 F.2d 297, 301 (CCPA
1982).
Finally, “apparatus claims cover what a device is, not what a device
does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469
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(Fed. Cir. 1990). Claims directed to an apparatus must be distinguished
from the prior art on structural grounds. See In re Schreiber, 128 F.3d 1473,
1477-1478 (Fed. Cir. 1997). Merely stating an intended use for an apparatus
is not sufficient to distinguish the apparatus from the prior art. In re Sinex,
309 F.2d 488, 492 (CCPA 1962).
Issue (B): Obviousness of Claim 1
The Examiner rejected claim 1 as unpatentable over Frederick and
Rivers.
The issue raised by this rejection is whether Appellant has shown that
the Examiner erred in concluding that a system for producing power by
burning biomass material that includes a means for transferring a resultant
combustion product to the biomass field where the biomass material was
grown would have been obvious over the combined teachings of Frederick and
Rivers.
Findings of Fact
FF7 Claim 1 is directed to a system for producing power comprising
four structural elements: a biomass field that produces biomass material; a
furnace that burns biomass material to produce heat and steam; “means for
transferring the biomass material” from the field to the furnace; and “means
for transferring at least one of waste heat and products of combustion” from
the furnace to the field where the biomass material was grown.
FF8 Ash is a by-product of combustion (Spec. 3).
FF9 According to the Specification, “[c]onveyors, air streams,
trucks, carts or other vehicles could be used to transport the ash from the
furnace to the biomass field or to a storage location” (Spec. 7).
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FF10 Frederick’s apparatus includes “tube 31 having a top intake end
in communication with a conveyor 32 extending into the building 10 and
which is in communication with a source of cobs” (Frederick, col. 2, ll. 30-
33), and “ash conveyor 42 which extends outwardly” (id. at col. 2, ll. 52-53)
for transporting ash away from the conical floor.
FF11 Rivers describes a method of converting “coarse or poorly
graded biomass or even peat into a fuel that burns in air suspension in a
boiler . . . [and] can be used to fire kilns, product dryers . . . water wall
furnaces or any other ‘cold’ wall type of heat recovery processes” (Rivers,
col. 3, ll. 49-57).
Analysis
According to the Examiner, “Frederick discloses applicant’s invention
substantially as claimed with the exception of and steam [sic], using a first
portion of the heat to produce steam” (Ans. 5). However, the Examiner
concluded that “[i]t would have been obvious to one of ordinary skill in the
art to modify Frederick et al by including and steam [sic], using a first
portion of the heat to produce steam as taught by Rivers et al for the purpose
of recovering the heating value of the fuel to provide for a more energy
efficient system” (id.).
Appellant acknowledges that it is known in the art to burn biomass to
produce steam and generate electricity (App. Br. 9). However, Appellant
contends “the biomass [in Frederick and Rivers] is regarded as waste and the
furnace provides no heat or other materials for use in growing the biomass
which is burned by the furnace” (id.). In addition, Appellant contends that
“[n]either Frederick nor Rivers teach[es] means for transferring the products
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of combustion to the biomass field. A smoke stack whose emissions could
be blown in any direction is not a disclosure of this step” (id.).
These arguments are not persuasive. Claim 1 is not directed to a
method, but to a “system” or apparatus comprising several structural
components: a biomass field that produces biomass material, a furnace
capable of burning biomass to produce heat and steam, means for
transferring biomass material from the biomass field to the furnace, and
means for transferring waste heat or products of combustion (FF7).
According to the Specification, ash is a product of combustion, and a
conveyor is a means of transferring ash (FF8, FF9). Frederick discloses
corn and corncobs (i.e., biomass material) grown in a field; a furnace
capable of burning biomass material to produce heat, ash, and combustion
gases (FF3-FF6); a conveyor capable of transferring biomass to the furnace;
and an ash conveyor capable of removing ash from the furnace (FF10).
Claims directed to an apparatus must be distinguished from the prior art on
structural grounds. Thus, the intended use for an apparatus is not sufficient
to distinguish it from the prior art unless the intended use imposes structural
limitations on the apparatus not met by the prior art. Similarly, the purpose
for which biomass material is grown is irrelevant in the context of a claim to
a system or apparatus. See e.g., Schreiber, 128 F.3d at 1477-1478; Sinex,
309 F.2d at 492. Appellant has not identified a structural difference between
the system of claim 1 and the prior art relied on by the Examiner.
Conclusions of Law
Appellant has not shown that the Examiner erred in concluding that a
system for producing power by burning biomass material that includes a means
for transferring a resultant combustion product to the biomass field where the
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biomass material was grown would have been obvious over the combined
teachings of Frederick and Rivers.
The rejection of claim 1 as unpatentable over Frederick and Rivers is
affirmed.
Issue (C): Obviousness of Claims 4-6
The Examiner rejected claims 4-6 as unpatentable over Frederick,
Rivers, and Moll.
The issue raised by this rejection is whether Appellant has shown that
the Examiner erred in concluding that a system for producing power by
burning biomass material, where the system includes a means for transferring a
resultant combustion product to the biomass field, and where the biomass field
is a matrix of ponds exposed to sunlight, would have been obvious over the
combined teachings of the cited art.
Findings of Fact
FF12 Claim 4 depends from claim 1 and specifies that the biomass
field is a matrix of ponds.
FF13 Claim 6 depends from claim 1 and specifies that the products of
combustion are selected from the group consisting of water vapor, carbon
dioxide, and ash.
FF14 Moll teaches that “[a] wide variety of plant materials are . . .
employed for the production of biomass feeds, starch and ethanol. Biomass
. . . is plant material without any specially valuable composition . . . [and] is
used for direct burning as fuel, or as a feedstock for production of valuable
substances such as ethanol” (Moll, col. 1, ll. 27-32).
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FF15 Moll teaches that aquatic crops “can be used to satisfy the needs
described above. For example, algae can be used as biomass” (id. at col. 2,
ll. 57-58).
FF16 Moll teaches that aquatic crops can be grown “in regions where
agricultural productivity is now low” (Moll, col. 2, ll. 55-56), and describes
growing algae in the desert in shallow ponds receiving up to 10 hours of
direct sunlight per day (id. at col. 8, ll. 16-21).
Analysis
According to the Examiner, Frederick and Rivers disclose the
invention “substantially as claimed with the exception of the biomass field
. . . composed of a matrix of ponds” (Ans. 5). The Examiner relies on Moll
as teaching an algal biomass grown in a field “composed of a matrix of
ponds exposed to the sunlight” (id.). The Examiner concluded that it would
have been obvious to modify Frederick by substituting Moll’s matrix of
algae ponds for Frederick’s cornfield “for the purpose of providing a
biomass that can be produced at low cost in regions unsuited for the
production of other agricultural products” (id. at 6).
Appellant contends that “neither Frederick nor Rivers disclose[s]
growing biomass for use as a combustion fuel or returning the products of
combustion to the field from which biomass material burned in the furnace
has been obtained” (App. Br. 10). In addition, Appellant contends “[t]here
is no teaching or suggestion in the Moll patent to grow algae for use as a
combustion fuel or to use combustion products to grow the algae” (id.).
Appellant’s arguments are not persuasive. As for claims 4 and 5,
Moll teaches that “algae can be used as biomass” (FF15), and biomass can
be “used for direct burning as fuel” (FF14), while Frederick teaches that
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materials such as corn and corncobs can also be burned as fuel (FF3, FF4).
The substitution of one biomass fuel for another in Frederick’s apparatus
would have been obvious to one of ordinary skill in the art. See Fout, 675
F.2d at 301. As for claim 6, Appellant’s argument is the same as that
discussed above with regard to claim 1, and is unpersuasive for the same
reason discussed above: Frederick’s apparatus includes an ash conveyor
(FF10), and claim 6 has not been distinguished from the prior art on a
structural basis.
Conclusions of Law
Appellant has not shown that the Examiner erred in concluding that a
system for producing power by burning biomass material, where the system
includes a means for transferring a resultant combustion product to the biomass
field, and where the biomass field is a matrix of ponds exposed to sunlight,
would have been obvious over the combined teachings of the cited art.
The rejection of claims 4-6 as unpatentable over Frederick, Rivers, and
Moll is affirmed.
Issue (D): Obviousness of Claims 1, 3, 7, 10, and 14
The Examiner rejected system claims 1, 3, and 7, and method claims 10
and 14 as unpatentable over LePori and Ladt.
For claims 1, 3, and 7, the issue raised by this rejection is whether
Appellant has shown that the Examiner erred in concluding that a system
including a field that produces biomass material, a furnace capable of burning
the biomass to produce heat and steam, means capable of transferring the
biomass material produced in the biomass field to the furnace, and means
capable of transferring at least one of waste heat and products of combustion
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from the furnace to the field where the biomass material was grown would
have been obvious over the combined teachings LePori and Ladt.
For claims 10 and 14, the issue raised by this rejection is whether
Appellant has shown that the Examiner erred in concluding that a method of
producing energy that includes the steps of growing a biomass material in a
field, burning the biomass material, and returning some of the heat generated
by burning the biomass material to the field where the biomass material was
grown would have been obvious over the combined teachings of LePori and
Ladt.
Findings of Fact
FF17 According to the Specification, “[c]onveyors, air streams,
trucks, carts or other vehicles could be used to transport the biomass from
the field or storage location to the furnace” (Spec. 5).
FF18 LePori teaches that biomass waste from cotton ginning can be
hauled back to the farms where the cotton was grown and used to enrich the
soil, or the biomass waste can be used to produce heat, steam, and electricity
(LePori, col. 1, ll. 10-50).
FF19 LePori discloses a “system for converting biomass to usable
energy . . . compris[ing] a biomass feed apparatus which includes a feed
hopper . . . [and a] feed auger to carry biomass feed from the hopper”
(LePori, col. 2, ll. 8-12), “a two stage combustion apparatus . . . [and] a
boiler in which the heat from the combustion gases converts water to steam”
(id. at col. 2, ll. 22-30).
FF20 LePori teaches that the heat in the flue gases exiting the boiler
is transferred to combustion air streams, and the flue gas is eventually
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“drawn out through a stack 68 . . . and released to the atmosphere” (LePori,
col. 4, ll. 44-52).
FF21 Ladt discloses a “transport and storage means operable to
receive dried fine fuel, to transfer same to the site of the end user and to hold
and store same at the site . . . as the dried fine fuel is withdrawn therefrom
and fed to a burner” (Ladt, col. 2, ll. 12-16).
FF22 Claims 10 and 14 depend from independent claim 8 (which is
not subject to this rejection). Claim 8 is directed to a method of producing
energy comprising growing a biomass material in a field for use as
combustion fuel, transferring the biomass material to a furnace or storage,
burning the biomass material in the furnace to produce heat and products of
combustion, using a first portion of the heat to produce steam, and returning
a second portion of the heat to the biomass field. Claim 10 requires
generating electricity from the steam. Claim 14 specifies that oil producing
plants are grown in the biomass field.
Analysis
According to the Examiner, LePori “discloses applicant’s invention
substantially as claimed with the exception of the means for transferring the
biomass materials from the biomass field to the furnace or to storage” (Ans.
7). The Examiner concluded that it would have been obvious “to modify
LePori by including means for transferring the biomass materials from the
biomass field to the furnace or storage as taught by Ladt for the purpose of
providing fuel to the apparatus” (id.).
With respect to claims 1, 3, and 7, Appellant contends that the claims
require that “the furnace burns substantially all of the biomass fuel produced
in the biomass [field]” (App. Br. 11). Appellant contends that LePori’s
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“cotton plants are grown for the fiber, not the cotton gin trash that is burned”
(id.). “Hence, there is no teaching that the furnace burns substantially all the
biomass fuel produced in the biomass field” (id.). “Also, missing from
LePori is . . . the means for transferring substantially all of the biomass
material produced in the biomass field to the furnace. Instead, . . . portions
of the cotton plants, are sent to a cotton gin for processing . . . [and] never
reach[ ] the furnace” (id. at 11-12).
These arguments are not persuasive. Again, claim 1 is directed to a
“system” or apparatus, not a method. As discussed above, claims directed to
an apparatus must be distinguished from the prior art on structural grounds,
and the intended use for an apparatus is not sufficient to distinguish it from
the prior art unless the intended use imposes structural limitations on the
apparatus not met by the prior art. Similarly, the purpose for which biomass
material is grown is irrelevant in the context of a claim to a system or
apparatus. Thus, it is irrelevant whether LePori’s cotton plants are grown
primarily for their fiber and/or oil, or are intended for use as combustion
fuel. It is equally irrelevant whether LePori intended to transfer all of the
biomass grown in the field to the furnace. Appellant has failed to identify a
structural difference between the system of claims 1, 3, and 7 and the prior
art relied on by the Examiner.
With respect to claims 10 and 14, Appellant contends that these
claims depend from method claim 8, which requires the steps of burning
biomass material to produce heat, using a portion of the heat to produce
steam, and returning a portion of the heat to the field where the biomass was
grown (App. Br. 13), “to create an inter-dependent system” (id. at 12).
Appellant contends that “[t]here is no such teaching in LePori or Ladt” (id.).
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Appellant’s argument is persuasive. LePori uses a boiler in which the
heat from burning cotton ginning waste converts water to steam. Any heat
remaining in the flue gas from the boiler is released into the atmosphere
through an emission stack (FF19, FF20). The Specification distinguishes
between cycling combustion products like heat and carbon dioxide back to
the biomass field, and simply releasing them into the atmosphere (FF1).
The Examiner’s interpretation of LePori’s release of flue gases to the
atmosphere through stack 68 as returning heat to the field where the cotton
was grown is not reasonable, given the teachings of the Specification.
Conclusions of Law
Appellant has not shown that the Examiner erred in concluding that a
system including a field that produces biomass material, a furnace capable of
burning the biomass to produce heat and steam, means capable of transferring
the biomass material produced in the biomass field to the furnace, and means
capable of transferring at least one of waste heat and products of combustion
from the furnace to the field where the biomass material was grown would
have been obvious over the combined teachings of LePori and Ladt.
However, Appellant has shown that the Examiner erred in concluding
that a method of producing energy that includes the steps of burning biomass
material, and returning some of the heat generated by burning the biomass
material to the field where the biomass material was grown would have been
obvious over the combined teachings of LePori and Ladt.
The rejection of claims 1, 3, 7, 10, and 14 as unpatentable over LePori
and Ladt is affirmed with respect to claims 1, 3, and 7, and reversed with
respect to claims 10 and 14.
Issue (E): Obviousness of Claims 8 and 11
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The Examiner rejected claims 8 and 11 as unpatentable over Ladt,
Rivers, and O’Connor.
The issue raised by this rejection is whether Appellant has shown that
the Examiner erred in concluding that a method of producing energy that
includes the steps of growing a biomass material in a field, burning the biomass
material, and returning some of the heat generated by burning the biomass
material to the field where the biomass material was grown would have been
obvious over the combined teachings of Ladt, Rivers, and O’Connor.
Findings of Fact
FF23 Claim 8 is directed to a method of producing energy comprising
growing a biomass material in a field, transferring the biomass material to a
furnace or storage, burning the biomass material in the furnace to produce heat
and products of combustion, using a first portion of the heat to produce steam,
and returning a second portion of the heat to the biomass field.
FF24 O’Connor teaches that incinerating wood and vegetation wastes
“produces an ash residue which is extremely high in natural nutrients beneficial
for plant growth” which can be “mixed with compost and varying amounts of
soil” (O’Connor, col. 1, ll. 52-54). In addition, O’Connor teaches that the heat
generated by incinerating vegetation wastes can be recovered and used to
optimize the cleansing activity of microorganisms in water retention ponds.
Analysis
According to the Examiner, Ladt and Rivers disclose the invention
“substantially as claimed with the exception of returning a second portion of
the heat to the biomass field” (Ans. 8). The Examiner relies on O’Connor as
teaching this missing element, and concludes that “it would have been obvious
for one skilled in the art to modify Ladt by including returning a second portion
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of the heat to the biomass field . . . for the purpose of optimizing the activity of
the process” (id.).
Appellant contends that method claims 8 and 11 require the steps of
growing biomass material in a field, burning the biomass material, using a
portion of the heat of combustion to produce steam and “returning a second
portion of that heat to the biomass field” where the biomass was grown (App.
Br. 13), thereby “creat[ing] an inter-dependent system” (id. at 12). Appellant
contends that “O’Connor discloses the use of heat from an incinerator to warm
retention ponds for treating waste water or other effluent where the pond may
include microorganisms that clean the water” (id.), and “[t]he purpose and
operation of a retention pond is very different from a pond that grows biomass
for use as a combustion fuel” (id.).
Appellant’s argument is persuasive. Method claim 8 requires the steps
of burning biomass material to create heat, where some of the heat is used to
produce steam, and some of the heat is returned to the field where the biomass
was grown. O’Connor does suggest using some of the heat of combustion to
provide energy for growing biomass material in a water-cleaning retention
pond. However, none of the cited references suggests the reciprocal, inter-
dependent steps of removing biomass material from a field, burning the
biomass material and returning some of the energy (in the form of heat)
released during combustion to the field where the biomass material was grown.
Conclusions of Law
Appellant has shown that the Examiner erred in concluding that a
method of producing energy that includes the steps of growing a biomass
material in a field, burning the biomass material, and returning some of the
heat generated by burning the biomass material to the field where the biomass
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material was grown would have been obvious over the combined teachings of
Ladt, Rivers, and O’Connor.
The rejection of claims 8 and 11 as unpatentable over Ladt, Rivers, and
O’Connor is reversed.

Issues (F) and (G): Obviousness of claims 12 and 13
The Examiner rejected claim 12 as unpatentable over Ladt, Rivers,
O’Connor, and Hertel, and also rejected claim 13 as unpatentable over Ladt,
Rivers, O’Connor, and Moll.
Claims 12 and 13 depend from claim 8, and the issue raised by these two
rejections is the same as that raised by the rejection of claim 8: Has Appellant
shown that the Examiner erred in concluding that a method of producing
energy that includes the steps of growing a biomass material in a field, burning
the biomass material, and returning some of the heat generated by burning the
biomass material to the field where the biomass material was grown would
have been obvious over the combined teachings of the cited art?
Findings of Fact
FF25 Hertel discloses a process for incinerating waste, sorting out and
reclaiming valuable resources such as ferrous metals, aluminum and glass, and
using some of the heat of combustion to produce steam for power generation
(Hertel, col. 1, ll. 6-11).
Analysis
Appellant contends that method claims 12 and 13 depend from claim 8,
and require the steps of growing biomass material in a field, burning the
biomass material, using a portion of the heat of combustion to produce steam
and “returning a second portion of that heat to the biomass field” where the
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biomass was grown (App. Br. 13), thereby “creat[ing] an inter-dependent
system” (id. at 12). Appellant contends essentially that these reciprocal, inter-
dependent steps are neither taught nor suggested by Ladt, Rivers, and
O’Connor, and the deficiency is not remedied by Hertel or Moll.
Appellant’s argument is persuasive for the same reasons discussed above
with respect to claim 8.
Conclusions of Law
Appellant has shown that the Examiner erred in concluding that a
method of producing energy that includes the steps of growing a biomass
material in a field, burning the biomass material, and returning some of the
heat generated by burning the biomass material to the field where the biomass
material was grown would have been obvious over the combined teachings of
the cited art.
The rejection of claim 12 as unpatentable over Ladt, Rivers, O’Connor,
and Hertel, and the rejection of claim 13 as unpatentable over Ladt, Rivers,
O’Connor, and Moll are reversed.
Issue (H): Obviousness of Claims 1, 3, 7, 15, and 16
The Examiner rejected system claims 1, 3, 7, 15 and 16 as unpatentable
over LePori, Ladt and Hertel.
The issue raised by this rejection is whether Appellant has shown that
the Examiner erred in concluding that a system including a field that produces
biomass material, a furnace capable of burning the biomass to produce heat and
steam, means capable of transferring the biomass material produced in the
biomass field to the furnace, and means capable of transferring at least one of
waste heat and products of combustion from the furnace to the field where the
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biomass material was grown would have been obvious over the combined
teachings of the cited art.
Findings of Fact
FF26 Claim 1 is discussed above (see FF7). Claim 15 is directed to a
“partially closed loop” system for producing power comprising five
structural elements: a biomass field that produces biomass material; a
furnace that burns biomass material to produce heat, steam, and products of
combustion; a generator connected to the furnace capable of using steam
from the furnace to generate electricity; “means for transferring the biomass
material” from the field to the furnace; and “means for transferring at least
one of heat and products of combustion” from the furnace to the field where
the biomass material was grown.
FF27 Hertel discloses a process for incinerating waste, using some of
the heat of combustion to produce steam for power generation (Hertel, col. 1,
ll. 6-11), and distributing waste ash to farm fields (id. at col. 4, ll. 27-30).
Analysis
According to the Examiner, LePori “discloses applicant’s invention
substantially as claimed with the exception of the means for transferring the
biomass materials from the biomass field to the furnace, means for
transferring at least one of heat and products of combustion [from] the
furnace to the biomass field, and [returning] at least one waste product of
combustion [from] the furnace . . . to the biomass field” (Ans. 10). The
Examiner concluded that it would have been obvious “to modify LePori by
including means for transferring the biomass material from the biomass field
to the furnace as taught by Ladt for the purpose of providing fuel so that the
system will operate” (id.), and “by including means for transferring at least
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one of waste heat and products of combustion from the furnace to the
biomass field . . . as taught by Hertel . . . so that a more efficient process is
realized which recycles waste matter as well as eliminates disposal costs”
(id. at 10-11).
With respect to claims 1, 3, and 7, Appellant contends that the cited
“references fail to teach or suggest that biomass be grown for use as a
combustion fuel . . . [or] that the furnace burn substantially all the biomass
fuel produced in the biomass field” (App. Br. 15). With respect to claims 15
and 16, directed to a partially closed loop system, Appellant contends that
the references “do[ ] not teach growing biomass material for use as fuel.
They also fail to disclose a system in which there is an inter-dependency
between a furnace and a biomass field in which each supplies something to
and needed by the other” (id. at 15), and “any biomass burned by Hertel
does not come from a field in which biomass is grown for fuel” (id. at 15-
16).
These arguments are not persuasive. Again, these claims are directed
to a “system” or apparatus, not a method. As discussed above, claims
directed to an apparatus must be distinguished from the prior art on
structural grounds, and the intended use for an apparatus is not sufficient to
distinguish it from the prior art unless the intended use imposes structural
limitations on the apparatus not met by the prior art. Similarly, the purpose
for which biomass material is grown is irrelevant in the context of a claim to
a system or apparatus. Thus, it is irrelevant whether LePori’s cotton plants
are grown primarily for their fiber and/or oil, or whether Hertel’s fuel came
from a biomass field. It is equally irrelevant whether LePori intended to
transfer all of the biomass grown in the field to the furnace. Appellant has
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failed to identify a structural difference between the system of claims 1, 3, 7,
15, and 16 and the prior art relied on by the Examiner.
The rejection of claims 1, 3, 7, 15 and 16 as unpatentable over LePori,
Ladt and Hertel is affirmed.
Issue (I): Obviousness of claims 4-6
The Examiner rejected claims 4-6 as unpatentable over LePori, Ladt,
Hertel, and Moll.
The issue raised by this rejection is whether Appellant has shown that
the Examiner erred in concluding that a system for producing power by
burning biomass material, where the system includes a means for transferring a
resultant combustion product to the biomass field, and where the biomass field
is a matrix of ponds exposed to sunlight, would have been obvious over the
combined teachings of the cited art.
Analysis
According to the Examiner, LePori, Ladt, and Hertel disclose the
invention “substantially as claimed with the exception of the biomass field
. . . composed of a matrix of ponds” (Ans. 11). The Examiner relies on Moll
as teaching an algal biomass grown in a field “composed of a matrix of
ponds exposed to the sunlight” (id.). The Examiner concluded that it would
have been obvious to modify LePori by substituting Moll’s algae for
LePori’s cotton gin trash “for the purpose of providing a biomass that can be
produced at low cost in regions unsuited for the production of other
agricultural products” (id. at 12).
Appellant contends that “Claims 4 and 5 depend from claim 1 . . .
[and] Claim 1 is patentable over LePori, Ladt and Hertel for the reasons
stated in the previous section” (App. Br. 16). Appellant contends that none
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of the references “suggest that a furnace and biomass field be constructed to
depend on one another for material that each requires” (id. at 17).
Appellant’s arguments are not persuasive for the same reasons
discussed above with respect to the rejection of claim 1 as unpatentable over
LePori and Ladt (Issue D).
Conclusions of Law
Appellant has not shown that the Examiner erred in concluding that a
system for producing power by burning biomass material, where the system
includes a means for transferring a resultant combustion product to the biomass
field, and where the biomass field is a matrix of ponds exposed to sunlight,
would have been obvious over the combined teachings of the cited art.
The rejection of claims 4-6 as unpatentable over LePori, Ladt, Hertel,
and Moll is affirmed.
SUMMARY
(A) The rejection of claims 17-23 under 35 U.S.C. § 102(b) as anticipated
by Frederick is reversed.

(B) The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over
Frederick and Rivers is affirmed.

(C) The rejection of claims 4-6 under 35 U.S.C. § 103(a) as unpatentable
over Frederick, Rivers and Moll is affirmed.

(D) The rejection of claims 1, 3, 7, 10, and 14 under 35 U.S.C. § 103(a) as
unpatentable over LePori and Ladt is affirmed with respect to claims 1,
3, and 7, and reversed with respect to claims 10 and 14.

(E) The rejection of claims 8 and 11 under 35 U.S.C. § 103(a) as
unpatentable over Ladt, Rivers, and O’Connor is reversed.

(F) The rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable
over Ladt, Rivers, O’Connor, and Hertel is reversed.
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(G) The rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable
over Ladt, Rivers, O’Connor, and Moll is reversed.

(H) The rejection of claims 1, 3, 7, 15, and 16 under 35 U.S.C. § 103(a) as
unpatentable over LePori, Ladt, and Hertel is affirmed.

(I) The rejection of claims 4-6 under 35 U.S.C. § 103(a) as unpatentable
over LePori, Ladt, Hertel, and Moll is affirmed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED-IN-PART

DM

BUCHANAN INGERSOLL & ROONEY PC
P.O. BOX 1404
ALEXANDRIA, VA 22313-1404