Ex parte Vatsky

Board of Patent Appeals and Interferences

Apr 15, 1999

08595967 (B.P.A.I. Apr. 15, 1999)

Application for patent filed February 6, 1996.1
We note that in his brief appellant requests an oral hearing, but under the circumstances a2
hearing is not considered necessary. See 37 CFR § 1.194(c), last sentence, as amended effective
Dec. 1, 1997 (62 F.R. 53131 (Oct. 10, 1997), 1203 O.G. 63 (Oct. 21, 1997)), and MPEP § 1209
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOEL VATSKY
_____________
Appeal No. 99-0029
Application 08/595,9671
______________
ON BRIEF
_______________
Before CALVERT, MEISTER and ABRAMS, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 29 to 32, all the claims remaining in this
application.2
Appeal No. 99-0029
Application 08/595,967
(July 1998).
In reviewing the claims, we note that the term "splitters" in claim 29, line 11 and claim 32, line3
1, does not appear to have antecedent basis in the specification, as required by 37 CFR
§ 1.75(d)(1).
2
The claims on appeal are drawn to a burner assembly, and are reproduced in the appendix to
appellant's brief.
The references applied in the final rejection are:
Henderson et al. (Henderson) 3,753,658 Aug. 21, 1973
Hess 5,060,984 Oct. 29, 1991
Vatsky 5,347,937 Sep. 20, 1994
Claims 29 to 32 stand finally rejected under 35 U.S.C. § 103 as unpatentable over Vatsky in
view of Hess and Henderson.
Since appellant states on page 3 of the brief that claims 29 to 32 are in the same group, we
select independent claim 29 from the group and shall decide the appeal based thereon. 37 CFR §
1.192(c)(7).3
The basis of the rejection is stated on pages 3 to 6 of the examiner's answer, and need not be
repeated here.
First considering the Hess reference, appellant argues that it would not have been obvious to
employ the low wear elbow disclosed therein with the Vatsky burner apparatus, essentially because
there would have been no suggestion or motivation to do so. According to appellant, the only basis for
Appeal No. 99-0029
Application 08/595,967
3
combining Vatsky and Hess would be the result of hindsight derived from appellant's own disclosure.
We do not agree. In the Vatsky apparatus, the fuel, consisting of pulverized coal suspended in
air, enters at 28 and swirls through chamber 26, being discharged through member 24 in a direction
which is at a right angle to the direction in which it was introduced (col. 5, lines 38 to 42, and Fig. 1).
Hess discloses that when granular or particulate particles being transported through a conduit must
make a sharp right angle turn, the wall of the elbow opposite the entry port will be rapidly eroded (col.
1, lines 14 to 25). To overcome this problem, Hess teaches that the elbow should be constructed as
shown in Fig. 1, for example, with a chamber 20 for swirling a portion of the particles entering at port
12. Since the incoming particulate coal particles in the Vatsky apparatus must make a sharp right
angled turn, as shown in Fig. 1, one of ordinary skill would have found it obvious to use an elbow with
a swirl chamber, as disclosed by Hess, in order to minimize erosion at that point. The motivation or
suggestion to modify the Vatsky apparatus in this manner would come not from appellant's disclosure,
but from the teachings of Hess of the advantage thereof.
Turning to Henderson, appellant argues that this patent is nonanalogous art, and that it would
not have been obvious therefrom to provide the Vatsky burner with a conical vane, as claimed.
It is unnecessary to resolve the question of whether Henderson is nonanalogous art, for even
assuming that it is analogous, we do not consider that it would have suggested the claimed conical vane.
Appeal No. 99-0029
Application 08/595,967
4
Henderson discloses apparatus for making carbon black in which oil is discharged through nozzle 8 and
fuel and air are introduced into axial zone 1. The examiner notes that Henderson discloses a cone 20
positioned around the conduit 6 leading to nozzle 8, and asserts that in view thereof it would have been
obvious to dispose a conical vane around Vatsky's burner tubular member 24/24a. However, we note
that Henderson's cone is longitudinally movable relative to conduit 6, and the disclosed function of the
cone is to direct a portion of the reactants in axial zone 1 across the oil nozzle 8, thereby "changing the
structure of the carbon black produced" (col. 6, lines 26 to 28) or "influenc[ing] the quality of the
carbon black produced" (col. 5, lines 66 and 67). It is not evident to us why this disclosure would have
taught or suggested to one skilled in the art placing a conical vane around the burner of Vatsky, since
Vatsky is not concerned with making carbon black (or any product), but simply with burning particulate
coal. In this instance, we agree with appellant that such a modification of Vatsky would be the result of
impermissible hindsight.
On page 6 of the answer, the examiner asserts that "In general, conical vanes disposed around
a fuel-conveying conduit in a burner are well-known in the art," but the only evidence cited in support of
this assertion is Henderson, which, as discussed above, discloses using a conical vane only for the
specific purpose of changing or influencing the structure or quality of carbon black being produced,
rather than containing a broad teaching consonant with the examiner's assertion. A rejection based on
35 U.S.C. § 103 must rest on a factual basis, rather than speculation, unfounded assumptions or
Appeal No. 99-0029
Application 08/595,967
5
hindsight reconstruction.
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S.
1057 (1968).
The examiner also takes the position that even in the absence of Henderson, Vatsky would
meet the "conical vane" limitation of claim 29 because it discloses "conical vanes or plates (68)"
(answer, page 5) and "segments of conical vanes or plates (68)" (id., page 7). This is not persuasive
because claim 29 requires a conical vane, not segments of a conical vane, or plates spaced around the
circumference of the burner 24a, as shown by Vatsky.
Accordingly, the rejection of claim 29, and therefore of claims 30 to 32, will not be sustained.
Conclusion
The examiner's decision to reject claims 29 to 32 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
) BOARD OF PATENT
) APPEALS AND
JAMES M. MEISTER ) INTERFERENCES
Administrative Patent Judge )
)
Appeal No. 99-0029
Application 08/595,967
6
)
)
NEAL E. ABRAMS )
Administrative Patent Judge )
WARREN B KICE
HAYNES and BOONE, LLP
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