Rockwool International A/SDownload PDFPatent Trials and Appeals BoardDec 17, 20202020003002 (P.T.A.B. Dec. 17, 2020) Copy Citation 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. 15/213,639 07/19/2016 Lars Bøllund HOI-42903/16 1126 25006 7590 12/17/2020 DINSMORE & SHOHL LLP 900 WILSHIRE DRIVE SUITE 300 TROY, MI 48084 EXAMINER HOFFMANN, JOHN M ART UNIT PAPER NUMBER 1741 NOTIFICATION DATE DELIVERY MODE 12/17/2020 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): MichiganPatTM@dinsmore.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LARS BØLLUND and LARS ELMEKILDE HANSEN ____________ Appeal 2020-003002 Application 15/213,639 Technology Center 1700 ____________ Before N. WHITNEY WILSON, BRIAN D. RANGE, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a Non-Final Office Action, dated March 13, 2019, rejecting claims 4–9. An oral hearing was held on December 10, 2020.2 We have jurisdiction under 35 U.S.C. § 6(a). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies “Rockwool International A/S” as the real party in interest. Appeal Br. 1. 2 A written transcript of the oral hearing will be entered into the record when available. Appeal 2020-003002 Application 15/213,639 2 The invention relates to an apparatus for the production of a mineral melt by burning combustible material in the presence of inorganic particulate material and thereby forming a melt. Spec. ¶ 2. Claim 8, reproduced from the Claims Appendix to the Appeal Brief, illustrates the invention: 8. An apparatus for the production of a mineral melt by burning a combustible material m the presence of inorganic particulate material and thereby forming the melt, said apparatus comprising: a circulating combustion chamber; an exhaust pipe extending upwards from the circulating combustion chamber, the exhaust pipe having an inner diameter and a height, the height being at least 2.5 times the inner diameter; a quenching hood disposed such that the exhaust pipe extends upwards into the quenching hood to define an annular air intake opening around the exhaust pipe; and a heat exchange system having a first conduit and a first pre-heater cyclone, the first conduit connected to the quenching hood for transporting exhaust gases to the first pre-heater cyclone, wherein the inner diameter of said exhaust pipe is larger than an inner diameter of said first conduit. Appellant requests review of the following rejections3 I. Claims 5, 8, and 9 rejected under 35 U.S.C. § 103(a) as unpatentable over Jensen (US 2005/0172677 A1, published August 11, 2005), Habegger (US 4,406,396, issued September 27, 1983), Stark (US 1,982,031, issued November 27, 1934), Simpson (US 2003/0024271 A1, published February 6, 2003), and Kilner US 5,143,534, issued September 1, 1992). 3 The Examiner withdrew the rejection under 35 U.S.C. § 112. Ans. 3. Appeal 2020-003002 Application 15/213,639 3 II. Claim 4 rejected under 35 U.S.C. § 103(a) as unpatentable over Jensen, Habegger, Stark, Simpson, Kilner, and Rhinow (US 1,888,290, issued November 22, 1932). III. Claims 6 and 7 rejected under 35 U.S.C. § 103(a) as unpatentable over Jensen, Habegger, Stark, Simpson, Kilner, and Pyroflux (Bol. Soc. Esp. Ceram. Vidr. Vol. 31, Num 3, 256–257). IV. Claims 5, 8, and 9 rejected under 35 U.S.C. § 103(a) as unpatentable over Jensen, Habegger, Stark, Simpson, Kilner, Shapiro (US 4,425,868, issued January 17, 1984), and Jian (US 5,979,191, issued November 9, 1999). V. Claim 4 rejected under 35 U.S.C. § 103(a) as unpatentable over Jensen, Habegger, Stark, Simpson, Kilner, Rhinow, Shapiro, and Jian. VI. Claims 6 and 7 rejected under 35 U.S.C. § 103(a) as unpatentable over Jensen, Habegger, Stark, Simpson, Kilner, Pyroflux, Shapiro, and Jian. Appellant presents essentially the same line of arguments to address both rejections of independent claim 8 (Rejections I and IV). See generally Appeal Br. Appellant does not present separate substantive arguments for any of the dependent claims 4–7 and 9. See id. Accordingly, we select claim 8 as representative of the subject matter claimed and decide the appeal as to all grounds of rejection based on the arguments Appellant makes in support of the patentability of claim 8. Appeal 2020-003002 Application 15/213,639 4 OPINION Rejections I and IV (35 U.S.C. §103(a)(Claim 8)4 After review of the respective positions of Appellant and the Examiner, we reverse the Examiner’s rejections of claims 4–9 under 35 U.S.C. § 103(a) for essentially the reasons Appellant presents in the Appeal and Reply Briefs. We add the following for emphasis. Claim 8 recites an apparatus for the production of a mineral melt by burning a combustible material in the presence of inorganic particulate material and thereby forming the melt, said apparatus comprising an exhaust pipe extending upwards from a circulating combustion chamber and a heat exchange system having a first conduit connected to a quenching hood for transporting exhaust gases, wherein the inner diameter of the exhaust pipe is larger than the inner diameter of the first conduit. We refer to the Examiner’s Non-Final Office Action for the complete statements of rejections for claim 8. Non-Final Act. 6–10 (Rejection I), 12– 13 (Rejection IV). Briefly, the Examiner finds that it would have been obvious to have the inner diameter of the exhaust pipe be larger than the inner diameter of the first conduit because it is expected to transport more gases than the first conduit. Non-Final Act. 10. Appellant argues, inter alia, that the cited art fails to teach or suggest an apparatus for the production of a mineral melt comprising an exhaust pipe having a larger diameter that the diameter of a conduit pipe. Appeal Br. 3. 4 We limit our discussion to independent claim 8 for both rejections. We note that discussion of the additional references to Shapiro and Jian, cited in Rejection IV, is unnecessary for disposition of this appeal. Appeal 2020-003002 Application 15/213,639 5 We agree with Appellant that there is reversible error in the Examiner’s determination of obviousness. The Examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (“warning against a ‘temptation to read into the prior art the teachings of the invention in issue’”)). The premise of the Examiner’s rejection is that one skilled in the art would modify Jensen’s same diameter exhaust pipe and conduit so that the exhaust pipe has a larger diameter than the conduit because one skilled in the art would expect the exhaust pipe to transport more gases than the conduit. Non-Final Act. 10. However, the Examiner does not provide an adequate technical explanation why one skilled in the art would expect the exhaust pipe to transport more gases than the conduit. Nor does the Examiner direct us to other objective evidence in support of the stated position. On the contrary, the references the Examiner relies upon suggest otherwise. For example, Jensen’s Figure 1 shows exhaust pipe 10 as having the same diameter as the conduit leading the gases to the heat exchange system. One skilled in the art would reasonably infer from this disclosure that the exhaust pipe and the conduit are transporting substantially the same amount of Appeal 2020-003002 Application 15/213,639 6 exhaust gases. See In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992) (holding that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). Habegger’s Figure 1 and Stark’s Figure 3 suggest essentially the same in operations using a hood. Thus, the Examiner has not provided an adequate reasoning with the requisite rational underpinning explaining why one skilled in the art, absent impermissible hindsight, would have modified Jensen’s exhaust pipe to have a larger diameter than the diameter of Jensen’s the conduit pipe to arrive at the claimed invention. Accordingly, we reverse the Examiner’s prior art rejections of claims 4–9 under 35 U.S.C. 103(a) for the reasons Appellant presents and we give above. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 5, 8, 9 103(a) Jensen, Habegger, Stark, Simpson, Kilner 5, 8, 9 4 103(a) Jensen, Habegger, Stark, Simpson, Kilner, Rhinow 4 6, 7 103(a) Jensen, Habegger, Stark, Simpson, Kilner, Pyroflux 6, 7 Appeal 2020-003002 Application 15/213,639 7 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 5, 8, 9 103(a) Jensen, Habegger, Stark, Simpson, Kilner, Shapiro, Jian 5, 8, 9 4 103(a) Jensen, Habegger, Stark, Simpson, Kilner, Rhinow, Shapiro, Jian 4 6, 7 103(a) Jensen, Habegger, Stark, Simpson, Kilner, Pyroflux, Shapiro, Jian 6, 7 Overall Outcome 4–9 REVERSED Copy with citationCopy as parenthetical citation