Bernie C. Thompson

Patent Trials and Appeals Board

Feb 26, 2020

14843016 - (D) (P.T.A.B. Feb. 26, 2020)

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.
14/843,016 09/02/2015 Bernie C. Thompson 14076-72525 8297
26257 7590 02/26/2020
RODEY, DICKASON, SLOAN, AKIN & ROBB, PA
P.O. BOX 1888
ALBUQUERQUE, NM 87103
EXAMINER
RIVERA-CORDERO, ARLYN I
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
02/26/2020 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):
ipnotices@rodey.com
mmendoza@rodey.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNIE C. THOMPSON
Appeal 2019-002893
Application 14/843,016
Technology Center 1700

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
N. WHITNEY WILSON, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1–5 under 35 U.S.C § 103 as unpatentable
over Augustus (US 2004/0250370 A1, published Dec. 16, 2004).3, 4

1 This Decision includes citations to the following documents: Specification
filed September 2, 2015, as amended (“Spec.”); Final Office Action dated
April 19, 2018 (“Final”); Advisory Action mailed July 26, 2018
(“Advisory”); Appeal Brief filed September 18, 2018(“Appeal Br.”);
Examiner’s Answer dated January 9, 2019 (“Ans.”); and Reply Brief filed
February 27, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. The Appellant identifies the real party in interest as ATS
Chemical, LLC. Appeal Br. 1.
3 The Examiner has withdrawn the rejections of claims 1–5 under 35 U.S.C.
§ 112(b). Advisory.
4 We have jurisdiction under 35 U.S.C. § 6(b).
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We REVERSE.
CLAIMED SUBJECT MATTER
The invention relates to chemically cleaning the induction system of
an internal combustion engine. Spec. ¶ 2. According to the Specification, in
engines that do not have a throttle plate, such as but not limited to diesel
engines, induction cleaning chemistry puddles in the intake manifold during
a cleaning procedure. Id. ¶ 79. The inventor is said to have discovered that
partially opening and closing the cleaning apparatus throttle plate during
cleaning creates turbulent air flow that helps break up the puddling tendency
within the intake manifold. Id. ¶ 80. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of removing carbon build up from an internal
combustion engine; the engine including combustion chambers,
intake ports, and intake and exhaust valves; the engine also
including an[] induction system which does not include a
throttle plate for controlling the air flow into the induction
system; the engine also including a starting system; the method
including the use of a chemistry comprising at least one
chemical composition of matter capable of removing at least
some carbon in at least a portion of the engine, and means for
delivering the chemistry to the induction system of the engine;
the method also including the use of apparatus including a
through passage and a throttle plate which can be opened and
closed as the chemistry is applied to the induction system, and
means for connecting the apparatus to the induction system; the
method including:
• connecting the apparatus to the induction system;
• starting the engine;
• applying the chemistry to the induction system of
the engine while the engine is running; and
• at least partially opening and partially closing the
throttle plate multiple times to vary the air flow in
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Application 14/843,016

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the induction system while the engine is running
and the chemistry is being applied to the induction
system.
Appeal Br., Appendix A (emphasis added).
OPINION
The Examiner found that Augustus discloses a method as recited in
claim 1 except for an explicit teaching of “at least partially opening and
partially closing [a] throttle plate multiple times to vary the air flow in the
induction system “ (see claim 1, last paragraph supra p. 2). Final 10. The
Appellant argues that the evidence fails to support the Examiner’s
determination that the ordinary artisan at the time of the invention would
have modified Augustus to include this step. See Appeal Br. 7–10. For the
reasons discussed below, the Appellant’s argument is persuasive.
Augustus discloses a method of cleaning a vehicle’s air intake system.
Augustus ¶ 4. As illustrated in Augustus Figures 1–8, the method involves
removing EGR valve 12 from mouth 42 of air intake duct 14, and attaching
adaptor 16 in its place. Id. ¶¶ 28–29. Vacuum-control device 18 is attached
to adaptor 16. Id. ¶ 32. Vacuum-control device 18 comprises vane control
cap 24 and cylindrical housing 22. Id. ¶ 33. Housing 22 defines opening 82
at an end attached to adaptor 16. Id. Housing 22’s opposite end is partially
blocked off by wall 81 that defines vanes 119. Id. Vane control cap 24 has a
center hole through which bolt 180 of knob 80 is received to fix cap 24 to
cylindrical housing 22. Id. Threaded receiving hole 83 in wall 81’s center
receives threaded bolt 180 of knob 80. Id. Cap 24 includes a plurality of
vanes 26 that reciprocate with vanes 119 to create air-conducting apertures
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121. Id. ¶ 36. The vacuum in housing 22 is controlled by adjusting the skew
of vanes 26 relative to vanes 119. Id. ¶ 37.
The Examiner found that in performing Augustus’s cleaning method,
one of ordinary skill in the art at the time of the invention would have
partially open[ed] and partially clos[ed] the vanes multiple
times to vary the air flow in the induction system while the
engine is running and the cleaner is being applied to the
induction system, in order to adjust the introduction of air into
the housing, causing a variation in the turbulence effect and/or
pattern created by the introduction of the air, which carries the
cleaner droplets to the intake system.
Final 10 (citing Augustus ¶¶ 36–37). The Appellant directs us to Augustus
paragraphs 36–40 in support of its argument that the ordinary artisan would
not have made this modification. See Appeal Br. 8–10.
Augustus discloses that
[w]hen cap 24 is in th[e] skewed position, air is swirled when
introduced into the housing 22 by vacuum from the combustion
section of the engine, creating a swirling affect. The swirling
affect, which is caused by the manner in which vanes 26 are
offset relative to vanes 119, will create turbulence. Turbulence
assists in forming cleaner administered into droplets which will
affectively coat and remove contaminates from metal surfaces
within the air intake system.
Id. ¶ 36 (emphasis added). As argued by the Appellant (Appeal Br. 8–9),
Augustus teaches that merely adjusting the position of vanes 26 relative to
vanes 119 creates sufficient turbulence to achieve Augustus’s goal of
applying a coating of a cleaner on the air intake system’s metal surfaces
(Augustus ¶ 36). We further agree with the Appellant (Appeal Br. 9–10) that
Augustus teaches adjusting cap 24 to create a specific degree of openness of
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air-conducting apertures 121, that is then fixed by tightening knob 8 to lock
cap 24 in place (see, e.g., Augustus ¶¶ 39–40). More specifically, Augustus
discloses that
the size of the apertures is dependent on, and
controllable by the position of mark 79 [on cap 24 that
cooperates with] . . . scale 54 [on housing 22]. The
identification of a particular position is important to the
invention, because adjustments must be made depending on
the type of vehicle being serviced, because different vehicles
have different vacuum requirements. The level will also be
dependent on the elevation at which the vehicle is being
serviced, because pressures at different elevations vary. The
manufacturer may equip the user with tables that indicate the
appropriate settings for a vehicle at a particular elevation.
Augustus ¶ 39. When the desired alignment of mark 79 and scale 54 is
reached, “knob [80] is simply tightened to lock the cap in the desired angular
position such that the vanes are opened a desired amount.” Id. ¶ 40.
According to Augustus,
[b]ecause the vanes on the housing 22 in such a position will
be offset from those in cap 24 when the device is in normal
operation, a swirl will be created within the housing 22 when
a vehicle is being serviced. This swirl is used in the housing
22 to create turbulence which act to properly disperse
cleaner introduced through venturi nozzle 20. The cleaner is
drawn in through venturi nozzle 20 by the vacuum created
within housing 22. The swirl created helps to deliver and
diffuse cleaner droplets downstream to the soot-covered
metal surfaces within air intake duct 14, the combustion
chambers of the vehicle, and then out through the engines
exhaust.
Id. ¶ 41.
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The above-cited disclosure in Augustus supports the Appellant’s
contention that the Examiner relied on improper hindsight reasoning in
finding that the ordinary artisan would have partially opened and partially
closed Augustus’s vanes multiple times to vary the air flow in the induction
system during Augustus’s cleaning method. The Examiner has not identified
a teaching or suggestion in the prior art that would have led the ordinary
artisan to repeatedly change the size of Augustus’s apertures 121 during
cleaning. In other words, the Examiner has not identified a teaching in the
prior art that repeatedly adjusting the size of Augustus’s vent openings
during cleaning would have improved the turbulence effect or pattern
created by the introduction of air or would have been desirable for any
reason. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“The mere
fact that the prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the prior art
suggested the desirability of the modification.”).
CONCLUSION
The Appellant has argued persuasively that the Examiner erred
reversibly in finding that Augustus discloses or suggests a method that
includes a step of “at least partially opening and partially closing [a] throttle
plate multiple times to vary the air flow in the induction system while the
engine is running and the chemistry is being applied to the induction
system” as recited in claim 1.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5 103 Augustus 1–5

REVERSED