Ex Parte Dodson

Board of Patent Appeals and Interferences

Jan 29, 2009

10133584 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CHRISTOPHER E. DODSON
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Appeal 2009-0390
Application 10/133,584
Technology Center 1700
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Decided: January 29, 2009
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
MARK NAGUMO, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-17. Claim 1
is illustrative:
1. A method of making an ash from a feed material, the method
including the steps:

creating inner and outer vortices about an axis, the vortices defining a
gas stream containing sufficient oxygen for exothermic combustion of the
feed material and being arranged to flow in opposite axial directions and in
Appeal 2009-0390
Application 10/133,584

the same angular direction, the vortices being arranged so that gas from the
outer vortex meets the inner vortex to form a mixing zone;

providing at least one ash outlet spaced axially from the mixing zone
for collecting ash created from the feed material;

feeding the feed material into the mixing zone where the feed material
enters the inner vortex to create a centrifugal force component in the feed
material thereby tending to cause the feed material to move outwardly into
the outer vortex as the feed material travels axially in the inner vortex;

carrying feed material received from the inner vortex into the outer
vortex and into the mixing zone where this material from the outer vortex
meets fresh feed material entering the mixing zone with resulting impact and
thermal stresses in the feed material before the feed material is transported
by the inner vortex for eventual entry from the outer vortex into the mixing
zone, the feed material continuing to pass through the mixing zone until the
feed material is converted predominantly to amorphous silica ash having
escape criteria needed to travel to the ash outlet so that such ash will exit
through the ash outlet leaving behind feed material that has not yet taken on
the required escape criteria;

monitoring temperature in the gas stream;

comparing the temperatures in the gas stream with known information
to provide an output signal; and

using the output signal to control the rate of flow of the feed material
into the apparatus so that the feed material in the gas stream is subjected to
temperatures selected to result in an ash having a desired content.

The Examiner relies upon the following reference as evidence of
obviousness:
Pitt US 3,959,007 May 25, 1976

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Application 10/133,584

Appellant's claimed invention is directed to a method of making ash
from a feed material by feeding the material into a mixing zone of an
apparatus and creating inner and outer vortices about the axis of the
apparatus. The feed material and gas stream enters the inner vortex and a
centrifugal force causes the feed material to move outwardly into the outer
vortex. The feed material then travels in the outer vortex back to the mixing
zone where it meets fresh feed material. The feed material continues to pass
through the mixing zone until it is converted predominantly to amorphous
silica ash having escape criteria that is needed to travel to the outlet.
Appealed claims 1-17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pitt.
We have thoroughly reviewed the respective positions advanced by
Appellant and the Examiner. In so doing, we find that the Examiner has
failed to establish a prima facie case of obviousness for the claimed subject
matter. Accordingly, we will not sustain the Examiner's rejection.
In essence, the process described by Pitt proceeds in an opposite
fashion to the process set forth in the appealed claims. In particular, as
recognized by the Examiner, Pitt discloses a process wherein the feed
material and gas have a tangential inlet means which causes the feed
material to travel along the periphery of the vessel in an outer vortex and
descend in an inner vortex to an outlet that is located substantially on the
axis of the vessel. As emphasized by Appellant, the process of Pitt does not
result in feed material in the outer vortex meeting fresh feed material in a
mixing zone at the inner vortex.
The Examiner concludes that it would have been obvious for one of
ordinary skill in the art to reverse the flow of the process disclosed by Pitt
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Application 10/133,584

because "there are only two possible feeds, the inner or outer" (Ans. 5,
second para.). However, simply because there are only two possible
locations to introduce the feed material does not, in our view, result in the
requisite teaching or suggestion in the prior art to perform the claimed
process. The Examiner has not come forward with any credible evidence or
argument supporting the conclusion that the ordinary worker would have
recognized that the inner and outer feeds in the process described by Pitt are
interchangeable. We must agree with Appellant that Pitt provides no
teaching or suggestion of modifying the disclosed process such that it
operates in an essentially opposite fashion. It is well settled that the test for
obviousness within the meaning of § 103 is not what could be done by one
of ordinary skill in the art but, rather, what would have been taught or
suggested by the applied prior art.
In the present case, the Examiner has offered no compelling rationale
why one of ordinary skill in the art would have reasonably expected that
modifying the Pitt process in the manner claimed would result in
substantially the same process with comparable economics of operation
yielding the same product. It is incumbent upon the Examiner to advance a
reason why one of ordinary skill in the art would have found it obvious to
modify the Pitt process other than there are only a limited number of ways of
modifying the process.
In conclusion, based on the foregoing, we are constrained to reverse
the Examiner’s rejection.
REVERSED

cam
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