Ex parte Drago et al.

Board of Patent Appeals and Interferences

Sep 4, 1998

08660719 (B.P.A.I. Sep. 4, 1998)

Application for patent filed June 10, 1996.1
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not binding precedent of the Board.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 THOMAS E. DRAGO and ROBERT H. SWIECZKOWSKI
_____________
Appeal No. 98-0358
Application 08/660,7191
______________
ON BRIEF
_______________
Before COHEN, McQUADE and CRAWFORD, Administrative Patent
Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 5. These claims constitute all of the claims in the
application.
Appeal No. 98-0358
Application 08/660,719
A final rejection of claims 1 through 5 under 35 U.S.C. § 102(b) based2
upon a patent to Beall was expressly withdrawn by the examiner on page 3 of
the answer (Paper No. 7).
2
Appellants’ invention pertains to a burner emission
device for reducing NO . An understanding of the inventionx
can be
derived from a reading of exemplary claim 1, a copy of which
appears in the APPENDIX to the main brief (Paper No. 6).
As evidence of obviousness, the examiner has applied the
documents listed below:
Sheets et al. 4,284,402 Aug. 18,
1981
(Sheets)
Kirkpatrick et al. 5,333,597 Aug. 02,
1994
(Kirkpatrick)
The following rejection is before us for review.2
Claims 1 through 5 stand rejected under 35 U.S.C. § 103
as being unpatentable over Sheets in view of Kirkpatrick.
The full text of the examiner's rejection and response to
Appeal No. 98-0358
Application 08/660,719
3
the argument presented by appellants appears in the answer
(Paper No. 7), while the complete statement of appellants’
argument can be found in the main and reply briefs (Paper Nos.
6 and 8).
According to appellants (main brief, page 2), claims 4
and 5 do not stand or fall with claims 1 through 3 or each
other. In
light of the above and the comments in the reply brief, claims
1 through 3 stand or fall with one another, and each of claims
4 and 5 are to be separately considered. We select claim 1
for review on appeal from the grouping of claims 1 through 3,
claims 2 and 3 standing or falling therewith; 37 CFR
1.192(c)(7). Accordingly, in our analysis, infra, we focus our
attention upon claims 1, 4, and 5.
OPINION
In reaching our conclusion on the obviousness issue
raised in this appeal, this panel of the board has carefully
Appeal No. 98-0358
Application 08/660,719
In our evaluation of the applied patents, we have considered all of3
the disclosure thereof for what it would have fairly taught one of ordinary
skill in the art. See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA
1966). Additionally, this panel of the board has taken into account not only
the specific teachings, but also the inferences which one skilled in the art
would reasonably have been expected to draw from the disclosure. See In re
Preda 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
4
considered appellants’ specification and claims, the applied
patents, and the respective viewpoints of appellants and the3
examiner. As a consequence of our review, we make the
determinations which follow.
We affirm the rejection of claims 1 through 5 under 35
U.S.C. §103. Our reasoning in support of this stated
conclusion appears below.
At the outset, we note that a reading of claim 1 in its
entirety makes it apparent to us that a burner device per se
is being claimed, notwithstanding appellants’ perception to
the contrary (main brief, page 4). The preamble of the claim
specifies a burner emission device and the body of the claim
positively sets forth features thereof, with only the
“whereby” clause making reference to other than the burner
emission device. However, contrary to the impression given by
Appeal No. 98-0358
Application 08/660,719
5
the selectively quoted portions from the “whereby” clause
referred to by appellants (main brief, page 4), like the
examiner (answer, page 4), we find it is accurate to say that
the “whereby when” clause clearly only addresses a prospective
use of the device with a burner and heat exchanger. Thus,
claim 1, as indicated, is drawn to a burner emission device
per se, and not to a combination of a
burner emission device, burner, and heat exchanger. As to the
recitation in claim 1 (line 2) of a single perforate member
having a plurality of holes thereon, we determine that this
language, read in light of the underlying disclosure
(specification, page 2), is clearly intended to address a
screen. The latter circumstance of the noted language of
claim 1 encompassing a screen is acknowledged by appellants
(main brief, page 4).
With the above understanding of claim 1, we turn now to
the prior art teachings relied upon in the rejection of
appellants’ claims under 35 U.S.C. § 103.
Appeal No. 98-0358
Application 08/660,719
6
The overall disclosure of the Sheets patent makes it
quite evident to us that, at the time of appellants’
invention, screens were well known to those having ordinary
skill in the art for the emission control of flames. More
particularly, as portrayed in Figure 1 of Sheets, akin to the
showing in appellants’ Figure 3, a screen 30 is located in a
flame. Like the examiner (answer, page 5), we appreciate that
those having ordinary skill in the art would have fairly
understood that the screen 30 of Sheets
would be supported in use by some appropriate structure for
positioning in the flame. The reference to mounting flanges
for a screen in Sheets (column 1, lines 54 through 58) clearly
provides support for the latter viewpoint. Further, the
patent to Kirkpatrick (column 5, line 53 to column 6, line 6)
addition-ally buttresses the aforementioned latter assessment
by clearly revealing the knowledge in the art of providing an
appropriate support member for the support of a screen within
a flame (Fig. 3 or Fig. 5).
Appeal No. 98-0358
Application 08/660,719
The test is not whether the features of a secondary reference may be4
bodily incorporated into the structure of the primary reference; nor is it
that the claimed invention must be expressly suggested in any one or all of
the references. Rather, the test for obviousness is what the combined
teachings of the references would have suggested to one of ordinary skill in
the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
7
Applying the test for obviousness, this panel of the4
board makes the determination that it would have been obvious
to one having ordinary skill in the art, from a combined
consideration of the applied patents, to provide the screen 30
of Sheets with an appropriate support member. As we see it,
the incentive on the part of one of ordinary skill in the art
for providing a
support member would have simply been to gain the expected and
recognized benefit thereof, as exemplified by the teaching of
Kirkpatrick, i.e. the benefit of support of the screen within
the flame to enable the screen to perform its indicated
function
of reducing NO . For these reasons, the rejection of claim 1x
is affirmed. It follows that the rejection of claims 2 and 3
is likewise affirmed since these claims stand or fall with
Appeal No. 98-0358
Application 08/660,719
8
claim 1.
As to each of claims 4 and 5, we perceive the respective
area and porosity ranges thereof to have been obvious matters
for those having ordinary skill when appellants’ invention was
made.
In making this determination we, of course, presume skill on
the part of those practicing this art. See In re Sovish, 769
F.2d 738, 742, 226 USPQ 771, 774 (Fed. Cir. 1985). Taking
into account the knowledge and understanding of screens as a
well known entity for the reduction of NO by those ofx
ordinary skill in this art, as clearly evident to us from the
evidence of obviousness, we conclude that the claimed
parameters of screen area and porosity would have been factors
of concern in the design of these screens for NO reduction. x
As such, we are of the view that the presently claimed ranges
for apparent result
effective variables or parameters can fairly be viewed as
simply obvious optimum or working ranges that would have been
readily
obtainable through routine experimentation. See In re Boesch,
Appeal No. 98-0358
Application 08/660,719
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617 F.2d 272, 205 USPQ 215, 219 (CCPA 1980) and In re Aller,
220
F.2d 454, 105 USPQ 233, 235 (CCPA 1955). For these reasons,
the rejection of claims 4 and 5 is affirmed.

The argument advanced by appellants in the main (pages 4
through 7) and reply briefs does not convince us of the
patentability of claims 1, 4, and 5 under 35 U.S.C. § 103.
Contrary to the view taken by appellants (main brief, page 4),
we do not find that the labeling by Sheets of the use of
radiant screens in forced air burners as “not practical” to
detract from the explicit prior art teaching of screens for
the reduction of NO emissions. We would only add that, as tox
air burners (not oil burners) Sheets considers screens “not
practical” only in the instance when flame temperatures are
“too high” and the oxidation atmosphere “too severe”. Again
contrary to the view of appellants (main brief, page 5), the
Kirkpatrick patent as earlier indicated provides ample
suggestion for a support member for a screen. Further, as we
Appeal No. 98-0358
Application 08/660,719
10
mentioned above, the test for
obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the
primary reference. As to appellants argument relative to
claims 4 and 5
(main brief, pages 5 and 6 and reply brief, page 2), we refer
to
our discussions, supra, in response thereto. Additionally, we
consider the disclosed area and porosity ranges
(specification, page 3) to simply denote preferred working
ranges since no indication is given by appellants in the
specification that they are otherwise, e.g. yield unexpected
results.
In summary, this panel of the board has affirmed the
rejection of claims 1 through 5 under 35 U.S.C. § 103 as being
unpatentable over Sheets in view of Kirkpatrick.
The decision of the examiner is affirmed.
No time period for taking any subsequent action in
Appeal No. 98-0358
Application 08/660,719
11
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 98-0358
Application 08/660,719
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David J. Zobkiw
Carrier Corp.
P.O. Box 4800
Syracuse, NY 13221