Ex Parte Fiveland et al

Board of Patent Appeals and Interferences

Jun 29, 2009

10263785 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SCOTT B. FIVELAND and JOEL D. HILTNER
____________________

Appeal 2009-002025
Application 10/263,785
Technology Center 3700
____________________

Decided:1 June 29, 2009
____________________

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Before: WILLIAM F. PATE, III, LINDA E. HORNER and
MICHAEL W. O'NEILL, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-002025
Application 10/263,785

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
36 and 43-53. Claims 37-42 have been canceled. App. Br. 4. We have
jurisdiction under 35 U.S.C. § 6(b). The claims are directed to a system and
method of injecting fuel. Claim 1, reproduced below, is illustrative of the
claimed subject matter:

1. A method of injecting fuel, comprising:

increasing the pressure of a flow of fuel to a
predetermined pressure;

increasing the temperature of the flow of fuel to a
predetermined temperature;

directing a flow of intake air into a combustion chamber
of an internal combustion engine while an intake valve
associated with the combustion chamber is open, the flow of
intake air having a pressure lower than the pressure of the flow
of fuel; and

injecting an amount of the pressurized and heated fuel
into the flow of intake air while the intake valve is open to
thereby decrease the pressure of the amount of fuel, the
decrease in pressure of the amount of fuel causing the amount
of fuel to vaporize; and

providing a controller and using the controller to control
the temperature of the flow of fuel and to prevent the flow of
fuel from reaching the critical point before injection.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

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Friese US 3,868,939 A Mar. 4, 1975
Giardini US 4,099,499 A Jul. 11, 1978
Wade US 4,665,881 A May 19, 1987
Smith US 5,848,583 A Dec. 15, 1998
Matsuda US 6,079,392 A Jun. 27, 2000

Claims 1-4, 7, 8, 15-18, 23-26, 28, 29, and 43-47 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Wade,
Friese and Matsuda. Ans. 3.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Wade, Friese, Matsuda, and Giardini.
Ans. 5.
Claims 9-14, 19, 20, 27, 30-32, 34-36, and 48-53 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Wade,
Friese, Matsuda, and Smith. Ans. 6.
Claims 21, 22, and 33 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Wade, Friese, Matsuda, Smith
and Giardini. Ans. 7.

ISSUES
Regarding the rejection of claims 1-4, 7, 8, 15-18, 23-26, 28, 29, and
43-47 as being unpatentable over the combination of Wade, Friese and
Matsuda, Appellants allege that Wade fails to disclose, “injecting an amount
of the pressurized and heated fuel into the flow of intake air while the intake
valve is open,” and controlling to prevent the flow of fuel from reaching the
critical point before injection. App. Br.13-14. Appellants contend that one of
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ordinary skill in the art would not reasonably look to Friese to supply the
teachings absent from Wade because the diesel engine of Wade would be
incompatible with the teachings of Friese. App. Br. 14-16. Appellants
further contend that the teachings of Matsuda are also inapplicable to Wade
because the fuel delivery system of the model airplane engine of Matsuda
would be incompatible with the diesel engine of Wade. App. Br. 16-18.
Appellants argue the rejected claims 1-4, 7, 8, 15-18, 23-26, 28, 29, and 43-
47 as a group. Br. 12-19. We select claim 1 as the representative claim, and
claims 2-4, 7, 8, 15-18, 23-26, 28, 29, and 43-47 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(vii) (2008). While Appellants mention claims 2-4, 7,
15, 16, 18, 23-26, 28, 29, and 43-47, (App. Br. 19), where Appellants
remarks do not point to any specific language within the claims to
distinguish over the prior art, those remarks amount to a general allegation
that the claims define a patentable invention. Such allegations will not be
considered an argument for separate patentability. 37 C.F.R.
§ 41.37(c)(1)(vii).
Regarding the rejection of claims 5 and 6, as being unpatentable over
the combination of Wade, Friese, Matsuda, and Giardini, Appellants allege
that one of ordinary skill in the art would not find any teachings of Giardini
applicable to Wade because one of ordinary skill in the art concerned with
the fuel injector system applied to the diesel engine of Wade, wherein the
fuel is vaporized only upon injection into the combustion chamber, would
not look to the system of Giardini wherein the fuel is completely vaporized
prior to its delivery to a carburetor and its mixing with the intake air of an
engine. App. Br. 20-21. Appellants further assert that the Examiner’s
proposition that Giardini shows a conventional means for controlling the
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fuel temperature is not a sufficient reason to support the conclusion of
obviousness. App. Br. 21-22. Appellants argue the rejected claims 5 and 6 as
a group. Br. 19-22. We select claim 5 as the representative claim, and claim
6 stands or falls with claim 5. 37 C.F.R. § 41.37(c)(1)(vii).
Regarding the rejection of claims 9-14, 19, 20, 27, 30-32, 34-36, and
48-53 as being unpatentable over the combination of Wade, Friese, Matsuda,
and Smith, Appellants repeat their previous argument regarding Wade’s
alleged failure to disclose, “injecting an amount of the pressurized and
heated fuel into the flow of intake air while the intake valve is open.” App.
Br. 23-24, 26. Appellants assert that an object of Smith is to prevent boiling
within the fuel rail and Smith does not recognize the need to prevent the
flow of fuel from reaching a critical point of self-ignition before injection.
App. Br. 24. Appellants further allege that there is no plausible reason why
one of ordinary skill in the art concerned with the Wade system would look
to Smith in order to distribute fuel to multiple injectors. App. Br. 25.
Appellants further allege that neither Wade nor Smith teaches or suggests
“to change an operation of at least one of the pump and heat exchanger when
the sensor indicates at least one of the temperature and the pressure is within
a predetermined amount of a predetermined temperature and pressure
associated with the flow of fuel reaching the critical point.” App. Br.26.
While Appellants mention claims 9-14, 19, 20, 27, 30, 32, 35, 36, and 48-53,
(App. Br. 27-28), where Appellants remarks do not point to any specific
language within the claims to distinguish over the prior art, those remarks
amount to a general allegation that the claims define a patentable invention.
Such allegations will not be considered an argument for separate
patentability. 37 C.F.R. § 41.37(c)(1)(vii). Appellants argue the rejected
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claims 9-14, 19, 20, 27, 30-32, 34-36, and 48-53 as a group. Br. 22-28. We
select claim 31 as the representative claim, and claims 9-14, 19, 20, 27, 30,
32, 34-36, and 48-53 stand or fall with claim 31. 37 C.F.R.
§ 41.37(c)(1)(vii).
Regarding the rejection of claims 21, 22, and 33 as being unpatentable
over the combination of Wade, Friese, Matsuda, Smith and Giardini,
Appellants repeat those arguments proffered with respect to claims 5 and 6.
App. Br.29-31.
In light of these contentions, the issues before are:
Have Appellants established that the Examiner erred by concluding
that the subject matter of claims 1-4, 7, 8, 15-18, 23-26, 28, 29, and 43-47
would have been obvious over the combination of Wade, Friese and
Matsuda?
Have Appellants established that the Examiner erred by concluding
that the subject matter of claims 5 and 6 would have been obvious over the
combination of Wade, Friese, Matsuda, and Giardini or that the subject
matter of claims 21, 22, and 33 would have been obvious over the
combination of Wade, Friese, Matsuda, Smith and Giardini?
Have Appellants established that the Examiner erred by concluding
that the subject matter of claims 9-14, 19, 20, 27, 30-32, 34-36, and 48-53
would have been obvious over the combination of Wade, Friese, Matsuda,
and Smith?

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FINDINGS OF FACT

1. One of the primary objectives of Wade is to provide a heated fuel
injection system that will supply liquid fuel to the injector so that it can
be accurately metered while at the same time providing pressure and
temperature conditions that will convert the liquid to a vapor immediately
upon discharge from the injector nozzle without necessitating the use of
additional heat transfer. Col. 1, ll. 11-18.
2. Wade discloses increasing the temperature and pressure to predetermined
values by using a heat exchanger 24 and pump 10, respectively. Col. 3, ll.
20-26; fig. 2.
3. Wade employs exhaust gases or combustion products from the engine to
preheat the fuel before injection. Col. 3, ll. 3-8.
4. Wade discloses that upon injection a pressure decrease of the fuel will
cause vaporization of the fuel. Col. 3, ll. 39-41; fig. 2.
5. Wade focuses on a single isolated fuel injector and does not describe the
specifics of the entire engine that the fuel injector is coupled to. Col. 2, ll.
26-28. Wade, therefore, does not disclose injecting an amount of
pressurized and heated fuel into the flow of intake air while the intake
valve is open or a system of supplying fuel to other fuel injectors on
engines having more than one such injector.
6. Although a primary goal of Wade involves the ability to heat the fuel to a
desired temperature (See Facts 1 and 2) Wade does not describe any
particular type of temperature control system to accomplish this. Wade
discloses using a variable pressure regulator 18 to control the pressure.
Col. 2, ll. 45-47. Thus Wade fails to disclose sensing the temperature or
pressure of the fuel or a controller communicating with the pump, heat
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exchanger and sensor to change operation of the pump or heat exchanger
when the sensor indicates that the fuel has attained a predetermined
temperature or pressure associated with a critical point.
7. Wade recognizes that other types of heated fuel injection systems are
known in the art such as the one disclosed in Friese. Col. 1, ll. 49-50, 61-
62.
8. The Specification provides that “[i]f the diesel fuel were to reach the
critical temperature in the heat exchanger, the diesel fuel would ignite in
the heat exchanger.” Para. [07].
9. Friese describes a fuel injection system that preheats fuel in fuel injectors
6 having an electric heating element 8, the heating output of which is
controlled by a control device 13 which receives its signals from the
temperature sensors 14, 15, 16 and 17. Col. 5, ll. 3-5, 12-15. In order to
prevent the fuel injection valve 6 from attaining temperatures that would
lead to crackling or self-ignition the heating of the fuel by the heating
element 8 is controlled by the temperature sensor 14, which reads the
maximal fuel temperature between the heating element 8 and the fuel
injector outlet 19, and by the control device 13 so that these temperatures
are not attained. Col. 5, ll. 17-19.
10. Matsuda demonstrates that it was known in the art that a fuel injection
device may be actuated during the intake stroke of a combustion engine.
Col. 7, ll. 45-46; Fig. 3.
11. Giardini demonstrates that it was known in the art to operate a controller
54 to alter the operation of a heat exchanger 26 in response to a fuel flow
temperature sensor 58 by varying the rate of exhaust flow to the heat
exchanger. Col. 4, l. 57 - col. 5, l. 17; Fig. 2.
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12. Smith demonstrates that it was known in the art to operate a controller
308 to alter the operation of a pump 301 in response to a temperature 306
or pressure 307 sensor in order to prevent vaporization of fuel by
maintaining the pressure of the fuel above a given point. Col. 2, ll. 3-12,
54-60.
13. Smith also demonstrates that engines having multiple fuel injectors
304A-D were known in the art and it was known in the art to employ a
fuel rail 303 in order to supply those injectors. Col. 2, ll. 1-2.

PRINCIPLES OF LAW
The examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) noted that the analysis supporting a rejection under 35 U.S.C.
§ 103 should be made explicit. The Federal Circuit has stated that
“rejections 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), cited with approval in KSR, 550
U.S. at 418.
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.
KSR, 550 U.S. at 416. A prima facie conclusion of obviousness may be
supported by a showing that the claims are directed to a process, machine,
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manufacture, or composition of matter already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, and such modification yields a predictable result. See Id. (citing United
States v. Adams, 383 U.S. 39, 40 (1966)). The Court further stated that:
[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.

KSR, 550 U.S. at 417. When considering obviousness of a combination of
known elements, the operative question is thus “whether the improvement is
more than the predictable use of prior-art elements according to their
established functions.” Id.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097, (Fed. Cir.
1986).“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.” In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). The relevant inquiry is
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining
the teachings of references does not involve an ability to combine their
specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973).

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ANALYSIS
Wade discloses all elements of claims 1 and 31 except for injecting
during the intake stroke—an open valve condition, and providing a
sensor/controller arrangement. See Facts 1-6. Friese teaches a
sensor/controller arrangement used for the purpose of preventing fuel from
reaching a critical point—the point at which self ignition occurs—as defined
by Appellants (Fact 8; App. Br 14). Fact 9. Wade suggests the desirability of
controlling the temperature (see Fact 1) and explicitly acknowledges that
Friese’s teachings are relevant to Wade’s heated fuel injection system. Fact
7. Incorporating the sensing and controlling devices and methods of Friese
into the Wade heated fuel injection system amounts to the application of a
known technique to a known device in order to achieve the predictable result
of facilitating temperature determination and control and would have been
obvious to one having ordinary skill in the art. Wade does not discuss the
engine in detail and therefore does not disclose whether Wade’s fuel injector
is operated when the engine intake valve is open. Fact 5. Engines wherein
the actuation of the fuel injector coincides with the intake stroke—a valve
open condition—were well-known in the art as demonstrated, for example,
by Matsuda. Fact 10. Applying the techniques disclosed in Wade and Friese
to a fuel injection system on an engine such as Matsuda’s wherein the intake
valve is open during the fuel injector actuation amounts to applying known
techniques to a known device in order to obtain the predictable result of
controllably preheating and pressurizing the fuel before injection and would
have been obvious to one having ordinary skill in the art.
The Examiner relies upon Smith to support the rejection of claim 31
apparently because the Examiner has interpreted claim 31 to require sensing
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both fuel pressure and temperature. Ans. 6. Claim 31, however, requires
sensing only at least one of those parameters. Friese teaches a controller
which changes operation of a heat exchanger in response to a sensed
temperature. Fact 9. To the extent that Smith is also applicable to claim 31
and those claims reciting a fuel rail, Smith demonstrates that it was known in
the art to sense a pressure and change operation of a pump in response
thereto. Fact 12. Smith also demonstrates that engines having multiple fuel
injectors were known in the art and it was known in the art to employ a fuel
rail in order to supply those injectors. Fact 13. Using a pump responsive to a
sensed pressure in place of a variable regulator amounts to the simple
substitution of known elements in order to yield the predictable result of
controllably regulating the fuel pressure and would have been obvious to one
having ordinary skill in the art. Applying the techniques described in Wade
and Friese to an engine having multiple fuel injectors fed by a fuel rail
amounts to applying a known technique to a known device in order to yield
the predictable result of controllably preheating and pressurizing the fuel
before injection into a multi-cylinder engine and would have been obvious to
one having ordinary skill in the art.
Regarding claim 5, Wade does not specifically describe how to
regulate the temperature using the exhaust gas fed heat exchanger in order to
preheat the fuel to a desired temperature but suggests the desirability of
doing so. See Facts 1-3. Giardini also teaches using an exhaust gas fed heat
exchanger in order to reheat fuel to a desired temperature. Giardini further
teaches sensing the temperature of fuel flow and varying the rate of exhaust
flow to the exchanger based on the sensed temperature. Fact 11. Sensing the
temperature of the flow of fuel and varying the rate of exhaust gas to the
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heat exchanger amounts to applying the known Giardini technique to a
known device in order to yield the predictable result of controlling the
exhaust gas in order to preheat the fuel to a desired temperature and would
have been obvious to one having ordinary skill in the art.
Regarding claim 1, the debate concerning whether Wade, in and of
itself, discloses the claimed steps of injecting fuel during intake and
providing a controller (App. Br. 13-14, 23-24, 26; Ans. 8-9; Reply Br. 2-6)
is not relevant to the ultimate conclusion of obviousness since these steps are
described in Matsuda and Friese, respectively. See Facts 9-10. Appellants do
not specifically contest the teachings of Friese and Matsuda, but instead
allege that they are incompatible with Wade. App. Br. 14-19. The fact that
Wade describes his heated fuel injection system with reference to a diesel
engine, wherein fuel is typically injected directly into the combustion
chamber (Reply Br. 2, 5-6), does not mean that one of ordinary skill in the
art would interpret Wade’s teachings as applicable to only those types of
engines. Contra App. Br. 14-15. Wade expressly acknowledges that heated
fuel injection system technology is applicable to the engine described in
Friese (Fact 7) which, like Matsuda, describes an engine wherein the fuel
injector outlet is upstream of the combustion chamber. One of ordinary skill
in the art would recognize that Wade’s teachings, read as a whole, though
demonstrated specifically on a diesel engine, are equally applicable to
engines wherein the fuel injector is actuated during the intake stroke. We
acknowledge the fact that Matsuda involves a model engine which may
differ in size from the type of engine contemplated by Wade (App. Br 17-
18). However, Appellants fail provide a technical reason to convince us that
the teachings of Matsuda are inapplicable to the principles of operation of
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Wade. The specific size of the respective components of Wade and Matsuda
are not relevant to their principles of operation. The size of the engines
employed in each design is a specific structural detail that need not be bodily
incorporated in order to combine the teachings of Wade and Matsuda. For
these reasons Appellants have not established that the Examiner erred by
concluding that the subject matter of claims 1-4, 7, 8, 15-18, 23-26, 28, 29,
and 43-47 would have been obvious over the combination of Wade, Friese
and Matsuda.
Regarding claim 5, the fact that Giardini employs a carburetor system
to preheat fuel past a vaporization point does not mean that Giardini’s
teachings are wholly inapplicable to a fuel injector of the type described in
Wade wherein the fuel vaporizes only after injection. Contra App. Br. 20-
21. One of ordinary skill in the art would recognize that although the exhaust
gas heat exchanger of Giardini is controlled by a sensed fuel vapor
temperature, Giardini’s heat exchanger could also be controlled by a sensed
liquid fuel temperature and therefore be implemented in a system, such as
Wade’s, wherein the heated fuel does not reach a gaseous state prior to
injection. Giardini’s exhaust gas controlled heat exchanger does not become
wholly inapplicable to Wade simply because Giardini’s technique is
implemented on a system which employs a carburetor and therefore operates
differently in one particular way from the Wade system which uses a fuel
injector. Again, combining the teachings of prior art references does not
involve the bodily incorporation of their specific structures.
Regarding claim 31, Friese already teaches preventing the fuel from
reaching the critical point. Fact 9. It is not necessary for Smith to also teach
that it is desirable to do so. App. Br. 24, 26. Smith provides an alternate
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method for regulating pressure, which is associated with the critical point
(by having an influence upon it), by controlling a pump to increase pressure
in response to a sensed temperature or pressure. Fact 12. While Appellants
allege that there is no plausible reason why one of ordinary skill in the art
concerned with the Wade system would look to Smith in order to distribute
fuel to multiple injectors (App. Br. 25), this limitation does not appear in
claim 31. This argument is only relevant to claims 9-12, 19-20, 27, 30 and
35. The Wade system is not complete as Appellants suggest (App. Br. 25)
but only shows a portion of the entire engine, the heated fuel injector. One of
ordinary skill in the art would understand that the system disclosed in Wade
is not a stand-alone system but is intended to be incorporated into an engine.
Engines that employ multiple fuel injectors are known in the art and it is
known to use a fuel rail for delivering fuel to multiple injectors. Fact 13.
There is no need to rely upon Appellants’ disclosure to conclude that it
would have been obvious to use the fuel injector of Wade in an engine
having a fuel rail like that of Smith, because one of ordinary skill in the art
would understand Wade is intended for that type of application. App. Br. 25.

CONCLUSIONS OF LAW
On the record before us, Appellants have not established that the
Examiner erred by concluding that the subject matter of claims 1-4, 7, 8, 15-
18, 23-26, 28, 29, and 43-47 would have been obvious over the combination
of Wade, Friese and Matsuda. Appellants have not established that the
Examiner erred by concluding that the subject matter of claims 5 and 6
would have been obvious over the combination of Wade, Friese, Matsuda,
and Giardini or that the subject matter of claims 21, 22, and 33 would have
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been obvious over the combination of Wade, Friese, Matsuda, Smith and
Giardini. Appellants have not established that the Examiner erred by
concluding that the subject matter of claims 9-14, 19, 20, 27, 30-32, 34-36,
and 48-53 would have been obvious over the combination of Wade, Friese,
Matsuda, and Smith.

DECISION
For the above reasons, the Examiner's rejections of claims 1-36 and
43-53 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

vsh

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