Ex Parte Hendershot

Board of Patent Appeals and Interferences

May 2, 2012

11429907 (B.P.A.I. May. 2, 2012)

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.
11/429,907 05/08/2006 William B. Hendershot HEND-420 5063
8685 7590 05/02/2012
DERGOSITS & NOAH LLP
Three Embarcadero Center
Suite 410
SAN FRANCISCO, CA 94111
EXAMINER
NGUYEN, HOANG M
ART UNIT PAPER NUMBER
3748
MAIL DATE DELIVERY MODE
05/02/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM B. HENDERSHOT
____________

Appeal 2011-004941
Application 11/429,907
Technology Center 3700
____________

Before MICHAEL L. HOELTER, JAMES P. CALVE, and
BENJAMIN D. M.WOOD, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1-19 and 22. App. Br. 4. Claims 23-37 have been withdrawn and claims 20
and 21 have been cancelled. Id. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
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Application 11/429,907

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THE INVENTION
Claim 1 illustrates the claimed subject matter on appeal:
1. A method of generating electricity utilizing an oil
shale/sands deposit, the method comprising:
locating an electrical power generating facility that
includes a steam turbine power generator in close proximity to
the oil shale/sands deposit;
removing oil shale/sands from the oil shale/sands deposit
in bulk form;
providing the removed oil shale/sands to an above
ground burn container;
providing supplemental fuel to the burn container such
that hydrocarbons contained in the oil shale/sands provided to
the burn container are combusted to generate thermal energy;
using the thermal energy generated by the burn container
to heat water to generate steam;
providing the steam to the steam turbine power generator
such that the steam turbine power generator generates
electricity on the site of the oil shale/sands deposit.

REJECTIONS
Claims 1-19 and 22 are rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
Claims 19 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bronicki (US 5,713,195; iss. Feb. 3, 1998) and McKee
(US 4,577,908; iss. Mar. 25, 1986).
Claims 1-7, 12-19, and 22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Acheson (US 4,472, 935; iss. Sep. 25, 1984),
Bronicki, and McKee.
Claims 8-11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Acheson, Bronicki, McKee, and Horton (US 4,252,107; iss. Feb. 24,
1981).
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Application 11/429,907

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ANALYSIS
Claims 1-19 and 22 rejected under Section 112, First Paragraph
The Examiner found that Appellant added new matter in a May 4,
2009 Amendment that added an indirect heat exchanger 128 to Figure 2.
Ans. 3, 7. The Examiner determined that claims 1-19 and 22 fail to comply
with the written description requirement because they contain subject matter
that was not adequately described in the Specification. Ans. 3, 7. However,
the Examiner did not identify any limitation of claims 1-19 and 22 that lacks
an adequate written description in the Specification.
It is axiomatic that the written description requirement of 35 U.S.C.
112, first paragraph, pertains to the claimed invention. See In re Gosteli,
872 F.2d 1008, 1012 (Fed. Cir. 1989) (“Although Gosteli does not have to
describe exactly the subject matter claimed, . . . the description must clearly
allow persons of ordinary skill in the art to recognize that Gosteli invented
what is claimed.”); In re Rasmussen, 650 F.2d 1212, 1214-15 (CCPA 1981)
(the proper basis for rejecting a claim that is amended to recite elements
thought to be without support in the original disclosure is 35 U.S.C. § 112,
first paragraph, whereas 35 U.S.C. § 132 provides a basis for objecting to
amendments to the abstract, specification, and drawings that attempt to add
new matter to the original disclosure). The Examiner has not provided any
basis for rejecting claims 1-19 and 22 under section 112, first paragraph. As
such, we cannot sustain the rejection of those claims on that ground.
Claims 19 and 22 as unpatentable over Bronicki and McKee
Appellant argues claims 19 and 22 as a group. App. Br. 13-17. We
select claim 19 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claim 22 stands or falls with claim 19.
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Application 11/429,907

4
The Examiner found that Bronicki discloses an electricity generating
system with an above ground burn container that combusts bulk oil shale/
sands from oil shale/sands deposits to generate thermal energy and a power
generator, but does not clearly disclose that the combusted oil shale/sands is
in bulk form or that the system is near the oil shale deposit. Ans. 4. The
Examiner found that McKee discloses the concept of combusting oil shale
on the surface or in-situ in bulk form in a retort chamber 30 that is located in
an oil shale facility and determined that it would have been obvious to use
bulk oil shale in Bronicki’s system and to locate the system near oil shale
deposits as a well-known way to achieve the appropriate heat. Ans. 4, 9-10.
Appellant argues that McKee discloses surface processing of oil shale
in the background discussion and this teaching cannot be relied on to teach
an above-ground burn container as claimed in claim 19. App. Br. 15. This
argument is not persuasive because the Examiner relied on Bronicki to teach
an above-ground burn container for combusting solid oil shale and McKee to
teach combustion of bulk oil shale at an oil shale deposit/facility. Ans. 4.
Appellant also argues that McKee teaches that the in-situ process is
preferable and thus teaches away from combusting oil shale on the surface.
App. B. 16. This argument is not persuasive because McKee discloses that
it is well-known to process oil shale on the surface or in-situ in bulk form.
Ans. 4 (citing col. 1, ll. 8-19). McKee’s disclosure that in-situ processing is
preferable from an environmental standpoint because treated shale remains
in place, reducing the chance of surface contamination and the requirement
for disposal of solid wastes (col. 1, ll. 14-18), does not constitute a teaching
away from surface processing. See DePuy Spine, Inc. v. Medtronic Sofamor
Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not
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teach away, however, if it merely expresses a general preference for an
alternative invention but does not ‘criticize, discredit, or otherwise
discourage’ investigation into the invention claimed.” (citation omitted)).
Appellant further argues that McKee does not teach the combustion of
“bulk” oil shale, which is disclosed in Appellant’s Specification as having a
diameter greater than 1.5 inches, because McKee blasts oil shale into smaller
pieces and returns the rubblized oil shale to an in-situ retort chamber for
processing. App. Br. 16. This argument is not persuasive because McKee
uses impact crushing to produce shale particles of various sizes having an
upper limit of about 1 foot. Col. 4, ll. 44-53. The crushed shale particles are
fed successively over screen mesh of different dimensions to separate out
larger particles and form a plurality of particle groups within predetermined
group size ranges that correspond to such mesh sizes as 1 inch to 10 inches,
0.1 inch to 1 inch, and smaller than 0.1 inch. Col. 4, l. 53 to col. 5, l. 6. We
agree with the Examiner that McKee processes bulk oil shale as called for in
claim 19 and as interpreted in light of Appellant’s Specification (Spec. 6, ll.
16-20).
In the Reply Brief, Appellant also asserts that the Examiner has not
explained why it would have been obvious to combust bulk oil shale/sand
based on Bronicki’s combustion of pulverized or crushed oil shale and
McKee’s combustion of rubblized and crushed oil shale. Reply Br. 5. This
argument is not persuasive because the Examiner determined that it would
have been obvious to combine the teachings of Bronicki and McKee because
using oil shale of different sizes to generate heat and energy is well-known
(see Ans. 4, 9, 10) and Appellant has not shown error in those findings or
determination of obviousness. McKee discloses the combustion of bulk oil
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shale/sands as discussed supra, and Appellant’s attorney argument has not
persuaded us that Bronicki is incompatible with McKee. Moreover, these
arguments are individual attacks on the references where the Examiner has
relied on the combined teachings of both references to render obvious the
claimed subject matter. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citation omitted); see also In re Sneed, 710 F.2d 1544, 1550
(Fed. Cir. 1983) (it is not necessary that inventions of references be
physically combinable to render obvious the invention under review).
Accordingly, we sustain the rejection of claims 19 and 22.
Claims 1-7, 12-19, and 22 as unpatentable over Acheson, Bronicki & McKee
Appellant argues claims 1-7, 12-19, and 22 as a group. App. Br. 17-
18. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011). Claims 2-7, 12-19, and 22 stand or fall with claim 1.
The Examiner rejected claims 1-7, 12-19, and 22 as unpatentable over
Acheson, Bronicki, and McKee, relying on Bronicki to disclose a surface
combustor 70 (fig. 5) that combusts crushed solid oil shale, and McKee to
disclose the combustion of bulk oil shale on the surface or in-situ. Ans. 4-5.
Appellant argues that the combination of Acheson, Bronicki, and McKee
fails to render claim 1 obvious because McKee fails to teach the surface
combustion of bulk oil shale (App. Br. 17-18) and Acheson does not remedy
the deficiencies of Bronicki and McKee (Reply Br. 7). As discussed supra,
we agree with the Examiner that Bronicki and McKee disclose these claimed
features. Therefore, there is no deficiency in this regard for Acheson to cure
and we sustain the rejection of claims 1-7, 12-19, and 22.

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Claims 8-11 as unpatentable over Acheson, Bronicki, McKee & Horton
Appellant argues claims 8-11 as a group. App. Br. 18. We select
claim 8 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims
9-11 stand or fall with claim 8. Claim 8 depends from claim 1 and calls for
preheating water used to generate steam with a parabolic solar reflector. The
Examiner relied on Horton to disclose this feature. Ans. 6. Appellant
argues that Horton does not cure the deficiencies of Acheson, Bronicki, and
McKee as to claim 1. App. Br. 18; Reply Br. 8. Because we sustain the
rejection of claim 1 based on Acheson, Bronicki, and McKee, there are no
deficiencies for Horton to cure and we sustain the rejection of claims 8-11.
DECISION
The rejection of claims 1-19 and 22 under 35 U.S.C. § 112, first
paragraph for failing to comply with the written description requirement is
REVERSED.
The rejection of claims 19 and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Bronicki and McKee is AFFIRMED.
The rejection of claims 1-7, 12-19, and 22 under 35 U.S.C. § 103(a) as
being unpatentable over Acheson, Bronicki, and McKee is AFFIRMED.
The rejection of claims 8-11 under 35 U.S.C. § 103(a) as unpatentable
over Acheson, Bronicki, McKee, and Horton is 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)(1)(iv).

AFFIRMED

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