Ex Parte Hockaday et al

Board of Patent Appeals and Interferences

Jun 26, 2009

10492018 (B.P.A.I. Jun. 26, 2009)

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.
10/492,018 04/08/2004 Robert G. Hockaday ERD 2725
7590 06/26/2009
James C Wray
Suite 300
1493 Chain Bridge Road
McLean, VA 22101
EXAMINER
BASICHAS, ALFRED
ART UNIT PAPER NUMBER
3743
MAIL DATE DELIVERY MODE
06/26/2009 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 ROBERT G. HOCKADAY, PATRICK S. TURNER, ZACHARY
R. BRADFORD, MARC D. DEJOHN, CARLOS J. NAVAS and
HEATCLIFF L. VAZ
__________

Appeal 2009-002131
Application 10/492,018
Technology Center 3700
__________

Decided: June 26, 2009
__________

Before ERIC GRIMES, RICHARD M. LEBOVITZ, and STEPHEN
WALSH, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a heater,
which stand rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part but designate the affirmances as new grounds of rejection.
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STATEMENT OF THE CASE
The Specification discloses “a portable catalytic heater in which fuel
vapor and air (or other means of oxygen supply), are supplied to a catalyst.
The catalyst promotes the flameless combustion of the fuel releasing heat.
The liquid fuel is supplied through the use of a selectively permeable
membrane, such that only the fuel vapors diffuse through the membrane and
are fed to the catalyst. The catalyst is placed on a support that allows for the
diffusion and mixing of reactants such as a porous fiber felt coated with
catalysts.” (Spec. 2).
Claims 1-17, 26, 27, 43, 46-49, 54-56, and 59-64 are on appeal. 1
Claims 1, 13, and 46 are representative and read as follows:
Claim 1: A heat-generating device comprising
a fuel source,
a fuel delivery connected to the fuel source,
a catalyst dispersed over a porous substrate, the catalyst being in
diffusive contact with an oxidizing gas, and
a molecular selectively permeable membrane for selective molecular
delivery of fuel by diffusion to the catalyst,
wherein the fuel diffuses to the catalyst through the molecular
selectively permeable membrane and the oxidizing gas diffuses to the
catalyst through a different membrane or mechanical mechanism.

Claim 13: The device of claim 1, further comprising an upper
temperature limit setting on a thermal output caused by boiling the fuel.

Claim 46: A heat generating apparatus comprising
a heat generating device,
fuel from a fuel supply,

1 Claims 18-25, 28-42, 44-45, 50-53, 57, 58, and 65-87 are also pending but
have been withdrawn from consideration by the Examiner (Appeal Br. 7;
Office Action mailed Dec. 13, 2005).
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a molecular selectively permeable membrane for selective molecular
delivery of the fuel by a diffusion route to, a catalyst and
a means to deliver an oxidant or air to the catalyst through a different
membrane or mechanical mechanism.

Claims 1-17, 26, 27, 43, 46-49, 54-56, and 59-64 stand rejected under
35 U.S.C. § 103(a) as obvious in view of Welles ‘210,2 Welles ‘665,3 and
Hoagland;4 or in view of Welles ‘210, Welles ‘665, and Santini.5
OBVIOUSNESS I
Issue
The Examiner has rejected claims 1-17, 26, 27, 43, 46-49, 54-56, and
59-64 under 35 U.S.C. § 103(a) as being obvious in view of Welles ‘210,
Welles ‘665, and Hoagland. The claims have been argued in five groups:
claims 2-12, 16, 17, 26, 27, and 43 stand or fall with claim 1; claims 47-49,
54-56, and 59-64 stand or fall with claim 46; and claims 13, 14, and 15 are
each argued separately (Appeal Br. 18, 28). 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that Welles ‘210 discloses “substantially all of the
claimed limitations”, but does not describe the fuel diffusing through a
“molecular selectively permeable membrane” nor the oxidizing gas as
diffusing “to the catalyst through a different membrane or mechanical
mechanism” as recited in the claims (Ans. 3-4). However, the Examiner
finds that Welles ‘665 discloses a “different membrane or mechanical
mechanism” for delivering oxygen (“oxidizing gas”) than for the fuel (id. at

2 Welles, US 6,062,210, May 16, 2000
3 Welles, US 6,138,665, Oct. 31, 2000
4 Hoagland, US 6,895,805 B2, May 24, 2005
5 Santini, Jr. et al., US 6,849,463 B2, Feb. 1, 2005
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4). The Examiner further finds that “Hoagland teaches a molecular
selectively permeable membrane … [that] only allows the desired gas to
flow through to the catalyst,” and concludes that it would have been obvious
to use Hoagland’s membrane in the heater disclosed by Welles ‘210, “so as
to provide for only the desired gas to flow through to the catalyst” (id. at 4-
5).
Appellants contend that the Examiner erred in finding that one of skill
in the art would have been motivated to combine the cited references to
arrive at the claimed invention and in finding that the cited references
suggest all of the limitations of the claims.
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that the cited references in combination
disclose or suggest all the limitations of the claimed invention?
Findings of Fact
1. The Specification discloses a heater in which the “liquid fuel is
supplied through the use of a selectively permeable membrane, such that
only the fuel vapors diffuse through the membrane and are fed to the
catalyst” (Spec. 2).
2. The Specification discloses that “selective molecular filtration of
the fuel through the membrane keeps the catalytic heater from being
contaminated from impurities in the fuel, such as salts” (id.).
3. The Specification discloses that the “selective permeability of the
membrane to fuels (e.g. methanol), over the product (i.e. water), keeps the
liquid fuel reservoir from being contaminated with the product” (id.).
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4. The Specification discloses that “[t]he silicone rubber, Nafion and
DAIS materials will all have a high permeability to carbon dioxide. A large
fraction of the product carbon dioxide will diffuse through the fuel
membrane 18 and into the fuel 21.” (Id. at 12.)
5. The Specification does not define the term “molecular selectively
permeable membrane.”
6. The Specification discloses that the porous substrate may be fiber
glass (id. at 32).
7. Welles ‘665 discloses a “portable heat generating device in which
heat is uniformly generated across the surface of a sheet-shaped, fabric-like
structure” (Welles ‘655, col. 1, ll. 11-13).
8. Welles ‘665 discloses an embodiment in which
the fabric-like structure is constructed of catalyst-impregnated
glass yarn woven around porous microbore-tubes using a
standard hand loom and is contained within a sealed envelope.
… A pump forces the liquid methanol through a first plurality
of the tubes via a fuel inlet manifold, and the oxygen supply
through a plurality of the tubes via an air inlet manifold. The
microbore-tubes are arranged in parallel within the fabric-like
structure such that every other microbore-tube carries liquid
methanol, alternating with microbore-tubes carrying the oxygen
supply.
(Id. at col. 2, ll. 48-58.)
9. Welles ‘665 discloses that “[f]uel vapor and oxygen are uniformly
released through the pores of the microbore-tubes in the presence of the
platinum-coated glass fibers, thereby initiating flameless combustion which
results in heat generation” (id. at col. 2, ll. 59-62).
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10. Welles ‘665 discloses that the porous microbore-tubing can be
made from high-density PTFE (polytetrafluoroethylene) having pores with
“a nominal diameter of 0.1 to 10 microns” (id. at col. 4, ll. 55-63).
11. Welles ‘210 discloses “an improved apparatus … in which fuel
vapor (e.g. methanol) and an oxygen supply (e.g. air) [are] delivered
throughout channels formed within a sheet-shaped elastomeric structure”
(Welles ‘210, col. 3, ll. 54-59)
12. Welles ‘210 discloses that its
invention utilizes a novel approach by surrounding the catalytic
heat generating material with a micro-porous hydrophobic
membrane. These micro-porous membranes allow the fuel-air
vapor to enter and react while letting the combustion products
(i.e. CO2, H2O vapor) escape. At the same time, condensed
water vapor, which may happen during start-up, rapid changes
in the environment or when operating below the critical vapor
curve for whatever reason, is prevented from entering the
micro-porous material and coming in contact with the catalyst.

(Id. at col. 4, ll. 22-32.)
Principles of Law
“[A]s an initial matter, the PTO applies to the verbiage of the
proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
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“[W]hile it is true that claims are to be interpreted in light of the
specification . . . , it does not follow that limitations from the specification
may be read into the claims. . . . It is the claims that measure the invention.”
Sjolund v. Musland, 847 F.2d 1573, 1582 (Fed. Cir. 1988).
Anticipation is the epitome of obviousness. See, e.g., Connell v.
Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983).
Analysis
Claim 1 is directed to a heat-generating device comprising a fuel
source, a catalyst dispersed over a porous substrate, and a molecular
selectively permeable membrane through which the fuel diffuses to the
catalyst. Claim 1 also requires that an oxidizing gas diffuses to the catalyst
through a “membrane or molecular mechanism” which is different from the
selectively permeable membrane used for fuel delivery.
Welles ‘665 discloses a heat generating device that comprises a fuel
inlet manifold (fuel source), catalyst-impregnated glass yarn, and porous
microbore-tubes that carry liquid methanol. The device disclosed by Welles
‘665 also includes separate microbore-tubes carrying the oxygen supply that
alternate with the microbore-tubes carrying methanol. Welles ‘665 discloses
that fuel vapor and oxygen are released through the pores of the microbore-
tubes in the presence of catalyst-impregnated glass yarn, thereby initiating
flameless combustion. Given that Welles ‘665 discloses a heat generating
device in which fuel vapor and an oxygen supply are separately delivered to
a catalyst supported on a porous substrate, Welles ‘665 meets the limitation
of claim 1 requiring delivery of fuel and oxidizing gas via different
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membranes, because the microbore tube carrying methanol serves as a
different membrane than the tube carrying the oxygen.
The Specification does not define the term “molecular selectively
permeable membrane” but states in its Summary of the Invention that “liquid
fuel is supplied through the use of a selectively permeable membrane such
that only the fuel vapors diffuse through the membrane” but the liquid fuel
does not pass through the membrane (FF 1). The Specification also states in
this section that the “supply of fuel to the selectively permeable membrane
and the exact identity of the membrane serve as a way to regulate the degree
of heating provided by the” heater (Spec. 2). This use of such a membrane
is stated to maintain “the fuel concentration and a steady rate of delivery,”
making the rate “dependent upon the concentration of liquid in contact with
the fuel membrane rather than the fuel vapor pressure” (Spec. 2). Thus, a
selectively permeable membrane which allows fuel vapors, but not the liquid
fuel itself, to selectively diffuse through it appears to be a required property
of the claimed “molecular selectively permeable membrane.”
The Specification also states that “selective molecular filtration of the
fuel through the membrane keeps the catalytic heater from being
contaminated from impurities in the fuel, such as salts” (FF 2). The latter
statement does not imply any additional structural limitation, however,
because a membrane that is permeable to vapor but not liquid will also
prevent passage of contaminants dissolved in the liquid (like salts).
Finally, the Specification states that the “selective permeability of the
membrane to fuels (e.g. methanol), over the product (i.e. water), keeps the
liquid fuel reservoir from being contaminated with the product” (FF 3) but
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that a “large fraction of the product carbon dioxide will diffuse through the
fuel membrane” (FF 4). However, the claim does not state that the
membrane is permeable to CO2 but not H2O, and the Specification does not
define a “molecular selectively permeable membrane” in a way that requires
that property. Thus, while permeability to CO2 but not H2O is a disclosed
embodiment, we do not limit nor require the “molecular selectively
permeable membrane” to have this property. While claim language is read
in light of the Specification, limitations are not imported from the
Specification into the claims.
Thus, “a molecular selectively permeable membrane,” given the
broadest reasonable interpretation consistent with the Specification, is a
membrane that allows fuel molecules in the vapor phase to permeate but
does not allow the passage of liquid fuel. Thus, the microbore porous tube
of Wells ‘665 that allows methanol fuel vapors to permeate but retains the
methanol liquid fuel would reasonably be considered to be an “a molecular
selectively permeable membrane.” The Examiner’s rejection of claim 1 as
being obvious in view of Welles ‘210, Welles ‘665, and Hoagland is
affirmed, for the reason that the claims are anticipated by Welles ‘665.
Anticipation is the epitome of obviousness. Connell, 722 F.2d at 1548.
Claim 46 includes the same limitations as claim 1, with the exception
that claim 46 does not require a catalyst dispersed over a porous substrate.
Thus, claim 46 is also anticipated by Welles ‘665, and the Examiner’s
rejection of claim 1 as being obvious in view of Welles ‘210, Welles ‘665,
and Hoagland is affirmed.
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Claim 13 has been argued separately. Claim 13 depends from claim 1
and requires that the claimed device further comprises “an upper
temperature limit setting on a thermal output caused by boiling the fuel.”
The Examiner reasons that an
upper temperature limit caused by boiling is inherent because
boiling removes fuel from the reaction area and reduces the
reaction to stall and then decrease[s] the temperature. This
condition effects the pressurization of the fuel to allow the
apparatus to self regulate without additional action on the part
of the user. Welles ‘210 discusses high temperatures that
provide for the capability of the claimed function.
(Ans. 10.)
Appellants argue that “an upper temperature limit caused by boiling is
not inherent. It is not physically inherent that boiling fuel will remove the
fuel from the reaction area.” (Reply Br. 2.)
Appellants’ arguments are persuasive. The Specification states that
[w]hen the heater is running, the temperature can get above the
boiling point of the fuel and it will boil. The fuel vapor goes up
the vent line 2 and condenses on the walls of the vent line 2.
This boiling of the fuel acts to limit the temperature of the
heater 3 by heat removal with the vaporized fuel 9.
(Spec. 10.) The Examiner has not pointed to any structure in the devices of
Welles ‘210, Welles ‘665, or Hoagland that would carry out the function of
limiting the temperature of the thermal output based on boiling of the fuel,
nor has the Examiner adequately explained why one of skill in the art would
expect that function to be inherent in the prior art devices.
Claims 14 and 15 depend from claim 13. The rejection of claims 14
and 15 is reversed for the reasons discussed above.
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Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
cited references in combination disclose or suggest all the limitations of
claims 1 and 46, but not claims 13-15.
OBVIOUSNESS II
For the reasons discussed above, we find that Welles ‘665 anticipates
claims 1 and 46. That finding mandates affirmance of the rejection of
claims 1-12, 16, 17, 26, 27, 43, 46-49, 54-56, and 59-64 based on Welles
‘210, Welles ‘665, and Santini. Anticipation is the epitome of obviousness.
Connell, 722 F.2d at 1548.
With respect to claims 13-15, the Examiner relies on the same
reasoning as in the rejection in view of Welles ‘210, Welles ‘665, and
Hoagland (Ans. 10). The Examiner points to nothing in Santini to make up
for the deficiency of Welles ‘210, Welles ‘665, and Hoagland. For the
reasons discussed above, we conclude that the Examiner has not adequately
explained how the references teach or make obvious the limitations of claim
13. The rejection of claims 13-15 as being obvious in view of Welles ‘210,
Welles ‘665, and Santini is reversed.
SUMMARY
We affirm the rejections under 35 U.S.C. § 103(a) of claims 1-12, 16,
17, 26, 27, 43, 46-49, 54-56, and 59-64 in view of either Welles ‘210,
Welles ‘665, and Hoagland or Welles ‘210, Welles ‘665, and Santini.
However, we designate the affirmances as new grounds of rejection in order
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to provide Appellants a fair opportunity to respond to the reasoning we rely
on. We reverse the rejections of claims 13-15.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37 CFR
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 CFR
§ 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review.
37 CFR § 41.50(b) also provides that the appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner . . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .

AFFIRMED-IN-PART, 37 C.F.R. § 41.50(b)

lp

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JAMES C WRAY
SUITE 300
1493 CHAIN BRIDGE ROAD
MCLEAN VA 22101