Ex Parte IWAI et al

Patent Trial and Appeal Board

Oct 24, 2018

14331599 (P.T.A.B. Oct. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/331,599 07/15/2014
26158 7590 10/26/2018
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
FIRST NAMED INVENTOR
Y asunori IW AI
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P62622 1500US.l (0314.8) 7775
EXAMINER
BURKE, THOMAS P
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
10/26/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDocketing@wbd-us.com
BostonPatents@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Y ASUNORI IW AI, MASAO ITOH, SHINJU SUZUKI,
JEREMY ERON FETVEDT, and RODNEY JOHN ALLAM
Appeal2018-007490 1
Application 14/331,5992
Technology Center 3700
Before MICHAEL L. HOELTER, MICHELLE R. OSINSKI, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
1 Our Decision references Appellant's Specification filed July 15, 2014
("Spec.") and Appeal Brief filed February 26, 2018 ("Br."), as well as the
Examiner's Answer mailed April 18, 2018 ("Ans.") and Non-Final Office
Action mailed September 11, 2017 ("Non-Final Act.").
2 Appellant identifies 8 Rivers Capital, LLC as the real party in interest.
Br. 1.
Appeal2018-007490
Application 14/331,599
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant3 appeals from the
Examiner's decision to reject claims 1, 2, 11, 12, and 17-25. We have
jurisdiction under § 6(b ).
We AFFIRM.
SUBJECT MATTER ON APPEAL
The invention "relate[s] generally to a gas turbine facility." Spec. ,r 2.
Claim 1, reproduced below, is the sole independent claim on appeal and
representative of the claimed subject matter:
1. A gas turbine facility, comprising:
a combustor combusting fuel and oxidant;
a turbine rotated by combustion gas exhausted from the
combustor;
a heat exchanger cooling the combustion gas exhausted
from the turbine and providing cooled combustion gas;
a working fluid supply pipe guiding at least a part of the
cooled combustion gas as working fluid to the combustor via the
heat exchanger;
a fuel supply pipe supplying fuel to the combustor;
an oxidant supply pipe supplying the oxidant to the
combustor via the heat exchanger; and
an oxidant flow rate regulating valve regulating a flow rate
of the oxidant in the oxidant supply pipe upstream of the heat
exchanger.
3 We use the term "Appellant" herein to refer to any and all appellants
collectively.
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Application 14/331,599
REJECTIONS
The following rejections are before us on appeal:
I. Claim 23 is rejected under 35 U.S.C. § 112(b) as indefinite.
Non-Final Act. 3.
II. Claims 1, 2, 11, and 23-25 are rejected under 35 U.S.C. § 103 as
unpatentable over Palmer et al. (US 2012/0067056 Al, pub.
Mar. 22, 2012, "Palmer") and Mittricker et al. (US 2011/0300493
Al, pub. Dec. 8, 2011, "Mittricker"). Non-Final Act. 12-14.
III. Claims 12, 20, and 21 are rejected under 35 U.S.C. § 103 as
unpatentable over Palmer, Mittricker, and Mackay et al.
(US 2010/0229525 Al, pub. Sept. 16, 2010, "Mackay").
Non-Final Act. 14--16.
IV. Claims 17-19 are rejected under 35 U.S.C. § 103 as unpatentable
over Palmer, Mittricker, Mackay, and Golomb et al.
(US 5,724,805, iss. Mar. 10, 1998, "Golomb").
Non-Final Act. 17-20.
V. Claim 22 is rejected under 35 U.S.C. § 103 as unpatentable over
Palmer, Mittricker, and Golomb. Non-Final Act. 20.
VI. Claims 1 and 24 are provisionally rejected on the ground of
nonstatutory double patenting as unpatentable over claim 20 of
copending application no. 14/331,361 ("the '361 application").
Non-Final Act. 4--5.
VII. Claims 2, 11, 22, 23, and 25 are provisionally rejected on the
ground of nonstatutory double patenting as unpatentable over
claim 20 of the '361 application and Golomb. Non-Final Act. 5---6.
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Application 14/331,599
VIII. Claims 12 and 17 are provisionally rejected on the ground of
nonstatutory double patenting as unpatentable over claim 20 of the
'361 application, Golomb, and Mackay. Non-Final Act. 7-8.
IX. Claims 18-21 are provisionally rejected on the ground of
nonstatutory double patenting as unpatentable over claim 20 of the
'361 application, Golomb, Mackay, and Mittricker.
Non-Final Act. 8-11.
ANALYSIS
Indefiniteness (Rejection I)
The Examiner determines claim 23 is indefinite because there is
insufficient antecedent basis for the term "the mixing part."
Non-Final Act. 3. Indeed, the term "the mixing part" lacks an antecedent
basis such that it is unclear to what this term refers. See Ex parte McAward,
No. 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (holding
that during prosecution, "[a] claim is indefinite when it contains words or
phrases whose meaning is unclear" ( alteration in original) ( quoting In re
Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014))); see also Halliburton
Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008)
( explaining that a patent drafter is in best position to resolve ambiguity in a
patent claim, and that it is highly desirable for examiners to demand
applicants do so in appropriate circumstances during prosecution to avoid
attempting to resolve the ambiguity in litigation).
Appellant does not contest the Examiner's rejection. In view of the
foregoing, we sustain the Examiner's rejection of claim 23 under 35 U.S.C.
§ 112(b) as indefinite.
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Application 14/331,599
Obviousness (Rejections 11-V)
In rejecting independent claim 1, the Examiner finds Palmer discloses
the invention substantially as claimed, except for "an oxidant flow rate
regulating valve regulating a flow rate of the oxidant in the oxidant supply
pipe upstream of the heat exchanger." Non-Final Act. 12. The Examiner
further finds Mittricker teaches an oxidant flow rate regulating valve, i.e.,
the valve controlled by controller 118, regulating a flow rate of oxidant
flowing to combustor 110. Id. The Examiner then determines it would have
been obvious to one having ordinary skill in the art to modify Palmer's
disclosure to include Mittricker's flow regulating valve to obtain
substantially stoichiometric combustion. Id. at 12-13 (citing Mittricker ,r 2).
Each of the remaining rejections is based, at least in part, on this
combination of Palmer and Mittricker. Id. at 13-20.
Appellant's sole argument against the Examiner's obviousness
rejections is that the proposed combination of Palmer and Mittricker is based
on hindsight, as opposed to a reasoned statement as to predictability.
Br. 4--7. According to Appellant, Mittricker teaches an oxidant flow rate
regulating valve regulating a flow rate of oxidant to a combustor, and is
silent regarding heat exchangers. Id. at 5. Appellant then asserts "[t]he
[E]xaminer' s conclusion necessarily relies upon an undisclosed presumption
that a combustor is structurally and functionally analogous to a heat
exchanger, such that the addition of the alleged oxidant flow rate regulating
valve (Mittricker) to Palmer would enable Palmer to obtain substantially
stoichiometric combustion." Id. at 6. Appellant's argument is not
persuasive of Examiner error.
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Application 14/331,599
As the Examiner explains in the Answer, Palmer discloses controlling
the flow of the oxidant, i.e., air stream 51, upstream of a heat exchanger, i.e.,
at stream 30, to give near stoichiometric combustion of the fuel in a
combustor. Ans. 4; Palmer ,r 50 ("The air streams 51, 21, 38 are separately
controlled at one or more locations ( e.g., at the streams 48, 20, 30) to give
near stoichiometric combustion of the fuel from the fuel streams 26, 24, 37
in the combustors 3, 4, 34."), Fig. 1. Palmer does not specify the structure
used to control the flow of the oxidant, but Mittricker teaches that valves are
used to control the flow of oxidant to provide substantially stoichiometric
combustion. Ans. 4; Mittricker ,r,r 2, 29, Fig. IA. Given that Palmer's
unspecified control means and Mittricker' s valve both control oxidant flow
rate to provide stoichiometric combustion, using Mittricker's valve in lieu of
Palmer's unspecified control means would likewise control the oxidant flow
rate to provide substantially stoichiometric combustion.
Simply put, the Examiner's proposed combination of Palmer and
Mittricker, i.e., modifying Palmer's disclosure of an unspecified controlling
means to include Mittricker's valve for controlling oxidant flow rate, is not
based on hindsight, but instead is a combination of known elements
according to known methods to yield the predictable result of regulating
oxidant flow rate for providing stoichiometric combustion. According to our
reviewing court, such a combination is obvious. KSR Int 'l Co. v. Telejlex
Inc., 550 U.S. 398,416 (2007) ("[A] combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.").
In view of the foregoing, Appellant does not apprise us of error in the
Examiner's combination of Palmer and I\1ittricker, on which all of the
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Application 14/331,599
Examiner's obviousness rejections are based. We, therefore, sustain the
rejections of claims 1, 2, 11, 12, and 17-25 under 35 U.S.C. § 103.
Nonstatutory Double Patenting (Rejections VI-IX)
The Examiner provisionally rejects claims 1, 2, 11, 12, and 17-25 on
the ground of nonstatutory double patenting as unpatentable over claim 20 of
the '361 application, alone or in combination with one or more references.
Non-Final Act. 4--11. Appellant does not contest these rejections.
Since the Non-Final Office Action, the claims of the '361 application
have been amended, and in particular, claim 20 has been canceled. Given
the claims of the '361 application have changed, we decline to reach the
nonstatutory double patenting rejections, and leave it to the Examiner to
detennine whether the rejections are proper in light of the amended claims
of the '361 application.
Drawings
In addition to the rejections of the claims discussed above, the
Examiner objects to Figures 1, 3, and 4 of the drawings because the
Examiner determines it is unclear which elements are receiving or sending
the control signals depicted in dashed lines and whether the control signals
are inputs or outputs. Non-Final Act. 2. Appellant argues the Examiner's
objection to the drawings is erroneous. Br. 7-9.
An objection made by an examiner is a matter reviewable by petition
to the Director under 3 7 C.F .R. § 1.181, not a matter for appeal to the Board.
MPEP § 1002.02(c)(4) (9th ed. Rev. 08.2017, Jan. 2018); In re Hengehold,
440 F.2d 1395, 1403 (CCPA 1971) ("There are a host of various kinds of
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decisions an examiner makes in the examination proceeding-------mostly
matters of a discretionary, procedural or nonsubstantive nature--------which have
not been and are not now appealable to the board."). The Board, however,
may review adverse decisions of examiners which "relate, at least indirectly,
to matters involving the rejection of claims" (In re Hengehold, 440 F.2d at
1404), but such is not the case here. The Examiner's objection to the
drawings is not related to any rejection of the claims, and, therefore remains
outside our purview.
DECISION
The Examiner's decision to reject claim 23 under 35 U.S.C. § 112(b)
is affirmed.
The Examiner's decision to reject claims 1, 2, 11, 12, and 17-25
under 35 U.S.C. § 103 is affirmed.
We do not reach the Examiner's decision to provisionally reject
claims 1, 2, 11, 12, and 17-25 on the ground ofnonstatutory double
patenting.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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