Ex Parte Kaufmann et al

Patent Trial and Appeal Board

Oct 12, 2016

12524775 (P.T.A.B. Oct. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/524,775 07/28/2009
22116 7590 10/14/2016
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Peter Kaufmann
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.
2006P2208 l WOUS 2043
EXAMINER
GOYAL,ARUN
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
10/14/2016 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):
IPDadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER KAUFMANN and WERNER KREBS
Appeal2014-009471
Application 12/524,775
Technology Center 3700
Before EDWARD A. BROWN, BRANDON J. WARNER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Peter Kaufmann and Werner Krebs ("Appellants") appeal under 35
U.S.C. § 134(a) from the Examiner's Non-Final decision rejecting claims
14, 17-19, 23, 26, and 29-31. 1' 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
1 Claims 20-22, 24, 25, 32, and 33 have been withdrawn. Non-Final Act. 1.
2 Appellants identify the real party in interest as Siemens
Aktiengesellschaft. Appeal Br. 1.
Appeal2014-009471
Application 12/524,775
We AFFIRM and enter a NEW GROU-ND OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).
THE CLAIMED SUBJECT MATTER
Independent claim 14, reproduced below, is illustrative of the claimed
subject matter.
14. A combustion chamber for a gas turbine, comprising:
a first jet carrier;
a second jet carrier; and
a combustion space,
wherein at least one of the first jet carrier or the second jet
carrier injects an operating gas in such a way into the combustion
space that a waste gas is formed in a flame zone of the respective
jet carrier located in the combustion space,
wherein the waste gas is recirculated into a first mixing
zone of the first jet carrier wherein the operating gas that was
injected by the first jet carrier is mixed with the waste gas in the
first mixing zone,
wherein the first jet carrier and the second jet carrier are
positioned such that the waste gas from a first flame zone of the
first jet carrier will flow directly into a second mixing zone of the
second jet carrier wherein the operating gas that was injected by
the second jet carrier is mixed with the waste gas flowing directly
from the first flame zone in the second mixing zone, and
wherein flame-stabilizing is achieved in the second mixing
zone using the hot waste gas from the first flame zone with no
recirculating of the waste gas, and
wherein the first jet carrier is located in the combustion
chamber upstream of the second jet carrier wherein the first
flame zone is located in the combustion chamber upstream of the
second mixing zone.
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Application 12/524,775
REJECTIONS
1) Claims 14, 17-19, 23, 26, and 29-31 are rejected under the written
description requirement of 35 U.S.C § 112, first paragraph.
2) Claims 14, 17-19, 23, 26, and 29-31 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Tsukahara (US 5,323,614, iss. June 28,
1994).
DISCUSSION
Rejection 1: 35 US.C. § 112, First Paragraph
The Examiner rejects claims 14, 17-19, 23, 26, and 29-31 under 35
U.S.C. § 112, first paragraph, for failure to comply with the written
description requirement. Non-Final Act. 2. Independent claims 14 and 26
each recite "wherein flame-stabilizing is achieved in the second mixing zone
using the hot waste gas from the first flame zone with no recirculating of the
waste gas." Appeal Br. 10, 11 (Claims App.) (emphasis added). The
Examiner finds that the italicized language ("no recirculating limitation") is
"not in the [S]pecification[] and therefore introduce[s] NEW MATTER."
Non-Final Act. 2.
Appellants contend that the no recirculating limitation is supported by
various provisions of the Specification and drawings. Appeal Br. 5.
Appellants argue that Figure 1 of the application illustrates that "no waste
gas is recirculated to the second mixing zone 30 as there are no arrows from
the combustion zones 34[] and 38 going back into the second mixing zone
30. All the recirculated waste gas flows 32, 42 and 44 go back into ... the
first mixing zone 28." Id. In support, Appellants quote paragraph 9 of the
Specification as follows: "the waste gas from the flame zone of the first jet
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Appeal2014-009471
Application 12/524,775
carrier can be used directly for stabilizing the combustion of the operating
gas from the second jet carrier without the need to recirculate said waste gas
for reaching the second jet carrier's mixing zone." Id. Appellants contend
that "[ t ]he clear meaning from this statement is that waste gas is not
recirculated into the second jet carrier's mixing zone 30 where recirculation
means to 'circulate again."' Reply Br. 2.
The Examiner disagrees, noting the Specification indicates that
recirculating waste gas to mixing zone 30 is "kept small." Ans. 3 (referring
to Spec. i-f 35 and Fig. 1). Based on Figure 1, the Examiner also determines
that at least some waste gas recirculates to mixing zone 30 because "the
waste gas 42 flows to zone 28 and after combining with the flow from 14
continue[s] to zone 30 via 34." Id. For the following reasons, we sustain the
rejection.
The Federal Circuit has explained:
The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally
filed reasonably conveys to the artisan that the inventor had possession
at that time of the later claimed subject matter, rather than the presence
or absence of literal support in the specification for the claim
language. . . . The content of the drawings may also be considered in
determining compliance with the written description requirement.
In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (citations omitted).
The Specification states that "the required recirculated waste-gas mass
flow is kept small." Spec. i-f 35 (emphasis added). Appellants do not direct
us to any description in the Specification that no recirculated waste gas is
supplied to the second mixing zone. Even if there is no "need to recirculate
said waste gas for reaching the second jet carrier's mixing zone" (Spec. i-f 9),
this does not establish that such recirculating of waste gas does not occur at
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Appeal2014-009471
Application 12/524,775
all. In that regard, as noted by the Examiner, Appellants' Figure 1 appears
to show that recirculated waste gas flows 42 and 44 flow to the second
mixing zone 30, at least indirectly. Appellants do not contend that the
illustrated apparatus is configured to prevent such recirculating of waste gas.
Therefore, we, sustain the rejection of claims 14, 17-19, 23, 26, and 29-31
under 35 U.S.C. § 112, first paragraph, because the Specification and
drawings of Appellants' application do not reasonably convey to a skilled
artisan that Appellants had possession of the claimed combustion chamber
including "the second mixing zone using the hot waste gas from the first
flame zone with no recirculating of the waste gas." Appeal Br. 10 (Claims
App.) (emphasis added).
New Ground of Rejection: 35 US. C. § 112, Second Paragraph
Pursuant to ourauthorityunder37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION of claims 14, 17-19, 23, 26, and29-31 under
35 U.S.C. § 112, second paragraph, as being indefinite for failure to
particularly point out and distinctly claim the subject matter which
Appellants regard as the invention. "As the statutory language of
'particular[ity ]' and 'distinct[ ness ]' indicates, claims are required to be cast
in clear- as opposed to ambiguous, vague, indefinite - terms." In re
Packard, 751F.3d1307, 1313 (Fed. Cir. 2014). "It is the [Appellants']
burden to precisely define the invention, not the PTO's." In re Morris, 127
F.3d 1048, 1056 (Fed. Cir. 1997).
As noted above, independent claims 14 and 26 both recite, inter alia,
"wherein the flame-stabilizing is achieved in the second mixing zone using
the hot waste gas from the first flame zone with no recirculating of the waste
gas." Appeal Br. 10, 11 (Claims App.) (emphasis added). We first note that
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Application 12/524,775
claims 14 and 26 both recite that waste gas from the first or second jet
carrier is recirculated into a first mixing zone. It is, thus, unclear where in
the combustion chamber there would be "no recirculating of the waste gas."
For example, this limitation does not appear to preclude recirculation of the
waste gas to any particular location, such as the second mixing zone. We
construe the limitation of "no recirculating of the waste gas" as not limiting
where in the combustion chamber there can be "no recirculation of the waste
gas" to a particular location. This limitation is, thus, unclear at least because
it appears to contradict the claim recitation that waste gas is recirculated into
a first mixing zone. Based on the foregoing, the meaning of the limitation
"no recirculating of the waste gas" is unclear. We thus enter a new ground
of rejection of claims 14 and 26, as well as dependent claims 17-19, 23, and
29-31, as indefinite under 35 U.S.C. § 112, second paragraph.
Rejection 2: Anticipation by Tsukahara 3
The Examiner finds that Tsukahara discloses the subject matter
recited in claims 14, 17-19, 23, 26, and 29-31. Non-Final Act. 3-5.
Appellants direct their arguments to independent claims 14 and 26 only.
Appeal Br. 8. Appellants submit three contentions. First, Appellants
contend that Tsukahara does not disclose recirculating waste gas "into a first
mixing zone." Appeal Br. 7. Specifically, Appellants argue, Tsukahara does
not disclose that waste gas from its "first flame zone 13 6 or second flame
zone 13 7 is recirculated back into the first premixing chamber 123, or first
3 The new ground of rejection under 35 U.S.C. § 112, second paragraph,
does not prevent resolution of the rejection under 35 U.S.C. § 102(b)
because the limitation of "no recirculating of waste gas" is not implicated in
the anticipation rejection.
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Application 12/524,775
mixing zone." Id. Second, Appellants contend that Tsukahara does not
disclose the recited ''first flame[] is located in the combustion chamber
upstream of the second mixing zone." Id. (emphasis added). Appellants
argue that, instead, Tsukahara's second premixing chamber is upstream of
first flame zone 136. Id. Third, Appellants contend that Tsukahara does not
disclose "the operating gas that was injected by the second jet carrier is
mixed with gas flowing directly from the first flame zone in the second
mixing zone." Id. at 8. Appellants argue that Tsukahara teaches "the first
flame 13 6 is used to form the second flame 13 7 [] not ... that the waste gas
from the first flame zone 13 6 is used in the second premixing zone before
being ignited in the second flame zone." Id.
The Examiner provides an annotated version of Tsukahara's Figure 1.
Ans. 4. The Examiner finds that the recited first and second jet carriers, not
the recited first and second mixing zones, read on Tsukahara's premixing
chambers 123 and 124. Id. at 5. The Examiner finds that the recited first
and second mixing zones read on flame zones 13 6 and 13 7 of Tsukahara.
Id. at 4. In response to Appellants' first contention, the Examiner responds
that "zone 1 mixes waste gases from flame 13 6 by deflecting with the use of
121 and from flame 13 7 at the boundary (annotated). Furthermore, jet
carrier 123 directs jet and therefore flame 136 towards flame 137." Id. With
respect to Appellants' second contention, the Examiner responds that
Tsukahara's "first flame zone 136 ... is upstream of the second mixing
zone." Id. at 5. With respect to Appellants' third contention, the Examiner
responds that "the waste gas from the first flame zone ( 13 6) is used in the
second mixing zone (zone II) before being ignited in the second flame
zone." Id.
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Application 12/524,775
Appellants reply that claim 14 "clearly defines the mixing zone as a
separate zone from the flame zone and as the place where the operating gas
injected is mixed with the recirculated gas prior to combustion." Reply Br.
3. Appellants argue that the Examiner's finding that Tsukahara discloses
first and second mixing zones is erroneous because the areas identified by
the Examiner as mixing zones are at the boundaries of flames 13 6 and 13 7
where combustion is occurring. Id. at 4. For the following reasons, we do
not sustain the rejection.
The Examiner has not identified any disclosure in Tsukahara of the
recirculation of combustion waste gases to a mixing zone. The Examiner
relies on Tsukahara (col. 1, 11. 47---63) to support this rejection. Non-Final
Act. 3--4. The cited portion of Tsukahara, however, discloses that deflecting
means 121 causes "an eddy flow of the premixed fuel/ air mixture directed
from the one of the premixed fuel/air mixture outlets toward another one of
the premixed fuel/air mixture outlets." Tsukahara col. 1, 11. 59--62, col. 2, 1.
41--42. The cited portion of Tsukahara does not support the Examiner's
finding that Tsukahara discloses the limitation that "the waste gas is
recirculated into a first mixing zone of the firstjet carrier." See Non-Final
Act. 3. Likewise, the Examiner has not identified any disclosure in
Tsukahara to support the finding that "operating gas that was injected by the
second jet carrier ... is mixed with the waste gas flowing directly from the
first flame zone ... in the second mixing zone." See id. at 3--4.
Consequently, both of these findings are based on speculation regarding the
actual flow of combustion waste gas in Tsukahara's device and, thus, are not
supported by a preponderance of the evidence. Thus, we do not sustain the
anticipation rejection of claims 14, 17-19, 23, 26, and 29--31.
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Application 12/524,775
DECISION
The Examiner's decision rejecting claims 14, 17-19, 23, 26, and 29-
31 under 35 U.S.C. § 112, first paragraph, is affirmed.
We enter a NEW GROUND OF REJECTION of claims 14, 17-19,
23, 26, and 29-31under35 U.S.C. § 112, second paragraph, pursuant to our
authority under 37 C.F.R § 41.50(b).
The Examiner's decision rejecting claims 14, 17-19, 23, 26, and 29-
31 under 35 U.S.C. § 102(b) is reversed.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, [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 prosecution will be remanded
to the examiner. The new ground of rejection is binding
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Application 12/524,775
upon the Examiner unless an amendment or new Evidence
not previously of Record is made which, in the opinion of
the examiner, overcomes the new ground of rejection
designated in this decision. Should the examiner reject the
claims, [Appellants] may again appeal to the Board pursuant
to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of
rejection and state with particularity the points believed to
have been misapprehended or overlooked in entering the
new ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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)(l)(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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