Ex Parte Mieney et al

Board of Patent Appeals and Interferences

Oct 23, 2009

10357920 (B.P.A.I. Oct. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HARRY R. MIENEY,
MICHAEL T. FAVILLE, and MICHAEL J. YAX
__________

Appeal 2009-009333
Application 10/357,920
Technology Center 3700
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Decided: October 23, 2009
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Before ERIC GRIMES, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 6-9, 20-23, and 26-33. We have
jurisdiction under 35 U.S.C. § 6(b).
Appeal 2009-009333
Application 10/357,920

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STATEMENT OF THE CASE
Claim 6 is representative of the claims on appeal, and reads as
follows:
6. A non-contacting fuel vaporizer, comprising:
a) a housing enclosing a vaporization chamber having walls;
b) fuel injection means adjacent said chamber for injecting fuel into
said chamber; and
c) air injection means adjacent said chamber for injecting air into said
chamber, wherein said air injection means includes a director plate having a
plurality of passages therethrough for conveying gas from a first manifold
into said chamber in the form of a plurality of directed gas jets, wherein said
director plate has a longitudinal plate axis, and wherein each of said
passages has a passage axis, wherein at least one of said passage axes is non-
parallel to said longitudinal plate axis, and wherein said gas jets form a non-
converging gas curtain between said injected fuel and said chamber walls to
shield said fuel from contact with said walls.

We reverse.

ISSUE
The Examiner finds that the Specification does not provide support for
the limitation of a “non-converging gas curtain.”
Appellants contend that the Specification describes the gas curtain as
“cylindrical,” and the description of the gas curtain in the Specification as
being cylindrical falls within the definition of a non-converging gas curtain
because the sides of the curtain do not converge.
Thus, the issue on appeal is: Have Appellants demonstrated that the
Examiner erred in finding that the Specification does not support the claim
limitation of a “non-converging gas curtain”?

Appeal 2009-009333
Application 10/357,920

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FINDINGS OF FACT
FF1 According to the Specification, the present invention relates “to a fuel
vaporizing system wherein injected fuel is introduced into a vortex of heated
air to both heat the fuel and prevent it from contacting with the apparatus
prior to vaporization thereof.” (Spec.1 1.)
FF2 Figure 1 of the instant disclosure is reproduced below:

Figure 1 shows “a schematic cross-sectional view of a first embodiment of a
non-contact vaporizer in accordance with the invention comprising a fuel
injector, an air director plate, and vaporization chamber.” (Id. at 3.)
FF3 The Specification teaches:
Mounted adjacent end wall 16, and preferably including end
wall 16 as described below, is a gas director plate 24 having a
plurality of passages 26 therethrough for receiving a gas 25, for
example air or steam, from an adjacent annular manifold 28 and
injecting such gas into chamber 12 in a plurality of gas jets 30
which join to form a generally cylindrical gas curtain 32

1 All references to the Specification are to the Specification dated May 16,
2006.
Appeal 2009-009333
Application 10/357,920

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surrounding fuel spray 22. Fuel spray 22 is thus desirably
shielded by curtain 32 from coming into contact with walls 14.

(Id. at 3-4.)
FF4 The Examiner rejects claims 6-9, 20-23, and 26-33, under 35 U.S.C.
§ 112, first paragraph, on the grounds that the claims contain new matter
(Ans. 3).
FF5 According to the Examiner, “[i]ndependent claims 6 and 20 have been
amended to recite ‘non-converging’ gas curtain,” but finds that “the
specification as originally filed has no mention of such a limitation.” (Id.)
FF6 The Examiner also rejects claims 6-9, 20-23, and 26-33 under 35
U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement (id.).
FF7 According to the Examiner, as the Specification does not “mention” a
“‘non-converging’ gas curtain . . . . one having ordinary skill in the art
would not be enabled to make and/or use such a device.” (Id. at 4.)

PRINCIPLES OF LAW
As stated in TurboCare Div. of Demag Delaval Turbomachinery
Corp. v. General Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir. 2001):
The written description requirement and its corollary, the new
matter prohibition of 35 U.S.C. § 132, both serve to ensure that
the patent applicant was in full possession of the claimed
subject matter on the application filing date. When the applicant
adds a claim or otherwise amends his specification after the
original filing date . . ., the new claims or other added material
must find support in the original specification.

Appeal 2009-009333
Application 10/357,920

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The test for determining whether a specification is sufficient to
support a particular claim “is whether the disclosure of the application relied
upon ‘reasonably conveys to the artisan that the inventor had possession at
that time of the later claimed subject matter.’” Ralston Purina Co. v. Far-
Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985) (quoting In re Kaslow,
707 F.2d 1366, 1375 (Fed. Cir. 1983)).
Thus, “[i]t is not necessary that the application describe the claim
limitations exactly, but only so clearly that persons of ordinary skill in the
art will recognize from the disclosure that appellants invented processes
including those limitations.” In re Wertheim, 541 F.2d 257, 262 (CCPA
1976) (citation omitted); see also Purdue Pharma L.P. v. Faulding, Inc., 230
F.3d 1320, 1323 (Fed. Cir. 2000) (“In order to satisfy the written description
requirement, the disclosure as originally filed does not have to provide in
haec verba support for the claimed subject matter at issue.”).

ANALYSIS
Appellants argue that “the gas curtain (32) is shown as a pair of
parallel dotted lines in FIG. 1 surrounding the fuel spray (22), and is also
shown in FIG. 8” to not converge (App. Br. 10-11). Appellants argue
further that the Specification describes the gas curtain as “cylindrical.” (Id.
at 11.) According to Appellants, “if one were to create a cylindrically-
shaped solid, the sides of the solid would not converge,” thus, Appellants
assert, “the description of the gas curtain in the specification as being
cylindrical falls within the definition of a non-converging gas curtain
because the sides of the curtain do not converge.” (Id. at 11.)
Appeal 2009-009333
Application 10/357,920

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The Examiner responds that the Specification states that the gas
curtain has a “cylindrical’ shape, which only requires that it relates to or has
the form or properties of a cylinder, thus “only some of the properties of a
cylinder must be present for the shape to be deemed cylindrical.” (Ans. 5.)
We find that Appellants have the better position. Given Figure 1 and
the statement in the Specification that the “plurality of gas jets . . . join to
form a generally cylindrical gas curtain 32 surrounding fuel spray 22,” we
interpret “a non-converging gas curtain” as a gas curtain having a shape with
sides that do not converge, such as a generally cylindrical shape, that serves
to shield the chamber walls from contact with the fuel. Moreover, the
Examiner has not explained why the above statement from the Specification
does not provide support for a “non-converging gas curtain,” other than to
assert that “only some of the properties of a cylinder must be present for the
shape to be deemed cylindrical.” The Examiner has not explained what
other properties of the gas curtain would be cylindrical such as to provide “a
generally cylindrical gas curtain 32 surrounding fuel spray 22” (FF3), such
that the chamber walls are shielded from contact with the fuel. Finally,
independent claims 8 and 22 also stand rejected, and those claims
specifically state “a cylindrical gas curtain,” and the Examiner also has not
explained how that limitation is not supported by the disclosure as filed.
The Examiner has also provided no separate reasons to support the
enablement rejection, relying upon the argued absence of support as
evidence of lack of enablement.
Appeal 2009-009333
Application 10/357,920

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CONCLUSION OF LAW
We find that Appellants have demonstrated that the Examiner erred in
finding that the Specification does not support the claim limitation of a
“non-converging gas curtain.”
We thus reverse the rejection of claims 6-9, 20-23, and 26-33, under
35 U.S.C. § 112, first paragraph, on the grounds that the claims contain new
matter, as well as the rejection of claims 6-9, 20-23, and 26-33 under 35
U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement.

REVERSED

dm

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