Ex Parte O et al

Board of Patent Appeals and Interferences

Apr 13, 2010

11034595 - (D) (B.P.A.I. Apr. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JUSTIN M. O’CONNOR and RUSSELL P. ZUKOUSKI
____________

Appeal 2009-005246
Application 11/034,595
Technology Center 3700
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Decided: April 13, 2010
____________

Before: JENNIFER D. BAHR, MICHAEL W. O'NEILL, and KEN B.
BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-005246
Application 11/034,595

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STATEMENT OF THE CASE
Justin M. O’Connor and Russell P. Zukouski (Appellants) appeal
under 35 U.S.C. § 134 (2002) from the Examiner’s decision rejecting claims
1-20 under 35 U.S.C. § 101 as lacking utility; under 35 U.S.C. § 112, first
paragraph, as failing to meet the enablement requirement; and under 35
U.S.C. § 102(b) as being anticipated by Tonetti (US Patent 6,666,020, issued
Dec. 23, 2003). We have jurisdiction over this appeal under 35 U.S.C. § 6
(2002).

The Invention
Appellants’ claimed invention is directed to a method of operating a
compression ignition engine (claims 1 and 11), and to a compression
ignition engine (claims 6 and 16), wherein, according to Appellants, some
quantity of fuel is injected into the cylinders during compression strokes, in
advance of main fuel injections, to quench any incipient combustion of a
homogeneous mixture of unburnt fuel that may be remaining in the cylinder
from a post-injection during the exhaust to regenerate the particulate filter in
the exhaust line. See Spec., paras. [0001], [0010], [0013], and [0014].
Claim 11, reproduced below, is illustrative of the claimed subject
matter.
11. A method of operating a compression ignition engine to
avoid, in cylinders of the engine during compression strokes,
uncontrolled combustion of homogeneous air-fuel charges
created by residual unburnt fuel from fueling that occurred prior
to the compression strokes, the method comprising:
injecting fuel into the cylinders prior to compression
strokes for operating the engine while at times leaving residual
unburnt fuel capable of mixing with new fresh air charges to
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form homogeneous air-fuel mixtures that would begin
combusting during the compression strokes; and
injecting some quantity of fuel into the respective
cylinders during the compression strokes in advance of top dead
center (TDC) to quench any incipient combustion of such
homogeneous mixtures.

SUMMARY OF DECISION
We AFFIRM.

OPINION
The Rejections for lack of utility and lack of enablement
Principles of law
35 U.S.C. § 101 (2002) states,
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
35 U.S.C. § 112 (2002) states, in relevant part,
The specification shall contain a written description of the
invention, and of the manner and process of making and using
it, in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same.
Whether an application discloses a utility for a claimed invention is a
question of fact. In re Ziegler, 992 F.2d 1197, 1200 (Fed. Cir. 1993);
Raytheon Co. v. Roper Corp., 724 F.2d 951, 956 (Fed. Cir. 1983).
“The PTO may establish a reason to doubt an invention's asserted
utility when the written description ‘suggest[s] an inherently unbelievable
undertaking or involve[s] implausible scientific principles.’” In re
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Cortright, 165 F.3d 1353, 1357 (Fed. Cir. 1999) (quoting In re Brana, 51
F.3d 1560, 1566 (Fed. Cir. 1995)) (alteration in original). Stated differently,
the examiner must present the evidence necessary to establish a reason for
one of ordinary skill in the art to question the objective truth of the statement
of utility. Id.
Once the examiner has provided evidence showing that one of
ordinary skill in the art would reasonably doubt the asserted utility, then the
burden shifts to the applicant to submit evidence sufficient to convince such
a person of the invention’s asserted utility. Brana, 51 F.3d at 1566. See
e.g., In re Swartz, 232 F.3d 862, 864 (Fed. Cir. 2000) (“the PTO provided
several references showing that results in the area of cold fusion were
irreproducible”).
“While a meritorious invention should not be struck down because the
patentee has misconceived the scientific principle of his invention, the error
cannot be overlooked when the misconception is embodied in the claim.”
Raytheon, 724 F.2d at 956 (quoting Linde Air Prods. Co. v. Graver Tank &
Mfg. Co., 86 F.Supp. 191, 197 (N.D.Ind. 1947)). As stated in Raytheon, 724
F.2d at 956:
Because it is for the invention as claimed that enablement must
exist, and because the impossible cannot be enabled, a claim
containing a limitation impossible to meet may be held invalid
under § 112. Moreover, when a claim requires a means for
accomplishing an unattainable result, the claimed invention
must be considered inoperative as claimed and the claim must
be held invalid under either § 101 or § 112 of 35 U.S.C.
The Issue
The Examiner finds that the limitations in each of independent claims
1, 6, 11, and 16 directed to injecting fuel into the respective cylinders during
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the compression stroke to quench any incipient combustion of homogeneous
mixtures of unburnt fuel are not supported by either an asserted utility or a
well established utility. Ans. 3. Citing the Tonetti patent as evidence, the
Examiner found that it has been established in the art of multiple fuel
injections for a diesel engine that a pre-injection or pilot injection, injected
near the end of the compression stroke, would immediately burn, generating
heat to increase the pressure and temperature in the cylinder, thereby causing
immediate burning of the main fuel injection at or near the TDC, generating
a more uniform heat release rate. Ans. 3, 9. Thus, according to the
Examiner, the “‘well established utility’” of a pre-injection or pilot injection
prior to the main injection is to reduce an ignition lag of a main injection,
thus reducing combustion noise in the engine, not to quench incipient
combustion, as claimed by Appellants. Ans. 9. The Examiner finds that
Appellants have not met their burden of coming forth with evidence that the
claimed fuel injection during the compression stroke will have the claimed
result of quenching any incipient combustion of a homogeneous mixture of
air and residual fuel to achieve any desired outcome. Ans. 9-10.
Appellants, on the other hand, argue that the Examiner has not
discharged the initial burden of providing evidence which establishes a
reason why a person of ordinary skill in the art would question Appellants’
asserted utility of avoiding the inventor-observed phenomenon of
uncontrolled combustion that can occur during a compression stroke due to
the presence of residual unburnt fuel in the cylinder after the power and
exhaust strokes during regeneration, or which establishes that the claimed
invention is inoperative. App. Br. 9. Thus, Appellants argue that Appellants
need not submit evidence in opposition. Id.
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Accordingly, the issue before us is whether the Examiner has
presented sufficient evidence and technical reasoning to establish a reason
why a person of ordinary skill in the art would question Appellants’ asserted
utility for the fuel injection during the compression stroke, so as to shift the
burden to Appellants to come forth with evidence to support the asserted
utility.
Discussion
According to Appellants’ Specification, post-injection of fuel during
the power stroke to cause particulates in the exhaust filter to burn off (i.e.,
regeneration) may result in some residual unburnt fuel in the cylinder after
the cylinder is closed to exhaust. Spec., para. [0026]. The Specification
discloses that this residual fuel will mix with charge air during an ensuing
intake stroke, creating a sufficiently homogeneous mixture to begin
combusting during a subsequent compression stroke. Id. Under certain
conditions, such combustion may occur earlier than desired, thus amounting
to “an uncontrolled combustion event.” Id.
Appellants allege their injection of fuel into the respective cylinder
before the next main fuel injection quenches incipient combustion of a
homogeneous mixture of residual fuel and charge air during the compression
stroke, thereby avoiding “uncontrolled combustion,” which, according to
Appellants, “obviously is disruptive of desired engine operation.” Spec.,
para. [0027]. Appellants’ Specification describes the pre-injection as
“analogous to a pilot injection or an injection intended to create some form
of alternative diesel combustion,” but as differing from such an injection in
that “it is timed and quantitized to quench incipient combustion of residual
fuel known to be present in the cylinder after the preceding exhaust stroke”
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Para. [0027]. Appellants further disclose that the injection “is timed to
commence substantially when the mixture of air and residual fuel being
compressed would otherwise begin to combust, thereby avoiding
uncontrolled combustion in advance of desired initiation of combustion.”
Id. The only detail provided by Appellants as to how this is accomplished is
that, by way of example, the timing “may commence at about 20o in advance
of TDC for conventional diesel combustion with main injection occurring
substantially at TDC.” Para. [0028]. Appellants’ Specification does not
give any specifics as to the quantities of fuel required to achieve such
quenching.
Appellants have not disputed the Examiner’s finding that Tonetti and
the Zukouski reference alluded to on page 9 of the Answer evidence that it
has been established in the art of multiple fuel injections for a diesel engine
that a pre-injection or pilot injection, injected near the end of the
compression stroke, would immediately burn, generating heat to increase the
pressure and temperature in the cylinder, thereby causing immediate burning
of the main fuel injection at or near the TDC, generating a more uniform
heat release rate. See Ans. 3, 8-9.
We find that Tonetti describes two pre-injections PILOT and PRE.
Fig. 2. The first pre-injection PILOT increases the pressure in the cylinder
at the end of the compression stroke, thus reducing engine start-up time,
reducing engine warm-up noise and smoke levels, and increasing engine
torque. Col. 8, ll. 15-19. The Examiner found that the PILOT pre-injection
increases pressure and temperature in the cylinder by immediately burning
(Ans. 3, 8), and Appellants have not disputed that finding. The second pre-
injection PRE is performed close enough to main injections MAIN1 and
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MAIN2 to participate in actual fuel combustion, reducing ignition lag and
thus combustion noise in the engine. Col. 6, ll. 53-55; col. 8, ll. 9-14. The
Examiner further found that other references have confirmed this advantage
or utility (Ans. 9), and Appellants have not disputed that finding.
Further, we find that Tonetti discloses that the first pre-injection
PILOT and second pre-injection PRE start at an engine cycle ranging
between 60o and 0o in advance of TDC, with the second pre-injection PRE
starting at least 280 μs after first pre-injection PILOT ends. Col. 7, ll. 31-48;
fig. 2. The two main injections MAIN1 and MAIN2 take place at engine
angles between 30o in advance and 10o after TDC. Col. 6, l. 66 to col. 7, l.
9; fig. 2. Therefore, the only exemplary timing disclosed in Appellants’
Specification for the pre-injection for quenching (about 20o in advance of
TDC with main injection occurring substantially at TDC) falls within the
same range of timing as Tonetti’s combustion-inducing pre-injections.
Appellants have not specified any aspect of their pre-injection which differs
from that of Tonetti, which causes/facilitates combustion, rather than
quenching it.
Based on our findings above, the Examiner has presented sufficient
evidence and technical reasoning to establish a reason why a person of
ordinary skill in the art would question whether the claimed fuel injection
during the compression stroke will have the claimed result of quenching any
incipient combustion of a homogeneous mixture of air and residual fuel to
achieve any desired outcome. The undisputed findings of the Examiner with
respect to the well established utility of fuel pre-injections in the art, and the
teachings of Tonetti discussed above, are sufficient to establish a reason why
a person of ordinary skill in the art would question whether the claimed
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result of quenching incipient combustion, rather than promoting or hastening
the inception of combustion, is even attainable at all, much less attainable in
a manner that does not interfere with subsequent main injections or
subsequent cycles so as to disrupt engine operation. Therefore, the
Examiner has provided sufficient evidence to shift the burden to Appellants
to come forth with evidence sufficient to show that such quenching is
attainable by injecting fuel into the cylinder during the compression stroke to
achieve the asserted result.1 Appellants have provided no such evidence,
and thus have not discharged that burden.
We thus sustain the rejection of claims 1-20 under 35 U.S.C. § 101 as
lacking utility.
Further, because the Examiner has provided sufficient evidence to
establish a reason for a person of ordinary skill in the art to question whether
the claimed result of quenching incipient combustion, rather than promoting
or hastening the inception of combustion, is even attainable at all, much less
attainable in a manner that does not interfere with subsequent main
injections or subsequent cycles, and Appellants have not provided any
evidence to show that such quenching is attainable to achieve the asserted
result, we also sustain the rejection of claims 1-20 under 35 U.S.C. § 112,

1 Inasmuch as the asserted result of quenching incipient combustion is
positively set forth in each of independent claims 1, 6, 11, and 16, evidence
showing merely that such pre-injection results in more controlled
combustion and less engine noise, without showing that incipient
combustion is in fact quenched by the pre-injection, would not be sufficient
to satisfy this burden. See Raytheon, 724 F.2d at 956 (while a patent is not
rendered invalid merely “because the patentee has misconceived the
scientific principle of his invention, the error cannot be overlooked when the
misconception is embodied in the claim”).
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first paragraph, as failing to meet the enablement requirement. See
Raytheon, 724 F.2d at 956 (“the impossible cannot be enabled”).
The anticipation rejection
The Issue
In making this rejection, the Examiner reasons that Appellants and
Tonetti obtain the same result, but the process of getting those results is
believed by Appellants to differ from that of the prior art, and states that
[w]ith regard to the limitation of ‘quenching any incipient
combustion of the mixture …’, a product by process claim
which is rejected over a prior art product that appears to be
identical, although produced by a different process, the burden
is upon the applicants to come forward with evidence
establishing an unobvious difference between the two.
Ans. 10. Appellants argue that while Tonetti (col. 8, ll. 3-8) teaches that the
post-injection POST leaves some fuel in the cylinder unburnt, Tonetti does
not teach that there is sufficient fuel left in the cylinder to create a mixture
sufficiently homogeneous to be combusted during the subsequent
compression stroke before introducing any additional fuel. App. Br. 11.
Appellants additionally argue that Tonetti does not teach that either of the
pre-injections quenches unwanted uncontrolled HCCI combustion. App. Br.
11.
Accordingly, the issues presented are (1) whether Tonetti describes
leaving sufficient fuel in the cylinder to create a mixture sufficiently
homogeneous to be combusted during the subsequent compression stroke, as
called for in each of independent claims 1, 6, 11, and 16; and (2) whether
Tonetti describes that either of the pre-injections quenches incipient
combustion of such homogeneous mixture, so as to satisfy the quenching
limitation of each of the independent claims.
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Discussion
Tonetti’s post-injection POST leaves unburned fuel in the cylinder
following the combustion, in the exhaust stroke, which unburned fuel
“reaches the exhaust unchanged” (col. 8, l. 5). Thus, there is no teaching
that any unburnt fuel is left in the cylinder after the cylinder is closed to
exhaust, much less in an amount sufficient to create a homogeneous air-fuel
mixture capable of combusting during a subsequent compression stroke, as
required in claims 1 and 6, or capable of mixing with new fresh air to form
homogeneous air-fuel mixtures that would begin combusting during the
compression stroke, as called for in claims 11 and 16.
Tonetti describes two pre-injections. Fig. 2. The first pre-injection
PILOT increases the pressure in the cylinder, by immediately burning and
generating heat, at the end of the compression stroke, thus reducing engine
start-up time, reducing engine warm-up noise and smoke levels, and
increasing engine torque. Col. 8, ll. 15-19; see also Ans. 3. The second pre-
injection PRE is performed close enough to main injections MAIN1 and
MAIN2 to participate in actual combustion, reducing ignition lag and thus
combustion noise in the engine. Col. 6, ll. 53-55; col. 8, ll. 9-13. Tonetti
does not describe any quenching of combustion in the cylinder by either of
the pre-injections. In fact, quite to the contrary, Tonetti expressly discloses
that the intent of the pre-injections is to hasten the commencement of
combustion, so as to reduce combustion noise in the engine.
As shown by our findings, Tonetti does not describe leaving sufficient
fuel in the cylinder to create a mixture sufficiently homogeneous to be
combusted during the subsequent compression stroke before introducing any
additional fuel, as called for in each of independent claims 1, 6, 11, and 16.
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Tonetti likewise does not describe that either of the pre-injections quenches
incipient combustion of such homogeneous mixture, so as to satisfy the
quenching limitation of each of the independent claims. Thus, Tonetti does
not describe all elements of the independent claims, and thus does not
anticipate the subject matter of these claims. See Karsten Mfg. Corp. v.
Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001) (to establish
anticipation, every element and limitation of the claimed invention must be
found in a single prior art reference, arranged as in the claim).
While the Examiner may very well be correct that Appellants’
invention and Tonetti produce the same ultimate result with their pre-
injections, namely, reduced engine noise, the Examiner improperly
dismisses the residual unburnt fuel and quenching limitations as product-by-
process limitations. None of Appellants’ claims are directed to a product.
Claims 1 and 11 are directed to methods comprising steps of performing a
post-injection while [at times] leaving sufficient fuel in the cylinder to form
homogeneous mixtures with air introduced on the intake stroke capable of
incipient combustion during compression, and quenching such incipient
combustion by performing a pre-injection. Claims 6 and 16 are directed to
compression ignition engines comprising control systems for performing
those steps.
For the above reasons, we reverse the rejection of claims 1-20 as
being anticipated by Tonetti.

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DECISION
We sustain the rejections of claims 1-20 under 35 U.S.C. §§ 101 and
112, first paragraph. We reverse the rejection of claims 1-20 under 35
U.S.C. § 102(b). The Examiner’s decision 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED

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