Ex Parte Rising

Patent Trial and Appeal Board

May 10, 2013

11454698 (P.T.A.B. May. 10, 2013)

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.
11/454,698 06/16/2006 Bruce W. Rising 2006P01105US 7691
7590 05/10/2013
Siemens Corporation
Intellectual Property Department
170 Wood Avenue South
Iselin, NJ 08830
EXAMINER
NGUYEN, ANDREW H
ART UNIT PAPER NUMBER
3741
MAIL DATE DELIVERY MODE
05/10/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte BRUCE W. RISING
____________________
Appeal 2011-004696
Application 11/454,698
Technology Center 3700
____________________
Before PHILLIP J. KAUFFMAN, BRETT C. MARTIN, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.
WEATHERLY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Bruce W. Rising (“Appellant”) appeals under 35 U.S.C. § 134 from
the decision of the Examiner rejecting claims 1-20. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
Appeal 2011-004696
Application 11/454,698
2
The claims relate to combustion apparatus and methods using a pilot
fuel selected for reduced emissions. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of combusting fuel, the method
comprising:
premixing a primary fuel with air in a premixing
stage to produce an air/fuel premix;
burning the air/fuel premix in a primary
combustion zone of a combustor;
diffusing a second fuel into a pilot combustion
zone of the combustor, wherein the second fuel is a fuel
different from the primary fuel and is selected to produce
a lower emission in a diffusion burn than would be
achieved in a diffusion burn of the primary fuel in the
pilot combustion zone; and
burning the diffused second fuel in the pilot
combustion zone simultaneously with the burning of the
air/fuel premix in the primary combustion zone.
REFERENCES
The Examiner relies upon the following evidence:
Jeroszko
Rajput
Henderson
Hums
Chung
Staroselsky
Olsvik
US 3,973,390
US 5,404,711
US 5,752,489
US 5,946,917
US 6,422,858 B1
US 7,041,154 B2
US 7,168,488 B2
Aug. 10, 1976
Apr. 11, 1995
May 19, 1998
Sep. 7, 1999
Jul. 23, 2002
May 9, 2006
Jan. 30, 2007
Noboru JP 2004225546 Aug. 12, 2004
REJECTIONS
Appellant seeks our review of the following rejections:
1. Claims 1, 10, 11, and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rajput and Henderson. Ans. 4-5.
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Application 11/454,698
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2. Claims 2 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rajput, Henderson, and Chung. Ans. 5-6.
3. Claims 3 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rajput, Henderson, Staroselsky, and Jeroszko.
Ans. 6.
4. Claims 4, 6-9, 13, 14, 16-18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Rajput, Henderson, Staroselsky,
Jeroszko, Olsvik, Noboru, and Hums. Ans. 7-8.
5. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rajput, Henderson, Staroselsky, Jeroszko, Olsvik,
Noboru, Hums, and Chung. Ans. 8-9.
OPINION
Obviousness of claims 1, 10, 11, and 15 over Rajput and Henderson
1. Claims 1 and 10
Appellant contends that Rajput fails to describe a method in which a
second fuel is combusted using a diffusion burn. App. Br. 6. Appellant
argues that, by contrast, Rajput prevents the pilot fuel from combusting in “a
diffusion burn by ‘violently’ mixing the pilot fuel with air.” Id.
The Examiner recognizes that a “‘diffusion burn’ carries a special
meaning in the art.” Ans. 10. However, the Examiner determines that the
recitation of “diffusing a second fuel into a pilot combustion zone” does not
limit claim 1 to combusting the second (pilot) fuel in a diffusion burn. Id. at
10-11. According to the Examiner, claim 1 merely requires diffusing the
second (pilot) fuel in a generic sense. Id. The Examiner finds that Rajput
diffuses, in this generic sense, a pilot fuel because “the pilot fuel ‘pours out’
of the injector and spreads freely.” Id. 11.
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Appellant responds that claim 1 requires combusting the second fuel
via a diffusion burn, relying on the following language in claim 1:
“‘diffusing a second fuel into a pilot combustion zone ...’
The second fuel is selected for ‘lower emission in a diffusion burn ...’
‘burning the diffused second fuel in the pilot combustion zone ...’”
Reply Br. 2. The Specification supports Appellant’s interpretation of claim
1 by explaining, for example, that the invention relates to “dry low NOx
combustor designs … with a diffusion pilot flame” (Spec., 1:5-6) and that
the “second fuel type is different than the primary fuel 30 and is selected to
provide a stable diffusion flame.” (Spec., 3: 3-4); see also App. Br. 3
(identifiying this portion of the Specification as the claimed subject matter).
Our own review of the Specification reveals no description of a method in
which the second fuel is not combusted via a diffusion burn. We therefore
conclude that claim 1 requires combusting the second fuel using a diffusion
burn. Because the Examiner makes no finding that the combination of
Rajput or Henderson describes combusting the second fuel using a diffusion
burn, we reverse the rejection under § 103(a) of independent claim 1 and its
dependent claim 10.
2. Claims 11 and 15
Independent claim 11 recites a combustion apparatus that is
significantly different in scope from the method of combusting fuel recited
in independent claim 1. However, the Examiner addresses the subject matter
of the method of claim 1 and never expressly identifies how the combination
of Rajput and Henderson teaches each element of the apparatus of claim 11.
See Ans. 4-5. For example, the Examiner fails to identify any teaching in
Rajput or Henderson of using a “pilot fuel oxygenate” as recited in claim 11.
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For at least this reason, we conclude that the Examiner has not ascertained
the differences between the prior art and claim 11 as required under Graham
v. John Deere Co. of Kansas City, 38 U.S. 1, 17-18 (1966). Moreover,
“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “To facilitate review, this
analysis should be made explicit.” KSR Int’l v. Teleflex Inc., 550 U.S. 398,
418 (2007) (citing Kahn, 441 F.3d at 988).
Appellant contends that the Examiner has erred in rejecting claim 11
by broadly interpreting “fuel oxygenate” to encompass fuels into which
oxygen has dissolved rather than fuels that include oxygen as an element of
their chemical structure. App. Br. 5. Appellant argues that the Specification
defines by example “fuel oxygenate” to refer to a chemical compound that
includes oxygen as part of its chemical structure. Id. (citing Spec. 2:15-16,
3: 14-15). Appellant also contends that a skilled artisan understands “fuel
oxygenate” in the same manner. App. Br. 5 (citing Wikipedia).
The Examiner finds that “oxygenated fuel” has two well-known
meanings in the art, including liquid fuel into which oxygen has dissolved.
Ans. 9 (citing US 6,315,815 B1; iss. Nov. 13, 2001, to Spadaccini, 5:37-47).
Appellant responds arguing that Spadaccini never explicitly defines
“oxygenated fuel.” Reply Br. 2. Based on our own review of Spadaccini,
we agree with Appellant. Spadaccini describes an apparatus for removing
dissolved oxygen from liquid fuels without ever characterizing such fuels as
being a “fuel oxygenate.” See, e.g., Spadaccini, col. 1, ll. 9-16, col. 2, ll. 19-
22, col. 5, ll. 37-47.
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For the reasons expressed above, we conclude that the Examiner has
not established by a preponderance of evidence that the combination of
Rajput and Henderson teaches every element of the subject matter of claim
11. We therefore reverse the rejection of independent claim 11 and its
dependent claim 15.
Obviousness of claims 2 and 12 over Rajput, Henderson, and Chung
Claim 2 depends upon claim 1, and claim 12 depends upon claim 11.
The Examiner relies upon Chung to teach that “the second fuel is selected to
have a lower diffusion burning temperature than the primary fuel.” Ans. 5.
However, Chung does not cure the deficiencies in the rejection of claims 1
and 11 that we describe above. Therefore, we reverse the rejection of claims
2 and 12 under § 103(a).
Obviousness of claims 3 and 5 over
Rajput, Henderson, Staroselsky, and Jeroszko
Claims 3 and 5 depend upon claim 1. Neither Staroselsky nor
Jeroszko cures the deficiencies in the rejection of claim 1 that we describe
above. Therefore, we reverse the rejection of claims 3 and 5 under § 103(a).
Obviousness of claims 4, 6-9, 13, 14, 16-18, and 20 over
Rajput, Henderson, Staroselsky, Jeroszko, Olsvik, Noboru, and Hums
1. Claims 4 and 6-9
Claims 4 and 6-9 depend upon claim 1. None of Staroselsky,
Jeroszko, Olsvik, Noboru, and Hums cures the deficiencies in the rejection
of claim 1 that we describe above. Therefore, we reverse the rejection of
claims 4 and 6-9 under § 103(a).
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2. Claims 13 and 14
Claims 13 and 14 depend upon claim 11. None of Staroselsky,
Jeroszko, Olsvik, Noboru, and Hums cures the deficiencies in the rejection
of claim 11 that we describe above. Therefore, we reverse the rejection of
claims 13 and 14 under § 103(a).
3. Claims 16-18 and 20
Claim 16 is an independent claim and recites a combustion apparatus
in terms that vary significantly from those recited in claim 1 as a method of
combusting fuel. Nonetheless, the Examiner’s rejection applies the
teachings of Rajput, Henderson, Staroselsky, and Jeroszko “as applied to
claim 3” (a method claim that depends upon claim 1) and further relies upon
Olsvik, Noboru, and Hums for teachings not related to subject matter recited
in claim 16. Ans. 7. Thus, the Examiner’s rejection of claim 16 is
ultimately based on rationale and findings made with respect to claim 1.
Because of the differences in scope between claims 1 and 16, we conclude
that the Examiner has failed to ascertain the differences between the prior art
and claim 16 as required under Graham v. John Deere Co. of Kansas City,
38 U.S. 1, 17-18 (1966).
Claim 16 recites “a pilot fuel element in fluid communication with a
diffusion nozzle for delivering a pilot fuel diffusion into fuel pilot
combustion zone.” We conclude that claim 16 is thus limited to apparatus
that deliver pilot fuel into the pilot combustion zone for a diffusion burn.
Appellant has argued that Rajput does not describe an apparatus that delivers
a pilot fuel diffusion into the pilot fuel combustion zone for a diffusion burn.
App. Br. 5-6. We agree with Appellant for the reasons expressed above in
our discussion of the rejection of claim 1. The Examiner makes no finding
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that the combination of Rajput or Henderson describes an apparatus that
delivers a pilot fuel diffusion into the pilot combustion zone for a diffusion
burn. We therefore, reverse the rejection under § 103(a) of independent
claim 16 and its respective dependent claims 17, 18, and 20.
Obviousness of claim 19 over Rajput, Henderson,
Staroselsky, Jeroszko, Olsvik, Noboru, Hums, and Chung
Claim 19 depends upon claim 16 and recites that the reformer
produces “a pilot fuel oxygenate.” The Examiner relies upon Chung to teach
that “the second fuel is selected to have a lower diffusion burning
temperature than the primary fuel.” Ans. 8. However, Chung does not cure
the deficiencies in the rejection of claim 16 that we describe above.
Appellant argues that none of the references of record describe the use of a
fuel oxygenate as a pilot fuel. App. Br. 5. We agree for the reasons
expressed above in connection with claim 11. Therefore, we reverse the
rejection of claim 19 under § 103(a).
DECISION
For the reasons stated above, we reverse the rejections of claims 1-20.
REVERSED

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