Ex Parte Spagnuolo

Patent Trial and Appeal Board

May 9, 2016

12623665 (P.T.A.B. May. 9, 2016)

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.
12/623,665 11/23/2009 Joseph G. Spagnuolo HOLIP0101USA 6812
7590 05/10/2016
Joseph G. Spagnuolo
2643 Jackie Lane
Westlake, OH 44145
EXAMINER
WAN, DEMING
ART UNIT PAPER NUMBER
3748
MAIL DATE DELIVERY MODE
05/10/2016 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 JOSEPH G. SPAGNUOLO
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Appeal 2014-005186
Application 12/623,6651
Technology Center 3700
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Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and
BRADLEY B. BAYAT, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1–3 and 5–20.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 According to Appellant, the real party in interest is Holistic Engineering
Inc. Appeal. Br. 2.
2 Independent claim 4 is not rejected under the cited prior art of record, and
therefore not before us on appeal.
Appeal 2014-005186
Application 12/623,665

2
BACKGROUND
According to Appellant, the Specification describes an energy-
recovery system, “which recovers a significant amount of energy in flue gas
upstream of [a] wet scrubber.” Spec. 1.
CLAIMS
Claim 1, the sole independent claim on appeal, is illustrative of the
appealed claims and recites:
1. A production plant, comprising:
a primary-process system including a furnace which
combusts fuel to further production of electrical power by
heating water/steam in a primary-process fluid line which
conveys the water/steam through a closed turbine cycle operably
connected to a main generator, a stack through which flue gas
exits the production plant, an exhaust line extending from the
furnace to the stack, and a scrubber which introduces water into
the exhaust line; and
an energy-recovery system including an energy-recovery
fluid line for conveying a medium and a heat exchanger placing
the energy-recovery fluid line in heat-transfer relationship with
the exhaust line downstream of the scrubber.
Appeal Br. 12.
REJECTIONS3
1. The Examiner rejects claims 1, 2, 3, 5, 6, 8, 10, and 20 under
35 U.S.C. § 102(b) as anticipated by Oshita.4
2. Alternatively, the Examiner rejects claims 3 and 5 under 35 U.S.C.
§ 103(a) as unpatentable over Oshita.

3 The rejection of claim 4 under 35 U.S.C § 112, first paragraph has been
withdrawn. See Ans. 2.
4 Oshita et al., US Patent 6,032,467, iss. Mar. 7, 2000.
Appeal 2014-005186
Application 12/623,665

3
3. The Examiner rejects claims 7, 9, 11, and 16–19 under 35 U.S.C.
§ 103(a) as unpatentable over Oshita in view of Watanabe.5
4. The Examiner rejects claims 12–14 under 35 U.S.C. § 103(a) as
unpatentable over Oshita in view of Meratla.6
5. The Examiner rejects claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Oshita in view of Meratla and Watanabe.
DISCUSSION
Anticipation
We agree with Appellant that the Examiner has not set forth a prima
facie showing of anticipation. Appellant and the Examiner disagree as to the
appropriate scope of claim 1 and, in particular, how much weight should be
given to the limitation, “a furnace which combusts fuel to further production
of electrical power by heating water/steam in a primary-process fluid line
which conveys the water/steam through a closed turbine cycle operably
connected to a main generator.” The Examiner finds that the claim requires
a furnace but the remaining portion of this limitation “is a functional
recitation which describes the intended function of the furnace and the
environment with which it is intended to interact.” Ans. 4. Thus, the
Examiner appears to give no weight to this claim language. Appellant
argues that these are structural limitations, and thus, the claim requires a
primary-process fluid line, a closed turbine cycle, and main generator along
with a furnace. See Reply Br. 5–6.

5 Watanaba et al., US Patent 6,938,417 B2, iss. Sept. 6, 2005.
6 Meratla, US Patent 5,467,722, iss. Nov. 21, 1995.
Appeal 2014-005186
Application 12/623,665

4
We find that claim 1 requires, at a minimum, a furnace with the
capability of combusting fuel in order to produce electrical power by heating
water or steam in a primary-process fluid line connected to a closed turbine
cycle and main generator. However, in rejecting claim 1, the Examiner finds
only that Oshita has a furnace and does not explain how Oshita’s furnace has
the capabilities required by the claim. See Final Action 3. Because the
Examiner appears to give the disputed limitation no weight and subsequently
fails to explain how Oshita has the capability required by the claim, we find
that the Examiner has not met the burden of establishing anticipation of
claim 1. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he
examiner bears the initial burden, on review of the prior art or on any other
ground, of presenting a prima facie case of unpatentability.”); see also In re
King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (“[A]nticipation of a claim
under § 102 can be found only if the prior art reference discloses every
element of the claim.”)
Based on the foregoing, we do not sustain the rejection of claim 1.
For the same reasons, we also do not sustain the rejection of dependent
claims 2, 3, 5, 6, 8, 10, and 20.
Obviousness
Each of claims 3, 5, 7, 9, and 11–19 ultimately depends from claim 1.
The Examiner has not shown how the art of record used to support the
obviousness rejections cures the deficiency found in the rejection of claim 1.
Accordingly, we do not sustain these rejections for the same reason we do
not sustain the rejection of claim 1.
Appeal 2014-005186
Application 12/623,665

5
CONCLUSION
For the reasons set forth above, we reverse the rejections of
claims 1–3 and 5–20.

REVERSED