Ex Parte Specht

Board of Patent Appeals and Interferences

Sep 13, 2010

11085850 (B.P.A.I. Sep. 13, 2010)

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.
11/085,850 03/22/2005 Werner Specht 577-528 CON 2330
45740 7590 09/13/2010
HOFFMANN & BARON, LLP
6900 JERICHO TURNPIKE
SYOSSET, NY 11791
EXAMINER
BASICHAS, ALFRED
ART UNIT PAPER NUMBER
3743
MAIL DATE DELIVERY MODE
09/13/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WERNER SPECHT
____________

Appeal 2009-008723
Application 11/085,850
Technology Center 3700
____________

Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and KEN B.
BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL1

1The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-008723
Application 11/085,850

2
STATEMENT OF THE CASE
Werner Specht (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner's decision rejecting claims 1, 7-9, and 21 under 35 U.S.C.
§ 103(a) as being unpatentable over Weber (US 5,301,654, iss. Apr. 12,
1994), Ensign (US 2,210,069, iss. Aug. 6, 1940), and Swilik (US 5,346,002,
iss. Sep. 13, 1994). We have jurisdiction over this appeal under 35 U.S.C. §
6 (2002).
Claim 1 is illustrative of the claimed invention:
1. A single burner, heat exchanger combination for a fuel-fired
furnace, comprising:
a plurality of spaced heat exchangers, each heat exchanger having an
inlet port for receipt therein of combustion gases;
a single burner for supplying combustion gases to said plurality of
heat exchangers, said burner defining a mixing chamber, said mixing
chamber supporting a venturi tube for supplying an air/gas mixture and a
ribbon tray positioned at a burner face of the mixing chamber for increasing
the velocity of said air/gas mixture passing therethrough, whereby
combustion gases may flow from the burner into each of the inlet ports of
said heat exchangers;
a support frame surrounding said burner face and said inlet ports of
said heat exchanger gas for shielding secondary air;
an igniter supported by said support frame adjacent said burner face
for igniting said air/gas mixture passing through said ribbon tray.

SUMMARY OF DECISION
We AFFIRM.

Appeal 2009-008723
Application 11/085,850

3
OPINION
In relevant part, the Examiner found that Weber describes a plurality
of heat exchangers supplied by a single ribbon burner. Ans. 3. Appellant
argues that Weber only describes "a ribbon-type burner" in the background
section, and that the actual invention by Weber has one burner per heat
exchanger, thus teaching away from a single ribbon burner for a plurality of
heat exchangers. Appeal Br. 7. Appellant argues all claims together as a
group; we select claim 1 as representative, with claims 7-9 and 21 standing
or falling with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2010). Thus, the
determinative issue presented in this appeal is whether Weber describes a
single burner with a plurality of heat exchangers.
Appellant first argues that Weber teaches away from the claimed
invention because Weber describes one burner inducing hot gases into one
primary tube and a plurality of secondary tubes. Reply Br. 2; Appeal Br. 6.
Appellant does not point to any passage in Weber that "criticize[s],
discredit[s] or otherwise discourage[s]" a single ribbon burner supplying a
plurality of heat exchangers. See In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004) (prior art does not teach away from claimed subject matter merely
by disclosing a different solution to a similar problem unless the prior art
also criticizes, discredits or otherwise discourages the solution claimed).
Thus, Weber does not teach away from a single ribbon burner for a plurality
of heat exchangers.
On the other hand, the Examiner found that Weber teaches a single
ribbon burner that introduces hot combustion products into a plurality of
heat exchange units. Ans. 3; Weber, col. 1, ll. 12-20. Appellant argues that
Weber does not describe a single burner. Appeal Br. 7. Appellant is
Appeal 2009-008723
Application 11/085,850

4
apparently arguing that the passage in Weber cited by the Examiner does not
use the word "single," and thus does not describe one burner for multiple
heat exchangers. However, the Examiner's finding is supported by Weber,
which states: "[t]he [heat exchange units] share a ribbon-type burner."
Weber, col. 1, ll. 12-20 (emphasis added). That the heat exchanger units
share a burner clearly indicates that one burner supplies multiple units.
To the extent that Appellant also may be arguing that this teaching is
not the "actual disclosure in Weber" because it is in the background and the
invention in Weber is directed to multiple burners (see Appeal Br. 7), this
line of argument is not persuasive. "The use of patents as references is not
limited to what the patentees describe as their own inventions or to the
problems with which they are concerned. They are part of the literature of
the art, relevant for all they contain." In re Lemelson, 397 F.2d 1006, 1009
(CCPA 1968). Thus, Weber's disclosure of a ribbon burner shared by a
plurality of heat exchangers cannot be ignored just because the remainder of
Weber is directed to a different configuration. Therefore, we are not
persuaded that the Examiner erred in finding that Weber teaches a burner
shared by multiple heat exchangers.
Appellant does not challenge the Examiner's particular rationale for
combining and modifying the references as proposed, nor does Appellant
challenge the Examiner's findings regarding any other claim. Thus, we are
not persuaded that the Examiner erred in concluding that the disclosures of
Weber, Ensign, and Swilik, combined as proposed by the Examiner, render
obvious the device of claim 1. Claims 7-9 and 21 fall with claim 1.
Appeal 2009-008723
Application 11/085,850

5
DECISION
We affirm the Examiner's decision. 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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HOFFMANN & BARON, LLP
6900 JERICHO TURNPIKE
SYOSSET, NY 11791