Ex Parte Taucher

Patent Trial and Appeal Board

Feb 21, 2019

13919101 (P.T.A.B. Feb. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/919,101 06/17/2013
20995 7590 02/25/2019
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Scott E. Taucher
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CFT.OOlCl 3810
EXAMINER
MCMAHON, MARGUERITE J
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
02/25/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT E. TAU CHER
Appeal2017-001973
Application 13/919,101
Technology Center 3700
Before PHILIP J. HOFFMANN, BRADLEY B. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-20, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b). 3 We AFFIRM.
1 Throughout this decision, we refer to the Appellant's Appeal Brief ("Br.,"
filed Mar. 24, 2016, as amended July 15, 2016) and Specification ("Spec.,"
filed June 17, 2013), and to the Examiner's Answer ("Ans.," mailed
Sept. 21, 2016) and Final Office Action ("Final Act.," mailed Feb. 26,
2015).
2 According to the Appellant, the real party of interest is "CATALYZED
FUEL TECHNOLOGIES, L.L.C." Br. 3.
3 We note that the Appellant waived the oral hearing. See Waiver of
Hearing, Jan. 8, 2019.
Appeal2017-001973
Application 13/919, 101
STATEMENT OF THE CASE
The Appellant's invention relates generally to "the field of fossil-fuel
refinement for increased efficiency" and particularly to "a coolant-to-
catalyst fuel modification system making more power from gasoline- and
diesel-powered engines on the combustion stroke." Spec. 1.4
Claims 1, 14, and 20 are the independent claims on appeal. Claim 1
(Claims App.) is illustrative of the subject matter on appeal and is
reproduced below:
1. An apparatus for pre-combustion treatment of fossil
fuel comprising:
an elongated pipe having a first end and a second end;
an elongated tube having a first end for inflow of engine
coolant and a second end for outflow of said engine coolant, the
elongated tube disposed within the elongated pipe, the first and
second ends of the tube extending outwardly from respective
first and second ends of the pipe, the first and second ends of
the pipe being impermeably connected to respective first and
second ends of the elongated tube forming a chamber between
the outer surface of the elongated tube and inner surface of the
elongated pipe, the elongated pipe further including a first fuel-
line connector for inflow of fossil fuel and a second fuel-line
connector for outflow of fossil fuel from the chamber;
at least one catalytic element made of metal selected
from the group consisting of: Au, Cu, Ir, Ni, Pd, Pt, Zn, and
platiniridium, the catalytic element disposed within the
chamber in such that fossil fuel flows through the at least one
catalytic element; and
a grounding stud.
4 We note that the pages of the Specification are not numbered. We
consider the page with "COOLANT-TO-CATALYST FUEL
MODIFICATION METHOD AND APPARATUS" to be page 1, with the
remaining pages sequentially numbered thereafter.
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Appeal2017-001973
Application 13/919, 101
REJECTIONS
Claims 1, 3, 8-10, and 14--20 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Dunnam (US 4,091,782, iss. May 30,
1978), Butt (US 6,024,073, iss. Feb. 15, 2000), and Reinhard et al.
(US 4,454,841, iss. June 19, 1984) ("Reinhard").
Claims 2, 4, 5, 7, and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dunnam, Butt, Reinhard, and Ratner et al.
(US 6,915,789 B2, iss. July 12, 2005) ("Ratner").
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dunnam, Butt, Reinhard, and Hicks, Jr. et al
(US 4,121,543, iss. Oct. 24, 1978) ("Hicks").
Claims 11 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dunnam, Butt, Reinhard, Ratner, and Youngberg
(US 3,963,408, June 15, 1976).
Claims 1-20 stand rejected on the doctrine of nonstatutory double
patenting over claims 1-13 of Taucher (US 8,474,440 B2, iss. July 2, 2013)
in view of Butt.
ANALYSIS
Obviousness
Claims 1, 3, 8-10, and 14-20
The Appellant argues claims 1, 3, 8-10, and 14--20 as a group.
Br. 7, 9. We select claim 1 from the group with the remaining claims
standing or falling therewith. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Appellant contends that the Examiner's rejection is in error
because "there is no expectation that the array 46 of rectangular magnets
disclosed by Butt would work in the device of Dunnam[,] and ... the
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Appeal2017-001973
Application 13/919, 101
modification would change the principle of operation of the prior art
[Dunnam] invention being modified." Br. 8. After a careful review of the
argument presented in the Appeal Brief, we are not persuaded of Examiner
error.
The Appellant's argument is premised on the understanding that the
Examiner relies on Butt for teaching the claimed catalyst. See Br. 7 ("The
Final Office Action essentially argues that it would have been obvious to
employ the magnets 40, 48 and catalyst of Butt within the device disclosed
in Dunnam."). However, as the Examiner states, the Examiner relies on Butt
for teaching the grounding stud (Final Act. 3) and for teaching "the use of
magnets 40, 48 employed in proximity to a catalyst, in order to increase the
effectiveness of the catalytic action on the fuel" (Ans. 10). The Examiner
relies on Reinhard for the catalytic element of metal selected from the group
and disposed within the chamber as claimed. See Final Act. 4; Ans. 10.
Thus, the Appellant's argument is unpersuasive as being not responsive to
the rejection at issue.
To whatever extent the Appellant argues error based on the
inoperability of a combination the Examiner did not propose, we are
unpersuaded of error. See Br. 8. "The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference. . . . Rather, the test is what the combined
teachings of those references would have suggested to those of ordinary skill
in the art." In re Keller, 642 F.2d 413,425 (CCPA 1981). The Examiner
makes clear that the rejection is not based on the incorporation of Butt's
specific arrangement of magnets or their flux lines. Ans. 11. Rather, the
rejection uses Butt "merely to show that employing magnets in combination
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Appeal2017-001973
Application 13/919, 101
with catalysts has a beneficial effect, i.e. to increase the effectiveness of the
catalytic action on the fuel." Id. The Appellant does not provide adequate
evidence or technical reasoning that the proposed modification would have
been beyond the capabilities of one of ordinary skill in the art.
Thus, we are not persuaded of error in the Examiner's rejection under
35 U.S.C. § 103 of claim 1, and of claims 3, 8-10, and 14--20, which fall
with claim 1.
Claims 2, 4-7, and 11-13
The Appellant contends that the Examiner's rejections of dependent
claims 2, 4--7, and 11-13 are in error because the further cited prior art-
Ratner, Hicks, and Youngberg - do not cure the deficiencies of rejection of
claims 1. See Br. 9-10. Because we are not persuaded of any deficiencies
in the rejection of claim 1, we are also not persuaded of error in the
Examiner's rejections under 35 U.S.C. § 103 of claims 2, 4--7, and 11-13.
Double Patenting
The Appellant does not present any argument against this rejection but
states that the Appellant "requests that the double patenting rejections be
held in abeyance until the application is otherwise indicated as being in
condition for allowance." Br. 10.
Because the Appellant provides no argument against the double
patenting rejection, we summarily affirm.
DECISION
The Examiner's rejections of claims 1-20 under pre-AIA 35 U.S.C.
§ 103(a) are AFFIRMED.
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Appeal2017-001973
Application 13/919, 101
The Examiner's rejection of claims 1-20 under the doctrine of
nonstatutory double patenting 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)(l )(iv).
AFFIRMED
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