Ex Parte Tonev et al

Board of Patent Appeals and Interferences

Jun 12, 2012

11213479 (B.P.A.I. Jun. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TIHOMIR G. TONEV, MARK KAISER,
and GARY SEMINARA
____________

Appeal 2011-006444
Application 11/213,479
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims 1, 3-5, 7-9,
12-14, 16, 17, 19-21, 25, and 26 directed to a propellant reaction ignition
system. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
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THE INVENTION
Claim 1 is illustrative of the subject matter on appeal:
1. A propellant reaction ignition system, comprising:

a reaction chamber adapted to receive a hydroxylammonium
nitrate-based liquid propellant;

a non-heated catalytic bed disposed within said reaction
chamber, said catalytic bed being non-electrically conductive and
having a first portion and a second portion;

a first electrode secured within said first portion of said
catalytic bed;

a second electrode having an opposite polarity from said first
electrode, said second electrode secured to said second portion of said
catalytic bed and disposed away from said first electrode; and

a charge source electrically coupled to said first electrode and
said second electrode, said charge source configured to supply a
voltage potential of between 10 to about 30 volts across the first
electrode and the second electrode to thereby cause electric current to
flow therebetween,

wherein:

said electric current only flows between said first
electrode and said second electrode when said liquid propellant
contacts said first electrode and said second electrode, and

said electric current, when flowing between said first
electrode and said second electrode, causes instantaneous
decomposition of said liquid propellant into decomposition
products, thereby causing combustion of said liquid propellant
decomposition products in said catalytic bed.

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Application 11/213,479

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THE PRIOR ART
The Examiner relies upon the following references in the rejection
(Ans. 3):1
Breen 3,641,644 Mar. 1972
Ellion 4,069,664 Jan. 24, 1978
Schmidt 5,485,722 Jan. 23, 1996
Voecks 5,608,179 Mar. 4, 1997
Garcia 5,836,150 Nov. 17, 1998
Berg 6,931,832 B2 Aug. 23, 2005

THE REJECTIONS
Claims 1, 3-5, 7-9, 12-14, 16, 17, 19-21, 25, and 26 are pending in the
application. Claims 2, 6, 10, 11, 15, 18, and 22-24 are canceled. The
Appellants seek review of the following rejections:
1. Claims 1, 3-5, 7-9, 12-14, 16, 17, 19-21, 25, and 26 stand rejected for
failure to comply with the written description requirement of 35
U.S.C. § 112, first paragraph.2
2. Claims 1, 4, 5, 7, 14, 16, and 17 stand rejected under 35 U.S.C.
§ 103(a) over Voecks.
3. Claims 3 and 12 stand rejected under 35 U.S.C. § 103(a) over Voecks
and Garcia.
4. Claims 8, 9, 13, and 26 stand rejected under 35 U.S.C. § 103(a) over
Voecks in view of Ellion and Schmidt.

1 Our analysis makes reference to the Examiner’s Answer mailed December
20, 2010 (“Ans.”), the Appeal Brief filed October 27, 2010 (“App. Br.”), and
the Reply Brief (“Reply Br.”) filed February 21, 2011.
2 The Examiner in the Answer withdraws a rejection applicable to each
pending claim regarding the limitation of “a non-heated catalytic bed” for
failure to comply with the written description requirement of § 112, first
paragraph. Ans. 3, 15.
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5. Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) over
Voecks and Berg.
6. Claims 21 and 25 stand rejected under 35 U.S.C. § 103(a) over
Voecks and Breen.

ANALYSIS
This appeal raises several issues that are common to each pending
claim. Each claim stands rejected under § 112, first paragraph, on the
grounds that two limitations are not supported by the written description: A
“non-electrically conductive” catalytic bed; and an “electric current” that
“only flows between said first electrode and said second electrode when said
liquid propellant contacts said first electrode and said second electrode.”
Ans. 4, 15; claim 1; see claims 16 and 21 (the only other independent claims,
specifying the current flow limitation in similar terms).
The Examiner observes that these are “newly added limitations” and,
without further elaboration, finds that “[t]he claim(s) contains subject matter
which was not described in the specification in such a way as to reasonably
convey to one skilled in the relevant art that the inventor(s), at the time the
application was filed, had possession of the claimed invention.” Ans. 4.
The Examiner also finds that the current flow limitation “is a manner of
operating the device which is not supported by the instant specification.” Id.
The Appellants counter that the “non-electrically conductive”
catalytic bed and the current flow limitation “go hand-in-hand” and are
disclosed in the written description as follows:
In operation, once the reaction chamber 20, non-catalytic bed
20, or catalytic bed 20 is dosed with the liquid propellant, such as
HAN 15, the liquid propellant, such as HAN 15 may contact the first
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electrode 25 and the second electrode 30, which may then ignite the
HAN 15, providing power via the exhaust 55.

App. Br. 12 (quoting Spec. 11:2-6) (emphasis in original).

Therefore an electric charge may be passed through a reaction
chamber 20, non-catalytic bed 20, or catalytic bed 20 when dosed with
HAN 15, via the electrodes 25, 30. Ignition may occur
instantaneously, decomposing the HAN 15. The reaction may be
NH3OH·N03 → NOx + H2O, or NH2OH·HNO3 → NOx + H2O.

Id. (quoting Spec. 11:12-16) (emphasis in original).

The liquid propellant solution 15, such as HAN 15 acts as a
conduit to complete a circuit between the first electrode 25 and the
second electrode 30. The HAN may also create resistance between
the electrodes 25, 30. Differences in composition of the HAN 15 may
create differences in the resistance that it creates. The quantity and
rate of injection may change resistance of the fluid and thus may
affect the current draw of the system.

Id. (quoting Spec. 11:4-9) (emphasis in original).
The Examiner responds that the Appellants’ citation to the disclosure
“that an electric charge may be passed through a reaction chamber 20, non-
catalytic bed, or catalytic bed 20 . . . provides further support that the
catalytic bed is electrically conductive.” Ans. 15 (citing App. Br. 12). The
Appellants note that the Examiner “fails to quote the complete sentence,
which states, ‘an electric charge may be passed through a reaction chamber
20, non-catalytic bed 20, or catalytic bed 20 when dosed with HAN 15,”
which is the propellant. Reply Br. 3 (emphasis in original). The Appellants
thus contend that the disclosure “indicates that the catalytic bed is non-
electrically conductive. If it were electrically conductive, the charge would
pass whether or not it were dosed with HAN 15.” Id.
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The Appellants further argue that, “just because the claims are
narrowed to embodiments that do not include conductive catalytic beds, does
not foreclose the fact that non-catalytic beds are also disclosed.” App. Br.
13. Indeed, the written description discloses that “the reaction chamber may
have inert properties such as a non-catalytic bed. The non-catalytic bed may
be an inert material . . . and may be comprised of materials such as quartz or
an alumina.” Spec. 7:2-5. The Examiner points out, albeit in a different
context, that alumina is a “non-electrically conductive” material. Ans. 7.
On this record, we thus agree with the Appellants that the written description
supports the “non-electrically conductive” catalyst bed limitation.
With respect to the current flow limitation, the Appellants provide
relevant citations to the written description and a clear explanation of how
the disclosure supports the limitation. App. Br. 12-14. Other than quoting
the partial sentence discussed above, see supra, the Examiner does not
address the disclosure upon which the Appellants rely or otherwise meet the
Appellants’ argument regarding the current flow limitation. Ans. 15. On
this record, the Examiner fails to establish that the current flow limitation “is
not supported by the instant specification as originally filed.” Id. at 4.
Regarding the rejections under § 103(a), each of the pending
independent claims requires, inter alia, a charge source that is configured to
supply a low voltage potential of between about 10 to about 30 volts. Claim
1 (specifying a “charge source configured to supply a voltage potential of
between 10 to about 30 volts”); claim 16 (specifying “a low voltage charge
source configured to supply a voltage potential of between 10 volts and
about 30 volts”); claim 21 (specifying a “low voltage charge source
configured to supply current at a voltage potential of about 20 volts”). The
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Examiner relies on Voecks’ disclosure of “a DC power source or battery 40
(i.e. a charge source).” Ans. 6. The Examiner further finds that “‘supplying
a required voltage’ is considered [a] manner of operating the device” that
“does not differentiate [the] apparatus claim from the prior art if the prior art
apparatus teaches all the structural limitation [sic] of the claim.” Id. at 15;
see id. at 7, 9, 14 (citing MPEP 2114); see id. at 16, 17; but see Reply Br. 4
(observing that the claims do not specify “supplying a required voltage” as
stated by the Examiner, Ans. 15, but require a “source” that “is ‘configured
to supply’” a specified low voltage potential) (emphasis omitted).
Although it is well established that claims directed to an apparatus
must be distinguished from the prior art in terms of structure rather than
function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997),
in order to satisfy functional limitations in an apparatus claim the prior art
apparatus must be shown to be capable of performing the claimed function.
Id. at 1478. Critically absent here is any finding that Voecks, or any other
prior art reference, discloses the prior art DC power source or battery as a
charge source that is or can be configured to supply the low voltage potential
specified in the pending claims. Claims 1, 16, 21. Nor has the Examiner
offered any reasoning that establishes the obviousness of the limitation in
question.
The Examiner, moreover, provides no supported reason why an
ordinary artisan would have been motivated to configure the apparatus of
Voecks to function as specified in the pending claims. For example, the
Examiner notes that in Voecks, an “appropriate catalyst may be selected to
initiate combustion at different temperatures” and, on that basis, finds that it
would have been “within [the] ordinary skill in the art” to omit the heating
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substrate altogether from Voecks’ apparatus. Ans. 16 (citing Voecks at
4:13-17). The Examiner, however, fails to articulate any reason why, or
provide any supported finding that, an ordinary artisan would have been
motivated to omit the heating substrate from the apparatus of Voecks, which
relates to a “heated catalyst” and a “heater [that] heats the catalyst
sufficiently to provide the activation necessary to initiate combustion of the
liquid propellant sprayed thereonto.” Voecks (abstract); Ans. 15-16; see
Reply Br. 4; see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (obviousness
rejections “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”).
On this record, we thus agree with the Appellants that the Examiner
fails as a matter of fact to make out a prima facie case of obviousness of the
pending claims under § 103(a).
For the above reasons, the rejections of claims 1, 3-5, 7-9, 12-14, 16,
17, 19-21, 25, and 26 cannot be sustained.

REVERSED

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