Ex Parte Tozzi et al

Patent Trial and Appeal Board

Jun 28, 2018

14020770 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/020,770 09/06/2013
68368 7590 07/02/2018
Barcelo, Harrison & Walker, LLP
2901 W. Coast Hwy
Suite 200
Newport Beach, CA 92663
FIRST NAMED INVENTOR
Luigi P. Tozzi
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.
PR0-0002-P 5922
EXAMINER
GIMIE, MAHMOUD
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
rey@bhiplaw.com
josh@bhiplaw.com
dwalker@bhiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte LUIGI P. TOZZI,
MARIA EMMANUELLA SOTIROPOULOU, and
DAVID THOMAS LEPLEY1
Appeal2017-005703
Application 14/020, 770
Technology Center 3700
Before MICHELLE R. OSINSKI, JILL D. HILL, and
NATHAN A. ENGELS, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1--47, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Prometheus Applied Technologies, LLC ("Appellant") is the Applicant as
provided in 37 C.F.R. § 1.46, and is identified as the real party in interest.
Appeal Br. 2.
Appeal2017-005703
Application 14/020, 770
THE CLAIMED SUBJECT MATTER
Claims 1, 11, 21, 31, 41, and 43 are independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter on appeal.
l. A two-stage precombustion chamber comprising:
a first prechamber stage enclosing a first prechamber
volume, the first prechamber stage comprising:
one or more first stage holes communicatimr
~- ~~
between the first prechamber volume and a second
prechamber volume;
a primary electrode disposed within the first
prechamber volume; and
one or more ground electrodes disposed within the
first prechamber volume and offset from the primary
electrode to form one or more electrode gaps; and
a second prechamber stage enclosing the second
prechamber volume, the second prechamber stage comprising:
one or more second stage hoks communicating
~ 0
between the second prechamber volume and a combustion
chamber volume.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Genslak
Crane
us 4,124,000
us 5,222,993
THE REJECTIONS 2
Nov. 7, 1978
June 29, 1993
I. Claims 1-7, 9-17, 19-24, 26-34, and 36-40 stand rejected under
35 U.S.C. § 102(b) as anticipated by Crane. Final Act. 3-10.
2 The rejection of claims 1-7, 9-17, 19-24, 26-34, and 36-40 under 35
U.S.C. § 102(b) as anticipated by Genslak (Final Act. 3) has been withdrawn
and is not before us on appeal (Ans. 12).
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Application 14/020, 770
II. Claims 8, 18, 25, and 35 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Crane. Id. at 12-13.
III. Claims 41--47 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Genslak. Id. at 10-11.
OPINION
Rejection I
Claims 1, 11, 21, and 31
Appellant argues independent claims 1, 11, 21, and 31 as a group.
Appeal Br. 8. We select claim 1 as the representative claim, and claims 11,
21, and 31 stand or fall therewith. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Crane discloses all of the limitations of
independent claim 1. Final Act. 4. In particular, the Examiner points to
Crane's second precombustion chamber 54 as the claimed "first prechamber
stage enclosing a first prechamber volume" and Crane's first precombustion
chamber 50 as the claimed "second prechamber stage enclosing [a] second
prechamber volume." Id.
Appellant argues that "Crane at most discloses two pre-combustion
chambers, serially arranged" which is a "configuration [that] is
fundamentally different than the claimed single two-stage precombustion
chamber in the fact that with a single, two-stage precombustion chamber a
perfectly consistent flow dynamic can be achieved throughout the two-
stages," whereas "two separate precombustion chambers, serially arranged,
... result in ... the inconsistent flow dynamic between the first prechamber
and the second prechamber." Appeal Br. 8.
To the extent Appellant is arguing that two serially arranged pre-
combustion chambers cannot constitute a two-stage precombustion chamber,
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Application 14/020, 770
Appellants have not adequately explained how the collective plurality of
serially arranged precombustion chambers 50, 54 fails to meet all the
requirements of the claimed two-stage precombustion chamber. To the
extent Appellant is arguing that Crane fails to disclose a two-stage
precombustion chamber that achieves a perfectly consistent flow dynamic
throughout the two stages (Appeal Br. 8), this argument is not persuasive
because it is not based on a limitation that actually appears in the claim.
Arguments must be commensurate in scope with the actual claim language.
In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
For the foregoing reasons, Appellant does not show error by the
Examiner in finding that claim 1 is anticipated by Crane. We sustain the
rejection of claim 1, and claims 11, 21, and 31 falling therewith, under 3 5
U.S.C. § 102(b) as anticipated by Crane.
Claims 2--4, 12-14, 26--28, and 36--38
Appellant argues independent claims 2--4, 12-14, 26-28, and 36-38
as a group. Appeal Br. 9. We select claim 2 as the representative claim, and
claims 3, 4, 12-14, 26-28, and 36-38 stand or fall therewith.
Claim 2 recites that "a first fuel concentration in the first prechamber
volume is higher than a second fuel concentration in the second prechamber
volume." Appeal Br. 18 (Claims App.). The Examiner finds that, in Crane,
"a first fuel concentration (rich air/fuel mixture) in the first prechamber
volume (54) is higher than a second fuel concentration in the second
prechamber volume (50)." Final Act. 4. Appellant argues that "the actual
teaching of Crane refers at most to a relatively fuel rich concentration in the
second prechamber relative to a leaner fuel/air mixture in the main
chamber." Appeal Br. 9 ( citing Crane Abstract). The Examiner responds
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Application 14/020, 770
that "Crane refers to prechamber 54 as a second prechamber instead of first
prechamber [ which is how the Examiner has identified prechamber 54]."
Ans. 13. We agree with the Examiner that Crane teaches that the fuel
concentration in the first prechamber as identified by the Examiner (i.e.,
Crane's second precombustion chamber 54) is relatively rich and the fuel
concentration in the second prechamber as identified by the Examiner (i.e.,
Crane's first precombustion chamber 50) is relatively lean. Id.
For the foregoing reasons, Appellant does not show error by the
Examiner in finding that claim 2 is anticipated by Crane. We sustain the
rejection of claim 2, and claims 3, 4, 12-14, 26-28, and 36-38 falling
therewith, under 35 U.S.C. § 102(b) as anticipated by Crane.
Claims 9, 10, 19, 20, 29, 30, 39, and 40
Claims 9, 19, 29, and 39 recite that the "one or more first stage holes
[ communicating between the first and second prechamber volumes] defines
a first stage hole axis ... [that] defines an index angle, a penetration angle
and a rotational offset" and that "the one or more second stage holes
[ communicating between the second prechamber volume and the
combustion chamber volume] defines a second stage hole axis ... [that]
defines an index angle, a penetration angle and a rotational offset." Appeal
Br. 19, 20, 22, 24 (Claims App.). Claims 10, 20, 30, and 40 depend
therefrom, respectively, and recite that "the index angle, the penetration
angle and the rotational offset of the first stage holes and the second stage
holes are selected to generate a first fuel concentration in the first
prechamber volume that is higher than a second fuel concentration in the
second prechamber volume." Id. at 19, 21, 22, 24. The Specification
describes how the penetration angle, index angle, and rotational offset may
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Application 14/020, 770
be defined (Spec. 16:7-15) and indicates that they "may be selected to
generate a first fuel concentration in the first prechamber 110 stage that is
higher than a second fuel concentration in the second prechamber stage 120"
(id. at 14: 16-20). The penetration angle is "defined as the angle between the
plane perpendicular to the axis ... of the prechamber spark plug and the
centerline of the port/hole." Id. at 16:7-9. The index angle is "defined as
the angle of rotation about the axis ... of the prechamber spark plug and the
location on the port where the centerline of the port meets the front plane of
the prechamber spark plug." Id. at 16: 10-12. The rotational offset is
"defined as the perpendicular distance between the axis ... of the
prechamber spark plug and the centerline of the port/hole (measured on the
plane at the front of the prechamber spark plug." Id. at 16:13-15. We do
not discern where the Specification provide details regarding any specific
values for these parameters.
The Examiner finds that Crane discloses the subject matter of claims
9, 10, 19, 20, 29, 30, 39, and 40. Final Act. 5, 6, 8, and 9-10. Because (i)
the Examiner has made findings regarding Crane disclosing first stage holes
56 and second stage holes 52, each of the holes defining axes (Final Act. 5),
(ii) the index angle, penetration angle, and rotational offset are defined by
relationships between the location of the holes and the location of a spark
plug (Spec. 16:7-15); and (iii) Crane includes a spark plug 38 (Crane Fig.),
we consider the Examiner to have reasonably supported that the axes of the
holes 56, 52 necessarily define an index angle, penetration angle, and
rotational offset. In addition, we consider the Examiner to have reasonably
supported that the index angle, penetration angle, and rotational offset
necessarily generate a first fuel concentration in the first prechamber volume
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Application 14/020, 770
that is higher than a second fuel concentration in the second prechamber
volume because the Examiner has made findings that, in Crane, the fuel
concentration in the first prechamber volume is higher than the second
prechamber volume (Final Act. 4),.
Appellant argues that "Crane provides no disclosure, expressly or
inherently[,] of the claimed axes and angles, much less selecting those axes
and angles to generate a first fuel concentration in the first prechamber
volume that is higher than a second fuel concentration in the second
prechamber volume." Appeal Br. 10. Appellant's argument appears to
focus on whether Crane explicitly describes the claimed axes/angles and the
selection of those axes/angles to achieve a certain fuel concentration
relationship. However, the relevant inquiry is whether the structure of Crane
necessarily has these claimed axes/angles and achieves a certain claimed
fuel concentration relationship, not whether Crane acknowledges this. See,
e.g., Toro Co. v. Deere & Co., 355 F.3d 1313, 1321 (Fed. Cir. 2004)("[T]he
fact that a characteristic is a necessary feature or result of a prior-art
embodiment (that is itself sufficiently described and enabled) is enough for
inherent anticipation, even if that fact was unknown at the time of the prior
invention."). Where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the claimed
subject matter may, in fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that the subject
matter shown to be in the prior art does not possess the characteristic relied
on. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) ("when the PTO
shows sound basis for believing that the products of the applicant and the
prior art are the same, the applicant has the burden of showing that they are
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Application 14/020, 770
not"); In re Best, 562 F.2d 1252, 1254--55 (CCPA 1977). Appellant's
argument does not tend to refute the Examiner's finding that the structure of
Crane has the claimed axes/angles and achieves a certain claimed fuel
concentration relationship (Final Act. 4--5), just like the claimed structure.
For the foregoing reasons, Appellant does not show error by the
Examiner in finding that claims 9, 10, 19, 20, 29, 30, 39, and 40 are
anticipated by Crane. We sustain the rejection of claims 9, 10, 19, 20, 29,
30, 39, and 40 under 35 U.S.C. § 102(b) as anticipated by Crane.
Rejection II
Claims 8 and 18 recite that the two-stage precombustion chamber
"further compris[ es] a fuel admission point configured to admit fuel into the
second prechamber volume." Appeal Br. 19, 20 (Claims App.). Claims 25
and 3 5 recite that "the one or more fuel admission points is introduced into
the second prechamber volume." Id. at 22, 24. Although the Examiner finds
that Crane discloses "a fuel admission point ( 60) configured to admit fuel
into the first prechamber volume [54]" (Final Act. 5), the Examiner finds
that Crane "is silent as to admitting fuel into the second prechamber
volume" (id. at 12). The Examiner concludes that "[i]t would have been an
obvious matter of design choice to admit fuel into the second prechamber
instead of the first prechamber on the basis of its suitability for the intended
purpose." Id. at 13.
Appellant argues that admitting fuel into the second prechamber
instead of the first prechamber would "caus[ e] the engine to misfire or result
in very unstable combustion" because "fuel [ needs to be] injected in the
volume where the spark plug is located" and "in Crane, the spark plug is
located in the first prechamber and there is no suitable flow dynamic
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claimed that would make the fuel injected in the second prechamber to
somehow migrate to the first prechamber to make the first prechamber richer
than the second prechamber which is required for proper engine combustion
operation." Appeal Br. 15-16. We find Appellant's argument persuasive as
to why it would not be obvious as a matter of design choice to admit fuel
into the second prechamber instead of the first prechamber.
The Examiner takes an alternative position in the Answer that:
Crane illustrates a main combustion chamber ( 18) connected to
the second prechamber (50) through orifice (52) to admit air-fuel
mixture to the second precombustion chamber through orifice
(52) during compression stroke of the engine. Therefore, fuel is
admitted into the second prechamber chamber as claimed at least
during the compression stroke of the engine.
Ans. 15. Appellant argues that the Examiner provides no adequate
explanation as to how orifice 52 can satisfy both the limitation of "one or
more second stage holes" and the limitation of a "fuel admission point."
Reply Br. 11. Moreover, Appellant argues that Crane discloses "that it is
'the fuel/air mixture supplied into combustion chamber 22 that is forced into
precombustion chamber 50,' ... , and therefore is not a fuel admission point
as claimed." Id. (citing Crane 4:8-12). The Specification describes the
"fuel admission point" as a separate fuel line that directly fuels the first or
second prechamber stage (see, e.g., Spec. 13:8-14) and is different than (i.e.,
in addition to) first and second stage holes (see, e.g., id. at 8:11-12). The
Examiner has not shown where Crane discloses a separate element, different
from the second stage holes, through which fuel enters the second
prechamber volume. We agree with Appellants that the Examiner has not
supported by a preponderance of the evidence that Crane discloses "a fuel
admission point configured to admit fuel into [a] second prechamber
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Application 14/020, 770
volume" or that "the one or more fuel admission points is introduced into the
second prechamber volume," as claimed.
For the foregoing reasons, Appellant shows error by the Examiner in
determining that the subject matter of claims 8, 18, 25, and 35 is
unpatentable over Crane. We do not sustain the rejection of claims 8, 18,
25, 35 under 35 U.S.C. § 103(a) as unpatentable over Crane.
Rejection III
Claim 41
Claim 41 recites:
A method for controlling the admission of fuel to a two-stage
precombustion chamber utilizing an electrically actuated valve,
comprising adjusting a quantity of fuel admitted and timing of
admitting the quantity of fuel relative to engine position to
achieve a desired fuel distribution in the two-state precombustion
chamber.
Appeal Br. 24 (Claims App.). The Examiner finds that Genslak discloses all
of the limitations of independent claim 41. Final Act. 10. Appellant argues
that "Genslak discloses two pre-combustion chambers, serially arranged,"
rather than a two-stage precombustion chamber. Appeal Br. 11. For the
reasons described supra in connection with Rejection I, we do not find this
argument persuasive of error by the Examiner.
As to the Examiner's finding that Genslak discloses "utilizing an
electrically actuated valve (fuel valve 38 or 78; controlled much the same
manner as occurs in diesel engine, col. 3 and 63---68)" (Final Act. 10),
Appellant argues that the differences between the diffusive combustion
process that occurs in a diesel engine and the pre-mixed combustion process
of the present application create different requirements for the fuel injection
strategies, and thus, Genslak does not disclose the limitations of claim 41.
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Appeal Br. 12. This argument is not persuasive in that the referenced feature
(e.g., specific fuel injection strategies that are designed for a pre-mixed
combustion process) does not actually appear in the claim and so the
argument is not commensurate with the actual claim language. Appellant
does not adequately identify how Genslak fails to disclose the claimed
method.
For the foregoing reasons, Appellant does not show error by the
Examiner in finding that claim 1 is anticipated by Genslak. We sustain the
rejection of claim 41 under 35 U.S.C. § 102(b) as anticipated by Genslak.
Claims 42--47
As to claims 42--47, the Examiner finds that Genslak discloses
all of the limitations of these claims. Final Act. 10-11. Appellant
argues that the Examiner points to nothing in Genslak that explicitly
or inherently discloses these additional limitations. Appeal Br. 12-
15. 3 Although we appreciate the breadth of these claims, this does not
relieve the Examiner of providing a sufficiently informative rejection
that allows Appellant to recognize and counter the grounds of
rejection. The Examiner does not provide any indication of where in
Genslak the claimed features are disclosed ( e.g., by citation to
column/line number or by identifying any particular elements by
3 For example, with respect to claims 42 and 44, Appellant argues that
Genslak does not disclose any sort of feedback loop. Appeal Br. 12, 13.
With respect to claim 43, Appellant argues that Genslak does not disclose
the characteristics of the spark discharge event. Id. at 13. With respect to
claims 45 and 4 7, Appellant argues that Genslak does not disclose providing
cooling to the first and second stage prechambers. Id. at 14. With respect to
claim 46, Appellant argues that Genslak does not disclose a passive
prechamber spark plug with a specific heat range. Id. at 14--15.
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reference number). The Examiner provides no clarification in the
Answer. Accordingly, the Examiner's rejection "is so uninformative
that it prevents the applicant from recognizing and seeking to counter
the grounds of rejection," and thus fails to provide sufficient notice
under 35 U.S.C. § 132, thereby failing to satisfy the initial burden of
establishing a prima facie case of anticipation. See In re Jung, 637
F.3d 1356, 1362 (Fed. Cir. 2011) (quoting Chester v. Miller, 906 F.2d
1574, 1578 (Fed. Cir. 1990)).
For the foregoing reasons, we do not sustain the rejection of claims
42--47 under 35 U.S.C. § 102(b) as anticipated by Genslak.
DECISION
The Examiner's decision to reject claims 1-7, 9-17, 19-24, 26-34,
and 36-40 under 35 U.S.C. § 102(b) as anticipated by Crane is affirmed.
The Examiner's decision to reject claims 8, 18, 25, and 35 under
35 U.S.C. § 103(a) as unpatentable over Crane is reversed.
The Examiner's decision to reject claim 41 under 35 U.S.C. § 102(b)
as anticipated by Genslak is affirmed.
The Examiner's decision to reject claims 42--47 under 35 U.S.C.
§ 102(b) as anticipated by Genslak is reversed.
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)(l )(iv).
AFFIRMED-IN-PART
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