Ex Parte Zia et al

Patent Trial and Appeal Board

Nov 14, 2013

11245853 (P.T.A.B. Nov. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte NINEV KARL ZIA and DUANE D. GARLOCH
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Appeal 2011-013066
Application 11/245,853
Technology Center 3700
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Before STEFAN STAICOVICI, JEREMY M. PLENZLER, and
FRANCES L. IPPOLITO, Administrative Patent Judges.

IPPOLITO, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/245,853

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-5 and 7-19. Claim 6 has been cancelled.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1, 4, 9, and 14 are the independent claims on appeal. Claims 1
and 9 are reproduced below:
1. A burner insert for placement within an outlet end of
an inshot burner nozzle, said burner insert comprising:
an axially elongated annular body with an axially
extending inner flow passage; and
a plurality of axially extending secondary openings
formed in said insert, said secondary openings being radially
spaced from said inner flow passage and at least some of said
secondary openings being formed as elongated slots in radial
cross-sectional shape, said elongated slots being elongated in a
generally non-radial direction.

9. A method of preventing flashback in a flame
retainer of an inshot burner nozzle for use with propane
comprising the steps of:
providing an insert having an axially elongated annular
body with an axially extending inner flow passage;
providing a plurality of axially extending openings in
said insert, said secondary openings, said secondary openings
being radially spaced from said inner flow passage; and
forming at least some of said secondary passages as
elongated slots in radial cross sectional shape, said elongated
slots being elongated in a generally non-radial direction.

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REJECTIONS
Claims 1, 7, and 9 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Hollingshead (US 5,186,620, issued Feb. 16, 1993).
Claims 2-5, 8, and 10-19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hollingshead.
ANALYSIS
Claims 1 and 7 as anticipated by Hollingshead
Appellants argue claims 1 and 7 as a group. We select claim 1 as
representative. Claim 7 stands or falls with claim 1.
Appellants argue that notch 32 does not teach an elongated slot being
elongated in a generally non-radial direction because the notch is square-
shaped downstream from the throat 33. App. Br. 5. Appellants appear to
contend that both portions 33, 34 of the notch 32 must have the claimed
elongated structure in order to teach the claim limitation because the notch
32 is a unitary structure. App. Br. 6. Appellants also contend that because
Hollingshead does not explicitly describe the notches 32 as “elongated in a
non-radial direction,” Figures 3 and 6 cannot be read to disclose the
“draftsperson’s depiction of the notches 32.” App. Br. 6.
The Examiner found that at least a portion of the axial slot 32 forms
an elongated slot as a rectangular opening adjacent the teeth 33 of the notch
32 in the circumferential direction (Ans. 8-9) and Appellants have not
explained why the rectangular slot adjacent the teeth 33 cannot properly be
considered an elongated slot as claimed. With regard to Appellants’
contention that both portions 33, 34 of the notch must have the elongated
structure, Appellants do not point to, and we do not see, any claim limitation
requiring such an arrangement. Appellants’ argument that the patent
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drawings cannot be relied on without a corresponding description is also
unpersuasive because it is well settled that a prior art reference is relevant
for all it teaches (including drawings) to those of ordinary skill in the art.
See In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992).
Additionally, Appellants argue that Hollingshead’s “restricted throat
areas and downstream expansion areas” teach away from Appellants’
claimed invention. App. Br. 12. This is not persuasive because “whether a
reference ‘teaches away’ from [an] invention is inapplicable to an
anticipation analysis.” ClearValue, Inc. v. Pearl River Polymers, Inc., 668
F.3d 1340, 1344 (Fed. Cir. 2012) (citations omitted).
As such, we are not apprised of Examiner error and we sustain the
rejection of claims 1 and 7.
Claim 9 as anticipated by Hollingshead
For claim 9, Appellants rely on the arguments made for claim 1
discussed, supra, and additionally contend that claim 9 is not anticipated
because Hollingshead does not disclose a method of preventing flashback
with the step of forming at least some secondary openings as elongated slots
in radial cross sectional shape elongated in a generally non-radial direction.
App. Br. 6. Specifically, Appellants contend that notch 32 reduces flame
liftoff and improves flame stability, but does not prevent flashback. Id.
The Examiner explains that Hollingshead explicitly teaches
optimizing the amount and velocity of airflow to prevent flashback. Ans. 10
(citing Hollingshead, col. 2, ll. 17-54). Indeed, Hollingshead teaches that the
overall burner insert configuration (including notches 32) balances three
velocities around the burner head in three different zones in a manner that
provides for improved flame stability, which includes flashback prevention.
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Hollingshead, col. 2, ll. 17-54; see also col. 2, l. 63-col. 3, l. 2. As such, we
are not apprised of any Examiner error in the finding that Hollingshead
discloses the claimed forming step in optimizing the amount and velocity of
airflow to prevent flashback.
In view of the reasons above (including those discussed for claim 1),
we sustain the rejection against claim 9.
Claims 2-5, 8, and 10-19 unpatentable over Hollingshead
Appellants initially provide arguments similar to those discussed
above regarding claim 1, which we find unpersuasive for the reasons set
forth above. See App. Br. 7.
Claims 2, 3, 8, 10, 11, 13, and 16-19
Appellants argue claims 2, 3, 8, 10, 11, 13, and 16-19 as a group. We
select claim 2 as representative. Claims 3, 8, 10, 11, 13, and 16-19 stand or
fall with claim 2.
Claim 2 depends from claim 1 and additionally recites a slot width
“which is equal to or less than .13 inches.”
The Examiner found that Hollingshead does not teach the claimed
dimensions, but determined that it would have been obvious to use the
claimed slot sizes because it has been held that where the general conditions
of the claim are disclosed in the prior art, discovering the optimum or
workable ranges involves only routine skill in the art. Ans. 6 (citing In re
Aller, 220 F.2d 454, 456 (CCPA 1955)). Moreover, the Examiner reasoned
that it would have been obvious to modify Hollingshead’s slot size to
optimize the airflow through the burner because Hollingshead explicitly
teaches optimizing the amount and velocity of airflow in order to prevent
flashback and one of ordinary skill in the art would understand varying
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aperture size would directly affect the amount of airflow. Ans. 5-6, 10. The
Examiner additionally noted that Appellants have not demonstrated
criticality for the claimed range or unexpected results. Ans. 6.
To start, Appellants argue that In re Aller does not apply because
Hollingshead does not disclose any dimensional limits for slot width. App.
Br. 9; see also App. Br. 12. We are not apprised of any Examiner error on
this basis because it is not required that the prior art reference disclose an
actual dimensional limit. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980)
(explaining that discovery of an optimum value of a result-effective variable
is normally obvious). Moreover, the Examiner explained that Hollingshead
teaches optimizing airflow amount and velocity to prevent flashback and
that one of ordinary skill in the art would understand aperture size to directly
affect airflow amount. See Ans. 10 (citing Hollingshead, col. 2, ll. 17-54).
As Appellants do not challenge this explanation and do not provide any
evidence of unexpected results, we are not apprised of error.
Appellants additionally assert that Hollingshead teaches away from
the claimed invention because Hollingshead “clearly teaches the formation
of peripheral openings in form of notches in the outer periphery of the
burner insert that consist of ‘restricted throat areas and downstream
expansion areas.’” App. Br. 12. However, other than this general
allegation, Appellants does not explain how the throat and expansion areas
teach away from the claimed invention. A reference must actually criticize,
discredit, or otherwise discourage investigation into the claimed solution. In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Accordingly, we sustain the rejection of claims 2, 3, 8, 10, 11, 13, and
16-19.
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Claims 4, 5, 12, 14, and 15.
Appellants argue claims 4, 5, 12, 14, and 15 as a group. We select
claim 4 as representative. Claims 5, 12, 14, and 15 stand or fall with claim
4.
The Examiner found Hollingshead discloses each of the features
recited in claim 4 except the V-shape of the secondary openings. Ans. 6.
The Examiner reasoned that it would have been an obvious design choice to
select a V-shape for the apertures because Appellants have not provided
criticality for the V-shape or shown how the claimed V-shape slots are
functionally different from the Hollingshead slots. Ans. 6, 10. The
Examiner further noted that Appellants’ Specification teaches that “other
shapes of elongated slots may also be employed to obtain the results
contemplated by the present invention.” Ans. 6, 10 (citing Spec., para.
[0032]).
Appellants argue that the Examiner has not provided any rational
underpinning supporting a modification of the Hollingshead slot to eliminate
the peripheral openings in favor of the claimed V-shaped secondary
openings. App. Br. 11-12. In particular, Appellants contend that the
claimed V-shaped slots prevent flashback and formation of sooting, whereas
“one skilled in the art would only read Hollingshead as teaching reducing
the occurrence of liftoff by reducing the velocity of gas exiting the
peripheral notches 32 by providing an expansion region 34 downstream of a
the throat 33.” App. Br. 10-11. Appellants additionally contend that
Appellants’ secondary openings are V-shaped elongated slots and do not
incorporate expansion zones to reduce the velocity of the gas flow. App. Br.
11.
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We are not apprised of Examiner error on this basis as Appellants
appear to be arguing that notches 32 only function to reduce flame liftoff and
do not prevent flashback or improve flame stability otherwise. However, as
noted by the Examiner, Hollingshead teaches an overall insert construction
having three zones with three types of openings, which work together to
optimize airflow amount and velocity for flame stability and flashback
prevention. See Ans. 10 (citing Hollingshead, col. 2, ll. 17-54). Notches 32
constitute one of the three zones of openings and contribute to flashback
prevention and flame stability. Id. Given the Examiner’s finding,
Appellants have failed to provide any technical reasoning or evidence why
the claimed V-shape provides functional significance that is not
accomplished by the notches 32.
Additionally, Appellants’ contention that the claimed secondary
openings do not have expansion zones also does not apprise us of any
Examiner error. We note that claim 4 does not exclude expansion regions
and unclaimed features cannot impart patentability. Moreover, Appellants
have not explained why modifying the shape of the Hollingshead notches 32
to a V-shape is not an obvious design choice where the claimed slots and
notches 32 both function to prevent flashback and improve flame stability.
Design choice applies when old elements in the prior art perform the same
function as the now claimed structures. See In re Kuhle, 526 F.2d 553, 555
(CCPA 1975) (use of claimed feature solves no stated problem and presents
no unexpected result and “would be an obvious matter of design choice
within the skill of the art”) (citation omitted).
Appellants further argue that notches 32 are square downstream and
are not elongated in a generally non-radial direction. App. Br. 10.
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However, as discussed, supra, we are not apprised of any Examiner error on
this basis.
Appellants next contend that Hollingshead simply does not disclose
elongated slots being generally V-shaped and does not appreciate that the
performance of the insert in preventing flashback could be improved by
forming the secondary openings as generally V-shaped slots. App. Br. 10.
However, we are not persuaded by this argument as the Examiner does not
rely on Hollingshead to teach the V-shape and, instead, explained that the V-
shape would have been a matter of design choice. Ans. 6, 10. Furthermore,
to the extent Appellants are arguing that the V-shape improves flashback
prevention over Hollingshead’s slots, Appellants have not provided any
objective evidence of unexpected results or criticality for the V-shape that
apprises us of error in the Examiner’s findings.
Additionally, Appellants’ teaching away argument (App. Br. 12) is
unpersuasive for the same reasons discussed above for claims 2, 3, 8, 10, 11,
13, and 16-19.
Accordingly, for these reasons, we sustain the rejection of claims 4, 5,
12, 14, and 15.

DECISION
We AFFIRM the Examiner’s decision to reject claims 1-5 and 7-19.
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).

AFFIRMED
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