14831516 - (D) (P.T.A.B. Jul. 31, 2019)

James Arthur. Simmons et al.

Patent Trials and Appeals BoardJul 31, 2019

14831516 - (D) (P.T.A.B. Jul. 31, 2019)

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. 14/831,516 08/20/2015 James Arthur Simmons 279219-1 (GEAE:0052) 1803 82438 7590 07/31/2019 GE Power & Water Fletcher Yoder PC P.O. Box 692289 Houston, TX 77269-2289 EXAMINER RODRIGUEZ, WILLIAM H ART UNIT PAPER NUMBER 3741 NOTIFICATION DATE DELIVERY MODE 07/31/2019 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): docket@fyiplaw.com howell@fyiplaw.com swanson@fyiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAMES ARTHUR SIMMONS and PATRICK EDWARD PASTECKI ____________ Appeal 2018-007957 Application 14/831,5161 Technology Center 3700 ____________ Before STEFAN STAICOVICI, FREDERICK C. LANEY, and ARTHUR M. PESLAK, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Office Action (dated Feb. 8, 2018, hereinafter “Final Act.”) rejecting claims 1–20. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 General Electric Company is the applicant and is identified as the real party in interest in Appellant’s Appeal Brief (filed Apr. 19, 2018, hereinafter “Appeal Br.”). Appeal Br. 2. Appeal 2018-007957 Application 14/831,516 2 SUMMARY OF DECISION We REVERSE and enter a NEW GROUND of REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). INVENTION Appellant’s invention is directed to “systems and methods for fluid transfer.” Spec. para. 1. Claims 1, 12, and 18 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A system, comprising: a fluid transfer system comprising: instrumentation configured to measure one or more properties of a fuel; a fluidic buffer volume device located downstream of a fuel sensing point of the instrumentation, wherein the fluidic buffer volume device is configured to provide a residence time for the fuel within the fluidic buffer volume device to enable a signal from the instrumentation representative of an analysis of the one or more properties of the fuel to be communicated to enable adjustment of operating conditions of a fuel consuming system by a time that the fuel is provided to the fuel consuming system; and a controller programmed to receive one or more properties of the fuel consuming system from one or more sensors coupled to the fuel consuming system, to receive the signal from the instrumentation representative of the one or more properties of the fuel, and to receive one or more properties of the fluidic buffer volume device, and to generate a time-resolved volumetric grid that characterizes fuel transport properties of the fuel for different flow conditions and flow times based on the one or more properties of the fuel consuming system, the one Appeal 2018-007957 Application 14/831,516 3 or more properties of the fuel, and the one or more properties of the fluidic buffer volume device. REJECTIONS2 I. The Examiner rejects claims 1–20 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. II. The Examiner rejects claims 1, 2, 4–6, and 11 under 35 U.S.C. § 103 as being unpatentable over LaGrow et al. (US 2008/0115482 A1, pub. May 22, 2008, hereinafter “LaGrow”) and Duflot et al. (US 6,519,582 B1, iss. Feb. 11, 2003, hereinafter “Duflot”). III. The Examiner rejects claim 3 under 35 U.S.C. § 103 as being unpatentable over LaGrow, Duflot, and Dooley et al. (US 7,950,216 B2, iss. May 31, 2011, hereinafter “Dooley”). IV. The Examiner rejects claims 7, 8, and 12–16 under 35 U.S.C. § 103 as being unpatentable over LaGrow, Duflot, and Snider (US 8,356,484 B2, iss. Jan. 22, 2013). V. The Examiner rejects claims 9, 18, and 19 under 35 U.S.C. § 103 as being unpatentable over LaGrow, Duflot, Snider, and Dooley.3 2 The rejections of claims 10, 17, and 20 under 35 U.S.C. § 103 are withdrawn by the Examiner. See Examiner Answer (dated June 1, 2018, hereinafter “Ans.”) 2. 3 In the heading of the rejection of claim 9 the Examiner refers to “Duflot” and “Dufflot.” See Final Act. 17. We view the reference to “Dufflot” as a typographical error. Appeal 2018-007957 Application 14/831,516 4 NEW GROUND OF REJECTION Claims 1–20 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the invention which applicant regards as the invention. The limitation of a controller programmed to generate “a time- resolved volumetric grid that characterizes fuel transport properties of the fuel for different flow conditions and flow times,” as called for by each of independent claims 1, 12, and 18, is indefinite. See Appeal Br. 20, 22, 23 (Claims App.). Although Appellants’ Specification employs the phrase “time- resolved volumetric grid that characterizes fuel transport properties of the fuel for different flow conditions and flow times,” and Figures 5 and 6 of Appellants’ Drawings illustrate a “time-resolved volumetric grid,” the claims are still indefinite if a skilled artisan cannot translate the words into meaningfully precise claim scope. Haliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008). “While patentees are allowed to claim their inventions broadly, they must do so in a way that distinctly identifies the boundaries of their claims.” Id. at 1253. Here, Appellants’ Figures 5 and 6 illustrate a “time-resolved volumetric grid” as elements 88, 90, respectively. See Spec., paras. 32, 34. However, elements 88 and 90 merely illustrate a two-dimensional grid (a rectangle with vertical and/or horizontal lines) without any indication or explanation of how such a grid constitutes a “volumetric grid” (i.e., three- dimensional grid) that is “time-resolved.” Furthermore, it is not clear from Figures 5 and 6 whether the illustrated grid constitutes the claimed “time- Appeal 2018-007957 Application 14/831,516 5 resolved volumetric grid” or the “volumetric grid resolution provided by instrumentation [24].” Further, with respect to Appellants’ Specification, controller 28 is described as receiving (1) properties of the fuel (i.e., lower heating value (LHV), specific gravity (SG)), (2) properties of the fuel consuming system (i.e., gas turbine engine), and (3) properties of the fluidic buffer volume device. Spec., paras. 41–43, Fig. 9. The Specification further describes controller 28 as generating a “time-resolved volumetric grid that characterizes fuel transport properties of the fuel for different flow conditions and flow times,” based upon properties (1) through (3) noted above. Id., para. 44, Fig. 9. Finally, the Specification describes controller 28 as applying or utilizing the “time-resolved volumetric grid” to send control signal 68 to fuel metering system 66 to set the position of fuel metering valve 70 of gas turbine engine 14. Id., paras. 38, 44, Figs. 7, 9. As such, even though Appellants’ Specification describes controller 28 as generating a “time-resolved volumetric grid” and then applying or utilizing the “time-resolved volumetric grid” to send a control signal, the Specification does not describe what structure constitutes the “time-resolved volumetric grid” such that controller 28 would apply or use the “time- resolved volumetric grid” to send a control signal. In other words, the phrase “time-resolved volumetric grid” lacks sufficient precision to permit one endeavoring to practice the invention to adequately determine the metes and bounds thereof. Furthermore, the Specification does not describe the manner in which the “time-resolved volumetric grid” characterizes the “fuel transport properties of the fuel for different flow conditions and flow times.” Stated Appeal 2018-007957 Application 14/831,516 6 differently, because it is not clear from Appellant’s disclosure which flow conditions and flow times are considered, a skilled artisan would not be able then to ascertain the metes and bounds of the claimed “fuel transport properties . . . for different flow conditions and flow times.” In conclusion, independent claims 1, 12, and 18 “do not define the invention (i.e., the subject matter which the applicant regards as his invention) with a reasonable degree of particularity.” In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970). In other words, the phrase “time-resolved volumetric grid that characterizes fuel transport properties of the fuel for different flow conditions and flow times,” as used in the claims, when construed in light of Appellants’ Specification and Figures 5 and 6 lacks sufficient precision so that one endeavoring to practice the invention could not determine the metes and bounds thereof. Therefore, independent claims 1, 12, and 18, and their respective dependent claims 2–11, 13–17, 19, and 20 are indefinite for failing to particularly point out and distinctly claim the invention. ANALYSIS In view of our determination that claims 1–20 are indefinite, it follows that the rejections of claims 1–9, 11–16, 18, and 19 under 35 U.S.C. § 103 must fall because it is necessarily based on speculative assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962). It should be understood, however, that our decision in this regard is pro forma and based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejections. Appeal 2018-007957 Application 14/831,516 7 Finally, the Examiner also determines that the limitation “to generate a time-resolved volumetric grid . . . based on the one or more properties of the fuel consuming system, the one or more properties of the fuel, and the one or more properties of the fluidic buffer volume device” does not satisfy the written description requirement of 35 U.S.C. § 112(a). See Final Act. 8. However, as we determine that claims 1–20 are indefinite and their scope is unclear, we do not reach this issue. See In re Walter, 698 F. App’x 1022, 1027 (Fed. Cir. 2017) (non-precedential). SUMMARY We reverse the Examiner’s decision to reject claims 1–9, 11–16, 18, and 19 under 35 U.S.C. § 103. We do not reach the merits of the Examiner’s decision to reject claims 1–20 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. We enter a new ground of rejection of claims 1–20 under 35 U.S.C. § 112(b) as being indefinite. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to Appeal 2018-007957 Application 14/831,516 8 the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. REVERSED; 37 C.F.R. § 41.50(b)