OPEN JOINT STOCK COMPANY "RUSSIAN RAILWAYS"

Patent Trials and Appeals Board

Jul 19, 2021

2021000631 (P.T.A.B. Jul. 19, 2021)

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.
15/356,411 11/18/2016 Nikolai Konstantinovich NIKOLSKIY 436/028 6134
91209 7590 07/19/2021
Andrew W. Chu
Craft Chu PLLC
1204 Heights Blvd
Houston, TX 77008
EXAMINER
PETTITT, JOHN F
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
07/19/2021 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):
achu@awciplaw.com
achu@craftchu.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIKOLAI KONSTANTINOVICH NIKOLSKIY,
VALERIY ALEKSEEVICH NIKONOV,
ANDREI GENNADIEVICH VORONKOV,
OLGA VLADIMIROVNA BYCHKOVA, and
MAKSIM VIKTOROVICH KOLOSOV
Appeal 2021-000631
Application 15/356,411
Technology Center 3700
Before JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and
LEE L. STEPINA, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s April 22, 2020 Non-Final Action (“Non-Final Act.”) rejecting
claim 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42(a).
Appellant identifies the real party in interest as Russian Railways, which
Appellant characterizes as an “Open Joint Stock Company.” Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to “a cryogenic gas equipment unit designed
for arrangement and operation of cryogenic equipment included into the gas
treatment system for locomotives.” Spec. ¶ 1. Claim 1, reproduced below,2
is the sole claim on appeal:
1. A unit for cryogenic gas equipment in a locomotive body
being comprised of a locomotive body frame, and locomotive
body side walls, at least one locomotive body side wall having
a locomotive body aperture with a locomotive body rim, said
unit comprising:
a housing being comprised of a load-bearing frame and a
plurality of metal sheets so as to form an upper portion, a
bottom, housing end walls, and housing side walls, and so as to
fit inside said locomotive body,
wherein at least one housing side wall comprises of a
housing aperture having a perimeter and a housing rim along
said perimeter, said housing rim being comprised of elastic
material, said housing rim being positioned relative to said
upper portion so as to align said housing aperture in contact
with said locomotive body rim;
temperature deformation compensators installed on said
housing end walls so as to form entry and exit points of
cryogenic fuel lines from said housing and so as to prevent
deformations of said housing end walls and said cryogenic fuel
lines during operation,
wherein said upper portion of said housing has a shape
positioned relative to said housing rim so as to geometrically
follow a shape of an inner surface of said locomotive body;

2 The version of claim 1 reproduced in the Appeal Brief Claims Appendix is
not the version currently on appeal, but appears to be an earlier version of
the claim. See Amend. (Oct. 22, 2019), 9; Amend. (Nov. 22, 2019), 8. The
Examiner entered the claim amendment submitted November 22, 2019.
Non-Final Act. 2. We reproduce the current version of the claim above.
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flooring being attached to said bottom of said housing
inside said housing so as to preclude contact of liquefied natural
gas; and
fittings being mounted to said bottom of said housing
outside said housing so as to removably attach said housing to
said locomotive body frame.
REFERENCES
Name Reference Date
Mischel US 3,692,337 Sept. 19, 1972
Geverath US 4,359,084 Nov. 16, 1982
Frazier US 8,855,839 B2 Oct. 7, 2014
Creighton US 2005/0087096 A1 Apr. 28, 2005
Pellegrini US 2011/0154741 A1 Jun. 30, 2011
Fischer US 2015/0057845 A1 Feb. 26, 2015
Fink EP 0900708 Mar. 10, 1999
REJECTIONS
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1 112(a) Written Description
1 112(b) Indefiniteness
1 103 Fischer, Frazier, Mischel, Geverath
1 103 Fischer, Frazier, Mischel, Geverath, Creighton, Pellegrini, Fink
OPINION
Written Description
The Examiner finds no support in the Specification for the limitation
“said housing rim being positioned relative to said upper portion so as to
align said housing aperture in contact with said locomotive body rim.” Non-
Final Act. 5. According to the Examiner:
[T]here is nothing to support that the housing rim is positioned
relative to the upper portion of the housing. Rather the
disclosure explicitly shows that the housing rim is on one of the
housing sidewalls. There is no support anywhere that the
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housing rim is positioned or located by the upper portion.
Further the application does not support that the housing rim
provides any alignment relative to the upper portion. Further,
whatever contact may exist between the locomotive body rim
and the housing rim is not limited by any upper portion of the
housing unit.
Id.
Appellant responds that “[t]he disclosure of the roof of the locomotive
body further supports the housing rim being positioned relative to said upper
portion,” because “[t]he roof is known to be on the upper part of a structure,
specifically the locomotive body.” Appeal Br. 11.
The Specification teaches that “the upper portion of the unit housing
has a shape geometrically following the shape of the inner surface of the
locomotive body roof.” Spec. ¶ 5; see id. ¶ 7 (same). The Specification
does not, however, say anything about the position of the housing rim
relative to the upper portion of the housing, or how the alignment of the
housing aperture with the locomotive body rim is related to the position of
the housing rim. Therefore, we agree with the Examiner that the
Specification does not adequately describe this limitation.
The Examiner also finds that the limitation “fittings being mounted to
said bottom of said housing outside said housing so as to removably attach
said housing to said locomotive body frame” lacks adequate disclosure.
Non-Final Act. 6. According to the Examiner, “there is no support for any
fittings as claimed,” and “[t]here is no support for the location of the fittings
as claimed.” Id. Appellant responds that the “fittings are means ‘so as to
removably attach said locomotive body frame’ within the scope of the
original Paragraph 11.” Appeal Br. 11. Appellant submits that “[o]ne with
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ordinary skill in the art will understand ‘so as to removably attach said
housing to said locomotive body frame’ to include fittings.” Id.
Paragraph 11 of the Specification states:
In a case a piece of the cryogenic gas equipment in the unit
fails, the whole unit may be removed and replaced with another
unit having fault-free cryogenic gas equipment, which ensures
convenience and reduced labor-intensiveness of cryogenic gas
equipment maintenance and explosion safety of the locomotive.
Spec. ¶ 11. Although the Specification discloses that the whole unit is
removable, which implies that the unit is “removably attached” to the
locomotive body frame,” the Specification does not specifically disclose
“fittings” or any other particular structure for removably attaching the unit to
the locomotive body frame. Even if, as Appellant alleges, one of ordinary
skill in the art would “understand ‘so as to removably attach said housing to
said locomotive body frame’ to include fittings,” Appellant does not allege
that one of ordinary skill in the art would understand that fittings would
necessarily be mounted to the outside bottom of the housing, as this
limitation requires. For example, it is also plausible that the fittings would
be mounted to the sides or top of the unit housing. Therefore, we agree with
the Examiner that this limitation is not adequately described.
For the above reasons, we sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 112(a) as lacking adequate written description.
Indefiniteness
The Examiner states that “the recitation, ‘A Unit for cryogenic gas
equipment in a locomotive body being comprised of a locomotive body
frame, and locomotive body side walls, at least one locomotive body side
wall having a locomotive body aperture with a locomotive body rim, said
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unit comprising:’ (line 1-4) is indefinite.” Non-Final Act. 6. According to
the Examiner, this recitation is indefinite because, contrary to Appellant’s
assertion that claim 1 requires a locomotive, “the recitation only requires a
unit and does not require a locomotive.” Id. at 6–7. This is not a sustainable
basis for indefiniteness; the fact that Appellant attempts to rely on
limitations not positively recited in the claim does not render the claim
indefinite.
The Examiner determines that the following limitation is indefinite:
wherein at least one housing side wall comprised of a housing
aperture having a perimeter and a housing rim along said
perimeter, said housing rim being comprised of elastic material,
said housing rim being positioned relative to said upper portion
so as to align said housing aperture in contact with said
locomotive body rim.
Non-Final Act. 7. The Examiner asserts, inter alia, that “it is not clear what
structure is required of the housing rim.” Id. Appellant responds:
The housing is fitted from roof to floor of the locomotive body.
Portions of the housing at the roof are upper portions, and
portions of the housing at the floor are lower or bottom
portions. . . . the housing rim is positioned relative to the upper
portion, and this position is visible in the figure.
Appeal Br. 14.
Appellant’s response does not directly address the Examiner’s
rejection. Appellant does not, for example, clarify how the position of the
housing rim relative to the housing upper portion affects the alignment of the
housing aperture with the locomotive body rim. Therefore, Appellant has
not shown error in the Examiner’s determination that claim 1 is indefinite,
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and we sustain the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 112(b).
§103 Rejections
In order to sustain a rejection under 35 U.S.C. § 103(a) we must first
be able to ascertain the scope of the subject matter claimed. See In re Steele,
305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if
the hypothetical person of ordinary skill in the art would have to make
speculative assumptions concerning the meaning of claim language.). As
discussed above, the limitation “said housing rim being positioned relative to
said upper portion so as to align said housing aperture in contact with said
locomotive body rim” is unclear. Moreover, Appellant attempts to
distinguish claim 1 over the prior art primarily on the basis of this limitation.
See Appeal Br. 15 (“the generic chamber of the Frazier patent and the
Geverath patent into the locomotive body of the Fischer publication fails to
address the interactions of the housing rim and the upper portion of the
housing for alignment with the locomotive body rim as now claimed.”).
Therefore, we are constrained to reverse the Examiner’s rejections of
claim 1 under 35 U.S.C. § 103(a). See id. (“We do not think a rejection
under 35 U.S.C. § 103 should be based on . . . speculations and assumptions
. . . [I]t is essential to know what the claims do in fact cover.”); In re
Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred
in affirming an anticipation rejection of indefinite claims). It should be
understood, however, that our decision in this regard is based solely on the
indefiniteness of the claimed subject matter and does not reflect the
adequacy of the prior art evidence applied in support of the rejection before
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us. Once definite claims are presented, the Examiner is free to apply the
same, different, or additional prior art as the Examiner so chooses.
Petitionable Matters
The Examiner determined not to enter several amendments to the
Specification and drawings, finding that they would have added new matter.
See, e.g., Final Action (June 26, 2019), 2–3; Advisory Action (Oct. 30,
2019), 1–2; Advisory Action (Nov. 21, 2019), 1–2; Non-Final Act. 3–4.
Appellant disputes that these amendments would have added new matter.
Appeal Br. 8–9. An Examiner’s decision not to enter an amendment is not
subject matter for appeal to the Board, but is reviewable by way of petition
to the Technology Center Director. See MPEP § 1002.02(c) (Item 3.b., e.:
Petitions relating to an examiner’s determination of new matter and refusal
to enter an amendment). As such, the objection is not within the jurisdiction
of the Board and is not part of the instant appeal. In re Mindick, 371 F.2d
892, 894 (CCPA 1967).
CONCLUSION
The Examiner’s rejections are decided as follows:
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1 112(a) Written Description 1
1 112(b) Indefiniteness 1
1 103 Fischer, Frazier, Mischel, Geverath
1
1 103
Fischer, Frazier,
Mischel, Geverath,
Creighton,
Pellegrini, Fink

1
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Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
Overall
Outcome
1

TIME PERIOD FOR RESPONSE
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