ENERGYIELD LLC (75%) et al.

Patent Trials and Appeals Board

Feb 22, 2022

2021001807 (P.T.A.B. Feb. 22, 2022)

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. 15/725,899 10/05/2017 Robert Hotto 1065-030.DIV 4970 24955 7590 02/22/2022 ROGITZ & ASSOCIATES Jeanne Gahagan 4420 Hotel Circle Court SUITE 230 SAN DIEGO, CA 92108 EXAMINER CHANDLER, KAITY V ART UNIT PAPER NUMBER 1725 NOTIFICATION DATE DELIVERY MODE 02/22/2022 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): John@rogitz.com Noelle@rogitz.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT HOTTO Appeal 2021-001807 Application 15/725,899 Technology Center 1700 Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and N. WHITNEY WILSON, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 10-14, 16-19, and 21-23. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Claim 10, reproduced below, is illustrative of the claimed subject matter: 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real parties in interest as Energy Yield LLC and John L. Rogitz. Appeal Br. 2. Appeal 2021-001807 Application 15/725,899 2 10. An assembly comprising: at least a first vortex tube configured for receiving hydrocarbon fuel in a swirl chamber, and within the swirl chamber reforming the hydrocarbon fuel into Hydrogen and Carbon and separating the Hydrogen and Carbon into respective first and second streams, the first stream being composed primarily of Hydrogen in a center of the first vortex tube, the second stream including Carbon; at least a first Hydrogen receiver configured for receiving the first stream from the center of the first vortex tube; and at least a second vortex tube configured for receiving the second stream from an annular region of the first vortex tube and for separating the second stream into a third stream and a fourth stream, the third stream being composed primarily of Hydrogen for provisioning thereof to the Hydrogen receiver, the fourth stream including Carbon. Independent claim 18 is also directed to an assembly similar to that of claim 1, but further including that the first vortex tube is “configured for tangentially receiving” hydrocarbon fuel. Appeal Brief Claims Appendix 2. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Fekete US 3,546,891 Dec. 15, 1970 Clawson US 6,986,797 B1 Jan. 17, 2006 Sumida US 2009/0104084 A1 Apr. 23, 2009 Fischel US 2010/0330445 A1 Dec. 30, 2010 REJECTIONS Claims 10-14, 16, and 23 are rejected under 35 U.S.C. § 103 as being unpatentable over Fischel in view of Fekete. Final Act. 2. Appeal 2021-001807 Application 15/725,899 3 Claims 18, 19, and 21 are rejected under 35 U.S.C. § 103 as being unpatentable over Fischel in view of Fekete, further in view of Clawson. Final Act. 4. Claim 17 is rejected under 35 U.S.C. § 103 as being unpatentable over Fischel in view of Fekete, and further in view of Sumida. Final Act. 6. Claim 22 is rejected under 35 U.S.C. § 103 as being unpatentable over Fischel in view of Fekete and Clawson, and further in view of Sumida. Final Act. 7. OPINION Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions as set forth in the Appeal Brief and the Reply Brief, we determine that Appellant has not identified reversible error in the Examiner’s rejections (see generally Ans.). In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant(s) to identify the alleged error in the Examiner’s rejection). We sustain the rejections for the reasons expressed by the Examiner in the Final Office Action and the Answer. It has been established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264- 65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). Appeal 2021-001807 Application 15/725,899 4 Appellant’s main argument with respect to claim 10 is that the Examiner fails to explain how one of ordinary skill would have modified Fischel based on Fekete, since Fekete is directed to a different type of vortex tube than Fischel (Appeal Br. 3-5). With respect to claim 18, Appellant further argues that since Clawson teaches directing a mixture from a mixing chamber tangentially into a POx chamber 34, there is no reason why one would have looked to Clawson to modify Fischel’s fuel inlet (Appeal Br. 6). Appellant’s arguments are not persuasive of reversible error as they fail to consider the breadth of the claim, the applied prior art as a whole, and the inferences that one of ordinary skill would have made. As pointed out by the Examiner, it is the vortex tube of Fischel that is being duplicated; Fekete is merely relied upon to exemplify that duplicating separation vortex tubes to enhance the yield of the desired hydrogen separation was known (Ans. 4-5). Cf. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme Court’s decision in KSR . . . directs us to construe the scope of analogous art broadly, stating that ‘familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.’” (quoting KSR, 550 U.S. at 420)). Under the flexible inquiry set forth by the Supreme Court, the USPTO must take account of the “inferences and creative steps,” or even routine steps, that an ordinary artisan would employ. Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009). One of ordinary skill would have readily inferred and appreciated from the applied prior art as a whole that duplicating Fischel’s separation assembly based on the use of sequential separation tube assemblies as exemplified in Appeal 2021-001807 Application 15/725,899 5 Fekete would have been within the skill and creativity of one of ordinary skill in the art. Thus, Appellant’s argument has not shown error in the Examiner’s determination that claim 10 is obvious over the combined teachings of the applied prior art. Likewise, with respect to claim 18, Appellant has not shown error in the Examiner’s determination that one of ordinary skill would have reasonably inferred that a tangential fuel flow into a reaction chamber as exemplified in Clawson would have also been desirable for the hydrocarbon fuel input of Fischel to promote helical flow at the fuel inlet for additional fuel residence time (Ans. 6).2 Appellant does not present any further arguments directed to any other claim, including those claims separately rejected. Accordingly, each of the Examiner’s § 103 rejections are affirmed. 2 Figure 1A of Fischel illustrates that the hydrocarbon fuel input may flow out tangentially to the swirl chamber at the end of the input passageway (see the upside down T configuration of the input in Fig. 1A). Appeal 2021-001807 Application 15/725,899 6 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 10-14, 16, 23 103 Fischel, Fekete 10-14, 16, 23 18, 19, 21 103 Fischel, Fekete, Clawson 18, 19, 21 17 103 Fischel, Fekete, Sumida 17 22 103 Fischel, Fekete, Clawson, Sumida 22 Overall Outcome 10-14, 16-19, 21-23 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED