Ex Parte Briesch et al

Patent Trial and Appeal Board

Nov 13, 2012

11351976 (P.T.A.B. Nov. 13, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/351,976 02/10/2006 Michael S. Briesch 2006P00082US 3507
7590 11/13/2012
Siemens Corporation
Intellectual Property Department
170 Wood Avenue South
Iselin, NJ 08830
EXAMINER
AKRAM, IMRAN
ART UNIT PAPER NUMBER
1725
MAIL DATE DELIVERY MODE
11/13/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL S. BRIESCH
and TERRENCE B. SULLIVAN
____________

Appeal 2011-011423
Application 11/351,976
Technology Center 1700
____________

Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and DONNA M.
PRAISS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting, under 35 U.S.C. §103(a), claims 1-6, 10, 11, 19, and 20 as
unpatentable over Nielsen (US 5,170,727, issued Dec. 15, 1992) in view of
Dickenson (US 4,898,107, issued Feb. 6, 1990), and claims 13 and 14 as
unpatentable over the same references, further in view of Higo (US 6,495,110 B1,
issued Dec. 17, 2002). 2 We have jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is representative of the invention and is reproduced below from the
Claims Appendix to the Appeal Brief:

1 Final Office Action mailed Jul. 21, 2010
2 Appeal Brief filed Jan. 18, 2011 (“App. Br.”)
Appeal 2011-011423
Application 11/351,976

2

1. A process for conversion of carbonaceous fuel to a gaseous product
including the steps of:

providing in a high pressure chamber a fuel slurry comprising a mixture of a
solid granulated carbonaceous component and a carrier component initially in a
liquid state;

heating the carrier component while under sufficient pressure to prevent the
carrier component from boiling so that the carbonaceous component does not
separate from the carrier component, wherein the slurry is heated to a temperature
exceeding 374° C; and

transferring the mixture through a pressure reduction element, to a lower
pressure chamber wherein the carrier component is in a gaseous state, for
combustion of the solid carbonaceous component in the lower pressure chamber
without separating the solid component from the gaseous carrier component.

We decide the following issue in favor of Appellants and, therefore, reverse
the Examiner’s decision to reject claims 1-6, 10, 11, 13, 14, 19, and 20: Is the
Examiner’s obviousness determination based on an erroneous finding that the term
“carrier,” as recited in the independent claims (i.e., claims 1 and 10), reads on
Nielsen’s diluent?
Nielsen discloses a process which utilizes a diluent described as a fluid
added “for the express purpose of reducing viscosity and/or for the solubilization
of the liquid fuel, or its components, for the purpose of improving atomization and,
thereby, providing more complete and cleaner combustion under near atmospheric
pressure.” (Col. 12, ll. 46-51.) Nielsen states:
This [diluent] fluid is not being used as a carrier or as a fluid that
assists atomization such as air in airblast or steam in steam assisted
atomization, but rather as a viscosity reducing diluent to enable the
use of unconventional fuels that typically would first have to be
Appeal 2011-011423
Application 11/351,976

3

refined to higher grades, or with conventional fuels that display poor
spraying performance.
(Id. at ll. 28-35 (emphasis added).)
Nielsen does not define the term “carrier,” but explains that a carrier such as
water facilitates transportation, storage, and distribution of pulverized coal. (Id. at
col. 11, ll. 16-19.) Likewise, the present Specification does not explicitly define
the term “carrier” (or “carrier component”) other than to state that it may be water,
another liquid, or a water-based mixture, and can be mixed with a solid granulated
carbonaceous component so as to form a flowable liquid slurry. (See Spec. 6:13-
17; 7: 25.) Based on the similar usage of the term “carrier” in Nielsen and the
present Specification and claims, we understand the term “carrier” to be a term of
art which has the same meaning in Nielsen and in the appealed claims. Since
Nielsen expressly states that the diluent used in the disclosed process is not a
carrier, we agree with Appellants that the term “carrier” as recited in the appealed
claims does not read on Nielsen’s diluent. (See App. Br. 9; Reply. Br.3 2-4.)
The Examiner’s obviousness determination is based on a finding that the
claim term “carrier” reads on Nielsen’s diluent. (Ans. 4 3, 7.) This finding is
erroneous for the reasons explained above. Because the Examiner has failed to
identify a disclosure or suggestion of a process which utilizes a carrier in the
claimed manner, the Examiner’s fact finding is insufficient to support a prima facie
case of obviousness as to independent claims 1 and 10, as well as the remaining
claims which depend therefrom.

3 Reply Brief filed Jun. 13, 2011.
4 Examiner’s Answer mailed Apr. 11, 2011.
Appeal 2011-011423
Application 11/351,976

4

The Examiner’s decision to reject claims 1-6, 10, 11, 13, 14, 19, and 20 is:
REVERSED

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