Ex Parte Brown

Patent Trial and Appeal Board

Sep 27, 2012

11185150 (P.T.A.B. Sep. 27, 2012)

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.
11/185,150 07/21/2005 Ross M. Brown 12,848 3512
2675 7590 09/27/2012
WILLIAM W. HAEFLIGER
201 S. LAKE AVE
SUITE 512
PASADENA, CA 91101
EXAMINER
PETTITT, JOHN F
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
09/27/2012 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 ROSS M. BROWN
____________________

Appeal 2010-009229
Application 11/185,150
Technology Center 3700
____________________

Before: STEVEN D.A. MCCARTHY, BRETT C. MARTIN, and
ANNETTE R. REIMERS, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009229
Application 11/185,150
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STATEMENT OF CASE
Ross M. Brown (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s rejection of claims 1, 5, 10, 12, and 13. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellant’s claims are directed generally to “mechanically removing
the accumulated Pile [of frost and ice] from underneath [a] vaporizer.”
Spec. 3:10-11. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An apparatus to convert cryogenic fluid to gas, comprising
a) a vaporizer having passages to pass the cryogenic fluid in
heat transfer relation with warming gas flowing downwardly
through the vaporizer,
b) the vaporizer having surfaces on which ice collects and
from which ice falls to the base of the vaporizer and collects in
a pile beneath said passages,
c) and removing fluid flow control means operating to direct
flow of removing fluid at the ice pile with sufficient fluid force
to alone cause removal of all of such ice in the pile relative to
and away from the vaporizer base,
d) and said cryogenic fluid consisting of
e) said removing fluid being warm water to contact ice in the
pile and assist in melting of the ice pile,
f) said control means, including a warm water jetting device
directed toward a space directly beneath the vaporizer,
g) and including sloping said base to assist in inducing
gravitational flow of ice and water including jetted water
laterally and downwardly away from the base of the vaporizer,
h) said control means configured to intermittently jet water
toward the space beneath the vaporizer.

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Application 11/185,150
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tyree
Yoshizawa
US 3,435,623
US 4,271,617
Apr. 1, 1969
Jun. 9, 1981

REJECTIONS
The Examiner made the following rejections:
Claim 10 stands rejected under 35 U.S.C. §112, first paragraph, as
failing to comply with the written description requirement. Ans. 3.
Claims 1, 5, 10, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tyree and Yoshizawa. Ans. 4.

ANALYSIS
Written Description
Claim 10 includes the recitation: “the vaporizer being free of any
electrical heating thereof.” App. Br., Claims Appendix. The Examiner finds
that “[t]here is no mention in the originally filed disclosure, claims, or
drawings of the vaporizer ‘being free of electrical heating’” and concludes
that this limitation is, therefore, new matter. Ans. 3. Appellant’s sole
response is that “[t]he drawings show no electrical heating whatsoever in the
vaporizer, which directly supports the claim 10 sub-paragraph f) limitation.”
App. Br. 18. As the Examiner explains, the drawings (which we note are
essentially schematic and do not show every operating detail of the
vaporizer), “fail to show hundreds upon hundreds of features; clearly this is
not evidence that the disclosure supports claim limitations reciting that the
vaporizer is free of any of these features.” Ans. 13. Neither does the
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Specification appear to provide any reason to exclude the relevant limitation.
See Santarus, Inc. v. Par Pharmas., Inc., Appeals 2010-1360, 2010-1380 slip
op. at 12, reproduced at
http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1360.-
1380.pdf (Fed. Cir. Sep. 4, 2012). Hence, we agree with the Examiner that
without something more than the absence of an element in a schematic
drawing, the recitation at issue is properly rejected for lack of written
description and considered new matter and find that Appellant’s
Specification and drawings do not convey with reasonable clarity to a person
of ordinary skill in the art that the vaporizer is free of any electrical heating
thereof, as called for by independent claim 10.
For the foregoing reasons, the rejection of claim 10 under 35 U.S.C. §
112, first paragraph, as failing to comply with the written description
requirement, is sustained.
Obviousness over Tyree and Yoshizawa
Appellant’s claimed invention relates to systems and methods for
removing ice build-up, referred to as the “Pile” (Spec. 2:18) from beneath a
cryogenic vaporizer. See claims 1 and 10. “Because of the very cold
surfaces inherent in the design of these vaporizers, they all collect frost or
ice.” Spec. 2:8-10. The Examiner rejects both claim 1 and claim 10, the two
independent claims at issue, over the combination of Tyree and Yoshizawa.
As disclosed in Tyree, defrosting of the vaporizer typically occurs during
times when no flow occurs and when the ambient air temperature is above
32 degrees Fahrenheit. Col. 5:60-63. Sometimes, however, this defrosting
during normal operation is insufficient, for example, because ambient
temperature is below 32 degrees Fahrenheit and auxiliary heaters operate in
an extended defrost mode to aid in the defrosting. Col. 5:63-6:11. Tyree,
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Application 11/185,150
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however, is silent as to any build-up of an ice pile beneath the vaporizer and
merely states that the vaporizer should be located where “the runoff of water
during defrosting can be accommodated.” Id. (emphasis added). Appellant
emphasizes this point and points out that Tyree actually deals with
“preventing any problem of ice collection in a pile.” Reply Br. 2.
In contrast to the disclosure (or more precisely the lack thereof) in
Tyree regarding the Pile, the Examiner finds that Tyree teaches, among other
things, “the vaporizer (9) having surfaces (17) on which ice collects and
from which ice falls to a base (ground below vaporizer) of the vaporizer (9)
and collects in a pile beneath said passages (under vaporizer 9, ice inherently
falls from surfaces 17 under the force of gravity).” Ans. 4. The Examiner
further finds that “spraying ice with water such that ice melts and is drained
on a sloped surface is a well known [sic] means of removing ice.” Ans. 4-5.
The Examiner then utilizes the teaching of Yoshizawa, which is a snow
removing vehicle that jets water to melt snow and also to break up ice on
road surfaces and the like, to combine with the vaporizer of Tyree. Ans. 4-5.
The Examiner’s stated rationale for this combination is:
it would have been obvious to one of skill in the art, at the time
the invention was made to provide the vaporizer of Tyree with
the water spraying system of Yoshizawa for the purpose of
removing ice in a well known [sic], convenient, and flexible
manner and further for the purpose of ensuring that air flow is
not impeded from the vaporizers [sic] base or lower air outlet
and for the purpose of removing the hazard which ice poses to
people and vehicles.
Ans. 5.
As Appellant notes, Yoshizawa is mainly concerned with removing
snow and
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does not provide, or teach, or suggest that ice in a pile impacted
by falling ice, could be removed, by jetting, which Yoshizawa
recognizes by stating that “broken pieces of ice plate E on the
ground are quickly broken up further by the wheels, of vehicles
into small pieces which are quickly melted by increase in
atmospheric temperature” (col. 4, lines 27-31).
App. Br. 9; see also App. Br. 11-15. As such, and because claim 1
specifically requires “operating to direct flow of removing fluid at the ice
pile with sufficient fluid force to alone cause removal of all of such ice in
the pile” (emphasis added), we agree with Appellant that the only teaching
of ice removal taught by Yoshizawa relies on other factors for complete
removal; such as the water jetting vehicle itself running over the broken ice,
other vehicles in traffic similarly running over the ice, and sunlight later in
the day that results in an increase in atmospheric temperature. See App. Br.
9. Accordingly, we find that Yoshizawa is inadequate for explicitly teaching
this aspect of complete removal by the water jetting alone as claimed and
that there is no explicit disclosure in Tyree recognizing the problem of the
Pile.
Appellant further points out that “[t]he mere fact that prior art could
be modified does not make such a modification of obvious [sic] unless the
prior art suggests the desirability of doing so.” App. Br. 10 (citing to In re
Gordon, 732 F2d 900, 901 (Fed. Cir. 1984)). We agree with Appellant that,
in this particular case, the art of record does not suggest “combining [the]
structure of a vaporizer (Tyree) with [the] structure of a snow removal
vehicle (Yoshizawa).” App. Br. 17. Although we agree with the Examiner
that Yoshizawa provides a good example of “spraying ice with water such
that the ice melts and is drained on a sloped surface” (Ans. 4), we do not
find that the specifics disclosed in Yoshizawa amount to the particular ice
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removal as claimed. Concurrently, we also do not find that the Examiner
has provided an articulated reason with a rational underpinning for
combining a moving vehicle for removing snow and ice on a roadway with a
stationary vaporizer. As such, we conclude that the Examiner’s rationale for
combining Yoshizawa and Tyree essentially amounts to a conclusory
statement. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(holding that “rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”).
Because we conclude that the Examiner’s proposed combination of
Tyree with Yoshizawa both lacks claimed elements and is unsupported by a
rational underpinning, we cannot sustain the rejections of independent
claims 1 and 10, nor the claims dependent therefrom. See In re Fine, 837
F.2d 1071, 1076 (Fed. Cir. 1988).

DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claim 10 as failing to comply with the written description requirement. We
REVERSE the Examiner’s decision to reject claims 1, 5, 10, 12, and 13 as
obvious over the combination of Tyree and Yoshizawa.
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) (2009).

AFFIRMED-IN-PART

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