Ex Parte Hansen et al

Patent Trial and Appeal Board

Dec 15, 2017

12934378 (P.T.A.B. Dec. 15, 2017)

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.
12/934,378 01/28/2011 Peter Farkas Binderup Hansen GJE-020101-US-PCT 6999
26294 7590 12/19/2017
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114
EXAMINER
HOFFMANN, JOHN M
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
12/19/2017 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):
rkline @ tarolli. com
docketing@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER FARKAS BINDERUP HANSEN and LARS BOLLUND
Appeal 2017-001298
Application 12/934,378
Technology Center 1700
Before MARKNAGUMO, CHRISTOPHER L. OGDEN, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 seek our review pursuant to 35 U.S.C. § 134(a) of a
decision of the Primary Examiner to reject claims 13-23 of Application
12/934,378 as unpatentable under 35 U.S.C. § 103(a). Final Act. 7-13. We
have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we
reverse.
1 This Decision refers to the Specification dated Sept. 24, 2010 (“Spec.”),
Final Rejection dated May 4, 2015 (“Final Act.”), Appeal Brief dated Jan 4,
2016 (“App. Br.”), Examiner’s Answer dated Aug. 26, 2016 (“Ans.”), and
the Reply Brief dated Oct. 26, 2016 (“Reply Br.”).
2 Appellants identify the real party in interest as Rockwool International
A/S. App. Br. 3.
Appeal 2017-001298
Application 12/934,378
BACKGROUND
The subject matter on appeal relates to production of a mineral melt
by burning combustible material in the presence of inorganic particulate
material and thereby forming a melt, which may be used to form mineral
fibers. App. Br. 7; Spec 1:5-7. The claimed production method may be
used for recycling waste mineral materials, such as bonded mineral wool.
Spec. 1:7-8, 24. In order to improve the efficiency of the process, it is
known to use the exhaust gases from the melt furnace to preheat the
inorganic particulate materials, including bonded mineral wool that is to be
recycled. Spec. 2:6-14. According to the Specification, bonded mineral
wool has a tendency to become sticky and lose free-flowing characteristics
upon heating, which may impede the flow of mineral material and gases in a
heat exchange system and reduce the efficiency of combustion in a
circulating combustion chamber because of agglomeration. Spec. 3:13-22.
The Specification states that Appellants seek to maintain the flow properties
of the mineral material and achieve a high level of energy efficiency while
recycling waste mineral material. Spec. 3:23-26. First preheating the raw
mineral material with exhaust gases effectively quenches the exhaust gases,
cooling them to a temperature below the melting or softening temperature of
the bonded mineral wool. The quenched exhaust gases and the preheated
raw mineral material may then be used to preheat the bonded mineral wool
without adversely affecting its free-flowing characteristics. Spec. 7:3-22.
The combined preheated raw mineral material and bonded mineral wool
may then be combusted to form the melt. Claim 13 is representative of the
claimed subject matter and reproduced below:
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Application 12/934,378
13. A method of making a mineral melt, the method
comprising the steps of:
providing a circulating combustion chamber and a heat
exchange system;
heating mineral material comprising first and second
mineral materials;
injecting fuel, the heated mineral material, and
combustion gas into the circulating combustion chamber;
combusting the fuel in the circulating combustion
chamber, thereby melting the heated mineral material to form
a mineral melt and generate exhaust gases;
separating the exhaust gases from the mineral melt,
collecting the mineral melt, and passing the exhaust gases to
the heat exchange system;
wherein prior to being injected into the circulating
combustion chamber, the first and second mineral materials
are provided separately to the heat exchange system, and
wherein said first mineral material is a raw mineral material
and said second mineral material is bonded mineral wool;
and
wherein the first mineral material has a higher sintering
temperature than the second mineral material; and
wherein the first mineral material is heated through
contact with the exhaust gases before the second mineral
material is heated through contact with the exhaust gases and
the heated first mineral material.
Claims Appendix filed May 27, 2016 (“Claims Appx”) (emphasis added).
Independent claim 22 recites a method similar to claim 13, although it
expressly states “subsequently heating” the second mineral material and
comprises an additional step of “injecting the first and second mineral
materials into a first conduit” at specified positions relative to each other and
the circular combustion chamber. Claims Appx.
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Appeal 2017-001298
Application 12/934,378
REJECTIONS
On appeal, the Examiner maintains the following rejections:3
1. Claims 13-23 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Jensen4 and Hanvey.5 Ans. 2.
2. Claims 13-23 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Jensen, Hanvey, and Hant.6 Ans. 9.
DISCUSSION
The Examiner finds that Jensen teaches the steps of the claimed
method, but acknowledges that Jensen does not teach separately providing
two mineral materials and preheating the first mineral material before the
second mineral material as described in the limitations italicized supra.
Final Act. 8; Ans. 5. Rather, Jensen’s first and second mineral materials
from hoppers 127 and 13 are combined in hopper 14 and then discharged
through feed 11 into the stream of exhaust gases flowing through duct 10
and passed to preheater cyclone 22 where the particulate material is
preheated by the exhaust gases. See Ans. 5-6; Jensen Fig. 1, 12:3-6, 21-36.
The Examiner further finds that Jensen discloses using bonded mineral wool,
as well as other materials. Id., citing Jensen 2:1-5, 12:25.
3 The Examiner withdrew all rejections under 35 U.S.C. § 112 in the
Advisory Action dated Nov. 13,2015. Ans. 9.
4 WO 03/002459 Al, published Jan. 9, 2003 (“Jensen”). Jensen is
Rockwool International’s prior work, and the Specification describes the
appealed subject matter as an improvement on Jensen. Spec. 2:6-8, 22-24.
5 US 5,772,126, issued June 30, 1998 (“Hanvey”).
6 US 4,957,527 issued Sept. 18, 1990 (“Hant”).
7 Labels to elements are in bold font, regardless of their presentation in the
original document.
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Application 12/934,378
The Examiner finds that Hanvey teaches recycling of waste glass
fibers by crushing and melting, and that fibers can be blended with other
batch ingredients or added separately. Id., citing Hanvey 1:22-32, 2:26,
17:12-16. On this basis, the Examiner determines it would have been
obvious to a person of ordinary skill in the art to modify Jensen’s process in
order to recycle waste fibers back into the process to reduce costs, and to add
fiber materials separately from other ingredients. Id. The Examiner
determines, more specifically, that it would have been obvious to add
another feed to Jensen’s duct 10, adjacent to feed 11, to permit feeding of
fiber waste separately from other ingredients, and also avoid transporting
waste to a batch house and needing to mix fibers. Ans. 6, citing Jensen Fig.
1; Hanvey 17:11-15.
Appellants argue, inter alia, that Jensen’s blending of the materials
from hoppers 12 and 13 in silo 14 is “quite different from the use of bonded
mineral wool in the claimed invention” because “[cjlaims 13 and 22 make
clear that the two different mineral materials are separately heated and not
blended . . . .” App. Br. 17. Appellants further argue that Jensen does not
disclose “separate preheating of raw mineral wool and waste bonded mineral
wool feedstock materials” and therefore has the disadvantage of poor
material flow as discussed in the Specification. Id., citing Spec. 3:10-26.
Appellants also dispute that the section of Hanvey relied upon by the
Examiner discloses separate addition of waste glass fibers and raw mineral
feedstock into a heat exchange system. App. Br. 18, citing Hanvey 17:12-
lb.
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Appeal 2017-001298
Application 12/934,378
The Examiner responds by stating that “[T]he claims do not require
any preheating or any‘raw material wool.’”8 Ans. 10. The Examiner also
finds that “Hanvey does not disclose the separate addition of glass fibers and
mineral feed stock into a heat exchange system” but argues it is irrelevant
because Hanvey is merely “relied on to show the rather commonplace
expedient of changing order/location of adding an ingredient is known in the
glass-making art.” Ans. 11.
The Examiner’s determination that the claims do not require any
preheating is harmful error that undermines the appealed rejection. The
claims expressly require that “prior to being injected into the circulating
combustion chamber, the first and second mineral materials are provided
separately to the heat exchange system.” (Claims Appx., emphasis added).
We determine that this is a preheating step, based on the ordinary meaning
of the claim language.
Further, based on the Examiner’s findings that Jensen does not teach
preheating or separately providing the two mineral materials as recited in the
claim limitations italicized supra (Final Act. 8), and finding that Hanvey
also does not disclose separate addition of two mineral materials into a heat
exchange system (Ans. 11), the rejection fails to provide the requisite factual
basis for obviousness. See In re Warner, 379 F.2d 1011, 1016-17 (CCPA
8 We assume that the Examiner’s reference to “raw material wool” is in
response to Appellants’ argument with regard to Jensen’s failure to disclose
“raw mineral wool,” which in turn appears to refer to “raw mineral material”
as recited in the appealed claims. App. Br. 17. The apparent typographical
errors in both the Examiner’s and Appellants’ statements hinders our
understanding of their arguments, but in any event we need not reach that
issue because our reversal of the rejection is not based on those terms.
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Application 12/934,378
1967) (the Examiner has the initial duty of supplying the requisite factual
basis for obviousness and may not “resort to speculation, unfounded
assumptions, or hindsight reconstruction to supply deficiencies in [the]
factual basis.”). While finding that Hanvey also does not teach separately
providing the two mineral materials, the Examiner’s explanation that it was a
“commonplace expedient [to change] order/location of adding an ingredient”
(Ans. 11) does not sufficiently explain why a person of ordinary skill in the
art would have been led to modify Jensen’s method to provide for separate
introduction of the two mineral materials into the flow of exhaust gas and
preheating of the first mineral material prior to the second mineral material.
As Appellants persuasively argue, only through experience with Jensen’s
system would a person of skill in the art know the problems of using a
mixture of the two mineral materials. App. Br. 18-19; see also Spec. 3:10—
26 (discussing problems of Jensen). The Examiner has not indicated where
in the prior art of record there is evidence of recognition of these problems,
or of some other problem that would have led to the claimed method.
The Examiner’s “alternative rationale - obvious to try” (Ans. 7) also
does not sufficiently explain why a person of ordinary skill in the art would
have modified Jensen to arrive at the claimed method. The Examiner
determines it would have been obvious to modify Jensen by feeding recycled
waste into duct 24 at a location downstream of feed location 7 because there
are only three options for adding a waste stream to an established process:
feeding prior to, simultaneously, or after an established stream. Ans. 7. The
proposed modification, however, does not recognize that Jensen also teaches
mixing of mineral materials from hoppers 12 and 13 in hopper 14 prior to
heating in cyclone 22, and does not explain how or why a person of ordinary
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Application 12/934,378
skill in the art would have accomplished separately providing the mineral
materials that were already mixed in 14.
Accordingly, we conclude that the Examiner reversibly erred and has
not established obviousness with respect to Rejection 1. We need not
separately address Rejection 2, which is based on the same faulty findings
with regard to Jensen and Hanvey, which are not cured by any findings
regarding Hant.
SUMMARY
We reverse the rejection of claims 13-23 under 35 U.S.C. § 103(a).
REVERSED
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