Ex Parte Saviharju et al

Patent Trial and Appeal Board

Apr 9, 2013

10423052 (P.T.A.B. Apr. 9, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KARI SAVIHARJU, JORMA SIMONEN,
OLLI ARPALAHTI, and LASSE KOIVISTO
____________________

Appeal 2011-009106
Application 10/423,052
Technology Center 3700
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Before: JENNIFER D. BAHR, STEVEN D.A. MCCARTHY, and
KEN B. BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Kari Saviharju et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-6, 8-15, and 17. The Examiner
indicated that claim 7 is allowable. Appellants canceled claims 16 and 18.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The Claimed Subject Matter
Claim 17, reproduced below, is illustrative of the claimed subject
matter.
17. A method of producing energy at a pulp mill having a
gasifier, a recovery boiler, and a superheating boiler, said
method comprising:
a) combusting waste liquor from a pulping process in a
furnace of the recovery boiler to generate flue gases;
b) recovering heat from the flue gases to produce
saturated steam in the recovery boiler;
c) gasifying a solid wood-based material in a gasifier to
produce a combustible gas, wherein the solid wood-based
material includes at least one of a group consisting of wood,
wood chips, bark chips, hogged wood, planer shavings, saw
dust and wood-based forest residues;
d) burning at least part of the combustible gas in the
superheating boiler, and
e) superheating the saturated steam in the superheating
boiler to produce superheated steam.
Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Milner
Babu
Kuusio
US 4,498,909
US 4,699,632
US 5,509,997
Feb. 12, 1985
Oct. 13, 1987
Apr. 23, 1996
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Rejections
Appellants request our review of the following rejections by the
Examiner:
I. claims 1-6, 8-15, and 17 under 35 U.S.C. § 103(a) as unpatentable
over Kuusio and Milner; and
II. claims 1-6, 8-15, and 17 under 35 U.S.C. § 103(a) as unpatentable
over Kuusio and Babu.
OPINION
Appellants argue all of the claims together in contesting the rejections.
Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011), we select
claim 17 as representative.
The issue raised in this appeal is whether the Examiner erred in
determining it would have been obvious to modify Kuusio’s method by
“gasifying a solid wood-based material in a gasifier to produce a
combustible gas, wherein the solid wood-based material includes at least one
of a group consisting of wood, wood chips, bark chips, hogged wood, planer
shavings, saw dust and wood-based forest residues” as taught by Milner or
Babu and feeding the combustible gas to the superheating boiler 22, either in
addition to or in place of the combustible gas produced by gasifying waste
liquor, for combustion to superheat the steam generated in the waste liquor
recovery boiler 18. See Ans. 4, 6, 7; App. Br. 14-16; Reply Br. 3.
Appellants allege that the Examiner’s rejections are substantially the
same rejection reversed by the Board in the prior appeal1. App. Br. 13;
Reply Br. 1-2. We disagree with this characterization. The rejection

1 Ex parte Saviharju, No. 2007-003789 (BPAI Jul. 13, 2009), http://e-
foia.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2007003789-07-
10-2009-1.
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reversed by the Board was based on the teachings of Kuusio alone, not on a
combination of Kuusio with prior art disclosed in Appellants’ Specification.
See Reply Br. 2 (characterizing Milner and Babu as cumulative to prior art
discussed in paragraph [0007] of Appellants’ Specification). The rejections
before us in the present appeal are based on Kuusio in combination with
Milner and on Kuusio in combination with Babu.
The Examiner correctly found that Kuusio discloses a method of
recovering energy from pulp processes, the method comprising combusting
waste liquor (black liquor) in a furnace (waste liquor recovery boiler 18) to
generate flue gases (col. 7, ll. 7-9), recovering heat from the flue gases to
produce saturated steam (col. 7, ll. 15-18), gasifying a solid wood-based
material (e.g., waste liquor) in a gasifier 16 to produce a combustible gas
(col. 7, ll. 21-23), and burning at least a part of the combustible gas in
superheating boiler 22 to produce superheated steam (col. 7, ll. 23-25, 37-
42).
Milner teaches gasifying wood, including, for example, wood from a
log stock-pile, to produce methane which “is used as plant fuel for
generating and superheating steam.” Col. 3, ll. 46-47; col. 8, ll. 8-58.
Babu teaches gasifying cellulosic materials including plants, trees, and
their wastes to produce fuel gases, such as methane, which can be burned in
boilers “to generate steam which in turn could be used to generate
electricity.” Col. 1, ll. 14-27; col. 3, ll. 7-15; col. 4, ll. 29-35.
The Examiner determined it would have been obvious to include, in
the material to be gasified in Kuusio’s gasifier, solid wood-based material
including “at least one of a group consisting of wood, wood chips, bark
chips, hogged wood, planer shavings, saw dust and wood-based forest
residues” as taught by either Milner or Babu “for the purpose of producing
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combustible gases so that the supply of such gases is increased using waste
materials which reduces operating costs.” Ans. 4, 6. According to the
Examiner, the simple substitution of a solid wood based material as taught
by Milner or Babu for the waste liquor used in Kuusio is simply an obvious
substitution of one solid wood based material for another to generate the fuel
gas in the gasifier. Ans. 7. Further, the Examiner reasoned that such
substitution provides for Kuusio’s gasifier yet another source of waste
material that is readily available at such pulp mill sites. Id.
Much of Appellants’ argument is predicated on the assertion that
“Milner and Babu do not suggest that bark be substituted for the waste liquor
disclosed in Kuusio.” App. Br. 16. The scope of that line of argument is not
commensurate with the scope of representative claim 17, which does not
specifically require gasification of bark. See App. Br. 14 (noting that
“[i]ndependent claim 17 is similar to claim 1 but expands the types of wood-
based products from bark to include the solids disclosed in paragraph 0010
of the original application”); id. at 15 n. 1 (stating that “[f]or purposes of this
argument, claim 17 is similar to claim 1”). Nevertheless, in any event,
Appellants admit that “Babu and Milner teach methods for gasifying bark to
produce methane.” Reply Br. 2-3.
Obviousness does not require that Milner or Babu suggest that the
solid wood-based materials gasified in the gasification processes disclosed in
Milner and Babu be substituted for the waste liquor disclosed in Kuusio, as
Appellants’ argument implies. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 419 (2007) (stating “[t]he obviousness analysis cannot be confined by a
formalistic conception of the words teaching, suggestion, and motivation, or
by overemphasis on the importance of published articles and the explicit
content of issued patents”). Instead, the relevant inquiry is whether the
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Examiner has set forth “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at
418).
The Examiner articulated a reason for the substitution, namely, to
provide another source, readily available at pulp mill sites, for combustion
gases for use in superheating the steam. The Examiner’s articulated
reasoning has rational underpinnings, because Milner and Babu both teach
gasifying the solid wood-based materials to produce methane, which Milner
teaches can be used as fuel for generating and superheating steam and which
Babu teaches can be burned in boilers to generate steam which in turn could
be used to generate electricity. Further, while Kuusio teaches that the same
fuel, for example, black liquor, which is combusted in the recovery boiler
may be processed by gasifying to provide fuel for the separate superheating
boiler, Kuusio also contemplates use of other fuels in the superheating
boiler. Col. 3, ll. 55-62; col. 4, ll. 64-67.
Appellants argue that Kuusio teaches away from gasifying bark by
disclosing an auxiliary bark-fired boiler that is separate from the
superheating boiler. App. Br. 15-16; Reply Br. 3. We do not agree. “A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994). Prior art does not teach away from claimed subject matter merely by
disclosing a different solution to a similar problem unless the prior art also
criticizes, discredits or otherwise discourages the solution claimed. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Kuusio teaches using a bark-
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fired boiler, separate from the superheating boiler, to produce additional
high pressure steam. Col. 8, ll. 51-52, 56-61; col. 9, ll. 19-20, 31-37.
However, Kuusio does not discourage also gasifying bark to produce
combustion gases for the superheating boiler.
For the above reasons, Appellants do not apprise us of error in the
Examiner’s determination that it would have been obvious to modify
Kuusio’s method by gasifying a solid wood-based material as taught by
Milner or Babu in a gasifier to produce a combustible gas and feeding the
combustible gas to the superheating boiler 22, either in addition to or in
place of the combustible gas produced by gasifying waste liquor, for
combustion to superheat the steam generated in the waste liquor recovery
boiler 18. We thus sustain the rejections of claim 17 and of claims 1-6 and
8-15, which are grouped with claim 17, as unpatentable over Kuusio and
Milner and as unpatentable over Kuusio and Babu.
DECISION
The Examiner’s decision rejecting claims 1-6, 8-15, and 17 is
affirmed.
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

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