Icon Scientific LimitedDownload PDFPatent Trials and Appeals BoardAug 5, 20212020005215 (P.T.A.B. Aug. 5, 2021) Copy Citation 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. 15/499,284 04/27/2017 Kevin Fogarty ABELP0101WOUSA 9057 23908 7590 08/05/2021 RENNER OTTO BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE NINETEENTH FLOOR CLEVELAND, OH 44115 EXAMINER GRAHAM, CHANTEL LORAN ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 08/05/2021 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): ipdocket@rennerotto.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEVIN FOGARTY, DAVID HOPE, DAVE THOMPSON, and BOB BIRCHMORE Appeal 2020-005215 Application 15/499,284 Technology Center 1700 Before LINDA M. GAUDETTE, JOHN E. SCHNEIDER, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 11–20. See Final Act. 1. We have 1 In our Decision, we refer to the Specification (“Spec.”) of Application 15/499,284 filed Apr. 27, 2017 (“the ’284 App.”); the Final Office Action dated May 16, 2019 (“Final Act.”); the Appeal Brief filed Nov. 18, 2019 as revised Jan. 2, 2020 (“Appeal Br.”); the Examiner’s Answer dated Apr. 16, 2020 (“Ans.”); and the Reply Brief filed June 16, 2020 (“Reply Br.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Icon Scientific Limited as the real party in interest. Appeal Br. 2. Appeal 2020-005215 Application 15/499,284 2 jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. CLAIMED SUBJECT MATTER The claims are directed to an apparatus for mixing additives into fuel at a predictable concentration. Spec. 1, first paragraph. Claim 11, reproduced below from the Claim Appendix of the Appeal Brief, illustrates the claimed subject matter: 11. An apparatus adapted for providing a fuel meeting a predetermined specification of properties, the apparatus comprising: a blending system comprising a plurality of cylinders for incorporating a liquid additive into a liquid fuel in metered proportions to provide a mixed additive and fuel; a sample line for taking off a sample of the mixed additive and fuel for testing; a tester that measures properties of the sample of the mixed additive and fuel; and a processor that determines whether the measured properties meet the predetermined specification of properties or whether the sample contains an incorrect amount of the additive; and adjusts the metered proportions of the fuel and the additive when the processor determines that the sample contains an incorrect amount of the additive. REFERENCES The Examiner relies on the following prior art in rejecting the claims on appeal: Name Reference Date Tsangaris et al. (“Tsangaris”) US 2008/0147241 A1 June 19, 2008 Mattingly et al. (“Mattingly”) US 2010/0175313 A1 July 15, 2010 Appeal 2020-005215 Application 15/499,284 3 REJECTIONS The Examiner maintains the following rejections under 35 U.S.C. § 103(a): (1) claims 11–18 and 20 as obvious over Mattingly; and (2) claim 19 as obvious over Mattingly in view of Tsangaris. Final Act. 4–8. OPINION Rejection of claims 11–80 and 20 as obvious over Mattingly We first address the rejection of claim 11, the sole independent claim. The Examiner rejects claim 11 as obvious over Mattingly. Final Act. 4–7. Appellant does not identify error in this rejection. Claim 11 requires, in general, an apparatus comprising a blending system, a sample line, a tester, and a processor. Appeal Br. 19 (Claims App.). The claimed “blending system compris[es] a plurality of cylinders for incorporating a liquid additive into a liquid fuel in metered proportions to provide a mixed additive and fuel.” Appeal Br. 19 (Claims App.). In relation to the blending system, Mattingly teaches the following: a blending system (“the blending unit can comprise (i) a blending control and (ii) a gasoline injector, an ethanol injector, and a butane injector, and the blending control can . . . adjust the ratio of butane, gasoline, and ethanol blended,” paragraph 58); a plurality of cylinders (“gasoline supply 110 is stored in one or more gasoline tanks 255,” paragraph 70); and incorporating a liquid additive (ethanol) into a liquid fuel (gasoline) in metered proportions to provide a mixed additive and fuel (“A gasoline sample is drawn from the gasoline stream and is blended with the ethanol sample outside an analyzing system,” paragraph 74). Therefore, Mattingly teaches the claimed blending system. Appeal 2020-005215 Application 15/499,284 4 Claim 11 requires a sample line for taking off a sample of the mixed additive and fuel for testing. Appeal Br. 19 (Claims App.). Mattingly teaches a sample of gasoline is drawn from an outlet line . . . and into a sample selection station . . . . At the same time, a sample of ethanol is drawn from an ethanol supply . . . through an outline line . . . . The gasoline sample and ethanol sample are then drawn into a blending skid . . . , which combines the samples into a single sample stream [which] passes through a static mixer . . . , and enters an analyzer. Mattingly ¶ 71. Thus, the claimed sample line for taking a sample of the mixture for testing reads on Mattingly’s teaching that the additive (ethanol) and the fuel (gasoline) are mixed into a single sample stream and pass into an analyzer. The tester of claim 11 measures properties of the sample of the mixed additive and fuel. Appeal Br. 19 (Claims App.). Mattingly teaches “an analyzer . . . , which determines the volatility of the [mixed] sample.” Mattingly ¶ 71. Claim 11’s tester reads on Mattingly’s analyzer. The processor of claim 11 determines whether the measured properties meet the predetermined specification of properties or whether the sample contains an incorrect amount of the additive; and adjusts the metered proportions of the fuel and the additive when the processor determines that the sample contains an incorrect amount of the additive. Appeal Br. 19 (Claims App.). It is this limitation on which Appellant focuses the argument. The Specification does not contain the word “processor.” See generally Spec. The Specification describes “control unit 20,” which is “based on a rugged fan-less industrial PC with solid state memory” and Appeal 2020-005215 Application 15/499,284 5 “operates under the Linux operating system.” Id. 9, ll. 15–18. The control unit does not control the cylinder operation, but monitors all the associated parameters. Id. 9, ll. 25–27. The Specification states that the method of the invention may comprise the step of adjusting the metered proportions of the fuel and the additive where testing reveals that the sample contains an incorrect amount of additive, but provides no structure associated with such adjusting. See id. 2, l. 35–3, l. 2. Only when the sample contains an incorrect amount of the additive must the metered proportions of the fuel and the additive be adjusted. See Appeal Br. 19 (Claims App.). In other words, no adjustment to the metered proportions of the fuel and the additive is performed unless the sample contains an incorrect amount of the additive. See In re Schulhauser, Appeal 2013-007847, 2016 WL 6277792, at *4 (PTAB April 28, 2016) (precedential) (holding that, given claim language at issue requiring condition precedent, certain recitations need not be performed if condition precedent is not met). The claimed processor is a generic processor that need only determine whether or not the measured properties meet a predetermined specification. “It is elementary that the mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art.” In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Choosing to define an element functionally, i.e., by what it does, carries with it a risk: Where there is reason to conclude that the structure of the prior art is inherently capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from Appeal 2020-005215 Application 15/499,284 6 the prior art structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); see also In re Hallman, 655 F.2d 212, 215 (CCPA 1981). In this obviousness rejection, the Examiner points out: [Mattingly’s] analyzing system can include (i) a sample control and (ii) a gasoline sample piston pump and an ethanol sample piston pump, and the sample control can adjust the ratio of the gasoline sample and the ethanol sample blended upstream of the analyzing unit with the gasoline sample piston pump and the ethanol sample piston pump . . . The analyzing system can control the blending of the sample with metered valves instead of piston pumps, and the blending unit can adjust the ratio of butane, gasoline, and ethanol with metered valves instead of injectors. Ans. 13–14 (citing Mattingly ¶ 58). The Examiner determines that “a skilled oil formulator would recognize and be motivated to use the apparatus and process of MATTINGLY to be adapted for providing a fuel meeting a predetermined specification of properties.” Final Act. 7. This amounts to no more than combining prior art elements according to known methods to yield predictable results, simple substitution of one known element for another, and/or use of known techniques to improve similar devices in the same way—all indicia of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. In the Reply Brief, Appellant argues for the first time that Mattingly lacks a feedback loop. Reply Br. 1–2. The Specification contains neither the word “feedback” nor the word “loop.” See generally Spec. Instead, the Specification states “[w]here necessary, the method may further comprise the step of adjusting the metered proportions of the fuel and the additive where testing reveals that the sample contains an incorrect amount of Appeal 2020-005215 Application 15/499,284 7 additive.” Id. at 2, ll. 35–36. Mattingly discloses analyzing a sample and adjusting a final mixture based on the analysis. In addition, Mattingly’s disclosure that “the sample control can adjust the ratio of the gasoline sample and the ethanol sample blended upstream of the analyzing unit” is sufficient teaching of the feedback loop now urged by Appellant. Mattingly ¶ 58. We sustain the rejection of claim 11 as obvious over Mattingly. Claim 15 Claim 15 depends from claim 14, which depends from claim 13, which depends from claim 11. Appeal Br. 19 (Claims App.). As a result, claim 15 requires, inter alia, “a plurality of cylinders for incorporating a liquid additive into a liquid fuel in metered proportions to provide a mixed additive and fuel,” “wherein each cylinder contains a piston” and “wherein, in use, the piston of each cylinder is driven solely by the pressure of fluid entering the cylinder.” Id. Appellant argues that it is not aware of piston pumps wherein the cylinders are driven solely by the pressure of fluid entering the cylinder, and that such would not be considered to be a pump. Id. at 15. In response, the Examiner finds that Mattingly teaches the claimed cylinders via gasoline tanks, which include piston and lines. Ans. 13 (citing Mattingly ¶ 70). Appellant does not respond to this finding in the Reply Brief. See generally Reply Br. The Examiner makes a finding, to which Appellant provides only attorney argument. It is well settled that arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, Appeal 2020-005215 Application 15/499,284 8 100 F.3d 135, 139–40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). On the record before us, we sustain the rejection of claim 15 as obvious over Mattingly. Claim 16 Claim 16 depends from claim 13, which depends from claim 11. Appeal Br. 19–20 (Claims App.). As a result, claim 16 requires, inter alia, “wherein the blending system comprises a primary cylinder and at least one secondary cylinder, wherein the pistons in the secondary cylinders are arranged to operate in synchrony with the piston in the primary cylinder.” Id. Appellant argues “Mattingly has not been found to disclose these features, and the Examiner has not clearly indicated how the features of claim 16 are disclosed or suggested by Mattingly.” Id. at 15. “[T]he patent examiner must first set forth a prima facie case, supported by evidence, showing why the claims at issue would have been obvious in light of the prior art.” ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1365 (Fed. Cir. 2016); see also In re Brandt, 886 F.3d 1171, 1176 (Fed. Cir. 2018) (describing the prima facie framework as well). However, no findings related to claim 16’s recitations are stated in either the Final Action or the Answer. See generally Final Act., Ans. Therefore, we do not sustain the rejection of claim 16 as obvious over Mattingly. Claim 17 Claim 17 depends from claim 16 and further requires Appeal 2020-005215 Application 15/499,284 9 wherein each cylinder comprises a first inlet and a second inlet, one at each end of the cylinder, and a valve which in use alternately directs the fuel or additive to the first inlet or the second inlet, wherein the primary cylinder comprises at least one proximity switch, arranged to operate the valve in the primary cylinder when the piston approaches the end of the primary cylinder. Appeal Br. 20 (Claims App.). Appellant argues “Mattingly has not been found to disclose these features, and the Examiner has not clearly indicated how the features of claim 17 are disclosed or suggested by Mattingly.” Id. at 15–16. As with claim 16, no findings related to claim 17’s recitations are stated in either the Final Action or the Answer. See generally Final Act.; Ans. Therefore, we do not sustain the rejection of claim 17 as obvious over Mattingly. Claim 18 Claim 18 depends from claim 17 and further requires “wherein the proximity switch in the primary cylinder is also arranged to operate the valves in the secondary cylinders.” Appeal Br. 20 (Claims App.). Appellant argues “Mattingly has not been found to disclose these features, and the Examiner has not clearly indicated how the features of claim 17 are disclosed or suggested by Mattingly.” Id. at 16. No findings related to claim 18’s recitations are stated in either the Final Action or the Answer. See generally Final Act.; Ans. Therefore, we do not sustain the rejection of claim 18 as obvious over Mattingly. Claim 20 Appeal 2020-005215 Application 15/499,284 10 Claim 20 depends from claim 11 and further requires “wherein the cylinders are mounted inside a temperature controlled enclosure.” Appeal Br. 20 (Claims App.). Appellant argues “Mattingly has not been found to disclose this feature, and the Examiner has not clearly indicated how the feature of claim 20 is disclosed or suggested by Mattingly.” Id. at 16. No findings related to claim 20’s recitations are stated in either the Final Action or the Answer. See generally Final Act.; Ans. Therefore, we do not sustain the rejection of claim 20 as obvious over Mattingly. Rejection of claim 19 as obvious over Mattingly in view of Tsangaris Claim 19 depends from claim 11 and further requires “wherein the apparatus comprises a heat exchange, and the fuel and the additive are put through opposite sides of the heat exchanger prior to mixing.” Appeal Br. 20 (Claims App.). The Examiner finds that Mattingly discloses the process of claim 11, but is silent regarding the apparatus comprising a heat exchanger. Final Act. 7. The Examiner finds that Tsangaris teaches a control system for the conversion of carboneous feedstock into fuel with the use of heat exchangers, configured to receive fuel and additive at opposite ends. Id. at 8. The Examiner determines that it would have been obvious to one of ordinary skill in the art to modify the means for heat in Mattingly’s process to include Tsangaris’s heat exchangers. Id. Appellant argues that Tsangaris has nothing to do with the mixing of additives into a fuel and is non-analogous art. Appeal Br. 17. “Whether a reference in the prior art is ‘analogous’ is a fact question.” In re Clay, 966 F.2d 656, 658 (Fed. 1992). The scope of analogous art is to Appeal 2020-005215 Application 15/499,284 11 be construed broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (quoting KSR, 550 U.S. at 420: “[F]amiliar 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.” (emphasis added)). To label a reference as analogous art “merely connotes that it is relevant to a consideration of obviousness under § 103 as ‘prior art.’” In re Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985). On the record before us, Appellant does not show that Tsangaris is non-analogous art. Therefore, we sustain the rejection of claim 19 as obvious over Mattingly in view of Tsangaris. CONCLUSION The Examiner’s rejections of claims 11–15 and 19 are sustained. The Examiner’s rejection of claims 16–18 and 20 is not sustained. More specifically, DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 11–18, 20 103(a) Mattingly 11–15 16–18, 20 19 103(a) Mattingly, Tsangaris 19 Overall Outcome 11–15, 19 16–18, 20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED IN PART Copy with citationCopy as parenthetical citation