Icon Scientific Limited

Patent Trials and Appeals Board

Aug 5, 2021

2020005215 (P.T.A.B. Aug. 5, 2021)

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.
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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
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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.
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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
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“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
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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
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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,
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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
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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
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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
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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