DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This is the first office action on the merits in response to the above identified patent application filed on 06/23/2025. Claims 1-7 are pending and being examined.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2-4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding claim 2, the limitation “L/D > 5 is satisfied” is not bounded at its upper limit and therefore includes L/D ratios ranging from 5 to 10, 50, 100, and greater. The disclosure as originally filed does not enable such large L/D ratios.
Regarding claim 3, the limitation “wherein L/D ≥ 7.5 is satisfied” is not bounded at its upper limit and therefore includes L/D ratios ranging from 7.5 to 10, 50, 100, and greater. The disclosure as originally filed does not enable such large L/D ratios.
Regarding claim 4, the limitation “Af/Aa ≥ 0.1 is satisfied” is not bounded at its upper limit and therefore includes Af/Aa ratios ranging from 0.1 to 5, 10, 50, 100, and greater. The disclosure as originally filed does not enable such large Af/Aa ratios.
Regarding claims 2-4, when determining whether “undue experimentation” would have been needed to make and use the claimed invention the following factors, MPEP 2164.01(a), are considered: (A) the breadth of the claims – applicant claims a burner assembly comprising a fuel nozzle that includes an orifice provided on an upstream side of an outlet of the fuel nozzle such that: (1) a distance between the outlet and the orifice in the fuel nozzle is L and a orifice diameter of the orifice is D, L/D > 5 is satisfied (claim 2) and L/D ≥ 7.5 is satisfied (claim 3); and (2) a flow path area of the outlet of the fuel nozzle is Af and a flow path area of the air flow path at a position of the outlet of the fuel nozzle is Aa, Af/Aa ≥ 0.1 is satisfied (claim 4); (B) the nature of the invention – a burner assembly having a fuel nozzle with the following physical dimensional relationships: L/D > 5 (claim 2), L/D ≥ 7.5 (claim 3), and Af/Aa ≥ 0.1 (claim 4); (C) the state of the prior art – Isono (US 2016/0032842 A1) teaches in Fig. 5 a similar burner assembly comprising a fuel nozzle that includes an orifice (ref. no. “133”) provided on an upstream side of an outlet of the fuel nozzle; (E) the level of predictability in the art – low predictability – requiring extensive design and investment, validation and certification; (F) the amount of direction provided by the inventor – applicant's disclosure does not teach how to make the invention because the Specification merely repeats the claim language and the drawings are generic schematic not drawn to scale; (G) the existence of working examples - applicant has not stated whether or not a working example exists; and (H) the quantity of experimentation needed to make or use the invention based on the content of the disclosure – it has been held that “an adequate disclosure of a device may require details of how complex components are constructed and perform the desired function" [MPEP 2164.06(a)].
Accordingly, claims 2-4 are rejected for lack of enablement because their broad scope is not reasonably supported by the scope of enablement in the specification. In MagSil Corp. v. Hitachi Global Storage Technologies, Inc. 687 F.3d 1377, 103 USPQ2d 1769 (Fed. Cir. 2012), the Federal Circuit stated that “a patentee chooses broad claim language at the peril of losing any claim that cannot be enabled across its full scope of coverage,” finding “one skilled in the art could not have taken the disclosure in the specification regarding ‘change in the resistance by at least 10% at room temperature’ and achieved a change in resistance in the full scope of that term without undue experimentation.” 687 F.3d at 1381-82; MPEP 2161.0(III).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 5-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Isono (US 2016/0032842 A1).
Regarding claim 1, Isono teaches (Figs. 1-2 and 5) a burner assembly (shown in Fig. 1) comprising:
a plurality of burners (Fig. 1 shows a plurality of burners 4) for mixing fuel and air,
wherein each of the plurality of burners (4) includes
a mixing flow path (Fig. 2: flow path b/t 17 and 26) to which the air is supplied (air is supplied via air flow path 28), and
a fuel nozzle (20 – Figs. 2 and 5) that extends along a central axis of the mixing flow path inside the mixing flow path and is configured to inject the fuel, and
the fuel nozzle (20) is formed in a tubular shape (Fig. 5 shows fuel nozzle 20 as a cylindrical tube) and includes an orifice (133) provided on an upstream side (left side) of an outlet (24 – Figs. 2 and 5) at a tip (Fig. 2: portion of 20 extending to the right of 27) of the fuel nozzle (20).
Regarding claim 5, Isono teaches the invention as claimed and as discussed above for claim 1, and Isono further teaches (Figs. 1-2) a gas turbine combustor (Fig. 1: middle portion of 1) comprising:
the burner assembly (4 – Fig. 1) according to claim 1; and
a combustion cylinder (12 – Fig. 2) that forms a space, in which a flame is formed, on a downstream side (right side) of the burner assembly (4) – (as shown in Fig. 2, combustion cylinder 12 extends to the right of burner assembly 4 and forms a cylindrical flame tube).
Regarding claim 6, Isono teaches the invention as claimed and as discussed above for claim 5, and Isono further teaches (Figs. 1-2) a gas turbine (1 – Fig. 1) comprising:
a compressor (3 – Fig. 1);
a gas turbine combustor (4) that is configured to be supplied with air compressed by the compressor (3) and fuel and to combust the fuel to generate a combustion gas; and
a turbine (5 – Fig. 1) that is driven by the combustion gas generated by the gas turbine combustor (4),
wherein the gas turbine combustor (4) is the gas turbine combustor according to claim 5 (as discussed in the rejection of claim 5).
Regarding claim 7, Isono teaches the invention as claimed and as discussed above for claim 6, and Isono further teaches (Fig. 2) wherein the mixing flow path (flow path b/t 17 and 26) includes an air flow path (as evidenced by the presence of swirler 27) provided on an outer peripheral side of the fuel nozzle (20), and
when a density of the fuel at the outlet (24) of the fuel nozzle (20) is ρf, a flow speed of the fuel at the outlet (24) of the fuel nozzle (20) is Vf, a density of the air in the air flow path at a position (to the right of 27 and above 24) of the outlet (24) of the fuel nozzle (20) in an axial direction of the fuel nozzle (20) is ρa, and a flow speed of the air in the air flow path at the position (to the right of 27 and above 24) of the outlet (24) of the fuel nozzle (20) in the axial direction of the fuel nozzle (20) is Va at a time of a rated operation of the gas turbine (1 – Fig. 1), ρf x (Vf)2 < ρa x (Va)2 is satisfied (intended use – see below).
The limitation “when a density of the fuel at the outlet…at a time of a rated operation of the gas turbine, ρf x (Vf)2 < ρa x (Va)2 is satisfied” is a statement of intended use and the structure of the device as taught by Isono can perform the function. It has been held that “While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function”, In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959); “[A]pparatus claims cover what a device is, not what a device does” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), MPEP 2114 (I). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established, In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), MPEP 2112.01.
Examiner further notes that recitations regarding the fuel and air being used in the burner assembly (in this case, a fuel having density ρf and flow speed Vf, and an air having density ρa and flow speed Va) are an intended use recitation – “inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims”, In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935); see MPEP 2115. In this case, the fuel having parameters ρf and Vf and the air having parameters ρa and Va are considered the material or article worked upon and do not impart patentability to the claims, since the recitation of “ρf x (Vf)2 < ρa x (Va)2 is satisfied” is merely the material that the burner assembly works upon in its intended use.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Isono (US 2016/0032842 A1), in view of Han (US 2023/0194094 A1).
Regarding claim 2, Isono teaches the invention as claimed and as discussed above for claim 1, and Isono further teaches (Fig. 5) wherein, when a distance between the outlet (24) and the orifice (133) in the fuel nozzle (20) is L and an orifice diameter of the orifice (133) is D (as shown in Fig. 5, there is a length from 133 to 24, and the orifice 133 has a diameter).
However, Isono does not teach that L/D > 5 is satisfied.
Isono further teaches “the phases of flow rate fluctuation in the main nozzles 20 adjacent to each other may be shifted away from each other by changing the lengths in the direction of the axis line O of the cavity portion, the orifice portion, and the porous material, the sizes in the radial direction in the cavity portion and the orifice portion, the proportion of the pores in the porous material, or the like” (¶ [0077], ll. 6-12). Therefore, the size of the orifice portion in the radial direction (i.e., diameter D) is recognized as a result-effective variable, i.e., a variable which achieves a recognized result. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977); MPEP 2144.05(II)(B).
In this case, the recognized result is that the diameter D of the orifice portion can be varied in a design stage in order to provide for a specific phase of flow rate fluctuation, which affects combustion oscillation or dynamics (¶ [0009]).
Han teaches (Figs. 2 and 4) a similar burner assembly (80 – Fig. 2) comprising a fuel nozzle (76 – Fig. 2; 262 – Fig. 4) that includes an orifice (226 – Fig. 4) provided on an upstream side (left side) of an outlet (222) of the fuel nozzle (262); and further teaches:
“The volume or axial length with respect to the centerline axis 230 of the first segment 260 and the second segment 262 can be sized to mitigate the combustion dynamics within the fuel injector 240” (¶ [0042], ll. 30-33). Therefore, a distance between the outlet (222) and the orifice (226) in the fuel nozzle (i.e., distance L) is recognized as a result-effective variable, i.e., a variable which achieves a recognized result. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977); MPEP 2144.05(II)(B).
In this case, the recognized result is that the distance L can be varied in a design stage in order to mitigate the combustion dynamics within the fuel nozzle.
Since both distance L and diameter D have been shown to be result-effective variables, then the ratio L/D would also be a result-effective variable.
Therefore, since the general conditions of the claim, i.e. that the ratio L/D can be varied in a design stage to reduce combustion dynamics, were disclosed in the prior art by Isono and Han, it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to vary the ratio L/D to provide the claimed range/value of said ratio, as taught by Isono and Han, in order to provide a specific mitigation of combustion dynamics. It has been held that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP 2144.05(II)(A).
Furthermore, it is additionally noted that "[I]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions." In re Williams, 36 F.2d 436, 438 (CCPA 1929); MPEP 2144.05(II)(A).
Regarding claim 3, Isono, in view of Han, teaches the invention as claimed and as discussed above for claim 2, except for wherein L/D ≥ 7.5 is satisfied.
As discussed in the rejection of claim 2 above, the diameter D of the orifice portion and the distance L between the outlet and the orifice in the fuel nozzle have been shown to be result-effective variables, and therefore, the ratio D/L is also a result-effective variable.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to vary the ratio L/D such that L/D ≥ 7.5, as taught by Isono and Han, in order to provide a specific mitigation of combustion dynamics. It has been held that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP 2144.05(II)(A).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Isono (US 2016/0032842 A1), in view of Oskin (US 2009/0049838 A1).
Regarding claim 4, Isono teaches the invention as claimed and as discussed above for claim 1, and Isono further teaches (Fig. 2) wherein the mixing flow path (flow path b/t 17 and 26) includes an air flow path (as evidenced by the presence of swirler 27) provided on an outer peripheral side of the fuel nozzle (20), and
when a flow path area of the outlet (24) of the fuel nozzle (20) is Af and a flow path area of the air flow path at a position (to the right of 27 and above 24) of the outlet (24) of the fuel nozzle (20) in an axial direction is Aa (as shown in Fig. 2, outlet 24 has an area, and the air flow path radially surrounding fuel nozzle 20 at outlet 24 also has an area).
However, Isono does not teach that Af/Aa ≥ 0.1 is satisfied.
It is noted that Isono further teaches “the main injection hole 24 is formed to be larger by a size corresponding to pressure loss which increases due to the phase adjusting unit 133 composed of the orifice portion” (¶ [0057]), thereby showing that the area of outlet 24 (i.e., Af) may be varied in order to correspond to a specific pressure loss.
Oskin teaches (Figs. 2-3) a similar burner assembly (30 – Fig. 2) comprising a fuel nozzle (115 – Fig. 3) and an air flow path (120 – Fig. 3) provided on an outer peripheral side of the fuel nozzle (115); and further teaches:
“the flow area of the passage 115, 120 may be defined by the area of the outlet 135, 140 of the passage 115, 120. Therefore, in order to provide the increase in ratio of fuel to air to approximately 1 to 1 through the nozzle 70 for LHV fuel use, a total area of the air outlets 135 is substantially equal to a total area of the fuel outlets 140” (¶ [0023], ll. 5-10). In other words, if the area of outlet 140 is Af and the area of outlet 135 is Aa, then Af/Aa is approximately 1, which satisfies the relationship Af/Aa ≥ 0.1.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Isono such that Af/Aa ≥ 0.1 is satisfied, in order to provide an increase in ratio of fuel to air to approximately 1 to 1 through the fuel nozzle to allow for LHV fuel use, which utilizes the remaining energy within waste process gasses, as taught by Oskin (¶ [0023], ll. 7-9 and ¶ [0002], ll. 8-10).
Furthermore, Oskin’s teaching in ¶ [0023], ll. 5-10 shows that the ratio Af/Aa is recognized as a result-effective variable, i.e., a variable which achieves a recognized result. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977); MPEP 2144.05(II)(B).
In this case, the recognized result is that the ratio Af/Aa can be varied in a design stage in order to increase the fuel-to-air ratio of the burner assembly, which will allow the use of LHV fuel.
Therefore, since the general conditions of the claim, i.e. that the ratio Af/Aa can be varied in a design stage to increase the fuel-to-air ratio of the burner assembly, were disclosed in the prior art by Oskin, it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to vary the ratio Af/Aa to provide the claimed range/value of said ratio, as taught by Oskin, in order to provide a specific increase in the fuel-to-air ratio of the burner assembly, thereby allowing the use of LHV fuel. It has been held that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP 2144.05(II)(A).
Furthermore, it is additionally noted that "[I]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions." In re Williams, 36 F.2d 436, 438 (CCPA 1929); MPEP 2144.05(II)(A).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure: see attached form PTO-892 “Notice of References Cited”.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENRY NG whose telephone number is (571)272-2318. The examiner can normally be reached M-F 9:30 AM - 6:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Devon Kramer can be reached at 571-272-7118. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HENRY NG/Examiner, Art Unit 3741 /DEVON C KRAMER/Supervisory Patent Examiner, Art Unit 3741
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