Chu, In re, 95-1038

Decision Date14 September 1995
Docket NumberNo. 95-1038,95-1038
PartiesIn re Paul CHU, William Downs, John B. Doyle and Peter V. Smith.
CourtU.S. Court of Appeals — Federal Circuit

Daniel S. Kalka, McDermott Incorporated, argued for appellant. Of counsel was Peter C. Michalos, Notaro and Michalos P.C.

Nancy J. Linck, Office of Solicitor, Patent and Trademark Office, argued for appellee. With her on the brief were Albin F. Drost, Deputy Solicitor and Scott A. Chambers, Associate Solicitor. Of counsel was La Vonda R. De Witt.

Before RICH and NEWMAN, Circuit Judges, and SKELTON, Senior Circuit Judge.

RICH, Circuit Judge.

Paul Chu, William Downs, John B. Doyle, and Peter V. Smith (collectively Chu) appeal the August 9, 1994 decision of the Board of Patent Appeals and Interferences (Board) of the United States Patent and Trademark Office (PTO) affirming the Examiner's final rejection of claims 1, 2, 12, and 14 of patent application Serial No. 07/593,546 (the '546 application). 1 We reverse.

I. Background
A. The Invention

Chu's invention relates to an apparatus used to control emissions, such as sulfur oxides (SO subx ), oxides of nitrogen (NO subx ), and particulates, such as fly ash, from fossil fuel boilers. Fig. 1 of the '546 application is reproduced below.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The apparatus includes a fossil fuel fired boiler 10 containing an economizer 12 which receives combustion flue gas therefrom. The flue gas is input via exhaust duct 14 to a fabric filter house or baghouse 16 where it is cleaned, as described in greater detail below. Ammoniacal compounds are also input to the baghouse 16 through duct 14 at point 18. Sorbent is input to the boiler 10 either upstream of the economizer 12 at point 20 or downstream of the economizer 12 at point 22 depending on the particular sorbent chosen. After exiting baghouse 16, the clean flue gas proceeds along duct 36 to heat transfer device 38 which lowers the exit gas temperature. The flue gas then exits along duct 40 to the stack 42 where it passes to the environment.

Fig. 2 of the '546 application is a partial cross section of baghouse 16.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The baghouse 16 contains suitable fabric filters, such as filter bags 26. A selective catalytic reduction (SCR) catalyst 24, not shown in Fig. 2, is incorporated into the baghouse 16. The SCR catalyst 24 is located in the exhaust plenum of the baghouse 16, or, preferably, inside the filter bags 26.

Figs. 6-9 show alternative embodiments of apparatus for placement of the SCR catalyst 24 within each filter bag 26 of the baghouse 16. Fig. 6 is exemplary and is reproduced below.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Fig. 6 shows a catalyst bed 44, or bag retainer, formed of concentric cylinders 46 and 48, each constructed of a porous material such as a perforated metal plate. The filter bag 26 encloses the bag retainer. The SCR catalyst 24 is placed in the space between cylinders 46 and 48. Flue gas flows up through the cylinders 46 and 48, as shown. The particulates and sorbent collect on the filter bags 26 to form filter cakes. To clean the filter bags 26 the '546 application discloses a pulse-jet cleaning system wherein a pulse of high-pressure air is blown into the bag retainer. The surface of each filter bag 26 is thereby cleaned and the filter cakes are discharged into a hopper 56.

Claim 1, the only independent claim at issue, recites:

1. An apparatus for controlling emissions of a fossil fuel fired boiler which produces flue gases containing SO subx , NO subx , and particulates, comprising:

a flue gas duct constructed so as to carry flue gases from a boiler to a stack for discharge;

a high-temperature pulse jet fabric filter house connected along the flue gas duct between the boiler and the stack constructed so as to remove particulate from the flue gas passing along the flue gas duct, said fabric filter house having a plurality of fabric filter bags contained therein with each of said fabric filter bags having a bag retainer situated therein;

a selective catalytic reduction catalyst positioned inside the bag retainer of each of said fabric filter bags in said filter house;

means for recovering heat connected along the flue gas duct downstream of said fabric filter house, said heat recovering means constructed so as to be heated by the flue gases in the flue gas duct;

means for injecting an ammoniacal compound into the flue gas duct upstream of said filter house; and

means for injecting sorbent into the flue gas duct upstream of the filter house whereby the sorbent reacts with SO subx , the particulates are removed in said fabric filter house, thus protecting the NO subx reduction catalyst from fly ash erosion and SO subx poisoning.

B. The Prosecution

The Examiner rejected claims 1, 2, 12, and 14 under 35 U.S.C. Sec. 103 (1988) as being unpatentable over U.S. Patent No. 4,871,522 issued to Doyle in view of U.S. Patent No. 4,874,586 issued to Szymanski et al. (Szymanski). The Examiner stated that Doyle discloses all elements of claim 1 but "fails to disclose a baghouse filters [sic] having a catalyst located within the filter, and is silent on specific baghouse filter design." The Examiner asserted, however, that Szymanski teaches "a baghouse filter similar to those of the instant claims" and that "[o]ne of ordinary skill in the art would have modified the [Doyle] apparatus to incorporate the baghouse filters of [Szymanski] to facilitate simultaneous removal of sulfur oxides and particulates on the filter and nitrogen oxides through the catalytic bed, disposed within the filters."

In response to the rejection, Chu first argued that the subject application "claims the benefit of the filing date as a continuation-in-part of [the Doyle patent]" such that the use of the Doyle patent "as a reference should be limited only to the new matter claimed in the continuation-in-part application."

As to the merits of the rejection, Chu contended that Doyle teaches placing the SCR catalyst in a heat exchanger downstream from the fabric filter house. Chu also argued that Szymanski "adds nothing to the foregoing reference since it merely teaches ... incorporating an SCR catalyst into the filter fabric of a filter bag." Chu maintained that neither Doyle nor Szymanski teaches or suggests positioning the SCR catalyst inside the bag retainer of the filter bags as claimed. This feature is significant, according to Chu, because the bag retainers provide support and prevent the filter bags from collapsing during pulse-jet cleaning.

C. The Board's Decision

The Board first addressed whether the Doyle patent is available as prior art against the '546 application. The Board concluded that "Doyle is available as a reference for its entire disclosure under 102(e)/103 as to the current application because it is the uncontroverted work of 'another' in this particular case." The Board reasoned that because the Doyle patent and the Chu application have different, albeit overlapping, inventive entities, the Doyle patent is necessarily the work of "another" as defined in 35 U.S.C. Sec. 102(e) (1988) and therefore available as prior art. That Chu claimed the benefit of Doyle's earlier filing date by claiming continuation-in-part (CIP) status under 35 U.S.C. Sec. 120 (1988) was found to be irrelevant, the Board stating that "an attempt to claim CIP status between applications which never shared the same inventive entity is unavailing as a means to overcome" a rejection under Sec. 103.

As to the merits of the Sec. 103 rejection, the Board agreed with the Examiner that Doyle discloses all the elements of independent claim 1 except an SCR catalyst positioned within a bag retainer. The Board found that Szymanski's relatively stiff meshed inner wall 32 is a bag retainer as that term would be understood by one of ordinary skill in the art. Thus, in Szymanski, the catalyst is located between the bag retainer 32 and the bag 30, whereas claim 1, by contrast, requires the catalyst to be "positioned inside the bag retainer."

The Board concluded that the change between situating the catalyst in between the bag and the bag retainer and within the bag retainer is a matter of "design choice" and affirmed the rejection of claim 1. As to dependent claims 2, 4, and 14, the Board held that as "appellants have not separately argued such claims with any reasonable degree of specificity apart from claim 1," those claims "will fall with claim 1." The rejection of claims 2, 4, and 14 was accordingly affirmed.

Chu appealed the Board's decision to this court. We have jurisdiction under 28 U.S.C. Sec. 1295(a)(4)(A) (1988).

II. Availability of Doyle as a Reference
A. Standard of Review

Statutory interpretation is a question of law which we review de novo. In re Kathawala, 9 F.3d 942, 945, 28 USPQ2d 1785, 1786 (Fed.Cir.1993). In appeals from PTO rejections, the Board's findings are reviewed under the clearly erroneous standard. In re Caveney, 761 F.2d 671, 674, 226 USPQ 1, 3 (Fed.Cir.1985).

B. Analysis

The threshold issue in this case is whether the Doyle patent is available as prior art against Chu's claims. Chu maintains that the instant application should be afforded the Doyle patent filing date with respect to "the disclosure of the Doyle application" because the instant application claims to be a CIP of the Doyle patent. According to Chu, affording Chu's application this filing date would remove the Doyle patent as a reference. However, the Board found, and the PTO argues on appeal, that Chu is not entitled to the benefit of the Doyle patent filing date because there is not the same inventive entity between the Doyle patent and the Chu application. We conclude that Doyle is a proper prior art reference, though not for the reasons advanced by the Board.

Section 104(b) of the Patent Law Amendments Act of 1984 struck...

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