Appeal No. 1996-3826
Application 08/222,477
We here considered the phrase “combustible in an internal combustion engine” in the preamble of claims
1 (product) and 13 (method) in the context of the claimed invention as a whole, including consideration
thereof in light of the specification, and find that this limitation is not necessary to characterize the
aqueous fuels and methods of preparing the same in order to give meaning to these claims, or any of
dependent product claims 2, 3, 6 and 31 through 33 or dependent method claims 23 and 24, in order
to properly define the invention. Thus, the phrase is not a claim limitation in any of these claims and
therefore constitutes a statement of intended use. We further find that the phrase does not appear in
claim 36 (method) or dependent claim 43 (product). See generally, In re Fritch, 972 F.2d 1260,
1262, 23 USPQ2d 1780, 1781 (Fed. Cir. 1992) (citing Perkin-Elmer Corp. v. Computervision
Corp., 732 F.2d 888, 896, 221 USPQ 669, 675 (Fed. Cir.), cert. denied, 469 U.S. 857 [225 USPQ
792] (1984)); Corning Glass Works v. Sumitomo Elect. U.S.A., Inc., 868 F.2d 1251, 1257, 9
USPQ2d 1962, 1966 (Fed. Cir. 1989), In re Stencel, 828 F.2d 751, 754-55, 4 USPQ2d 1071,
1073 (Fed. Cir. 1987).
We recognize that appellant has specifically defined the term “internal combustion engine” in the
specification (page 3) to “encompass any engine in which carbonaceous fuel is combusted with oxygen
in one or more combustion chambers of the engine.” We find that one of ordinary skill in this art would
consider that the scope of this definition is indeed broad, particularly in view of the scope of the
examples of “such known engines,” which include turbine and diesel engines (id.), and thus would
include engines in which the aqueous fuel is introduced into a combustion chamber by any means,
including fuel injection devices which spray a fuel and air mixture into said chamber (id., e.g., page 10,
lines 12-13). Thus, for example, the definition would encompass the “combustion turbine” engines, in
which the aqueous fuel is injected into the combustion chamber, that use the oil-in-water type aqueous
fuel taught by Dubin (e.g., col. 1, lines 64-66. col. 3, lines 35-37, and col. 4, line 66, to col. 5, line 6 ).
We further find that one of ordinary skill in this art would divine from this “combustion chamber”
review, which, in the interest of administrative and judicial economy, is an appropriate course wherever
reasonably possible. Cf. In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962); Ex
parte Saceman, 27 USPQ2d 1472, 1474 (Bd. Pat. App. & Int. 1993); Ex parte Ionescu, 222
USPQ 537, 540 (Bd. App. 1984).
- 5 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007