Appeal No. 1996-3826
Application 08/222,477
composition that contains an alcohol, lubricity enhancer and stabilizer additive, and points to examples
of lubricity enhancers, emulsifiers and stabilizer additives discloses in the specification (id., page 20).
Appellant also points out that a number of limitations contained by, e.g., claim 6, are not shown by
Kawaai (id., pages 20-21). Appellant further contends that that there is no disclosure in Dubin of a
method of preparing aqueous fuels which would fall within claims 13 and 36 and points out that the
claimed methods are critical as set forth on pages 3 and 16-18 of the specification (id., pages 21-23).
Appellant further submits, with respect to claims 33 and 43, that none of the references disclose
the methods by which the claimed aqueous fuels are made, that such methods provide the fuels with
“qualities not possessed by fuel compositions resulting from mere mixture of the stated components” and
“[t]here is no evidence in the record that a method of preparation different than that claimed by
applicant would produce the same or even a similar result” (brief, pages 24-27).10
We cannot agree with appellant’s position. We fail to find in Dubin any teaching which would
have lead one or ordinary skill in this art away from using water-in-oil type emulsified fuels. Indeed, as
pointed out by the examiner (answer, page 6), and as we found above, Dubin distinguishes between oil-
in-water and water-in-oil fuel emulsions and teaches that either emulsion can be the separate fuel source
used. We also found above that the “combustion turbine” engines set forth in Dubin fall within the broad
definition of “internal combustion engine” in appellant’s specification and that the aqueous fuel
composition of either Dubin or Kawaai can be spray combusted in the same. Thus, one of ordinary skill
10 We note appellant’s contention with respect to the rejection of claims 28 through 30, 33 through 35
and 41 through 45 over Kawaai and Dubin, that while paragraph 6 of the final rejection of October 24,
1995 (Paper No. 15; pages 6-7) stated the rejection, no further explanation was given for the rejection
therein, and, therefore, a complete response to the rejection is prevented (brief, page 24). We observe
that this contention appears for the first time in the brief as no such contention appears in the response
after final rejection of November 13, 1995 (Paper No. 16), in which argument was presented with
respect to this ground of rejection (pages 6-7). Indeed, we note that appellant did not take other action
in response to the examiner’s position in the answer with respect to this matter (pages 9-10). We find
the ground of rejection sufficiently clear from the record in view of the examiner’s statements in the final
rejection and in the Office action of June 1, 1995 (Paper No. 11, pages 6-7) such that our review
thereof does not require remanding the case to the examiner for further consideration or explanation.
See 37 CFR § 1.196(a). We point out that the Board is not the appropriate forum in which to raise this
issue.
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