Ex Parte Bruck et alDownload PDFBoard of Patent Appeals and InterferencesJul 22, 200910308078 (B.P.A.I. Jul. 22, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ROLF BRUCK and PETER HIRTH ____________ Appeal 2009-001250 Application 10/308,078 Technology Center 1700 ____________ Decided1: July 22, 2009 ____________ Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-001250 Application 10/308,078 2 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1, 2, and 4-16. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellants describe a casing tube for retaining a catalytic converter having a second zone (3) with a larger diameter than first (2) and third (4) zones such that the second zone forms an annular cavity (15) that retains air to prevent the dissipation of heat (Fig. 2; Spec. 10:23-26; 11:1-21). Claim 1 is illustrative: 1. A casing tube, comprising: a first end face; a first zone disposed downstream of and in a vicinity of said first end face, said first zone having a first internal diameter and an axial length of less than 5 mm; a second zone disposed downstream of said first zone, said second zone having a second internal diameter being greater than said first internal diameter and an axial extent of 10-40 mm for preventing dissipation of heat; a second end face; and a third zone disposed between said second zone and said second end face, said third zone having a third internal diameter equal to said first internal diameter. The Examiner relies on the following prior art references as evidence of unpatentability: Usui 5,104,627 Apr. 14, 1992 Iida 5,278,125 Jan. 11, 1994 Breuer 5,413,767 May 9, 1995 Appeal 2009-001250 Application 10/308,078 3 Degen2 DE 10032023 Jan. 10, 2002 The rejections as presented by the Examiner are as follows: 1. Claims 1, 2, 4-7, and 9-12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Breuer in view of Degen. 2. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Breuer in view of Degen and Iida. 3. Claims 13-16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Breuer in view of Degen and Usui. Appellants contend that one of ordinary skill in the art would not provide a bead (i.e., a second zone) in Breuer having the claimed length (i.e. 10-40 mm) because such would destroy the intended functions of the bead, which include strength and welding functions (App. Br. 10-13). Appellants contend that one of ordinary skill in the art would select appropriate dimensions of the bead for the particular intended use (i.e., strength or welding), which would not allow for the dimensions suggested by the Examiner (Reply Br. 5-6). ISSUE Have Appellants shown that the Examiner erred in determining that there is a reason to modify Breuer’s bead on casing 12 to have the claimed length of 10 mm to 40 mm? We decide this issue in the affirmative. 2 There is no dispute that Degen is not available as prior art due to the publication date (App. Br. 7; Ans. 6-7). We base our understanding of Degen on the translation of record. Appeal 2009-001250 Application 10/308,078 4 PRINCIPLE OF LAW During examination, the examiner bears the initial burden of establishing a prima facie case of obviousness. In re Kumar, 418 F.3d 1361, 1366 (Fed. Cir. 2005). FACTUAL FINDINGS 1. Breuer is silent regarding the width of the bead formed on casing 12 (Breuer generally). Breuer does not disclose that the width of the bead is a result-effective variable or otherwise provides a reason for adjusting the width of the bead. 2. Breuer appears to disclose that the bead on casing 12 serves as a stop for casing 9 when casing 9 is slid onto casing 12 to prevent the honeycomb structures contained within the casings from touching (Breuer, col. 2, ll. 46-55). ANALYSIS The Examiner finds that Breuer fails to teach the particular claimed lengths of the first and second zones (Ans. 2-3). However, the Examiner concludes that it would have been obvious to select appropriate dimensions for each zone of the casing tube based on the “suitability for the intended use as a matter of obvious design choice and absent a showing of any unexpected results” (Ans. 4). The Examiner explains that Breuer discloses using the bead as a stop to prevent honeycomb bodies contained within the casings 9 and 12 from touching when assembled, such that determining the lengths of the various zones would have been obvious (Ans. 8). However, the Examiner has not provided a credible reason why one of ordinary skill in the art would modify the bead (i.e., second zone) length Appeal 2009-001250 Application 10/308,078 5 based on the intended use (i.e., the stopping function) to have the claimed length (i.e., 10-40 mm). The Examiner’s “obvious design choice” rationale fails to indicate why one of ordinary skill in the art would have selected the claimed length range for the second zone to perform the stopping function, absent impermissible hindsight. Moreover, it is unclear to us, and the Examiner has not explained, how changing the length of the bead would affect the stopping the function. It appears to us that if changing the stopping distance between casings 9 and 12 would have been desired, one of ordinary skill would have simply designed casing 12 to have the bead at a different location, rather than changing the length of the bead. The Examiner has not established that Breuer’s bead length is a result-effective variable (FF 1), such that it would have been obvious to optimize the bead length. Therefore, on this record, Appellants have shown that the Examiner erred in determining that there is a reason to modify Breuer’s bead on casing 12 to have the claimed length of 10 mm to 40 mm. We reverse all the Examiner’s § 103 rejections of claims 1, 2, and 4-16 over the combined teachings of Breuer in view of Degen and further in view of Iida or Usui. DECISION The Examiner’s decision is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). REVERSED cam Appeal 2009-001250 Application 10/308,078 6 LERNER GREENBERG STEMER LLP P O BOX 2480 HOLLYWOOD FL 33022-2480 Copy with citationCopy as parenthetical citation