Ex Parte Bruck et al

Board of Patent Appeals and Interferences

Jul 22, 2009

10308078 (B.P.A.I. Jul. 22, 2009)

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

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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

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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

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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

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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

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