Ex Parte Cutler et al

Board of Patent Appeals and Interferences

Sep 26, 2007

10400742 (B.P.A.I. Sep. 26, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLARD A. CUTLER and
TINGHONG TAO
____________

Appeal 2007-4331
Application 10/400,742
Technology Center 1700
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Decided: September 26, 2007
____________

Before THOMAS A. WALTZ, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the Examiner’s final rejection of
claims 1-18, the only claims that remain pending in this application. We
have jurisdiction pursuant to 35 U.S.C. §§ 6 and 134.

Appeal 2007-4331
Application 10/400,742

Appellants’ invention is directed to a catalyst support composed of a
porous ceramic material. The porous ceramic material includes a network of
interconnected pores having a narrow pore size distribution such that greater
than 85 percent of the total porosity of the material is from pores having a
pore size between 5 and 30 micrometers. Claim 1 is illustrative and
reproduced below:

1. A catalyst support for use in selective catalytic reduction
and comprising a honeycomb body composed of a porous ceramic
material, and including a plurality of parallel cell channels traversing
the body from a frontal inlet end to an outlet end thereof:

wherein the porous ceramic material is defined by a
total porosity greater than 45 vol. %, and a network of interconnected
pores with a narrow pore size distribution of pores having more than
85% of the total porosity has a pore size of greater than 5 micrometers
but less than 30 micrometers and a median pore size greater than 5
micrometers but less than 30 micrometers.

The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Merkel US 5,258,150 Nov. 2, 1993

Claims 1-18 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Merkel.1

1 A rejection under the first paragraph of 35 U.S.C. § 112 was presented in
the Final Office Action but is not repeated in the Answer. Hence, the § 112
rejection is considered as being withdrawn by the Examiner. See Ex parte
Emm, 118 USPQ 180, 181 (BPAI 1957).

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Appeal 2007-4331
Application 10/400,742

The Examiner points to Merkel’s description of a ceramic honeycomb
having a median pore size of about 5-40 micrometers and the further
disclosure of a honeycomb wherein about 30 to about 100 percent of the
total porosity comes from pores having a diameter greater than 10
micrometers (Answer 3; Merkel, col. 6, ll. 21-34) as furnishing an
anticipatory disclosure.
Appellants contend that “stating only the lower limit and the median,
does not define the distribution” of the honeycomb pore sizes as required in
all of Appellants’ appealed claims (Br. 4).
Have Appellants identified reversible error in the Examiner’s stated
anticipation rejection by their assertion that their narrower claimed pore size
distribution requiring more than 85 percent of the porosity of the ceramic
material to come from pores having a size between 5 and 30 micrometers is
not described by the average pore size disclosure and open ended range of
pore sizes greater than 10 micrometers as disclosed by Merkel? We answer
that question in the affirmative and we reverse the stated anticipation
rejection, on this record.
The factual determination of anticipation requires the disclosure in a
single reference of every element of the claimed invention, either explicitly
or inherently. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429,
1431 (Fed. Cir. 1997). It is also well-settled that an Examiner may shift the
burden to Appellants by showing how a prior art structure substantially
corresponds to a claimed structure such that it would be reasonable to
presume that the prior art structure would also possess a claimed property
employing an inherency theory. See In re Schreiber, 128 F.3d at 1478, 44
USPQ2d at 1432. Here, however, the Examiner has not reasonably
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Appeal 2007-4331
Application 10/400,742

articulated how the porous bodies described in Merkel would necessarily be
possessed of a pore size distribution, as here-claimed. Thus, the Examiner
has not shifted the burden to Appellants to show that the porous bodies of
Merkel would not possess a pore size distribution meeting Appellants’
appealed claim requirements.2 It follows that we shall reverse the
Examiner’s anticipation rejection over Merkel, on this record.
REMAND
The Examiner’s Advisory Action of May 26, 2006 includes
conflicting information regarding the entry status of the Merkel Affidavit
filed May 10, 2006. Compare the Advisory Action Form PTOL 303, Item
No. 8 with the continuation sheet attached thereto. Clarification of the
record as to the correct status of the Merkel Affidavit is required prior to
final disposition of this Application.
Furthermore and prior to the final disposition of this application, the
Examiner should consider the patentability of the appealed claims under the
other pertinent Sections of Title 35 of the United States Code, including
under 35 U.S.C. § 103 relative to the prior art developed during the
examination of this application, if the Examiner has not already carried out
this required analysis.

2 Hence, we do not reach the Merkel Affidavit filed May 10, 2006. Also, we
note that the Evidence Appendix attached to the Brief states “None”, albeit
the Merkel Affidavit is attached and discussed in the Brief (Br. 4).
Moreover, we note that the Communication filed May 09, 2007, was filed
beyond the two month time period for submitting a Reply Brief to the
Answer mailed February 08, 2007. Hence, the May 09, 2007
Communication has not been considered as part of the Appeal Record.

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Appeal 2007-4331
Application 10/400,742

CONCLUSION
The decision of the Examiner to reject claims 1-18 under 35 U.S.C.
§ 102(b) as being anticipated by Merkel is reversed.

REVERSED/REMANDED

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