Ex Parte Deneka et al

Patent Trial and Appeal Board

Dec 30, 2013

12395005 (P.T.A.B. Dec. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS JAMES DENEKA, NANCY ANN GOLOMB,
SANDRA LEE GRAY, DANIEL EDWARD MCCAULEY,
PATRICK DAVID TEPESCH, and CHRISTOPHER JOHN WARREN
____________

Appeal 2012-005187
Application 12/395,005
Technology Center 1700
___________

Before KAREN M. HASTINGS, GEORGE C. BEST, and
DONNA M. PRAISS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-6, 8-15, and 17-20. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

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Claims 1 and 12 are illustrative of the subject matter on appeal:
1. A method for reducing shrinkage variability of ceramic
honeycombs, comprising the steps of:
forming a batch mixture comprising inorganic materials and a pore
former, wherein an amount of fines in said pore former is fixed such that X
ranges from 25-71% by volume and ΔX is ≤ 23% throughout said
production period, wherein X is a cumulative amount of particles in said
pore former less than 37 μm equivalent spherical diameter, there is a
maximum value of X (Xmax) and a minimum value of X (Xmin) during a
production period such that ΔX= Xmax-Xmin;
extruding green honeycombs made from said batch mixture; and
firing to produce ceramic honeycombs adapted to be plugged so as
to produce ceramic particulate filters having reduced shrinkage variability
without machining.

12. A method for manufacturing a porous ceramic honeycomb,
comprising the steps of:
forming a batch mixture comprising inorganic materials and a pore
former having a particle size distribution;
selecting the pore former such that an amount of pore former particles
having a particle diameter less than or equal to 5 µm is not greater than 10%
of the total volume of the particle size distribution;
extruding a green honeycomb from said batch mixture; and
firing said green honeycomb to produce a ceramic honeycomb having
a shrinkage of not greater than 1 %.

The Examiner maintains, and Appellants appeal, the following
rejections under 35 U.S.C. § 103(a):
a. claims 1-6, 8, 9, 11-15 and 17-19 as unpatentable over Suwabe
(U.S. Pub. 2003/0093982 Al, published May 22, 2003);
b. claim 10 as unpatentable over Suwabe in view of Iwabuchi (U.S.
Pub. 2005/0218543 A1, published Oct. 6, 2005); and
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c. claim 20 as unpatentable over Suwabe in view of Hayashi (U.S.
Pub. 2007/0225149 Al, published Sept. 27, 2007).

ANALYSIS
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we will sustain the Examiner’s rejections for
essentially those reasons expressed in the Answer, including the Response to
Argument section, and we add the following primarily for emphasis.
In reviewing the relevant facts of this case, the Examiner’s
determination that Suwabe exemplifies that pore size distribution is a known
result effective variable is reasonable (see, e.g., Ans. 5; Suwabe ¶¶ [0083]-
[0085]). Indeed, one may consider the teachings of Suwabe relied upon by
the Examiner as suggesting overlapping ranges for the size distribution of
the pore former (e.g., Suwabe ¶ [0083]).
As stated in In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005)
(quoting In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003):
[A] prima facie case of obviousness arises when the
ranges of a claimed composition overlap the ranges disclosed in
the prior art. [Citations omitted.] Where the claimed ranges are
completely encompassed by the prior art, the conclusion [that
the claims are prima facie obvious] is even more compelling
than in cases of mere overlap.”

It is also well established that a reference is not limited to its examples
or preferred embodiments; see Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (holding that the prior art's disclosure of over 1200
possible combinations rendered all possible formulations obvious).
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Appellants’ argument that Suwabe’s teachings fail to render obvious
the claimed size distributions of claims 1 and 12 are unavailing. Suwabe
teaches that it is desirable to have average particle diameters of more than 20
µm particularly 40-80 µm, with particles diameters of 20-100 µm occupying
50% or more of the total particles (Suwabe ¶ [0083]). Appellants have also
not specifically refuted the Examiner’s reasonable position that
an amount of pore former particles having "a particle diameter
of less than or equal to 5 µm is not greater than 10% of the total
volume of the particle size distribution" [as recited in claim 12]
. . . implies minimizing the amount of pore former particles
having a particle diameter of less than or equal to 5 µm ("not
greater than 10%", or 0-10%). Suwabe suggests that smaller
pore former particles, those with particle diameters less than 20
µm, are less desirable, and thus one of ordinary skill in the art
would have been motivated to minimize an amount of pore
former particles having diameters less than 20 µm, which also
suggests minimizing pore former particles having diameters
less than or equal to 5 µm, as claimed.
(Ans. 15, no responsive brief has been filed).
Thus, a preponderance of the evidence supports the Examiner’s
reasonable position that it would have been prima facie obvious to optimize
the pore size distribution and use a pore former size distribution that de facto
overlaps the claimed range of pore size distributions.
The Examiner’s determination that the property recited concerning
“reduced shrinkage” in claim 1 and “a shrinkage of not greater than 1%” as
recited in claim 12 would follow is also reasonable. Stated differently, the
fact that Appellants have recognized another property which would flow
naturally from following Suwabe's teaching or suggestion for optimizing the
size distribution of the pore former particles cannot be the basis for
patentability when the differences, if any, would otherwise have been
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obvious. Cf. In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (stating
“[e]ven if no prior art of record explicitly discusses the [limitation],
[applicant's] application itself instructs that [the limitation] is not an
additional requirement imposed by the claims on the [claimed invention],
but rather a property necessarily present in [the claimed invention]”); see
also King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1275-76 (Fed. Cir.
2010) (stating that “merely discovering and claiming a new benefit of an old
process cannot render the process again patentable” (citations omitted)).
The Examiner’s determination that the porous ceramic honeycomb,
arrived at by one of ordinary skill in the art through no more than ordinary
creativity using the method of Suwabe, would have the claimed properties
recited in the Appellants’ claims 1 and 12 is reasonable. See KSR Int’l. Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (in making an obviousness
determination one “can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ”).
The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims. These cases have consistently held that the Appellants must show
that the particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range. See e.g., In
re Peterson, 315 F.3d at 1329; In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990). The burden rests with Appellants to establish (1) that the alleged
unexpected results presented as being associated with the claimed invention
are, in fact, unexpected, (2) that the comparisons are to the disclosure of
closest prior art, and (3) that the supplied evidentiary showing is
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commensurate in scope with the claimed subject matter. See In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972).
Appellants have made no such showing on this record.
As explained above and in the Answer, on this record, the Examiner
had a reasonable basis to believe that the process of Suwabe as optimized by
one of ordinary skill in the art would have resulted in a porous ceramic
honeycomb as recited in the claims. Appellants have not offered persuasive
evidence to the contrary.
Thus, Appellants have not persuasively argued that the facts and
reasons relied on by the Examiner are insufficient to establish a prima facie
case of obviousness as to claims 1 and 12.
Appellants’ depend upon the arguments presented for claims 1 and 12
for all the other claims (e.g., Br. 13; Ans. 16).
In light of these circumstances, the preponderance of the evidence
supports all of the Examiner’s § 103 rejections. Accordingly, we sustain the
rejections of the claims on appeal.

DECISION
The decision of the Examiner is affirmed.

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).
AFFIRMED

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