10361116 (B.P.A.I. Jul. 20, 2011)

Ex Parte Foster

Board of Patent Appeals and InterferencesJul 20, 2011

10361116 (B.P.A.I. Jul. 20, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MICHAEL R. FOSTER ____________ Appeal 2010-000129 Application 10/361,116 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, TERRY J. OWENS, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-12, 17, 18, and 20-26. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Claim 1 is illustrative of the subject matter: 1. An exhaust gas system communicating exhaust gas between an exhaust gas source and an exhaust gas destination, the exhaust gas system comprising: Appeal 2010-000129 Application 10/361,116 2 a first tube in fluid communication between the exhaust gas source and the exhaust gas destination, the first tube including a first radially outwardly flared portion proximate an extreme end of the first tube: and an exhaust emission control device in fluid communication between the exhaust gas source and the exhaust gas destination, the exhaust emission control device including: a housing having a central portion, a tubular exhaust gas inlet portion and a tubular exhaust gas outlet portion disposed thereon, the cross-section flow area of each of the exhaust gas inlet portion and the exhaust gas outlet portion being less than the cross-sectional flow area of the central portion, one of the exhaust gas inlet portion and exhaust gas outlet portion extending within the first flared portion of said first tube, and a substrate disposed in the housing, the substrate for reducing an amount of a material within exhaust gas, wherein said one of the exhaust gas inlet portion and exhaust gas outlet portion is sized to extend within said first flared portion and to axially abut a shoulder formed on said first tube transitioning said first flared portion to an unflared portion, and wherein the unflared portion of said first tube has a cross- section flow area which is less than the cross-section flow area of the exhaust gas inlet portion. The Examiner maintains, and Appellant appeals, the following rejections under 35 U.S.C. § 103(a): 1) claims 1-8, 12, 17, 18, 20, 21, 25, and 26 as unpatentable over the combined prior art of Umin1 and Hayashi2; 1 Gerald Umin et al., U.S. Patent 5,980,837 (1999) 2 Kaoru Hayashi et al., JP 07110981 (1996); as translated Appeal 2010-000129 Application 10/361,116 3 2) claims 9, 10, 22, and 24 as unpatentable over the combined prior art of Umin, Hayashi, and Behner3; and 3) claims 11 and 23 as unpatentable over the combined prior art of Umin, Hayashi, and Waite4. MAIN ISSUE ON APPEAL Appellant argues the rejected claims in the first ground of rejection as a group (Br. 11-13). No substantive additional arguments are presented for the second and third grounds of rejection (Br. 13-15). Thus, we select independent claim 1 as the representative claim on which our discussion will focus. Did the Examiner err in determining that the claimed exhaust gas system would have been obvious over the applied prior art, because, as alleged by Appellant, Hayashi does not teach or suggest that the unflared portion of the first tube has a cross-sectional flow area which is less than the cross-sectional flow area of the exhaust gas inlet portion as required by claim 1? (Br. 11-12). We answer this question in the negative. PRINCIPLES OF LAW In assessing whether a claim to a combination of prior art elements would have been obvious, the question to be asked is whether the improvement of the claim is more than the predictable use of prior art elements according to their established functions. KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The analysis need not seek out precise teachings directed to the specific subject matter of the claim, for it is proper 3 Attila Behner et al., EP 1241331A2 (2002) 4 William Waite, U.S. Patent 3,990,859 (1976) Appeal 2010-000129 Application 10/361,116 4 to take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Id. at 418. “For obviousness under § 103, all that is required is a reasonable expectation of success.” In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988). ANALYSIS We have thoroughly reviewed each of Appellant’s arguments for patentability. However, we are in agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of § 103 in view of the applied prior art. Accordingly, we will sustain the Examiner’s rejections for essentially those reasons expressed in the Answer, and we add the following primarily for emphasis. Appellant’s main contention in the Brief, that Hayashi does not teach or suggest the claimed relationship of cross-sectional flow areas as recited in claim 1, (i.e., “wherein the unflared portion of said first tube has a cross- section flow area which is less than the cross-section flow area of the exhaust gas inlet portion”,) is of no persuasive merit (Br. 11, 12). As aptly pointed out by the Examiner, Umin teaches the appropriate relationships of the cross-sectional flow areas of the pipes (Ans. 5, 13). Appellant has not disputed this, nor has Appellant disputed the Examiner’s finding that Hayashi is relied upon to “evidence the conventionality of selecting the claimed weld connection as an alternative to the weld connection disclosed by Umin” (Ans. 13; no responsive brief has been filed). Accordingly, upon properly considering the prior art references as a whole, we agree with the Examiner that one of ordinary skill in the art would Appeal 2010-000129 Application 10/361,116 5 have been led to utilize the flared attachment configuration of Hayashi in the gas exhaust system of Umin (Ans. 4), with a reasonable expectation of successfully using a known equivalent attachment structure to that of Umin (Ans., e.g., 5, 11, 12). Thus, in our view, the Examiner properly concluded that one of ordinary skill would have considered the exhaust gas system as claimed obvious from the teachings of the applied prior art. Furthermore, skill is presumed on the part of one of ordinary skill in the art. In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985); see also KSR, 550 U.S. at 421(“[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.”). The Examiner’s position is reasonable in view of the applied prior art, and Appellant has not provided any convincing technical reasoning nor evidence that one of ordinary skill in the art would not have, using no more than ordinary creativity, successfully used the flared connection system of Hayashi with the relative dimensions as required by claim 1 (see generally Br.). In this context, the use of a flared connection system would have been nothing more than using a known technique in accordance with its known function for its predictable result. See KSR, 550 U.S. at 415-16 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). As a final note, Appellant has not offered any evidence of unexpected results on this record. Appeal 2010-000129 Application 10/361,116 6 Accordingly, the evidence as a whole supports the Examiner’s conclusion of obviousness, and on the record before us, we sustain the § 103 rejections of the claims as maintained by the Examiner.5 DECISION We affirm the Examiner’s § 103 rejections. 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 tc 5 Only those arguments actually made by Appellant have been considered in this decision. Arguments which could have made but that Appellant chose not to make have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008).