Ex Parte Gardner

Board of Patent Appeals and Interferences

Mar 23, 2000

08536350 (B.P.A.I. Mar. 23, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CONRAD O. GARDNER
_____________
Appeal No. 1998-0842
Application 08/536,350
______________
ON BRIEF
_______________
Before CALVERT, COHEN and FRANKFORT, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
11, all the claims in the application.
The subject matter involved in this case concerns the
removal of pollutants from the ambient air flowing past a moving
motor vehicle, the ambient air being directed into a catalytic
Appeal No. 1998-0842
Application No. 08/536,350
2
converter. The appealed claims, drawn to apparatus (claims 1 to
7, 10 and 11) and a method (claims 8 and 9), are reproduced in
the appendix of appellant's brief.
The references applied in the final rejection are:
Colosimo 3,738,088 Jun. 12, 1973
Geiger 5,250,268 Oct. 5, 1993
Wells 5,509,853 Apr. 23, 1996
(filed Jul. 11, 1994)
An additional reference of record, applied herein pursuant
to a rejection under 37 CFR § 1.196(b), is:
Olivo 5,285,640 Feb. 15, 1994
Claims 1 to 11 stand finally rejected under 35 U.S.C. § 103
as unpatentable over Colosimo alone, or in view of Wells and
Geiger. On page 3 of the final rejection (paper No. 7), the
examiner states the basis of the rejection as:
Colosimo teaches using means attached to a car to
clean ambient air. Colosimo also teaches that these
means can be catalytic convertors (see column 6 line
40). Colosimo does not teach that the treating means
be attached to the out side of the exhaust manifold or
the use of flared scoop. It would have been obvious to
a routineer in the art to attach the catalytic treating
means of Colosimo to the exhaust manifold to take
advantage of the heat source for the reaction and in
the fact that Wells teaches attaching ambient filter
means to the exhaust manifold (see figure 3, element
29) and that Geiger teaches that the temperature of the
catalytic convertor should be regulated.
In col. 6, line 40 of Colosimo, to which the examiner
Appeal No. 1998-0842
Application No. 08/536,350
1 Contrary to the examiner's statement, Colosimo does not
disclose a plurality of catalytic converters.
3
refers, Colosimo discloses that the air filtering assembly 3 may
include a "catalytic postfilter means" (singular) 150, which "may
suitably be of the replaceable cartridge type" to clear the air
of "nonparticulate pollution" such as carbon monoxide, etc.
(col. 6, lines 40 to 48). This filter 150 is downstream from
particulate filters 35, 37, in a housing 3 which is separate from
engine 2. Colosimo does not disclose that catalytic filter 150
should be heated, and it is not clear to us that it necessarily
constitutes a catalytic converter, as claimed. However, assuming
that Colosimo's converter 150 may be termed a catalytic
converter,1 and that it would have been obvious to heat it, in
view of Geiger (e.g., col. 1, lines 15 to 30), we do not agree
with the examiner that it would have been obvious to obtain such
heat by attaching it to the exhaust manifold, since there is no
teaching or suggestion in Colosimo, Wells or Geiger of doing so.
While Wells seemingly does disclose attaching a filter to the
exhaust manifold (col. 5, line 35), this being but one point
among numerous other locations on the vehicle, the Wells filter
is not a catalytic converter, nor does it require heat for its
Appeal No. 1998-0842
Application No. 08/536,350
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operation, but rather is a container 14 full of pellets 13, which
entrap particulates from the ambient air passing through them.
According to Wells, these containers can be attached around the
engine and anywhere else on the vehicle where they will be
exposed to flowing polluted ambient air; see, e.g., col. 3, line
61, to col. 4, line 2. It is not evident to us why Wells'
disclosure would have made it obvious to one of ordinary skill to
attach the Colosimo catalytic converter 150 to the exhaust
manifold as a source of heat; rather, we view any such suggestion
as being the result of improper hindsight, based on information
gleaned from appellant's own disclosure.
The rejection of claims 1 to 11 therefore will not be
sustained.
Rejection Pursuant to 37 CFR § 1.196(b)
Pursuant to 37 CFR § 1.196(b), claim 4 is rejected under
35 U.S.C. § 102(b) as anticipated by Olivo.
Claim 4 reads:
In combination in a motor vehicle:
an internal combustion engine;
a catalytic converter;
a flared scoop located beneath said motor vehicle for
funneling ambient pollutants to said catalytic converter.
Appeal No. 1998-0842
Application No. 08/536,350
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Olivo discloses a catalytic converter/muffler for use in the
exhaust system of a vehicle having an internal combustion engine
(col. 4, lines 65 and 66), the device being mounted horizontally
in a car or light-duty truck and having a flared scoop 40 which
funnels ambient air (including pollutants) to the converter
(col. 5, lines 44 to 53).
Remand to the Examiner
Claims 1 to 11 include eight independent claims of varying
scope. Notwithstanding this, the examiner has treated all the
claims together, even though they do not all require a catalytic
converter surrounding the exhaust manifold, and may be amenable
to rejection on other references of record; see, for example, our
rejection of claim 4, supra.
Accordingly, this application is remanded to the examiner to
consider the limitations of each claim separately, and determine
whether or not each claim should be rejected as unpatentable over
prior art of record, and/or other prior art. In perusing the
prior art of record, we note that:
(1) Stevenson, Shimozi et al., Smith et al., Tadokoro et al. and
Olivo disclose introducing ambient air into a catalytic
converter, and may be pertinent to claims such as claims 5 to 8;
Appeal No. 1998-0842
Application No. 08/536,350
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and
(2) Muraki et al. disclose dual catalytic converters, which may
be pertinent to a claim such as claim 10.
In addition, Cornelison et al. Pat. No. 5,170,624, cited by
appellant at page 4, lines 5 and 22, discloses electrically
heating a catalytic converter, and an exhaust system with two
catalytic converters (Fig. 13).
The examiner should also consider whether claim 9 should be
rejected under 35 U.S.C. § 112, first paragraph, as being based
on a nonenabling disclosure (cf. specification page 6, lines 9
to 12).
Conclusion
(a) The examiner's decision to reject claims 1 to 11 is reversed.
(b) Claim 4 is rejected pursuant to 37 CFR § 1.196(b).
(c) The application is remanded to the examiner.
This decision contains new grounds of rejection pursuant to
37 CFR § 1.196(b) (amended effective Dec. 1, 1997, by final rule
notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off.
Gaz. Pat. and Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR
§ 1.196(b) provides that "[a] new ground of rejection shall not
be considered final for purposes of judicial review."
37 CFR § 1.196(b) also provides that the appellant, WITHIN
Appeal No. 1998-0842
Application No. 08/536,350
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TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (37 CFR § 1.197(c))
as to the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and Interferences upon
the same record. . . .
Appeal No. 1998-0842
Application No. 08/536,350
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No time period for taking any subsequent action in con-
nection with this appeal may be extended under 37 CFR § 1.136(a).
REVERSED, 37 CFR § 1.196(b)and REMANDED

IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )

IAC:lmb
Appeal No. 1998-0842
Application No. 08/536,350
9
CONRAD O. GARDNER
121 VINE STREET
UNIT 2202
SEATTLE, WA 98121