Ex Parte Kornberger

Board of Patent Appeals and Interferences

Jan 31, 2006

10122616 (B.P.A.I. Jan. 31, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARTIN KORNBERGER
____________

Appeal No. 2005-2168
Application No. 10/122,616
____________

HEARD: DECEMBER 14, 2005
____________

Before PATE, McQUADE, and CRAWFORD, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1 to 12,
25 and 27 which are all of the claims pending in this application. Claims 13 to 24, 26
and 28 have been canceled.

Appeal No. 2005-2168
Application No. 10/122,616

Παγε 2
The appellant's invention relates to fume exhaust system for cooking fumes,
containing a filtering device with at least one filter in the exhaust path with a catalyst
material (specification, p. 1). A copy of the claims under appeal is set forth in the
appendix to the appellant's brief.
THE PRIOR ART
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Izumo 06-91137A April 5, 1994
(JP' 137)
Kimura 10-328575A Dec. 15, 1998
(JP'575)
THE REJECTIONS
Claims 1 to 4, 6, 8, 11, 12, 25, and 27 stand rejected under 35 U.S.C. § 102 as
being anticipated by JP’575.
Claims 5, 7, 9 and 10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over JP’575 in view of JP’137.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
(mailed September 1, 2004) for the examiner's complete reasoning in support of the
rejections, and to the brief (filed June 22, 2004) and reply brief (filed November 16,
2004) for the appellant's arguments thereagainst.

Appeal No. 2005-2168
Application No. 10/122,616

Παγε 3
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
We turn first to the examiner’s rejection of claims 1 to 4, 6, 8, 11, 12, 25 and 27
as being anticipated by JP’575. We initially note that a claim is anticipated only if each
and every element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference. Verdegaal Bros. Inc. v. Union Oil Co., 814
F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir.), cert. denied, 484 U.S. 827 (1987).
The inquiry as to whether a reference anticipates a claim must focus on what subject
matter is encompassed by the claim and what subject matter is described by the
reference. As set forth by the court in Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984), it is only
necessary for the claims to "'read on' something disclosed in the reference, i.e., all
limitations of the claim are found in the reference, or 'fully met' by it."
In support of this anticipation rejection, the examiner finds:
Japanese ‘575 shows and discloses and exhaust hood (1,2) having
deodorizing and sterilizing effect on a on air flow (1,2), including a pre-filter
(3), an ionizing electrode (4) and ultraviolet lamp (5) located upstream of a
photo catalytic reactive filter (6) and fan (7). [Answer at page 4].

Appeal No. 2005-2168
Application No. 10/122,616

Παγε 4
Appellant argues that JP’575 does not describe an interaction between the
ionization electrode and the stream itself.
It is true that JP'575 does not expressly disclose that the air stream is ionized.
However, a prior art reference need not expressly disclose each claimed element in
order to anticipate the claimed invention. See Tyler Refrigeration v. Kysor Indus. Corp.,
777 F.2d 687, 689, 227 USPQ 845, 846-847 (Fed. Cir. 1985). Rather, if a claimed
element (or elements) is inherent in a prior art reference, then that element (or
elements) is disclosed for purposes of finding anticipation. See Verdegaal Bros., Inc. v.
Union Oil Co., 814 F.2d at 631-33, 2 USPQ2d at 1052-54.
It is well settled that the burden of establishing a prima facie case of anticipation
resides with the Patent and Trademark Office (PTO). See In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). When relying upon the theory of
inherency, the examiner must provide a basis in fact and/or technical reasoning to
reasonably support the determination that the allegedly inherent characteristic
necessarily flows from the teachings of the applied prior art. See Continental Can Co.
v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991); Ex
parte Levy, 17 USPQ2d 1461, 1464 (Bd. Patent App. & Int. 1990).
After the PTO establishes a prima facie case of anticipation based on inherency,
the burden shifts to the appellant to prove that the subject matter shown to be in the
prior art does not possess the characteristics of the claimed invention. See In re
Appeal No. 2005-2168
Application No. 10/122,616

Παγε 5
Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); In re King, 801 F.2d
1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986).
JP’575 discloses an ionization electrode 4 which creates a corona discharge
when a DC current is applied. This corona discharge charges the suspended particles
(0012). It is reasonable to find that this corona discharge is caused by the ionization of
the air stream by ionization electrode 4 and that it is these ions which charge the
suspended particles. As such, we are of the opinion that the examiner has a
reasonable basis for finding that ionization of the stream in JP'575 does occur even
though it is not expressly disclosed.
Therefore, the burden has shifted to the appellant to prove that ionization of the
stream does not occur in the JP'575. This the appellant has not done.
In view of the foregoing, we will sustain the examiner’s rejection of claim 1. We
will likewise sustain the examiner’s rejection of claims 2-4, 6, 8, 11, 25 and 27 as these
claims stand or fall with claim 1 (brief at page 9).
In regard to claim 12, the examiner finds that the catalytic reactive filter (6)
includes a titanium dioxide reaction coating on an activated carbon filter that would be
inherently desorbable by heating at a temperature in the range between 120 and 180
degrees (answer at page 4). The examiner directs our attention to the patent
Dougherty, US Patent No. 5,912,423 which teaches that activated carbon is disorbable
when heated. In our view, the examiner has a reasonable basis for finding that the
Appeal No. 2005-2168
Application No. 10/122,616

Παγε 6
carbon filter of JP ‘575 is inherently disorbable when heated to a temperature in the
range between 120 and 180 degrees.
As such, the burden has shifted to the appellant to prove that the carbon fiter of
JP ‘575 is not disorbable when heated to a temperature in the range between 120 and
180 degrees. The appellant has not come forward with any evidence to satisfy this
burden. In fact, appellant does not challenge the finding of the examiner that JP’575 is
inherently desorbable when heated but rather argue that even though the property may
be inherent, this does not mean that the property was known or harnessable by anyone
in the prior art.
This argument is not persuasive because there is no requirement that the
inherent feature in the prior art references be known to establish a prima facie case of
anticipation.
In view of the foregoing, we will sustain the examiner’s rejection of claim 12.
We turn next to the examiner ‘s rejection of claims 5, 7, 9, 10 under 35 U.S.C.
§ 103 as being unpatentable over JP’575 in view of JP’137. Recognizing that JP’575
does not describe a honeycomb structure, as recited in claim 5, the examiner relies on
JP’137 for teaching a honeycomb catalyst structure including a ceramic support,
titanium oxide and a zeolite. The examiner concludes:
. . . it would have been obvious to a person having ordinary skill in the art
to substitute a honeycomb catalyst structure including a ceramic support
and a zeolite for the carbon fiber support of Japanese ‘575, in view of the
teaching of Japanese ‘117 [sic] [Answer at page 5].
Appeal No. 2005-2168
Application No. 10/122,616

Παγε 7
Appellant argues that JP’137 does not describe ionizing the gas stream. We do
not find this argument persuasive because it is directed to JP’137 on an individual basis.
Nonobviousness cannot be established by attacking the references individually when
the rejection is predicated upon a combination of prior art disclosures. See In re Merck
& Co. Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986). In this regard,
JP’137 is not being relied on for teaching ionization of the stream, rather JP’575 is relied
on for teaching this feature. As we stated above, JP'575 does describe ionizing the
stream.
In view of the foregoing, we will sustain the examiner’s rejection of claim 5. We
will likewise sustain the rejection
of claims 7, 9, 10.
The decision of the examiner is affirmed.

Appeal No. 2005-2168
Application No. 10/122,616

Παγε 8
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).

AFFIRMED

WILLIAM F. PATE, III )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 2005-2168
Application No. 10/122,616

Παγε 9
John T. Winburn
100 Bosch Boulevard
New Bern, NC 28562

MEC/ki