Ex Parte Kumagae et al

Patent Trial and Appeal Board

Dec 18, 2014

12822792 (P.T.A.B. Dec. 18, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/822,792 06/24/2010 Toyohide KUMAGAE KUMAGAE=2A 6506
1444 7590 12/18/2014
Browdy and Neimark, PLLC
1625 K Street, N.W.
Suite 1100
Washington, DC 20006
EXAMINER
LE, NINH V
ART UNIT PAPER NUMBER
1744
MAIL DATE DELIVERY MODE
12/18/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TOYOHIDE KUMAGAE, SHINYA TOKUMARU, and
HIROHISA SUWABE

Appeal 2013-005150
Application 12/822,792
Technology Center 1700
____________

Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1, 2, and 4–6.2 An oral hearing was held on December 9,
2014. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse.

1 The real party in interest is Hitachi Metals, Ltd. (Appeal Br. 1).
2 Appellants list claim 3 in the Claims Appendix as one of “the claims
involved in the appeal,” but note on page 3 of the Appeal Brief that claim 3
stands withdrawn. Accordingly, we assume that claim 3 is not part of this
appeal.
Appeal 2013-005150
Application 12/822,792

2
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a method for producing a ceramic
honeycomb filter having predetermined plugs (Abstract). In particular, the
end portions of a ceramic honeycomb structure are covered with a mask
provided with holes only in positions corresponding to predetermined flow
paths, and the ends are then immersed in a plugging material slurry (id.).
The holes in the mask permit the plugging material to plug the
predetermined flow paths (id.). Finally, any unwanted plugging material
which is inadvertently introduced into flow paths that should not be plugged
is removed.
Claim 1 is representative of the claims on appeal, and is reproduced
below from the Claims Appendix to the Brief:
1. A method for producing a ceramic honeycomb filter
having predetermined plugs, said method comprising:
immersing end portions of a ceramic honeycomb
structure having large numbers of flow paths, with its end
surface covered with a mask provided with holes only at
positions corresponding to the predetermined flow paths, in a
plugging material slurry, so that said plugging material slurry is
introduced into the end portions of the predetermined flow
paths, and
removing plugging material protrusions formed in the
flow paths that should not be plugged, wherein a protrusions-
removing means is moved in a flow path in which said plugging
material protrusions are formed, to remove said plugging
material protrusions.
Appeal 2013-005150
Application 12/822,792

3
REJECTIONS
(1) Claims 1, 2, and 6 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over AAPA3 in view of Paisley.4
(2) Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over AAPA in view of Paisley and Yamamura.5
Appellants do not advance separate arguments with regards to
Rejection (2) (Appeal Br. 14), and do not argue any of the claims
individually (Appeal Br. 10–14). Accordingly, we will limit our
discussion to the rejection of claim 1.
DISCUSSION
The Examiner finds that the AAPA discloses each of the claimed
limitations, except for the step “wherein a protrusions-removing means is
moved in a flow path in which said plugging material protrusions are
formed, to remove said plugging material protrusions” (Ans. 3). The
Examiner finds that Paisley discloses such a step, and that it would have
been obvious to one of skill in the art at the time the invention was made to
use Paisley’s solid member 42a “to remove the plugging material
protrusions formed in AAPA process for the benefit of providing a
mechanism to remove undesired materials from the honeycomb filter that
may interfere with further processing or product performance thereby
increasing the filter efficiency” (Ans. 4).

3 The Examiner refers to Appellants’ FIGS. 2a–2f and 4, and Paragraph 4 of
the Specification as “Applicant’s Admitted Prior Art” (AAPA) (Ans. 3).
4 Paisley, U.S. Patent No. 4,432,918, issued February 21, 1984.
5 Yamamura et al., JP 2000-043024, published February 15, 2000.
Appeal 2013-005150
Application 12/822,792

4
Appellants dispute that they have admitted that the prior art taught
that plugging material protrusions were formed in the flow paths that should
not be plugged (Appeal Br. 8). In particular, although Appellants admit that
the steps set forth in the first two paragraphs of claim 1 were known prior to
their invention, they argue that the prior art did not teach the problem of
unwanted (partial) plugging of flow paths which should not be plugged (id.
at 10–11). Appellants assert that they discovered the problem of unwanted
protrusions and overcame it by means of the claimed method (id. at 13).
It is well established that a patentable invention may lie in the
discovery of the source of a problem, even though the remedy may be
obvious once the source of the problem is identified. See, e.g., In re
Nomiya, 509 F.2d 566, 572 (CCPA 1975). In this instance Appellants have
acknowledged the process of immersing the masked end portions of ceramic
honeycomb structures into a plugging material slurry to plug the end
portions of predetermined flow paths was known.
However, Appellants argue that without the benefit of the disputed
admission (that the existence of the unwanted protrusions was known in the
art), the Examiner has not made out a prima facie case of obviousness
(Appeal Br. 15), because without knowledge of the presence of the
unwanted protrusions (and/or their deleterious effects), a person of skill in
the art would have no reason to combine the teachings of Paisley with the
prior art process (Reply Br. 3).
After reviewing the arguments made by Appellants and the Examiner,
we determine that, on balance, the Examiner has not shown that Appellants
have admitted that the existence of the unwanted protrusions was known in
the art. In particular, Paragraph 4 of the Specification describes how the
Appeal 2013-005150
Application 12/822,792

5
steps outlined in the second paragraph of claim 1, as exemplified in two
Japanese patents, were known. The Specification also describes in some
detail how carrying out the steps outlined in Paragraph 4 results in the
creation of unwanted protrusions in flow paths which are not supposed to be
blocked (Spec. ¶ 5). However, we find that the Specification does not state
that the information contained in Paragraph 5 about the unwanted
protrusions was known prior to Appellants’ invention.6 Paragraph 4 of the
Specification reads as follows:
[0004] As a method for producing a ceramic honeycomb
filter having such structure, JP2001-300922A and JP2002-
28915A disclose, as shown in Fig. 2, a method comprising the
steps of (a) attaching a film 6 to an end surface 12 of a ceramic
honeycomb structure 1, (b) providing the film 6 with holes 7 at
positions corresponding to flow paths 3, (c) placing the ceramic
honeycomb structure 1 in a plugging material slurry 8
containing ceramic particles, an organic binder, water, etc. with
the end surface 12 downward, (d) introducing the plugging
material slurry 8 into the flow paths 3 through the holes 7 of the
film 6 while pressing the ceramic honeycomb structure 1
downward by a pressing means 10, (e) dewatering and
hardening the plugging material slurry 8 entering into the flow
paths 3, and finally (f) peeling the film 6.
Paragraph 4 does not indicate that the unwanted protrusions were known.
Similarly, Paragraph 5 of the Specification, which describes the unwanted
protrusions in considerable detail, does not state that they were known.
The Examiner has not demonstrated — either through an admission
by Appellants or through findings from the prior art — that the unwanted
protrusions were known in the art. Without such a demonstration, the

6 The Examiner does find that the Japanese patents referenced in Paragraph
4 of the Specification “are silent to the plugging protrusions.” Ans. 7.
Appeal 2013-005150
Application 12/822,792

6
Examiner’s rationale for combining the AAPA with Paisley is deficient.
Accordingly, we reverse the rejection of claim 1 over AAPA in view of
Paisley. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(Rejecting the rigid requirement of a teaching, suggestion, or motivation to
combine known elements in order to show obviousness, but nonetheless
making clear that “rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”) Because the rejection of each of the other claims relies on
the same erroneous finding of an admission by Appellants, we also reverse
the rejection of those claims.

CONCLUSION
We REVERSE the rejection of claims 1, 2, and 6 under
35 U.S.C. § 103(a) as being unpatentable over the AAPA in view of Paisley.
We REVERSE the rejection of claims 4 and 5 under
35 U.S.C. § 103(a) as being unpatentable over AAPA in view of Paisley and
Yamamura.
REVERSED
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