Ex parte Kumazawa et al.

Board of Patent Appeals and Interferences

May 13, 1999

08488056 (B.P.A.I. May. 13, 1999)

Application for patent filed June 7, 1995.1
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not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KAZUHIKO KUMAZAWA, WATARU KOTANI
and MASAOMI KAMIYA
__________
Appeal No. 97-1078
Application 08/488,0561
___________
HEARD: May 4, 1999
___________
Before FRANKFORT, McQUADE and NASE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Kazuhiko Kumazawa et al. appeal from the final rejection
of claims 12 through 22, all of the claims pending in the
Appeal No. 97-1078
Application 08/448,056
Claims 14 and 15 have been amended subsequent to final2
rejection.
2
application. We reverse.2
The invention relates to “a honeycomb regenerator for
recovering a waste heat in an exhaust gas by passing the
exhaust gas and gas to be heated alternately therethrough”
(specification, page 1). Claim 12 is illustrative and reads
as follows:
12. A honeycomb regenerator for recovering waste heat
from exhaust gas, comprising:
a stacked assembly including at least one first honeycomb
body and at least one second honeycomb body stacked on said at
least one first honeycomb body, each honeycomb body including
a plurality of passages extending along an axial direction of
the stacked assembly, said at least one first honeycomb body
comprising a ceramic material having anti-corrosive
properties, and said at least one second honeycomb body
comprising a ceramic material having a main crystal phase of
cordierite, said stacked assembly including first and second
opposite axial ends respectively forming an inlet for hot
exhaust gas and an inlet for cold gas, wherein said at least
one second honeycomb body is provided downstream of said at
least one first honeycomb body along a flow direction of the
hot exhaust gas.
The items relied upon by the examiner as evidence of
obviousness are:
Davies et al. (Davies) 3,326,541 Jun. 20,
1967 Ogawa et al. (Ogawa) 4,489,774 Dec.
25, 1984
Appeal No. 97-1078
Application 08/448,056
The examiner has withdrawn the 35 U.S.C. § 112, second3
paragraph, rejection of claims 14 and 15 which was set forth
in the final rejection (see the advisory action dated July 18,
1996, Paper No. 9).
3
Oda et al. (Oda) 4,601,332 Jul. 22,
1986
The items relied upon by the appellants as evidence of
non-obviousness are:
The 37 CFR § 1.132 Declaration of Wataru Kotani and
its accompanying exhibits (Paper Nos. 14 and 16).
Claims 12 through 15 and 20 through 22 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Davies in
view of Oda, and claims 16 through 19 stand rejected under 35
U.S.C. § 103 as being unpatentable over Davies in view of Oda
and Ogawa.3
Reference is made to the appellants’ main and reply
briefs (Paper Nos. 12 and 14) and to the examiner’s main and
supplemental answers (Paper Nos. 13 and 17) for the respective
positions of the appellants and the examiner with regard to
the merits of these rejections.
Davies, the examiner’s primary reference, discloses a
pair of regenerators 12 which are alternately heated by waste
gas flowing out of a glassmaking melting tank 10 and cooled by
Appeal No. 97-1078
Application 08/448,056
4
combustion air flowing into the tank. Each of the
regenerators includes a network or checker setting 13 of
refractory brick. The checker settings have three wear zones:
the top checkers 13T, the middle checkers 13M and the bottom
checkers 13B. According to Davies, “[t]he dominant service
factors in the top checkers are different than the middle and
lower zones. But, generally, the same factors are present to
some degree in all zones” (column 2, lines 15 through 19). In
this regard, Davies observes that
[f]our fundamental destructive effects have been
recognized as having a direct bearing on
checkerbrick life: (1) temperature cycling; (2)
oxidation-reduction; (3) solid carryover; and (4)
volatile carryover. In the top checker settings,
high-temperature cycling is a serious factor,
decreasing towards the middle where it overlaps with
low-temperature cycling effects. The atmosphere in
the top zone is laden with alkali vapors, although
condensation is insignificant. Solid carryover is
greatest. Oxidation-reduction conditions may vary
from mild to severe.
In the middle zone, temperature fluctuations are
relatively mild. Solid carryover is low and,
because of lower temperatures, less reactive. The
atmosphere is rich in alkali vapors, and some
deposition of condensates occurs. Oxidation-
reduction conditions may be present, but the effects
are of less importance because of lower
temperatures.
In the lower zone, temperatures are quite low,
but the temperature cycles may be wide where cold
incoming air enters the checker setting. The
Appeal No. 97-1078
Application 08/448,056
5
dominant characteristic of this zone is a large
amount of condensing volatile constituents from the
exhaust gases. Effects of oxidation-reduction and
solid carryover on the refractories in this area are
insignificant, although plugging may occur from the
entrapment of solid dust fragments from higher up in
the setting [column 2, lines 41 through 66].
Davies’ objective is to provide a regenerator structure
which will have “a longer and more uniform service life”
(column 1, lines 59 and 60). To this end, the reference
teaches that
[t]he lower sections of the checker setting are
comprised of chrome or chrome-magnesite brick.
Middle settings are selected from stabilized
forsterite, magnesite, or chrome-magnesite brick.
The upper checker settings, which are the most
critical, are comprised of burned or unburned high-
purity magnesite brick, on an oxide basis, by
weight, analyzing at least 90% MgO up to about 2%
total Al O plus Fe O plus Cr O there being lime and2 3 2 3 2 3
silica present, the lime/silica weight ratio being
greater than 2:1. In a preferred embodiment the top
checker settings are comprised of magnesite brick
containing by weight on an oxide analysis of at
least 95%, of MgO up to about 1%, by weight total
Al O plus Fe O plus Cr O , there being lime and2 3 2 3 2 3
silica present, the lime/silica weight ratio being
about 2:1 [column 2, lines 25 through 40].
The examiner concedes (see page 4 in the main answer)
that Davies does not meet the limitation in independent claim
12 requiring the second honeycomb body to comprise a ceramic
material having a main crystal phase of cordierite.
Appeal No. 97-1078
Application 08/448,056
6
Oda pertains to ceramic honeycomb heat exchangers. Of
the particular ceramic materials to be used, Oda teaches that
materials having high heat resistance and thermal
shock resistance are preferable for effectively
utilizing the heat exchange of the hot fluid.
Ceramic materials having low thermal expansion, such
a[s] cordierite, mullite, magnesium aluminum
titanate, silicon carbide, silicon nitride and a
combination of these materials are desirable. These
materials are excellent in heat resistance and are
small in thermal expansion coefficient . . . so that
these materials can endure rapid temperature . . .
change [column 2, lines 49 through 59].
In combining Davies and Oda to support the rejection of
claim 12, the examiner concludes that it would have been
obvious at the time the invention was made to a person having
ordinary skill in the art “to employ in the appropriate
portion [13M] of Davies et al. known regenerator construction
material such as cordierite . . . for the purpose of obtaining
high heat resistance and thermal shock resistance as disclosed
in Oda et al.” (main answer, page 4). The examiner further
explains that
[t]he middle layer (13M) or [sic, of] the
regenerator of Davies et al. is made from a material
(forsterite, see column 2, lines 27-29) selected for
its resistance to heat and low expansion
property/low temperature shock. Forsterite is known
in the ceramics art to have a low expansion
coefficient which is in the range of the low
Appeal No. 97-1078
Application 08/448,056
The record indicates that a copy of the pertinent4
portion of this reference was mailed to the appellants with
the main answer (Paper No. 13). Since the reference was not
included in the statements of the rejections on appeal, its
use by the examiner to support the rejections is somewhat
suspect. See In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ
406, 407 n.3 (CCPA 1970).

7
expansion coefficient of the claimed material
cordierite (see the thermal expansion coefficients
of Cordierite and Forsterite on page 759 of Vol. 4
of Engineered Materials Handbook ). Therefore,[4]
Cordierite and Forsterite are functionally
equivalent in their expansion coefficients and it is
considered to be obvious to substitute Cordierite,
with its known low expansion property for Forsterite
and its known low expansion property in view of the
teaching in Oda et al. of the use of cordierite in
heat exchangers for the purpose of obtaining high
heat resistance and thermal shock resistance [main
answer, pages 6 and 7].
The examiner’s position here is unsound for a number of
reasons.
To begin with, Davies does not provide any factual
support for the examiner’s assertion that forsterite was
selected for use in the middle layer or zone 13M of the Davies
regenerators due to a low thermal expansion property.
Moreover, the examiner’s determination that the
forsterite disclosed by Davies and the cordierite disclosed by
Oda have “functionally equivalent” coefficients of thermal
Appeal No. 97-1078
Application 08/448,056
8
expansion, and thus similar thermal shock resistances, is
refuted by the Kotani declaration submitted by the appellants.
By a clear preponderance of evidence, this declaration and its
accompanying exhibits establish that the coefficient of
thermal expansion of forsterite is significantly higher than
that of cordierite, notwithstanding the indication to the
contrary in the handbook material relied upon by the examiner.
Finally, Davies’ disclosure that the temperature and
temperature fluctuations in zone 13M are relatively mild
belies the examiner’s reasoning that the artisan would have
found it obvious to substitute cordierite for forsterite in
this zone for the purpose of obtaining high heat and thermal
shock resistance.
In this light, we are constrained to conclude that the
only suggestion for combining Davies and Oda in the manner
proposed by the examiner stems from hindsight knowledge
impermissibly derived from the appellants’ own disclosure.
Ogawa, applied by the examiner in support of the rejection of
dependent claims 16 through 19, does not cure this fundamental
flaw in the Davies-Oda combination.
Appeal No. 97-1078
Application 08/448,056
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Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103 rejection of independent claim 12 or of claims 13
through 22 which depend therefrom.
The decision of the examiner is reversed.
REVERSED
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-1078
Application 08/448,056
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JPM/caw
Appeal No. 97-1078
Application 08/448,056
11
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