Ex Parte Marc

Board of Patent Appeals and Interferences

May 28, 2010

10468449 (B.P.A.I. May. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BERTRAND MARC
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Appeal 2009-014048
Application 10/468,449
Technology Center 1700
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Decided: May 28, 2010
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Before MICHAEL P. COLAIANNI, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-11 under 35 U.S.C. § 103(a) as unpatentable over
Michelin (US 6,632,406 B1; issued October 14, 2003). We have jurisdiction
under 35 U.S.C. § 6(b).
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We AFFIRM.
Appellant’s invention relates to a device for depolluting the exhaust
gas from a heat engine, such as a diesel engine of an automobile (Spec. 1: 1-
8). Claim 1 is illustrative:
1. Device for depollution of the exhaust gases from a
heat engine comprising an outer casing (23) delimiting a
passage for circulation of the exhaust gases and, mounted in
series in the said passage, a catalytic purification unit (18) and a
particulate filter (20), the device comprising means for access to
the upstream surface of the particulate filter, these access means
comprising a transverse break (34) in the casing along its entire
periphery, which break (34) separates the casing (23) into
successive sections (38, 40), the device further comprising
detachable means (36) for connection of the two successive
sections along the said break, characterised in that the said
detachable connection means (36) extend in a plane extending
transversely with respect to the circulation passage and passing
through one of the catalytic purification device (18) and of the
particulate filter (20).
Appellant argues all the rejected claims as a group (Br. 3-7), for which
we select independent claim 1 as a representative.
II. DISPOSITIVE ISSUE
Did the Examiner err in concluding that it would have been obvious to
one of ordinary skill to modify the teachings of Michelin to move the
relative positioning of the detachable connection means 64 to the position
recited in claim 1? We answer this question in the negative.
III. FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer as our own. We add
the following factual findings:
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1. It is undisputed that the only difference between the claimed
invention and the device of Michelin is the relative position of the
“detachable connection means” (Br. 3, Ans. 4).1 The claimed “detachable
connection means (36) “passes through” (overlies) either catalytic
purification device 18 or filter 20 (Claim 1; see, e.g., Fig. 2). Michelin’s
“detachable connection means” 64 is disposed between catalytic purification
device 18 and filter 20 (Michelin, col. 2, ll. 52-55; col. 4, ll. 1-3; Fig. 2).
2. Michelin teaches a second “detachable connection means” 66
disposed at a second interruption 62 in the cylindrical wall downstream from
the particle filter, where the wall 24 joins onto the convergent section 30
(Michelin, col. 3, l. 65 to col. 4, l. 3; Figure 2 and 4A-4D).
3. The purpose of the “detachable connection means” is to
detachably join two sections of the device and allow manual access to the
internal components of the device (Spec. 2:3-6; Michelin, col. 4, ll. 1-10).
IV. PRINCIPLES OF LAW
When a claim is to a combination that ‘simply arranges old elements
with each performing the same function it had been known to perform’ and
yields no more than one would expect from such an arrangement, the
combination is obvious.” KSR, 550 U.S. 398, 417 (2007), quoting Sakraida
v. AG Pro, Inc., 425 U.S. 273, 282 (1976). Moreover, the obviousness
analysis “need not seek out precise teachings directed to the specific subject

1 Appellant identifies detachable means 36 as described on page 5, line 10
from the bottom, as the corresponding structure described in the
Specification (Br. 2). There is no dispute by the Examiner as to the meaning
of the term (Answer, in its entirety). Nor is there any dispute that Michelin’s
removable connecting means 64 is a detachable connection means as
required by the claims.
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matter of the challenged claim, for a court [or this Board] can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR, 550 U.S. at 418; see also Perfect Web Techs., Inc. v.
InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“[W]hile an analysis of
obviousness always depends on evidence that supports the required Graham
factual findings, it also may include recourse to logic, judgment, and
common sense available to the person of ordinary skill that do not
necessarily require explication in any reference or expert opinion.”).
V. ANALYSIS
Appellant contends that the claimed location of the detachable
connection means is unobvious because it permits shortening the device (Br.
3-5).
The Examiner finds that the change in relative position is a mere
rearrangement of parts of a prior art device, where the rearrangement would
have absolutely no effect on the operation of the device and on this basis
concludes that the rearrangement would have been obvious to one of
ordinary skill in the art (Ans. 4 and 8-11) (citing In re Japikse, 181 F.2d
1019 (CCPA 1950)).
The Examiner’s conclusion is supported by the facts and the current
law. There is no dispute that, as found by the Examiner, the device of
Michelin would operate in the same or substantially the same manner
whether the joint and connector were between components (catalytic
purification device and filter), over one of the components, or in any number
of other locations. The detachable connection means would still function to
join two sections and allow access to an internal component of the
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depollution device. In fact, Michelin itself provides further evidence that
such connectors were known to be used in locations other than between
components (FF 2). The facts as a whole support a finding that any number
of locations would have been expected by one of ordinary skill in the art to
provide the known predictable result of allowing access to the internal
components. As reaffirmed by KSR, evidence showing that a modification is
merely a rearrangement of parts with no change in function will support a
conclusion of obviousness. KSR at 417.
Since claim 1 does not recite a device of any particular length or that
the device is shortened to any degree, we find Appellant’s argument directed
to shortening of the device to be unpersuasive. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (“Many of appellant's arguments fail from the
outset because . . . they are not based on limitations appearing in the
claims.”).
VI. CONCLUSION
On the record before us2 and for the reasons discussed above, we
sustain the rejection maintained by the Examiner.
VII. DECISION
The decision of the Examiner is affirmed.

2Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but 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).
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VIII. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
cam

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