Ex Parte MarcDownload PDFBoard of Patent Appeals and InterferencesMay 28, 201010468449 (B.P.A.I. May. 28, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte BERTRAND MARC ____________________ Appeal 2009-014048 Application 10/468,449 Technology Center 1700 ____________________ Decided: May 28, 2010 ____________________ 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). Appeal 2009-014048 Application 10/468,449 2 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: Appeal 2009-014048 Application 10/468,449 3 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. Appeal 2009-014048 Application 10/468,449 4 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 Appeal 2009-014048 Application 10/468,449 5 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). Appeal 2009-014048 Application 10/468,449 6 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 YOUNG & THOMPSON 209 MADISON STREET SUITE 500 ALEXANDRIA VA 22314 Copy with citationCopy as parenthetical citation