Ex Parte Maus

Board of Patent Appeals and Interferences

Nov 21, 2011

10763027 (B.P.A.I. Nov. 21, 2011)

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.
10/763,027 01/21/2004 Wolfgang Maus E-80044 9168
24131 7590 11/21/2011
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
MERKLING, MATTHEW J
ART UNIT PAPER NUMBER
1723
MAIL DATE DELIVERY MODE
11/21/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte WOLFGANG MAUS
__________

Appeal 2011-001448
Application 10/763,027
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
LINDA M. GAUDETTE, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001448
Application 10/763,027

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A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s final
rejection of claims 1-4 and 6-29.1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The subject matter on appeal is directed to a honeycomb body for use in an
exhaust system of an internal combustion engine wherein the body comprises a
housing and a metallic matrix having an average initial diameter. The Appellant
discloses that honeycomb bodies of this type serve as catalyst carrier bodies for
cleaning exhaust gases of a diesel engine or spark-ignition engine. Spec. 1:12-18.
According to the Appellant’s Specification, it is known that the metallic
honeycomb bodies in exhaust systems of internal combustion engines are exposed
to high, thermal alternating stresses. Id. at 1:20-22.
[T]ests have shown that because of the different cooling
behavior in edge regions and in core regions of the
matrix, after repeated thermal alternating stresses known
metallic honeycomb bodies no longer assume their
original, in particular cylindrical shape, but rather reduce
their volume and have a contour similar to a barrel. This
has the effect, for example, that a relatively large annular
gap is formed between the matrix and the housing,
through which, in particular during operation of the
honeycomb body in the exhaust system of an internal
combustion engine, the uncleaned exhaust gas flows and,
in consequence, effective cleaning in accordance with
legal regulations cannot be ensured.
Id. at 3:4-15.

1 An oral hearing was held on November 9, 2011.
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The Appellant discloses that an object of the invention is to provide a
honeycomb body having a contraction limiter that ensures an effective conversion
of pollutants in the exhaust gas even after the honeycomb body has been subjected
to a multiplicity of thermal alternating stresses. Id. at 3:18-24. In particular, the
contraction limiter causes an outwardly directed tensile stress in at least one part of
the matrix, so that the average initial diameter of the matrix decreases by at most
5% during and/or after a thermal stress. Id. at 4:4-9.
Claim 1, reproduced below, is directed to a honeycomb body comprising,
inter alia, at least one contraction limiter.
1. A honeycomb body, comprising:
a housing;
a matrix having an average initial diameter and
connected to said housing; and
at least one contraction limiter configured for
imparting an outwardly directed tensile stress in at least
one part of said matrix for preventing the average initial
diameter of said matrix from decreasing by more than 5%
after repeated thermal alternating stresses in the range
between 600ºC and 1050ºC.
App. Br., Claims Appendix.2
The Appellant seeks review of the following rejections:
(1) the rejection of claims 1-4, 6, and 8-27 under 35 U.S.C. § 102(b) as
anticipated by Ota3 as evidenced by Stroom4 and http://www.matweb.com5; and

2 Appeal Brief dated March 29, 2010.
3 US 5,486,338 issued January 23, 1996.
4 US 6,245,301 B1 issued June 12, 2001.
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Application 10/763,027

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(2) the rejection of claims 1, 7, 28, and 29 under 35 U.S.C. § 102(b) as
anticipated by Maus.6
B. DISCUSSION
The Examiner contends that Ota discloses a honeycomb body comprising a
housing, a matrix, and at least one contraction limiter (i.e., cushion members 5, 9a,
9b, 10, 11) as recited in claim 1. Ans. 4.7 Likewise, the Examiner contends that
Maus discloses a honeycomb body comprising a housing, a matrix, and at least one
contraction limiter (i.e., connecting tube 11) as recited in claim 1. Id. at 7-8.
The Appellant argues that the cushion members disclosed in Ota are not
“contraction limiters” as recited in claim 1 because the cushion members do not
impart an outwardly directed tensile stress on the matrix. App. Br. 5. The
Appellant also argues that the connecting tube of Maus does not limit contraction
because the gaps (13, 14) between the housing and the matrix are “very wide.” Id.
at 13. The Examiner disagrees with both arguments. See Ans. 8-11.
Assuming for the sake of argument that the cushion members of Ota and the
connecting tube of Maus do impart some degree of outwardly directed tensile
stress on the respective matrices, claim 1 also recites that the contraction limiter:
impart[s] an outwardly directed tensile stress in at least
one part of said matrix for preventing the average initial
diameter of said matrix from decreasing by more than
5% after repeated thermal alternating stresses in the
range between 600ºC and 1050ºC.

5 Data Sheet for 301 Stainless Steel,
http://www.matweb.com/search/DataSheet.aspx?MatGUID=0cf4755fe3094810963
eaa74fe812895&ckck=1 (last visited Nov. 15, 2011).
6 US 5,916,530 issued June 29, 1999.
7 Examiner’s Answer dated June 11, 2010.
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App. Br., Claims Appendix (emphasis added).
The Examiner has taken the position that the limitation of “repeated thermal
alternating stresses in the range between 600ºC and 1050ºC” is a process limitation
and is entitled to little weight in apparatus claim 1. Ans. 4. However, the
Examiner’s position is erroneous. The limitation is not a process limitation but
rather defines a property of the contraction limiter, i.e., the contraction limiter
“prevent[s] the average initial diameter of said matrix from decreasing by more
than 5% after repeated thermal alternating stresses in the range between 600ºC and
1050ºC.” App. Br., Claims Appendix. This property is achieved by a combination
of at least the material and the configuration of the contraction limiter.
The Examiner contends that “after the matrix [of Ota and Maus] has been
through multiple repeated thermal stresses . . . the average initial diameter will still
be the same.”8 Ans. 4, 8. However, the Examiner does not direct us to any
evidence that supports this position.9
Significantly, the Examiner has not directed us to any evidence which
demonstrates that any outwardly directed tensile strength imparted by the cushion
members of Ota and/or the connecting tube of Maus “prevent[s] the average initial
diameter of [the respective matrices] from decreasing by more than 5% after

8 We understand the “initial diameter” recited in claim 1 to be a reference point
that is used to measure the change in diameter of the matrix after repeated thermal
alternating stresses.
9 On pages 4-5 of the Examiner’s Answer, the Examiner relies on evidence in
Stroom and http://www.matweb.com to establish that “the increase (and
subsequent decrease) in the diameter of the honeycomb matrix [of Ota] would
amount to . . . ~1%.” However, on page 10 of the Examiner’s Answer, the
Examiner indicates that reliance on this evidence was erroneous.
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repeated thermal alternating stresses in the range between 600ºC and 1050ºC.” For
this reason, the § 102(b) rejections are reversed.
C. DECISION
The decision of the Examiner is reversed.

REVERSED
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