Ex Parte MAUS et al

Patent Trial and Appeal Board

Jan 29, 2018

12869860 (P.T.A.B. Jan. 29, 2018)

United States Patent and Trademark Office
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.
12/869,860 08/27/2010 WOLFGANG MAUS EM-84370 8657
24131 7590 01/31/2018
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, EL 33022-2480
EXAMINER
WANG, XIAOBEI
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
01/31/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
boxoa@patentusa.com
docket @ paten tusa. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WOLFGANG MAUS,
PETER HIRTH, ROLF BRUCK,
and KAIT ALTHOFER
Appeal 2017-004831
Application 12/869,860
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—3, 5—13, 15, 16, and 18.2 We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party in interest as “Emitec Gesellschaft Fuer
Emissionstechnologie MBH” (Br. 1).
2 Claim 17 is pending and was objected to by the Examiner as dependent
upon a rejected base claim, but would be allowable if rewritten in
independent form (Final Act. 14).
Appeal 2017-004831
Application 12/869,860
Appellants’ invention is directed to a honeycomb body used for
exhaust gas treatment in motor vehicles. Spec. 12.
Claim 1 is illustrative (emphasis added):
1. A honeycomb body, comprising:
a housing; and
a honeycomb structure having a cross section within said
housing, said honeycomb structure including at least one at
least partially structured metallic layer forming a multiplicity
of channels and inner contact points within said cross section;
said at least one at least partially structured metallic
layer including at least one structured sheet-metal foil and at
least one smooth metallic layer,
said cross section having a plurality of radial zones
disposed concentrically around an axis longitudinally extending
through said honeycomb structure;
at least 1% and at most 20% of said inner contact points
in at least one of said plurality of radial zones forming
connecting points connecting said at least one structured sheet-
metal foil to said at least one smooth metallic layer, said
connecting points fixing said honeycomb structure;
said plurality of radial zones having different non-zero
densities of said connecting points; and
said connecting points being disposed at different mutual
spacings along said at least partially structured metallic layer.
Br. 10 (Claims App.).
Appellants appeal the following rejections:
1. Claims 1—3, 5—11, 13, 15, 16, and 18 are rejected on the ground of
nonstatutory obviousness-type double patenting as unpatentable over
claim 1 of Maus et al. (US 8,173,268 B2, issued May 8, 2012,
“Maus”), in view of Briick et al. (US 5,382,774, issued Jan. 17, 1995,
“Briick”).
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Appeal 2017-004831
Application 12/869,860
2. Claims 1—3, 5—13, 15, 16, and 18 are provisionally rejected on the
ground of nonstatutory obviousness-type double patenting as
unpatentable over claims 1—10 of copending Application No.
12/869,859.
3. Claims 1—3, 5—13, 15, 16, and 18 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Althofer et al. (US 2007/0259198 Al,
published Nov. 8, 2007, “Althofer”), in view of Briick.
Because Application No. 12/869,859 has matured into a patent, the
provisional obviousness-type double patenting rejection is now moot, and
we leave it to the Examiner to determine whether the claims of
US 9,784,160 should serve as the basis for an obviousness-type double
patenting rejection upon return of jurisdiction over the application to the
Examiner.
With respect to the rejections on the ground of obviousness-type
double patenting and under § 103(a), Appellants’ arguments focus solely on
independent claim 1. Br. 4—8. Accordingly, claims 2, 3, 5—13, 15, 16, and
18 will stand or fall with our analysis of claim 1.
FINDINGS OF FACT AND ANAFYSIS
Appellants argue that Briick would not have suggested the
modification of either Maus’ or Althofer’s connecting points such that they
are “disposed at different mutual spacings along said at least partially
structured metallic layer” as required in instant claim 1. Br. 4—8. Appellants
assert that Althofer and “Maus disclose[] connections between a smooth
layer and a structured layer” {id. at 7), whereas Briick’s bridges 7 connect
‘“adjacent windings of the stack.’” Id. at 5—6 (citing Briick 2:48); see also
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Appeal 2017-004831
Application 12/869,860
Briick, Fig. 1. Thus, according to Appellants, the ordinary skilled artisan
would have merely gleaned from Briick that “additional bridges 7” may be
added between the windings of Maus’ and Althofer’s stacks. Br. 8; see also
id. at 6. Appellants essentially argue that Briick’s teachings would not have
motivated one of ordinary skill in the art to configure a honeycomb structure
as claimed.
The Examiner responds by asserting that Briick teaches that “certain
bridges are formed between adjacent windings of the stacks of metallic
layers, at different mutual spacings, which provide a maximum possible
mechanical strength, thereby achieving stability in the honeycomb.” Ans.
12. The Examiner argues that both Maus and Althofer teach that the
frequency of connecting point placement is a result effective variable that
can be optimized to improve flexibility, as taught by Maus, or prevent
fractures, as taught by Althofer. Id. at 12—13. Therefore, according to the
Examiner, the ordinary skilled artisan would have been motivated to change
the placement and frequency of these connecting points and that the different
mutual spacings of Briick’s bridges 7 “provides a suggestion on how that
placement might happen.” Id. at 13.
The preponderance of the evidence of record favors Appellants’
arguments of nonobviousness. The Examiner’s rejections of claim 1 are
based upon a finding that Briick’s bridges 7 are “formed between adjacent
windings of the stacks of metallic layers.” Id. at 12 (emphasis added). Our
review of Briick, however, finds that Briick’s bridges 7 are not connecting
points of the same type taught by either Maus or Althofer. Rather, Briick’s
bridges 7 are connections within ceramic insulating layers 9; they are not
connecting points between the smooth layers (Briick’s layers 4; Maus’ layers
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Appeal 2017-004831
Application 12/869,860
5; Althofer’s layers 7) and the corrugated sheet metal layers (Briick’s layers
5; Maus’ layers 5; Althofer’s layers 17). Briick 6:33—38; Maus 8:8—9;
Althofer 191. Therefore, the Examiner’s conclusion that Briick’s
connections provide sufficient suggestion to place Maus’ and Althofer’s
connecting points at different mutual spacings along a partially structured
metallic layer is not supported by the preponderance of the evidence.
Rather, Appellants have the better position that Briick would not have
provided any reason to modify the spacing between connecting points in
Maus’ and Althofer’s metallic layers.
On this record, we find that the preponderance of the evidence does
not support a finding that either Maus’ claim 1 or Althofer, in view of
Briick, teaches or suggests connecting points disposed at different mutual
spacings along an at least partially structured metallic layer, as required in
claim 1.
CONCLUSION
Accordingly, we reverse the Examiner’s obviousness-type double
patenting rejection of claims 1—3, 5—11, 13, 15, 16, and 18. 37 C.F.R.
§ 41.37(c)(l)(iv). We further reverse the Examiner’s § 103(a) rejection of
claims 1—3, 5—13, 15, 16, and 18.
DECISION
The Examiner’s obviousness-type double patenting and § 103(a)
rejections are reversed.
REVERSED
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