Ex Parte Miyakawa et al

Board of Patent Appeals and Interferences

Nov 25, 2008

10717502 (B.P.A.I. Nov. 25, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAKASHI MIYAKAWA
and
SATORU INOUE
____________

Appeal 2008-4337
Application 10/717,502
Technology Center 1700
____________

Decided: November 25, 2008
____________

Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
JEFFREY T. SMITH, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-10 and 13 (Supplemental Appeal Brief filed January 10, 2008,
hereinafter “App. Br.,” Final Office Action mailed December 4, 2006). We
have jurisdiction under 35 U.S.C. § 6(b).

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Application 10/717,502

We AFFIRM.

STATEMENT OF THE CASE
Appellants state that the invention “relates to a process for producing
a formed honeycomb body which is an intermediate for production of a
honeycomb structure suitably used, for example, as a diesel particulate filter
or as a carrier for catalyst for purification of automobile exhaust gas”
(Specification, hereinafter “Spec.,” 1, ll. 8-12).
Claims 1 and 3 on appeal read as follows:
1. A process for producing a formed honeycomb body,
the process comprising:
mixing, by a mixer, a raw material for forming a
honeycomb body structure containing at least a ceramic raw
material powder, a binder and water, to obtain a compounded
mixture for forming a green body;
adding a predetermined amount, to the raw material for
forming the honeycomb body, a powdery material obtained by
crushing, into a maximum particle diameter of 50 mm or
smaller, a crushed green body having substantially same
composition as the compounded mixture for forming the green
body, the crushed body being obtained from a rejected product
of an undried formed material, and a resulting mixture is mixed
thoroughly by the mixer to obtain the compounded mixture for
forming the green body; and
kneading and extruding the compounded mixture for
forming the green body into a honeycomb shape by a
continuous extruder, to obtain the formed honeycomb body;
wherein the mixer includes a hoe that rotates at a low
speed and a chopper having a cross-shaped blade that rotates at
a high speed.
3. A process for producing a formed honeycomb body
according to Claim 1, wherein the crushed green body is added
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in an amount about 30 parts by mass or less relative to about
100 parts by mass of the ceramic raw material powder.
(App. Br. A-19, Claims Appendix)

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Asami 4,851,376 Jul. 25, 1989
Brown 5,900,051 May 4, 1999
Kasuya JP 55-152011A Nov. 27, 1980
(English language translation of record)

The Examiner rejected the claims as follows: claims 1-10 and 13
under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of
Asami, JP 55-152011A, and Brown (Examiner’s Answer mailed March 6,
2008, hereinafter “Ans.,” 4-17).
Appellants have argued claims 1-10 and 13 together except they have
submitted separate arguments under a heading specific to claims 3 and 4 and
another heading specific to claims 1-10. We address these arguments by
focusing on claims 1 and 3. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner found that Asami describes every limitation of
appealed claim 1 except that it does not teach: (i) “mixing of undried
reclaimed material [i.e., a powdery material obtained] with a raw ceramic
material”; and (ii) “mixing with the claimed mixer” (Ans. 4). The Examiner,
however, found that: (1) JP 55-152011A “teaches mixing of a
reclaimed/returned extruded ceramic material, with out drying, with a raw
ceramic/pottery material” and further shaping the mixture in an extruder;
and (2) Asami “suggests that water may be added to a dried reclaimed
material in order to reduce the mechanical impact on the particles” (Ans. 4).
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On the basis of these findings, the Examiner reasoned that “a person of
ordinary skill in the art would have found it obvious to have mixed the
reclaimed/returned extruded ceramic material, with out drying, with a raw
ceramic material, as taught by JP 55-152011A, in the process of Asami . . .
and would have been motivated to do [so] in order to eliminate an undesired
process step, namely that of drying . . . .” (Ans. 4-5). As to the claimed
mixer (“a hoe that rotates at a low speed and a chopper having a cross-
shaped blade that rotates at a high speed”), the Examiner found that the
claimed mixer is a well known mixer and concluded that “it would have
been prima facie obvious to one having ordinary skill in the art . . . to have
employed the mixer disclosed by Brown as the mixer in the method of
Asami . . . because Brown suggests such a mixer can effectively blend
materials in a short amount of time . . . and further suggests that such a
mixer is effective at forming appropriate sized agglomerates of particles for
further use that don’t tend to cake or form lumps . . . .” (Ans. 5). With
respect to claim 3, the Examiner held that although “Asami . . . does not
teach a specific mixture of the reclaimed materials to raw materials. . . . a
person of ordinary skill in the art would have found it obvious to have
optimized the relative ratios of reclaimed material to raw materials through
routine experimentation . . . and would have been motivated to do so in order
to provide an economical and stable product” (Ans. 5-6).
Appellants, on the other hand, contend that the Examiner “failed to
provide a proper suggestion or motivation to combine Asami with [JP 55-
152011A]” (App. Br. 11) and “fail[ed] to specifically address the claimed
mixer including ‘a hoe that rotates at a low speed and a chopper having a
cross-shaped blade that rotates at a high speed’” (App. Br. 14). Regarding
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claim 3, Appellants assert that “[w]hile only routine skill in the art may be
required to discover an optimum value of a recognized result-effective
variable, the relative ratios . . . are not recognized in the prior art as a result-
effective variable” (App. Br. 16).

ISSUES
Thus, the issues arising from the contentions of the Examiner and
Appellants are:
I. Have Appellants shown error in the Examiner’s determination
that a person a having ordinary skill in the art would have been led to mix
the claimed powdery material with a raw material in Asami?
II. Have Appellants shown error in the Examiner’s determination
that a person having ordinary skill in the art would have found it obvious to
carry out Asami’s mixing step in a mixer including “a hoe that rotates at a
low speed and a chopper having a cross-shaped blade that rotates at a high
speed?”
III. Have Appellants shown error in the Examiner’s determination
that a person having ordinary skill in the art would have been led to arrive at
the claimed relative mass ratio of the “crushed green body” to the “ceramic
raw material powder?”

FINDINGS OF FACT
1. Oral arguments were heard on November 5, 2008.
2. Asami describes a process for producing a honeycomb structure
from a cordierite ceramic body including reclaimed cordierite
composition obtained from a dried, unfired shaped body or its
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fragments, which is/are rejected and recovered before the
shaped body is fired into the cordierite ceramic material (col. 3,
ll. 31-32. 42-49).
3. Asami further teaches that the reclaimed cordierite material
may be crushed into small pieces having an average diameter of
about 50 mm (col. 3, ll. 50-56; col. 8, ll. 12-17).
4. Additionally, Asami discloses that water may be added to the
dried, unfired scrap or its fragments and that this “allows the
scrap to be easily and effectively divided into particles, without
giving mechanical impacts to the particles” (col. 3, ll. 56-61;
col. 8, ll. 45-52).
5. Asami teaches that the reclaimed cordierite composition may be
used in admixture with a fresh mass of a cordierite composition
in an amount ranging from 2.5% to 100% by weight (col. 3, ll.
64-68; col. 8, ll. 60-65).
6. Asami discloses that the mixture of reclaimed and fresh
cordierite compositions are combined with binder and water
and then the resulting mixture is kneaded and extruded to form
the honeycomb structure (col. 13, ll. 26-38).
7. JP 55-152011A teaches a molding method for a wet pottery raw
material in which after a pottery material containing water is
sufficiently kneaded, part of this kneaded material is returned to
a point in the process prior to kneading to enable easier
kneading and to obtain a molding with fewer distortions
(Translation 1).
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8. Brown teaches the use of a variable-speed Littleford Plowshare
Mixer configured with two plows and one 4-bar “Christmas
Tree Chopper” to mix two colors of pigmented particles with
the plows blending at a speed of about 155 rpm and the chopper
rotating at about 3,600 rpm (col. 5, ll. 28-32; col. 6, ll. 6-14).
9. The Littleford Plowshare Mixer described in Brown provides
thorough chopping and mixing of solid pigment particles with
non-dusting, low degradation rates, high flowability or
dispersability, and non-formation of clumps or caking when
stored for long periods of time (col. 5, ll. 36-48).
10. It is undisputed that Brown’s Littleford Plowshare Mixer is the
same mixer specified in Appellants’ claim 1.
11. Appellants acknowledge that “[t]he ceramic molding arts, in
certain instances, may use a mixer having a hoe or a single or
twin screw extruder” (App. Br. 14).

PRINCIPLES OF LAW
On appeal to this Board, Appellants must show that the Examiner
committed error in finally rejecting the claims. Cf. In re Kahn, 441 F.3d
977, 985-986 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can
overcome a rejection by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)); see also 37 C.F.R. § 41.37(c)(1)(vii).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
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that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727,
1734 (2007).
KSR reaffirms the analytical framework set out in Graham v. John
Deere Co., 383 U.S. 1 (1966), which states that an objective obviousness
analysis includes: (1) determining the scope and content of the prior art; (2)
ascertaining the differences between the prior art and the claims at issue; and
(3) resolving the level of ordinary skill in the pertinent art. KSR, 127 S. Ct.
at 1734. Secondary considerations such as commercial success, long felt but
unsolved needs, or failure of others “‘might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.’” Id. (quoting Graham, 383 U.S. at 17-18).
KSR disapproved a rigid approach to obviousness (i.e., an analysis
limited to lack of teaching, suggestion, or motivation). KSR, 127 S. Ct. at
1741 (“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents.”). See also DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006)
(“Our suggestion test is in actuality quite flexible and not only permits, but
requires, consideration of common knowledge and common sense”); Alza
Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1291 (Fed. Cir. 2006) (“There is
flexibility in our obviousness jurisprudence because a motivation may be
found implicitly in the prior art. We do not have a rigid test that requires an
actual teaching to combine...”).
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KSR further instructs “that when a patent claims a structure already
known in the prior art that is altered by mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result.” KSR, 127 S. Ct. at 1740.
When a product recited in product-by-process format reasonably
appears to be the same as or obvious from a product of the prior art, the
burden is on applicant to show that the prior art product is in fact different
from the claimed product, even though the products may be made by
different processes. Cf. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
This principle applies even in the context of a process claim that recites a
step of using a product that defined by the method by which it is produced.
Cf. In re Hirao, 535 F.2d 67, 69 (CCPA 1976).
“The normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where in a
disclosed set of percentage ranges is the optimum combination of
percentages.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).

ANALYSIS
The Examiner found that Asami teaches a method as here claimed
except the reference does not disclose mixing undried reclaimed cordierite
material (i.e., reclaimed cordierite composition containing water) with fresh
cordierite material in the claimed mixer (Ans. 4; Facts 2-6). Nevertheless,
the Examiner found that Asami teaches the addition of water to dried,
reclaimed cordierite (Ans. 4). Further, JP 55-152011A teaches the
advantages of recycling (i.e., reclaiming) ceramic slurry material into the
mixer to enable easier kneading and to obtain a molding with fewer
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distortions (Fact 7). Furthermore, the Examiner found that the claimed
mixer is a well known mixer, which provides thorough chopping and mixing
for solid pigment particles with non-dusting, low degradation rates, high
flowability or dispersability, and non-formation of clumps or caking when
stored for long periods of time (Facts 8-11).
Given these facts, we share the Examiner’s view that a person having
ordinary skill in the art would have found it prima facie obvious to mix
undried (i.e., wet) reclaimed cordierite composition with fresh cordierite
composition with the reasonable expectation of eliminating a drying step.
While Asami does not explicitly state that wet reclaimed cordierite is
crushed to smaller particles, Asami teaches adding water to reclaimed
material that is in fragmented (i.e., crushed) form (Fact 4). Hence, contrary
to Appellants’ belief (App. Br. 11), we see no basis to reverse the
Examiner’s rejection on the argument that Asami would not have suggested
crushing wet reclaimed cordierite. In any event, we find no error in the
Examiner’s conclusion that a person having ordinary skill in the art would
have found it prima facie obvious to use Brown’s mixer in Asami’s mixing
process under appropriate shear conditions in order to obtain the advantages
taught in Brown. When such a mixer is used in Asami, it would reasonably
appear that the reclaimed materials would undergo effective particle division
as suggested by Asami (Fact 4). Appellants have not demonstrated
otherwise.
Moreover, claim 1 recites “adding a predetermined amount . . . [of] a
powdery material obtained by crushing . . . the crushed body being obtained
from a rejected product of an undried formed material . . . .” While it is true
that Asami teaches the use of a mixture obtained by adding water to dried
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reclaimed material, Appellants have not shown that the use of “undried
formed material” results in a different “powdery material.” Cf. In re Thorpe,
777 F.2d at 697; In re Hirao, 535 F.2d at 69. To the extent that Appellants
are contending that “powdery material” excludes a slurry (i.e., excludes
water) (App. Br. 12), Asami teaches that dried reclaimed cordierite may be
used (Fact 2-3).
Appellants argue that “Asami uses dried cordierite articles specifically
because of the art-recognized problems with reusing undried green bodies . .
. .” (App. Br. 12-13.) But Appellants have not directed us to any
experiments or other persuasive evidence establishing that such problems
exist.
Appellants contend that the amount of crushed green body relative to
the ceramic raw material powder has not been shown to be a result-effective
variable (App. Br. 16-17). Again, Appellants have failed to show error.
Asami teaches the suitable amounts of reclaimed material that may be added
and thus the claimed range is prima facie obvious (Fact 5). Here, a person
having ordinary skill in the art would have found the optimum or workable
amounts through nothing more than routine experimentation. In re
Peterson, 315 F.3d at 1330.
We have fully considered all the arguments, including those in the
Reply Brief filed on April 29, 2008, but find them unpersuasive for reasons
given above.
For these reasons, we uphold the Examiner’s rejection of all the
appealed claims.

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CONCLUSION
On this record, we determine that Appellants have failed to
demonstrate any error in the Examiner’s determination that: (i) a person a
having ordinary skill in the art would have been led to mix the claimed
powdery material with a raw material in Asami; (ii) a person having
ordinary skill in the art would have found it obvious to carry out Asami’s
mixing step in a mixer including “a hoe that rotates at a low speed and a
chopper having a cross-shaped blade that rotates at a high speed”; and (iii) a
person having ordinary skill in the art would have been led to arrive at the
claimed relative mass ratio of the “crushed green body” to the “ceramic raw
material powder.”
DECISION
The Examiner’s decision to reject appealed claims 1-10 and 13 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (1) (iv).

AFFIRMED

rvb

OLIFF & BERRIDGE, PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
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