Ex parte NAGAOKA

Board of Patent Appeals and Interferences

Apr 28, 1998

08147086 (B.P.A.I. Apr. 28, 1998)

Application for patent filed November 3, 1993. According1
to appellant, this application is a continuation of
Application 07/769,061, filed September 30, 1991, now
abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte TADAYOSHI NAGAOKA
__________
Appeal No. 96-2354
Application No. 08/147,0861
__________
ON BRIEF
__________
Before ABRAMS, STAAB and McQUADE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 15-20. Claims 1 through 11, 13, 14
and 21 have been canceled, and claim 12 has been withdrawn
Appeal No. 96-2354
Application No. 08/147,086
A copy of a PTO translation of this reference is2
enclosed.
2
from consideration as being directed to a non-elected
invention (Paper No. 18).
The appellant's invention is directed to a device for
holding catalyst in a reactor. The subject matter before us
on appeal is illustrated by reference to claim 15, which is
reproduced in the Appeal Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Anderson 4,225,562 Sep. 30,
1980
Koike 4,879,099 Nov. 7,
1989
Canadian patent (King) 520,907 Jan. 17,
1956
Japanese application Sho 51-18273 Feb. 13,
1976
(Yasui)2
THE REJECTION
Appeal No. 96-2354
Application No. 08/147,086
3
Claims 15-20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Anderson in view of Yasui, Koike and
King.
The rejection is explained in the Examiner's Answer and
Supplemental Answer.
The opposing viewpoints of the appellant are set forth in
the Appeal Brief and the Reply Brief.
OPINION
The rejection is on the basis of obviousness, the test
for which is what the combined teachings of the prior art
would have suggested to one of ordinary skill in the art. See
In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981). In establishing a prima facie case of obviousness, it
is incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a
prior art reference or to combine reference teachings to
arrive at the claimed invention. See Ex parte Clapp, 227 USPQ
972, 973 (Bd. Pat. App. & Int. 1985). To this end, the
requisite motivation must stem from some teaching, suggestion
Appeal No. 96-2354
Application No. 08/147,086
4
or inference in the prior art as a whole or from the knowledge
generally available to one of ordinary skill in the art and
not from the appellant's disclosure. See, for example,
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5
USPQ2d 1434, 1052 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988).
The preamble of claim 15, the sole independent claim,
states that the claim is directed to a device for holding
catalyst in a vertical type radial flow reactor. The
examiner’s rejection of claim 15 is predicated upon the
teachings of four references. The first of these is Anderson
which, in our view, suffers from a number of serious defects
in its role as the primary reference. The first of these is
that it does not disclose a radial flow reactor, as is
required by the appellant’s claim 15. In addition, Anderson
fails to disclose or teach that the catalyst containers are
removable, much less that they are sized to be removable
through an opening in the reactor. Also, in the Anderson
design, the catalyst containers are rectangular, rather than
being shaped as arcs of a cylinder. Finally, the inner and
Appeal No. 96-2354
Application No. 08/147,086
5
outer walls of Anderson are imperforate and the sides are
screens, which is the opposite of that required by claim 15.
According to the examiner, Yasui teaches a radial flow
reactor having a plurality of removable catalyst containers
(Answer, page 4). While we agree that the flow through the
catalyst is radial, we do not agree that the catalyst
containers are removable. Yasui constructs the large
cylindrical “basket” that contains the catalyst of a plurality
of units which are “attached and secured to each other”
(translation, page 3; Figure 2). There is no explicit
teaching that these are removable, once attached together, nor
in our view would one of ordinary skill in the art have
understood this to be the case. Therefore, the only
suggestion to modify the Anderson system by providing
removable catalyst containers is found in the hindsight
accorded one who first viewed the appellant’s disclosure.
This, of course, is not a proper basis upon which to construct
a rejection under 35 U.S.C. § 103. See In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
While Koike teaches removing containers of catalyst from
its operating location in an exhaust gas passage, a feat which
Appeal No. 96-2354
Application No. 08/147,086
The preamble to claim 15 recites “a vertical type radial3
flow reactor,” and the final two lines of this claim that a
plurality of containers are assembled “to form a cylindrical
catalyst bed” in the reactor. However, there is no proper
antecedent basis for “said cylindrical reactor,” which appears
in lines 18 and 22. This situation is worthy of correction.
6
certainly requires that the containers fit through an opening
in the passage, the problems set out above with regard to the
other two references are not solved by Koike. Nor are they by
King, which is cited for its disclosure of spacers between the
walls of the reactor vessel and the catalyst containers.
In addition, from our perspective, the examiner failed to
point out where the limitations regarding the arcuate shape of
the inner and outer walls and the selective use of screens and
imperforate material in these walls are taught by the
references, or where the suggestion for modifying the Anderson
apparatus to add these features is found, even in response to
the appellant’s arguments raising these points.
It is our conclusion that the teachings of the applied
references fail to establish a prima facie case of obviousness
with regard to the subject matter of claim 15. We thus will
not sustain the rejection of independent claim 15 or claims
16-20, which depend therefrom.3
Appeal No. 96-2354
Application No. 08/147,086
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The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge)
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge)
Appeal No. 96-2354
Application No. 08/147,086
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