Ex Parte RECK et al

Board of Patent Appeals and Interferences

Mar 31, 2003

09023953 (B.P.A.I. Mar. 31, 2003)

1 In rendering our decision, we have considered Appellants arguments presented in the Brief,
filed December 28, 2001.
The opinion in support of the decision being entered today was not written for publication and
is not binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ALFRED RECK and UWE SIEPMANN
____________
Appeal No. 2002-1974
Application No. 09/023,953
____________
HEARD: March 05, 2003
____________
Before PAK, LORIN, and JEFFREY T. SMITH, Administrative Patent Judges.
JEFFREY T. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Applicants appeal the decision of the Primary Examiner finally rejecting claims 1,
3, 5 to 7 and 9 to 20, all of the claims in the application.1, We have jurisdiction under 35
U.S.C. § 134.
Appeal No. 2002-1974
Application No. 09/023,953
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BACKGROUND
The subject matter of Appellants’ invention relates to a catalytic converter for a
vehicle with an internal combustion engine. According to Appellants, the catalytic
converter is said to partially reduce the proportion of hydrocaxbon in exhaust gases that
have very high proportions of hydrocarbon. (Brief, p. 9). Claim 1, which is
representative of the claimed invention, appears below:
1. A catalytic converter for a vehicle with an internal combustion engine,
comprising:
a jacker tube having a wall with an inner surface and defining therein a flow
passage with a given cross-sectional area;
a honeycomb body having a metal sheet disposed in a vicinity of the inner
surface of the jacket tube, said metal sheet being at least partially coated
with a catalytically active effective to convert hydrocarbons in an exhaust
gas having a hydrocarbon concentration of up to 4% by volume in the
exhaust gas and being disposed such that a predominant, contiguous central
portion of the given cross-sectional area of said flow passage remains free
of said metal sheet;
said metal sheet being corrugated and defining flow channels having a size
and a shape defining a channel density of 25 to 200 cspi, said central
portion being bound by a corrugated surface of said metal sheet.

Appeal No. 2002-1974
Application No. 09/023,953
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CITED PRIOR ART
As evidence of unpatentability, the Examiner relies on the following references:
Kitzner et al. (Kitzner) 3,770,389 Oct. 30, 1973
Toh et al. (Toh) 4,220,625 Sep. 2, 1980
Nonnenmann et al. (Nonnenmann) 4,282,186 Aug. 4, 1981
Noakes et al. (Noakes) 4,397,772 Aug. 9, 1983
McMahon et al. (McMahon) 4,400,309 Aug. 23, 1983
Cyron et al. (Cyron) 4,842,954 Jun. 27, 1989
Hitachi et al. (Hitachi) 5,110,561 May 5, 1992
Arai et al. (Arai) 5,151,254 Sep. 29, 1992
Prigent et al. (Prigent) 5,386,696 Feb. 7, 1995
The Examiner has rejected claims 1, 3, 5 to 7, 9 to 20 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite; claims 1, 3, 5 to 7, 12, 13, 15, 18 and 19 as
unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of Hitachi and
Cyron; claim 9 as unpatentable under 35 U.S.C. § 103(a) as obvious over the combination
of Hitachi and Cyron as applied to 1, 3, 5 to 7, 12, 13, 15, 18 and 19, further combined
with McMahon, Prigent and Noakes; claims 10, 11 and 14 as unpatentable under 35
U.S.C. § 103(a) as obvious over the combination of Hitachi and Cyron as applied to 1, 3,
5 to 7, 12, 13, 15, 18 and 19, further combined with Arai; claim 16 as unpatentable under
35 U.S.C. § 103(a) as obvious over the combination of Hitachi and Cyron as applied to 1,
3, 5 to 7, 12, 13, 15, 18 and 19, further combined with Toh; claim 17 as unpatentable
under 35 U.S.C. § 103(a) as obvious over the combination of Hitachi and Cyron as
applied to 1, 3, 5 to 7, 12, 13, 15, 18 and 19, further combined with Nonnenmann; and
Appeal No. 2002-1974
Application No. 09/023,953
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claim 20 as unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
Hitachi and Cyron as applied to 1, 3, 5 to 7, 12, 13, 15, 18 and 19, further combined with
Kitzner. (Answer, pp. 3 to 10).
DISCUSSION
Rather than reiterate the conflicting viewpoints advanced by the Examiner and
Appellants concerning the above-noted rejection, we refer to the Answer and the Briefs.
I. The Rejection under Section 112, ¶2
The Examiner must demonstrate that the claims do not “set out and circumscribe a
particular area with a reasonable degree of precision and particularity.” In re Moore,
439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971), emphasis added. The purpose
of the second paragraph of Section 112 is to basically insure an adequate notification of
the metes and bounds of what is being claimed. See In re Hammack, 427 F.2d 1378,
1382, 166 USPQ 204, 208 (CCPA 1970).
The Examiner has rejected claims 1, 3, 5 to 7, 9 to 20 under 35 U.S.C. § 112,
second paragraph as indefinite.
According to the Examiner, the claims are indefinite because “claim 1, lines 8-10
the language of the claim is directed to a method limitation which renders the claim vague
and indefinite as it is unclear as to what structural limitation applicants are attempting to
recite.” (Answer, p. 3).
Appeal No. 2002-1974
Application No. 09/023,953
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We determine that the Examiner has not met the initial burden by failing to present
any reasons why one of ordinary skill in the art would not be apprised of the scope of the
claims on appeal. The language “said metal sheet being at least partially coated with a
catalytically active coating effective to convert hydrocarbons in an exhaust gas having a
hydrocarbon concentration of up to 4% by volume in the exhaust gas” of claim 1 defines
the metal sheet as partially coated with a coating and the properties of the coating thereon
in terms of function. In re Hughes, 496 F.2d 1216, 182 USPQ 106 (CCPA 1974)
(Defining a product in terms of a process does not make the language of the claim
imprecise or indefinite.). The claims provide adequate notification of the metes and
bounds of the claimed subject matter.
For the foregoing reasons and those set forth in the Brief, the rejection of claims 1,
3, 5 to 7 and 9 to 20 under 35 U.S.C. § 112, second paragraph, is reversed.
II. The Rejection under Section 103
We have carefully reviewed the claims, specification and applied prior art,
including all of the arguments advanced by both the Examiner and Appellants in support
of their respective positions. This review leads us to conclude that the rejection of claims
1, 3, 5 to 7 and 9 to 20 are not well founded. Our reasons appear below. We will limit
our discussion to the independent claim, i.e., claim 1.
Appeal No. 2002-1974
Application No. 09/023,953
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According to the Examiner, Hitachi describes a catalytic converter that differs
from the claimed invention in that (1) the channel density is not provided and (2) the
central portion of the converter is bounded by a flat surface of sheet metal. The Examiner
asserts that if the corrugation of Hitachi were limited to one layer then the channel density
would be about 40 channels. To remedy the other deficiency, the Examiner relies on the
Cyron reference. (Answer, pp. 4-6).
To hold an invention obvious in view of a combination of references, there must
be some suggestion, motivation, or teaching in the prior art that would have led a person
of ordinary skill in the art to select the references and combine them in the way that
would produce the claimed invention. See, e.g., Heidelberger Druckmaschinen AG v.
Hantscho Commercial Prods., Inc., 21 F.3d 1068, 1072, 30 USPQ2d 1377, 1379 (Fed.
Cir. 1994) (When the patent invention is made by combining known components to
achieve a new system, the prior art must provide a suggestion, or motivation to make such
a combination.); Northern Telecom v. Datapoint Corp., 908 F.2d 931, 934, 15 USPQ2d
1321, 1323 (Fed. Cir. 1990) (It is insufficient that the prior art disclosed the components
of the patented device, either separately or used in other combinations; there must be
some teaching, suggestion, or incentive to make the combination made by the inventor.);
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1044, 1051, 5 USPQ 1434, 1438
(Fed. Cir. 1988). In addition to the differences cited by the Examiner above, Hitachi
Appeal No. 2002-1974
Application No. 09/023,953
2 Hitachi discloses that a nickle-based brazing solution is used in the combining of the
honeycomb core body and metal casting. (Col. 6). There is no indication by the Examiner that this
solution would have the properties required by the invention of claim 1.
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does not describe the coating which is applied to at least a portion of the interior metal
sheet.2 In any event, if Hitachi did include a coating as required by the claimed invention
the coating would have been applied to an interior smooth surface.
Hitachi discloses the interior of the catalytic converter is bounded by a flat cylinder
(3) that extends the entire axial length of the honeycomb structure. The Examiner has not
provided adequate motivation for eliminating the interior support devices of Hitachi. The
Examiner asserts that “[i]t would have been obvious to one having ordinary skill in the art
to use the corrugated metal sheet as an innermost layer to define a coil-free central zone
as taught by Cyron et al[.] in the apparatus of Hitachi et al[.] to facilitate the grasping of
the end of the sheets during mass production as taught by Cyron et al.” (Answer, p. 6).
As stated above, Hitachi uses a cylinder as support for the honeycomb structure. The
Examiner has not addressed what the effects of removal of the interior would have on the
Hitachi invention.
The mere fact that the prior art could be modified would not have made the
modification obvious unless the prior art suggested the desirability of the modification.
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984); In re
Laskowski, 871 F.2d 115, 117, 10 USPQ2d 1397, 1398 (Fed. Cir. 1989). The record
Appeal No. 2002-1974
Application No. 09/023,953
3 All of the rejections under section 103 rely on combination of references that include Hitachi
and Cyron. The additional cited references do not remedy the aforementioned deficiencies of Hitachi.
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indicates that the motivation relied upon by the Examiner suggesting the combination of
Hitachi and Cyron came from the Appellants’ description of their invention in the
specification rather than coming from the applied prior art and that, therefore, the
Examiner used impermissible hindsight in rejecting the claims. See W.L. Gore &
Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983); In re Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960). For the
reasons stated above and in Appellants’ Brief, pages 15 to 18, we reverse all of the
Examiner’s rejections under 35 U.S.C. § 103(a).3
Appeal No. 2002-1974
Application No. 09/023,953
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CONCLUSION
The Examiner’s rejections of claims 1, 3, 5 to 7 and 9 to 20 unpatentable
under 35 U.S.C. § 103(a) are reversed. The rejection of claims 1, 3, 5 to 7 and 9 to
20 under 35 U.S.C. § 112, second paragraph, is reversed.
REVERSED

)
)
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
HUBERT C. LORIN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
JTS/kis
Appeal No. 2002-1974
Application No. 09/023,953
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LERNER & GREENBERG
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