Ex Parte Shirk et al

Board of Patent Appeals and Interferences

Mar 30, 2006

10322008 (B.P.A.I. Mar. 30, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte RYAN C. SHIRK,
STEPHEN M. SANOCKI, JOSEPH C. PEISERT,
ROGER L. LANGER, LOYD R. HORNBACK III and
IAN R. HARDING
__________

Appeal No. 2006-0583
Application No. 10/322,008
__________

ON BRIEF
__________

Before GARRIS, PAK and FRANKLIN, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal which involves claims 24-28, 30-34 and 46.
The subject matter on appeal relates to a method of making a pollution control device
which comprises providing a flexible and self-supporting insulating end cone of insulating
material and disposing the insulating end cone between inner and outer end cone housings of
the pollution control device. Further details regarding this subject matter are set forth in
representative independent claim 24, which reads as follows:

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Application No. 10/322,008

24. A method of making a pollution control device, said method comprising:

providing a flexible and self-supporting insulating end cone comprising resilient and
compressible non-intumescent or intumescent insulating material, the insulating end cone
having a three dimensional cone shape; and

disposing the insulating end cone between inner and outer end cone housings of the
pollution control device,

wherein the insulating end cone maintains its three dimensional cone shape under the
force of gravity, when placed on a level surface prior to said disposing.

The prior art set forth below is relied upon by the examiner as evidence of obviousness:
Mocker et al. (Mocker) 3,058,160 Oct. 16, 1962

Farr 3,598,157 Aug. 10, 1971
Admitted prior art as set forth on pages 1-2 of the instant specification

Claims 24-28, 30, 31, and 46 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the admitted prior art in view of Farr, and claims 32-34 are correspondingly
rejected over the aforementioned prior art and further in view of Mocker.
We refer to the brief and to the answer for a complete discussion of the opposing
viewpoints expressed by the appellants and by the examiner concerning the above noted
rejections.
OPINION
For the reasons which follow, we will sustain each of these rejections.
As an initial matter, the appellants argue that the examiner has improperly designated
and relied upon certain aspects of the specification disclosure as admitted prior art and in
particular as “some admission regarding the need to improve the method of making a pollution
control device.” (Brief, page 12). However, as revealed by the answer generally and pages 2,
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3 and 6 thereof specifically, the examiner has designated as admitted prior art only the
Background section on pages 1-2 of the specification (and not the Summary of the Invention
section on specification page 4 as indicated by the appellants on page 10 of their brief), and at
no point in the answer has the examiner contended that the admitted prior art includes “some
admission regarding the need to improve the method of making a pollution control device” as
urged by the appellants on page 12 of their specification.
The appellants further argue that the Farr reference is nonanalogous art because “the
teaching of Farr has nothing to do with pollution control devices, and especially the particular
problems with which the present Appellant was concerned, namely, methods of making a
pollution control device” (brief, page 11). We perceive no convincing merit in this argument.
It is well settled that prior art is analogous: (1) if the reference is from the inventor’s field
of endeavor regardless of the problem addressed, and (2) if the reference is reasonably
pertinent to the particular problem with which the inventor was involved regardless of the field
of endeavor. See In re Clay, 966 F.2d 656, 658, 23 USPQ2d 1058, 1060 (Fed. Cir. 1992).
Here, the Farr reference is reasonably pertinent to the appellants’ problem relating to the use
of non-preformed insulation (e.g., see lines 1-6 on specification page 4 in comparison with
lines 6-26 in column 1 of Farr). The appellants’ contrary view is based on a confused
conflation of the field of an inventor’s endeavor and the problem with which the inventor was
involved. That is, the latter is not confined to the environment of the former as the appellants
seem to believe since otherwise the legal standard for analogous art would not be a two-
pronged test.

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Finally, it is the appellants’ position that no reason exists for combining the admitted
prior art with Farr in the manner proposed by the examiner. We cannot agree. An artisan
would have so-combined these prior art teachings in order to provide the admitted prior art with
the advantages taught by Farr to attend use of preformed insulation (e.g., see lines 15-22 in
column 1 of Farr). We also disagree with the appellants’ related contention that patentee’s
disclosure of an airspace (see lines 14-18 in column 2) would have “motivated away from
seeking the teaching of Farr” (brief, page 13). The mere possibility of airspace in Farr has no
apparent relevance to the admitted prior art. In this regard, we remind the appellants that the
test for obviousness is what the combined teachings of the prior art would have suggested to
those of ordinary skill and that one cannot show nonobviousness by attacking references
individually where rejections are based on combinations of references. In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881-82 (CCPA 1981).
Under the circumstances recounted above, it is our determination that the prior art
applied by the examiner establishes a prima facie case of obviousness which the appellants
have failed to successfully rebut with argument or evidence of nonobviousness. See In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). We hereby sustain,
therefore, the § 103 rejection based on the admitted prior art and the Farr reference of argued
independent claim 24 and of non-argued dependent claims 25-28, 30, 31, and 46.
For analogous reasons, we also hereby sustain the § 103 rejection based on the
admitted prior art, Farr and Mocker of claims 32-34. Contrary to the appellants’ argument,
Mocker is analogous prior art because it is reasonably pertinent to the appellants’ problem
relating to the manufacture of performed insulation. See In re Clay, 966 F.2d at 658,
23 USPQ2d at 1060. Furthermore, again contrary to the appellants’ argument, an artisan
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would have been motivated to combine the applied prior art in the manner proposed by the
examiner in order to obtain the preformed insulation disclosed by Farr via a manufacture
technique evinced by Mocker to be known in the prior art as effective.
The decision of the examiner is affirmed.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a) (Sept. 13, 2004).
AFFIRMED

Bradley R. Garris )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Chung K. Pak )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Beverly A. Franklin )
Administrative Patent Judge )

BRG/cam
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Harold C. Knetch, III
Office of Intellectual Property Counsel
3M Innovative Properties Company
P.O. Box 33427
St. Paul, MN 55133-3427

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