Ex Parte Taoka et al

Board of Patent Appeals and Interferences

Mar 11, 2009

10477741 (B.P.A.I. Mar. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NORIYUKI TAOKA,
KAZUSHIGE OHNO, TERUO KOMORI, SHINYA HIROTA,
YOSHITSUGU OGURA, TOSHIAKI TANAKA, and KAZUHIRO ITOH
____________

Appeal 2009-0544
Application 10/477,7411
Technology Center 1700
____________

Decided:2 March 11, 2009
____________

Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and
JEFFRY B. ROBERTSON, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL

1 Application 10/477,741, Porous Ceramic Sintered Body and Method of
Producing the Same, and Diesel Particulate filter, filed 24 November 2003,
as the national stage under 35 U.S.C. § 371 of international application
PCT/JP02/05496, filed 31 May 2002. The real parties in interest are listed
as Ibiden, Do., Ltd., and Toyota Jidosha Kabushiki Kaisha. (Appeal Brief
under 37 C.F.R. § 41.37, filed 27 September 2007 (“Br.”), 2.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 10/477,741

A. Introduction
Noriyuki Taoka, Kazushige Ohno, Teruo Komori, Shinya Hirota,
Yoshitsugu Ogura, Toshiaki Tanaka, and Kazuhiro Itoh (“Taoka”) timely
appeal under 35 U.S.C. § 134(a) from the final rejection3 of claims 1, 2,
4-11, and 15-20.4 We have jurisdiction under 35 U.S.C. § 6(a). We
REVERSE.
The subject matter on appeal relates to porous ceramic sintered bodies
said to be useful as air filters for fine particulates, especially as a diesel
particulate filter (“DPF”).
Claim 1 is representative:
Claim 1
A porous ceramic sintered body having communicated pores,
wherein the communicated pores are constructed
with small pores having a size smaller than an average
particle size of ceramic particles constituting the sintered
body, and
large pores having a pore size larger than the average
particle size of ceramic particles,
and at least a part of the large pores is existent on a
surface of the sintered body at an exposed or
opened state, and
wherein the number of the large pores existing at a
state of exposing or opening to the surface of the
sintered body is 10 pores/mm2-100 pores/mm2.
(Claims App., Br. 23; indentation and paragraphing added.)

3 Office action mailed 24 November 2003.
4 Claims 12-14, the only other pending claims, have been withdrawn from
consideration. (Br. 4.)
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The Examiner has maintained the following grounds of rejection:5
A. Claims 1, 2, 4, 5, 7, and 19 stand rejected under
35 U.S.C. § 102(b) in view of Hamaguchi.6
B. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Hamaguchi, Nishimura,7 and
Ogawa.8
C. Claim 10 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Hamaguchi and Merkel.9
D. Claims 1, 2, 4-9, 11, 19, and 20 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Fukutani,10 Nishimura, and Ogawa.
E. Claim 10 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Fukutani, Nishimura, Ogawa, and
Merkel.
F. Claims 15-18 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Fukutani, Nishimura, Ogawa, and
Inoguchi.11
Taoka contends that the Examiner’s rejections are based on faulty
assumptions and that the same flawed formula is used to calculate the
number of large and small pores in both Hamaguchi and Fukutani. As a
result, according to Taoka, the Examiner has failed to show that either

5 Examiner’s Answer mailed 9 November 2007. (“Ans.”).
6 Kunikazu Hamaguchi et al., Method of Producing Porous Ceramic Filter,
Using Cordierite Composition Including Talc and Silica Powder, U.S.
Patent 5,184,110 (1993).
7 Koji Nishimura and Yasuo Imamura, U.S. Patent 5,766,393 (1998)/
8 Mitsushige Ogawa and Yasuo Imamura, U.S. Patent 5,733,352 (1998).
9 Gregory A. Merkel and Martin J. Murtagh, U.S. Patent 5,258,150 (1993).
10 Masanori Fukutani et al., Exhaust Gas Purifying filter and Production of
the Same, U.S. Patent 4,6532,683 (1986).
11 Kazuhiro Inoguchi et al., U.S. Patent 4,451,517 (1984).
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reference describes or suggests sintered objects having 10 to 100 large pores
per square millimeter “exposing or opening to the surface”. (Br. 10-13
and 17-20, respectively.) More particularly, according to Taoka, the
Examiner uses a formula to calculate the number of pores that improperly
assigns a value of 1 to the total area occupied by the pores. (Br. 11 and 19.)
As evidence that this assignment is incorrect, Taoka provides calculations
indicating that, according to the Examiner’s formulas, the entire surface of
the sintered object must be made of pores. (Br. 11-12 and 19.) Taoka also
contends that the Examiner erred by failing to take proper account of the
range of pore sizes described by Hamaguchi. (Br. 12-13.)
The Examiner responds that the arguments are not persuasive
“because neither factual evidence nor declaration is provided in support of
Appellants’ assertion.” (Ans. 9.) The Examiner argues further that Taoka’s
mathematical arguments are dimensionally flawed. (Id. at 9-10.)
Additionally, the Examiner contends that “Hamaguchi makes clear that there
are 12 times as many pores of 10-50 micron diameter as many as pores with
a diameter of 100 microns or greater.” (Id. at 10.) In the Examiner’s view,
“the calculation made in the office Action is proper and works well with the
radii other than the extremes of the range.” (Id. at 11.)
B. Findings of Fact
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
1. Hamaguchi describes a “porous ceramic honeycomb filter . . . whose
pores consist principally of pores having diameters of 10-50 μm, with a
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small number of pores whose diameters are 100 μm or more.” (Hamaguchi
col. 2, ll. 52-56.)
2. In Table 3-1, Hamaguchi describes Batch No. 14 as having a porosity
of 52 volume percent, with 100 μm pores and larger making up 6% by
volume and 10-50 μm pores making up 72.1% by volume, respectively.
(Hamaguchi col. 11-12.)
3. The Examiner finds that there are about 12 times as many small pores
as large pores in the ceramic described in Batch No. 14. (Ans. 3.)
4. According to Hamaguchi, porosities were measured “by mercury
penetration method, based on a true specific gravity of cordierite = 2.52.”
(Hamaguchi col. 11-12, nn. 1 and 2.)
5. Fukutani describes an exhaust gas purifying filter having superficial
small pores with a diameter of 5 to 40 μm and superficial large pores having
a diameter of from 40 to 100 μm, “the number of small pores being 5 to 40
times that of the large pores.” (Fukutani col. 2, ll. 37-43.)
6. The Examiner finds that, given a ratio, F, of small pores to large
pores, the total surface area of small pores and large pores occupied on a
partition wall is given by the expression
Total surface area = nπR2 + Fnπr2 = nπ(R2 + Fr2)
where R is the radius of the large pores, r is the radius of the small pores,
n is the number of large pores, and Fn is the number of small pores. (Ans. 4
and 6; the term “F” has been substituted for the particular numerical values
found by the Examiner.)
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7. According to the Examiner, “[a] number of large pores existing at a
state of opening to the surface of the sintered body” [is]:
n/[nπ(R2 + Fr2) = 1/[π(R2 + Fr2)] pores/mm2 [1]
(Ans. 4 and 6; equation number in parenthesis added for convenient
reference infra.)
8. The Examiner finds that when Hamaguchi teaches that the number of
small pores is about 12 times the number of large pores, there are 32 large
pores per square millimeter. (Ans. 3-4.)
9. The Examiner finds that when Fukutani teaches that the number of
small pores is about 5 times the number of large pores, there are 70 large
pores per square millimeter. (Ans. 6-7.)
10. Inspection shows that equation [1] yields a pure inverse area, where
the area is the sum of the areas of a single large pore and F small pores.
C. Discussion
Taoka, as the Appellant, bears the procedural burden of showing
harmful error in the Examiner’s rejections for anticipation and obviousness.
See, e.g., Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997) ("We
expect that the Board's anticipation analysis be conducted on a limitation by
limitation basis, with specific fact findings for each contested limitation and
satisfactory explanations for such findings.") (emphasis added). “To
anticipate a claim, a prior art reference must disclose every limitation of the
claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997) (citation omitted). Similarly, the failure to meet
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or suggest a limitation of the claimed subject matter is fatal to a rejection for
obviousness.
As Taoka has taken pains to show, substitutions of radii and the ratio
of the number of small pores to the number of large pores found by the
Examiner leads to the absurd conclusion, based on the equation and on the
parameters derived from either Hamaguchi or Fukutani, that the entire
surface is comprised of pores. Inspection of the equation used by the
Examiner shows the reason for the error: the variable the Examiner sought to
solve for cancels out of the equation.
As Taoka points out, the number of large pores could be calculated if,
for example, the total [surface] area occupied by pores, Ap, were known, via
the equation
n = Ap/[π(R2 + Fr2)]
(Br. 11.) Taoka submits that Hamaguchi does not provide sufficient
information to determine Ap, and that the Examiner, by effectively setting
Ap = 1, has set up a circular argument that proves nothing.. (Id.)
We reject the Examiner’s criticism (Ans. 9) that Taoka’s rebuttal fails
because Taoka did not come forward with factual evidence or a declaration
in support of its arguments. When an Examiner advances a rejection based
on an analysis that involves no more than elementary algebra, and that
invokes no specialized art-based technical considerations, the Examiner
must be prepared to respond to a traverse of that rejection at a similar level.
When a rejection is shown to be incorrect based on elementary mathematics
or as a matter of logic within the grasp of the technically literate public,
expert testimony or treatises are not necessary. In this regard, we observe
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that it is the Examiner’s equations that are dimensionally flawed, not
Taoka’s arguments.
Nonetheless, we commend the Examiner for attempting to bring a
straight forward analysis to this case. We especially commend the Examiner
for presenting the analysis clearly and directly. We also commend
Appellants for addressing that analysis in detail, rather than summarily
dismissing it as clearly erroneous and assuming that a reviewing panel
would immediately recognize the error. The Examiner’s failure, in this
instance, to recognize the errors in the rejections should not be taken as a
sign of general disapproval of the approach. When exploring the
patentability of claimed subject matter, it is truly more valuable, especially
for the Examiner, to be clear, although wrong, than to be obscure, but right.
Appellants identified the Examiner’s failure to deal adequately with
the ranges of pore sizes disclosed by Hamaguchi as a further ground for
reversal. (Br. 12-13.) The Examiner’s response, that Hamaguchi “makes
clear” (Ans. 10) that there are 12 times as many pores of 10-50 micron
diameter as pores of 100 microns or greater, is based solely on the ratio of
volumes, which requires assumptions about the distribution of volumes that
have not been stated clearly, and that have not been explained. Nor is the far
stronger (i.e., more highly constrained) conclusion that there must
be 12 times as many pores having a diameter of 50 microns as 100 micron
pores supported with a reasoned explanation. In certain circumstances,
perhaps, such conclusions might be shown to be sufficiently justified to
require an applicant to come forward with evidence in rebuttal. See, In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[W]hen the PTO shows sound
basis for believing that the products of the applicant and the prior art are the
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same, the applicant has the burden of showing that they are not.”) and In re
Brown, 459 F.2d 531, 535 (CCPA 1972) (“As a practical matter, the Patent
Office is not equipped to manufacture products by the myriad of processes
put before it and then obtain prior art products and make physical
comparisons therewith.”). In the present case, however, a prima facie case
of unpatentability has not been demonstrated, and the burden of persuasion
has not shifted to the Appellants.
The Examiner has applied the same faulty equation (1) to the
disclosures of Fukutani. For the reasons given supra, we REVERSE the
Examiner’s rejections based on Fukutani.
The Examiner relied on the secondary references as evidence that
further limitations would have been obvious, given the conclusions drawn
based on Hamaguchi or Fukutani. As Taoka points out (Br. 14-17
and 17-21), the Examiner did not rely on the secondary references to cure
the ills of the principal references. Accordingly, we REVERSE all of the
Examiner’s rejections for failure to establish a prima facie case of
unpatentability.
D. Order
We REVERSE all rejections of claims 1, 2, 4-11, and 15-20.
REVERSED

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