Ex parte Wieres

Board of Patent Appeals and Interferences

Mar 27, 2002

08756349 (B.P.A.I. Mar. 27, 2002)

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not written for publication and is not binding precedent of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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte LUDWIG WIERES
__________
Appeal No. 2000-1269
Application 08/756,349
___________
ON BRIEF
___________
Before OWENS, LIEBERMAN and KRATZ, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1-13,
which are all of the claims in the application.
THE INVENTION
The claimed invention is directed toward a honeycomb
catalyst support body having alternating substantially smooth
and structured sheet metal layers. Claim 1 is illustrative:
1. A honeycomb body of a catalytic reactor, comprising:
Appeal No. 2000-1269
Application 08/756,349
2
alternating substantially smooth and structured sheet-
metal layers defining channels therebetween through which a
fluid can flow;
all of said smooth sheet-metal layers being produced from
same initial materials as one another, all of said structured
sheet-metal layers being produced from same initial materials
as one another;
all of said smooth sheet-metal layers having a thickness
of from 0.04 mm to 0.06 mm, said structured sheet-metal layers
having a thickness of from 0.025 mm to 0.045 mm; and
all of said structured sheet-metal layers being at least
0.005 mm thinner than said smooth sheet-metal layers.
THE REFERENCE
Maus et al. (Maus) 5,102,743 Apr. 7,
1992
THE REJECTION
Claims 1-13 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the appellant’s admitted prior art in view
of Maus.
OPINION
We reverse the aforementioned rejection.
Each of the appellant’s independent claims, i.e.,
claims 1, 12 and 13, requires that all of the smooth sheet-
metal layers are thicker than the structured sheet-metal
layers.
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Maus discloses a honeycomb body of a catalytic reactor,
and teaches that when there are alternating layers of smooth
and corrugated sheet-metal layers, “it is suitable to
reinforce some of the smooth sheet-metal layers. Smooth
sheet-metal layers deform less under tensile strain than
corrugated ones and can therefore transmit the resultant
forces better than corrugated sheet-metal layers” (col. 2,
lines 54-59).
The admitted prior art relied upon by the examiner
(answer, page 3) is the discussion of Maus in the appellant’s
specification, wherein the appellant states that “preparing
individual, different-thickness sheet-metal layers in the
stack entails increased production cost” (page 2, lines 1-2)
and that “[i]t is also fundamentally advantageous, for the
sake of reducing the mass and expense of the honeycomb body,
to make the sheet-metal layers as thin as possible. However,
that objective contradicts the objective of high strength of
the honeycomb body and long-term resistance to corrosion”
(page 2, lines 6-11).
The appellant refers to these excerpts as the appellant’s
teachings (brief, pages 6-7), and the examiner has not
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Application 08/756,349
4
established that these excerpts are admitted prior art rather
than being teachings by the appellant. Regardless, even if
the subject matter of these excerpts was known in the art, the
examiner’s rationale is not persuasive.
The examiner argues that it would have been obvious to
one of ordinary skill in the art to make all, rather than
some, of Maus’ smooth layers thicker than the corrugated
layers if the catalyst support body required greater strength
(brief, pages 4-5). Maus, however, indicates that reinforcing
only some of the smooth layers provides adequate strength
(col. 2, lines 54-59), and the examiner has provided no
evidence that there are catalytic support bodies which require
greater strength. The examiner has merely provided
speculation to that effect, and such speculation is not a
sufficient basis for a prima facie case of obviousness. See
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968); In re Sporck, 301
F.2d 686, 690, 133 USPQ 360, 364 (CCPA 1962).
The examiner argues that the appellant’s statement that
“preparing individual, different-thickness sheet-metal layers
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Application 08/756,349
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in the stack entails increased production costs”
(specification, page 2, lines 1-2) indicates that it would
have been obvious to one of ordinary skill in the art to make
all of Maus’ smooth layers thicker than the corrugated layers
to reduce production costs (answer, page 4). The examiner
argues that one of ordinary skill in the art would not have
made both the smooth and structured layers the same thickness
to minimize production cost because Maus teaches (col. 2,
lines 55-59) that reinforcing some of the smooth layers
strengthens the catalyst support body (answer, page 4). Thus,
the examiner argues, one of ordinary skill in the art would
have reached a balance between strength and production cost
through optimization, and in doing so would have made all
smooth layers the same thickness and all corrugated layers the
same thickness to reduce production cost, and would have made
all smooth layers thicker than the corrugated layers to
increase the strength of the catalyst support body (answer,
page 5).
In order for a prima facie case of obviousness to be
established, the teachings from the prior art itself must
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Application 08/756,349
6
appear to have suggested the claimed subject matter to one of
ordinary skill in the art. See In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that the
prior art could be modified as proposed by the examiner is not
sufficient to establish a prima facie case of obviousness.
See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992).
The examiner has provided no evidence that one of
ordinary skill in the art, given only the applied prior art,
would have reached an appropriate balance between production
cost and catalyst support body strength by making all of the
smooth layers one thickness and all of the corrugated layers a
smaller thickness rather than doing what Maus discloses, i.e.,
reinforcing just some of the smooth layers and making all of
the other layers, both smooth and corrugated, the same
thickness, thereby minimizing the production cost of all of
the other layers while providing the required catalyst support
body strength. The record indicates that the motivation for
modifying Maus as proposed by the examiner comes from the
appellant’s disclosure of his invention rather than coming
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Application 08/756,349
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from the applied prior art and that, therefore, the examiner
used impermissible hindsight when rejecting the claims. See
W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S.
851 (1984); In re Rothermel, 276 F.2d 393, 396, 125 USPQ 328,
331 (CCPA 1960).
For the above reasons we conclude that the examiner has
not carried the burden of establishing a prima facie case of
obviousness of the invention recited in any of the appellant’s
claims. Accordingly, we reverse the examiner’s rejection.
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Application 08/756,349
8
DECISION
The rejection of claims 1-13 under 35 U.S.C. § 103 over
the appellant’s admitted prior art in view of Maus is
reversed.
REVERSED
)
TERRY J. OWENS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
PAUL LIEBERMAN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PETER F. KRATZ )
Administrative Patent Judge )
Appeal No. 2000-1269
Application 08/756,349
9
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