Ex Parte Martin et al

Board of Patent Appeals and Interferences

Jul 24, 2012

10006875 (B.P.A.I. Jul. 24, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/006,875 12/05/2001 Paul Martin 00041-DV3 5118
38393 7590 07/24/2012
CHEVRON U.S.A. INC.
LAW - INTELLECTUAL PROPERTY GROUP
P.O. BOX 2100
HOUSTON, TX 77252-2100
EXAMINER
DUONG, THANH P
ART UNIT PAPER NUMBER
1774
MAIL DATE DELIVERY MODE
07/24/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PAUL MARTIN, T. GLENN SCOTT,
JENNIFER L. PHAN, JAMES F. STEVENS, and
CURTIS L. KRAUSE
____________________

Appeal 2011-008783
Application 10/006,875
Technology Center 1700
____________________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008783
Application 10/006,875

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
5 and 13-24. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
The claims are directed to a method and apparatus for heating a
catalyst bed for start-up and for providing heat to a catalyst bed during
transient operation to maintain desired reaction temperatures. (Spec. 2, ll.
29-31.)
Claims 16 and 18, reproduced below, are illustrative of the claimed
subject matter:
16. A method for heating a catalyst bed to a desired
temperature, comprising: providing a catalyst bed in
communication with an electrical heating element wherein the
electrical heating element is a face heater; and heating the
electrical heating element so as to maintain the desired
temperature of the catalyst bed.

18. The method of claim 16, wherein the desired temperature is
the desired reaction temperature during transient operation.

(Appeal Brief, Claims Appendix 12.1)

THE REJECTIONS
I. The Examiner rejected claims 1-5, 16-20, and 22-24 under
35 U.S.C. § 102(b) as anticipated by Yoshizaki et al. (US
5,582,805, issued December 10, 1996). (Examiner’s Answer,
dated January 3, 2011 (“Ans.”), 3-5.)

1 Appeal Brief filed October 18, 2010, hereinafter “App. Br.” and Claims
App’x, respectively.
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II. The Examiner rejected claims 16, 17, and 20 under 35 U.S.C. §
102(b) as anticipated by Brunson et al. (US 5,512,251, issued
April 30, 1996). (Ans. 5.)

III. The Examiner rejected claims 13-21 under 35 U.S.C. § 103(a)
as unpatentable over Bayer et al. (US 5,562,885, issued October
8, 1996) in view of Helmers (US 2,443,423, issued June 15,
1948). (Ans. 5-6.)

ISSUES
Rejection I
The Examiner found that Yoshizaki discloses a metallic honeycomb
catalyst carrier and a circular electrically conductive heater, which
corresponds to the catalyst bed with a face heater as recited in the claimed
method of claim 16. (Ans. 4, citing Yoshizaki, e.g., Col. 15, ll. 4-6; Figs. 8,
15.)
Appellants contend that Yoshizaki does not disclose the face heater
recited in the claims because the electrical heating element in Yoshizaki is a
band heater that heats from the outside edge of the catalyst carrier, which
will require longer heat up times and greater energy input. (App. Br. 6.)
Appellants contend that the face heater of the present invention heats the
face of the catalyst bed and therefore requires less time and energy to heat
the catalyst bed for start-up. (App. Br. 6.) Appellants also argue that
Yoshizaki’s “electrical heating element” is a “circular electrically
conductive heater” or a “winding heater,” but not a face heater. (App. Br.
7.)

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Rejection II
The Examiner found that Brunson discloses a method for heating a
monolithic catalyst bed to start-up temperature with an electrical heating
element of a face heater, which corresponds to “heating the electrical heating
element so as to maintain the desired temperature of the catalyst bed,” as
recited in claim 16. (Ans. 5, 9, citing Brunson, e.g., Col. 1, ll. 4-11; Col 2,
ll. 15-20, Col. 7, ll. 43-59; Fig. 3.)
Appellants argue that Brunson does not teach or suggest maintaining
the desired temperature of the catalyst bed as required by claim 16 of the
present invention. (App. Br. 8.)

Rejection III
With respect to claims 15 and 18, the Examiner found that Bayer in
view of Helmers discloses or suggests all of the recited steps, but fails to
explicitly disclose heating during transient operation of the catalyst bed to
maintain the desired temperature of the catalyst bed. (Ans. 6.) The
Examiner concluded that it would have been obvious to one of ordinary skill
in the art at the time the invention was made, based on common knowledge,
“to provide heat, as needed, during operation of the converter or [in] order to
further achieve high efficiency.” (Ans. 6.)
Appellants argue that the Examiner has not provided an explicit basis
to support the position that providing heat would have been a matter of
common knowledge. (App. Br. 9.)
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Therefore, the dispositive issues on appeal are:
(1) Whether the Examiner erred in finding that Yoshizaki discloses
“wherein the electrical heating element is a face heater,” as recited
in claim 16?
(2) Whether the Examiner erred in finding that Brunson discloses
“heating the electrical heating element so as to maintain the desired
temperature of the catalyst bed,” as recited in claim 16?
(3) Whether the Examiner erred in concluding that the Bayer in view
of Helmers renders obvious “wherein the desired temperature is
the desired reaction temperature during transient operation,” as
recited in claim 18?

PRINCIPLES OF LAW
35 U.S.C. § 102
“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).

35 U.S.C. § 103
The obviousness analysis “need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007). The obviousness analysis cannot be confined by
“. . . overemphasis on the importance of published articles and the explicit
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content of issued patents. The diversity of inventive pursuits and of modern
technology counsels against limiting the analysis in this way.” Id. at 419.

FACTUAL FINDINGS (FF)
1. Yoshizaki discloses a metallic honeycomb catalyst carrier having
an upstream or downstream end face provided with a circular
electrically conductive heater, which may have any other shape.
(Col. 15, ll. 1-14; Fig. 15.)
2. Yoshizaki discloses that one such shape for the electrically
conductive heater is in the form of a winding heater, which
uniformly heats the end face of the carrier to promote reactions
over the carrier. (Col. 15, ll. 14-18; Fig. 16.)
3. Helmers discloses an improved method and apparatus for carrying
out endothermic catalytic conversions which enable the attainment
of a substantially constant temperature from the inlet to the outlet
of a bed of solid granular contact catalysts with a heating element.
(Col. 2, ll. 1-28.)

ANALYSIS
We select claims 16 and 18 as representative of the arguments made
by Appellants pursuant to 37 C.F.R. § 41.37(c)(1)(vii).

Issue One, Rejection I
We are not persuaded by Appellants’ arguments that the heater
disclosed in Yoshizaki does not anticipate Appellants’ claimed “face
heater.” Yoshizaki discloses a circular electrically conductive heater, which
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includes other shapes, such as a winding heater, and which serves to
uniformly heat the end face of a catalyst bed. (FF 2.) While Yoshizaki’s
heater is not specifically termed a “face heater,” the heater of Yoshizaki acts
to heat the face of the catalyst bed in the same manner as described in
Appellants’ Specification. (Spec. 12, ll. 5-20; describing a “face heater [as]
an electrical heating element formed . . . along the face of the catalyst bed,”
and stating that “other illustrative embodiments may be utilized to provide
sufficient heat transfer to the catalyst bed face.”) Appellants contend that
Yoshizaki’s heater requires longer heat times and energy input than the
claimed face heater (App. Br. 6), but did not identify structural differences
between the claimed face heater and that of Yoshizaki that would distinguish
the two. Accordingly, we agree with the Examiner that Yoshizaki
anticipates Appellants’ claimed face heater.

Issue Two, Rejection II
With respect to Rejection II, Appellants merely repeat the limitations
of the rejected claims and then assert without setting forth substantive
arguments that Brunson does not disclose such elements. As such, we
affirm the Examiner’s rejection of claim 16. See 37 C.F.R. §
41.37(c)(1)(vii); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(“we hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”).

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Issue Three, Rejection III
With respect to Rejection III, we are also unpersuaded by Appellants’
arguments. Initially, we note that the Examiner only appears to rely on
common knowledge in rejecting claims 15 and 18. (Ans. 6.) Accordingly,
we limit our discussion to representative claim 18. The Examiner provided
sufficient evidence that one of ordinary skill in the art would have been
aware that it would have been necessary to provide heat, as needed, during
the transient operation of an apparatus and method for heating a catalyst bed
and thus maintain the desired reaction temperature during transient operation
as recited in claim 18. A skilled artisan often uses his or her ordinary skill,
creativity, and common sense to make necessary modifications to methods
or apparatus explicitly disclosed by the prior art. See KSR, 550 U.S. at 418-
419. The Examiner’s reasoning is further supported by Helmers, which
discloses maintaining a substantially constant temperature to ensure a
substantially constant rate of reaction from the inlet to the outlet of a catalyst
bed via a heating element. (FF 3.) Therefore, we agree with the Examiner
that one having ordinary skill in the art would have the requisite skill and
common sense to provide heat, as needed, to maintain a desired reaction
temperature during transient operation of a catalytic converter.

CONCLUSIONS
The Examiner did not err in finding that Yoshizaki discloses “wherein
the electrical heating element is a face heater,” as recited in claim 16.
The Examiner did not err in finding that Brunson discloses “heating
the electrical heating element so as to maintain the desired temperature of
the catalyst bed,” as recited in claim 16.
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The Examiner did not err in concluding that Bayer in view of Helmers
renders obvious “wherein the desired temperature is the desired reaction
temperature during transient operation,” as recited in claim 18.

DECISION
We affirm the Examiner’s rejection of claims 1-5, 16-20, and 22-24
under 35 U.S.C. § 102(b) as anticipated by Yoshizaki.
We affirm the Examiner’s rejection of claims 16, 17, and 20 under 35
U.S.C. § 102(b) as anticipated by Brunson.
We affirm the Examiner’s rejection of claims 13-21 under 35 U.S.C. §
103(a) as unpatentable over Bayer in view of Helmers.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1).

AFFIRMED

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