Ex Parte Bradford et al

Board of Patent Appeals and Interferences

Sep 6, 2012

11566973 (B.P.A.I. Sep. 6, 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.
11/566,973 12/05/2006 Judson A. Bradford BRP-257 6856
26875 7590 09/07/2012
WOOD, HERRON & EVANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
EXAMINER
JOHNSON, CHRISTINA ANN
ART UNIT PAPER NUMBER
1742
MAIL DATE DELIVERY MODE
09/07/2012 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 JUDSON A. BRADFORD and
CALVIN D. NYEBOER
________________

Appeal 2011-004785
Application 11/566,973
Technology Center 1700
________________

Before CHARLES F. WARREN, TERRY J. OWENS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004785
Application 11/566,973

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STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-15 and 35-41, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a process for making a honeycomb product.
Claim 1 is illustrative:
1. A process of making a honeycomb product comprising:

extruding a web of material having a generally non-planar profile
comprising a generally corrugated shape with continuous flattened peaks and
flattened valleys joined by connecting portions extending in the direction of
travel of the web;

flattening selected areas of the extruded web; and

folding the web.

The References
Reed US 2,716,805 Sep. 6, 1955
Lundsager US 3,904,551 Sep. 9, 1975
Kuchelmeister US 4,847,966 Jul. 18, 1989
Swars US 6,720,060 B1 Apr. 13, 2004
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1
and 5 over Kuchelmeister in view of Reed, claims 1-4, 6-13, 15 and 35-41
over Swars in view of Reed and Kuchelmeister, and claim 14 over Swars in
view of Reed, Kuchelmeister and Lundsager.
OPINION
We affirm the rejections.
Appeal 2011-004785
Application 11/566,973

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Rejection over Kuchelmeister in view of Reed
The Appellants argue that Kuchelmeister “has nothing to do with
making a honeycomb product” (Br. 5).
The Examiner finds that the folded catalytic converter matrix in
Kuchelmeister’s Figure 7b is a honeycomb product (Ans. 10). Because the
Appellants have not addressed that finding and argued that it is incorrect, we
accept it as fact. See In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964).
The Appellants argue that Kuchelmeister’s disclosure of corrugating a
metal strip (4) by use of a pair of indenters (7a, 7b) (col. 3, ll. 3-6; Fig. 1)
teaches away from producing the corrugated metal strip by extrusion (Br. 8).
As stated by the Federal Circuit in In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994):
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.

Because Kuchelmeister’s use of a pair of indenters (7a, 7b) is merely
a preferred embodiment (col. 2, l. 62; col. 3, ll. 2-6), Kuchelmeister would
not have led one of ordinary skill in the art in a direction divergent from the
use of extrusion. Also, Kuchelmeister does not indicate that corrugation
using a pair of indenters (7a, 7b) is unlikely to be productive of the result the
Appellants seek to obtain by corrugation using extrusion. Hence,
Kuchelmeister does not teach away from the Appellants’ extrusion.
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Application 11/566,973

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The Appellants argue that Kuchelmeister is nonanalogous art (Br. 6).
The test of whether a reference is from an analogous art is first,
whether it is within the field of the inventor’s endeavor, and second, if it is
not, whether it is reasonably pertinent to the particular problem with which
the inventor was involved. See In re Wood, 599 F.2d 1032, 1036 (CCPA
1979). A reference is reasonably pertinent if, even though it may be in a
different field of endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor’s attention in
considering the inventor’s problem. See In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992).
Kuchelmeister’s disclosure of making a folded corrugated web having
continuous flattened peaks and valleys and flattened areas (30) (col. 4, ll. 55-
59; Figs. 7a, 7b) logically would have commended itself to the Appellants’
attention in considering the Appellants’ problem of making the Appellants’
folded corrugated web having continuous flattened peaks and valleys and
flattened areas. Hence, Kuchelmeister is analogous art.
The Appellants argue that “Kuchelmeister does not disclose a method
step of flattening a corrugated extruded web” (Br. 6) and Reed “fails to
disclose method steps of flattening selected areas of an extruded web having
a generally non-planar profile and folding the extruded web along
transversely extending fold lines.” Id.
The Appellants improperly are attacking the references individually
when the rejection is based on a combination of references. See In re Keller,
642 F.2d 413, 426 (CCPA 1981); In re Young, 403 F.2d 754, 757-58 (CCPA
1968). The Examiner relies upon Kuchelmeister for a web having a
generally nonplanar profile and flattened selected areas and Reed for a
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Application 11/566,973

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suggestion to make the corrugated web by extrusion (Ans. 4-5). Also, the
Appellants improperly are arguing a limitation (folding along transversely
extending fold lines) which is not in claims 1 and 5 rejected over
Kuchelmeister in view of Reed. See In re Self, 671 F.2d 1344, 1348 (CCPA
1982).
The Appellants point out that forming a corrugated web by extrusion
instead of using Kuchelmeister’s pair of indenters (7a, 7b) would require a
step of extruding the web (Reply Br. 3), but the Appellants provide no
substantive argument as to why that modification would have been
unobvious to one of ordinary skill in the art.
The Appellants argue that Reed’s disclosure that it is “obvious that
innumerable other sectional shapes may be readily produced” (col. 3, ll. 19-
21) by the extrusion “is not a disclosure of an extruded web having
continuous flattened peaks and flattened valleys joined by connecting
portions extending in the direction of travel of the web” (Br. 4). With
respect to claim 5 the Appellants argue that “Reed lacks a generally
corrugated shape with flattened peaks and flattened valleys” (Reply Br. 9).
The Appellants improperly are arguing Reed in isolation when the
rejection is based upon a combination of Kuchelmeister and Reed. See
Keller, 642 F.2d at 426; Young, 403 F.2d at 757-58. The Examiner relies
upon Kuchelmeister for a disclosure of a web having a corrugated shape
with continuous flattened peaks and flattened valleys joined by connecting
portions extending in the direction of travel of the web (Ans. 4).
For the above reasons we are not persuaded of reversible error in the
rejection over Kuchelmeister in view of Reed.

Appeal 2011-004785
Application 11/566,973

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Rejections over Swars in view of Reed and Kuchelmeister
and over Swars in view of Reed, Kuchelmeister and Lundsager
The Appellants argue that Swars is nonanalogous art (Br. 9-10).
Swars’ disclosure of making a honeycomb product by folding
corrugated webs (col. 9, ll. 55-59; col. 14, ll. 48-50; Fig. 4a) logically would
have commended itself to the Appellants’ attention in considering the
Appellants’ problem of making a honeycomb product by folding a
corrugated web. Hence, Swars is analogous art. See Clay, 966 F.2d at 659.
The Appellants argue that “[t]here is no teaching, suggestion or
inference of modifying the Swars method to extrude a corrugated web
having continuous flattened peaks and flattened valleys joined by connecting
portions extending in the direction of travel of the web” (Br. 10).
The Appellants improperly are attacking Swars individually when the
rejection is based on a combination of references. See Keller, 642 F.2d at
426; Young, 403 F.2d at 757-58. The Examiner relies upon Kuchelmeister
for a corrugated web having continuous flattened peaks and flattened valleys
joined by connecting portions extending in the direction of travel of the web
and Reed for a suggestion to make the corrugated web by extrusion (Ans.5-
6).
Regarding claim 14 the Appellants argue that “[t]here is no suggestion
in either Swars or Reed or Kuchelmeister of using an extruded plastic web of
material” (Br. 11) and that “Lundsager et al. fails to teach extruding a plastic
corrugated web” (Reply Br. 7).
The Examiner relies upon Kuchelmeister for a disclosure of a
corrugated web, Reed for a suggestion to make the corrugated web by
extrusion, and Lundsager (col. 3, ll. 20-25) for a suggestion to make the
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extruded corrugated web out of plastic (Ans. 5-6, 10). The Appellants have
not provided a substantive argument as to how the Examiner’s reliance upon
the references in that manner is in error.
The Appellants point out that using extrusion to form Swars’ pre-
shaped foils (col. 8, l. 50) would require a step of extrusion (Reply Br. 6),
but the Appellants provide no substantive argument as to why such extrusion
would have been unobvious to one of ordinary skill in the art.
Hence, we are not convinced of reversible error in the rejection over
Swars in view of Reed and Kuchelmeister or the rejection over Swars in
view of Reed, Kuchelmeister and Lundsager.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1 and 5 over
Kuchelmeister in view of Reed, claims 1-4, 6-13, 15 and 35-41 over Swars
in view of Reed and Kuchelmeister, and claim 14 over Swars in view of
Reed, Kuchelmeister and Lundsager are affirmed.
It is ordered that the Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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