Ex Parte BRÜCK et al

Patent Trial and Appeal Board

Mar 29, 2017

12869859 (P.T.A.B. Mar. 29, 2017)

United States Patent and Trademark Office
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.
12/869,859 08/27/2010 ROLF BRUCK EM-84369 8654
24131 7590 03/31/2017
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, EL 33022-2480
EXAMINER
WANG, XIAOBEI
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
03/31/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
boxoa@patentusa.com
docket @ paten tusa. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROLF BRUCK, WOLFGANG MAUS,
PETER HIRTH, and KAIT ALTHOEFER1
Appeal 2015-005697
Application 12/869,859
Technology Center 1700
Before CATHERINE Q. TIMM, N. WHITNEY WILSON, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL2
1 Appellants identify the real party in interest as Emitec Gesellschaft fur
Emissionstechnologie mbH of Germany. Appeal Br. 1.
2 In explaining our decision, we reference the Specification filed August 27,
2010 (Spec.), the Appeal Brief filed October 29, 2014 (Appeal Br.), the
Examiner’s Answer mailed March 12, 2015 (Ans.), and the Reply Brief filed
May 12, 2015 (Reply Br.).
Appeal 2015-005697
Application 12/869,859
STATEMENT OF CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner’s decision to reject claims 1—10. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
The claims are directed to a honeycomb body (see, e.g., claim 1), an
exhaust-gas purification unit comprising at least one honeycomb body
according to claim 1 (see claim 9), and a motor vehicle comprising at least
one exhaust-gas purification unit having at least one honeycomb body
according to claim 1 (see claim 10). All of the claims require a honeycomb
body comprising a housing and a honeycomb structure. Claim 1.
The Specification explains that the honeycomb structure includes a
stack 10 of a multiplicity of structured sheet-metal foils 11 and smooth
layers 5. Spec. 142. Figure 4, reproduced below, shows the stack 10 in an
unwound state.
Figure 4 depicts positions for an adhesive agent on which, for
example, powdered brazing material creates connection points 6 between
11 28
10
Figure 4 is a fragmentary view of stack 10
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Application 12/869,859
foil 11 and layer 5, with the darker points being top-side connecting points,
and the lighter points being bottom-side connecting points. Spec. 142.
The stack 10 is wound to create the honeycomb body. Spec. 142.
Figure 3, reproduced below, depicts an embodiment of the wound
honeycomb body. Spec. 139.
2
Figure 3 is a cross-section through honeycomb body 1
Figure 3 depicts the smooth metallic layers 5 and structured sheet-
metal foils 11 wound in an S-shape. Spec. 139. The smooth metallic layers
5 and structured or corrugated sheet-metal foils 11 bear against each other at
contact points 7 to form channels 4. Id. Figure 3 depicts the connecting
points 6 for a single layer 5. Id.
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Application 12/869,859
As can be seen from Figure 3, there is a connection-free region 9
around each connecting point 6 and each region 9 has the same size 37.
Spec. 141.
With the above in mind, we reproduce claim 1 from the Claims
Appendix of the Appeal Brief with reference numbers from Figures 3 and 4
to further illustrate the honeycomb bodies encompassed by the claims:
1: A honeycomb body [1], comprising:
a housing [2]; and
a honeycomb structure [3] having a cross section within
said housing [2] and at least one at least partially structured
metallic layer [11] forming a multiplicity of channels [4] and
inner contact points [7] within said cross section;3
at most 20% of said inner contact points [7] in said cross
section forming respective connecting points [6] for fixing said
honeycomb structure [3]; and each of said connecting points [6]
being surrounded by a respective connection-free region [9]
defined by a distance [37] between adjacent said connection
points, each of said connection-free regions [9] having an equal
size relative to one another.
Appeal Br. 27.
The Examiner maintains the following rejections:
A. The rejection of claims 1—10 under 35 U.S.C. § 103(a) as obvious
over Althofer4 in view of Bruck5;
3 The Specification appears to require a smooth metallic layer 5 as well as
structured sheet-metal foil 11 to form the channels 4 and contact points 7 ,
e.g. Spec. 140, but claim 1 does not require a smooth layer. However, there
is no rejection under 35 U.S.C. § 112 for our review. Thus, we do not
consider whether the honeycomb bodies of the claims are adequately
described, enabled, and definite.
4 Althofer et al., US 2007/0259198 Al, published Nov. 8, 2007.
5 Bruck et al., US 5,382,774, issued Jan. 17, 1995.
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Application 12/869,859
B. The rejection of claims 1—10 on the grounds of non-statutory
obviousness-type double patenting over claim 1 of U.S. Patent
8,173,268 B26 (Maus) in view of Bruck; and
C. The provisional rejection of claims 1—10 on the grounds of non-
statutory double patenting over claims 1,3, and 5—11 of copending
Application No. 12/869,860.
OPINION
Obviousness over Althofer and Bruck
We agree with Appellants that the Examiner has failed to provide an
adequate reason for spacing the connecting points of Althofer such that
“each of said connecting points [is] surrounded by a respective connection-
free region defined by a distance between adjacent said connection points,
each of said connection-free regions having an equal size relative to one
another,” as required by Appellants’ claims. Appeal Br. 14—24.
First, we agree with Appellants’ interpretation of “each of said
connecting points being surrounded by a respective connection-free region
defined by a distance between adjacent said connection points, each of
said connection-free regions having an equal size relative to one another.”
Appeal Br. 21. The claim language defines each connection-free region in
terms of how it relates to the connecting point: The connection-free region
surrounds the connecting point. The claim language then defines the extent
of the connection-free region: The region is defined by a distance between
adjacent connection points. This distance between adjacent connection
points is necessarily defined by a line between those points; that is how
6 Maus et al., US 8,173,268 B2, issued May 8, 2012.
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Application 12/869,859
distance is measured between two points. Given the connection-free regions
surround respective connecting points and are defined by a line between
connecting points, the claim defines the regions as a circle with a radius
equal to the distance between connecting points. Appellants’ Figure 3
shows this radius at 37 and depicts the circular region with dashed circles.
Althofer, like Appellants, includes connecting points (joining regions
18 shown in Figures 4 and 6) between smooth layers (shown at 7 in Fig. 4)
and at least partially structured layers (17 in Fig. 4). Althofer || 88—89. As
recognized by the Examiner, the connecting points 18 are not surrounded by
connection-free regions meeting the distance and size requirements of the
claims. Ans. 8. Thus, the Examiner turns to Bruck to support the following
conclusion:
It would have been obvious at the time of invention for
one of ordinary skill in the art to modify the layout of the
connecting points in Althofer, through routine optimization, to
have equal spacing as taught by Bruck in order to obtain
superior mechanical strength and stabilization of the
honeycomb body.
Id. According to the Examiner, Bruck teaches connecting points spaced
equally apart. Id. But neither Althofer nor Bruck disclose or suggest the
connection-free regions that result in the equal spacing of connection points
required by claim 1.
Second, we agree with Appellants that the Examiner has failed to
provide a proper rationale for modifying the honeycomb body of Althofer in
the manner proposed by the Examiner. Bridges 7 taught by Bruck are not
connecting points of the same type taught by Althofer and thus Bruck’s
teaching with regard to the location of bridges 7 does not provide a reason
for positioning the connecting points of Althofer in any particular
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arrangement. Appeal Br. 17—18. The bridges 7 of Brack are connections
within ceramic insulating layers 9; they are not connecting points between
the smooth layers (layers 4 in Bruck; layers 7 in Althofer) and the corrugated
sheet metal layers (layers 5 in Bruck; layers 17 in Althofer). Bruck col. 6,11.
33—38; Althofer 191. One of ordinary skill in the art when combining the
teachings would, at best, look to the teachings of Althofer to determine
where to place the connecting points (joining regions 18 of Althofer) and,
when incorporating an insulating layer 9, look to Bruck to determine where
to place bridges 7 within the insulating layer 9. Thus, in the combination
suggested by the references, the connecting points would remain in the
positions taught by Althofer.
Appellants have identified reversible errors in the Examiner’s
rejection. Thus, we do not sustain the Examiner’s obviousness rejection.
Obviousness-type Double Patenting over Maus and Bruck
The Examiner also rejects claims 1—10 on the grounds of non-
statutory obviousness-type double patenting over claim 1 of Maus in view of
Bruck.
In a double patenting rejection, one considers the scope of the claim
upon which the rejection relies, here claim 1 of Maus, and determines the
differences in claim scope between that claim and the claim under review
without considering any of the relied upon patent (Maus) as prior art against
the claims under review. See In re Sarett, 327 F.2d 1005, 1013 (CCPA
1964) (“We are not here concerned with what one skilled in the art would be
aware [of] from reading the claims but with what inventions the claims
define.”). The obviousness analysis only comes into play during the step of
determining the obviousness of the “difference” between the claimed
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invention and the patented invention. “[Tjhere must be some clear evidence
to establish why the variation would have been obvious which can properly
qualify as ‘prior art.’” In re Kaplan, 789 F.2d 1574, 1580 (Fed. Cir. 1986).
There is no dispute that a key difference between the honeycomb
body of claim 1 under review and the honeycomb body defined by Maus’
claim 1 lies in the recitation in present claim 1 of a connection-free region.
Maus does not claim such a connection-free region, although given the
distances between the connecting points required by the limitation on the
number of inner contact points that form connecting points (i.e., at least 1%
and at most 20%), some regions must inherently be connection-free regions.
Maus claim 1.
The Examiner turns to Brack for a suggestion of including
connection-free regions of equal size to one another as required by claim 1,
but for the reasons we point out above, the evidence falls short. The
Examiner relies upon bridges 7, which are not connecting points surrounded
by connection-free regions. The teaching of bridges 7 in Brack does not
support the Examiner’s finding of a suggestion to space the connecting
points recited in Maus’ claim 1 in accordance with the spacing of bridges 7,
much less suggest the configuration of connecting points that results due to
the connection-free zones required by claim 1.
Provisional Obviousness-type Double Patenting
The Examiner also provisionally rejected claims 1—10 on the grounds
of non-statutory double patenting over claims 1,3, and 5—11 of copending
Application No. 12/869,860.
In arguing against the provisional rejection, Appellants rely upon
language in claim 1 of the ’860 Application that has been amended since the
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Application 12/869,859
time the Brief was filed. Compare Appeal Br. 7 (stating claim 1 of ’860
reads “said radial zones of having different densities of said connecting
points”), with ’860 Arndt, filed March 27, 2015 (clause reading “said
plurality of radial zones having different non-zero densities of said
connecting points”). However, the crux of Appellants’ argument is the
same, and we are able to decide the issue on appeal.
Claim 1 of the ’860 Application presently reads:
Claim 1. A honeycomb body, comprising:
a housing; and
a honeycomb structure having a cross section within said
housing, said honeycomb structure including at least one at
least partially structured metallic layer forming a multiplicity of
channels and inner contact points within said cross section;
said at least one at least partially structured metallic layer
including at least one structured sheet-metal foil and at least one
smooth metallic layer;
said cross section having a plurality of radial zones
disposed concentrically around an axis longitudinally
extending through said honeycomb structure;
at least 1 % and at most 20% of said inner contact points
in at least one of said plurality of radial zones forming
connecting points connecting said at least one structured sheet-
metal foil to said at least one smooth metallic layer, said
connecting points fixing said honeycomb structure;
said plurality of radial zones having different non-zero
densities of said connecting points', and
said connecting points being disposed at different mutual
spacings along said at least partially structured metallic layer.
Application ’860, Arndt, filed December 30, 2015 (emphasis added).
For comparison, instant claim 1 reads:
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Application 12/869,859
1. A honeycomb body, comprising:
a housing; and
a honeycomb structure having a cross section within said
housing and at least one at least partially structured metallic
layer forming a multiplicity of channels and inner contact
points within said cross section;
at most 20% of said inner contact points in said cross
section forming respective connecting points for fixing said
honeycomb structure; and
each of said connecting points being surrounded by a
respective connection-free region defined by a distance between
adjacent said connection points, each of said connection-free
regions having an equal size relative to one another.
Appeal Br. 27 (emphasis added).
A key difference is in the positioning of the connecting points.
The present claims require connection-free regions surrounding
connecting points, each connection-free region defined by a distance
between adjacent connection points and each connection-free region
having an equal size. This requires a particular distribution of
connecting points throughout the honeycomb body that results in
equally sized connection-free regions. Application ’860 does not have
any limitations to such an arrangement of connecting points.
The Examiner states that
it is proper and conceivable for one of ordinary skill in the art to
select radial zones of differing densities of connecting points
centered around any center within the honeycomb body such
that the honeycomb body of the instant claims would also read
on the honeycomb body of copending ’860.
Ans. 13.
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The Examiner has not persuaded us. It is not understood how
the honeycomb body can have both different densities of connecting
points in any portion and still have each of the connecting points
positioned to create the equally sized connection-free regions of
instant claim 1. Thus, we cannot say the Examiner has adequately
supported the provisional obviousness-type double patenting
rejection.
CONCLUSION
We do not sustain the Examiner’s rejections.
DECISION
The Examiner’s decision is reversed.
REVERSED
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