Ex Parte Chen et al

Board of Patent Appeals and Interferences

Jun 8, 2012

11599966 (B.P.A.I. Jun. 8, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PENG CHEN,
Yi Jiang, Jianguo Wang, and Yuming Xie
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Appeal 2010-010390
Application 11/599,966
Technology Center 1700
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Before PETER F. KRATZ, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.

Opinion for the Board entered by NAGUMO, Administrative Patent Judge.

Opinion Dissenting entered by HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
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A. Introduction1
Peng Chen, Yi Jiang, Jianguo Wang, and Yuming Xie (“Chen”)
timely appeal under 35 U.S.C. § 134(a) from the final rejection2 of
claims 1-16, which are all of the pending claims. We have jurisdiction.
35 U.S.C. § 6. We REVERSE.
The subject matter on appeal relates to porous ceramic filters said to
be useful as filters for trapping carbon soot in diesel exhaust.
(Spec. 3, [0008]) The inventive filters are said to have a relatively narrow
pore size distribution and to have no more than 5% of the total porosity
provided by pores having a pore diameter less than 1 micron.
(Id. at 6 [0028].)
Claim 1, the sole independent claim, is representative and reads:
1. A porous ceramic honeycomb body, comprising a sintered
phase composition, wherein
the ceramic body has a total porosity (%P) defined by a
median pore size (d50) greater than or equal to 10 microns;
a pore size distribution d-factor (pore size d-factor)
less than 0.8, wherein
the pore size d-factor = (d50-d10)/d50, and
a submicron pore fraction characterized in that less than 5%
of the total porosity of the body is comprised of pores having
a pore diameter of less than 1.0 micrometer.
(Claims App., Br. 9; indentation, paragraphing, and emphasis added.)

1 Application 11/599,966, Filters With Controlled Submicron Porosity,
filed 15 November 2006. The specification is referred to as the
“966 Specification,” and is cited as “Spec.” The real party in interest is
listed as Corning, Inc. (Appeal Brief, filed 4 February 2010 (“Br.”), 1.)
2 Office action mailed 23 June 2009 (“Final Rejection”; cited as “FR”).
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The Examiner maintains the following grounds of rejection:3
A. Claims 1-10, 12, 14 and 15 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Merkel,4 and Ohno.5
B. Claim 11 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Merkel, Ohno, and Dana.6
C. Claims 13 and 16 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Merkel, Ohno, and Evans.7
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The invention
The 966 Specification defines the pore fraction, as “the percent by
volume of porosity, as measured by mercury porosimetry, divided by 100.”
(Spec. 6 [0030].) The quantity dN is the pore diameter at which N% of the
pore volume is comprised of pores whose diameters are smaller than the

3 Examiner’s Answer mailed 29 March 2010 (“Ans.”).
4 Gregory A. Merkel, Mullite-Aluminum Titanate Body and Method for
Making Same, U.S. Patent Application Publication 2006/0021308 A1
(2 February 2006), based on an application filed 29 July 2004.
5 Kazushige Ohno et al., Honeycomb Filter and Ceramic Filter Assembly,
U.S. Patent 6,669,751 B1 (2003).
6 Entry on cordierite, Dana’s New Mineralogy 1251 (John Wiley and Sons,
Inc., 8th ed. (1997).
7 William D.J. Evans et al., Catalysts, U.S. Patent 4,237,032 (1980).
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value of dN. (Id.)8 Comparing the definition of dN to the language of the last
clause of claim 1,
a submicron pore fraction characterized in that less than 5%
of the total porosity of the body is comprised of pores having
a pore diameter of less than 1.0 micrometer,
it is apparent that this condition is equivalent to the requirement
that d5 ≥ 1.0 micrometer.
The rejections over prior art
It appears that the Examiner has found that Merkel and Ohno teach
that small pore sizes are undesirable, and that these references would have
taught a person having ordinary skill in the art that any reduction in the
number of small pores would have been desirable. From these findings, the
Examiner draws the legal conclusion that the claimed porous body would
have been obvious.
Chen argues, inter alia, that the Examiner’s reliance on Ohno to make
up for the lack of teaching in Merkel of porous ceramic filters having pore
size distributions in which d5 ≥ 1.0 micron is inconsistent with Ohno.
(Br. 4.) More specifically, Chen argues that Ohno teaches that “[t]he
average porous diameter of the filter F1 is about 1 μm-50 μm, and more
particularly, 5 μm-20 μm. If the average pore diameter is less than 1 μm,
the deposited fine particles tend to clog the filter F1.” (Id., 2d full para.,
quoting Ohno col. 5, ll. 62-65; Chen’s added emphasis.) If the average pore
diameter in a filter is 1 micrometer, Chen argues, then the filter would have

8 The 966 Specification provides express definitions for d90, d50, and d10: we
have substituted “N” for the percentages 90, 50, and 10.
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“approximately 50% of the total porosity with a pore diameter of less
than 1 micrometer.” (Br. 4, last para., emphasis omitted.) Thus, Chen
concludes, Ohno does not teach or suggest that the submicron pore fraction
should be less than as 5%, as required by the claims.
The Examiner finds that Ohno teaches that “excessive amounts of
pore sizes less than 1.0 um (micrometers) causes the deposited fine particles
to clog the filter.” (Ans. 4.) While this is true in a large sense, as Chen
explains, the weight of the evidence is that for Ohno, an “excessive amount”
arises when the average pore diameter is about 1 μm. When the average
pore diameter is less than 1 μm, regardless of the exact shape of the pore
size distribution function, a large percentage of the pores have diameters less
than the average value of 1 μm. The Examiner has failed to provide any
satisfactory explanation of how a porous object having an average pore
diameter of 1 μm may have less than 5% of the pore volume be due to pores
having a diameter of less than 1 μm.9

9 The Examiner objects that Chen has indulged in the “Negative Proof
Fallacy: that, because a premise [that the pore size distribution is reasonably
assumed to be normal about the average pore diameter] cannot be proven
false, the premise must be true.” (Ans. 17.) This argument is not well taken.
Just as an examiner can rely on reasonable assumptions founded in logic and
generally known scientific principles and facts to support an argument, so
may an applicant argue that those assumptions are not reasonable, or are
misapplied in the particular case. The Examiner’s reliance on this “logical”
argument merely highlights the lack of evidence and the lack of valid
reasoning in the reliance on Ohno. In any event, Chen has demonstrated
harmful errors in the Examiner’s rejections. The burden has shifted back to
the Examiner to come forward with a prima facie case of obviousness.
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Belatedly, the Examiner seeks, in the Response to Argument section
of the Answer, to come forward with evidence and argument that “it is
mathematically inherent that less than 5% of the total porosity of the body is
comprised of pores having a pore diameter (pore size) of less
than 1.0 micrometer.” (Ans. 12.) This inherency argument is without merit,
as the Examiner has failed to establish any “mathematical” reason why the
pore size distribution necessarily has less than 5% of the porosity in pores
having diameters less than 1 μm. Nor has the Examiner established any
fact- or theory-based reason to think that the Example 7 sintered body has
such a pore size distribution. As our reviewing court explained decades ago,
inherency “may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting
Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939). Even a
demonstration that persons skilled in the art could have obtained the low
pore fraction recited in claim 1 would not, by itself, suffice to establish that
it would have been obvious to do so within the meaning of
35 U.S.C. § 103(a).
The Examiner’s remaining rejections fail to cure the errors in the
rejection of claim 1.
Because Chen has shown harmful errors in the Examiner’s findings of
fact, technical analysis, and legal conclusions, we REVERSE the rejections
of record.
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C. Order
We REVERSE the rejection of claims 1-10, 12, 14 and 15 under
35 U.S.C. § 103(a) in view of the combined teachings of Merkel, and Ohno.
We REVERSE the rejection of claim 11 under 35 U.S.C. § 103(a) in
view of the combined teachings of Merkel, Ohno, and Dana.
We REVERSE the rejection of claims 13 and 16 under
35 U.S.C. § 103(a) in view of the combined teachings of Merkel, Ohno, and
Evans.
REVERSED

Ssl

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HASTINGS, Administrative Patent Judge, dissenting.
It is my view that a preponderance of the evidence supports the
Examiner’s conclusion of obviousness. The Examiner has reasonably found
that Merkel and Ohno teach that small pore sizes are undesirable, and that
these references would have taught a person having ordinary skill in the art
that any reduction in the number of pore diameters less than 1.0 micrometer
as claimed would have been desirable.
Indeed, Appellants have not rebutted the Examiner’s analysis that
Merkel alone suggests a porous ceramic honeycomb body that is unlikely to
have more than 5% of its pore diameters be less than 1.0 micrometers as
claimed (even though the Examiner may have been overstating the case
when he used the phrase “mathematically inherent”) (Ans. 12, 13; no Reply
Brief has been filed). It appears that Appellants are in the best position to
provide evidence on the distribution of pores sizes having a pore diameter of
less than 1.0 micrometer in Merkel since Merkel shares a common assignee
with the present case on appeal (that is, Corning, Inc.).
The Examiner also reasonably finds that Ohno teaches that “excessive
amounts of pore sizes less than 1.0 um (micrometers) causes the deposited
fine particles to clog the filter.” (Ans. 4.)
Accordingly, on this record, I agree with the Examiner’s
determination it would have been obvious to minimize the percentage of
pore diameters less than 1.0 micrometer in Merkel to “less than 5% of the
total porosity of the body” as recited in claim 1.