Ex Parte Cui et al

Patent Trial and Appeal Board

Mar 30, 2018

12667739 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/667,739 08/03/2010
76799 7590 04/03/2018
FAURECIA
c/o Carlson, Gaskey & Olds, P.C.
400 W. Maple Road, Ste. 350
Birmingham, MI 48009
FIRST NAMED INVENTOR
Hongjiang Cui
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
67341-2912; 07ARM0168 1655
EXAMINER
LINFORD, JAMES ALBERT
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
04/03/2018 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):
Silke.Hertzsch@faurecia.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HONGJIANG CUI and ERICH WEIGELE
Appeal2016-007247
Application 12/667,739 1
Technology Center 3600
Before ANTON W. PETTING, MICHAEL C. ASTORINO, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellants appeal from the
Examiner's decision rejecting claims 1-8, 13-18, and 20-42. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 According to the Appellants, "EMCON TECHNOLOGIES GERMANY
(AUGSBURG) GMBH is the real party in interest." Appeal Br. 1.
Appeal 2016-00724 7
Application 12/667,739
STATEMENT OF THE CASE
Appealed Subject Matter
The Appellants' invention is directed to "a tube for an exhaust system
which can be produced with low expenditure to have an appropriate tailored
wall thickness." Spec. i-f 6. 2 "The term 'tailored wall thickness' means that
in each point of the tube, the wall thickness is adapted to the stresses
prevailing there. For example, in regions subject to a high mechanical
stress, a wall thickness is used which is larger than in other regions subject
to less stress." Id. i-f 3. Claims 1, 5, 14, and 17 are the independent claims
on appeal. Claim 5, reproduced below, is illustrative of the subject matter
on appeal.
5. A tube for an exhaust system, including:
an exhaust tube; and
an add-on part which is connected with the exhaust tube
by a brazing seam, wherein the add-on part is a nozzle.
Appealed Objection and Rejections
The drawings are objected to under 37 C.F.R. § 1.83(a) because they
fail to show every feature of the invention of the claims, particularly claim 7.
Final Act. 3.
Claim 7 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Id. at 6.
Claim 7 stands rejected under 35 U.S.C. § 112, second paragraph, as
indefinite. Id. at 4--5.
2 "Spec." refers to the Substitute Specification, filed January 5, 2010.
2
Appeal 2016-00724 7
Application 12/667,739
Claims 1-8, 15, 16, 20, 26-28, 31, 32, 40, and 41 stand rejected under
35 U.S.C. § 102(b) as anticipated by Ito et al. (WO 2005/098893 Al, pub.
Oct. 20, 2005) ("Ito"). Id. at 7.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Ito, as applied to claim 1 above, and further in view of Tanaka et al.
(US 4,607,722, iss. Aug. 26, 1986) ("Tanaka"), Sakamoto et al. (US
3,687,495, iss. Aug. 29, 1972) ("Sakamoto"), or Tiedt et al. (US 5,625,256,
iss. Apr. 29, 1997) ("Tiedt"). See id. at 13.
Claims 14, 17, 18, 21-25, 29, 30, 33-39, and 42 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Ito with any of Tanaka, Sakamoto,
and Tiedt. Id. at 14.
ANALYSIS
Written Description Rejection and Objection to the Drawings
Ordinarily an objection is petitionable to the Director and a rejection
is appealable to the Board. When the issue of new matter is the subject of
both an objection and a rejection, the issue is appealable. Manual of Patent
Examining Procedure ("MPEP") § 2163.06(II), Review of New Matter
Objections and/or Rejections (9th ed., rev. 8, Jan. 2018)); see also MPEP
§ 608.04( c ); 35 U.S.C. § 134(a); 37 C.F.R. § 1.181 (a)(l ). Although the
objection to the drawings is not an issue of new matter, the objection to the
drawings tum on the same issue as the new matter rejection; namely,
whether the subject matter of claim 7 has adequate support in the original
disclosure. As such, we will decide both the rejection and the objection.
Independent claim 1 requires "an exhaust tube," "an add-on part," and
"a fastening element arranged in a region of the add-on part." Appeal Br. 20
3
Appeal 2016-00724 7
Application 12/667,739
(Claims App.). Claim 7, which depends directly from claim 1, specifies that
"the add-on part is arranged outside the exhaust tube." Id.
The Examiner determines that "[ t ]here is no support in the original
disclosure for the subject matter of claim 7," specifically, an "add-on part
arranged on the outside of the tube and a fastening element in the region of
the add-on part." Final Act. 6.
The Appellants argue that the disclosure in Specification and
Drawings reasonably conveys to one of ordinary skill in the art the subject
matter of claim 7 because fastening element is attached in the region of the
add-on part. See Appeal Br. 4--5; Reply Br. 2--4; Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991) (fundamental factual inquiry is
whether specification conveys with reasonable clarity to those skilled in the
art that, as of the filing date sought, applicant was in possession of the
invention as now claimed). For the following reasons, we determine that the
Appellants' argument is persuasive.
While there is no in haec verba requirement, newly-added claim
limitations must be supported in the specification through express, implicit,
or inherent disclosure. The fundamental factual inquiry is whether the
specification conveys with reasonable clarity to those skilled in the art that,
as of the filing date sought, applicant was in possession of the invention as
now claimed. See, e.g., Vas-Cath Inc., 935 F.2d at 1563---64. "[T]he written
description requirement is satisfied by the patentee's disclosure of 'such
descriptive means as words, structures, figures, diagrams, formulas, etc., that
fully set forth the claimed invention."' Enzo Biochem, Inc. v. Gen-Probe
Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting Lockwood v. Am. Airlines,
Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)).
4
Appeal 2016-00724 7
Application 12/667,739
The Appellants' argument is primarily based on the disclosure in the
Specification at paragraphs 9 and 10 and the embodiments of Figures 2 and
3. 3 See Appeal Br. 4--5. Paragraph 9 discloses that an add-on part can be
arranged inside or outside a tube without affecting strength. Paragraph 10
discloses: that a third part (e.g., a fastening eye) is mounted in the region of
the add-on part; that the add-on part and the tube each have a wall thickness
of 0.8 mm; and that the tube does not have adequate wall thickness by itself
to allow welding of the third part without the add-on part, the latter doubling
the wall thickness of the tube in the region of the add-on part. The
embodiment of Figure 2 includes an add-on part 18 inside tube 10 and
fastening eye 22 welded to the outside of tube 10. See Spec. Amendment
i-f 22 (filed Jan. 19, 2015). Also, Figure 3 shows an alternative embodiment
to Figure 2 where add-on part 18' is positioned outside of tube 10. See Spec.
Amendment i-f 24 (filed May 16, 2014). Both Figures 2 and 3 are particular
to region II, as shown in Figure 1. As such, we understand that the only
difference between the embodiments of Figures 2 and 3 is the relative
positioning of add-on parts 18, 18 ', respectively, with regard to tube 10.
The Examiner's rejection appears to focus on the lack of an explicit
statement in the Specification or an explicit depiction in the Drawings for
the subject matter of claim 7. See, e.g., Ans. 5, 6 (The Examiner determines
that the Specification has no "actual" or "particular" disclosure and the
drawings do not illustrate the claimed invention).
3 The reference to paragraphs 9 and 10 of the Specification refers to the
Substitute Specification filed January 5, 2010. Reference to the Appellants'
Figures refers to the Drawings filed on July 27, 2015, which were accepted
by the Examiner in the Advisory Action mailed August 3, 2015.
5
Appeal 2016-00724 7
Application 12/667,739
Although the Specification does not explicitly describe that the
alternative embodiment of Figure 3 includes fastening eye 22 arranged on
add-on part 18' and Figure 3 does not show fastening eye 22, the purpose of
the alternative embodiment of Figure 3 is to show the difference between the
relative positions of add-on part 18 and alternative add-on part 18' (in
Figures 2 and 3, respectively), with respect to tube 10. That purpose should
be viewed along with the object of the Appellants' invention, i.e., to save
costs by tailoring wall thickness at different regions of an exhaust tube
particular to the stresses prevailing at those regions and providing add-on
parts to increase wall thickness at regions of higher stress. See Spec. i-fi-13, 6;
see also id. i-fi-19--10. As such, the Specification reasonably conveys to a
skilled artisan that fastening eye 22 would remain in the alternative
embodiment of Figure 3. See Reply Br. 3. Moreover, the Specification's
description of the alternative embodiment of Figure 3 does not suggest
providing an add-on part in region II for some other reason, such as adapting
to other stresses prevailing in region II. Accordingly, we agree with the
Appellants that "the only difference between Figures 2 [and] 3 is the
location of the add-on part [relative to the tube], [and that] the fastening eye
at the axial overlap is necessarily the same as the [S]pecification teaches it
must be at the increased wall thickness." Id.
Thus, we do not sustain the Examiner's rejection of claim 7 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. We, likewise, do not sustain the objection to the
drawings.
6
Appeal 2016-00724 7
Application 12/667,739
Indefiniteness
The Examiner's rejection of claim 7 appears to be based on the phrase
"in a region" in claim 1 and an alleged lack of description in the
Specification for "wherein the add-on part is arranged outside the exhaust
tube" in claim 7. See Final Act. 5. The Examiner's Answer does not clarify
the reason(s) why the Examiner determined that claim 7 is indefinite. See
Ans. 3---6.
The Appellants argue that claim 7 is clear, and as such, definite.
Appeal Br. 4. The Appellants' argument is persuasive.
A claim fails to comply with 35 U.S.C. § 112, second paragraph,
"when it contains words or phrases whose meaning is unclear." In re
Packard, 751F.3d1307, 1310 (Fed. Cir. 2014) (approving, for pre-issuance
claims, the standard from MPEP § 2173.05(e) (9th ed., rev. 8, Jan. 2018)).
The Examiner fails to offer a cogent explanation why claim 7 is
unclear. To the extent that the Examiner supports the rejection of claim 7 by
suggesting that the phrase "in a region" of claim 1 is in conflict with the
above-recited limitation of claim 7, the Examiner fails to describe the
conflict. And, the Examiner's allegation that the Specification does not offer
a description of the subject matter of claim 7 does not explain why the claim
7 is unclear.
Thus, we do not sustain the Examiner's rejection of claim 7 under
35 U.S.C. § 112, second paragraph, as indefinite.
7
Appeal 2016-00724 7
Application 12/667,739
Anticipation by Ito
Independent Claim 1 and Dependent Claims 2-4, 6-8, 15, 16, 26, 27,
31, and 40
Independent claim 1 is directed to a tube for an exhaust system having
"a fastening element arranged in a region of the add-on part." Appeal Br. 20
(Claims App.).
The Appellants argue that the Examiner's finding that "fastening
element" of claim 1 reads on Ito's cupped window frame 8 is not reasonable.
Id. at 7. In response, the Examiner supports the finding by suggesting
rhetorically: "[i]s not element 8 fastened to other components"; "[i]s not
element 8 capable of being fastened to something else"; and "[d]oes not the
opening in [element] 8 fasten element 9." Ans. 11, 20; see also Final Act. 8.
We determine that the Examiner's finding that the "fastening
element" of claim 1 reads on Ito's cupped window frame 8 is inadequately
supported. First, Ito's cupped window frame 8 is bonded to irradiating
window 9 by brazing material 131. See Ito, Figs. 9, 11, i-f 62. 4 Also, the use
of brazing material 131 to bond cupped window frame 8 and irradiating
window 9 together suggests that the cupped window frame 8 is not a
fastening element for irradiating window 9. Second, the Examiner fails to
explain how Ito's cupped window frame 8, when not bonded to irradiating
window 9, may act as a fastening element. Third, the Appellants'
Specification instructs that a fastening tab or eye may be fastening elements.
See Spec., Fig. 1; Spec. Amendment i-f 22 (mailed Jan. 19, 2015). Also, the
Examiner does not address whether Ito's cupped window frame 8 is a
4 Citations to Ito's paragraphs are directed to the English translation
provided by Espacenet, dated April 19, 2016.
8
Appeal 2016-00724 7
Application 12/667,739
fastening tab or eye. In sum, the Examiner fails to adequately support the
finding that the "fastening element" of claim 1 reads on Ito's cupped
window frame 8.
Thus, we do not sustain the Examiner's rejection of independent
claim 1, and dependent claims 2--4, 6-8, 15, 16, 26, 27, 31, and 40, as
anticipated by Ito.
Independent Claim 5
Independent claim 5 is directed to "a tube for an exhaust system"
having "an exhaust tube" and "an add-on part which is connected with the
exhaust tube by a brazing seam, wherein the add-on part is a nozzle."
Appeal Br. 20 (Claims App.).
The Appellants rely on arguments presented for the rejection of
claim 1 for the rejection of claim 5. Id. at 9. Accordingly, we will address
the Appellants' arguments for claim 1 as they apply to claim 5. At the
outset, we note that claim 5 does not call for a fastening element. As such,
the Appellants' argument that Ito's device lacks a fastening element (id. at 7)
is not commensurate with the scope of claim 5 and not persuasive.
The Appellants point out that the preamble of claim 5 recites "a tube
for an exhaust system" and the body of claim 5 recites "an exhaust tube."
See Appeal Br. 6; Reply Br. 5---6. "In general, a preamble limits the
invention if it recites essential structure or steps, or if it is 'necessary to give
life, meaning, and vitality' to the claim." Catalina Mktg. Int 'l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)).
The preamble limits claim scope when it is essential to understand
9
Appeal 2016-00724 7
Application 12/667,739
limitations or terms in the claim body. Catalina Mktg. Int 'l, 289 F.3d at
808. Conversely, "a preamble is not limiting 'where a patentee defines a
structurally complete invention in the claim body and uses the preamble only
to state a purpose or intended use for the invention."' Id. (quoting Rowe v.
Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)).
We determine that the preamble of claim 5 does not limit the claim.
The preamble of claim 5 recites, "[a] tube for an exhaust system" and the
phrase "for an exhaust system" is directed to an intended use for the
invention. See Ans. 8. Additionally, the body of the claim recites "an
exhaust tube" and an "add-on part," which sets forth a structurally complete
invention that is readily understood without resorting to the preamble of
claim 5.
Additionally, the Appellants construe the term "exhaust" in "exhaust
system" as a vehicle exhaust system that includes components such as a
muffler, a catalytic converter, or a filter. See Appeal Br. 6 (citing Spec.
i-fi-129--30, Figs. 1---6). The Appellants support this construction by providing
a dictionary definition of the term "exhaust" as "the escape of used gas or
vapor from and engine." Id. (citing MERRIAM-WEBSTER'S COLLEGIATE
DICTIONARY, (10th ed. 1994)). However, the Appellants' proposed definition
conflicts with doctrine of claim differentiation. See Bancorp Servs. L.L. C. v.
Sun Life Assurance Co. of Can. (US.), 687 F.3d 1266, 1275 (Fed. Cir. 2012)
("' [T]he presence of a dependent claim that adds a particular limitation
raises a presumption that the limitation in question is not found in the
independent claim"' (internal citation omitted)). Notably, claim 28, which
depends from claim 5, recites "wherein the exhaust tube forms a portion of a
motor vehicle exhaust system through which exhaust gases are discharged."
10
Appeal 2016-00724 7
Application 12/667,739
Appeal Br. 22 (Claims App.) (emphasis added); see also id. at 23 (Claim 32,
which depends from claim 5, recites "wherein the exhaust tube has an open
first end and an open second end to form a motor vehicle exhaust gas
passage therethrough to conduct heated exhaust gases from an upstream
exhaust component at the first end to a downstream exhaust component at
the second end" (emphasis added)). The additional limitation of claim 28
specifies that the exhaust tube is part of a motor vehicle exhaust system,
which raises a presumption that claim 5 's use of the term "exhaust" is not
necessarily a part of a vehicle exhaust system. Additionally, the term
"exhaust" is also defined as "the steam or gases ejected." Exhaust
Definition, DICTIONARY.COM, http://www.dictionary.com/browse/ exhaust
(last visited Mar. 29, 2018) (noun, Machinery). Accordingly, in this case,
we do not understand the term "exhaust" in claim 5 to necessarily refer to a
vehicle exhaust system.
Turning to the Examiner's rejection, the Examiner finds that Ito's
exhaust tube 2 - of unsealed tubes 17 - is part of an exhaust system
(exhauster) 18. Final Act. 9 (citing Ito, Figs. 11-12); Ans. 9 (citing Ito
i-fi-170, 71). The Appellants argue that the manufacture of Ito's x-ray tube
does not correspond to the exhaust tube of claim 5. Reply Br. 7. The
Appellants' argument is not persuasive as it has long been held that the
intermediate or transitory nature of a product or article in a reference does
not detract from the efficacy of that reference as prior art. See, e.g., In re
Mullin, 481F.2d1333, 1335-36 (CCPA 1973) (citing In re Herbert, 461
F.2d 1390 (CCPA 1972).
The Appellants argue that the Examiner's finding that Ito discloses an
exhaust tube is unreasonable because Ito's tube is an x-ray tube. See Appeal
11
Appeal 2016-00724 7
Application 12/667,739
Br. 5. The Appellants' argument is not persuasive because it is not
commensurate with the scope of the claim. Stated otherwise, claim 5 does
not exclude as prior art a tube that is an intermediate structure in a process of
manufacturing an x-ray tube. However, we agree with the Appellants that
when Ito's exhaust tube 2 is sealed (as an air tight structure) it does not
correspond to the "exhaust tube" of claim 5 as it is incapable of exhausting
gases. See Appeal Br. 7 (citing Ito, Figs. 1, 2, 4--7, i-fi-173-74); Reply Br. 8.
Claim 5 also recites "an add-on part which is connected with the
exhaust tube by a brazing seam." Appeal Br. 20 (Claims App.). The
Appellants argue that Ito's tube-like sealing member 5 and/ or shield 6 is not
connected to exhaust tube 2 by a brazing seam. Appeal Br. 7. The
Appellants' argument is not persuasive. Sealing member 5 and/or shield 6 is
connected indirectly to exhaust tube 2 by brazing filler material 131. See
Ans. 10-11; Ito, Fig. 11. In response, the Appellants assert that including
indirect connections, within this scope of claim 5, would render the claim
term "connected" meaningless. Reply Br. 7. We disagree. The word
connected is defined as "joined, linked, or fastened together; unite or bind."
Connect Definition, DICTIONARY. COM, http://www. dictionary .com/browse/
connected (last visited Mar. 29, 2018) (verb (used with object)). The
definition of "connected" is not restricted to either a direct or indirect
connection. Ullstrandv. Coons, 147 F.2d 698, 700 (CCPA 1945) ("It is
clear that the accepted definition of the term 'connected' is restricted to
neither a direct nor an indirect connection, and the term is therefore
applicable to an indirect connection."). As such, the Examiner does not err
in finding that sealing member 5 and/ or shield 6 is connected to exhaust tube
2 by brazing filler material 131. See Ans. 10-11.
12
Appeal 2016-00724 7
Application 12/667,739
The Appellants argue that the Examiner errs in finding that Ito's tube-
like sealing member 5 and/ or shield 6 is a nozzle because the structures fail
to direct a flow of fluid. See Appeal Br. 9 (The Appellants define "nozzle,"
as "a short tube with a taper or constriction used (as on a hose) to speed up
or direct a flow of fluid." (Citing MERRIAM-WEBSTER'S COLLEGIATE
DICTIONARY (10th ed. 1994)); Reply Br. 9-10; see also Ito ,-r 29. The
Appellants' argument is not persuasive. Ito's Figures 11 and 12 show the
exhaust ventilation of unsealed tube 17, which is carried out by exhauster
18. Ito i-f 70. And, as explained by the Examiner, shield 6 constricts from
the upper inside portion of Ito's device (around cupped window frame 8) to
exhaust tube 2, and as such directs atmospheric air (gas) to exhaust tube 2.
See Ans. 9, 16-17; Final Act. 9.
Thus, we sustain the Examiner's rejection of claim 5 as anticipated by
Ito.
Dependent claim 20
Claim 20 depends from claim 5 and recites "wherein the nozzle
comprises a tube having a first portion with a first diameter and a second
portion with a second diameter that is less than the first diameter." Appeal
Br. 21 (Claims App.). The Appellants argue that Ito's tube-like sealing
member 5 and shield 6 does not correspond to nozzle of claim 20 for reasons
similar to those discussed above with regard to claim 5. See id. at 10. The
Appellants' argument is not persuasive for reasons similar to those discussed
above with regard to claim 5. Thus, we sustain the Examiner's rejection of
claim 20 as anticipated by Ito.
13
Appeal 2016-00724 7
Application 12/667,739
Dependent claims 28 and 32
Claim 2 8 depends from claim 5 and recites "wherein the exhaust tube
forms a portion of a motor vehicle exhaust system through which exhaust
gases are discharged." Appeal Br. 22 (Claims App.). Claim 32 also depends
from claim 5 and recites, "wherein the exhaust tube has an open first end and
an open second end to form a motor vehicle exhaust gas passage
therethrough to conduct heated exhaust gases from an upstream exhaust
component at the first end to a downstream exhaust component at the second
end." Id. at 23 (Claims App.). Claims 28 and 32 call for exhaust tube as
part of a vehicle exhaust system which does not read of Ito's exhaust tube 2.
See also id. at 10-12. Thus, we do not sustain the Examiner's rejection of
claims 28 and 32 as anticipated by Ito.
Dependent claim 41
Claim 41 depends from claim 5 and recites "wherein the nozzle is in
direct contact with the exhaust tube." Id. at 24 (Claims App.). The
Examiner finds that Ito's nozzle (tube-like sealing member 5 and shield 6) is
in direct contact with its exhaust tube; namely, cupped stem unit 1, exhaust
tube 2, and metalized layer 13. See Final Act. 12; Ans. 24; see also Ito i-f 29,
Fig. 11. The Appellants contend that Ito's "[e]lements 1, 2, and 13 do not
comprise an exhaust tube." Appeal Br. 8. We agree. Additionally, Ito's
nozzle (tube-like sealing member 5 and shield 6) is not in direct contact with
its exhaust tube 2. Thus, we do not sustain the Examiner's rejection of claim
41 as anticipated by Ito.
14
Appeal 2016-00724 7
Application 12/667,739
Obviousness based on Ito with any of Tanaka, Sakamoto, and Tiedt
Dependent Claim 13
The Examiner's rejection of claim 13 is based on the same
inadequately supported finding as discussed above with regard to the
rejection of claim 1. The additional findings and reasoning associated with
the rejection of claim 13 does not cure the deficiency of the rejection of
claim 1. Thus, we do not sustain the Examiner's rejection of claim 13 as
unpatentable over Ito with any of Tanaka, Sakamoto, and Tiedt.
Independent Claims 14 and 17, and Dependent Claims 18, 21-25, 29,
30, 33-39, and 42
Independent claim 14 recites, among other things, "wherein a wall
thickness of the add-on part is within a range of 0.2 to 0.8 mm, and wherein
a wall thickness of the exhaust tube is within a range of 0.6 to 0.8 mm."
Appeal Br. 21 (Claims App.). Independent claim 17 includes substantially
similar requirements as claim 14. See id. The Examiner finds that Ito
discloses an exhaust tube 2 and tube-like sealing member 5 and/or shield 6,
which correspond to the claimed exhaust tube and add-on part. Final
Act. 14--17. The Examiner finds that Ito fails, but that Tanaka, Sakamoto, or
Tiedt discloses the claimed wall thickness of the add-on part and the exhaust
tube. Id. The Appellants point out that the exhaust tube of Ito is directed to
an x-ray device, whereas "Tanaka discloses a muffler having a perforated
pipe 7 with a wall thickness of .6 mm." Appeal Br. 13. We agree with the
Appellants' argument that applying Tanaka's teaching of wall thickness
particular to a perforated pipe of a muffler suggests impermissible hindsight
bias. See id. at 13-14, 15; Reply Br. 19. Similarly, the Appellants point out
15
Appeal 2016-00724 7
Application 12/667,739
that Sakamoto is directed to pipe joint for an oil burner and Tiedt is directed
to a ceramic discharge lamp. See Appeal Br. 14, 15. We agree with the
Appellants' argument that one of ordinary skill in the art would not modify
the Ito's x-ray device based on Sakamoto's or Tiedt's teachings. See id.;
Reply Br. 20. Thus, we do not sustain the Examiner's rejection of claims
14, 17, 18, 21-25, 29, 30, 33-39, and 42 as unpatentable over Ito with any of
Tanaka, Sakamoto, and Tiedt.
DECISION
We AFFIRM the Examiner's decision rejecting claims 5 and 20 under
35 U.S.C. § 102(b) as anticipated by Ito.
We REVERSE the Examiner's decision objecting to the drawings
under 37 C.F.R. § 1.83(a) and rejecting: claim 7 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement;
claim 7 under 35 U.S.C. § 112, second paragraph, as indefinite; claims 1--4,
6-8, 15, 16, 26-28, 31, 32, 40, and 41under35 U.S.C. § 102(b) as
anticipated by Ito; claim 13 under 35 U.S.C. § 103(a) as unpatentable over
Ito with any of Tanaka, Sakamoto, and Tiedt; and claims 14, 17, 18, 21-25,
29, 30, 33-39, and 42 under 35 U.S.C. § 103(a) as unpatentable over Ito
with any of Tanaka, Sakamoto, and Tiedt.
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)(l )(iv).
AFFIRMED-IN-PART
16