Ex Parte Cutler et al

Board of Patent Appeals and Interferences

Sep 21, 2010

10400742 (B.P.A.I. Sep. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLARD A. CULTER and TINGHONG TAO
____________

Appeal 2010-004482
Application 10/400,742
Technology Center 1700
____________

Before CHUNG K. PAK, CHARLES F. WARREN, and PETER F. KRATZ,
Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-004482
Application 10/400,742

2
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-18.2 We have jurisdiction pursuant to
35 U.S.C. § 6.
Appellants’ claimed invention is directed to a porous ceramic
honeycomb catalyst support. The porous ceramic material includes a
network of interconnected pores having a narrow pore size distribution such
that greater than 85 percent of the total porosity of the material is from pores
having a pore size between 5 and 30 micrometers.
Claim 1 is illustrative and reproduced below:

1. A catalyst support for use in selective catalytic reduction
and comprising a honeycomb body composed of a porous ceramic
material, and including a plurality of parallel cell channels traversing
the body from a frontal inlet end to an outlet end thereof:

wherein the porous ceramic material is defined by a
total porosity greater than 45 vol. %, and a network of interconnected
pores with a narrow pore size distribution of pores having more than
85% of the total porosity has a pore size of greater than 5 micrometers

2 This appeal, which is from the Final Office Action (FOA) delivered
on November 25, 2008, is the second appeal involving this Application. The
first appeal (Appeal No. 2007-4331) was resolved in a Board Decision
rendered September 26, 2007 reversing an anticipation rejection that was
previously maintained by the Examiner over the same prior art involved in
this appeal. Also, in the previous Decision, the Application was remanded
to the jurisdiction of the Examiner with instructions for the Examiner to
consider the patentability of the appealed claims under the other pertinent
sections of Title 35 of the United States Code, including under 35 U.S.C. §
103 relative to the prior art developed during the examination of the
application, if the Examiner had not already carried out that required
analysis (Dec. 4).

Appeal 2010-004482
Application 10/400,742

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but less than 30 micrometers and a median pore size greater than 5
micrometers but less than 30 micrometers.

The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Merkel US 5,258,150 Nov. 2, 1993
Appellants rely on a Declaration pursuant to 37 C.F.R. § 1.132 by
Gregory A. Merkel.
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Merkel.
The principal issue before us is:
Have Appellants indicated error in the Examiner’s determination that
the claimed catalyst support would have been obvious to one of ordinary
skill in the art over the porous ceramic support body of Merkel based on the
argument and evidence furnished with the Appeal Brief?
We answer this question in the negative and we affirm the stated
rejection for substantially the reasons and factual findings set forth by the
Examiner in the Examiner’s Answer. We add the following for emphasis.
Appellants present substantially the same arguments with respect to
independent claims 1 and 10 (App. Br. 3-8). Appellants do not argue the
dependent claims separately. Accordingly, we select independent claim 1 as
the representative claim on which we shall primarily focus in deciding this
appeal.
Merkel discloses a cordierite multi-celled honeycomb body having a
low coefficient of thermal expansion (CTE) and a high porosity that is useful
as a catalyst support or filter (col. 2, ll. 43 - col. 3, l. 13, col. 5, ll. 47-60, and
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Application 10/400,742

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col. 6, l. 67- col. 7, l. 5). As found by the Examiner, Merkel discloses the
low CTE ceramic (cordierite) bodies have:
a relatively high porosity, of greater than about 42% by volume.
The total porosity is most typically about 42% to about 60% by
volume. The bodies most advantageously have a mean pore
diameter of about 5 to about 40 microns. Most advantageously,
in about 30% to about 100% of the total porosity the pore
diameter is greater than about 10 micrometers for diesel
particulate filter applications. See col. 6, ll. 17-35 of the
reference for the above teaching.
Ans. 3; FR 2.

Appellants do not dispute the aforementioned findings as to Merkel’s
teachings by the Examiner. Rather, Appellants urge that Merkel does not
teach the claimed narrow pore size distribution (more than 85 percent of the
total porosity from a pore size between 5 micrometers and 30 micrometers).
Appellants argue that the disclosure in Merkel pertaining to from about 30-
100 percent total porosity form pore sizes of greater than about 10
micrometers does not specify an upper pore size limit (App. Br. 4 and 7).
Appellants point to the Examples of Merkel, as discussed in the Merkel
Declaration, as evincing that bodies having total porosity from pore sizes of
greater than 10 micrometers does not ensure that 85 percent of the total
porosity is obtained from pore sizes between 5 and 30 micrometers (App.
Br. 3-8. Appellants urge that Merkel does not teach or suggest the claimed
pore size distribution.
For the reasons stated by the Examiner in the Answer, we are not
persuaded that the arguments and Declaration evidence indicate error in the
Examiner’s obviousness determination. In this regard, we note that Merkel
places a constraint on the upper limit of the quantity of larger pore sizes and
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the pore size distribution of the body by disclosing that the body must have a
median pore diameter of about 5 to about 40 micrometers in addition to
having 30-100 percent of the total porosity provided with pore sizes greater
than 10 micrometers (col. 6, ll. 9-34). After all, to obtain a median pore size
within the disclosed range of about 5 to 40 micrometers, for example a 15
micrometer median, while obtaining 30-100 percent of the porosity with
greater than 10 micrometer pore sizes as disclosed suggests forming bodies
having a limit on the range of total porosity from pores having a pore size
much larger than 10 micrometers and/or having a pore size much less than
the claimed median diameter.
The limit on the range of pore sizes making up the total porosity of
Merkel can be particularly constrained and Merkel’s range overlaps with the
claimed relatively narrow pore size distribution for more than 85 percent of
the total porosity as evident by considering that Merkel discloses the total
porosity from pores having a size greater than 10 micrometers can approach
100 percent and Merkel provides for median pore sizes only slightly greater
than 10. Hence, selecting a narrow pore size distribution and median pore
size, as here-claimed, would have been an option within the scope of
Merkel’s teachings that would have been reasonably expected to be
successful. After all, an ordinarily skilled artisan following the teachings of
Merkel would have been expected to arrive at the claimed subject matter in
determining the workable limits of the pore sizes embraced by Merkel. In
this regard, we note that Merkel teaches that their disclosed honeycomb
bodies are useful for substantially the same utilities as those disclosed for
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Appellants’ claimed bodies. Compare Merkel (col. 1, ll. 15-19 and col. 2, ll.
53-60) with Appellants’ Specification (Spec. paras. 005, 006, and 009).
In light of the above and contrary to Appellants’ argument, Merkel
would have suggested, to one of ordinary skill in the art, forming support
bodies having a high percentage of the total porosity provided by a limited
pore size range and having a median pore size that would fall within the
claimed ranges as found by the Examiner. As stated by our reviewing court in
In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003):
In cases involving overlapping ranges, we and our predecessor
court have consistently held that even a slight overlap in range
establishes a prima facie case of obviousness.…We have also
held that a prima facie case of obviousness exists when the
claimed range and the prior art range do not overlap but are
close enough such that one skilled in the art would have
expected them to have the same properties…[Citations
omitted.]

While we recognize that the Merkel Declaration evinces that
none of the Examples of Merkel anticipate both Appellants’ claimed total
porosity distribution range and median pore sizes range, Merkel is not
employed as an anticipatory reference. Furthermore, the teachings and
suggestions derivable from Merkel are not limited to the Examples provided
therein, as noted above. In this regard, disclosed examples and particularly
preferred embodiments do not constitute a teaching away from a broader
disclosure of less preferred embodiments. See In re Susi, 440 F.2d 442, 446
(CCPA 1971). Moreover, the fact that a reference “discloses a multitude of
effective combinations does not render any particular formulation less
obvious.” Merck & Co., Inc. v. Biocraft Labs, 874 F.2d 804, 808 (Fed. Cir.
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1989) (citing In re Corkill, 771 F.2d 1496, 1500 (Fed.Cir.1985)
(obviousness rejection of claims affirmed in light of prior art teaching that
“hydrated zeolites will work” in detergent formulations, even though “the
inventors selected the zeolites of the claims from among ‘thousands' of
compounds”)). “What matters is the objective reach of the claim. If the
claim extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 419 (2007). To be non-obvious, the claimed
subject matter must not encompass “the predictable use of prior art elements
according to their established functions.” Id. at 417.
Appellants do not argue that Merkel is non-enabling and/or
substantiate that Merkel teaches or suggests a method of making honeycomb
bodies that could not result in a pore size distribution within the claimed
ranges. Nor do Appellants present and argue evidence that establishes
criticality or unexpected results for bodies having the claimed porosity
ranges.
On this record, we determine that the evidence and argument of record
weighs in favor of the Examiner’s obviousness determination.
Consequently, we affirm the stated obviousness rejection.

ORDER
The Examiner’s decision to reject claims 1-18 under 35 U.S.C. §
103(a) as being unpatentable over Merkel 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
Appeal 2010-004482
Application 10/400,742

8
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CORNING INCORPORATED
SP-TI-3-1
CORNING NY 14831