Ex parte Hosoya et al.

Board of Patent Appeals and Interferences

Sep 22, 1998

08385984 (B.P.A.I. Sep. 22, 1998)

Application for patent filed February 9, 1995. According to1
appellants, this application is a division of Application 08/094,264, filed
July 21, 1993.
1
Paper No. 18
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte YASUHIKO HOSOYA,
TOSHIKI KURODA, TATSUHIKO TAKAHASHI
AND MUTSUO SEKIYA
______________
Appeal No. 98-0807
Application 08/385,9841
_______________
ON BRIEF
_______________
Before MEISTER, FRANKFORT and PATE, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claim 5,
the only claim remaining in the application.
Appeal No. 98-0807
Application 08/385,984
2
We REVERSE.
The appellants’ invention pertains to an apparatus for
purifying an exhaust gas of an engine, the nature of which is
readily apparent from a perusal of claim 5.
A copy of claim 5 may be found in the appendix to the
brief. The reference relied on by the examiner is:
Laurent 4,098,078 July 4,
1978
Claim 5 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Laurent. In the final rejection the examiner
notes Laurent in Figs. 2 and 3 teaches that the air flow from
pump 41 (1) during the “choked operation” is through pressure
controlling valve 54, heating device 55 and into the exhaust
pipe via nozzle 52 and (2) thereafter is through valve 49,
check valve 56, heating device 55 and into the exhaust pipe
via nozzle 52. In the answer the examiner states that:
The apparent reason for this valving arrangement 49,
54 is to avoid cooling the catalyst 11 by supplying
unheated air though [sic, through] line 53 during
warmup. Appellant argues that there is no
termination of electric heating by element 55 in
Appeal No. 98-0807
Application 08/385,984
3
Laurent. Such termination is implied by the Laurent
disclosure that during choked operation, air is
heated by the heater 55 (column 7, lines 23-29).
[Pages 3 and 4.]
We will not support the examiner’s position. A prior art
reference anticipates the subject matter of a claim when that
reference discloses every feature of the claimed invention,
either explicitly or inherently. In re Schreiber, 128 F.3d
1473,
1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and Hazani v.
Int’l Trade Comm’n, 126 F.3d 1473, 1477, 44 USPQ2d 1358, 1361
(Fed. Cir. 1997). As the examiner appears to recognize, there
is no explicit teaching in Laurent that the heating by element
55 is terminated once the choked operation ceases.
Nevertheless, the examiner has taken the position that such
termination is “clearly implied” by the fact Laurent states
that air flow is heated by the element 55 during choked
operation. Such a position, however, is based on speculation.
Laurent is completely silent as to whether or not the heating
element remains on or is terminated subsequent to the choking
operation. While, of course, it is possible that it is
Appeal No. 98-0807
Application 08/385,984
4
inherent in the operation of Laurent’s device that heating by
the element 55 is terminated subsequent to the choking
operation as the examiner theorizes; however, inherency may
not be established by probabilities or possibilities. In re
Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981) and
In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed.
Cir. 1993).
Since each and every feature set forth in claim 5 cannot
be found in Laurent, either explicitly or under the principles
of inherency, we will not sustain the rejection of this claim
under 35 U.S.C. § 102(b).
REVERSED
Appeal No. 98-0807
Application 08/385,984
5
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
CHARLES E. FRANKFORT ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
WILLIAM F. PATE, III )
Administrative Patent Judge )

Sughrue, Mion, Zinn,
MacPeak and Seas
2100 Pennsylvania Ave., N.W.
Washington, DC 20037-3202
Appeal No. 98-0807
Application 08/385,984
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JMM/cam