Ex Parte Shirk et al

Board of Patent Appeals and Interferences

Oct 20, 2009

10322008 (B.P.A.I. Oct. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RYAN C. SHIRK, STEPHEN M. SANOCKI, JOSEPH C.
PEISERT, ROGER L. LANGER, LOYD R. HORNBACK, III.,
and IAN R. HARDING
____________

Appeal 2009-012602
Application 10/322,008
Technology Center 1700
____________

Decided: October 20, 2009
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 47-58 and 62-68. We have jurisdiction under 35
U.S.C. § 6.
We AFFIRM.
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Statement of the Case
Appellants claim a method of making a self-supporting insulating end
cone (claim 62) and a method of making a pollution control device having
such an end cone (claim 47). Each method includes the step of forming a
flexible and self-supporting insulating end cone comprising a single,
continuous piece of insulating material. This preformed insulating material
is then disposed in the end cone housings of a pollution control device.
Representative claim 62 reads as follows:
62. A method of making a self-supporting insulating
end cone having a three dimensional cone shape, said method
comprising:
forming a flexible and self-supporting insulating end cone
comprising a single, continuous piece of resilient and
compressible non-intumescent or intumescent insulating
material, the insulating material comprising inorganic fibers,
and the insulating end cone having a three dimensional cone
shape,
wherein the insulating end cone is dimensioned so as to fill
the gap between an inner and outer end cone housing of a
pollution control device, such that there is no air space between
the insulating end cone and either end cone housing, and the
insulating end cone maintains its three dimensional cone shape
under the force of gravity, when placed unsupported on a level
surface.
The prior art listed below is relied upon by the Examiner as evidence
of obviousness:
Farr 3,598,157 Aug. 10, 1971
Corn 5,332,609 Jul. 26, 1994

The admitted prior art described on pages 1-2 of the Specification.
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The Examiner rejects all appealed claims under 35 U.S.C. § 103(a) as
being unpatentable over the admitted prior art in view of Farr and Corn.
Issue
Have Appellants shown error in the Examiner’s determination that
Farr is analogous prior art which would have suggested replacing the end
cone insulation forming (e.g., by wrapping) step in the admitted prior art
with the step of forming a flexible and self-supporting insulating end cone
comprising a single, continuous piece of material as required by independent
claims 47 and 62?
Findings of Fact
The Examiner acknowledges that the admitted prior art forms
insulating end cones by wrapping or stuffing insulation in the end cone
housings rather than by disposing in the housings a preformed flexible and
self-supporting insulating end cone comprising a single, continuous piece of
material (Ans. 3-4, 7-8). With respect to this deficiency, the Examiner finds
that Farr teaches providing insulation (i.e., for pipes and pipe fittings) as a
preformed, self-supporting, single, continuous piece of material (id).
Farr discloses that such preformed insulation possesses advantages
(e.g., economical to install) (col. 1, ll. 6-22). Farr discloses that the
insulation can be made in two half sections which are placed against one
another during installation (para. bridging cols. 1-2). In addition, Farr
teaches that the “insulation can also be made by filter pressing a precooked
slurry having particles of a calcium silicate gel around a perforated mold
surface through which excess water can pass to collect the gelled solids into
a shape corresponding to the desired fitting, and then autoclaving this body
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into its final hydrous calcium silicate phase” (col. 4, ll. 9-14; emphasis
added).
Principles of Law
Prior art is analogous (1) if the reference is from the inventor’s field
of endeavor regardless of the problem addressed, and (2) if the reference is
reasonably pertinent to the particular problem with which the inventor was
involved regardless of the field of endeavor. In re Clay, 966 F.2d 656, 658
(Fed. Cir. 1992).
In assessing the obviousness of a claim to a combination of prior art
elements, the question to be asked is whether the improvement of the
claimed combination is more than the predictable use of prior art elements
according to their established functions. KSR Int’l. Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
Analysis

Initially, we observe that Appellants do not separately argue any of
the dependent claims on appeal. Therefore, these claims will stand or fall
with their parent independent claims 47 and 62.
Appellants argue that Farr is non-analogous prior art (App. Br. 6-7).
This argument is unpersuasive for the reasons expressed in our prior
Decision dated 30 March 2006 for Appeal No. 2006-0583 of this
Application (Dec. 3). Specifically, the Farr reference is reasonably pertinent
to Appellants’ problem relating to the use of non-preformed insulation (e.g.,
see ll. 1-6 of Spec. page 4 in comparison with ll. 6-26 in col.1 of Farr).
Appellants also argue that “the person of ordinary skill in the art of
making pollution control devices would not be motivated to employ the
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teachings of Corn or Farr in order to practice Appellant’s [sic, Appellants’]
inventive methods” (App. Br. 8).
This argument lacks convincing merit. Significantly, Appellants have
failed to establish that the improvement of their claimed combination of
prior art elements is more than the predictable use of these prior elements
according to their established functions.
Finally, Appellants argue that the Examiner’s proposed combination
would not result in the claimed feature of a self-supporting insulating end
cone comprising a single, continuous piece of material because “neither Farr
nor Corn disclose, teach or suggest that their respective inventions are of a
single piece construction” (App. Br. 7; see also Reply Br. 3).
We cannot agree. As pointed out in our Findings of Fact section
above, Farr discloses that preformed insulation can be made by filter
pressing a precooked slurry “into a shape corresponding to the desired
fitting” (col. 4, ll. 9-13). An artisan would regard this disclosure as teaching
or at least as suggesting preformed insulation comprising a single,
continuous piece of insulating material as required by the independent
claims on appeal.
Conclusions of Law

Appellants have not shown error in the Examiner’s
determination that Farr is analogous prior art which would have suggested
replacing the end cone insulation forming (e.g., by wrapping) step in the
admitted prior art with the step of forming a flexible and self-supporting
insulating end cone comprising a single, continuous piece of material as
required by independent claims 47 and 62.
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Therefore, we sustain the Examiner’s § 103 rejection of all appealed
claims as being unpatentable over the admitted prior art in view of Farr and
Corn.
Order

The decision of the Examiner is affirmed.

AFFIRMED

kmm

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