Lacasse, Maurice

Patent Trials and Appeals Board

Aug 25, 2020

14261048 - (D) (P.T.A.B. Aug. 25, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/261,048 04/24/2014 Maurice Lacasse RID620-192/14217-MGK 2203
27885 7590 08/25/2020
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
ZHAO, XIAO SI
ART UNIT PAPER NUMBER
1744
NOTIFICATION DATE DELIVERY MODE
08/25/2020 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):
uspto@faysharpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAURICE LACASSE
Appeal 2019-001270
Application 14/261,048
Technology Center 1700

Before MICHAEL P. COLAIANNI, JAMES C. HOUSEL, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8 and 10–21. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as PYROTEK, Inc.
Appeal Brief (“Appeal Br.”) filed July 5, 2018, at 1.
2 This Decision also cites to the Specification (“Spec.”) filed April 24, 2014,
the Final Office Action (“Final Act.”) dated January 4, 2018, the Examiner’s
Answer (“Ans.”) dated September 28, 2018, and the Reply Brief (“Reply
Br.”) filed November 28, 2018.
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CLAIMED SUBJECT MATTER
The invention relates to a method for insulating a honeycomb catalyst.
Spec. 1, Title. Appellant discloses that it was known to divide a honeycomb
catalyst through the use of a wall or walls of insulation. Id. at 2:4–5. To
produce such an insulated honeycomb catalyst, Appellant describes a
method comprising filling a selected plurality of channels in a catalyst
substrate with a granular material and consolidating the granular material
through heat, such that a wall separates the substrate into first and second
portions of plural parallel channels. Id. at 3:1–7. Appellant further teaches
that the consolidation step can be a sintering step. Id. at 3:8–9.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter (some formatting added to
facilitate review). The italicized limitation is at issue.
1. A method for forming a honeycomb catalyst, said method
comprising providing a substrate suitable for catalytic activity,
said substrate having a plurality of parallel channels extending
therethrough, the method further comprising the steps of:
filling a selected plurality of the channels with a granular
material by pouring;
and consolidating the granular material through
sintering, the selected plurality being selected to produce a wall
that separates the substrate into:
a first portion having a first plurality of the parallel
channels extending therethrough;
and a second portion having a second plurality of the
parallel channels extending therethrough.
Independent claim 20 recites a method for manufacture of a
catalytic device similar to claim 10, wherein at least a portion of the
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channels are filled with a water free granular material comprising
fly-ash and a heat sensitive non-organic binder, followed by
consolidating through sintering.
REFERENCES
The Examiner and Appellant rely on the following references:
Name Reference Date
Tremblay US 2005/0116398 A1 June 02, 2005
Crawford et al.
(“Crawford”)
US 2014/0056779 A1 Feb. 27, 2014
Process
Engineering
“Sintering Behaviour of Clays for the
Production of Ceramics”
Unknown
Wikipedia https://en.wikipedia.org/wiki/Sintering June 30, 2017

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections:
A. Claims 1, 10, 12, 13, and 15–19 under 35 U.S.C. § 102(a)(1)
as anticipated by Crawford;
B. Claims 2, 8, and 14 under 35 U.S.C. § 103 as unpatentable
over Crawford; and
C. Claims 3–7, 11, 20, and 21 under 35 U.S.C. § 103 as
unpatentable over Crawford in view of Tremblay.
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
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the alleged error in the examiner’s rejections.”). After considering the
argued claims and each of Appellant’s arguments, we are not persuaded of
reversible error in the pending rejections. We offer the following for
emphasis only.
Rejection A: Anticipation by Crawford
The Examiner rejects claims 1, 10, 12, 13, and 15–19 under 35 U.S.C.
§ 102(a)(1) as anticipated by Crawford. Final Act. 3–5. The Examiner finds
that Crawford teaches a method of forming an insulated honeycomb catalyst
comprising the same steps as recited in claim 1. Final Act. 3–4. Specifically,
the Examiner finds that Crawford teaches consolidating a granular material
within a selected plurality of catalyst channels by curing via microwave or
convection oven heating to lock the material to itself and to the channel
walls. Id. at 3. The Examiner finds that this heat curing meets the sintering
limitation of claim 1 because Crawford teaches that the curing may be
performed at a temperature of 650°C and “because sintering is
art-recognized to be heat treatment applied to a powder in order to make the
powder coalesce into a solid mass.” Id. at 4.
Appellant does not argue the claims separately, but instead focuses on
the limitations of claim 1 only. Appeal Br. 4–5; Reply Br. 3–5. Therefore,
we address Appellant’s arguments against this rejection on the basis of claim
1, which we designate as representative pursuant to 37 C.F.R.
§ 41.37(c)(1)(iv). Claims 10, 12, 13, and 15–19 stand or fall with claim 1.
Appellant argues that Crawford fails to teach that a granular material is
consolidated through sintering as required by claim 1. Appeal Br. 4.
Appellant urges that sintering, as explained in Wikipedia, “requires atoms in
the material to diffuse across the boundaries of the particles, fusing the
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particles together and creating one solid piece.” Id. Appellant contends that
Crawford teaches activation of a polymer binder and relies on
polymerization of the binder to form a solid body, rather than diffusion of
clay atoms across boundaries. Id. With regard to the Examiner’s finding that
Crawford teaches heat curing at a temperature of 650°C, Appellant asserts
that this teaching does not demonstrate sintering because clay sinters at
about 1100°C. Id. at 4–5, citing Process Engineering. Appellant also asserts
that “a typical sintering range for [an] aluminio-silicate ceramic is 900 to
1050°C,” and nothing in Crawford suggests heating to these temperatures.
Id. at 5.
Appellant’s arguments are not persuasive of reversible error in the
Examiner’s finding of anticipation of claim 1 by Crawford. The issue before
us is the proper construction of the term “sintering” as recited in claim 1 and
whether the Examiner’s finding that Crawford teaches sintering is
reasonable. It is well established that “the PTO must give claims their
broadest reasonable construction consistent with the specification . . .
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.” In re ICON Health
& Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may
amend claims to narrow their scope, a broad construction during prosecution
creates no unfairness to the applicant or patentee.” Id.
Appellant does not direct our attention to any definition of “sintering”
in the Specification, nor do we find any. The Specification teaches that the
consolidation step can be a sintering step. Spec. 3:8–9. The Specification
describes “a suitable sintering regime involves elevating the temperature of
the granular material to 800°C at a rate of 200°C/hour and then allowing the
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heated product to cool to ambient temperature at 200°C/hour.” Id. at 7:3–6.
However, the Specification further explains that “whereas a specific
sintering regime is described, sintering of granular material of the type
described in U.S. Patent No. 7,083,758 is a matter of routine to persons of
ordinary skill and variations are manifestly possible.” Id. at 7:22–8:1.
Further, the Examiner finds that “sintering” is a process transforming
a powder into a solid body by heating without melting, which is similar to
Appellant’s Wikipedia explanation of “sintering.” Ans. 4–5. We also note
that Appellant’s Wikipedia citation describes that “ceramic sintering”
includes heating a green body at low temperature to burn off the binder.
Wikipedia 3. Although Crawford activates or cures a polymeric binder in the
insulation composition, Crawford further teaches that this process may be
effected at low temperature of the order of 650°C. Crawford ¶ 56. Moreover,
Crawford teaches that the insulated catalyst operates at temperatures on the
order of 1000°C. Id. Although Appellant asserts that clay sinters at 1100°C,
citing the Process Engineering article, Appellant fails to direct our attention
to any particular teaching therein stating that clay or Crawford’s
alumino-silicate powders would not sinter below this temperature. Indeed,
Appellant’s discloses that sintering of a known material is a material within
the routine skill in the art, indicating that those skilled in the art would
recognize that sintering conditions may be varied. Given that Crawford’s
elevated temperatures are close to (or above) Appellant’s disclosed suitable
sintering regime (800°C), we agree with the Examiner that those skilled in
the art would reasonably expect that Crawford’s insulation is sintered.
Accordingly, we sustain the Examiner’s anticipation rejection of
claim 1, 10, 12, 13, and 15–19 by Crawford.
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Rejection B: Obviousness over Crawford
The Examiner rejects claims 2, 8, and 14 under 35 U.S.C. § 103 as
unpatentable over Crawford. Final Act. 9–10. The Examiner finds, among
other things, that although Crawford does not teach a sintering temperature
of 800°C, Crawford teaches sintering at 650°C and that, absent a showing of
criticality, the difference in temperature does not support patentability of
claim 2. Id.
Appellant does not separately argue this rejection, other than
contending that “even if the meaning of sintering requires debate [regarding
claim 1], the temperature required in claim 2 (800°C) does not.” Appeal Br.
5. We note that Appellant does not address the Examiner’s position with
regard to claim 2. Further, as set forth above, Crawford teaches an operating
temperature of 1000°C. Therefore, we agree with the Examiner that it would
have been obvious as a matter of routine skill in the art to optimize
Crawford’s sintering temperature to arrive at the temperature recited in
claim 2.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 2, 8, and 14 over Crawford.
Rejection C: Obviousness over Crawford and Tremblay
The Examiner rejects claims 3–7, 11, 20, and 21 under 35 U.S.C.
§ 103 as unpatentable over Crawford in view of Tremblay. Final Act. 6–9.
The Examiner acknowledges that Crawford fails to teach the granular
material of claims 3–7 that is free of water and organic binder (claims 20
and 21). Final Act. 6, 8. However, the Examiner finds that Tremblay
discloses a water free and organic binder free insulating material comprising
the same composition recited in claims 3–7. Id. at 6–9. The Examiner
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concludes that it would have been obvious to have substituted Tremblay’s
insulating composition for Crawford’s with a reasonable expectation of
success because Tremblay teaches a number of advantages of this insulating
composition, e.g., water free, free flowing, low density, low thermal
conductivity, organic binder free, and sets at a low temperature. Id.
Appellant argues that this rejection is erroneous because: 1) it relies
solely on hindsight (Appeal Br. 6–8); and 2) the references teach away from
the combination (id. at 8–10). In particular, Appellant contends that absent
Appellant’s identification of Tremblay in the Specification, the skilled
artisan would not have been motivated to use Tremblay’s material in
Crawford’s method. Id. at 6. Appellant also contends that a skilled artisan
would find no reason to use Tremblay’s refraction lining for an aluminum
conveying trough in Crawford’s catalytic converter. Id. at 7. Appellant urges
that the Examiner’s articulated motivation for combining Crawford and
Tremblay would support a contention that any insulating material would
have been an obvious substitution in Crawford which is not supported under
a Graham v. Deere3 analysis. Id. Further, Appellant asserts that merely
because Crawford and Tremblay both teach powder-based insulating
materials is an insufficient basis to support their combination. Id. As for the
advantages of Tremblay’s materials, Appellant contends that low thermal
conductivity is a fundamental characteristic of insulating materials as a class.
Id. at 8.
Appellant’s first argument is not persuasive of reversible error
because the Examiner’s articulated reason for combining Crawford and

3 Graham v. John Deere Co., 383 U.S. 1 (1966).
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Tremblay is found in the references. See, e.g., Sensonics, Inc. v. Aerosonic
Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (“The invention must be viewed
not after the blueprint has been drawn by the inventor, but as it would have
been perceived in the state of the art that existed at the time the invention
was made.” (citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132,
1138 (Fed. Cir. 1985))). While Crawford teaches an insulation composition
requiring water and a polymeric binder, Tremblay specifically teaches the
advantages of excluding water and organic binder in the fly ash and
non-organic binder insulation composition while still achieving a free
flowing material having low density and low thermal conductivity as
compared to existing materials. Tremblay ¶¶ 13–19. Thus, the Examiner’s
reasons for combining the teachings of Crawford and Tremblay are
supported by the prior art disclosures themselves.
Moreover, the possibility that a plurality of other insulation materials
would have been substitutable for Crawford’s does not render any one
combination any less obvious. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (“That the ʼ813 patent discloses a multitude of
effective combinations does not render any particular formulation less
obvious.”); see also In re Susi, 440 F.2d 442, 445 (CCPA 1971)
(obviousness rejection affirmed where the disclosure of the prior art was
“huge, but it undeniably include[d] at least some of the compounds recited in
appellant’s generic claims and [was] of a class of chemicals to be used for
the same purpose as appellant’s additives”); In re Kubin, 561 F.3d 1351,
1359 (Fed. Cir. 2009) (“[W]here a skilled artisan merely pursues ‘known
options’ from a ‘finite number of identified, predictable solutions,’
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obviousness under § 103 arises.” (quoting KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007)).
As to Appellant’s second argument, Appellant contends that while
Crawford teaches use of water and a polymeric binder in the insulating
composition, Tremblay specifically excludes these two ingredients. Appeal
Br. 8. Appellant asserts that Crawford prefers microwave curing which
requires water and binder for heating to 100°C. Id. at 8–10. Further,
Appellant urges that the Examiner ignores Crawford’s stated requirement to
form pores via evaporating water to create insulation properties. Id. at 10. As
such, Appellant argues that the references teach away from their
combination. Id. at 8.
Appellant’s second argument is not persuasive of reversible error
because Tremblay specifically teaches the advantages of using a water-free
and organic binder-free insulation composition. Our reviewing court has
recognized that a given course of action often has simultaneous advantages
and disadvantages, and this does not necessarily obviate any or all reasons to
combine teachings, much less constitute teaching away from the
combination. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349
n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the
expense of another benefit, however, should not nullify its use as a basis to
modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.”). Given Tremblay’s specific teaching of advantages of excluding
water and organic binder, one skilled in the art would reasonably have
concluded that Tremblay’s insulation material would offer advantages over
Crawford’s material. In addition, although Crawford expresses a preference
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for microwave curing, Crawford teaches oven curing may alternatively be
used, that the curing may be effected at a temperature of 650°C, and that a
powder-based material having lower moisture levels may be used. Each of
these teachings support the Examiner’s position that it would have been
obvious to combine the teachings of Crawford and Tremblay. See Merck &
Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[A]ll
disclosures of the prior art, including unpreferred embodiments, must be
considered.” (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In
re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (explaining that a prior
art reference’s disclosure is not limited to its examples).
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 3–7, 11, 20, 21 over Crawford in view of Tremblay.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Final Office Action and the Answer, the Examiner’s decision to
reject claims 1–8 and 10–21 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 10, 12,
13, 15–19
102(a)(1) Crawford 1, 10, 12,
13, 15–19

2, 8, 14 103 Crawford 2, 8, 14
3–7, 11,
20, 21
103 Crawford,
Tremblay
3–7, 11, 20,
21

Overall
Outcome
1–8, 10–21
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TIME PERIOD FOR RESPONSE
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)(1)(iv) (2017).
AFFIRMED