Ex Parte Diez

Patent Trial and Appeal Board

Sep 20, 2012

10955465 (P.T.A.B. Sep. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RAINER DIEZ
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Appeal 2010-000791
Application 10/955,465
Technology Center 3700
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Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
WILLIAM A. CAPP, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/955,465

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STATEMENT OF THE CASE
Rainer Diez (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s final rejection of claims 1-6 and 10 under 35 U.S.C. § 103(a)
as unpatentable over Hayashi (US 5,916,137, issued Jun. 29, 1999) and
Bonny (DE 196 28 797 C1, published Jan. 22, 1998). Appellant cancelled
claims 7 and 8. The Examiner withdrew claims 11-15 from consideration
and indicated allowability with respect to claim 9. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

The Claimed Subject Matter
The claimed subject matter “relates to an air gap manifold for the
connection of exhaust gas outlet openings of an internal combustion engine,
in particular of a motor vehicle engine, to an exhaust gas intake opening of
an exhaust gas system.” Spec. 1, para. [0001].1 Claim 1 (the sole
independent claim on appeal), reproduced below, is representative of the
subject matter on appeal.
1. An air-gap manifold for the
connection of exhaust gas outlet openings of an
internal combustion engine of a motor vehicle to
an exhaust gas intake opening of an exhaust gas
system, having an interior part with a plurality of
exhaust gas guides, an exterior part surrounding
the inner part2 and made gas-tight and an air-gap

1 All citations to the Specification are to the Substitute Specification filed
February 1, 2007.
2 We understand the recitation of “the inner part” at the seventh line of claim
1 to refer back to “an interior part” introduced on the fifth line of claim 1 as
set forth supra.
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present between the interior part and the exterior
part,
wherein the exhaust gas guides of the
interior part are each formed by half-shells and
plugged into one another with a sliding fit, the
half-shells being connected to one another by
common reshaping at the rim, the exterior part
likewise consisting of half-shells, and the shells of
the exterior part being welded to one another.

OPINION
Appellant argues claims 1-6 and 10 as a group and we select
independent claim 1 as the representative claim. See App. Br. 4-12; see also
37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 2-6 and 10 stand or fall with
claim 1.
The Examiner finds that Hayashi substantially discloses the subject
matter of independent claim 1, except that Hayashi “fails to disclose that the
insulating material is air; [and] that the interior part is formed with a
plurality of exhaust gas guides plugged into one another with a sliding fit.”
Ans. 3. To cure the deficiencies of Hayashi, the Examiner turns to Bonny to
teach “[a] space . . . formed between the inner pipe and the outer shell (3) for
air gap insulation” (Ans. 4 and 6 (quoting Bonny, English Abstract))
(emphasis omitted), and an interior part formed with “a plurality of exhaust
gas guides (30, 31, 32) plugged into one another with a sliding fit” (Ans. 4
(citing to Bonny, Fig. 2)). The Examiner concludes that it would have been
obvious to one of ordinary skill in the art “to have utilized the air gap and
the exhaust gas guides taught by Bonny . . . to insulate the exterior part and
to make the interior part in Hayashi, respectively, since the use thereof
would have been routinely practiced by those of ordinary skill in the art to
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produce an exhaust manifold safe to touch and with simple, quick, and
precise assembly of all the pieces.” Ans. 4.
Appellant’s first main argument is that “[t]he prior art does not teach
‘gas guides of the interior part are each formed by half-shells and plugged
into one another with a sliding fit,’ as required by claim 1.” Ans. 9.
Emphasis omitted. More particularly, in the first and second paragraphs
under the above-quoted heading on page 9 of the Appeal Brief, Appellant
attacks the Hayashi and Bonny references individually by arguing that
“[t]here is no need or possibility for the two halves of Hayashi’s interior
part, each being made of a single sheet of metal, to have a sliding fit” and
“Bonny does not disclose or suggest half-shells, i.e.[,] semi-circular
segments, for forming the exhaust gas guides of the interior part.” However,
one cannot show nonobviousness by attacking references individually where
the rejections are based on a combination of references. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426
(CCPA 1981). In the present case, the Examiner finds that Hayashi teaches
the interior part formed by half-shells and Bonny teaches exhaust gas guides
of the interior part that are plugged into one another with a sliding fit. Ans.
3, 4. We are not persuaded by Appellant’s arguments because they fail to
address the Examiner’s combination of Hayashi and Bonny.
Appellant also argues that “[a] person of ordinary sill in the art would
have no reason to combine circular pipe segments of Bonny’s inner duct
with Hayashi’s half shells that extend substantially along the entire length of
the inner shell, because such a hypothetical combination is not possible.”
App. Br. 9. The Examiner responds to Appellant’s argument by asserting
that “[t]he combination of Hayashi and Bonny . . . teaches or suggests the
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claimed limitation in dispute.” Ans. 6. In particular, the Examiner asserts
that “Hayashi discloses an exhaust manifold (A) comprising an interior part
(IS) formed with half-shells (1A, 1B),” but “fails to disclose that the interior
part is formed with a plurality of exhaust gas guides plugged into one
another with a sliding fit.” Ans. 5-6. The Examiner also asserts that “in the
art, it is well known that internal combustion engines for vehicles are of
different sizes due to different displacement volume, in number of cylinders,
etc[.]; and hence, an exhaust manifold for one engine is not expected to fit
well with another engine.” Ans. 6. The Examiner concludes that “if an
exhaust manifold is assembled from a plurality of exhaust gas guides
plugged into one another with a sliding fit as taught by Bonny . . . , the
exhaust manifold can be structured more precisely to fit any particular
engine.” Id.
The Examiner’s rejection provides a reasoned analysis having a
rational underpinning as to why it would have been obvious to one of
ordinary skill in the art to combine Hayashi and Bonny. See KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (holding that “rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”). As such,
Appellant has failed to explain to persuasively rebut the Examiner’s prima
facie case.
Appellant also argues that if a person of ordinary skill in the art were
to combine Hayashi and Bonny, the person of ordinary skill in the art would
proceed along one of two scenarios. App. Br. 9-10. However, each of the
two scenarios amount to a bodily incorporation of one structure into the
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other structure. “The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference . . . . Rather, the test is what the combined teachings of
those references would have suggested to those of ordinary skill in the art.”
In re Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Sneed, 710
F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of
the references be physically combinable to render obvious the invention
under review.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)
(“Combining the teachings of references does not involve an ability to
combine their specific structures.”) Rather, “if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” KSR at 417.
Here, a person of ordinary skill in the art would recognize how to use the
teaching of Bonny to improve the device of Hayashi in a similar way and the
actual application would not be beyond his or her skill.
Finally, Appellant also argues that the Examiner’s rejection based on
the combination of Hayashi and Bonny is an impermissible hindsight
reconstruction. Br. 10. We cannot agree that the Examiner’s rejection is an
improper hindsight reconstruction as it does not include knowledge gleaned
only from the Appellant’s disclosure, but rather takes into account the
teachings of Hayashi and Bonny, i.e., knowledge which was within the level
of ordinary skill at the time the claimed invention was made. See In re
McLaughlin, 443 F.2d 1392 (CCPA 1971). As such, we are not persuaded
by Appellant’s first argument that the combination of Hayashi and Bonny
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fails to “teach ‘gas guides of the interior part are each formed by half-shells
and plugged into one another with a sliding fit,’ as required by claim 1.”
Appellant’s second main argument is that “[t]he prior art does not
teach ‘an air-gap present between the interior part and the exterior part,’ as
required by claim 1.” App. Br. 11. Emphasis omitted. Under the above-
quoted heading, Appellant quotes an English translation of a “paragraph
bridging pages 2-3” of Bonny and argues that “Bonny requires solid material
between the inner shell and the outer shell, and not an air gap, as required by
claim 1” and “Bonny’s ring segments are essential for the precision of the
alignment between the inner shell and the outer shell” so that “a person
[skilled in the art] would not attempt to remove Bonny’s ring segments in
order to arrive at the air-gap of claim 1.” App. Br. 11-12.
The Examiner responds to Appellant’s second argument by asserting
that Bonny discloses “[a] space (4) is formed between the inner pipe (2) and
the outer shell (3) for air gap insulation.” Ans. 6 (quoting from Bonny,
English Abstract). Emphasis omitted.
With respect to Appellant’s quotation of an English translation of a
“paragraph bridging pages 2-3” of Bonny (a foreign language reference), we
note that Bonny does not have page numbers and we are assuming Appellant
meant to reference Bonny’s paragraph spanning columns 2 to 3. Regardless,
as there is no English translation of Bonny of record in the application file,
except for the English Abstract provided by the Examiner, we cannot
consider the English translation of Bonny’s paragraph spanning columns 2
to 3 as it constitutes new evidence since the Examiner has not had a chance
to review it and make comments.
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Moreover, as pointed out by the Examiner, the English language
Abstract of Bonny teaches a space 4 between the inner pipe and outer shell 3
for air-gap insulation. Bonny’s English Abstract also teaches distance rings
or ring segments 11, 13, 15, and 17 “provided for support of the inner pipe
on the outer shell.” Since Bonny teaches both a space 4 for air gap
insulation together with the ring segments 11, a person of ordinary skill in
the art would not be required to remove the ring segments in order to arrive
at an air gap. Thus, we are not persuaded by Appellant’s second argument
that the combination of Hayashi and Bonny “does not teach ‘an air-gap
present between the interior part and the exterior part,’ as required by claim
1.”
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, and claims 2-5 and 10 dependent thereon, under 35 U.S.C. § 103(a)
as unpatentable over Hayashi and Bonny.

DECISION
We affirm the Examiner’s decision to reject claims 1-6 and 10.
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).

AFFIRMED

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