Ex Parte Kumar

Patent Trial and Appeal Board

Aug 23, 2017

13294256 (P.T.A.B. Aug. 23, 2017)

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.
13/294,256 11/11/2011 Amit Kumar UNF.P9577 7018
23575 7590 08/23/2017
CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145
EXAMINER
WARDEN, JILL ALICE
ART UNIT PAPER NUMBER
1798
MAIL DATE DELIVERY MODE
08/23/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte AMIT KUMAR
____________________

Appeal 2017-001689
Application 13/294,2561
Technology Center 1700
____________________

Before GEORGE C. BEST, N. WHITNEY WILSON, and
DEBRA L. DENNETT, Administrative Patent Judges.

DENNETT, Administrative Patent Judge.

DECISION ON APPEAL2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejections of
claims 7–10 and 13. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 Appellant identifies Unifrax I LLC as the real party in interest. App. Br. 3.
2 In this Opinion, we refer to the Specification filed November 11, 2011
(“Spec.”); the Non-Final Action mailed July 7, 2015 (“Non-Final Act.”); the
Appeal Brief filed May 10, 2016 (“App. Br.”); the Examiner’s Answer
mailed September 9, 2016 (“Ans.”); and the Reply Brief filed November 9,
2016 (“Reply Br.”).
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Application 13/294,256

2
The claims are directed to an exhaust gas treatment device and
method. Independent claims 8 and 9, reproduced below with disputed terms
emphasized, are illustrative of the claimed subject matter:
8. An exhaust gas treatment device comprising:
a housing;
a fragile structure resiliently mounted within the housing;
and
a mounting mat disposed between said housing and said
fragile structure comprising at least two layers comprising
inorganic fibers and a heater comprising an electrical resistive
heater wire disposed between said at least two layers.
9. A method of maintaining and/or increasing the
temperature of a substrate of an exhaust gas treatment device
comprising:
providing a mounting mat comprising (i) at least two
layers comprising inorganic fibers and a heater comprising an
electrical resistive heater wire disposed between said at least
two layers; and
transferring heat from the heater to the mounting mat in
order to maintain and/or increase the temperature of the
substrate and/or the exhaust gas treatment device.
App. Br. 11 (Claims App’x).
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REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Sterwald US 4,855,576 Aug. 8, 1989
Dattge et al.
(“Dattge”)
US 5,413,766 May 9, 1995
Merry US 2006/0154040 A1 July 13, 2006

REJECTIONS
The Examiner maintains and Appellant seeks review of the following
rejections under 35 U.S.C. § 103(a): (1) claims 7–9 as unpatentable over
Dattge in view of Merry; and (2) claims 10 and 13 as unpatentable over
Dattge in view of Merry and Sterwald. Ans. 2–4; see also App. Br. 6–10.
The Examiner’s objections to claims 6 and 12 for double patenting are
moot, as these claims, along with claims 5 and 11, were cancelled by
Appellant in an Amendment After Appeal filed May 10, 2016. Accordingly,
the Examiner’s rejections to the following claims are moot: (1) claims 5 and
11 under 35 U.S.C. § 112, fourth paragraph; and (2) claims 5, 6, 11, and 12
under 35 U.S.C. § 103(a) as unpatentable over Dattge in view of Merry,
either with or without Sterwald.
OPINION
Appellant argues, with respect to independent claims 8, 9, and 10, that
the Examiner’s proposed modification of the mounting mat of Dattge with
the inorganic fiber layers of Merry would render Dattge’s mounting mat
unsatisfactory for its intended purpose. App. Br. 6–9. Appellant does not
make separate patentability arguments for the dependent claims, which will
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stand or fall with the independent claim from which they depend. 37 C.F.R.
§ 41.37(c)(1)(iv).
With respect to claims 8 and 9, the Examiner finds that Dattge teaches
an exhaust gas treatment device and method for maintaining and/or
increasing the temperature of a substrate of such device. Ans. 2. The
Examiner further finds that Dattge teaches an electric resistance heating
element surrounding an intumescent or supporting mat. Id. According to
the Examiner, Dattge does not explicitly teach: (1) that the heat resistant
fibers that are included in the intumescent mat are comprised of inorganic
fibers; and (2) that the surrounding electric resistance heating element is
disposed between additional mat layers comprised of such inorganic fibers.
Id. at 2, 3.
With respect to Dattge’s missing element (1), the Examiner finds that
“Merry teaches the use of inorganic fibers to be typical in the art for forming
intumescent and non-intumescent mats used to support fragile
structures/substrates housed within exhaust gas treatment devices.” Id. at 2.
Regarding Dattge’s missing element (2), the Examiner finds Merry
further teaches that “sandwiching” an intumescent mat between non-
intumescent layers to be beneficial for thermally protecting and insulating
the intumescent layer. Id. at 3. The Examiner determines that it would have
been obvious for the ordinary skilled artisan at the time of the invention to
modify Dattge “by ‘sandwiching’ the intumescent mat between non-
intumescent mat layer[s]” to thereby provide “the electric resistance heating
element . . . between the intumescent mat and one of the non-intumescent
layers.” Id. According to the Examiner, the motivation for such a
modification would have been to “gain the benefits taught by Merry while
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retaining the heating function of the Dattge[] electric resistance heating
element surrounding the intumescent mat.” Id.
Appellant’s challenge focuses on whether the Examiner erred in
combining Dattge with Merry. App. Br. 8.
Appellant contends that the primary goal of Dattge is to transfer heat
efficiently from a catalyst substrate for ignition of an exothermic reaction
mixture, which thereby heats a supporting mat to a temperature sufficient for
expansion. See generally App. Br. 7, 8; see also Dattge claim 1, 1:36–57,
2:31–58.
Appellant further contends that the primary goal of Merry runs
counter to the intended purpose of Dattge. App. Br. 7–8. In particular,
Appellant argues that Merry teaches that the “sole purpose of the multiple
layer construction of Merry is to protect the middle intumescent mat layer
from excessive heat . . . and to insulate the intumescent layer . . . .” Id. at
8. Appellant argues that the modification of primary reference Dattge with
secondary reference Merry would render the invention of the primary
reference unsatisfactory for its intended purpose because the inclusion of the
inorganic fiber layers of Merry into Dattge’s intumescent mat “would further
separate and insulate the reaction mixture from the main heat source
(catalyst structure/substrate).” Id. Therefore, there would be no suggestion
or motivation to make the proposed modification. Reply Br. 5 (citing In re
Gordon, 733 F.2d 900 (Fed. Cir. 1984)).
The Examiner inaccurately responds that Appellant’s “argument is not
directed at the use of the alternative heating element in the form of the
electrical resistant heater . . . .” Ans. 5 (emphasis added). The Examiner’s
characterization of Dattge’s electrical resistance heater as a stand-alone
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heating means for “directly heating the Dattge[] intumescent layer to the
expansion temperature of at least 400°C” is incorrect. Id. at 6. Rather,
Dattge explicitly discloses that the electrical resistance heating element 10 is
merely “an additional heating means” in a paragraph mainly concerned with
providing examples of “desired exothermal reaction systems,” including
“exothermally decomposing substances” or “exothermal polymerization
reactions.” See Dattge 4:37–48. In other words, Dattge refers to the
electrical resistance heating element as a heating means supplementary to
the heat provided by the exothermic reaction. Therefore, the Examiner’s
response does not sufficiently address Appellant’s contention that the
insulating benefits provided by the layered mat construction of Merry
frustrates the purpose of the exothermic reaction mixture of Dattge.
We, therefore, do not sustain the Examiner’s rejection of claims 8 and
9. For the same reasons, we do not sustain the rejection of claim 7, which
depends from claim 8.
The Examiner reversibly errs in concluding that claims 7–9 are
obvious over the cited references.
Claim 10, however, is another matter. We do not agree with
Appellant’s contentions that the Examiner similarly erred in determining that
claim 10 is obvious over Dattge in view of Merry and Sterwald. See App.
Br. 9–10. Claim 10 is reproduced below with disputed terms emphasized:
10. An exhaust gas treatment device comprising:
a housing;
a fragile structure resiliently mounted within the housing;
and
a mounting mat disposed between said housing and said
fragile structure comprising a single layer comprising inorganic
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fibers and a heater comprising an electrical resistive heater
wire disposed within the mat.

App. Br. 12 (Claims App’x).
Unlike independent claims 8 and 9, claim 10 does not require that the
claimed electrical resistive heater wire is disposed between at least two
layers comprising inorganic fibers, thus Appellant’s frustration of purpose
argument on this issue is inapplicable to claim 10. Moreover, Appellant
does not challenge the Examiner’s reasoned determination that one of
ordinary skill in the art at the time of the invention would have implemented
the inorganic fibers of Merry for forming Dattge’s intumescent mat because
such fibers are a typical intumescent mat composition. See id. at 9–10;
Reply Br. 5–6; Ans. 4.
Appellant argues that one having ordinary skill in the art of flexible
mounting mats for automotive exhaust gas treatment devices would not look
to the teachings of Sterwald to solve the inefficiency problems of such an
exhaust gas treatment device. App. Br. 9. Although Appellant concedes
that Sterwald teaches that an electrical resistance element may be present
within a solid block, Appellant argues that neither Dattge nor Sterwald
provides any motivation or reasonable expectation of success that “the use of
an electrical resistance wire within a flexible fibrous mounting mat would be
feasible.” Id. at 9–10.
We agree with the Examiner that Appellant’s concern with the
inflexible nature of Stewards’ block is not relevant to the issue of whether
one skilled in the art would have found sufficient suggestion to dispose
Dattge’s electric resistance heater within the mat, rather than surrounding the
mat. Ans. 6. As the Examiner found, Dattge teaches that “heating means (in
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the form of the reaction material) may be disposed within the intumescent
mat itself . . . .” Id. at 4 (citing Dattge 4:35–36). Appellant’s argument fails
to identify reversible error in the Examiner’s reasoned determination that
Dattge would have reasonably suggested to one of ordinary skill in the art at
the time of the invention that an electrical resistive heating wire may be
disposed within the mat. See Ans. 4. We note that the Examiner relied on
Sterwald only for illustrating the suggested internal electric resistance
heating element arrangement. See id. We thus conclude that the applied
prior art, even without Sterwald, renders claim 10 obvious.
We, therefore, sustain the Examiner’s rejection of claim 10. For the
same reasons, we sustain the rejection of claim 13, which depends from
claim 10.
DECISION
For the above reasons, the Examiner’s rejection of claims 7–9 is
reversed, and rejection of claims 10 and 13 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)(1)(iv).
AFFIRMED-IN-PART