Ex Parte Olivier et al

Patent Trial and Appeal Board

Mar 30, 2015

12383152 (P.T.A.B. Mar. 30, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KEITH OLIVIER,
1

Ruth Latham, Benedikt Mercker, and Steven Freis
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Appeal 2013-004340
Application 12/383,152
Technology Center 1700
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Before MARK NAGUMO, N. WHITNEY WILSON, and
WESLEY B. DERRICK, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Keith Olivier, Ruth Latham, Benedikt Mercker, and Steven Freis
(“Olivier”) timely appeal under 35 U.S.C. § 134(a) from the final rejection
2

of claims 2–10 and 12–25, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6. We affirm.

1
The real party in interest is listed as Tenneco Automotive Operating
Company Inc. (Appeal Brief, filed 14 September 2012 (“Br.”), 1.)
2
Office action mailed 7 March 2012 (“Final Rejection”; cited as “FR”).
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Application 12/383,152

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OPINION
A. Introduction
3

The subject matter on appeal relates to exhaust gas treatment devices,
such as catalytic converters. (Spec. 1 [0004].)
Claim 12 is representative of the dispositive issues and reads:
An exhaust gas treatment system for a combustion process,
the system comprising a monolithic exhaust treatment unit for
treating the exhaust gas, the monolithic exhaust treatment unit
comprising:
a monolithic structure having an outer surface extending
parallel to a longitudinal axis;
at least two layers of support mat wrapped around the outer
surface; and
at least one layer of metallic foil wrapped between the at
least two layers of support mat, wherein
the monolithic exhaust treatment unit further comprises an
outermost layer of metallic foil wrapped around an
outermost layer of support mat.
(Claims App., Br. 12–13; some indentation and emphasis added.)
Independent claim 8 is similar, but the outermost layer of metallic foil
layer is not required, and “at least a portion of the metallic foil is
perforated.” (Id. at 12.)
According to the ʼ152 Specification, the metallic foil is provided to
reduce the effective thermal conductivity between the support map layers, as
well to reduce radiant heat transfer from the monolithic structure and the

3
Application 12/383,152, Monolithic exhaust treatment unit for treating an
exhaust gas, filed 20 March 2009. We refer to the “ʼ152 Specification,”
which we cite as “Spec.”
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exhaust gas. (Spec. 6 [0025]) The support mats may be glass fiber mats.
(Id. at 7 [0028].) The perforations in the metal foil are provided to increase
the friction between the metallic foil and any adjacent layer.
(Id. at 9 [0031].)
The Examiner maintains the following ground of rejection:
4

Claims 2–10 and 12–25 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Maus
5
and Wirth.
6

B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Briefly, the Examiner finds that Maus describes a monolithic exhaust
treatment system, illustrated in Figure 1, reproduced below, right, with a
monolithic structure 3 extending parallel to a
longitudinal axis, support mat layers 8
and 10, with intermediate metal
foil 9. (FR 2.) The Examiner finds
further that Maus discloses that a
plurality of metal sheets and a
plurality of layer portions of
ceramic material may be provided to {Fig. 1 shows a catalytic converter}

4
Examiner’s Answer mailed 26 November 2012 (“Ans.”).
5
Wolfgang Maus, Honeycomb body configuration . . . , U.S. Patent
No. 6,670,020 B1 (2003).
6
Georg Wirth et al., Exhaust gas treatment device . . . , U.S. Patent
Application Publication 2007/0009402 A1 (2007).
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improve the insulation in relation to heat radiation. (Id. at 3, ll. 5–10, citing
Maus, col. 4, ll. 53–57.)
Based on these findings, the Examiner holds that it would have been
obvious to provide multiple layers of support mat and metal foil, as required
by claim 12, to provide improved insulation. (FR at ll. 10–11.)
Regarding the perforated metal foil required by claim 8, the Examiner
finds that Wirth describes metal frictional insert 7
7
that may be slit and
expanded to provide a perforated metal sheet, as illustrated in Wirth, Fig. 10,
shown right, in order to increase the
“adhesive friction or adhesion between the
bearing material (4) and the housing (2),
which minimizes the movement of the
bearing material.” (FR 3, ll. 14–21.)
{Wirth Fig. 10 shows a metal friction insert 7 with perforations 15}
The Examiner holds that it would have been obvious to perforate the metal
foil layers in the devices taught by Maus in order to increase the friction
between the metal foil and the adjacent layers to minimize movement of the
bearing mats. (Id. at 4, ll. 1–5.)
Initially, we find that Olivier bases its arguments for patentability on
the emphasized portions of the claims, and argues independent claims 2
and 12 as one group, and claims 8 and 15 as a second group. All dependent
claims therefore stand or fall with the corresponding independent claims.

7
Throughout this Opinion, for clarity, labels to elements in figures are
presented in bold font, regardless of their presentation in the original
document.
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Application 12/383,152

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Olivier argues that Maus does not disclose any metal sheets 9
wrapped around the structure as an outermost layer. (Br. 7.) We do not find
this argument persuasive in light of the passage at column 4, cited by the
Examiner, in which Maus suggests using plural layers of metal sheets and
plural layers of ceramic material to improve the thermal insulation. Olivier
has not directed our attention to any credible evidence of record that the
level of ordinary skill and ingenuity is so low that that suggestion would
have blinded the routineer from providing multiple layers of support mat and
metal foil, wherein the outermost layer is a metal foil. Moreover, Olivier
has not directed our attention to any teachings in Maus indicating that the
outermost layer must be a ceramic layer. Indeed, Maus includes the
statement that the invention “is not intended to be limited to the details
shown, since various modifications and structural changes may be made
therein without departing from the spirit of the invention and within the
scope and range of equivalents of the claim.” (Maus, col. 3, ll. 42–46.)
Moreover, the term “outermost layer” in claim 12 occurs in the phrase
“outermost layer of metallic foil wrapped around an outermost layer of
support mat” (emphasis added). Because there can be only one ultimate
outermost layer, both the metallic foil and the support mat cannot be the
ultimate outermost layer. Rather, the term “outermost” here must be read as
relative, i.e., the “outermost layer of metallic foil” distinguishes that foil
layer from other foil layers, and similarly for the support mat.
We are not persuaded of harmful error in the rejection of claim 12.
With regard to the rejection of claim 8, Olivier urges that the required
structures would not have been obvious because Maus discloses only metal
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sheets that are not perforated, and further, that the ceramic mat should
always be the outermost layer. (Br. 9.) The Examiner’s further reliance on
Wirth is, in Olivier’s view, improper cherry-picking motivated by hindsight.
(Id.) More particularly, Olivier urges that “there is nothing in the
disclosures of Wirth of Maus to suggest that the discrete, f[r]ictional
inserts 7, 16 would serve as suitable substitutes for the metal sheets 9 of
Maus for the purpose of insulating.” (Id. at 6, ll. 11–13.)
We do not find these arguments persuasive of harmful error because
both Maus and Wirth are directed towards exhaust gas treatment systems,
such as catalytic converters, and therefore the structures corresponding to
metal foils and support mats in both references are subject to the same
environments. Olivier has not directed our attention to a direct, explicit
prohibition by Maus of perforations in the metal foils. The weight of the
evidence is that the similar materials would have been recognized as serving
similar functions, and that the routineer would have had a reasonable
expectation of successfully obtaining the benefits of the perforations taught
by Wirth (improved friction and thus less movement of the insulating mat
material) in the catalytic converters taught by Maus. As for the
absence of disclosures in Maus or Wirth that suggest the
substitution, although we do not find it
necessary to establish the Examiner’s prima
facie case of obviousness, the longitudinal
cross-section shown in Wirth’s Figure 1,
reproduced to the right, is symmetric about
{Wirth Fig. 1 shows a catalytic converter with frictional structure 5}
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the longitudinal center line, and would have suggested that frictional layer 5
is—or could be—implemented as a cylindrical feature wrapped around
bearing material 4. This impression is confirmed by Wirth’s description of
Figure 1, the last sentence of which reads, “[i]n particular, a single frictional
structure 5 may be provided, extending cylindrically over an axial section of
the inside 6, preferably over the entire axial length of the bearing mat 4, as
in the present case.” (Wirth 2 [0029]; emphasis added.) The weight of the
evidence favors the rejection.
We are not persuaded of harmful error in the rejection of claim 8.
C. Order
We affirm the rejection of claims 2–10 and 12–25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED