Appeal No. 2004-2294
Application 10/002,343
this art would not have replaced the cordierite support of Miyoshi with the zirconium titanate
carrier of Mitsui.
Appellants further argue that “Nishino requires a combination of calcium aluminate and
titanium oxide, whereas in the present invention, calcium aluminate has been found to meet the
requirements of resistance to alkali metal migration in a NOx trap below 1000°C,” and thus in
teaching “a catalyst using calcium aluminate as a base material deteriorates and does not provide
long life teaches away from the present claimed invention” (id., page 7).
Thus, appellants submit that Miyoshi and either Mitsui or Nishino recognize that
cordierite NOx trap supports react with alkali metal during use, and it is only appellants who
have recognized the properties of alkali metal migration resistance and coefficient of thermal
expansion specified in appealed claims 1 and 3. Accordingly, appellants contend that the
examiner has used hindsight in combining the references to arrive at the claimed catalyst
encompassed by appealed claims 1 and 3 (id., pages 5-6 and 8).
Appellants further submit that neither Mitsui nor Nishino discloses the problem of alkali
migration below 1000°C with a cordierite NOx adsorber support, and thus there is no certainty in
the examiner’s finding that this property is inherent in the ceramic carriers of these references.
Appellants further argue that inherency is not permissible in an obviousness rejection, citing
Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 230 USPQ 81 (Fed. Cir. 1986) (id.,
pages 8-9).
The examiner points to the disclosure of the disadvantages of cordierite carriers in both
Mitsui and Nishino and submits that the advantages taught by each of these references for the
respective ceramic carriers taught therein “provide the motivation to modify the Miyoshi
structure to include” the respective ceramic carriers (answer, pages 10-11 and 13-14). The
examiner further argues that while none of the references disclose the two properties of the
ceramic carrier specified in appealed claim 1, the recognition of a new property does not
distinguish the references (id., pages 11-12 and 14-15). The examiner further points out that the
teachings of the references are relied on to combine the references and not appellants’ claimed
invention (id., pages 11-12 and 14-15).
With respect to the specified properties of the ceramic carrier in appealed claims 1 and 3,
the examiner argues that the claimed and prior art compositions appear to be the same and the
- 4 -
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007