Appeal No. 1998-1004
Application 08/401,984
obviousness is not whether the features of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any
one or all of the references. Rather, the test is what the combined teachings of the references would
have suggested to those of ordinary skill in the art.”).
Appellants point to the “critical nature of the plate covered heater according to the claimed
invention,” and to the support in the testimony of appellant Ichikawa in the Rule 132 Declaration with
respect thereto (brief, pages 4, 9-10; reply brief, pages 5-6; supplemental reply brief, pages 2-3).
According to appellants, they have
discovered that if such [fine particulate] carbon compounds are fired directly on a surface of
the heater, the heater tends to overheat and, moreover corrode (oxidize). Such overheating
and corrosion lead to fracture of the heater. Furthermore, the hydrocarbons present in the
particles accelerate corrosion of the heater, thereby worsening the effects of the firing of the
fine particles on the heater. The claimed invention utilizes a plate as a shield to prevent direct
contact of the particles with the heater, thereby preventing subsequent fracture of the heater.
. . . . [Brief, page 4.]
Appellants further state that
the claimed invention prevents carbon particulates, non-combusted hydrocarbons, and
additionally, metal oxides such as Na and Fe and corrosive components such as sulfides,
from being directly burned on the electric heater. Appellants have discovered that it is
important not only to prevent direct burning of such components on the heater, as well as
deposition of ash components left-over from combustion on the heater, [sic] to prevent
corrosive damage thereof. . . . . [Reply brief, page 5.]
Appellants still further state that the claimed “structure provides protection against heater oxidation due
to overheating caused by the burning of carbon and hydrogen-containing material, e.g., soot that has
been backflowed into the . . . [electric heater] portion of the claimed invention” (supplemental reply
brief, page 3).
Appellants submit that these advantages “inherently flow from use of” the claimed apparatus as
shown in the declaration (brief, page 10).4 In his declaration, appellant Ichikawa states in ¶ 3 that
4 The examiner expressed several criticisms of the declaration which we have considered (answer, page
8). However, we note that while the examiner submits that one reason the declaration is not persuasive
is that “the declaration was not filed in a timely manner” (id.) the examiner did not refuse to enter the
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