Appeal No. 2002-1974
Application No. 09/023,953
According to the Examiner, Hitachi describes a catalytic converter that differs
from the claimed invention in that (1) the channel density is not provided and (2) the
central portion of the converter is bounded by a flat surface of sheet metal. The Examiner
asserts that if the corrugation of Hitachi were limited to one layer then the channel density
would be about 40 channels. To remedy the other deficiency, the Examiner relies on the
Cyron reference. (Answer, pp. 4-6).
To hold an invention obvious in view of a combination of references, there must
be some suggestion, motivation, or teaching in the prior art that would have led a person
of ordinary skill in the art to select the references and combine them in the way that
would produce the claimed invention. See, e.g., Heidelberger Druckmaschinen AG v.
Hantscho Commercial Prods., Inc., 21 F.3d 1068, 1072, 30 USPQ2d 1377, 1379 (Fed.
Cir. 1994) (When the patent invention is made by combining known components to
achieve a new system, the prior art must provide a suggestion, or motivation to make such
a combination.); Northern Telecom v. Datapoint Corp., 908 F.2d 931, 934, 15 USPQ2d
1321, 1323 (Fed. Cir. 1990) (It is insufficient that the prior art disclosed the components
of the patented device, either separately or used in other combinations; there must be
some teaching, suggestion, or incentive to make the combination made by the inventor.);
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1044, 1051, 5 USPQ 1434, 1438
(Fed. Cir. 1988). In addition to the differences cited by the Examiner above, Hitachi
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