Ex Parte SHIRK et al - Page 6



          Appeal No. 2005-0067                                                        
          Application No. 08/853,842                                                  

                    It would have been obvious to one having ordinary                 
               skill in the art to provide slits as taught by JP 61-                  
               089916 in the sheet material of the end cones of DE                    
               references on the basis of its suitability for the                     
               intended use as a matter of obvious design choice to                   
               achieve the improved winding of the mat as taught by                   
               the JP reference...                                                    
               We cannot agree with this conclusion.  As pointed out by               
          the appellants (appeal brief filed Feb. 11, 2004, pages 20-21),             
          JP ’916 teaches the provision of seal mats with grooves to                  
          decrease excess compressive force on the honeycomb catalyst.                
          (Pages 2-3.)  Thus, if JP ’916 and either DE ’283 or DE ’070                
          were to be combined at all, one of ordinary skill in the art                
          would have been led to modify the expansion mat (4) of DE ’283              
          or spacer mat (16) of DE ’070, not the thermally insulating mat             
          (5) of DE ’283 or insulating mat (20) of DE ’070.  While the                
          examiner argues that the seal mats with grooves of JP ’916 have             
          “improved winding performance” (page 1) and thus one of ordinary            
          skill in the art would have been led to use such mats around end            
          cones “to improve the winding of the mat thereof” (answer at 7-             
          8), it is clear that the “improved winding performance” relates             
          to the ability of the mats to relieve excessive compressive                 
          force on the honeycomb during winding of the mat around the                 
          honeycomb (pages 2-3).                                                      


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