Bandl-Konrad et al.v.Gandhi et al.Download PDFPatent Trial and Appeal BoardJul 26, 201311690214 (P.T.A.B. Jul. 26, 2013) Copy Citation Mail Stop Interference Paper 125 P.O. Box 1450 Entered: July 26, 2013 Alexandria, VA 22313-1450 BoxInterferences@uspto.gov Tel: 571-272-4683 Fax: 571-273-0042 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD BRIGITTE BANDL-KONRAD, ANDREAS HERTZERG, BERND KRUTZSCH, ARNO NOLTE, MARKUS PAULE, STEFAN RENFFTLEN, NORBERT WALDBUESSER, MICHEL WEIBEL, GUENTER WENNINGER, and ROLF WUNSCH Junior Party (Patent No. 7,814,747) v. HAREN S. GANDHI, JOHN VITO CAVATAIO, ROBERT HENRY HAMMERLE, and YISUN CHENG Senior Party (Application 12/706,558) Patent Interference No. 105,839 (HHB) Technology Center 1700 Before RICHARD E. SCHAFER, RICHARD TORCZON, and HUNG H. BUI, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON MOTIONS – 37 CFR §41.125(a) 2 I. INTRODUCTION Pending before us are the following non-priority motions: (1) Bandl-Konrad Motion 1 (Paper 29) seeks to substitute new proposed Count A for the original Count 1. Gandhi Opposition 1 (Paper 38) Bandl-Konrad Reply 1 (Paper 46) 5 (2) Bandl-Konrad Motion 2 (Paper 30), which is contingent on Bandl- Konrad Motion 1, seeks to re-designate Claims 1-14 and 16-18 of Bandl-Konrad Patent No. 7,814,747 (Bandl-Konrad ‘747 patent) and Claims 9-13, 19, 20, 28, 30- 35, and 46-49 of Gandhi’s involved application Serial No. 12/706,558 (Gandhi’s 10 involved application) as corresponding to the substituted Count A. Gandhi Opposition 2 (Paper 39) Bandl-Konrad Reply 2 (Paper 47) (3) Bandl-Konrad Motion 3 (Paper 31) seeks entry of judgment against 15 Gandhi based on an alleged lack of a written description. Gandhi Opposition 3 (Paper 40) Bandl-Konrad Reply 3 (Paper 48) (4) Bandl-Konrad Motion 4 (Paper 32) seeks entry of judgment against 20 Gandhi based on an alleged lack of patentability under 35 U.S.C. §§ 102 and 103. Gandhi Opposition 4 (Paper 41) Bandl-Konrad Reply 4 (Paper 49) Gandhi Sur-Reply 4 (Paper 51) (5) Gandhi Substantive Motion 1 (Paper 26) seeks entry of judgment 25 against Bandl-Konrad based on an alleged lack of patentability under 35 U.S.C. §§ 102 and 103. Bandl-Konrad Opposition (Paper 37) Gandhi Reply (Paper 50) 30 3 In Bandl-Konrad Motion 3 (Paper 31), Bandl-Konrad argues that Claims 10- 13, 19, 20, 28, 31, 32, 34, 34, and 46-49 of Gandhi’s involved application Serial No. 12/706,558 are unpatentable under 35 U.S.C. § 112, first paragraph, for lack of written description support from Gandhi’s involved application. However, Bandl- Konrad does not challenge Gandhi’s independent Claims 9, 30, and 33. 5 In Bandl-Konrad Motion 4 (Paper 32), Bandl-Konrad argues: Claims 9 and 46 of Gandhi’s involved application are unpatentable under 35 U.S.C. §§ 102 and 103 as being anticipated or rendered obvious over Kinugasa, U.S. Patent No. 6,109,024 (Kinugasa ‘024; Ex. 2004); 10 Claims 19, 30, 32, 33 and 35 of Gandhi’s involved application are unpatentable under 35 U.S.C. § 102(b) as being anticipated by Kinugasa ‘024 (Ex. 2004); 15 Claims 10, 31, 34 and 47 of Gandhi’s involved application are unpatentable under 35 U.S.C. § 103(a) as rendered obvious over Kinugasa ‘024 (Ex. 2004) and Twigg, PCT International Application No. 00/21647 (Twigg ‘647; Ex. 2013); and 20 Claims 48-49 of Gandhi’s involved application are unpatentable under 35 U.S.C. § 103(a) as rendered obvious over Kinugasa ‘024 (Ex. 2004). In Gandhi Substantive Motion 1 (Paper 26), Gandhi argues: 25 Claim 9 of Bandl-Konrad ‘747 patent is unpatentable under 35 U.S.C. § 102(e) as being anticipated by U.S. Patent Application Publication No. 2004/0076565 (Ex. 1005) (now issued as U.S. Patent No. 7,332,135), the grandfather of Gandhi’s involved application, (hereinafter referred to as Gandhi ‘470 30 application 1 ); 1 Gandhi ‘470 application published on April 22, 2004 with an earlier U.S. filing date of October 22, 2002, and as such, qualifies a prior art under 35 U.S.C. §102(e) against Bandl-Konrad ‘747 patent. 4 Claims 11-15 and 18 of Bandl-Konrad ‘747 patent are unpatentable under 35 U.S.C. § 103(a) as rendered obvious over Gandhi ‘470 application in view of a skilled artisan knowledge as represented by Kolmanvosky, U.S. Patent No. 6,347,512 (‘Kolmanvosky ‘512) (Ex. 1012); Kaneko, U.S. 5 Patent No. 7,127,883 (Kaneko ‘883; Ex. 1013); and Andreasson WO 99/39809 (Andreasson ‘809; Ex. 1008); Claims 1, 4, 5, 7 and 10 of Bandl-Konrad ‘747 patent are unpatentable under 35 U.S.C. § 103(a) as rendered obvious 10 over Gandhi ‘470 application in view of Khair, U.S. Patent No. 6,293,096 (Khair ‘096; Ex. 1006); and Claims 2, 3, 6, 8, 16, 17 and 19 of Bandl-Konrad ‘747 patent are unpatentable under 35 U.S.C. § 103(a) as rendered obvious 15 over Gandhi ‘470 application, Khair ‘096 and in view of a skilled artisan knowledge as represented by other prior art references. We exercise our discretion under 37 C.F.R. § 41.125(a) to take up these 20 motions in the following order (Berman v. Housey, 291 F.3d 1345, 1352 (Fed. Cir. 2002); 37 C.F.R. § 41.125(a)): (1) Bandl-Konrad Motion 3 (Paper 31) to address an alleged lack of “written description” under 35 U.S.C. § 112, first paragraph; 25 (2) Bandl-Konrad Motion 4 (Paper 32) to account for an alleged lack of patentability of any Gandhi Claims that are fully supported by a written description in the original specification of Gandhi’s involved application and that survive Bandl-Konrad Motion 3 (Paper 31); and 30 (3) Gandhi Motion 1 (Paper 26) to account for an alleged lack of patentability of Bandl-Konrad Claims 1-19. Claims 9-13, 19, 20, 28, 30-35 and 46-49 of Gandhi’s Involved Application 35 As discussed below, the preponderance of the evidence leads us to find that Bandl-Konrad has shown that Gandhi’s Claims 11-13 and 20 as presented in 5 Bandl-Konrad Motion 3 (Paper 31) are unpatentable under 35 U.S.C. § 112, first paragraph, for lack of written description support from Gandhi’s involved application. However, we find that Gandhi’s remaining Claims 9, 10, 19, 28, 30- 35, and 46-49 (including unchallenged Claims 9, 30, and 33) have not been shown to lack written description support in the original specification of Gandhi’s 5 involved application. Nevertheless, we find that Bandl-Konrad has shown that Gandhi’s remaining Claims 9, 10, 19, 28, 30-35, and 46-49 as presented in Bandl-Konrad Motion 4 (Paper 32) are unpatentable under 35 U.S.C. §§ 102 and 103 over prior art, including Kinugasa ‘024 and Twigg ‘647. Accordingly, we hold that all of Gandhi 10 Claims 9-13, 19, 20, 28, 30-35, and 46-49 of Gandhi’s involved application are unpatentable under 35 U.S.C. §§ 102, 103, and 112, 1 st paragraph. Claims 1-19 of Bandl-Konrad ‘747 Patent For the reasons detailed below, we find that Bandl-Konrad has not rebutted 15 the presumption under 37 C.F.R. §41.207(c) regarding Claims 9, 11-14, and 18 of Bandl-Konrad ‘747 patent. As such, we hold that Claims 9, 11-14, and 18 of Bandl-Konrad ‘747 patent are unpatentable under 35 U.S.C. §§ 102 and 103 over the same prior art cited in Bandl-Konrad Motion 4 (Paper 32). As a result, we only need to address remaining Claims 1-8, 10, 15-17, and 19 of Bandl-Konrad ‘747 20 patent as presented in Gandhi Substantive Motion 1 (Paper 26). As discussed below, the preponderance of evidence leads us to find that Gandhi has not shown that Claims 1-8, 10, 16-17, and 19 of Bandl-Konrad ‘747 patent are unpatentable under 35 U.S.C. §§ 102 and 103 over prior art, including Gandhi ‘470 application and Khair ‘096. However, Gandhi has shown that Claim 25 15 of Bandl-Konrad ‘747 patent is unpatentable over Gandhi ‘470 application, 6 Khair ‘096 and Pieplu Article. Accordingly, we hold that Claims 9, 11-15, and 18 of Bandl-Konrad ‘747 patent are unpatentable under 35 U.S.C. §§ 102 and 103. Summary of Decisions on Motions (1) Bandl-Konrad Motion 3 (Paper 31) is GRANTED as to Gandhi 5 Claims 11-13 and 20, and is otherwise DENIED as to Gandhi Claims 10, 19, 28, 31, 32, 34, 35, and 46-49. (2) Bandl-Konrad Motion 4 (Paper 32) is GRANTED as to Gandhi’s remaining Claims 9-10, 19, 28, 30-35, and 46-49. We need not reach the merits of the motion with respect to Gandhi Claims 11-13 and 20 as these claims were held 10 unpatentable as a result of Bandl-Konrad Motion 3 (Paper 31). (3) Bandl-Konrad Claims 9, 11-14, and 18 of Bandl-Konrad ‘747 are unpatentable by operation of the presumption of 37 C.F.R. § 41.207(c). Bandl- Konrad has failed to show that Claims 9, 11-14, and 18 are not unpatentable over the prior art cited against Gandhi Claims 9-10, 19, 28, 30-35, and 46-49 in Bandl-15 Konrad Motion 4 (Paper 32). (4) Gandhi Substantive Motion 1 (Paper 26) is GRANTED as to Bandl- Konrad Claim 15 of Bandl-Konrad ‘747, and is otherwise DENIED as to Bandl- Konrad Claims 1-8, 10, 16, 17 and 19. As a result of the above decisions, Gandhi has no patentable claims and 20 Bandl-Konrad Claims 1-8, 10, 16, 17 and 19 have not been shown to be unpatentable. Because there currently is no basis for formulating a count representing the common patentable subject matter of the parties, it is appropriate to terminate the interference at this point. Consequently, we need not reach Bandl-Konrad Motion 1 (Paper 29) to substitute new Count and Bandl-Konrad 25 contingent Motion 2 (Paper 30) to re-designate claims corresponding to the 7 substituted new Count. Therefore, Bandl-Konrad Motion 1 (Paper 29) and Bandl- Konrad contingent Motion 2 (Paper 30) are DISMISSED. II. BACKGROUND An administrative patent judge (APJ) declared an interference (Paper 1) 5 between Junior Party Bandl-Konrad’s involved patent, U.S. Patent No. 7,814,747 2 (“Bandl-Konrad ‘747 patent”) and Senior Party Gandhi’s involved application, U.S. Serial No. 12/706,558. 3 The interfering subject matter is directed to eliminating or reducing polluting nitrogen oxide (“NOx”) produced during engine operation (Ex. 2008, ¶¶18-53; Ex. 10 2014, ¶¶13-35), and is represented by a single Count 1, which is Bandl-Konrad Claim 9 or Gandhi Claim 19. Bandl-Konrad Claim 9, which is identical to Gandhi Claim 19, is reproduced below: 9. An exhaust gas aftertreatment method for purifying an exhaust gas of a diesel engine of a motor vehicle, said method comprising: 15 temporarily storing nitrogen oxides contained in the exhaust in a nitrogen oxide storage catalytic converter during adsorption operating phases; releasing stored nitrogen oxides from the nitrogen oxide storage catalytic converter during regeneration operation phases, and thereby 20 generating ammonia; temporarily storing generated ammonia in an SCR [selective catalytic reduction] catalytic converter arranged downstream of the nitrogen oxide storage catalytic converter; using the stored for nitrogen oxide reduction in the SCR catalytic 25 converter; 2 Real Party in Interest is Daimler AG. 3 Real Party in Interest is Ford Global Technologies, LLC. 8 operating the combustion device under lean-burn conditions of the engine during adsorption operating phases; during lean-burn conditions of the engine oxidizing carbon monoxide and hydrocarbons contained in the exhaust gas in an oxidizing catalytic converter arranged as a first exhaust gas aftertreatment component, as seen 5 in the direction of flow of the exhaust gas; and operating the combustion device under rich-burn conditions during regeneration operating phases. Paper 7, pp. 3-4. Claims 1-19 of Bandl-Konrad ‘747 patent (Paper 7; Ex. 2001), as well as Claims 9-13, 19-20, 28, 30-35 and 46-49 of Gandhi’s involved application 10 (Paper 6; Ex. 2002) which correspond to Count 1. 4 Bandl-Konrad relies on the expert testimony of Dr. Oliver Krӧcher. 5 Gandhi relies on the expert testimony of Dr. Michael P. Harold. 6 Dr. Krӧcher has been the head of the Catalysis for Energy Group (previously named the Exhaust Gas Aftertreatment Group) and the Bioenergy and Catalysis 15 4 In relation to Count 1, the Board has previously accorded (1) Bandl-Konrad ‘747 patent benefit to an earlier U.S. Application Serial No. 10/541,311, filed 24 January 2006, now U.S. Patent No. 7,210,288; PCT/EP2003/14313, filed 16 December 2003; and DE 103 00 298.7, filed 2 January 2003; and (2) Gandhi ‘558 application benefit to earlier parent U.S. Application Serial No. 12/325,787, filed 1 December 2008, now U.S. Patent 7,674,743; U.S. Application Serial No. 11/684,064, filed 9 March 2007, now U.S. Patent No. 7,485,273; and earlier grandparent U.S. Application Serial No. 10/065,470 (Gandhi ‘470 application) filed 22 October 2002, now U.S. Patent No. 7,332,135. 5 See Declaration of Oliver Krӧcher, Ph.D., in support of Beckmann Motion 1, Ex. 2003, ¶¶6-10 (Appendix A – Krӧcher CV); 2 nd Declaration of Oliver Krӧcher, Ph.D., in support of Bandl-Konrad Motion 3, Ex. 2009; 3 rd Declaration of Oliver Krӧcher, Ph.D., in support of Bandl-Konrad Motion 4, Ex. 2014; and 4 th Declaration of Oliver Krӧcher, Ph.D., in support of Bandl-Konrad Opposition 1, Ex. 2018. 6 See Declaration of Michael Harold, Ph.D., in support of Gandhi Substantive Motion 1, Ex. 1001, ¶9; Harold CV, Ex. 1002; 2 nd Declaration of Michael Harold, Ph.D., Ex. 1030; and 3 rd Declaration of Michael Harold, Ph.D., Ex. 1037. 9 Laboratory at the Paul Scherrer Institute in Switzerland since 2003 with publications and research experience in the field of exhaust gas aftertreatment systems spanning times relevant to this interference. Dr. Krӧcher is well qualified to testify regarding the technology in this interference. Dr. Harold is a professor at University of Houston with publications and 5 research experience in catalytic science and engineering preceding and spanning times relevant to this interference. Dr. Harold is well qualified to testify regarding the technology in this interference. III. BANDL-KONRAD MOTION 3 (PAPER 31) SEEKING ENTRY OF 10 JUDGMENT AGAINST GANDHI BASED ON AN ALLEGED LACK OF A WRITTEN DESCRIPTION UNDER 35 U.S.C. § 112, ¶1 In Bandl-Konrad Motion 3 (Paper 31), Bandl-Konrad asserts that Claims 10- 13, 19, 20, 28, 31, 32, 34, 35, and 46-49 of Gandhi’s involved application, which 15 represent almost all of Gandhi’s claims involved in this interference (except for independent Claims 9, 30, and 33) 7 are unpatentable under 35 U.S.C. § 112, first paragraph, for lack of written description in the original specification of Gandhi’s involved application, U.S. Patent Application Serial No. 12/706,558. Claims 11, 19, and 46 are independent claims, and the remainder claims are dependent. 20 Below are our findings of facts, analysis and conclusion of law regarding written description support from Gandhi’s involved application for each of the contested Claims 10-13, 19, 20, 28, 31, 32, 34, 35, and 46-49 of Gandhi’s involved application. 7 Bandl-Konrad has not contested the written description support for Gandhi’s Claims 9, 30, and 33. As such, Gandhi’s Claims 9, 30, and 33 are presumed to have written description support from the specification of Gandhi’s involved application. 10 A. Findings of Facts We make the following findings of facts (“FFs”) to resolve issues presented in Bandl-Konrad Motion 3 (Paper 31). These FFs, as well as others made elsewhere in the Opinion, are supported by at least a preponderance of the evidence on the record. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 5 1988). 1. The terms “nitrogen oxide storage catalytic converter,” “NOx absorber catalytic converter,” “NOx trap,” “lean NOx trap,” “LNT” and “lean NOx absorber” as used in Gandhi’s involved application, U.S. Patent Application Serial No. 12/706,558 (Gandhi ‘558 application; 8 Ex. 1025), 10 and its earlier grandparent U.S. Patent Application Serial No. 10/065,470 (Gandhi ‘470 application; 9 Ex. 1005), as well as Bandl-Konrad’s involved patent (‘747 patent, Ex. 1003) are interchangeable and refer to the same catalytic technology that, among other things, operates in a cyclical fashion storing NOx during lean conditions (lean mode of 15 operation) and reducing NOx during rich conditions (rich mode of operation). 10 2. The terms “SCR catalytic converter” and “NH3-SCR catalyst” as used in Gandhi’s involved application (Gandhi ‘558 application), and its earlier 8 Gandhi’s involved application (Gandhi ‘558 application) is relied upon to support Bandl-Konrad Motion 3 (Paper No. 31) to determine whether Gandhi Claims 10-13, 19, 20, 28, 31, 32, 34, 35, and 46-49 are unpatentable under 35 U.S.C. § 112, 1 st paragraph. 9 In contrast, Gandhi ‘470 application is relied upon to support Gandhi Substantive Motion 1 (Paper 26) to determine whether Bandl-Konrad Claims 1-19 are patentable under 35 U.S.C. §§ 102 and 103. 10 See Declaration of Oliver Krӧcher, Ph.D., in support of Bandl-Konrad Motion 3 (Paper 31), Ex. 2009, ¶25; Declaration of Michael Harold, Ph.D., in support of Gandhi Motion 3 (Paper 31), Ex. 1030, ¶55; Ex. 2014, ¶58. 11 grandparent, Gandhi ‘470 application, as well as the Bandl-Konrad’s involved patent (‘747 patent, Ex. 1003) are interchangeable and refer to the same technology. 11 3. The terms “lean exhaust gas air ratio,” “lean-burn conditions,” “lean cycles” and “lean conditions” refer to the same operating conditions. 12 5 4. Likewise, the terms “rich exhaust gas air ratio,” “rich-burn conditions,” “rich cycles” and “rich conditions” refer to the same operating conditions. 13 5. The term “oxidation catalytic converter” contained in Gandhi’s Claim 11 and “oxidizing catalytic converter” contained in Gandhi’s Claim 19 are 10 interchangeable. 6. A “three-way” catalytic converter is an oxidizing or oxidation catalytic converter. Ex. 1017, col. 1, ll. 40-43. Gandhi’s Involved Application (Gandhi ‘558 Application) 15 7. Gandhi ‘588 application discloses a catalyst system, as shown in Fig. 2, capable of simultaneously eliminating ammonia emissions and improving net NOx conversion. Ex. 1025; Gandhi ‘558 application, ¶[0033]. Fig. 2 is reproduced below. 11 See Declaration of Michael Harold, Ph.D., in support of Gandhi Substantive Motion 1 (Paper 26), Ex. 1030, ¶56; Ex. 2014, ¶70. 12 Id., ¶57. 13 Id., ¶58. 12 As shown in Fig. 2, the catalyst system includes a lean NOx trap and an NH3-SCR catalyst. As expressly described by Gandhi ‘558 application: “The advantage of the catalyst system of this invention is 5 the use of a combination of a lean NOx trap and an NH3- SCR catalyst. The use of a lean NOx trap in the present system allows for much greater storage of NOx, because the NOx breakthrough that would otherwise happen can be controlled by the NH3-SCR catalyst. Additionally, the 10 use of a lean NOx trap as part of this system allows for the operation of the engine at lean conditions for a longer time, and thus provides improved fuel economy . . . . Thus the combination of a lean NOx trap and NH3-SCR catalyst allows for significant NOx storage and ammonia 15 production and thus increases net NOx conversion.” Ex. 1025; Gandhi ‘558 application, ¶[0045] (emphasis added). 8. In a preferred embodiment of Gandhi ‘558 application, the combination of a lean NOx trap and an NH3-SCR catalyst (shown in Fig. 2) is 20 implemented as adjacent or alternating lean NOx trap and NH3-SCR catalyst zones arranged on a single substrate or a single catalytic converter can, as shown in Figs. 4a-4c (reproduced below). 13 Ex. 1025; Gandhi ‘558 application, ¶¶[0046]-[0048]; Figs. 4a-4c. 9. In another preferred embodiment of Gandhi’s involved application, the combination of a lean NOx trap and an NH3-SCR catalyst (as shown in Fig. 2) is implemented as a lean NOx trap washcoat and an NH3-SCR 5 washcoat applied to a single substrate, as shown in Figs. 7a-7c (reproduced below). As shown in Figs. 7a-7b, the lean NOx trap washcoat and NH3-SCR washcoat are formed on the bottom and top layer of a substrate, 10 respectively. In contrast, Fig. 7c involves the use of a one layer washcoat containing both lean NOx trap and NH3-SCR washcoat formulations. Ex. 1025; Gandhi ‘558 application, ¶¶[0052]-[0053]; Figs. 7a-7c. 14 10. In the context of the washcoat arrangement shown in Figs. 7a-7c, Gandhi ‘558 application also describes that: “The invention also contemplates engineering such combinations within the pores of the monolithic substrate. An example of this is incorporating washcoat 5 into porous substrates used for filtering diesel particulate matter. Thus, this lean NOx trap/NH3-SCR catalyst concept can be integrated into diesel particulate matter devices.” 10 Ex. 1025; Gandhi ‘558 application, ¶[0054] (emphasis added). 11. In an alternative embodiment of Gandhi ‘558 application, “three-way” catalysts are also utilized to improve net NOx conversion, eliminate NH3 emissions and reduce catalyst costs, shown in Fig. 9 (reproduced below). 15 12. The three-way catalytic converter can be located upstream of the NOx/NH3-SCR system. Ex. 1025; Gandhi ‘558 application, ¶[0038]. 13. As shown in Fig. 9, a first three-way catalyst 14 is positioned in close proximity to the engine 12 to reduce cold start emissions; a second three- way catalyst 16 is modified to enhance the ability of the second three-20 way catalyst 16 to generate NH3 emissions; and an NH3-SCR catalyst 18 is arranged downstream of the second three-way catalyst 16 to store NH3 produced for reaction with NOx emissions in order to reduce both NOx and NH3 emissions. In other words, a three-way catalyst 14 can be 15 disposed upstream of a lean NOx trap/NH3-SCR system. Ex. 1025; Gandhi ‘558 application, ¶[0061]. 14. In view of FFs. 6 and 11-13, Gandhi describes an oxidation catalytic converter as the first exhaust gas aftertreatment component and therefore discloses an oxidizing catalytic converter as the first exhaust gas 5 aftertreatment component. Bandl-Konrad ‘747 Patent 15. Bandl-Konrad ‘747 patent discloses an exhaust gas aftertreatment installation and associated exhaust gas aftertreatment (purification) 10 method of an exhaust gas generated by an internal combustion engine using a nitrogen oxide storage catalytic converter (also known as NOx storage catalytic converter or NOx absorber catalytic converter (“NSC”)) and an SCR catalytic converter with the ability to store ammonia. Ex. 2001; Bandl-Konrad ‘747 patent, col. 1, ll. 16-35. 15 16. In order to increase the efficiency of the SCR catalytic converter, Bandl- Konrad ‘747 discloses a NO2 producing catalytic converter arranged upstream of the SCR catalytic converter. Ex. 2001; Bandl-Konrad ‘474 patent, col. 5, ll. 25-27. 17. In addition, a particulate filter is arranged upstream of the SCR catalytic 20 converter and downstream of the NO2 producing catalytic converter to retain the particulates emitted. Ex. 2001; Bandl-Konrad ‘474 patent, col. 3, ll. 31-34; col. 4, ll. 59-64; col. 6, ll. 10-21. 18. A further oxidation catalytic converter can also be connected upstream of the NOx storage catalytic converter, i.e., positioned as a first exhaust gas 25 purification component relative to an engine, in order to lower the emissions of hydrocarbons (HC) and carbon monoxide (CO) during cold 16 starts. Ex. 2001; Bandl-Konrad ‘747 patent, col. 16, ll. 14-18; col. 9, ll. 5-8. 19. According to Bandl-Konrad ‘747 patent, “Various possible implementations are possible for the order in which the NOx storage catalytic converter, SCR 5 catalytic converter, particulate filter and NO2-producing catalytic converter are arranged in the exhaust train, each of these implementations having specific properties and advantages; the options include multi-flow arrangements.” 10 Ex. 2001; Bandl-Konrad ‘747 patent, col. 7, ll. 41-46 (emphasis added). 20. Bandl-Konrad ‘747 patent describes that: “Fig. 4 shows a further variant, in which the exhaust gas aftertreatment installation has a combined SCR and 15 nitrogen oxide storage catalytic converter 15 ...” Ex. 2001; Bandl-Konrad ‘747 patent, col. 17, ll. 25-27 (emphasis added). In other words, a combined nitrogen oxide storage and SCR catalytic converter 15 performs the functions of the NOx storage catalytic 20 converter 6 and the SCR catalytic converter 7, as described in connection with Figs. 1-3 of Bandl-Konrad ‘747 patent. 21. Bandl-Konrad ‘747 patent further describes that: “Instead of being arranged upstream of the particulate filter 5, the NO2-producing catalytic converter 13 may 25 also be integrated at the outlet end of the NOx storage catalytic converter 6.... As a further possible option, it is also possible for the NO2-producing catalytic converter 13 to be integrated at the inlet end of the SCR catalytic converter 7. Alternatively, the NO2 producing catalytic 30 converter 13 can also be dispensed with altogether.” Ex. 2001; Bandl-Konrad ‘747, col. 16, ll. 4-13 (emphasis added). In other words, the separate NO2-producing catalytic converter 13, as shown 17 in Fig. 2, can be integrated at the outlet end or the inlet end of the SCR catalytic converter 7. This way the SCR catalytic converter 7 can also perform the function of the NO2-producing catalytic converter 13. 22. In addition, Bandl-Konrad ‘747 patent also describes that: “If appropriate, the SCR catalytic converter as a 5 separate component can also be dispensed with altogether. In this case, the temperature sensor 8 illustrated in FIG. 2 between particulate filter and SCR catalytic converter can be dispensed with, but the pressure sensor 14 illustrated downstream of the 10 particulate filter is retained.” Ex. 2001; Bandl-Konrad ‘747 patent, col. 15, l. 64 – col. 16, l. 3 (emphasis added). 23. Bandl-Konrad ‘747 patent also describes that: 15 “If appropriate, it is also possible for the separate NOx storage catalytic converter 6 to be dispensed with altogether, i.e. for its function to be integrated in the particulate filter 5. In this case, it is also possible for both the NO2-producing catalytic converter 13 and the 20 device 11 for supplying reducing agent downstream of the engine and upstream of the NO2-producing catalytic converter 13 to be dispensed with.” Ex. 2001; Bandl-Konrad ‘747 patent, col. 15, ll. 49-56 (emphasis 25 added). In other words, the separate NOx storage catalytic converter 6, as shown in Fig. 2, can be integrated in the particulate filter 5. This way the particulate filter 5 can also perform the function of the NOx storage catalytic converter 6. 24. Fig. 2 of Bandl-Konrad ‘747 patent, which we reproduce below, 30 discloses exhaust gas aftertreatment components connected in series and arranged in a particular order, such as: (1) a nitrogen oxide (NOx) storage 18 catalytic converter 6, (2) a particulate filter 5, (3) an SCR catalytic converter 7, and (4) an oxidation catalytic converter 4. Ex. 2001; Bandl-Konrad ‘747 patent, col. 14, ll. 22-31; Fig. 2. 25. Fig. 6 of Bandl-Konrad ‘747 patent (annotated and reproduced below) 5 discloses an embodiment shown in Fig. 2, but with an oxidation catalytic converter arranged as a first exhaust aftertreatment component, as seen in the direction of flow of the exhaust gas. Ex. 2001; Bandl-Konrad ‘747 patent, col. 16, ll. 14-18; Fig. 6 10 (annotated). 26. According to Bandl-Konrad ‘747 patent, certain components shown in connection with Figs. 2 and 6 (as well as other figures), including 19 temperature sensors 8, NOx sensors 9, pressure sensors 14, device 11 for supplying reducing agent downstream of an engine, and device 12 for supplying air and pressure sensors 14, can be combined or integrated in order to reduce the overall space taken up. 27. In view of FFs. 19-26, Bandl-Konrad ‘747 patent describes both (1) 5 separate and distinct and (2) integrated components as alternatives. B. Analysis. 1. As an initial matter, we reject Bandl-Konrad’s approach to challenging 10 Gandhi’s claims on written description grounds. Bandl-Konrad argues that “for Gandhi to be entitled to the benefit of the October 22, 2002, filing date of [Gandhi Application 10/065,470], Gandhi must show that the specification for the Gandhi ‘470 application (Ex. 2008) discloses the claimed subject matter in Gandhi’s involved application.” Paper 31, p. 2, ll. 15-18. However, the only appropriate 15 specification for the determination of adequate written descriptive support is the specification in which the involved claims form a part, Application 12/706,558. See Reiffin v. Microsoft Corp., 214 F.3d 1342, 1346 (Fed. Cir. 2000). However, because Gandhi ‘558 application is said to be a continuation of Application 12/325,787 which is said to be a continuation of Gandhi ‘470 application, we will 20 presume that the written description of Gandhi’s involved application is identical to that of Gandhi ‘470 application. References in the party’s papers and in testimony referring to Gandhi ‘470 application are considered to be references to Gandhi’s involved application. The citations and references to Gandhi’s application, specification, written description or claims in this opinion are 25 references to those as filed on February 16, 2010. 20 Second, Bandl-Konrad characterizes that only Claims 11-13, 19, 20, and 28 of Gandhi’s involved application were copied from Bandl-Konrad ‘747 patent, and thus, only Gandhi Claims 11-13, 19, 20, and 28 must be interpreted in the context of the specification of Bandl-Konrad ‘747 patent for purposes of determining compliance with the written description requirement of 35 U.S.C. § 112, first 5 paragraph. 14 Agilent Tech., Inc. v. Affymetrics, Inc., 567 F.3d 1366, 1375 (Fed. Cir. 2009) (“[W]hen a party challenges a written description for the interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language”). Paper 48, p. 2, ll. 7-10. However, Bandl-Konrad’s characterization is incorrect and inconsistent with the prosecution 10 history of Gandhi’s involved application. In particular, in an Amendment filed February 14, 2011 filed in Serial No. 12/706,558, Gandhi Claim 19 was copied from Bandl-Konrad ‘747 patent and is identical to Claim 9 of Bandl-Konrad ‘747 patent. However, all Gandhi remaining Claims 9-13, 20, 28, 30-35 and 46-49 were said to be substantially copied from Bandl-Konrad ‘747 patent and are similar, 15 albeit different in scope than Claim 9 of Bandl-Konrad ‘747 patent. See Amendment, p. 12. We are aware of no reason that would justify treating identically copied and substantially copied claims differently. As such, and for purposes of Agilent, all Gandhi “copied” claims, i.e., Claims 9-13, 19-20, 28, 30- 35 and 46-49 shall be treated as “copied” claims, and shall be interpreted in the 20 context of Bandl-Konrad’s disclosure as discussed herein below. 2. In order to satisfy the written description requirement under 35 U.S.C. § 112, first paragraph, the specification must convey with reasonable clarity to those 25 14 See Gandhi’s Request for Interference filed August 1, 2011 and Amendment filed February 14, 2011. 21 of ordinary skill in the art that as of the filing date of the application the inventor disclosed the claimed invention. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563- 64 (Fed. Cir. 1991); see also Pandrol USA, LP v. Airboss Ry. Products, Inc., 424 F.3d 1161, 1165 (Fed. Cir. 2005). The purpose of the written description requirement is to prevent applicants from later asserting that they invented that 5 which they did not. Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d 1313 (Fed. Cir. 2003). However, the description does not have to be in the exact same words, in ipsis verbis, as the language at issue in the corresponding claim. In re Wertheim, 541 F.2d 257, 265 (CCPA 1976); In re Lukach, 442 F.2d 967, 969 (CCPA 1971). Equally true is that obviousness is not the test for written 10 description. In other words, a description that simply renders obvious a claimed invention is not sufficient to satisfy the written description requirement. Lockwood v. American Airlines Inc., 107 F.3d 1565 (Fed. Cir. 1997). The question is whether the written description objectively tells the person of ordinary skill that the inventor contemplated the subject matter now claimed. 15 The status quo of an interference is presumed correct. A party wishing to change the status quo may be authorized to file a substantive motion under 37 C.F.R. §41.212(a) to effect that change. As the moving party, Bandl-Konrad bears the burden of proof to demonstrate entitlement to the relief requested. 37 C.F.R. § 41.121(b). To be sufficient, a motion must provide a showing, supported with 20 appropriate evidence, such that, if unrebutted, it would justify the relief sought. 37 C.F.R. § 41.208(b). The applicable standard of proof is by a preponderance of the evidence. Bosies v. Benedict, 27 F.3d 539, 541-42 (Fed. Cir. 1994). 3. 25 Bandl-Konrad has identified four limitations of Gandhi’s Claims 10-13, 19, 20, 28, 31-35, and 46-49 said not to be described by Gandhi’s written description: 22 (1) separate and distinct exhaust gas aftertreatment components; (2) an oxidation catalytic converter as the first exhaust gas after treatment component; (3) increasing the amount of NO2 in the exhaust gas using a catalytic converter upstream of the SCR catalytic converter; and (4) a particulate filter located after the nitrogen oxide storage catalytic converter and before the SCR catalytic 5 converter. Paper 31, pp. 6-14. 1) Separate and Distinct Exhaust Gas Aftertreatment Components Claims 10-13, 19, 20, 28, 31-35, and 46-49 10 In Bandl-Konrad Motion 3 (Paper 31), Bandl-Konrad, relying on testimony of its expert, Dr. Oliver Krӧcher, asserts that the four specified exhaust gas purification (aftertreatment) components of the parties’ claims should be construed as separate and distinct components that exclude integrated or combined components. Paper 31, page 6; Ex. 2009, ¶57. 15 Citing Agilent, 567 F.3d at 1376, Bandl-Konrad argues that Gandhi’s Claims 10-13, 19, 20, 28, 31-35, and 46-49 (all but Claims 9, 30 and 33 of Gandhi’s involved application) were copied from Bandl-Konrad’s patent and therefore must be construed in light of Bandl-Konrad’s written description. When read in light of Bandl-Konrad’s disclosure, Bandl-Konrad contends that its written description 20 compels a construction that excludes combined or integrated components. We disagree. Pending claims in interference proceedings are given their broadest reasonable construction in a manner consistent with Agilent, i.e., in light of Bandl-Konrad’s disclosure. Claim terms are also accorded their ordinary and accustomed meaning as would be understood by one of ordinary skill in the art. 25 Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). In some cases, as here, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim 23 construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words. Phillips v. AWH Corp., 415 F.3d at 1314. This means that the words of the claims are given their plain meaning unless that meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Consequently, care must be exercised as there is 5 an important distinction between interpreting claims in light of the specification and reading limitations into the claims from the specification. Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). Limitations appearing in the specification but not recited in the claim must not be read into the claim. E- Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (claims 10 must be interpreted “in view of the specification” without importing limitations from the specification into the claims unnecessarily.) At the outset, we note that there is no language in any of the Gandhi claims that expressly requires the components to be separate and distinct from each other. The plain language of Gandhi claims simply does not require the four exhaust gas 15 aftertreatment components be “separate” or “distinct” from each other; rather, Gandhi claims simply require various components arranged in a specific order in relation to each other and the exhaust gas flow. This plain interpretation of Gandhi claims is consistent with Bandl-Konrad’s disclosure, since Bandl-Konrad’s disclosure is also not limited to separate and 20 distinct components. In fact, Bandl-Konrad discloses that exhaust gas components can be combined or integrated together. For example, Bandl-Konrad describes that: “Fig. 4 shows a further variant, in which the exhaust gas aftertreatment installation has a combined SCR and 25 nitrogen oxide storage catalytic converter 15 ...” 24 Ex. 2001; Bandl-Konrad ‘747, col. 17, ll. 25-27; FFs. 15-20 (emphasis added). Bandl-Konrad’s disclosure further teaches that: “Instead of being arranged upstream of the particulate filter 5, the NO2-producing catalytic converter 13 may also be integrated at the outlet end of the NOx storage 5 catalytic converter 6.... As a further possible option, it is also possible for the NO2-producing catalytic converter 13 to be integrated at the inlet end of the SCR catalytic converter 7.” 10 Ex. 2001; Bandl-Konrad ‘747, col. 16, ll. 4-13; FFs. 20-17 (emphasis added). Thus, in the absence of express limiting claim language, there is no basis to construe Bandl-Konrad’s invention as excluding integrated components. Accordingly, Bandl-Konrad’s written description does not support construing Gandhi’s copied claims as excluding integrated or combined components. 15 Even assuming arguendo that Bandl-Konrad's claims are limited to separate and distinct components, Bandl-Konrad has failed to establish that Gandhi’s written description does not support separate and distinct components. Bandl-Konrad relies on the testimony of Dr. Krӧcher to establish that Gandhi’s written description should be construed as only describing integrated or 20 combined components. In particular, Dr. Krӧcher proffers two reasons why one skilled in the art would consider Gandhi’s written description to exclude combined or integrated components: (1) the claims separately recite four components having a particular relationship with each other, and (2) Gandhi’s involved application only discloses integrating filtering particulates with a nitrogen oxide storage 25 catalytic converter and an SCR catalytic converter. Ex. 2009, ¶¶57-58. We do not consider Dr. Krӧcher’s testimony to be probative on these points. While the claim language requires that the components have a certain physical relationship to each other, neither the Bandl-Konrad’s motion nor Dr. Krӧcher’s 25 testimony adequately explains why the claim language excludes combined or integrated components. As previously noted, the claim language itself is totally silent on whether the components are combined, or alternatively, are separate and distinct. All the claim language expressly requires is that the exhaust gases flow through the components in a required order. 5 Dr. Krӧcher has not explained why the structures disclosed, for example, in Gandhi’s Figures 2, 4a and 9, and their accompanying textual descriptions, do not convey to a person skilled in the art the use of separate and distinct components. Each of Gandhi’s Figures 2, 4a and 9 shows components which appear to be separate and distinct from the others. For example, Fig. 4a shows a lean NOx trap 10 (LNT) as separate and distinct from an SCR catalyst. Ex. 2002, Figs. 2, 4a and 9; FFs. 7-14. Each of these components separately and distinctly performs its designed functions. Dr. Krӧcher’s second point is directed to Gandhi’s disclosure of a combined particulate filter, nitrogen oxide storage catalytic converter and SCR catalytic 15 converter. We simply do not see, and Dr. Krӧcher has not adequately explained, how Gandhi’s discussion of this optional feature (Ex. 1005, ¶¶[0052]-[0053]) conveys that Gandhi teaches that all the other components would be understood only to be integrated or combined components. For these reasons, Bandl-Konrad has not met its burden of establishing that 20 its written description and claims are limited to describing “separate” and “distinct” components or that Gandhi’s written description is limited to combined or integrated components. 26 2) An Oxidation Catalytic Converter as the First Exhaust Gas Aftertreatment Claims 11, 19, and 46 Claims 11 and 19 further recite “an oxidation catalytic converter arranged as 5 a first exhaust gas aftertreatment component, as seen in the direction of flow of the exhaust gas.” Ex. 2002, Claims 11 and 19. Gandhi Claim 46 is similar to Claims 11 and 19, except that a generic “catalyst capable of oxidizing” is recited instead of “an oxidizing catalytic converter” as recited in Gandhi Claims 11 and 19. Ex. 2002, Claim 46. 10 Bandl-Konrad relies on Dr. Krӧcher’s testimony, and argues that Gandhi does not have a written description of an oxidation catalyst as the first exhaust gas aftertreatment component as seen in the direction of the flow of the exhaust gas: Dr. Krӧcher found no support in Gandhi’s involved application for this particular arrangement of the oxidation catalytic 15 converter. Ex. 2009, ¶ 66. In fact, according to Dr. Krӧcher, Gandhi’s involved application leaves open the possibility that other exhaust gas treatment components can be arranged in front of the oxidation catalytic converter. Ex. 2009, ¶ 66. 20 Paper 31, p. 8, ll. 14-18. We have reviewed Dr. Krӧcher’s testimony and do not consider it to be probative on features of Gandhi Claims 11, 19, and 46. First, we find Dr. Krӧcher’s testimony, that Gandhi’s written description leaves open the possibility that other exhaust gas treatment components can be 25 arranged in front of the oxidation catalytic converter, not to be relevant. The specific question is whether Gandhi’s written description teaches an oxidation catalytic converter as the first exhaust gas aftertreatment. The fact that Gandhi left open, or even expressly disclosed, that other exhaust treatments could also be 27 the first component, does not establish that the written description does not also disclose an oxidation catalyst to be the first after treatment. We have reviewed Gandhi’s disclosure and have identified a number of portions relevant to the location of the oxidation catalytic converter. In addition to the lean NOx trap (LNT) and the SCR catalyst converter, Gandhi describes the use 5 of three-way catalysts. A three-way catalyst oxidizes hydrocarbons and carbon monoxide as well as NOx. Ex. 1005, ¶[0002]; Ex. 1017, col. 1, ll. 40-43; Ex. 1025, ¶[0002]; FFs. 7-14. Thus, a three-way catalyst is seen as an oxidation catalytic converter. Gandhi teaches that a three-way catalyst may be used in conjunction with a lean NOx trap and NH3-SCR catalyst (Ex. 1005, ¶[0061]), that 10 a three-way catalyst may be used to generate ammonia upstream of the LNT/ NH3-SCR system (¶[0038]) and Figure 9 shows a three-way catalyst 14 located as the first exhaust gas after treatment component (¶[0059]). Dr. Krӧcher’s testimony does not address all the above-cited relevant portions of Gandhi’s disclosure. 15 Dr. Krӧcher also testifies that Gandhi’s written description does not provide additional details as to how the three-way catalyst, the lean NOx trap and SCR catalytic converter would be implemented. Ex. 2009, ¶ 67. That testimony seems to assert that one skilled in the art would not be able to implement the combination. However, Bandl-Konrad has not argued that any of Gandhi’s 20 claimed subject matter is not supported by an enabling disclosure. Thus, the lack of additional implementing details does not detract from the specific teachings of Gandhi’s disclosure referred to above. We find that the portions of Gandhi’s disclosure cited above in combination with the remainder of the disclosure are sufficient to convey an oxidation catalytic 25 converter as the first exhaust gas aftertreatment component, as recited in Gandhi Claims 11, 19, and 46. 28 3) Using an NO2 Producing Catalytic Converter Upstream of the SCR Catalytic Converter, Reacting NO to NO2 upstream of the NH3-SCR Catalyst Converter and Increasing the Ratio of NO2 in the Exhaust Gas 5 Claims 13, 28, 32, 35, 48, and 49 Dependent Claim 13, which depends upon base Claim 11, further comprises “an NO2 producing catalytic converter disposed upstream of the SCR catalytic converter.” Ex. 2002, Claim 13. Dependent Claim 28, which depends upon base Claim 19, further comprises 10 “enhancing an NO2 ratio of the nitrogen oxides in the exhaust gas … with an NO2 producing catalytic converter disposed upstream of the SCR catalytic converter.” Ex. 2002, Claim 28. Similar to Claim 28, dependent Claims 32, 35, and 48 require “oxidizing a portion of NO in the exhaust gas to NO2 in a catalyst disposed upstream of the 15 NH3-SCR catalyst. Ex. 2002, Claims 32, 35, and 48. Alternatively, dependent Claim 49 simply requires “reacting NO to NO2 upstream of the NH3-SCR catalyst.” Ex. 2002, Claim 49. Bandl-Konrad again relies on Dr. Krӧcher’s testimony that there is no written description for these features. Paper 31, pp. 11-14. We have fully 20 considered Dr. Krӧcher’s testimony which appears at ¶¶ 73-82, 87-90, 92-95, and 97-98 of his declaration (Ex. 2009). However, we do not accord Dr. Krӧcher’s testimony significant weight. Dr. Krӧcher has not provided an adequate reason as to why one skilled in the art would disbelieve the plain teachings of Gandhi’s disclosure. 25 Gandhi, in describing Figure 2 states: “As illustrated in FIG. 2, the lean NOx adsorber emits NO, NO2, NH3, and N2O. These same gases then pass through the NH3-SCR, where NH3 is stored.” Specification, p. 8, [0032]; FFs. 7-14. Gandhi’s 29 Figure 2, reproduced below, illustrates the production of NO2 in the lean NOx absorber. As shown in Gandhi’s Figure 2, exhaust gas containing NO enters the lean NOx absorber. A combination of gases including NO2 leaves the lean NOx 5 absorber and enters the NH3-SCR catalytic converter. Thus, Gandhi expressly describes an NO2 producing catalytic converter upstream of the SCR catalytic converter and reacting NO to NO2 upstream of the NH3-SCR catalyst converter. Gandhi’s disclosure is also consistent with Dr. Krӧcher’s testimony from his deposition on January 10, 2012. There, Dr. Krӧcher admitted that a three-way 10 catalyst (“TWC”) and lean NOx absorber (LNT), as shown in Gandhi’s Figure 2, can oxidize NO to form NO2: Q. You agree that a TWC can oxidize NO to form NO2 under lean conditions; right? A. It can do. However, only to a limited extent 15 Q. And you agree that Gandhi discloses a TWC upstream of the LNT, SCR system, don’t you? A. Yeah. MR. JACOBS: Objection. A. Correct. 20 BY MR. HUNTINGTON Q. And you would agree that under lean conditions the TWC would oxidize NO to form NO2, wouldn’t it? A. Yes, but again only to a very limited extent. It is not a specialized NO2 producing catalytic converter. 25 Q. Claim 13 does not call for a specialized NO2 producing catalytic converter, does it? 30 MR. JACOBS: Objection. A. No, that’s correct. BY MR. HUNTINGTON: Q. And you would agree that a lean NOx trap oxidizes NO to form NO2; right? 5 A. Correct. Ex. 1028, p. 80, ll. 1-12. Dr. Krӧcher has not presented a scientific basis why Gandhi’s straight forward description is not valid or believable. Nor has Dr. Krӧcher provided a 10 scientific reason why the operation of the lean NOx absorber as described and illustrated by Fig. 2 would not increase the “NO2 ratio of the nitrogen oxides in the exhaust gas.” Because as illustrated in Figure 2, the NO2 is formed during the passage of the exhaust gas through the lean NOx absorber, the NO2 ratio of nitrogen oxides in the exhaust gas would necessarily increase. 15 For these reasons, Bandl-Konrad has not satisfied its burden of establishing that Gandhi’s written description does not describe an NO2 producing catalytic converter upstream of the SCR catalytic converter, reacting NO to NO2 upstream of the NH3-SCR catalyst converter or increasing the ratio of NO2 ratio of nitrogen oxides in the exhaust gas, as recited in Gandhi Claims 13, 28, 32, 35, 48, and 49. 20 4) Particulate Filter Claims 11-13 and 20 Claim 11 and its dependent Claims 12-13 define an installation for aftertreatment of exhaust gas generated by a diesel engine of a motor vehicle 25 comprising four required exhaust gas purification (aftertreatment) components arranged in a specific order in relation to each other and the exhaust gas flow. Ex. 2002, Claims 11-13. As expressly defined in Gandhi Claims 11-13, the exhaust gas flows through the four components in the following order: 31 1. an oxidation catalytic converter; 2. a nitrogen oxide (NOx) storage catalytic converter; 3. a particulate filter; and 4. an SCR catalytic converter. Claim 20, similarly requires the same order of components. Ex. 2002, 5 Claim 20. Bandl-Konrad argues, inter alia, that Gandhi’s original specification does not provide a written description of a particulate filter “arranged upstream of the SCR catalytic converter and downstream of the nitrogen oxide storage catalytic converter.” Paper 31, pp. 6-8 10 We have reviewed the Gandhi’s written description and fail to see where Gandhi describes this specific arrangement. As pointed out by Bandl-Konrad, Gandhi’s written description only makes a single mention of particulate filters: The invention also contemplates engineering such combinations within the pores of the monolithic substrate. An example of this 15 is incorporating washcoat into porous substrates used for filtering diesel particulate matter. Thus, this lean NOx trap/ NH3-SCR catalyst concept can be integrated into diesel particulate matter devices. 20 Ex. 1005, ¶[0054]. However, this paragraph is silent on the location of the particulate filter and does not describe a structure where the particulate filter is located between the two catalytic converters. Gandhi’s opposition does not direct us to a specific portion of the written description that expressly describes a particulate filter at the required location. 25 Instead, Gandhi relies on the disclosure presented by Figs. 4 and 7 and the testimony of Dr. Michael Harold (Ex. 1030). Paper 40, p. 6, l. 6 – p. 8, l. 4. Dr. Harold testifies that the person having ordinary skill in the art would understand the reference to “porous substrates used for filtering diesel particulate matter” in 32 ¶52 of Gandhi’s written description refers to be “wall-flow” filters. Ex. 1030, p. 43, ¶158, ll. 11-13. Dr. Harold’s testimony includes a drawing said to show how such a filter operates. Ex. 1030, p. 43, ¶158, ll. 13-16. The drawing is reproduced below: 5 The drawing is admittedly not disclosed in Gandhi’s application. Ex. 1030, p. 43, ¶158, ll. 13. Dr. Harold then combined the structure shown in the particulate filter drawing with Gandhi’s Figs. 4 and 7 testifying that: “the combination of the configurations shown in Figures 4 and 7 into a porous substrate for filtering diesel particulate matter would result in 10 a system having a particulate filtering component located between a lean NOx trap and SCR catalyst.” Ex. 1030, p. 50, ¶173, ll. 14-17. Dr. Harold created the drawing, reproduced below, said to be “an example” of the integration the structure of Gandhi Fig. 7b 15 into a diesel particulate matter device: Ex. 1030, p. 50, ¶173, ll. 17-19. 33 Ex. 1030, p. 51. The combination drawing also is not present in Gandhi’s disclosure. Nevertheless, Dr. Harold testifies that: “[i]n this arrangement, the exhaust gas would contact a Lean NOx Trap formulation, the porous substrate, and a SCR Catalyst 5 formulation in that order.” Ex. 1030, p. 50, ¶173, ll. 19-20. Dr. Harold similarly combines the “known” particulate filter structure with the arrangement shown in Gandhi’s Figures 4a-4c to arrive at another structure 10 having the sequence required by Claim 11: when one applies the various configurations to the porous substrate used for particulate filtration, such as in Figure 4a, the result is a system that has an integrated Lean NOx Trap-Particulate Filter zone, and SCR Catalyst-15 Particulate Filter zone, such that one has a system where a Particulate Filter is located downstream of the Lean NOx Trap and also upstream of the SCR Catalyst. Ex. 1030, 52:13-17. Dr. Harold created the following drawing to illustrate the resultant sequence: 20 Ex. 1030, p. 52, ¶175. 34 The drawing also does not appear in Gandhi’s disclosure. Dr. Harold then testifies that Gandhi has written descriptive support for a particulate filter located downstream of the lean NOx trap and also upstream of the SCR Catalyst. Ex. 5 1030, p. 53, ¶176, ll. 6-7. We do not credit Dr. Harold’s testimony on these points. First, Dr. Harold’s testimony does not provide any basis for the statement that that one skilled in the art would recognize that the “porous substrates used for filtering diesel particulate matter” as used in Gandhi’s written description refers to “wall-flow” filters. We 10 are not required to credit the unsupported assertions of an expert witness. Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). See also, Standing Order, Paper 2, ¶158.1.1. Second, to the extent “wall-flow” filters are conventional in the art, Gandhi appears to presume that whatever was conventionally known by those in the art 15 was actually considered part of the invention by the inventors and considered to have been described in the specification. No basis exists for that presumption. Third, the proposed combination of the undisclosed structure of “wall-flow” filters with the structures shown in Gandhi’s Figures. 4 and 7 to arrive at the structures proposed by Dr. Harold’s appear to be a matter of “obviousness” rather 20 35 than “written description.” As we have noted above, the test for written description is not obviousness. Rather, the specification must convey with reasonable clarity to one with ordinary skill in the art that as of the filing date of the application the inventor was in possession of the claimed invention. Vas-Cath Inc., 935 F.2d at 1563-64; see also Pandrol USA, LP, 424 F.3d at 1165. The 5 pertinent question in analyzing written description is: did the written description objectively tell to the person skilled in the art that the inventor contemplated the subject matter now claimed. For the foregoing reasons, Bandl-Konrad has met its burden to establish by a preponderance of the evidence that Gandhi Claims 11-13 and 20 are unpatentable 10 under 35 U.S.C. § 112, first paragraph, for lacking written description support for a “particulate filter” that is arranged at the specific location required by the claims, i.e., “upstream of the SCR catalytic converter and downstream of the nitrogen oxide storage catalytic converter.” Accordingly, we hold that Bandl-Konrad has shown that Gandhi Claims 11-13 and 20 are unpatentable under 35 U.S.C. § 112, 15 first paragraph, as lacking written description support. Claims 10, 31, 34 and 47 Dependent Claims 10, 31, 34 and 47 also require a particulate filter. Each of these claims adds the specific limitation requiring “filtering particulate matter in 20 the exhaust gas.” Ex. 2002, Claims 10, 31, 34, and 47. Bandl-Konrad makes essentially the same arguments against Gandhi Claims 10, 31, 34 and 47 that were made with respect to Claims 11-13 and 20, i.e., that written description support is lacking because “it would not be possible to arrange the particulate filter upstream of the NH3-SCR washcoat and downstream of the 25 lean NOx trap (LNT) washcoat.” Paper 31, p. 14, Ex. 2009, ¶103. 36 Bandl-Konrad’s argument is not persuasive. We note that Gandhi Claims 10, 31, 34, and 47 do not require a specific arrangement or location for the particulate filter. Instead, those claims merely require “filtering particulate matter in the exhaust gas.” Gandhi written description expressly teaches using a particulate filter. Gandhi Specification, p. 15, [0015]; FFs. 7-14. That disclosure 5 alone is sufficient to provide written descriptive support for the broadly worded “filtering particulate matter,” as recited in Gandhi Claims 10, 31, 34, and 47. Bandl-Konrad has failed to prove that Gandhi Claims 10, 31, 34 and 47 are unpatentable under 35 U.S.C. § 112, first paragraph, for lacking a written description support. 10 4. In summary, Bandl-Konrad has met its burden to prove that Gandhi Claims 11-13 and 20 are unpatentable under 35 U.S.C. § 112, first paragraph, for lacking a written description support. However, Bandl-Konrad has failed to prove that 15 Gandhi Claims 10, 19, 28, 31, 32, 34, 35, and 46-49 are unpatentable under 35 U.S.C. § 112, first paragraph, for lacking a written description support. Therefore, Bandl-Konrad Motion 3 (Paper 31) is GRANTED as to Gandhi Claim 11-13 and 20, and is otherwise DENIED as to Gandhi Claims 10, 19, 28, 31, 32, 34, 35, and 46-49. 20 IV. BANDL-KONRAD MOTION 4 (PAPER 32) SEEKING ENTRY OF JUDGMENT AGAINST GANDHI BASED ON AN ALLEGED LACK OF PATENTABILITY UNDER 35 U.S.C. §§ 102 & 103 25 In Bandl-Konrad Motion 4 (Paper 32), Bandl-Konrad moves for judgment that Claims 9, 10, 19, 30-35, and 46-49 of Gandhi’s involved application, U.S. Application Serial No. 12/706,558 (“Gandhi ‘558 application”) (pending Claims 37 attached as Ex. 2002) are unpatentable over the prior art under one or both of 35 U.S.C. §§ 102 and 103. To prevail on this motion, Bandl-Konrad bears the burden of proving by a preponderance of evidence that Claims 9, 10, 19, 30-35, and 46-49 of Gandhi ‘558 application are unpatentable over prior art. 37 C.F.R. § 41.121(b). Specifically, Bandl-Konrad argues: (1) Claims 9 and 46 of Gandhi’s 5 involved application are unpatentable under 35 U.S.C. §§ 102 and 103 as being anticipated or rendered obvious over Kinugasa, U.S. Patent No. 6,109,024 (Kinugasa ‘024; Ex. 2004); (2) Claims 19, 30, 32, 33 and 35 of Gandhi’s involved application are unpatentable under 35 U.S.C. § 102(b) as being anticipated by Kinugasa ‘024 (Ex. 2004); (3) Claims 10, 31, 34 and 47 of Gandhi’s involved 10 application are unpatentable under 35 U.S.C. § 103(a) as rendered obvious over Kinugasa ‘024 (Ex. 2004) and Twigg, PCT International Application No. 00/21647 (Twigg ‘647; Ex. 2013); and (4) Claims 48-49 of Gandhi’s involved application are unpatentable under 35 U.S.C. § 103(a) as rendered obvious over Kinugasa ‘024 (Ex. 2004). In addition, Bandl-Konrad also argues, pursuant to the presumption 15 under 37 C.F.R. §41.207(c), that the asserted prior art does not anticipate or render obvious any claims of Bandl-Konrad ‘747 patent. In its opposition (Paper 41), Gandhi does not contest Bandl-Konrad’s general contention regarding the unpatentability of Gandhi’s claims; rather, Gandhi opposes to the extent that should Gandhi Claims 9, 10, 19, 30-35, and 46-49 be 20 held unpatentable, Bandl-Konrad Claims 1-19 should also be held unpatentable for the same reasons. Gandhi Opposition 4 (Paper 41), p. 1. However, in light of our decision re: Bandl-Konrad Motion 3 (Paper 31) holding that Gandhi Claims 11-13 and 20 have been shown as unpatentable under 35 U.S.C. §112, first paragraph, for lack of written description support from 25 Gandhi ‘558 application, and Gandhi remaining Claims 9, 10, 19, 28, 30-35, and 46-49 (including unchallenged Claims 9, 30, and 33) have not been shown as 38 unpatentable under 35 USC §112, first paragraph, we exercise our discretion under 37 C.F.R. §1.125(a) to review Bandl-Konrad’s challenges only with respect to Gandhi remaining Claims 9, 10, 19, 28, 30-35, and 46-49. With respect to these remaining claims, Bandl-Konrad’s arguments against patentability under one or both of 35 U.S.C. §§ 102(b) and 103(a) can be summarized as follows: 5 (1) Claims 9, 19, 30, 32, 33, 35, 46, and 49 are anticipated under 35 U.S.C. § 102(b) by Kinugasa, U.S. Patent No. 6,109,024 (Kinugasa ‘024; Ex. 2004); and (2) Claims 10, 31, 34, and 47 would have been obvious under 35 10 U.S.C. § 103(a) over Kinugasa ‘024 and Twigg, PCT International Application Publication No. WO 00/21647 (Twigg ‘647; Ex. 2013). Paper 32, pp. 5-13 & APPENDIX 3 (claim charts). 15 A. Additional Findings of Fact Kinugasa ‘024 Patent 28. Kinugasa ‘024 issued on August 29, 2000, and as such, qualifies as prior art under 35 U.S.C. §102(b) against both Bandl-Konrad ‘747 patent and 20 Gandhi’s 558 application and its grandparent, Gandhi ‘470 application. Ex. 2004, Kinugasa ‘024. 29. Kinugasa ‘024 discloses an exhaust gas purification system for an internal combustion engine, shown in Fig. 1, capable of removing NOx in the exhaust gas of a lean burn engine with high efficiency. Kinugasa 25 ‘024, col. 1, ll. 9-11; col. 6, ll. 43-46 (diesel fuel); col. 9, ll. 17-19. Fig. 1 is reproduced below. 39 As shown in Fig. 1, the exhaust gas purification system includes in the direction of the exhaust gas flow from engine 1, a three-way catalyst 5, a NOx absorbing-reducing catalyst 7, and a NH3 adsorbing-denitrating catalyst 9. The three-way catalyst 5 is arranged upstream of NOx 5 absorbing-reducing catalyst 7 and NH3 adsorbing-denitrating catalyst 9, as a first exhaust gas treatment component as seen by the direction of flow of exhaust gas. The NH3 adsorbing-denitrating catalyst 9 is arranged downstream of the NOx absorbing-reducing catalyst 7. Ex. 2004, Fig. 1; Ex. 2014, §51. 10 30. The term “three-way catalyst” as used in Kinugasa ‘024 (Ex. 2004) and the term “oxidizing catalytic converter” or “catalytic capable of oxidizing” as used in Claims 9, 30, and 33 of the Bandl-Konrad ‘747 patent (Ex. 1003) are interchangeable and refer to the same technology. Declaration of Oliver Krӧcher, Ph.D., in support of Bandl-Konrad 15 Motion 4 (Paper 32), Ex. 2014, ¶¶51-52. 31. The term “NOx absorbing-reducing catalyst” as used in Kinugasa ‘024 (Ex. 2004) and the term “nitrogen oxide absorber” as used in Claims 9, 30, and 33 of the Bandl-Konrad ‘747 patent (Ex. 1003) are interchangeable and refer to the same technology. Id., ¶¶56-58. 20 40 32. The term “NH3 absorbing-denitrating catalyst” as used in Kinugasa ‘024 (Ex. 2004) and the term “NH3-SCR catalyst” as used in Claims 9, 30, and 33 of the Bandl-Konrad ‘747 patent (Ex. 1003) are interchangeable and refer to the same type of component. Id., ¶¶64-66. 33. Kinugasa ‘024 discloses in the Background of the Invention section that 5 it was known to operate engine cylinders with rich air-fuel ratios. Ex. 2004, Kinugasa ‘024, Background of the Invention. 34. Kinugasa ‘024 further discloses that the fuel injection valves are controlled so that the engine cylinders include alternating lean and rich air-fuel ratios. Ex. 2004, Kinugasa ‘024, Abstract. 10 35. Kinugasa ‘024 discloses that controlling the direct cylinder injection to the engine to generate lean and rich air-fuel ratios teaches both the specific recitation of controlling engine operations, and the broader recitation of lean and rich conditions during lean and rich cycles of Gandhi Claims 9, 30, and 33. Ex. 2004, Kinugasa ‘024, col. 6, ll. 18-26. 15 36. Kinugasa ‘024 discloses that the amount of NOx produced by the engine varies depending upon air intake amount and engine speed. Ex. 2004, Kinugasa ‘024, col. 14, ll. 23-30. 37. Kinugasa ‘024 discloses that the three-way catalyst 5 receives exhaust gas from engine 1 and converts carbon hydrocarbons (HC) and carbon 20 monoxide (CO) contained in the exhaust gas under lean conditions or when the air-fuel ratio becomes lean (λ>1.0). Ex. 2004, Kinugasa ‘024, col. 7, ll. 6-11. 38. Kinugasa ‘024 further discloses that the catalytic material of three-way catalyst 5 is platinum Pt, rhodium Rh or palladium Pd. Ex. 2004, 25 Kinugasa ‘024, col. 7, ll. 4-5 and 39-41. 41 39. In 1994, it was known that with excess oxygen, the three-way catalyst acts as an oxidation catalyst, removing all reducing species (CO, HC). Ex. 2015, M. Shelef, G.W. Graham, Why Rhodium in Automotive Three- Way Catalysts?, Chem. Rev. Sci. Eng. 36(3), 433-457, at 437-48 (1994). Ex. 2014, ¶18. 5 40. Kinugasa ‘024 discloses that NOx absorbing-reducing catalyst 7 (shown in Fig. 1) receives exhaust gas from three-way catalyst 5 and absorbs NOx in the exhaust gas in the form of nitric acid ions when the air-fuel ratio of the exhaust gas is lean (i.e., when the excess air ratio λ is larger than 1.0) and releases the absorbed NOx when the excess air-fuel ratio λ 10 of the exhaust gas flowing the NOx absorbing-reducing catalyst becomes smaller than 1.0 (i.e., the air-fuel ratio becomes rich). Ex. 2004, Kinugasa ‘024, col. 8, ll. 13-20. 41. Accordingly, the disclosure of Kinugasa ‘024 of NOx absorbing-reducing catalyst 7 (shown in Fig. 1) absorbing NOx discloses the storing, 15 temporarily storing, and absorbing functions of the nitrogen oxide absorber and the lean nitrogen oxide absorber as recited in Gandhi Claims 9, 30, and 33. 42. Kinugasa ‘024 also discloses that NOx absorbing-reducing catalyst 7 (shown in Fig. 1) also converts NOx in the exhaust gas to NH3 by a 20 mechanism exactly the same as that of the three-way catalyst. Kinugasa ‘024, col. 8, ll. 61-63. 43. Accordingly, the disclosure of Kinugasa ‘024 of NOx absorbing-reducing catalyst 7 (shown in Fig. 1) converting NOx to NH3 and providing the NH3 downstream discloses the reducing, and purging steps of Gandhi 25 Claims 9, 30, and 33. 42 44. Kinugasa ‘024 discloses that NH3 adsorbing-denitrating catalyst 9 is arranged downstream of the NOx absorbing-reducing catalyst 7 (shown in Fig. 1) to adsorb the generated ammonia (NH3) and use the adsorbed NH3 to reduce NOx in the exhaust gas. Ex. 2004, Kinugasa ‘024, col. 9, ll. 13- 16 and 42-44. 5 45. Accordingly, the disclosure of Kinugasa ‘024 of NH3 adsorbing- denitrating catalyst 9 (shown in Fig. 1) adsorbing NH3 discloses the absorbing and storing NH3 or absorbing in a NH3–SCR catalyst of Gandhi Claims 9, 30, and 33. 46. Accordingly, the disclosure of Kinugasa ‘024 of NH3 adsorbing-10 denitrating catalyst 9 (shown in Fig. 1) reducing NOx using NH3 discloses the reacting step of Gandhi Claims 9, 30, and 33. Twigg ‘647 Application 47. Twigg, PCT International Application Publication No. WO 00/21647 15 (“Twigg ‘647”) discloses a system and method for the control of emissions of a diesel engine exhaust containing CO, HC, NO, O2, soot and non-reactive gases, shown in the sole drawing as reproduced below. 43 As shown in the sole figure of Twigg ‘647, the system comprises a catalyst 14 to convert NO to NO2, a particulate filter 16 to collect particles, and a NOx absorber 28 with means to regenerate the NOx absorber by injecting reductant or other reactant upstream of the NOx 5 absorber, and at least during regeneration, passing the exhaust gases, via a three-way catalyst 30. Ex. 2013, Twigg ‘647; Abstract, p. 3, ll. 6-15, p. 7, ll. 29-30. 48. According to Twigg ‘647, filtering particulate matter is a well-known technique used in exhaust gas purification systems, particularly when 10 these systems are used with engines consuming diesel fuel, such as those disclosed by Kinugasa ‘024. Ex. 2013; Twigg ‘647; Abstract; p. 3, ll. 6- 15; p. 7, ll. 29-30, element 16 in the sole figure; Ex. 2004, Kinugasa ‘024, col. 6, ll. 43-46; also see Bandl-Konrad ‘747 patent, Background Section, col. 3, ll. 28-43. 15 44 Analysis 1. Claim Construction In determining patentability over the prior art, the name of the game is the claim. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Claim terms of an 5 involved patent in an interference are given their broadest reasonable construction as they would be understood by one of skill in the art in light of the specification . Rolls-Royce PLC v. United Technologies Corp., 603 F.3d 1325 (Fed. Cir. 2010). For purposes of a patentability or invalidity challenge under 35 U.S.C. §§ 102 and 103, the copied claims must be interpreted in light of the host disclosure, i.e., 10 Gandhi’s disclosure and file history. Agilent Tech., 567 F.3d at 1375 (“[W]hen a party challenges a claim’s validity under §§ 102 and 103 … the Board must interpret the claim in light of the specification in which it appears”). Paper No. 42, p. 5, ll. 11-14. We will look to Gandhi’s disclosure and file history to see if they provide a 15 definition for claim terms. Otherwise, we give them their “ordinary and customary meaning” in the light of the specification that “the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d at 1313. Neither Beckmann nor Gandhi has alleged that the inventors gave any claim 20 term a special definition different from its recognized meaning to one with ordinary skill. In this case, analysis of the unpatentability assertions depends on the meaning of the claim terms “nitrogen oxide absorber”, “NH3-SCR catalyst,” “oxidizing catalytic converter” or “catalyst capable of oxidizing” as recited in 25 Gandhi Claims 9, 30, and 33 in the context of Gandhi ‘558 application. However, as testified by Dr. Krӧcher, the term “oxidizing catalytic converter” or “catalytic 45 capable of oxidizing” as used in Claims 9, 30, and 33 of the Bandl-Konrad ‘747 patent is interchangeable with the “three-way catalyst” as used in Kinugasa ‘024 and encompasses the same. Ex. 2014, ¶¶51-52; FFs. 5-6, and 30. Similarly, the term “nitrogen oxide absorber” as used in Claims 9, 30, and 33 of the Bandl- Konrad ‘747 patent is interchangeable with the “NOx absorbing-reducing catalyst” 5 as used in Kinugasa ‘024 and refers to the same type of component. Id., ¶¶56-58; FF 31. Likewise, the term “NH3-SCR catalyst” as used in Claims 9, 30, and 33 of the Bandl-Konrad ‘747 patent is interchangeable with the term “NH3 absorbing- denitrating catalyst” as used in Kinugasa ‘024 (Ex. 2004) and refers to the same type of component. Id., ¶¶64-66; FF 32. For purposes of this decision we proceed 10 on the basis of Dr. Krӧcher’s testimony, which has not been sufficiently rebutted by Gandhi. 2. Legal Standard for 35 U.S.C. §102(b) and §103(a) 15 In order to find anticipation under 35 U.S.C. §102(b), a single prior art reference must disclose each and every element of a claim, either expressly or inherently. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354, 1365 (Fed. Cir. 1999). As the moving party, Bandl-Konrad bears the burden of proof to establish entitlement to the relief 20 requested. 37 C.F.R. § 41.121(b). A patent claim is also unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 25 pertains. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations 46 including: (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). Beckmann’s expert, Dr. Krӧcher has determined, and Gandhi has not 5 rebutted, the appropriate level that someone of ordinary skill in the art of exhaust gas purification systems for internal combustion engines would have, that is, a bachelor’s degree in chemistry, mechanical engineering, automotive engineering, or chemical engineering and seven years’ work experience in the field, or a master’s degree in chemistry, mechanical engineering, automotive engineering, or 10 chemical engineering and five years’ work experience in the field. Ex. 2014, ¶11. Rather, Gandhi’s expert, Dr. Harold considers that a person skilled in the art to have at least 2 years of laboratory experience conducting catalyst research. Ex. 1001, ¶9; Ex. 1030, ¶46. 15 3. Gandhi Claims 9, 19, 30, 32, 33, 35, 46, 48 and 49 as Anticipated by Kinugasa ‘024 Gandhi Claim 9 defines a method for the reduction of nitrogen oxides and 20 ammonia from diesel engine exhaust gas, said method comprising: storing nitrogen oxides present in the exhaust gas in a nitrogen oxide absorber during lean cycles with a lean exhaust gas air ratio; reducing stored nitrogen oxides from the nitrogen oxide absorber during rich pulses, which contain a rich exhaust gas air ratio, 25 and thereby generating ammonia; adsorbing and storing ammonia in a NH3-SCR catalyst arranged downstream of the nitrogen oxide absorber; reacting the stored ammonia with nitrogen oxides in the NH3- SCR catalyst; 30 operating the engine under lean conditions during lean cycles; 47 during lean cycles, oxidizing carbon monoxide and hydrocarbons contained in the exhaust gas in an oxidizing catalytic converter arranged upstream of the nitrogen oxide absorber and NH3- SCR catalyst; operating the engine under rich conditions during rich cycles. 5 Ex. 2002; Gandhi ‘558 application, Claim 9 (emphasis added). Gandhi Claim 33 is similar to Claim 9 in scope of coverage, except that a generic “catalyst capable of oxidizing” is recited instead of “an oxidizing catalytic converter” as recited in Gandhi Claim 9. In contrast, Gandhi Claim 30 is broader 10 in scope than Gandhi Claim 9 and does not contain limitations regarding the operation of the engine under lean conditions during lean cycles and under rich conditions during rich cycles. Likewise, Gandhi Claims 19 and 46 are also similar to Claim 9 in scope, except that an oxidizing catalytic converter or a catalyst arranged as “a first 15 exhaust gas aftertreatment component, as seen in the direction of flow of the exhaust gas” is recited. As expressly defined in Gandhi Claims 9, 19, 30, 33 and 46, there are several operative steps, including: Using an oxidizing catalytic converter or a catalyst arranged as a 20 first exhaust gas aftertreatment component upstream from a nitrogen oxide catalytic converter and a NH3-SCR converter, to oxidize carbon monoxide (CO) and hydrocarbons (HC); Using the nitrogen oxide catalytic converter to adsorb/store/reduce 25 nitrogen oxides (NOx) and generate ammonia (NH3); Using an SCR catalytic converter arranged downstream from the nitrogen oxide catalytic converter, to adsorb/store/reduce ammonia (NH3) released by the nitrogen oxide catalytic converter; and 30 Operating the engine under lean and rich conditions. 48 Ex. 2002; Gandhi ‘558 application, Claims 9, 30, and 33. Gandhi Claims 32, 35, and 48 depend upon Claims 30, 33, and 46 respectively, and further comprise: “oxidizing a portion of NO in the exhaust gas to NO2 in a catalyst disposed upstream of the NH3-SCR catalyst.” 5 Ex. 2002; Gandhi ‘558 application, Claims 32, 35, and 48. Gandhi Claim 49 depends upon Claim 9, and further comprises: “reacting NO to NO2 upstream of the NH3-SCR catalyst.” Ex. 2002, Gandhi ‘558 application, Claim 49. 10 In Bandl-Konrad Motion 4 (Paper 32), Bandl-Konrad contends that each and every element of Gandhi Claims 9, 19, 30, 32, 33, 35, 46, 48 and 49 is described or disclosed, either explicitly or inherently, by Kinugasa ’024. Kinugasa ‘024 is said to “anticipate” the invention of Gandhi Claims 9, 19, 30, 32, 33, 35, 46, 48 and 49. Specifically, Bandl-Konrad contends that Kinugasa ‘024 discloses an 15 exhaust gas purification system for an internal combustion engine capable of removing NOx in the exhaust gas of a lean burn engine with high efficiency. Kinugasa ‘024, col. 1, ll. 9-11; col. 6, ll. 43-46 (diesel fuel); col. 9, ll. 17-19. Fig. 1 of Kinugasa ‘024 is reproduced below. 20 49 As shown in Fig. 1, the exhaust gas purification system includes in the direction of the exhaust gas flow from engine 1, a three-way catalyst 5, a NOx absorbing-reducing catalyst 9, and a NH3 adsorbing-denitrating catalyst 9. The three-way catalyst 5 is arranged upstream of NOx absorbing-reducing catalyst 9 and NH3 adsorbing-denitrating catalyst 9 as a first exhaust gas treatment 5 component as seen by the direction of flow of exhaust gas. The NH3 adsorbing- denitrating catalyst 9 is arranged downstream of the NOx absorbing-reducing catalyst 9. Ex. 2004, Fig. 1; Ex. 2014, §51; FF 29. Bandl-Konrad proffers detailed explanations and analyses regarding how each element of Claims 9, 19, 30, 32, 33, 35, 46, 48, and 49 of Gandhi ‘558 10 application is met by Kinugasa ‘024, as set forth in the claim charts attached as APPENDIX 3 – Attachments A, E, F, H, I, O, J, K, P and Q. Paper 32, pp. 5-13 & APPENDIX 3 (claim charts); FFs. 28-46. We find Bandl-Konrad’s explanations regarding Gandhi Claims 9, 19, 30, 32, 33, 35, 46, 48, and 49 persuasive and supported by the record. Gandhi has not 15 proffered a rebuttal to Bandl-Konrad’s assertions regarding Kinugasa ‘241. In the absence of Gandhi’s opposition, we conclude that Bandl-Konrad has demonstrated by a preponderance of the evidence that Claims 9, 19, 30, 32, 33, 35, 38, 46, 48, and 49 of Gandhi’s involved application are unpatentable under 35 U.S.C. § 102(b) as being anticipated by Kinugasa ‘024. 20 Gandhi Claims 10, 31, 34 and 47 as Rendered Obvious by Kinugasa ‘024 and Twigg ‘647 Gandhi Claims 10, 31, 34 and 47 depend upon independent Claims 9, 30, 33 25 and 46, respectively, and further comprise “filtering particulate matter in the exhaust gas.” Ex. 2002, Gandhi ‘558 application, Claims 10, 31, 34, and 47 (emphasis added). 50 In Bandl-Konrad Motion 4 (Paper 32), Bandl-Konrad contends, as confirmed by Dr. Krӧcher’s testimony (Ex. 2009), that filtering particulate matter is a well-known technique used in exhaust gas purification systems, particularly when these systems are used with engines consuming diesel fuel, such as those disclosed by Kinugasa ‘024, col. 6, ll. 43-46; Ex. 2013, Twigg ‘647; Abstract, p. 3, 5 ll. 6-15, p. 7, ll. 29-30, element 16 in the sole figure; Ex. 2004; Bandl-Konrad ‘747 patent, Background Section, col. 3, ll. 28-43; FFs. 7-14, and 28-48. Bandl-Konrad also proffers detailed explanations and analyses regarding the differences between Claims 10, 31 and 34 of Gandhi ‘558 application and the combination of Kinugasa ‘024 and Twigg ‘647, as set forth in the claim charts 10 attached as APPENDIX 3 – Attachments D, G, I and L. We find Bandl-Konrad’s explanations regarding Gandhi Claims 10, 31, 34 and 47 persuasive and supported by the record. Again, Gandhi has not proffered a rebuttal to Bandl-Konrad’s assertions regarding Kinugasa ‘241. In the absence of Gandhi’s opposition, we conclude that modifying Kinugasa ‘024 with the well-15 known “filtering” technique of Twigg ‘647 to filter particulate matter in the exhaust gas (without more) would involve nothing more than an obvious combination of prior art elements according to known methods to yield predictable results. Thus, based on this record, we hold that Bandl-Konrad has shown by a 20 preponderance of the evidence that Claims 10, 31, 34, and 47 of Gandhi ‘558 application are unpatentable under 35 U.S.C. § 103(a) as rendered obvious over Kinugasa ‘024 and Twigg ‘647. Lastly, we note that Bandl-Konrad has not presented arguments against patentability of Gandhi Claim 28. However, Gandhi Claim 28 depends upon 25 independent Claim 19, and contains similar features of Gandhi Claims 32, 35, 48, and 49. For example, Gandhi Claims 32, 35, and 48 further recite “oxidizing a 51 portion of NO in the exhaust gas to NO2 in a catalyst disposed upstream of the NH3-SCR catalyst.” Gandhi Claim 49 further recites “reacting NO to NO2 upstream of the NH3-SCR catalyst.” Ex. 2002, Gandhi ‘558 application, Claims 32, 35, 48, and 49 (emphasis added). As previously noted, both Gandhi independent Claim 19 and dependent 5 Claims 35, 48, and 49 are found anticipated by Kinugasa ‘024 as Kinugasa ‘024 discloses a three-way catalyst 5 disposed upstream of NOx absorbing-reducing catalyst 7 and NH3 absorbing-denitrating calalyst 9, to oxidize (or react) a portion of NO in the exhaust gas to NO2 under lean conditions. Kinugasa ‘024, col. 8, ll. 13-20; FFs. 40-46. As shown in Fig. 1 of Kinugasa ‘024, the NO2 is formed during 10 the passage of the exhaust gas through the NOx absorbing-reducing catalyst 7, and the NO2 ratio of nitrogen oxides in the exhaust gas would necessarily increase. Similarly to Gandhi independent Claim 19 and dependent Claims 35, 48, and 49, Gandhi Claim 28 alternatively recites “enhancing an NO2 ratio of the nitrogen oxides in the exhaust gas by means of a catalytic oxidation with an NO2 producing 15 catalytic converter disposed upstream of the SCR catalytic converter.” Ex. 2002, Gandhi ‘558 application, Claim 28 (emphasis added). We see no practical difference between the subject matter of Gandhi Claims 35, 48, and 49 and Gandhi Claim 28 with respect to patentability. As such, Gandhi Claim 28 appears to have been inadvertently omitted from Bandl-Konrad Motion 4 (Paper 32). For purposes 20 of completeness, we construe Gandhi Claim 28 as being included in Bandl- Konrad’s arguments against patentability of Gandhi Claims 19, 32, 35, 48, and 49. Consequently, we find that one skilled in the art would have recognized that the NO2 ratio of the nitrogen oxides in the exhaust gas could have been enhanced by way of disposing an NO2 producing catalytic converter, and conclude that it 25 would have been obvious to make such an enhancement by means of a catalytic 52 oxidation with an NO2 producing catalytic converter disposed upstream of the SCR catalytic converter.” In summary, for the reasons discussed above, we hold that Bandl-Konrad has shown that Gandhi Claims 9, 10, 19, 28, 30-35, and 46-49 of Gandhi ‘558 application are unpatentable under 35 U.S.C. §§ 102(b) and 103(a) as being 5 anticipated or rendered obvious over Kinugasa ‘024 and Twigg ‘647. 4. Presumption Under 37 C.F.R. §41.207(c) A party moving for judgment based on prior art must also explain why the 10 prior art does not apply to the party’s claims. See Navarrini v. Worm, 79 USPQ2d 1178, 1183 (BPAI 2005). Specifically, 37 C.F.R. §41.207(c) states: “When a motion for judgment of unpatentability against an opponent’s claim on the basis of prior art is granted, each of the movant’s claims corresponding to the same count as the opponent’s 15 claim will be presumed to be unpatentable in view of the same prior art unless the movant in its motion rebuts this presumption.” Initially, Bandl-Konrad provided no explanation why Bandl-Konrad’s involved claims are not unpatentable over the prior art cited in Bandl-Konrad 20 Motion 4 (Paper 32). See 37 C.F.R. §41.207(c). Subsequently, Bandl-Konrad counsel explained that the omission was an inadvertent error and requested correction of such an error in its replies to Gandhi’s opposition, which was granted in the April 30, 2012 Order (Paper 45). 15 15 Typically, a reply that raises a new issue will not be considered. SO ¶122.5. However, Bandl-Konrad’s belated request to address the presumption was not opposed by Gandhi and Gandhi was authorized to file a Sur-Reply in response thereto, which was granted in the April 30, 2012 Order (Paper 45). 53 In Bandl-Konrad Reply 4 (Paper 49), Bandl-Konrad explains why Claims 1- 8, 10, 15-17, and 19 of Bandl-Konrad ‘747 patent are not unpatentable over the same prior art. However, we note that Bandl-Konrad has failed to rebut the presumption regarding Claims 9, 11-14, and 18 of Bandl-Konrad ‘747 patent. In particular, Bandl-Konrad has not explained why Claims 9, 11-14, and 18 of Bandl-5 Konrad ‘747 patent are not unpatentable over the same prior art, and has even admitted that Claim 9 is unpatentable over the same prior art cited in Bandl- Konrad Motion 4 (Paper 32) including Kinugasa ‘024 and Twigg ‘647. Paper 49, p. 2. Therefore, in view of Bandl-Konrad’s own admission, we hold that Bandl- Konrad has failed to rebut the presumption under 37 C.F.R. §41.207(c) and that 10 Claims 9, 11-14, and 18 of Bandl-Konrad ‘747 patent are unpatentable over the same prior art cited therein. Rather, Bandl-Konrad presents arguments for patentability of Bandl-Konrad Claims 1-8, 10, 15-17, and 19 by way of Dr. Oliver Krӧcher’s testimony, Ex. 2025, Supplemental Declaration of Oliver Krӧcher, Ph.D., in support of Bandl-Konrad 15 Motion 4, ¶4, that none of the cited prior art, including Kinugasa ‘024 and Twigg ‘647 – either alone or in combination – discloses or suggests: (1) a “particulate filter” arranged in a specific order, i.e., “upstream of the SCR catalytic converter and downstream of the nitrogen oxide storage catalytic converter,” as recited in Bandl-Konrad Claims 1-8 and 19; 20 (2) “filtering out particulates in the exhaust gas with a particulate filter arranged downstream of the nitrogen oxide storage catalytic converter and guiding filtered exhaust gas to the SCR catalytic converter” as recited in Bandl-Konrad Claims 10, 16, and 17; and 25 (3) “hydrogen sulfide formed during the desulfation phases is oxidized by the SCR catalytic converter” as recited in Bandl-Konrad Claim 15. 30 Paper 49, p. 3; Bandl-Konrad ‘747 patent, Claims 1-8, 10, 15-17, and 19. 54 We find Bandl-Konrad’s explanations regarding Bandl-Konrad Claims 1-8, 10, 15-17, and 19 persuasive and supported by the record. Bandl-Konrad has established that the presumption does not apply to Claim 1-8, 10, 15-17 and 20 of Bandl-Konrad ‘747 patent. In response thereto, Gandhi contends, in its Sur-Reply (Paper 51), that 5 Claims 1-8, 10, 16, 17, and 19 of Bandl-Konrad ‘747 patent are unpatentable over the same prior art, including Kinugasa ‘024 and Twigg ‘647 for two reasons: First, Gandhi asserts that Bandl-Konrad has admitted that it would be obvious to add a particulate filter as taught by Twigg ‘647 to the system disclosed by Kinugasa ‘024 (Ex 2014, ¶¶80-81). Paper 51, p. 3. Second, Gandhi argues that, given Dr. 10 Krӧcher’s contention that there are only a small, finite number of possible locations where a person of skill in the art could add a separate and distinct particulate filer to the system disclosed by Kinugasa ‘024 (Ex. 1037, ¶7; Ex. 1035, page, 30, ll. 5-14), it would have been obvious to add a separate and distinct particulate filter to any one of the small number of possible locations in the system 15 disclosed by Kinugasa ‘024. DyStar Textilfarben GmbH & Co. Deutschland KG v., 464 F.3d at 1366, 80 USPQ2d at 1649 (motivation may be found in the knowledge of one skilled in the art). Paper 51, pp. 3-4. However, we are not so persuaded by Gandhi’s countervailing arguments. First, Gandhi’s assertion regarding Bandl-Konrad’s admission is misplaced. The 20 cited ¶¶80-81 of Exhibit 2014, Dr. Krӧcher’s Declaration in support of Bandl- Konrad Motion 4 (Paper 32) simply refers to the well-known “filtering” technique used in exhaust gas purification systems as discussed in connection with Gandhi Claims 10, 31, 34, and 47 and that modifying Kinugasa ‘024 with the well-known “filtering” technique as disclosed, for example, by Twigg ‘647 to filter the 25 particulate filter (without more) would involve nothing more than an obvious 55 combination of prior art elements according to known methods to yield predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). In contrast to Gandhi Claims 10, 31, 34, and 47, Claims 1-8, 10, 16, 17 and 19 of Bandl-Konrad ‘747 patent require, among other features, a specific arrangement of a particulate filter, i.e., “arranged upstream of the SCR catalytic 5 converter and downstream of the nitrogen oxide storage catalytic converter.” Ex. 2001; Bandl-Konrad ‘747 patent, Claims 1 and 10. Nowhere in Dr. Krӧcher’s testimony (Ex. 2014) is there any admission regarding the specific arrangement of Bandl-Konrad’s claimed “particulate filter arranged upstream of the SCR catalytic converter and downstream of the nitrogen oxide storage catalytic converter,” as 10 recited in Bandl-Konrad Claims 1 and 10. Second, neither Kinugasa ‘024 nor Twigg ‘647, whether taken in combination or individually, discloses or suggests the specific arrangement of gas exhaust aftertreatment components of Bandl-Konrad’s claimed “installation” including a “particulate filter arranged upstream of the SCR catalytic converter and 15 downstream of the nitrogen oxide storage catalytic converter.” As such, there is no basis or articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Gandhi further contends that Bandl-Konrad Claim 15 is unpatentable over Kinugasa ‘024 and Twigg ‘647 because Claim 15 is merely claiming the inherent 20 function of a SCR catalyst as disclosed by Kinugasa ‘024. Again, we are not so persuaded by Gandhi’s inherency arguments. To establish inherency, evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. In re Robertson, 169 25 F.3d 743, 745 (Fed. Cir. 1999); see also Transclean Corp. v. Bridgewood Serv. Inc., 290 F.3d 1346, (Fed. Cir. 2002). "Inherency . . . may not be established by 56 probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." Schering Corp. v. Geneva Pharmaceuticals, 339 F.3d 1373 (Fed. Cir. 2000). Here, Gandhi has the burden to establish that the limitation of Claim 15 was necessarily present in Kinugasa ‘024 and Twigg ‘647, and he has not done so. Gandhi’s sole reference to the Shin 5 Article to support an assertion that “it was well known in the art that various metal oxides such as vanadia (V2O5) were effective at catalyzing the oxidation of H2S” is neither sufficient nor inherent within Gandhi Claim 15. Ex. 1027, Shin Article, pages 410, 413 (see Table); Ex. 1037, ¶16. For the reasons discussed above, we hold that Bandl-Konrad has failed to 10 rebut the presumption under 37 C.F.R. §41.207(c) regarding Claims 9, 11-14, and 18 of Bandl-Konrad ‘747 patent, and, as such, Claims 9, 11-14, and 18 of Bandl- Konrad ‘747 patent are presumed unpatentable over Kinugasa ‘024 and Twigg ‘647. However, we also hold that Bandl-Konrad has established that the presumption does not apply to Claim 1-8, 10, 15-17 and 20 of Bandl-Konrad ‘747 15 patent. V. GANDHI SUBSTANTIVE MOTION 1 (PAPER 26) SEEKING ENTRY OF JUDGMENT AGAINST BANDL-KONRAD BASED ON AN ALLEGED LACK OF PATENTABILITY UNDER 35 U.S.C. §§ 102 & 103 20 In its Substantive Motion 1 (Paper 26), Gandhi moves for judgment that Claims 1-19 of Bandl-Konrad ‘747 patent are unpatentable over the prior art under one or both of 35 U.S.C. §§ 102(e) and 103(a). Gandhi bears the burden of proof on this matter. 25 In light of our decision regarding unpatentability of Bandl-Konrad Claims 9, 11-14, and 18, we only need to address Gandhi’s motion with respect to Bandl- Konrad remaining Claims 1-8, 10, 15-17 and 19. With respect to the remaining 57 Claims 1-8, 10, 15-17 and 19 of Bandl-Konrad ‘747 patent in this interference, Gandhi’s arguments against patentability under 35 U.S.C. § 103(a) can be summarized as follows: (1) Bandl-Konrad Claims 1, 4, 5, 7, and 10 would have been obvious over Gandhi grandparent application, Gandhi ‘470 5 application and Khair ‘096; (2) Bandl-Konrad Claims 2, 3, 6, 8, 16, 17, and 19 recite additional well-known limitations and would have been obvious over Gandhi ‘470 application and Khair ‘096 in view of the knowledge of a 10 skilled artisan as represented by several other prior art references; 16 and (3) Bandl-Konrad Claim 15 would have been obvious over Gandhi ‘470 application and an article entitled “Claus Catalysis and 15 H2S Selective Oxidation” by Anne Pieplu (“Pieplu Article”) (Ex. 1014). Paper 26, pp. 1-17 & APPENDIX 1 (claim charts). 20 A. Additional Findings of Fact Gandhi ‘470 Application 49. Gandhi ‘470 application, the grandparent application of Gandhi’s involved application (Gandhi ‘558 application), discloses the same 25 16 The additional prior art cited by Gandhi Motion 1 (Paper 26) includes Khair, U.S. Patent No. 6,293,096 (“Khair ‘096”; Ex. 1006), Cooper, U.S. Patent No. 4,902,487 (“Cooper ‘487”; Ex. 1007), Andreasson, WO Patent Application Pub. No. 99/39809 (“Andreasson WO ‘809”; Ex. 1008), Boegner, U.S. Patent No. 6,170,259 (“Boegner ‘259”; Ex. 1010), Gray, U.S. Patent Application Pub. No. 2001/0045090 (“Gray ‘090”; Exhibit 1011), Kolmanovsky, U.S. Patent No. 6,347,512 (“Kolmanovsky ‘512”; Ex. 1012), Kaneko, U.S. Patent No. 7,127,883 (“Kaneko ‘883”; Ex.1013), Kuenstler, U.S. Patent No. 6,594,990 (“Kuenstler ‘990”; Ex.1015) and Pfeiffer, U.S. Patent Application Pub. No. 2002/0054844 (“Pfeiffer ‘844”; Ex. 1016). 58 catalyst system, shown in Fig. 2, capable of simultaneously eliminating ammonia emissions and improving net NOx conversion. Gandhi ‘470 application, ¶[0033]. Fig. 2 is reproduced below. As shown in Fig. 2, the catalyst system includes a lean NOx trap and an 5 NH3-SCR catalyst. As expressly described by Gandhi ‘470 application: “The advantage of the catalyst system of this invention is the use of a combination of a lean NOx trap and an NH3- SCR catalyst. The use of a lean NOx trap in the present system allows for much greater storage of NOx, because 10 the NOx breakthrough that would otherwise happen can be controlled by the NH3-SCR catalyst. Additionally, the use of a lean NOx trap as part of this system allows for the operation of the engine at lean conditions for a longer time, and thus provides improved fuel economy . . . . 15 Thus the combination of a lean NOx trap and NH3-SCR catalyst allows for significant NOx storage and ammonia production and thus increases net NOx conversion.” Ex. 1005; Gandhi ‘470 application, ¶[0044] (emphasis added). 20 50. In a preferred embodiment of Gandhi ‘470 application, the combination of a lean NOx trap and an NH3-SCR catalyst (shown in Fig. 2) is implemented as an adjacent or alternating lean NOx trap and NH3-SCR catalyst zones arranged on a single substrate or a single catalytic converter can, as shown in Figs. 4a-4c (reproduced below). 25 59 Ex. 1005; Gandhi ‘470 application, ¶¶45-47; Figs. 4a-4c. 51. In another preferred embodiment of Gandhi ‘470 application, the combination of a lean NOx trap and an NH3-SCR catalyst (as shown in Fig. 2) is implemented as a lean NOx trap washcoat and an NH3-SCR 5 washcoat applied to a single substrate, as shown in Figs. 7a-7c (reproduced below). As shown in Figs. 7a-7b, the lean NOx trap washcoat and NH3-SCR washcoat are formed on the bottom and top layer of a substrate, 10 respectively. In contrast, Fig. 7c involves the use of a one layer washcoat containing both lean NOx trap and NH3-SCR washcoat formulations. Ex. 1005; Gandhi ‘470 application, ¶¶[0051]-[0052]; Figs. 7a-7c. 52. In the context of the washcoat arrangement shown in Figs. 7a-7c, Gandhi ‘470 application also describes that: 15 60 “The invention also contemplates engineering such combinations within the pores of the monolithic substrate. An example of this is incorporating washcoat into porous substrates used for filtering diesel particulate matter. Thus, this lean NOx trap/NH3-SCR catalyst concept can be integrated into 5 diesel particulate matter devices.” Ex. 1005; Gandhi ‘470 application, ¶[0053] (emphasis added). 53. In an alternative embodiment of Gandhi ‘470 application, “three-way” catalysts are also utilized to improve net NOx conversion, eliminate NH3 10 emissions and reduce catalyst costs, shown in Fig. 9 (reproduced below). As shown in Fig. 9, a first three-way catalyst 14 is positioned in close proximity to the engine 12 to reduce cold start emissions; a second three- way catalyst 16 is modified to enhance the ability of the second three-15 way catalyst 16 to generate NH3 emissions; and an NH3-SCR catalyst 18 is arranged downstream of the second three-way catalyst 16 to store NH3 produced for reaction with NOx emissions in order to reduce both NOx and NH3 emissions. In other words, a three-way catalyst 14 can be disposed upstream of a lean NOx trap/NH3-SCR system. Ex. 1005; 20 Gandhi ‘470 application, ¶[0060]. 61 Khair ‘096 Patent 54. Khair, U.S. Patent No. 6,293,096 (“Khair ‘096”) issued on September 25, 2001, and as such, qualifies as prior art under 35 U.S.C. §102(b) against Bandl-Konrad ‘747 patent. Ex. 1006; Khair ‘096. 55. Khair ‘096 discloses an exhaust gas multiple stage aftertreatment system 5 for reducing the amount of nitrogen oxide (NOx) and particulate matter in engine exhaust gases, and includes a first stage to oxidize NO to NO2, a second stage to reduce a portion of NO2 to N2, and a third stage to further reduce a remaining portion of the NO2 to N2 and oxide carbon to CO2. Ex. 1006; Khair ‘096, col. 1, ll. 5-12. 10 56. In a first preferred embodiment of Khair ‘096, shown in Fig. 1, the multiple stage aftertreatment system “effectively combines the functions of a CRT (catalytically regenerated trap), a LNT (lean NOx trap) and a carbon trap in a single system for the reduction of both NOx (nitrogen oxides) and PM (particulate matter) emissions.” Ex. 1006; Khair ‘096, 15 col. 4, ll. 5-9 (emphasis added). Fig. 1 of Khair ‘096 (annotated version) is reproduced below: As shown in Fig. 1, the first stage 10 has an inlet 12 adapted to receive exhaust gases from an internal combustion engine, such as a 20 62 diesel engine, and includes an oxidation catalyst 14 to oxidize components of the NOx to form nitrogen oxide (NO2) and discharge a gaseous stream that contains nitrogen oxide (NO2) and particulate matter. Khair ‘096, col. 2, ll. 42-50; col. 4, ll. 21-37. The second stage 20 contains a lean NOx trap (LNT) 22 to reduce a portion of NO2 to N2 and 5 O2, and a bypass 24. Ex. 1006; Khair ‘096, col. 4, ll. 38-53. The third stage 30 includes a carbon trap 32 such as a ceramic cordierite wallflow trap (i.e., particulate filter) to further reduce a remaining portion of the NO2 to N2 and oxide carbon to CO2. Ex. 1006; Khair ‘096, col. 4, ll. 4- 18. 10 57. According to the first preferred embodiment of Khair ‘096, the carbon trap 32 or so called “particulate filter” is arranged downstream of the lean NOx trap 22. Ex. 1006; Khair ‘096, Fig. 1. 58. In a second preferred embodiment of Khair ‘096, as shown in Fig. 2 (annotated version) reproduced below: 15 As shown in Fig. 2, the lean NOx trap 122 and the carbon trap [oxidizer] 132 are reversed with respect to their respective positions in the first embodiment shown in Fig. 1. However, the desirable reduction in 63 both NOx and particulate matter in the exhaust emission stream remain the same relative to Fig. 1. Ex. 1006; Khair ‘096, col. 5, ll. 53-59 (emphasis added). 59. According to the second preferred embodiment of Khair ‘096, the carbon trap 132 or so called “particulate filter” is arranged downstream of the 5 oxidation catalyst 114 and upstream of the lean NOx trap 122. Ex. 1006; Khair ‘096, Fig. 2. Kaneko ‘883 60. Kaneko, U.S. Patent No. 7,127,883 (“Kaneko ‘883”) (Ex. 1013) discloses 10 an exhaust gas purifying apparatus of an internal combustion engine in which fuel injection is controlled to raise the exhaust gas temperature for periodically performing a desulfation operation. Ex. 1013; Kaneko ‘883, col. 15, ll. 23-46. 15 Pieplu Article 61. Article entitled “Claus Catalysis and H2S Selective Oxidation” by Anne Pieplu (“Pieplu Article”) (Ex. 1014) discloses that catalysts are used to oxidize, during a desulfation, hydrogen sulphide (H2S) present in the exhaust gas and that it was well known in the art that various materials 20 such as activated carbons, zeolites, silica, alumina, and other metal oxides were effective at catalyzing the oxidation of H2S. Ex. 1014, Peiplu Article, pages 437-439. 64 Analysis 1. Bandl-Konrad Claims 1 and 10 as Patentably Distinguishable over Gandhi ‘470 application and Khair ‘096 5 Bandl-Konrad Claim 1 defines an installation for aftertreatment of exhaust gas generated by a diesel engine of a motor vehicle, said installation comprising: a nitrogen oxide storage catalytic converter configured for temporarily storing nitrogen oxides contained in the exhaust gas during adsorption operating phases with a lean exhaust gas air ratio 10 and, releasing and reducing stored nitrogen oxides during regeneration operating phases with a rich exhaust gas air ratio; an SCR catalytic converter arranged downstream of the nitrogen oxide storage catalytic converter, said SCR catalytic converter being configured to receive and store ammonia generated by 15 the nitrogen oxide storage catalytic converter, and to reduce nitrogen oxides in the exhaust gas with the stored ammonia; a particulate filter arranged upstream of the SCR catalytic converter and downstream of the nitrogen oxide storage catalytic converter; and 20 an oxidation catalytic converter arranged as a first exhaust gas aftertreatment component, as seen in the direction of flow of the exhaust gas. Ex. 1003, Bandl-Konrad Claim 1 (emphasis added). 25 Bandl-Konrad Claim 10 depends upon Claim 9 and recites similar limitations of Claim 1, i.e., “further comprising filtering out particulates in the exhaust gas with a particulate filter arranged downstream of the nitrogen oxide storage catalytic converter and guiding filtered exhaust gas to the SCR catalytic converter.” Ex. 1003, Bandl-Konrad Claim 10 (emphasis added). 30 In order to establish a prima facie case of obviousness, Gandhi must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in 65 the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). However, “rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) cited with approval in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 5 (2007). In Gandhi Substantive Motion 1 (Paper 26), Gandhi acknowledges that Gandhi ‘470 application does not disclose a separate “particulate filter” component located between two separate lean NOx trap and SCR catalyst, i.e., a “particulate filter arranged upstream of the SCR catalytic converter and downstream of the 10 nitrogen oxide storage catalytic converter,” as recited in Bandl-Konrad Claim 1, and similarly recited in Claim 10. Paper 26, p. 9. Gandhi even admits that Gandhi ‘470 application only discloses filtering in the context of using washcoats into a porous substrate for filtering particulate matter, shown in Figs. 7a-7c. Ex. 1005; Gandhi ‘470 application, p. 5, ¶[0053]; Ex. 1001, ¶29; FFs 49-53. 15 Nevertheless, Gandhi, relying solely on Dr. Harold’s testimony, argues that “it would have been obvious to place a particulate filter between the Lean NOx Trap and SCR Catalyst taught in Gandhi in view of Khair ‘096” and “it would have been obvious ... to place an SCR Catalyst downstream of an oxidizing catalyst – Lean NOx Trap – Particulate Filter configuration disclosed in Khair ‘096 to further 20 remove NOx from the exhaust gas using reductant stored in the SCR Catalyst.” Paper 29, pp. 9-11; Ex. 1001, ¶¶27-30. We are not persuaded by Gandhi’s arguments against patentability of Bandl- Konrad Claims 1 and 10. Nor do we find Dr. Harold’s testimony sufficient in terms of specific facts as to why a person of ordinary skill in the art would 25 incorporate teachings of Khair ‘096 (Ex. 1006; FFs 54-59) into a catalyst system of 66 Gandhi ‘470 application (Ex. 1005; FF 49-53) in order to arrive at the invention of Bandl-Konrad Claims 1 and 10 (Ex. 2001; FFs 15-27). First of all, Gandhi ‘470 application discloses a catalyst system, shown in Fig. 2, using a combination of a lean NOx trap and NH3-SCR catalyst. Ex. 2001; Gandhi ‘470 application, ¶44; FF 49. In a first preferred embodiment of Gandhi 5 ‘470 application, the combination of a lean NOx trap and a NH3-SCR catalyst is implemented as alternating lean NOx trap and NH3-SCR catalyst zones arranged on a single substrate or a single catalytic converter can, shown in Figs. 4a-4c (reproduced below). 10 Ex. 1005, Gandhi ‘470 application, ¶¶45-47; Figs. 4a-4c; FF 50. In a second preferred embodiment, the combination of a lean NOx trap and a NH3-SCR catalyst is implemented as a lean NOx trap washcoat and an NH3-SCR washcoat applied to a single substrate, shown in Figs. 7a-7c (reproduced below). 67 Ex. 1005; Gandhi ‘470 application, ¶¶51-52; Figs. 7a-7c; FF 51. In connection with the second preferred embodiment shown in Figs. 7a-7c, Gandhi ‘470 application already discloses “filtering: in the context of using washcoats in a porous substrate for filtering particulate matter. As such, we 5 disagree with Dr. Krӧcher’s characterization that: “it would not be possible to arrange a particulate filter upstream of the NH3-SCR washcoat and downstream of the lean NOx trap (LNT) washcoat because the washcoats are not arranged upstream or downstream from one another, but instead are arranged in layers 10 running parallel to the exhaust gas flow from the engine to the tailpipe.” Paper 31, pp. 6-8; Ex. 2009, ¶61; Ex. 2018, ¶31. 15 The dispositive question is whether it would have been obvious for a person skilled in the art to arrange a particulate filter upstream of the NH3-SCR washcoat and downstream of the lean NOx trap (LNT) washcoat, shown in Figs. 7a-7c of Gandhi ‘470 application. On that question, Gandhi has provided no evidence to support these assertions apart from mere conclusory statements. It is well settled 20 that mere lawyer’s arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). 68 Based on this record, we see no reason for one skilled in the art to incorporate any additional layer of particulate filter as disclosed by Khair ‘096 in the manner suggested by Bandl-Konrad. Paper 37, pp. 7-11. With respect to the first preferred embodiment shown in Figs. 4a-4c, Gandhi ‘470 application does not disclose arranging any particulate filter in connection 5 with alternating lean NOx trap and NH3-SCR catalyst zones on a single substrate. As a secondary reference, Khair ‘096 does not cure the deficiencies of Gandhi ‘470 application in order to arrive at Bandl-Konrad Claims 1 and 10 and their respective dependent Claims 2-8, 16-17 and 19. Contrary to Gandhi’s assertion, Khair ‘096 simply discloses the arrangement of a carbon trap 32, 132 or 10 the so called “particulate filter” either downstream of the lean NOx trap 22 (Ex. 1006; Khair ‘096, Fig. 1) or downstream of the oxidation catalyst 114 but upstream of the lean NOx trap 122 (Ex. 1006; Khair ‘096, Fig. 2). Khair ‘096 does not disclose or suggest a separate “particulate filter” component located between a lean NOx trap and an SCR catalyst, i.e., a “particulate filter arranged upstream of the 15 SCR catalytic converter and downstream of the nitrogen oxide storage catalytic converter,” as recited in Bandl-Konrad Claim 1, and similarly recited in Claim 10. Ex. 1006; Khair ‘096, FFs 49-54. Even if the particulate filter as disclosed by Khair ‘096 can be arranged either downstream of the lean NOx trap 22 or upstream of the lean NOx trap 122 20 and, as such, can be combined with alternating lean NOx trap and NH3-SCR catalyst zones on a single substrate, shown in Figs. 4a-4c of Gandhi ‘470 application, we conclude that the combination of Gandhi ‘470 application and Khair ‘096 still does not arrive at the invention of Bandl-Konrad Claims 1 and 10. For the foregoing reasons, Gandhi has not met its burden to show that 25 Bandl-Konrad Claims 1 and 10 are unpatentable over Gandhi ‘470 application and Khair ‘096. Claims 2-8 and 19 depend upon Claim 1, and Claims 16-17 depend 69 upon Claim 10. Accordingly, Bandl-Konrad has not shown that Claims 1-9, 10, 16, 17 and 19 are unpatentable over Gandhi ‘470 application and Khair ‘096. Even assuming arguendo that Gandhi has met its burden to show that Bandl- Konrad Claims 1 and 10 are unpatentable over Gandhi ‘470 application and Khair ‘096, we nevertheless agree with Bandl-Konrad’s countervailing arguments and 5 Dr. Krӧcher’s testimony that Gandhi ‘470 application contains numerous disclosures that would have discouraged one skilled in the art from incorporating a filter between the disclosed lean NOx trap and NH3-SCR catalytic converter shown in Figs. 4a-4c. Paper 37, pp. 7-11; Ex. 2018. For example, Dr. Krӧcher testifies that: 10 First, the Gandhi ‘470 application discloses that it is desirable to arrange the lean NOx trap and SCR catalytic converter as close as possible to avoid unwanted conversion of ammonia back to NOx … Positioning a filter between the catalysts as required by Claim 1 would in fact be discouraged in view of the Gandhi ‘470 application 15 because one skilled in the art would not have desired to reduce the amount of ammonia and increase the amount of NOx that would occur due to an increased separation between the lean NOx trap and SCR catalytic converter (Ex. 2018, ¶37). 20 Second, arranging a particulate filter between the lean NOx trap and the SCR catalytic converter would have increased the overall cost of the system because Gandhi discloses that configuring the lean NOx trap and the SCR catalytic converter on a single substrate significantly reduces costs. See, e.g., Ex. 1005, Gandhi ‘470 application, ¶ 0056 25 (“the incorporation of both a lean NOx trap and NH3-SCR washcoat into a single substrate will significantly reduce substrate costs.”). Indeed, since Gandhi contemplates incorporating the catalysts on a single substrate, there is no explanation as to how a particulate filter could be arranged upstream of an SCR catalytic converter and 30 downstream of a NOx catalytic converter in this way. (Ex. 2018, ¶38). Third, arranging a particulate filter between the lean NOx trap and the SCR catalytic converter would reduce the amount of NO2 available for the SCR catalytic converter, which would have been 35 70 undesirable because NO2 promotes the operations of the SCR catalytic converter. The Khair ‘096 patent expressly discloses that the carbon trap oxidizer 32 reduces the amount of NO2 ... Thus, one skilled in the art would not have combined the NO2 reducing filter of the Khair ‘096 patent with the catalyst arrangement of the Gandhi ‘470 5 application as the operation of the SCR catalytic converter would be adversely affected. (Ex. 2018, ¶39). We are persuaded by Dr. Krӧcher’s testimony that Gandhi ‘470 application contains disclosures that would have discouraged one skilled in the art from 10 incorporating a filter between the disclosed lean NOx trap and NH3-SCR catalytic converter shown in Figs. 4a-4c. As such, and based on the disclosures of Gandhi ‘470 application and Khair ‘096, no prima facie case of obviousness can be made against Bandl-Konrad Claims 1 and 10 under 35 U.S.C. § 103(a). With respect to Bandl-Konrad remaining Claim 15 which depends on Claim 15 9, via Claim 13, Gandhi further argues that “it would have been obvious to one of ordinary skill in the art that during a desulfation, hydrogen sulphide (H2S) present in the exhaust gas would be oxidized in the SCR catalytic converter based on the chemistry underlying the oxidation of H2S and SCR Catalysts” as evidenced by, inter alia, Kaneko ‘883 and Pieplu Article. Ex. 1001, ¶¶80-82; FF 60-61. Bandl-20 Konrad has not offered any rebuttal. Therefore, in the absence of Bandl-Konrad’s opposition, we agree with Gandhi and hold that Gandhi has not shown that Claim 15 is unpatentable under 35 U.S.C. §103(a) over Gandhi ‘470 application, Kaneko ‘883 and Pieplu Article. 25 VI. CONCLUSIONS Based on the record before us, we conclude that Bandl-Konrad has met its burden to show by the preponderance of evidence that all Gandhi Claims 9-13, 19, 20, 28, 30-35, and 46-49 of Gandhi’s involved application (Gandhi ‘558 71 application) are unpatentable under 35 U.S.C. §§102, 103 and 112, first paragraph. Specifically, Bandl-Konrad has shown that: (1) Claims 11-13 and 20 of Gandhi’s involved application are unpatentable under 35 U.S.C. § 112, first paragraph, as lacking written description in Bandl-Konrad Motion 3 (Paper 31); and (2) remaining Claims 9-10, 19, 28, 30-35, and 46-49 of Gandhi’s involved application 5 are unpatentable under 35 U.S.C. §§ 102 and 103 over prior art, including Kinugasa ‘024 and Twigg ‘647 in Bandl-Konrad Motion 4 (Paper 32). We also conclude that: (1) Bandl-Konrad has failed to rebut the presumption under 37 C.F.R. §41.207(c) regarding Claims 9, 11-14, and 18 of Bandl-Konrad ‘747 and, as such, Claims 9, 11-14, and 18 of Bandl-Konrad ‘747 patent are 10 considered unpatentable over the same prior art, including Kinugasa ‘024 and Twigg ‘647; and (2) Gandhi has not shown that Bandl-Konrad Claims 1-8, 10, 15- 17, and 19 of Bandl-Konrad ‘747 patent are unpatentable over Kinugasa ‘024 and Twigg ‘647. We further conclude that Gandhi has not met its burden to show that Bandl-15 Konrad Claims 1-8, 10, 16-17, and 19 are unpatentable over Gandhi grandparent ‘470 application and Khair ‘096. However, Gandhi has shown that Bandl-Konrad Claim 15 is unpatentable over Gandhi ‘470 application, Khair ‘096 and Pieplu Article. As a result of the above decisions, Gandhi no longer has any patentable 20 claims, and Bandl-Konrad remaining Claims 1-8, 10, 16-17, and 19 have not been shown to be unpatentable. Because there currently is no basis for formulating a count representing the common patentable subject matter of the parties for determining priority, it is appropriate to terminate the interference at this point. Consequently, we need not reach Bandl-Konrad Motion 1 (Paper 29) to substitute 25 new Count and Bandl-Konrad contingent Motion 2 (Paper 30) to re-designate claims corresponding to the substituted new Count. Therefore, Bandl-Konrad 72 Motion 1 (Paper 29) and Bandl-Konrad contingent Motion 2 (Paper 30) are DISMISSED. VII. ORDER For the reasons discussed above, it is: 5 ORDERED that Bandl-Konrad Motion 3 (Paper 31) alleging lack of patentability under 35 U.S.C. § 112, first paragraph, as lacking written description support is GRANTED as to Gandhi Claims 11-13 and 20, but is DENIED as to Gandhi Claims 9-10, 19, 28, 30-35, and 46-49 (including unchallenged Claims 9, 30, and 33); 10 FURTHER ORDERED that Bandl-Konrad Motion 4 (Paper 32) alleging lack of patentability of Gandhi remaining Claims 9-10, 19, 28, 30-35, and 46-49 under 35 U.S.C. §§ 102 and 103 is GRANTED; FURTHER ORDERED that, because Bandl-Konrad did not overcome the presumption under 37 C.F.R. §41.207(c) that its own claims were unpatentable for 15 the same reasons set forth for Gandhi’s involved claims, and as such, we hold that Claims 9, 11-14, and 18 of Bandl-Konrad ‘747 patent are also unpatentable under 35 U.S.C. §§ 102 and 103 over the same prior art cited in Bandl-Konrad Motion 4 (Paper 32); FURTHER ORDERED that Bandl-Konrad overcame the presumption 20 under 37 C.F.R. §41.207(c) as to Claims 1-8, 10, 15-17 and 20 of Bandl-Konrad ‘747 patent; FURTHER ORDERED that Gandhi Substantive Motion 1 (Paper 26) alleging lack of patentability under 35 U.S.C. §§ 102 and 103 is GRANTED as to Claims 9, 11-15, and 18 of Bandl-Konrad ‘747 patent, and is otherwise DENIED 25 as to Claims 1-8, 10, 16, 17, and 19 of Bandl-Konrad ‘747 patent; 73 FURTHER ORDERED that Bandl-Konrad Motion 1 (Paper 29) to substitute a new Count and Bandl-Konrad contingent Motion 2 (Paper 30) to re- designate Claims 1-14 and 16-18 of Bandl-Konrad ‘747 patent and Claims 9, 10, 30-35, and 46-49 of Gandhi ‘558 application as corresponding to the substitute new Count are DISMISSED as MOOT; 5 FURTHER ORDERED that judgment be entered under 37 CFR § 41.127 against the subject matter of all Gandhi Claims 9-13, 19, 20, 28, 30-35, and 46-49 of Gandhi’s involved application, and Bandl-Konrad Claims 9, 11-15, and 18 of Bandl-Konrad ‘747 patent in a separate paper; FURTHER ORDERED that a copy of this decision shall be entered into 10 the files of Bandl-Konrad’s involved patent, U.S. Patent No. 7,814,747 and Gandhi’s involved application, U.S. Patent Application No. 12/706,558. 74 cc (e-mail): Attorney for Bandl-Konrad: Michael H. Jacobs, Esq. Stephen W. Palan, Esq. CROWELL & MORING, LLP 5 Intellectual Property Group 1001 Pennsylvania Ave., NW Washington, DC 20004-2595 10 Attorney for Gandhi: E. Anthony Figg, Esq. R. Danny Huntington, Esq. ROTHWELL, FIGG, ERNST & MANBECK, PC 1425 K Street, NW 15 Suite 800 Washington, DC 20005 lb Mail Stop Interference Paper No. 126 P.O. Box 1450 Entered: July 26, 2013 Alexandria, VA 22313-1450 BoxInterferences@uspto.gov Tel: 571-272-4683 Fax: 571-273-0042 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD BRIGITTE BANDL-KONRAD, ANDREAS HERTZERG, BERND KRUTZSCH, ARNO NOLTE, MARKUS PAULE, STEFAN RENFFTLEN, NORBERT WALDBUESSER, MICHEL WEIBEL, GUENTER WENNINGER, and ROLF WUNSCH Junior Party (Patent No. 7,814,747) v. HAREN S. GANDHI, JOHN VITO CAVATAIO, ROBERT HENRY HAMMERLE, and YISUN CHENG Senior Party (Application 12/706,558) Patent Interference No. 105,839 (HHB) Before RICHARD E. SCHAFER, RICHARD TORCZON, and HUNG H. BUI, Administrative Patent Judges. BUI, Administrative Patent Judge. JUDGMENT – 37 CFR §41.127(a) 2 A decision of the Board on motions has been issued holding: (1) Gandhi’s Claims 11-13 and 20 are unpatentable under 35 U.S.C. § 112, first paragraph, for lack of written description support from Gandhi’s involved application; (2) Gandhi’s remaining Claims 9, 10, 19, 28, 30-35, and 46-49 are unpatentable over prior art; and (3) Bandl-Konrad Claims 9, 11-15, and 18 of Bandl-Konrad ‘747 5 patent are unpatentable over prior art. Paper 125. Without any patentable claims from Gandhi, there is no basis for formulating a count representing the common patentable subject matter of the parties for determining priority. It is appropriate, therefore, to terminate the interference at this point and enter judgment. For the reasons discussed above, it is: 10 ORDERED that Junior Party, Bandl-Konrad Claims 9, 11-15, and 18 (corresponding to Count 1) of Bandl-Konrad ‘747 patent will be cancelled pursuant to 35 USC §135(a); FURTHER ORDERED that all Gandhi Claims 9-13, 19, 20, 28, 30-35, and 46-49 (corresponding to Count 1) of Gandhi’s involved application (Gandhi ‘588 15 application) are finally refused pursuant to 35 USC §135(a); FURTHER ORDERED that a copy of this judgment be made of record in the files of Bandl-Konrad’s involved patent, U.S. Patent No. 7,814,747 and Gandhi’s involved application, U.S. Patent Application No. 12/706,558; FURTHER ORDERED that if there is any settlement agreement or related 20 documents which have not been filed, attention is directed to 35 U.S.C. §135(c) and 37 C.F.R. §41.205. 3 cc (e-mail): Attorney for Bandl-Konrad: Michael H. Jacobs, Esq. Stephen W. Palan, Esq. CROWELL & MORING, LLP 5 Intellectual Property Group 1001 Pennsylvania Ave., NW Washington, DC 20004-2595 10 Attorney for Gandhi: E. Anthony Figg, Esq. R. Danny Huntington, Esq. ROTHWELL, FIGG, ERNST & MANBECK, PC 1425 K Street, NW 15 Suite 800 Washington, DC 20005 lb Copy with citationCopy as parenthetical citation
